History International Law

With no carrots on offer, USTR Michael Froman won’t have Crowbar Carla’s influence on Indian IP policy

PrashantReddyTwenty years ago, when India finally signed the Agreement on Trade Related aspects of Intellectual Property Rights (“TRIPS”), it did so after several years of arm-twisting by “Crowbar Carla”, as Carla Hills, the then United States Trade Representative (“USTR”) was called by the media. Ms. Hills earned the moniker “crowbar” because of her diplomatic strategy of “crowbar diplomacy”. American economic might was used as a “crowbar” to pry open the closed economies of America’s trading partners.

Those days, the American economy was in dire straits with an ever-widening trade deficit, a fact attributed to two issues. The first was the common complaint amongst Americans that the rest of the world was indulging in protectionism. The second was that a significant portion of American exports were intellectual property and that a lot of trading partners did not have laws that protected American intellectual property. “Crowbar Carla” was tasked by the then American administration to use trade weapons such as “Super 301” and “Special 301” to exert pressure on trading partners to modify their trading policies under the threat of trade sanctions. Her bigger political goal was to use these trade weapons to prod countries like India to sign TRIPS without too much fuss. To the credit of the American administration, they were aware of the limits of brute political power and sweetened the deal by throwing in the offer of allowing Indians to export more textiles to the U.S. Textiles were and continue to remain one of the most lucrative exports from India earning the country its fair share of foreign currency. Given the dire straits of the Indian economy in 1990-91, it didn’t take much for “Crowbar Carla” to convince the Indians to sign the TRIPS. The Indian delegation which finally signed the deal at Marrakesh was headed by a Union Minister called Pranab Mukherjee – today he is the President of India.

Starting with amendments in 1994 to the Copyright Act to recognise the copyright in software programs, the Indian Parliament embarked on a massive legislative agenda to introduce new intellectual property rights as was required by TRIPS. In 1999 and 2002, the NDA government amended Indian patent law. It also enacted a new law for geographical indications in 1999 and a new Protection of Plant Varieties & Farmer’s Rights Act, 2001. In 2005, it enacted the third amendment to the Patents Act, 1970 and brought back product patents for pharmaceuticals and agrochemicals after a 35-year prohibition. Each one of these new laws and amendments were a result of India signing TRIPS, an act which is directly attributable to Ms. Carla’s diplomatic prowess. With such immense powers to influence international trade policy, the USTR is certainly one of the most powerful bureaucrats in the American establishment. The question is how much has changed in the last decade? Does the incumbent USTR Michael Froman have as much power as “Crowbar Carla”?

Carla Hills (left) was the United States Trade Representative under President George H. W. Bush between 1989 and 1993. Michael Froman has held that office since 2013.

Carla Hills (left) was the United States Trade Representative under President George H. W. Bush between 1989 and 1993. Michael Froman has held that office since 2013.

Going by news reports in the recent past, it would appear that Froman has managed to extract significant concessions from India on its intelelctual property policy. Apparently Froman, in recent testimony to American lawmakers has commented that the US is making good progress with the new Modi government on the issue of IP protection. While Froman did not provide details of the actual negotiations, there has been gossip from the civil society organisations in India that the government is going to make serious concessions such as the introduction of a data exclusivity regime for pharmaceuticals apart from a possible drug-patent linkage system. The data exclusivity regime will ensure that generics cannot rely on innovator clinical trial data for a certain timespan in order to get regulatory approvals. This will delay the introduction of generics into the market. The drug-patent linkage system on the other hand is meant to ensure that the drug regulator doesn’t provide regulatory approval to those drugs which are still under patent protection. The Drug Controller General of India (“DCGI”) had planned to introduce such a system few years ago but was forced to backtrack after a serious backlash from the manufacturers of generics. They argued that the DCGI was meant to regulate only safety and efficacy and that he was neither, equipped nor required to enforce patent rights under the law.

The big question is whether the Modi government will actually concede to these demands.

Unlike in the times of “Crowbar Carla”, the current USTR has far fewer trade weapons in his arsenal, thanks to WTO laws which place restrictions on the manner in which the US can impose trade sanctions on trading partners. The favoured weapon of the Americans in the old days was hiking up tariff barriers on the imports from foreign countries but the very rationale of the WTO system is to ensure non-discrimination in tariffs between different trading partners. It is therefore questionable whether the U.S. can get away by imposing tariff barriers on imports from India. The USTR of course can embarrass India by painting a sorry picture of the country’s intellectual property policy in its Annual 301 reports – these reports are handy tools for American lobbyists to prod lawmakers in their countries to ramp up pressure for more action. However unlike the nineties, when India was promised greater access to the American market, the American establishment doesn’t appear to be offering any carrots to the Indian government. So where is the incentive for the Modi government to make concessions to the Americans? Why would Modi risk a serious backlash from the powerful combine of the generic pharmaceutical industry and patient group? Will an administration with a strong nationalist sentiment be seen as caving into American pressure in exchange for nothing? Add to this the fact that India is now a massive importer of American defence and nuclear technology and you wonder why the Modi administration would make any concessions to the Americans.

International Intellectual Property

Froman’s testimony is more likely a result of the Indians agreeing to consider the American demands. This usually means that the bureaucrats in the negotiating group will draw up notes and send them to the relevant ministries for comments. The Department of Industrial Policy and Promotion, the Health Ministry, and the Pharmaceutical Department of the Ministry of Chemicals will all express their opposition. Meanwhile, lobbyists from the generic pharmaceutical industry would have leaked the notes to the media and created a furore. The RSS and the Swadeshi Jagran Manch will register their protest. The bureaucrats in the Indo-US Trade Policy Forum will most likely cite the media furore to express their inability to accept American demands, especially when India gains nothing in return.

The cycle will then repeat itself, until the Americans find a way to actually cause economic damage to India without bombing it.

(Prashant Reddy is a Delhi-based intellectual property lawyer.)


Patent filing: Does India really follow a ‘first to file’ rule?

JSaiDeepakpicIt is commonly believed about the Indian patent regime that the first person to file an application to patent an invention is the one entitled to the patent on it. The letter of the law however, does not seem to support this belief. No matter how pedantic it may seem, the interpretation of a statute must begin with the language of the provision and must not be driven by what we think the law is or ought to be.

Section 6 of the Patents Act, 1970 (“Patents Act”) which governs the entitlement of a person to file an application for a patent, is extracted below.


Thus “any person claiming to be the true and first inventor of the invention” may file an application for a patent. The provision uses the words “true” and “first”, and in that order. This means the person (or persons, where there are multiple inventors) must have invented the invention without free-riding on the efforts of another person. Secondly, that person must also be the first one to truly invent the invention. Nowhere does the provision convey a “first to file” rule, where the entitlement is based on prior filing.

The requirements under Section 6 are conjunctive, that is, “true” and “first”. So even if the person’s claim of being the inventor is true, it is possible that he may not be the first inventor. It is only his belief or claim that he is the first inventor because no one has— to the best of his knowledge — published the invention in the public domain or filed for a patent.

That belief could, however, be misplaced. Another person may be able to prove that he was not only the true inventor, but also the first. Can a claim that a person was the true and first inventor be rebutted? Does the Patents Act provide for a remedy that can be invoked to prove “true and first” inventorship?


RevocationofpatentSection64My understanding is that there is no such remedy under the two opposition mechanisms (before grant and after grant) in Section 25(1)(a) and Section 25(2)(a). Both refer to an invention that has been “wrongfully obtained”. Even Section 64(1)(c), which deals with the revocation of patents, considers a similar scenario where the true inventor has been defrauded by another person who has applied for a patent or who has been granted one. In other words, these provisions deal with situations where the patent applicant or patentee is not the “true inventor” since he has obtained the invention “wrongfully”. If the true inventor’s challenge under these provisions is successful, the patent application or patent shall be transferred to his name pursuant to Sections 26 and 52 respectively.

However, an allegation that an invention has been “wrongfully obtained” under Sections 25(1)(a), 25 (2)(a), and 64(1)(c) is distinct from the issue under discussion, namely a situation where the patent applicant has not committed fraud, but is merely under the factually misplaced yet genuine belief that he is the “true and first inventor”.

My reading of the Patents Act is that the remedy for such a situation lies in Section 64(1)(b) which provides for a ground of revocation based on “entitlement to apply for a patent”. This, in my opinion, is a reference to Section 6, which lists who is entitled to apply for a patent.


To cut a long story short, while Section 64(1)(c) addresses an allegation of the invention being “wrongfully obtained”, Section 64(1)(b) addresses a situation where a person challenges the grant of a patent because he is the “true and first inventor”. Therefore, X, who believes that Y ought not to have been granted a patent since X conceived of the invention before Y who is merely the first filer of the patent application, has a remedy under Section 64(1)(b). Surprisingly, such a remedy has not been provided for under the scheme for opposition in Section 25(1) and 25(2), before and after the grant of a patent. Consequently, X has to wait until a patent is granted in order for him to challenge its grant under Section 64(1)(b).

From the above, what is certainly clear is that the Patents Act has a “first to invent” rule, and not a “first to file” rule. Despite the clarity in the statutory framework, it is indeed intriguing that most people assume that India follows the “first to file” rule. Finally, the policy argument against the “first to file” rule is that if the “true and first inventor” does not wish to file for a patent and instead wishes to protect the invention as a trade secret, or intends to freely share the invention with the public, another person should not be granted a patent merely because he is the first to file an application for it.

(J. Sai Deepak, an engineer-turned-litigator, is a Senior Associate in the litigation team of Saikrishna & Associates. He is the founder of “The Demanding Mistress” blawg. All opinions expressed here are academic and personal.)


The abuse of a dominant position acquired through a patent is a subject for competition law

JSaiDeepakpicTypically, patent litigation involves suits for infringement and counterclaims for patent invalidation. The conduct of parties to patent disputes however, has added another dimension — the effect of the patentee’s conduct on consumers and competition in the market.

Take for instance, the anti-trust proceedings initiated in 2012 by the European Commission against Motorola Mobility Inc. The main ground for the investigation was Motorola’s aggressive pursuit of injunctive relief against potential licensees to coerce them into paying unreasonable royalty for the use of Motorola’s Standard Essential Patents (“SEPs”) on video compression standards and standards for Wireless Local

AdvancedProfessionalCertificationinCorporateLawPractice_apcclpArea Network (WLAN) technologies. SEPs, a type of patents, claim inventions that are necessary to comply with the prevailing technology standards. Given the essential nature of the subject-matter claimed by these patents, their abuse or coercive use has serious and adverse implications for consumers and other players in the industry.

In light of these developments,we need to clearly understand the respective realms of the Patents Act, 1970 (“Patents Act”) and the Competition Act, 2002 (“Competition Act”). Although the Patents Act is typically associated with patent grant, validity, and enforcement, Section 140 of the Act lists the restrictive covenants that are forbidden in patent-related contracts such as licenses. The provision, among other things, expressly proscribes any contractual provision that prevents a challenge by a licensee to the validity of a licensed patent. Similarly, Section 84 of the Patents Act provides for a compulsory licensing mechanism to ensure that a patentee fulfils his obligations under the Act, one of which is to provide access to his patented technology at reasonably affordable rates.

Although both these provisions address certain “public” concerns, the Patents Act does not have the mandate, bandwidth, or the teeth to ensure that a patentee’s conduct does not have an adverse effect on other players and consumers. Instead, it is the Competition Act that has the express mandate to deal with and deter anti-competitive conduct and to promote balance in the market.

Section19(4)CompetitionAct2002_AbuseofominantPosition.jpgIn this regard, it would help to read Section 19(4) of the Competition Act. This particular provision spells out those factors which the Competition Commission of India (“CCI”) shall have regard to when enquiring if an enterprise enjoys a dominant position under Section 4 of the Competition Act. One of these factors is the monopoly or dominant position acquired as a result of any statute. This clearly includes a patent right, which is a statutory monopoly granted by and under the Patents Act. Simply put therefore, the CCI has the power under Section 4 of the Competition Act read with Section 19(4)(g) to look into allegations of abuse of dominance acquired as a result of a patent right. In other words, the manner of patent exploitation and enforcement, and its effect on the market are the primary preserve of the Competition Act, and not the Patents Act.

Specific and general legislation

Citing Sections 84 and 140 of the Patents Act, it could be argued that the Act — being the more “specific legislation” which governs patents and patentees compared to the Competition Act — must be treated as a self-sufficient code. This approach however, is flawed since, as stated earlier, addressing market inequities generated as a consequence of a patentee’s abuse of his rights is essentially a subject of scrutiny under the Competition Act, and not the Patents Act. This explains the reason for the presence of Section 62 of the Competition Act, which in effect states that the competition statute shall apply in addition to and not in derogation of, other legislations such as the Patents Act. Therefore, the specific-over-general rule does not apply to Competition Act insofar as the Patents Act is concerned. In fact, the Competition Act goes even a step further and provides in no uncertain terms in Section 60 that the Act shall prevail over any other law in force which is inconsistent with the Competition Act. This “overriding effect” ensures that the Competition Act’s applicability is never watered down or rendered futile because of a conflict with another provision in any other law.

Sections60and62_CompetitionAct2002.jpgAt this point, it may be important to clarify the position of the Competition Act under Sections 60 and 62 to understand the status of the legislation. While on the one hand Section 60 proclaims the overriding effect of the Competition Act over anything that is inconsistent with the Act, Section 62 states that the Act shall be in addition to, and not in derogation of other laws. What this means is that so long as there is no inconsistency between the Competition Act and other legislations such as the Patents Act, both statutes shall apply simultaneously to a situation to which both Acts apply. In the event an inconsistency, the Competition Act will prevail. Therefore, in case of a non-conflicting intersection, both statutes apply, and where there exists or arises a conflict, the Competition Act shall prevail. After all, market and consumer interests have to prevail over domain-specific issues.

J. Sai Deepak, an engineer-turned-litigator, is a Senior Associate in the litigation team of Saikrishna & Associates. He is the founder of “The Demanding Mistress” blawg. All opinions expressed here are academic and personal. 


“Just because you organise a cricket match does not mean you own it” – Conversation with Udit Sood about the Delhi HC judgment on Star’s media rights and the “hot news” doctrine

UditSoodpodcast2Idea Cellular and other mobile providers recently resisted the claim made by Star India Private Limited (“Star”) that they had “misappropriated” Star’s “quasi-property rights” in real-time cricket scores. Star’s claim was that its arrangement with the Board of Control for Cricket in India (“BCCI”) gave them some rights over real-time scores. In a six-year deal, Star had paid the BCCI Rs. 3851 crore for exclusive media rights, including “mobile rights”.

The mobile service providers had captured real-time cricket scores and updated their subscribers through text messages. Star now wanted the Delhi High Court to restrain mobile service providers from sending out real-time cricket scores. A Division Bench of the Delhi High Court recently overturned the opinion of a Single Judge and rejected Star’s claim.

Sports-LawUdit Sood was part of Luthra and Luthra’s team of intellectual property lawyers who acted for the mobile service providers before the Delhi High Court. In a brief conversation with him, he explained the basis of Star’s claim, the history of the “hot news” principle in the United States of America, and the implications of the judgment for the organisers of live events, including sporting organisations.

(Aju John is part of the faculty at


Today marks 223 years since the first patent under the U.S. Patent Act

The first US patent pot ash manufacture

On this day in 1790, Samuel Hopkins of Vermont in the United States of America was granted the first patent under the U.S. Patent Act, 1790 for a new apparatus and process of making pot ash and pearl ash. The certificate registering the patent was signed by President George Washington, Attorney General Edmund Randolph, and Secretary of State Thomas Jefferson.


(Above: Randolph, Washington, and Jefferson)

But was this the world’s first patent?

Patents have been traced back to some ancient Greek cities in 500 B.C. where something similar was given to chefs.

Brunelleschi_architect_Florentine_domeThe world’s first recorded patent registration however, was a three-year patent granted in 1421 to Florentine architect Filippo Brunelleschi (left) for an improved method of transporting goods up and down the river Arno in Florence, a notoriously tricky business.

Compared to modern day patents and disclosure norms in the process of patent registration, Brunelleschi’s patent document is vague about the nature of the invention. The architect of the magnificent dome of the city’s cathedral was so revered that he had enough clout to strike a deal on his own terms. One of his main terms was that he would only reveal the details of his brainchild once he had been granted a three-year monopoly.

John of Utynam, a Belgian glass-maker from Flanders in Belgium was granted the first known English patent in 1449 by King Henry VI for a period of twenty years (quite a contrast from Brunelleschi’s patent term) to make stained glass windows for Eton College.

The first North American patent grant was in 1641 to Samuel Winslow by the Massachusetts General Court for a new process for making salt.

Intellectual-Property-LawIndia’s first patent law was enacted in 1856. The act was modelled on the lines of British Patent Law of 1852. Patent terms lasted fourteen years. The first patent in India under the 1856 law was granted to George Alfred DePenning (left, above) for a device that he called, “An Efficient Punkah-Pulling Machine”. In the same year, Mr. DePenning launched his firm of intellectual property attorneys, which continues to offer services to this day.

 (Samar Jha is part of the faculty on