March, 2005

Ruling in favour of India's leading corporate house, the Delhi High Court has recently restrained a Chinese online gambling entity from using the name of 'Tatas'. Transferring the domain name 'tatainfotecheducation.com' in favour of Tata Sons Ltd, the Court decreed the lawsuit filed by the corporate major against Fashion ID Ltd., a Chinese entity and its proprietor. The ex-parte order restrains the defendant (Fashion ID Ltd), its servants, agents and assigns and all others acting on its behalf from conducting any business or in dealing in any manner including using domain name 'tatainfotecheducation.com' or the word 'Tata' or any name comprising of the same or deceptively similar to it regarding any goods, services or domain. It was alleged that the Chinese entity had snapped and misappropriated the domain name, which was due for renewal on May 9, 2002, with the Registrar, Network Solutions, Inc. The Court Order directed the domain name registration in favour of Fashion ID to be cancelled and the domain name 'tatainfotecheducation.Com' transferred to Tata Infotech Ltd (TIL).

March, 2005

On December 26, 2004, the Government of India issued an ordinance relating to Patents (Third) Amendment Act. With this, India has kept its promise to become TRIPS compliant by end of 2004. This third round of amendment to the patent laws has been introduced through an Ordinance, as the Government could not push through a bill to discuss proposed changes in the Parliament’s winter session. The amendments are expected to be passed in the ongoing budget session of the Parliament. Some of the important features of the Ordinance are:

1. It expands the patentability criteria from drugs and agro chemicals to other fields of technology, such as embedded software. Currently, IPR protection with regard to software is limited to copyrights alone.

2. The provision regarding exclusive marketing rights introduced in the 1999 Patent Amendment Act will become redundant.

3. Compulsory license - which is a facility with the government to sidestep patents under defined circumstances- can now be issued “without the grace period of three years from grant of patent.”

4. Modification in the provisions relating to opposition procedures with a view to streamlining the system by having both pre-grant and post-grant opposition in the Patent Office.

5. The rights of mailbox applicants have now been rendered "prospectively operational only", that is, only from the date of grant of the patent and not retrospectively from the date of publication. Mailbox is a facility introduced in the Patent Act through the first amendment in 1999, allowing anybody to apply for patents for inventions made during 1995-2005. The new provision also gives existing generic producers of likely-to-be-patented drugs protection from patent infringement suits.

6. Extension of patents in case of incremental innovations – this means that companies which come up with new usage of the same product may not get patent for the new usage.

7. Rationalisation of provisions relating to time-lines with a view to introducing flexibility and reducing the processing time for patent applications, and simplifying and rationalising procedures.

8. Indians wanting to file for patents abroad will need a no-objection certificate from the Indian government. This provision has been included specifically to guard against patenting of dual use technologies, one of which could be hazardous.

9. Compulsory license - which is a facility with the government to sidestep patents under defined circumstances- can now be issued "without the grace period of three years from grant of patent."

March, 2005

India won a 10-year-long battle at the European Patent Office against the grant of patent on use of neem as a fungicide, citing it as a traditional knowledge available with Indian farmers and the scientific community since time immemorial.

The European Patent Office had originally granted the patent to the United States Department of Agriculture and multinational W.R. Grace in 1995, which was later revoked in 2000 after India appealed against the patent. W.R. Grace however went in for an appeal against the revocation. In response, India led by environmentalist Vandana Shiva presented further evidence to support that use of neem in varied forms is part of traditional Indian knowledge and not a novel product (Vandana Shiva was also part of India's successful bid to protect basmati, a traditional long-grained aromatic rice variety grown only in India and Pakistan, from being patented in the US). In addition, the documented evidence presented by India included research done by two scientists prior to 1995 on use of neem, known for its medicinal properties, for making several products like fungicide.

This is seen as a major victory for India as the award of patent could have been particularly damaging since the US company had tried to enlarge the scope to include all neem end products.