Until about two decades ago, the IPR laws and the subject matter they governed were clearly demarcated in sharp vertical silos. The scope of study especially in the sciences was classified under biology, chemistry, physics, and maths. Similarly, the criteria of protection under the patent law were distinct from copyright law, which in turn was distinct from trademark law and industrial design.
Since then, this orderly world has changed rapidly. For one, the sciences have become multi-disciplinary with new disciplines such as biochemistry, biophysics, biopharma, and many more, while "computer science", the study of which started out as a distinct stream of study is now a ubiquitous tool with applications ranging from rockets, automobiles, biotechnology, chemistry and so on, which in turn has put a strain on the interpretation of IP protectable subject matter and IP laws as well as incidental laws such as Information Technology laws, domain name, data protection, data privacy laws, to name a few.
This change requires patent practitioners to have a hands-on knowledge of technology while the courts have to be made aware of the grey areas between the sharps statutory criteria of protection under each of the seven IP laws. A case in point is the fine-line demarcation between the IP laws protecting biotechnological intervention of inserting a useful bacterial gene in a plant genome and the IP law that protects new varieties developed by the back-crossing of seeds that carry the modified gene.
The former is an invention protected by Patents Act across the world based on the criteria of "novelty", "inventive step" and "capability of industrial application", while the latter is a plant variety protected under the Protection of Plant Variety and Farmer's Right Act (PVP law) based on the NDUS criteria of "novelty", "distinctiveness", "uniformity" and "stability".
The question is, whether the litigants understand the differences in the laws and whether their lawyers have the technical capability to differentiate between the biotech invention and mere cross-breeding. And do the Courts understand this fine line demarcation in the two different types of research so that valid biotechnological patents are not judicially revoked.
Besides this patent / PVP dichotomy, the IP holders also mull over whether to protect under patent or retain as a trade secret, to patent computer-implemented invention or copyright the computer programme, whether to protect a product shape under Trade Marks Act or the Design Act and so on. As the technology gets more sophisticated, the IP owners' prefer to avoid never-ending litigation in courts where jurisprudence has yet to develop (where it is avoidable) by opting for negotiations and alternative dispute resolution.
IP creators prefer services that would help create a robust IP portfolio, maintain the same and assist in commercialization through sound strategy and tactics especially where oppositions and revocations are filed more by way of anti-competitive practice to stop successful commercialization. This is significant for the IP Holders since the Intellectual Property Offices are restricted to examining the criteria of protection under IP law while the Courts and limited to looking into a narrow interpretation of infringement often viewed from the public access perspective.
Two instances are cited here to highlight the gap between commercialization as viewed the IP holders and IP law as understood by courts and IPO respectively:
(a) In a pharmaceutical infringement case, the application for vacation of ex-parte interim injunction was not heard for over 4 years by the Delhi High Court. Further, the defence of trade secret was brushed aside by the Judge as being of no consequence. The rationale adopted was that if the invention was so significant why was a patent not filed? The court viewed "trade secret" with no consequence while in fact it is a very significant and ancient business tool. Unfortunately, this observation was not in writing and therefore could not be argued on merits.
(b) The trademark application for an already registered trademark was recently granted the Delhi Trade Mark Registry without any evidence of use to support honest concurrent use. This means that for no fault of the first registrant he has to now go for additional legal intervention of opposition wasting important resources. One wants to know how the latter identical mark was registered without evidence of use? How does one explain to the client that the trademark search and market due diligence performed before adopting the trademark was futile because the trademark registry 'erred'?
The new-age enterprises and start-ups have indeed shifted focus on ease of doing business and prefer good IP strategy, resourceful thinking and reasonable predictions on chances of successful commercialization.
Sunita K Sreedharan
Currently the Founder of SKS Law Associates, Sunita K Sreedharan is a Patent Lawyer with a focus area on "Beyond Patents". She is one of the very few lawyers in India with expertise in the area of Intellectual Asset Management. She is also Legal Advisor to the WHO SEARO (World Health Organization - South East Asian Regional Office) and has been named as one of Top 50 IP Experts in India by India Business Law Journal.