Transparency in revenue sharing of joint patent- case from Washington University and University of Wisconsin–Madison

Work of researchers at Washington University and University of Wisconsin-Medison results in U.S. Patent Nos. 5,246,925. Wisconsin Alumni Research Foundation (WARF) helps UW-Madison’s research enterprise by patenting inventions from university researchers, licensing the technologies to companies for commercialization. Washington University and WARF’s medical research partnership began in the 1990s. The two agreed that two-thirds of their shared patent’s revenues would go to WARF and one-third to Washington University. WARF then took the joint patent to Abbott Laboratories, a pharmaceutical company that launched the kidney dialysis drug known as Zemplar the same year it signed a licensing agreement with WARF.

Abbot successfully sued several generic product manufacturers by defending patents 5,246,925 , 5,587,497 and 6,136,799. Since the drug launched in 1998, it has generated about $6.1 billion in total sales revenue for Abbott. Over the duration of the patent’s life, which expired in 2015, Washington University received a little over $1 million while WARF received $426.5 million. 

When checks worth just a few hundred dollars began arriving at Washington University in the early 2000s, officials in St. Louis started pressing WARF for an explanation of the financial distribution. When  Washington University employee asked for a copy of the agreement WARF struck with Abbott, it was reported WARF cited non-existent confidentiality provisions preventing her from sharing documents with Washington University.

Aggrieved, Washington University in St. Louis sued WARF, in 2013  and court ruled in favour of Washington University, finding that WARF had misled its research partner about the patent’s true financial value and kept 99% of the patent’s royalties to itself. WARF contended it was fair distribution as bundle of patents were assigned to ABBOT.

References:

https://patents.google.com/patent/US5246925A/en

https://madison.com/wsj/news/local/education/university/uw-madisons-patent-licensing-arm-must-pay-at-least-32-million-to-ex-research-partner/article_2917cae0-8a84-56be-b7d9-6192377fd480.html

https://www.fr.com/files/Uploads/attachments/memoranda/Delaware%20Cases/julythroughdecember2009/Abbott%20Laboratories,%20et%20al.%20v.%20Teva%20Parenteral%20Medicines,%20Inc.,%20et%20al.pdf

https://techtransfercentral.com/2020/11/24/warf-must-pay-at-least-32m-to-former-research-partner-washington-u-in-patent-dispute/

SME case- Skeleton from Estonia

Skeleton offers one of the first commercialised technologies to use graphene, a ground-breaking and Nobel prize-winning material. This Estonian company develops, manufactures and sells ultracapacitor energy storage cells, modules and systems based on patented advanced materials and designs.

Founded in 2009, Skeleton is a young and ambitious company. To date it has raised more than EUR 40 million in investments and has spent considerable time and resources developing its technology into a product suitable for commercial-scale production and use. With roots in a private research institute conducting contract work for Toyota Motors, the two young Estonian non-tech founders Oliver Ahlberg and Taavi Madiberk from the University of Tartu, in collaboration with scientists Jaan Leis and Anti Perkson, started Skeleton with a technology and IP base focused on advanced materials.

Once Skeleton had been set up, the management was able to swiftly translate the technology into a commercial product. In 2011, the European Space Agency signed a contract with Skeleton, which gained the company a lot of publicity and recognition. Investors were attracted, and in the period 2013 – 2014, a pilot manufacturing plant was built in Tallinn with money invested by UP Invest (an Estonian venture capital and private equity firm). By 2015, a full manufacturing plant was up and running. The last milestone in the commercial production scaling was reached in 2017 with the finalisation of another plant in Saxony, Germany, to meet growing customer demand.

 PATENT PORTFOLIO 15 patent families, including EP2633532, EP2614512

Read: http://documents.epo.org/projects/babylon/eponet.nsf/0/D2CE4753B4C619A7C125819B003262B0/$File/sme_case_study_skeleton_en.pdf

 

Patenting your Invention - Episode 4 Basics of Patenting in India

Overview of hydrogen and fuel cell developments in China

This is a comprehensive report published by By Holland Innovation Network China , Bente Verheul - January 2019. Extracts:

This report presents the outcome of a study on hydrogen developments in China, performed by Bente Verheul, on behalf of the Holland Innovation Network in China. China’s initial interest in hydrogen comes from the automotive sector. China has established the largest NEV market worldwide and continues to foster the development of this sector. Aside for battery electric vehicles (BEV), also fuel cell vehicles are of importance. National and local policies set ambitious targets for the roll-out of hydrogen refueling stations (HRS) and the development of core technologies. In 2018, the fiscal subsidy policies for NEVs has been adjusted in favor of fuel cell electric vehicles (FCEVs) and large SOEs in the energy production sector, equipment manufacturing and automotive sector jointly established the China Hydrogen Alliance. China has invested heavily in R&D related to PEM fuel cells and highquality fuel cell power systems are produced in China by Re-Fire and SinoHytec using foreign fuel cell stacks. In 2018, China has put large fleets of FCEVs on the streets in Shanghai, Beijing, Zhengzhou, Foshan, Yancheng and Chengdu. Domestic companies are making progress in reducing platinum dosage in fuel cells (one of the main cost drivers) and are getting closer to international levels. China is initially focusing on fuel cell buses and commercial vehicles to improve public awareness, by gradually showcasing the safety of hydrogen as these vehicles require lower pressure storage tanks (35 MPa) than passenger cars. The 2022 Winter Olympics in Beijing and Zhangjiakou are an important target moment for China to showcase FCEVs, pushing the sector developments to a next level. Hydrogen and fuel cells research in China began in the 1950s by the Dalian Institute of Chemical Physics (DICP), mainly focused on applications for space programs. In the late 1980s the National Hi-Tech Research and Development Program (“863”) was launched to accelerate research-based technology commercialization in which several fuel cell and hydrogen technology projects are incorporated. Similarly, in 1997 the Basic Research Program (“973”) started, through which also government funding is made available for hydrogen and fuel cell technologies. 

Further Reading: The Development Trends of Fuel Cell Technologies Based on Patent Analysis, 

https://www.e3s-conferences.org/articles/e3sconf/pdf/2019/62/e3sconf_icbte2019_02007.pdf

 

 

Local working of a patent- inspector raj provision

It is mandatory under the (Indian) Patents Act, 1970 (“Act”) for every patentee and every licensee to file a statement as to the extent of commercial working of a granted patent in the Indian territory. This working statement is embodied in Form 27 of the Patents Rules, 2003 (“2003 Rules”). Non-compliance with the requirement of filing the working statement within the prescribed timelines as per the Rules may invite penalty of imprisonment which may extend to six months, or with fine, or with both, as provided under section 122(1) (b) of the Patents Act. Noncompliance is routine and public interest petition directions of High Court resulted in Patent Amendment 2020 streamlining the procedure. 

The question is  why not do away with this requirement of working of patent?

History of Local working

The first working requirements implemented by countries were consistent with the countries’ initial approaches to their patent systems, which were guided by the notion that patents were expected to serve domestic industry.The interest in promoting domestic industry also prompted countries to impose a working requirement to ensure that the patented invention was practiced locally. A patent owner who failed to work his patent in the country that granted  the patent faced a forfeiture of the patent, or later, when forfeiture was replaced by compulsory licensing, a compulsory license for the patent.

The United Kingdom tightened its working requirement in 1902 by allowing the revocation of a patent for nonworking not only if the patent was not being worked in the United Kingdom. It was prompted primarily by concerns about the influence of the German chemical industry in the United Kingdom and its monopolization of an entire industrial sector in the United Kingdom.The U.K. law prompted German companies to purchase chemical plants in the United Kingdom, and the companies did not suffer mass revocations of their U.K. chemical patents.

In India Intellectual Property Appellate Board in 2013, and the High Court of Judicature in the same year confirmed that “worked in India” does not have to “mean only manufactured in India.

It is clear threat of revocation of patent and compulsory license does not lead to local manufacture of innovative product with the patent granted. Why not abolish this inspector raj provision? 

Reference:

https://www.natlawreview.com/article/india-patent-amendment-rules-2020-streamlining-form-27-filings

http://nopr.niscair.res.in/bitstream/123456789/15742/1/JIPR%2018%281%29%2015-27.pdf

https://www.law.uci.edu/lawreview/vol6/no3/Trimble.pdf

 

Li-Fi in FSOC mode gets into demonstration

LiFi is based on Free-Space Optical Communication (FSOC), or in other words, an optical communications technology, in which information is transmitted through the atmosphere on modulated optical beams. This technology for indoor access has been coined as the Li-Fi technology by professor Harald Hass at The University of Edinburgh, U.K, and its capabilities for indoor internet access were first demonstrated at a TED global in 2011. Later on, in 2013, his company PureLiFi became the first company to manufacture a LiFi based product.

The origins of LiFi date back to 2006. Nearly 33% of all the patents on Li-Fi technology were filed before 2011.Samsung, with 25 patents, tops the list and leaves others behind by a great margin. It filed its first patent on LiFi technology in 2007. Its first three patents were on the basic working of LiFi equipment. These patents disclose how communication using an LED bulb is possible. However, the first-ever patent on LiFi technology was filed by Huawei in 2006. There are in total 3 patents of LiFi filed in 2006, out of which, one is filed by Huawei, another by Panasonic and the third one is the result of a collaboration between Elta Systems and Optigo. 

ERNET India executed LiFi pilot project jointly with IIT Madras. The objective was to study LiFi as an alternate communication technology and perform visible light communication experiments, and explore LiFi opportunities in various deployment scenarios, such as, hospitals, smart building and smart cities. The indoor LiFi internet kit was setup at ERNET Chennai to study and demonstrate LiFi capabilities, evaluate the indoor performance and various experiments in single user scenario. As part of indoor experiment, measurement of coverage range, optical power received at different coordinates, outage analysis at different distance in both line of sight (LOS) and non line of sight (NLoS) was carried out. The experimental outcome of the test results was published in APAN44 Network Research Workshop and Global LiFi Congress 2018. Later, ERNET India worked on a Pilot R&D to provide high speed network connectivity through Free Space Optical Communication Technology providing the connectivity to Kohima Science College from Kohima Secretariat, Nagaland. Free Space Optics is a line-of-sight technology that uses invisible beams of light to provide optical bandwidth connections that can send and receive voice, video, and data information.  The technology propagates the light in free space means air, outer space, vacuum, or something similar to wirelessly transmit data for telecommunication and computer networking. It operates between the 780 – 1600 nm wavelengths bands and use O/E and E/O converters. 

Google started a series of moonshot projects. Project Loon to deliver internet in rural areas and now Free Space Optical Communication project. Google started project Loon in 2011, a mission to establish a network of air balloons that would fly in the stratosphere, delivering internet to everyone. Loon balloons have already flown over 30 million kms in tests and helped people in Puerto Rico after Hurricane Maria.With Free Space Optical Communication, aka FSOC, Alphabet has been using light for high-speed transmission between two points. The tech came to be during the development of Project Loon and is now being repurposed to solve connectivity problems down here on Earth. Basically, it can deliver fiber-like speeds at places (and countries) where it might be impossible to lay underground cable lines. Now, Aphabet is ready with demonstration of FSOC  named TAARA in Kenya.

More about TAARA: https://x.company/projects/taara/

Startups dedicated to the Aerospace sector in India (2019)

Innovation for Defence Excellence (iDEX), launched by Department of Defence Production in the Ministry of Defence in April 2018, has created huge interest in startup community to work in this reclusive sector. The Defence India Startup Challenges have brought over 500 startups which are today active in this space. The iDEX Partner Incubators have enabled Department of Defence Production to reach out to startups in all nooks and corners of the country. The progress has been extremely heartening and encouraging. On the occasion of Aero India 2019, this Coffee Table Book on startupsdedicated to the Aerospace sector in India was released.

Request for Proposal (RfP) for selection of private entities to set-up manufacturing facilities that produce Advance Chemistry Cells (ACC).

The government of India has earmarked Rs 18,100 crore as approved financial outlay for implementing the PLI scheme in the Advance Chemistry Cell (ACC) Battery vertical. NITI Aayog and Department of Heavy Industries has been made the implementing agency for the same. 

Advance Chemistry Cells (ACCs), as Niti Aayog defines it, are the new generation advance storage technologies that can store electric energy either as electrochemical or as chemical energy and convert it back to electric energy as and when required. 

The Bidder shall have a minimum Net Worth of INR 225,00,00,000 (Rupees two hundred and twenty-five crore only) per GWh, as per the capacity specified in its Technical Bid for the Financial Year preceding the date of submission of the Bid. 

In the first stage, the Technical Bid will be evaluated on the basis of the Value Addition (as defined in the Programme Agreement) committed by the Bidder, and the Scale of Production (as defined in the Programme Agreement) committed by the Bidder (the “Technical Capacity”). Only those Bidders who commit minimum 60% (sixty) percent Value Addition at the Project and installation of ACC manufacturing capacity between 5 GWh to 20 GWh, within 5 (five) years from the Appointed Date shall qualify for further consideration and shall be ranked from highest to the lowest on the basis of their technical score (ST).

Subject to Clause 11.5, 11.6, 11.7 and 11.8, , the Beneficiary Firm shall be entitled to avail the Subsidy in accordance with this Agreement for a period of 10 (ten) years from the Appointed Date.

Subject to Clause 11.5, 11.6, 11.7 and 11.8, , the Beneficiary Firm shall be entitled to avail the Subsidy in accordance with this Agreement for a period of 10 (ten) years from the Appointed Date.

Notwithstanding anything contained herein, the cumulative Subsidy payable by the Government to the Beneficiary Firm during the Term of this Agreement, shall not exceed INR 1,420 crore (Rupees one thousand and four hundred and twenty crores) per GWh.

The Structure of the documents and the Model of the bid adopted under the Programme encompasses the following key features, first, the cash subsidy shall be offered on output, i.e. the volume of cells manufactured and sold by the beneficiaries. Second, it’s a technology agnostic initiative, whereby only cells with higher performance specifications (i.e., Energy Density & Cycle Life) shall be eligible to avail of the incentives.

Download: https://niti.gov.in/sites/default/files/2020-11/Model-Bid-Documents-ACC.pdf

Creating Demand for Local Innovations- E Book free to download

This is festival time in India. We are offering E Book `Creating Demand for Local Innovation' as free to download from Kindle. Link:

https://www.amazon.in/Creating-Demand-Local-Innovations-Compendium-ebook/dp/B07XGD493G

Send your comments to : indiainvents@gmail.com

The High Court of Delhi Rules Governing Patent Suits, 2020

The High Court of Delhi is in the process of framing Rules under Section 158 of the Patents Act, 1970. A draft of the proposed “The HighCourt of Delhi Rules Governing Patent Suits, 2020” was circulated.

In the last 10-15 years, the Delhi High Court has witnessed a high growth in the number of patent infringement actions filed before it related to various scientific and technological fields including pharmaceuticals, diagnostics, mechanical engineering, telecommunications, electrical/electronics, wind technology etc. The need for the present Rules has been felt due to the complexities that have arisen in dealing with patent suits and actions. The Delhi High Court Patent Rules, 2020 shall govern the procedure for adjudication of all patent suits. The substantive provisions governing patent suits are contained in The Patents Act, 1970. Patent suits being civil in nature are also governed by The Code of Civil Procedure, 1908 (CPC) as amended by The Commercial Courts Act, 2015. 

Documents to be filed along with the Plaint: The documents to be filed with the plaint shall include, inter alia,

i) certified copies of the certificate of grant of patent along with payment of annuities thereof. 

ii. complete patent specification including title and description of invention, claims, the abstract and drawings as granted. 

iii. a list of all corresponding patent applications/grants in various countries, if any, along with their current status in a tabulated form. A standard template for the said table is below. 

iv. If a decision has been given by any patent authority in another jurisdiction, a link to the same can be provided in the table. 

v. A summary of the technology shall be annexed either as a note or as a power point presentation printed with two slides per page. 

vi. Copies of any decisions of courts or patent offices in respect of the suit patent or any corresponding patent in any jurisdiction, including decisions in pre-grant, post-grant oppositions or revocation proceedings, shall also be annexed. 

vii. Any expert report relied upon for infringement analysis. 

viii. Copies of all relevant correspondence 

ix. In case of license agreements being relied upon, copies of the license agreements redacted or otherwise. Notes on justification for license fee, if claimed. 

x. Laboratory analysis reports, if any.

Green Ammonia

Ammonia is a pungent gas that is widely used to make agricultural fertilisers. Green ammonia production is where the process of making ammonia is 100% renewable and carbon-free. One way of making green ammonia is by using hydrogen from water electrolysis and nitrogen separated from the air. These are then fed into the Haber process (also known as Haber-Bosch), all powered by sustainable electricity. In the Haber process, hydrogen and nitrogen are reacted together at high temperatures and pressures to produce ammonia, NH3. However, the process of making ammonia is currently not a “green” process. It is most commonly made from methane, water and air, using steam methane reforming (SMR) (to produce the hydrogen) and the Haber process. Approximately 90% of the carbon dioxide produced is from the SMR process. This process consumes a lot of energy and produces around 1.8% of global carbon dioxide emissions.

The first  ammonia plant was established at Rjukan , Norway in 1927, following a 1925 agreement between IG Farben of Germany, who transferred the Haber patents to Norsk Hydro in exchange for a quarter ownership, and the distribution of the products through them. During the 1930s other products came into production, including hydrogen and other gases, and from 1934 as the first plant in the world mass-produced heavy water, following a production plan by Leif Tronstad and Jomar Brun.  Together they drew up a plan for the industrial production of heavy water with hundreds of combined electrolysis, combustion and condensation cells into a cascade process, coupled with recycling, culminating in more than 99 % pure heavy water. This was the first industrial scale production of heavy water in the world. Norsk Hydro built a plant according to Tronstad’s and Brun’s design, next to the generator building at Vemork, just outside Rjukan in Telemark County. By January 1935 the material was becoming available in amounts of more than 100 g at 10 % of the American price at the time, and in 1938 about 80 kg was produced. After the German capture of the Rjukan heavy water plant in May 1940 and its efforts to replicate same in Germany worried allies and the plant was sabotaged & bombed by applies in 1943.

In India, first plant using electrolysis had come up at Nangal in 1962. It had a design capacity of 310 tons per day (tpd) of ammonia, was based on water electrolysis. Heavy water, used in the atomic energy industry, was also produced from the hydrogen gas obtained from electrolysis. Ammonia was converted first to nitric acid and then to calcium ammonium nitrate (CAN). Since the electrolysis of water is a highly power intensive process, the company had important energy needs (149 MW); these were being met by the hydroelectric plant of the Bakhra Dam located a few miles from Nangal. Power shortage led to change in feed stock and technology with addition of 1000T plant in 1978. With commissioning of this facility, hydrogen generation through power intensive electrolysis route was to be stopped which would have resulted in stoppage of Heavy Water production also. However, in order to continue heavy water production, electrolysis plant was continued to run on reduced load. With this production of Heavy Water got reduced from 14 Te./Yr. to 7 Te/year. 

Draft Data Centre Policy

MeitY has drafted a Data Centre policy to benefit the Data Centre park developers/Data Centre operators as well as the allied ecosystem of Data Centre sector. The policy intends to ensure sustainable and trusted Data Centre capacity within the country. This policy framework shall be followed by a detailed scheme with implementation guideline document providing the particulars of various fiscal and non-fiscal incentives to be provided to the sector by the Central and State Government. Download The Policy document. Pl send your inputs and feedback within 15 days to:- uma.chauhan@meity.gov.in, cmo@meity.gov.in.

Promote indigenous technology development, research and capacity building 

5.4.1 Promote local manufacturing

 5.4.1.1 Promote and encourage use of indigenous hardware (IT as well as non-IT equipment) and software products used in the Data Centres, thereby reducing the overall import burden of the country. 5.4.1.2 Extend fiscal incentives to domestic start-ups and MSMEs to develop solutions for Data Centre usage.

5.4.1.3 Incentivize global equipment manufacturers to set up manufacturing units of IT/ Non-IT components in India, catering not only to local demands but also for export purposes. 

5.4.1.4 Strengthen the testing and certification framework for the Data Centre ecosystem, including for the IT and non-IT equipment and software products pertaining to Data Centres operations.

 5.4.2 Encourage joint ventures between the foreign investors and domestic companies to promote participation from Indian companies, in the development of Data Centres. This would enable long-term capacity building of the domestic companies operating in this space. 

5.4.3 Promote R&D in Data Centre ecosystem 

5.4.3.1 Promote setting up of R&D units to create an ecosystem that will promote development of Data Centre components within the country. 

5.4.3.2 Promote technology firms to produce innovative products and services for the Data Centre ecosystem and facilitate their commercialization for sustainable growth.

 5.4.4 Promote Adoption of Established Global Standards

 5.4.4.1 MeitY shall publish and mandate minimum standards for Data Centres / Data Centre Parks in the areas of build, IT, non-IT and security. 

5.4.5 MeitY to promote global adoption of services from state-of-the-art Data Centre infrastructure available in India, through various inter-governmental initiatives / MoUs. 5.4.6 Capacity Building and Human Resource Development 

5.4.6.1 Collaborate with Ministry of Skills Development and Entrepreneurship (MSDE) and leading academic institutes to impart large scale trainings to workforce on Data Centre, Digital and Cloud technologies, and facilitate sector linkages for such trained workforce. 

5.4.6.2 Promote skill development and upgradation initiatives aimed at addressing the skill gap of trained manpower to be able to meet the demands of Data Centres and Cloud Computing Platform. Data Centre Policy 2020 DRAFT FOR DISCUSSION Page 12 of 16 

5.4.6.3 Provide assistance for these programs through Skill Development Mission at National and State Level. 

5.4.6.4 Design programs for continuous capacity building amongst government officials and personnel on Data Centre and cloud technologies, data classification, storage policies, data security and other allied technologies.

Dragon Multinational from Turkey- Arcelik

White goods industry collapsed in India after globalisation, how did the Turkish firm survive and prosper? Internationalisation and investment in R&D are two main reasons.

Internationalisation

Outward foreign direct investment (OFDI) enables both small and large MNEs to potentially enhance their competitiveness through securing access to new markets, technologies, brand names, resources and strategic assets abroad. In their constant search for better exploiting, consolidating and expanding their capabilities (or resource base), firms pursue a variety of strategies, which include product and technological diversification across fields and geographical sites . These potential enhancers of competitiveness would not be available to firms that elected to stay focused on their own domestic economy. Moreover firms that stay focused on the domestic market increasingly miss out on opportunities that are available only to firms that are prepared to internationalize – opportunities such as becoming integrated in global value chains or attracting global customers. In this paper -ACCELERATED INTERNATIONALIZATION BY EMERGING MULTINATIONALS: THE CASE OF WHITE GOODS- the authors document the rise of Haier, Mabe and Arçelik (from China, Mexico, and Turkey, respectively), as successful examples of latecomer firms that managed to upgrade their operations, evolving from the production of simple goods, generally as Original Equipment Manufacturer (OEM) subcontractors, into new product lines developed through their own design, branding and marketing capabilities.

Read : http://www.oecd.org/development/pgd/36317032.pdf

Arçelik was founded in 1955 to produce metal office furniture, and moved quickly into home appliances, manufacturing Turkey’s first washing machine in 1959 and first refrigerator in 1960. By the early 2000s it had seven production plants in Turkey to produce a complete range of home appliances.9 The company, producing 7.5 million units in 2004, is the leading firm in Turkey’s consumer durables, accounting for more than 53% of domestic sales and 54% of exports. A OEM contract in the United States was secured with Sears Roebuck in 1988 to supply refrigerators under the Kenmore name, followed a nine years later by a similar, but much larger, European deal with Whirlpool for dishwaters. Arcelik made major purchases of brands in 2002 – Blomberg (a subsidiary of Brandt) in Germany, Elektra Bregenz and Tirolia in Austria, and Leisure (cookers) and Flavel (appliances and TV sets) in Britain. In 2004 Arçelik acquired the brand name Grundig, after the German firm went bankrupt. (Arcelik had been an OEM supplier to it previously.)
 

Investment in R&D

R&D and innovation were examined in- The role of innovation in the effective international expansion of an emerging-country firm: The case of Arçelikby .

https://www.sciencedirect.com/science/article/pii/S1877042812008968

The impending entry into its largely protected domestic market of major foreign competitors once the Customs Union went into effect was another factor that necessitated quality improvements. The establishment of a Research and Development Center in 1991 appears to be the most critical decision pertaining to Arçelik’s strategy of international expansion. Arçelik A.Ş., which holds the most patent applications in Turkey, ranks 74th among 270 companies on the Global Patent Filings list published in 2017 by the World Intellectual Property Organization (WIPO). Today Arçelik A.Ş. owns one out of every three global patent applications submitted from Turkey.

Patent battles

Patent suits are inevitable part of global domination.  Arcelik, filed a case for patent infringement against South Korean appliances manufacturer LG Electronics and its subsidiaries in France and Germany. Arcelik claimed that LG Electronics used the Turkish firm's washing machine technology, named 'Direct Drive', in its devices under another name -- '6 motion'. LG filed a lawsuit against Arçelik and its German affiliates Beko Deutschland GmbH and Grundig Intermedia GmbH in connection with freezer door-ice making technology in LG Side-by-Side refrigerators. This was followed by infringement lawsuit against Beko Deutschland GmbH in Mannheim District Court in Germany for infringement of a patent for steam technology that protects certain garments from damage.

 

The Copyrightability of Illegal Works

 Eldar Haber addresses this issue at length in article `Copyrighted Crimes: The Copyrightability ofIllegal Works' (2014). Abstract of this article is as under:

Copyright law does not explicitly impose content-based restrictions on the copyrightability of works. As long as a work is original and fixed in a tangible medium of expression, it is entitled to copyright protection and eligible for registration, regardless of its content. Thus, child pornography, snuff films or any other original works of authorship that involve criminal activities are copyrightable. Such work can be highly profitable for its makers even though society does not necessarily benefit from, and might even be harmed by, the work. Along with revenue from sales, the author of an illegal work may also be able to collect damages for infringement. 

The author also explains current position in USA on content-based restrictions in Intellectual property.  Trademark law is not content-neutral, non-registrable marks usually contain a reference to drugs, sex, religion, race, or scatological imagery.  The idea that an invention, within the meaning of the patent statute, must meet standards of morality was referred to as the “moral utility” doctrine and was invoked in many cases for over 150 years. In recent years, however, courts have abandoned this doctrine,  and the current interpretation of patent law suggests that it requires only that an invention be put to a single lawful use, lacking moral examination. Hence, immorality is no longer considered a restriction in United States patent law.

An Indian perspective was posted in SpicyIP blog: https://spicyip.com/2018/09/obscenity-and-morality-under-ip-law.html.  The act prohibits the registration of a trademark which consists of “scandalous or obscene matter”. scandalous marks are ones which offend “accepted principles of morality”. IPO denied patent grant to a creative and unique sex toy.  It held that the sex toy was not patentable according to Section 3(b) of the Indian Patents Act since its use would affect “public order” and “morality”. Claiming that sex toys were neither “useful” nor “productive”, it went on to brand sex toys as “obscene” objects and state that the sale and import of them would be illegal under Section 292 of the IPC. Indian Copyright Act makes no mention that the content which is sought to be protected must be “lawful”. No legislative or judicial clarification has, however, been given on the same and hence, the question of whether the legality of content impacts copyright protection in India remains an unsettled one.

Hypothetical case on copyright.

S Yuvarajaa, an IIT Kharagpur graduate was recently arrested by RPF for allegedly making two railway ticketing applications that were faster than IRCTC website. He created ‘Super Tatkal’ and ‘Super Tatkal Pro’, which enabled users to book Tatkal rail tickets faster than the official app of IRCTC. He has been accused of bypassing the IRCTC’s ticket booking system. Yuvarajaa was arrested under Section 143(2) of the Railways Act which penalises for “unauthorised carrying on of the business of procuring and supplying railway tickets.”  

Earler media reported  TravelKhana and Rail Yatri, were sued by IRCTC for being unlicensed food delivery on trains, with both companies then compelled to apply for licenses to continue operating. 

If courts agree on illegality of Yuvarajaa mobile applications, then what happens to is copyright?

Technology for Indian Bio-refinery with bamboo as feed developed at Oulu, Finland by Chempolis

The biorefining technology company Chempolis, the Finnish energy company Fortum, and Numaligarh Refinery Limited (NRL), a state-owned Indian oil company, have formed a joint venture to construct a biorefinery in the state of Assam in Northeast India.The biorefinery will use 300,000 tons of bamboo annually from the vast natural and cultivated bamboo reserves of Northeast India. The plant will produce annually 60 million liters of bioethanol, 19,000 tons of furfural, 11,000 tons of acetic acid, and 144 gigawatt hours of green energy. Chempolis was founded in 1995 with headquarters in Oulu,Finland.

Pilot project entitled “Torrefaction of Bamboo” has been successfully carried out at IISc with funding DST.This project was taken to enhance the storability of bamboo and also generate a product which can be a cheaper substitute for applications where black charcoal is currently being used. GP Green Systems Pvt. Ltd, Kolkata, had set up three of gasifiers (nominal capacity 600 kg/ hr biomass) at Mangaldoi, Assam, to produce gas having calorific value 1,250– 1,350 kcal/Nm3 (or 5.25 MJ–5.65 MJ/ Nm3 ). This gas was meant to replace high speed diesel (HSD) used as a fuel in the biscuit plant of ITC. The venture proved to be a great success to the satisfaction of the customer. The plant at Mangaldoi was commissioned in June 2016 and since then it has been in continuous operation.

In October 2006, the Government of India (GOI) had launched the National Bamboo Mission (NBM) on the basis of the National Mission on Bamboo Technology and Trade Development Report, 2003. The NBM’s key objective was to address issues relating to the development of the bamboo industry in the country, provide a new impetus and direction and enable the realisation of India’s considerable potential in bamboo production. Multi-disciplinary and multi-dimensional in its approach, major interventions planned under it were to focus on research and development, plantation on forest and non-forest lands through Joint Forest Management Committees (JFMCs) or Village Development Committee (VDCs) and to ensure the supply of quality planting materials by establishing centralised and kisan/mahila nurseries. 

Global Game of SEP litigation and How India is drawn into it

Standards are technical requirements or specifications that seek to provide a common design for a product or process. Patents which are essential to a standard and have been adopted by a Standard Setting Organization (SSO) are known as SEPs. However, the exclusive rights conferred by patents on inventors may defeat the object of making standards available to all for public use. In order to address this problem, most SSO’s have defined IPR policies where SSO members must commit to licensing their SEPs on terms and conditions that are “Fair, Reasonable and Non-Discriminatory” (FRAND). These commitments are meant to protect technology implementers while ensuring that Patent holders receive an appropriate reward for their investment in research and development. SSOs can be governmental, quasigovernmental or private. These are responsible for setting, developing, coordinating, interpreting and maintaining standards. The Bureau of Indian Standards is India's national SSO. In the Information and Communications Technologies sector the Telecom Engineering Centre is the only formally recognized telecom standards/ specification/type approval body in India. Global ICT Standardization Forum for India, Telecommunications Standards Development Society, India (TSDSI), and Development Organization of Standards for Telecommunications in India are private SSOs in the Indian ICT sector.The Institute of Electrical and Electronic Engineers and International Telecommunication Union are prominent SSOs in the cellular and Wi-Fi space. Licensing SEP on FRAND terms is a voluntary contract between the SSO and the SEP holder. However, the meaning of FRAND has not been defined by SSOs; it depends upon the nature of the transactions between the SEP holder ("licensor") and the SEP implementer ("licensee"). The first SEP dispute in India was Telefonaktiebolaget Lm Ericsson (Publ) v Mercury Electronics, in which Ericsson filed an infringement suit against Mercury Electronics and Micromax Informatics Ltd, claiming infringement of its eight SEPs used in 2G, 3G and 4G devices. Read here.

Anti-Suit injunctions or ASIs have extended judiciary decisions beyond country borders. courts in the U.S. and UK adjudicating cases involving standards-essential patents and FRAND licensing commitments have increasingly issued injunctions preventing one party from pursuing parallel litigation in another jurisdiction. After all, the notion that ASIs sought by SEP implementers can be acceptable and compliant with patent law has been confirmed by a US court in Microsoft v. Motorola (see the first instance ruling (W.D. Wash. 2012), affirmed on appeal (9th Cir. 2012)).The UK suit was recently decided by the UK Supreme Court, [2020] UKSC 37, which held that a UK court has the authority to set a global FRAND royalty rate between the parties, notwithstanding its lack of jurisdiction over patents outside the UK. Supreme People’s Court (SPC) of China followed with ASIs. Conversant sued Huawei in the District Court in Düsseldorf, Germany, alleging infringement of several European patents. On August 27, 2020, the Düsseldorf court granted Conversant an injunction against Huawei’s sale, use or importation in Germany of devices infringing patent EP1797659 (the German Patent). On the same day, Huawei applied to the SPC seeking an “act preservation” ruling (a judicial action roughly equivalent to an ASI) to prevent Conversant from enforcing the Düsseldorf injunction until the conclusion of the Chinese proceedings.  The SPC granted the ASI after an ex parte hearing in which Conversant did not participate. 

Anti-Anti-Suit Injunction (AASI)  followed ASIs, initially in Germany and France, landed now in India. The dispute between InterDigital, a U.S.-based patent assertion entity, and Xiaomi, a Beijing-based electronics firm, relates to five InterDigital patents covering the 3G and 4G standards.   When negotiations for a license failed, on June 9, 2020 Xiaomi sought a declaration by the Wuhan Intermediate People’s Court of the appropriate FRAND royalty rate for the patents.  On July 29, InterDigital sued Xiaomi for infringement in the Delhi High Court in India, seeking monetary damages and an injunction. In response, on August 4, Xiaomi asked the Wuhan court for an “act preservation” ruling (ASI) preventing InterDigital from enforcing the injunction while the Wuhan proceeding was in progress.Accordingly, on September 23, the Wuhan court (a) ordered InterDigital to withdraw its requests for injunctive relief in India, (b) prohibited InterDigital from seeking injunctive relief in China or any other country with respect to the 3G/4G patents currently at issue in the Wuhan case, and (c) prohibited InterDigital from asking another court in China or any other country to determine a FRAND royalty rate or resolve a FRAND dispute relating to the 3G/4G patents at issue.In response to the entry of the ASI by the Wuhan court, InterDigital disclosed to the U.S. Securities and Exchange Commission (first reported by IAM) that on September 29, it filed for an anti-anti-suit injunction (AASI) in the Delhi High Court to prevent Xiaomi from enforcing its Chinese ASI.   

SEP owners are in USA and Europe ,China has large licensees. Position may change with Chinese firm owning SEPs in future. India has neither SEP owners nor manufacturers needing SEP.

Reference

https://spicyip.com/2020/10/china-enters-the-realm-of-anti-suit-injunctions-in-standard-essential-patent-sep-cases.html

https://conflictoflaws.net/2020/anti-suit-injunction-issued-in-china-comity-pragmatism-and-rule-of-law/

https://patentlyo.com/patent/2020/10/contreras-injunctions-litigation.html?utm_source=dlvr.it&utm_medium=twitter