Author Archives: Nandita Saikia

About Nandita Saikia

Nandita Saikia enjoys studying intellectual property issues. She has been extensively published, and her experience encompasses work as a litigator, journalist, editor, website content co-ordinator, as an ICT campaign content manager and as a guest lecturer of music history. She can be contacted at saikianandita[at]gmail[dot]com.

Provisional Specifications in Patent Applications

Posted on by
1

Every patent application under the Indian Patents Act, 1970 must be accompanied by the specifications of the invention. These specifications may either be provisional or complete. If the specifications are provisional, the complete specifications must be filed subsequently within a period of 12 months.

A provisional specification is not expected to fully disclose an invention with all the relevant details as these may not even be known to the applicant at the time it is filed. In fact, a provisional specification of an idea (which is in the process of being converted into an invention) may even be filed although, of course, even in such a case, a complete specification must be filed within 12 months. What a provisional specification is required to do is disclose the nature of the invention.

The provisional specification must be filed in the prescribed Form 2 which forms the first page of the specification. This Form contains the following information:
1.The Title of the Invention
2.Name, Nationality and Address of the Applicant(s)
3.Preamble to the Description: The following specification describes the invention.
4.Description (on a new page).
5.Date And Signature (to be given at the end of the last page of the specification).

The Title of the invention in a provisional specification should give a clear idea of the industry and the subject to which the invention relates. It should be brief – not more than fifteen words – precise, and descriptive of the invention. It should not contain words such as the inventor’s name, adjectives like ‘good’, ‘brilliant’, ‘best’, etc., or words in Indian languages. Some examples of the titles of patents are: Compositions comprising Carbazoles and Cyclodextrins, Novel Amino Acid Derivatives with Improved Multi-Drug Resistance Activity, A Method of Phenol Tar Desalting, Capillary Dewatering Method and Apparatus.

Form 2 is required to be filed along with Form 1 which is the application for the grant of a patent, and the information in Form 2 must correspond to that in Form 1. Form 2, however, is only the first page of the provisional specification to which additional pages which describe the nature of the invention are attached as follows: (i) an introduction mentioning what the field of the invention is and what the subject matter to which it relates is, (ii) the background of the invention containing a description of the relevant prior art along with its drawbacks, why the invention is needed and what it is to do / what problem it is to solve, (iii) a summary of the nature of the invention, (iv) a description of the invention possibly in general terms, (v) working examples and embodiments of the invention if they exist and (vi) the advantages of the invention.

Although it is permissible for the description of the invention to be in general terms, it is advisable to include as much information as is possible. This is because the claims later made in the complete specification must be fairly based on what has been disclosed in the provisional specification, and this cannot be done if the provisional specification is very sketchy. At the very least, the Description must identify what the novel features of the invention are and how they are distinct from prior art. The Description should begin with a short statement of the scope and subject of the invention such as, “This invention relates to _________,” and it should also contain:

  • The objectives of the invention possibly in the format: The principal objective of this invention is __________, Another objective of this invention is ____________, Yet another objective of this invention is _________.
  • Drawings if they are required.
  • The principle on which the invention is being developed.
  • A general statement of the essential features of the invention for which protection is desired.
  • A provisional specification does not contain claims since at the time it is filed; it is unlikely that an applicant would know what the claims are.

A provisional specification helps to identify the invention. It is typically drafted before an invention is ready in its final form and therefore focuses on the nature of the invention which it discloses. It is a document of record and it cannot be amended by adding new matter to it once it has been filed. In fact, no amendment would be allowed which has the effect of adding fresh matter or extending the scope of the invention. Deleting information would also not generally be allowed especially if such deletion would result in the scope of the invention being broadened.

The main purpose of filing an application with a provisional specification is to establish a priority date. A provisional specification establishes the earliest ownership of an invention although it does not in itself confer any legal rights. It is sometimes possible to get a provisional specification amended by post-dating the application. However, doing this would automatically result in the ‘loss’ of the priority date.

Until a complete specification is filed, an application which is filed along with a provisional specification will not be examined by an examiner of the patent office with a view to deciding whether or not a patent should be granted. If a complete specification is not filed within 12 months of the filing of the provisional specification, the application for the grant of a patent is deemed to have been abandoned. However, if a patent is subsequently granted for the invention after the filing of the complete specification, the date of the patent will be the date on which the application accompanied by the provisional specification was filed.

By Nandita Saikia

References:
Indian Patents Act, 1970
Indian Patents Rules, 2003
Subbaram on Patent Law; Wadhwa; 2007

(This article is by Nandita Saikia and was first published at LawMatters.in.)

When to File a Patent Application

Posted on by
Reply

officeCreate an invention which satisfies all the requirements of patentability — non-obviousness, novelty, and utility, in a nutshell — and patent it. Or try to, at any rate. The question, however, for many businesses, is when does one patent such an invention? As soon as it is invented? Once the invention is complete? Once it has begun to take shape? Once one is ready to show it to others? Once it has been shown to others? Once one is ready to commercialise the invention?

A decision regarding whether or not to patent an invention can itself take a considerable amount of research. There are other forms of protection available in many cases, and in some cases, applying for a patent is simply not the best thing to do. For one thing, the invention may not even be patentable. If an invention is not patentable, it makes far more sense not to apply for a patent primarily because 18 months after filing for a patent, the information contained in the application becomes public and not only does the applicant not get patent protection which he is anyway not entitled to in the course of time but he also loses much of the secrecy which he might otherwise have been able to maintain. If it’s possible, it is therefore in the best interest of an applicant to maintain the invention as a trade secret.

There are of course drawbacks to this too. A trade secret is a secret for only so long as it is kept a secret. If, however, a trade secret is kept secret for longer than 20 years. the owner of the secret would, in all probability, wind up with the secret having protection for a longer duration than a patent would have accorded it. Unless the ‘secret’ is ‘discovered’ by someone else who patents it and then initiates infringement proceedings against the owner of the secret.

Assuming that an invention is patentable though, coming back to the question of when a patent should be filed, the best time to file an application would be as soon as an application can be filed. This application need not contain complete specifications of the invention; it can merely contain provisional specifications. The law allows complete specifications to be filed within 12 months after provisional specifications have been filed. It is especially important in a country such as India to file a patent application as soon as possible because India follows a first-to-file system and not a first-to-invent system. This means that if another person invented the same invention later but filed for a patent earlier, he would be granted the patent notwithstanding the fact that he was not the first to invent that invention. This is in contrast to the US patent system which follows a ‘first-to-invent’ rule and grants patents to the first person who has invented an invention.

One of the criteria for patentability is a lack of anticipation. If an invention has been anticipated, it will not be granted a patent. In certain cases, the Controller may simply refuse to accept the complete specification while in others, he may require certain changes to be made. (See Sections 13 and 18 of the Indian Patents Act.) The Patents Act itself has quite a bit to say on the subject of anticipation and provides for some ‘exceptions’ to the general rule in Chapter VI of the Act.

As a result, a good time to file a patent application is as soon as the invention gets one foot out of the laboratory, so to speak. This is so a priority date is established and the applicant does not lose out on a patent merely because by the time he files for a patent, he has lost out on novelty. There is a drawback to this though:  filing an application unduly early means that the applicant may have less information about the invention at hand an will not be able to file for the widest possible scope of protection. The most prudent approach would therefore be to file an application as soon as the applicant has a reasonable amount of information at his disposal.

(This article is by Nandita Saikia and was first published at LawMatters.in.)

Professional Negligence

Posted on by
Reply

1168056_at_workIn the simplest terms, professionals are persons who have more than an average person’s skill, ability and training in any specific domain. Negligence committed by them in the course of performing a professional function is professional negligence. Generally, if professional negligence has been committed, the person who has been adversely affected by it can seek a legal remedy provided certain conditions are met and established.

Firstly, the professional must have represented that he has certain skills which are beyond that which a lay person has. In addition to this, he should have owed a duty of care to the person who claims he has been harmed, and he must have committed a breach of that duty. There must, of course, be harm caused by the professional’s breach of duty.

Whether or not a professional has breached his duty is determined by comparing the manner he has rendered services to the manner in which a reasonable person, acting in the same professional capacity, would be expected to render services. Specific professions may have guidelines, rules or laws which state exactly what a breach of professional duty would involve, and the standard cannot be lowered. However, if a professional were to represent that he would provide services of a much higher standard than a ‘reasonable’ person would provide, it would be entirely possible for the standards vis-à-vis that particular professional in that case to be raised accordingly.

Remedies for professional negligence could exist under contract law, the law of specific performance, tort law and various statutory laws. For example, Section 5 of the 1925 Legal Practitioner’s (Fees) Act says that lawyers may be liable for professional negligence.1 Theoretically, liability under both tort and contract could lie simultaneously, and a suit could be filed as such. However, since liability under contract arises from a voluntary agreement between the parties to it, and liability under tort law arises from English Common Law principles and case law, there are subtle differences between the two. Also, a claim under contract law could often be hard to prove since contracts with professionals are often implied contracts – few people sign written contracts with professionals they deal with such as their doctors, lawyers and accountants.

Remedies in cases of negligence can be sought at civil courts and, in some cases, in criminal courts.2 In India, it has begun to make sense to seek remedies for professional negligence under the 1986 Consumer Protection Act since the procedure followed by Consumer Dispute Redressal Agencies is, inter alia, not as long drawn out or as fraught with technicalities as the procedure of regular courts. The agencies are empowered to deal with deficiencies3 of professional service and award damages provided the service has not been rendered free of charge or under a contract of personal service.4

Even if the doors of agencies created under the Consumer Protection Act are closed to claimants though, the other avenues to obtain remedies remain open to claimants. It may be possible to challenge clauses in contracts including standard format contracts which limit the liability of professionals in cases of negligence on various bases such as unconscionability. And agreements which completely restrain recourse to legal remedies are void.5

(This article is by Nandita Saikia and was first published at LawMatters.in.)

References:
1. No legal practitioner who has acted or has agreed to act shall, by reason only of being a legal practitioner be exempted from liability to be sued in respect of any loss or injury due to any negligence in the conduct of his professional duties.
2. See Sections 304A, 336, 337, 338, Indian Penal Code, 1860
3. Section 2(g), Consumer Protection Act, 1986
4. Section 2(o), Consumer Protection Act, 1986
5. Section 28, Indian Contract Act, 1872

LPOs in India

Posted on by
1

There probably isn’t a place in the world where the services of a good lawyer are inexpensive. Lawyers, legal firms and corporate houses themselves recognize this and it is perhaps the recognition of this fact which prompted them to turn to countries such as India a few years ago to outsource a large chunk of their clerical and back office work.

This outsourcing has helped both those doing the outsourcing including legal practitioners (such as lawyers and law firms) and their clients. For the former, it has meant that they can cut down on costs since they need not pay what in India would be seen as absurdly high salaries to inexperienced lawyers and support staff, and as far as clients as concerned, it has meant that the savings their lawyers make can be passed on to them thereby decreasing the fees they are required to pay.

Here in India, the advent of legal process outsourcing has resulted in the creation of an entirely new field of work for lawyers where they are comparatively well paid and do not usually have to put in the hours which would have been expected of them had they chosen to devote themselves to litigation or to careers in law firms – the only two viable and popular avenues of work which existed earlier.

And considering that there is no shortage of qualified, English-speaking lawyers who are capable of producing work of a high standard in India, outsourcing work to Indian lawyers who have been trained to do it results in the finished product being of a comparable standard to one completed abroad. In particular, being familiar with English Common Law makes outsourcing pre-litigation work to Indian lawyers a viable option for those in countries which follow the Common Law system. LPO units have therefore been asked to perform a wide variety of tasks including taking care registering of trade marks, preparing pleadings, drafting patent applications, proof-reading documents, transcribing recorded documents, analyzing and drafting documents, and handling commercial transactions. In addition to this, lawyers who work in LPO units are also involved in litigation support and research, case studies and law firm marketing. And reportedly, they do it for up to 80% less than their counterparts in countries such as the US would do it for.

All things considered, it would seem that Legal Process Outsourcing works splendidly for everyone involved. However, there are problems with the system. For one thing, unless they are properly trained, Indian lawyers would not normally have the faintest idea of the intricacies of a foreign legal system and this could quite easily adversely affect the quality of their work. And for another, it isn’t entirely clear who is liable and to what extent if a mistake is made by a lawyer working in an LPO unit. In addition to this, the question of how to maintain client confidentiality is a key issue for LPOs. Even assuming that the clients of those who outsource their work consent to their confidential information being shared with an LPO unit working on what may well be the other side of the world, there are a number of related problems.

The employees of an LPO and the clients whose information they are privy to do not share a privileged Attorney-Client relationship which means that the information which was well protected with their own lawyers would cease to be as protected once it reached an LPO. It’s not as though there is a complete absence of laws in India which deal with confidentiality. The Bar Council of India Rules, the 1872 Indian Evidence Act, the 1961 Advocates Act, and the 2000 Information Technology Act do all apply. The problem is that none of them were drafted keeping Legal Process Outsourcing and the concerns of foreign clients in mind. Under the Indian Advocates Act, for example, attorney-client privilege quite simply does not extend to foreign legal work outsourced to India. As such, it was suggested as early as 2006 that the Indian Bar Council draft a code of conduct for LPO units. It isn’t entirely clear what became of the proposal though. The American Bar Association has, however, given an opinion which lays down a framework for ethical legal outsourcing.

Issues of ethics and confidentiality aside though, the financial meltdown in the US and the recession which is currently affecting the world at large make legal process outsourcing a good option for all of those involved. Not only does it cut costs exponentially, it also enables foreign legal practitioners among others to focus on their core competencies without spending large amounts of time on clerical and other such work. And in India, the recent phenomenon of law firms opening LPO units has led to the creation of units which in some ways have ‘ready-made’ clients: the clients of the law firms they are attached to.

According to Seth and Associates, a firm located in New Delhi, “India is set to achieve significant growth from its current share of 3 to 4 per cent to 6 to 7 per cent in the 250 billion dollar global market of Legal Process Outsourcing, by 2010. The key issue, however, will be sustainability. Not only will issues of confidentiality and ethics have to be resolved but for the LPO industry to flourish in the long term, it also needs to be accountable and maintain a high standard of work. “Sustainability,” as Soumitro Chatterjee, CEO of Legal Circle puts it, “will be the issue. Only those who meet the quality or standard required, will be able to survive in the market.”

(This article is by Nandita Saikia and was first published at LawMatters.in.)

Image Source: http://commons.wikimedia.org/wiki/File:Office.JPG

Copyright Lingo

Posted on by
Reply

That copyright tends to create a language of its own isn’t something which is entirely surprising to anyone familiar with it. There are both advantages and disadvantages to intellectual property and the debate whether public interest is well served by the protection of private interests via the medium of intellectual property has been going on for a while now.

Intellectual property is not an especially old form of property. Copyrights, for example, were first seen in the year 1710 and arose to protect the monopoly the Stationers had earlier enjoyed as members of the Company of Stationers of London which basically acted as a private censor for the Crown. By 1710, the Crown became much less finicky about the publication and dissemination of seditious material which resulted in the stationers effectively being out of a job.

The members of the defunct company responded by petitioning Parliament to protect the intellectual property of literary works by creating an author’s copyright which they assumed (correctly) would be assigned to them. And ever since, the publishing lobby has lobbied for stronger and stronger copyright protection.

Not too surprisingly, copyright is now considered by many outside the ‘copyright community’ to be completely out of whack since it protects the private interests of copyright owners (usually publishing corporations) to an absurd degree.

In some cases this is seen in the Indian Copyright Act itself. For example, in 1994, the law was amended so that communication to the public for the purpose of determining whether or not infringement had occurred did not require any member of the public to have actually seen or heard the work communicated. In other words, the copyright is infringed by the mere transmission of the work to the public and not its communication to the public. Considering that one of the aims of copyright law is presumably not the recreation of the English language, the term communication in the statute is misleading.

Reinterpreting English in completely non-orthodox ways is not limited to legislators though. In a recent order in the case of Urooj Ahmed vs. Maya Appliances (A. No. 5533/2008 in  C S 949/2008), Justice Shivakumar of the Madras High Court decided that a suit for the infringement of a design can be filed in the place where the plaintiff resides by his interpretations of the Copyright Act and the Designs Act.

In general, a suit must be filed where the defendant resides but Section 62 of the Copyright Act institutes an exception to this rule by saying that a suit for infringement may be filed where
the plaintiff resides. There is no such provision which exists in the Designs Act but relying on Section 11 of the Designs Act which says that the registered proprietor of a design owns the copyright in the design, Justice Shivakumar has decided that the provision regarding jurisdiction in Section 62 of the Copyright Act also applies to designs under the Designs Act.

To come to such a conclusion, the assumptions seem to have been that (a) the copyright which exists in a design is the same as the copyright which exists in those works protected by the Copyright Act and (b) that copyright infringement under the Copyright Act is analogous to the infringement of a design.

The result: designs have been afforded protection not envisaged by law because of a creative interpretation of the law.

Image Source – Wikimedia Commons

 

(This article is by Nandita Saikia and was first published at LawMatters.in.)

Do Not Disturb

Posted on by
1

The problem with the Do Not Disturb service is that it doesn’t seem to automatically get cell phone companies to stop disturbing subscribers with promotional calls which are usually automated (meaning that the beleaguered subscriber doesn’t even have the option of giving the person at the other end a piece of his mind if he should want to).

There is, of course, a difference between a service message and unsolicited commercial communication (UCC). The National Do Not Call Registry web site defines UCC as ‘any message, through telecommunications service, which is transmitted for the purpose of informing about, or soliciting, or promoting any commercial transaction in relation to goods, investments or services which a subscriber opts not to receive.’ However, this does not include messages ‘relating to a service of a financial transaction under a specific contract between parties to such contract’.

So, while a call saying that your bill needs to be paid is a service message, a call you receive (almost invariably when you’re busy) promoting some bizarre ring tone is not a service message, and a cell phone company has no right to make such a call to you.

Getting on the Do Not Call Registry can be a royal pain in the neck too. One phone company, for example, asks subscribers to send an SMS to a certain number with a request for the DND service to be activated and says that it takes 45 days for activation. And during those 45 days, consumers not only have to put up with calls from arbitrary companies offering insurance policies but also from the phone company itself.

Calling their customer care at 111, one is told that this is the case because it’s what TRAI guidelines mandate. Apparently, the company has to send the consumer’s phone number to them and only after the number is added to the Registry, can the calls stop.

While this makes sense for calls being made by third parties, it’s difficult to understand why the cell phone company itself should need to wait 45 days. For example, if a girl asked a guy at college to stop phoning her to ask her out, if the guy were to say, “I’ll stop calling after the Principal says so,” the logic behind that statement would be obscure, to say the least. That is effectively what the this company’s customer care says though.

On October 21, 2008, the Telecom Unsolicited Commercial Communication (Second Amendment) Regulations, 2008 were notified. Under these regulations, service providers which send unsolicited commercial communication are supposed to take action within 28 days of a complaint being filed and inform the subscriber of what action has been taken. While this obviously applies to those who have an active DND service, it isn’t entirely clear whether it applies to those who have merely asked for the service to be activated.

If cell phone companies value customer goodwill, they would probably do well to ensure that it does apply to all their subscribers.

RIAA’s Suing Spree Stops

Posted on by
Reply

In what could be good news for internet users, the Recording Industry Association of America has said that it will stop suing random internet users who download music without a licence (or who steal it, if one were to use the lingo of popular anti-’piracy’ campaigns).

What the RIAA — which, incidentally, has sued some 35,000 people for copyright infringement over the last five years — now plans to do is to adopt some form of ‘three strike programme’ to curb copyright infringement. It plans to work with — or possibly through — internet service providers to get the job done. It isn’t clear which service providers have agreed to do this.

The Association says that ISPs will send warnings to persons who illegally download music asking them to stop doing so. If the warnings are heeded, well and good. If not, action which could ultimately be the cancellation of the internet connection could be taken against the users concerned.

While the good thing about this is that the suing campaign which was distinctly distasteful should now be over, the bad part is that one can’t help but get the feeling that the recording industry is getting internet service providers to do its dirty work for it in much the same way its been trying to do in Europe. Also, this new strategy does come with a disclaimer: the RIAA has reserved the right to sue internet users, and it has no intention of not pursuing pending law suits.