Centre for Internet and Society

Report on the 31st Session of the Standing Committee on Trademarks

puneeth — 2014-05-06T07:22:11Z

Puneeth Nagraj reports about the 31st Session of the Standing Committee on Trademarks (SCT) that he attended.

The 31st meeting of the SCT was held from March 17 to 21, 2014.[1]The meeting was important as Members sought to finalise the issues in the Design Law Treaty (DLT) before the Diplomatic Conference. The session also saw proposals by the delegations of Jamaica, the United States and Hungary.[2].

Adil El Maliki of Morocco was elected Chair, and Mr. Imre Gonda of Hungary and Ms. Günseli Güven of Turkey were elected Vice-Chairs of the 31^st session. The Session was dominated by negotiations around the DLT and very little time was devoted to the Plenary attended by this observer.

Design Law Treaty

The 31^st session had a mandate from the WIPO General Assembly to finalise the text of the DLT before the Diplomatic Conference. However, disagreements over the technical assistance and capacity building provisions threatened to delay the process further. While Developing Countries preferred a provision in the Treaty on technical assistance, developed countries were against a binding provision and were in favour of a resolution on the issue.

Members of the African Group insisted that a Diplomatic Conference would be convened only if the Treaty included a provision on Technical Assistance and Capacity Building. The Delegate of Kenya said that the adoption of this treaty would require significant changes in the national IP systems of developing countries which are likely to go beyond the capacity and ability of individual countries to implement the treaty. The Delegate then emphasised the need for such a provision in upgrading their national IP system to conform with and to implement the treaty. The stance of the Kenyan delegate was further supported by Brazil, the GRULAC and Bangladesh in addition to other DAG members.

The delegate of Japan on behalf of Group B said that the text of the designs law treaty aimed to streamline and enhance design law formalities and would benefit all countries irrespective of their status of development. The delegate also stated that the issue of technical assistance should not stop the convening of a Diplomatic Conference. The EU on a similar note said that the convening of a Diplomatic Conference should be priority outcome of the 31^st Session.

Proposals

The delegate of Jamaica submitted a proposal for the protection of country names.[3]The proposal sought to establish a coherent and consistent framework to deal with trademark cases which deal with country names. The proposal received support from some delegations in addition to suggestions to revise it. Switzerland emphasised the need for “pragmatic affordable way to protect country names” and to ensure that product names were used only for countries that produce such products. The EU also noted that this issue has been under discussion since 2009 and called for an awareness mechanism to ensure refusal of trademarks for products with country names. The US raised many doubts as to whether such a proposal would be feasible arguing that the government would have to act as a brand owner like others and that this was not a historical role that governments have played. The US also stated that not all countries shared an interest in protecting such rights and that it was premature to initiate text based questions on the proposal. Instead, the delegate called on the chair to conduct research on whether a system to protect country names could exist. In response to suggestions, the delegation of Jamaica offered to consider them and present a revised proposal at the next session.

There were also two proposals on Geographical Indications. The US submitted a proposal to suggest a work plan for the reform of the GI filing system.[4] While some delegations supported this proposal, others expressed opposition. The delegation of Hungary submitted a joint proposal to conduct a study concerning the protection of geographical indications in the domain name system. Again opinion on this proposal was divided- with some asking for more time to consider the proposal since it was submitted late. The Chair cited the lack of agreement on these proposals to put off further discussions until the next session.

[1]. See http://www.wipo.int/meetings/en/details.jsp?meeting_id=32083.

[2]. The Hungarian proposal was jointly sponsored by Czech Republic, Germany, Hungary, Italy, Moldova and Switzerland.

[3]. See SCT/31/5.

[4].See SCT/31/7.

For more details visit http://editors.cis-india.org/a2k/blogs/report-on-31-session-of-standing-committee-on-trademarks

Report on the WIPO Director General’s Meeting with NGO’s

puneeth — 2014-04-30T05:33:27Z

The Director General’s meeting with NGO’s was held on March 25, 2014. This is an annual meeting where accredited NGO’s have an opportunity to have a one on one discussion with the Director General on issues that concern them.

The webcast of the meeting can be found here.

This year’s meeting featured queries on a whole range of issues from mainstreaming the development agenda recommendations to the number of WIPO meetings. The Director General engaged in a frank exchange of views with NGO representatives and stressed the importance of NGO’s in WIPO’s work.

Opening Statement

The meeting kicked off with a statement by the Director General. He reported that the demand for IP titles was greater than the world economy- citing the growing number of patent and trademark applications. He also commended the SCCR in concluding the Marrakesh Treaty and said that the engagement and alignment of civil society actors was crucial to the signing of the Treaty. He also noted the role of the World Blind Union and the publishing community in supporting the Treaty.

The Director General also had updates on the work of various committees for the 2014-15 biennium. With respect to the Design Law Treaty in the SCT, he stated that the US and Canada had accepted the possibility of an article on technical assistance but not as a condition to convene a diplomatic conference. On the Broadcast Treaty in the SCCR, he said that a lot of work needs to be done and that the SCCR needs to decide if a Treaty with a narrower scope is feasible and if a Diplomatic Conference has to be convened in September. On the IGC, he stated that this committee was WIPO’s greatest political risk and that the Committee must find a way to deliver on a project that has been on since 2001.On the Lisbon Agreement, the Director General stated that 28 States had agreed to renew the agreement and the new agreement would cover GI and Appellations. He noted that this was a huge step forward as GI’s become more and more valuable.

In addition, he noted three areas of interest for the future work of the WIPO:

Balance between collaboration and competition: The Director General noted that there should be greater emphasis on collaboration and competition at the WIPO. He called for emphasis on cooperation, open innovation in global value chains. At the same time he stated that IP also creates competition. He stated that the tension between competition and collaboration should be under consideration in the future as it is growing into a major geopolitical issue.
Digital Economy: The Director General said that Member States should engage on the impact of an increasingly digital world on the environment. While this issue has been under discussion since the 90’s, there have been new developments that need further consideration.
Appropriate Technology: The Director General commented on the passive transfer of technology and said that there is a knowledge gap between having technology and knowing how to use it, and this should be kept in mind in future wok.

Q&A

Following the opening statement, the Director General fielded questions from NGO representative. Below is a summary of a few notable responses from the Director General.

On a question regarding the mainstreaming of the Development Agenda, the Director General said that it is up to the Members to decide how to make the Development Agenda normative. But he pointed out that both the Beijing and Marrakesh Treaties refer to the Development agenda in their text.

In response to a question on future plans and projects on public health and IP, he said that the WIPO is encouraging research projects on the issue. He also pointed out that the WTO, WIPO and WHO are engaged in an active collaboration on this issue and had also organised a seminar on it. He also said that the three Director Generals had published studies on the topic.

MSF made a number of interventions on the issue of public health. They argued that ongoing WIPO research did not meet the needs for medical innovation and that there was need for serious rethink on how to make it work better. They also said that the focus of WIPO research was currently only on LDC’s and this left out developing countries and consequently a large number of people.

In response the Director General said that the WIPO could only “build with what it’s got” and said that they should engage with more parties and with what they do. He also said that they are beginning to engage with middle income countries. He also said that WIPO research was free and that it could be easily shared and the fee was only if there was a sale.

MSF also called for a change on the nature of technical assistance as there were repeated seminars on anti-counterfeiting measures with little or no focus on the quality of medicines. On this, the Director General agreed with MSF and said that the larger problem was quality assurance which needed to be addressed, but he also pointed out that WIPO as an IP agency could not get into the issue of quality assurance.

He also fielded a question from the author on making WIPO sessions more accessible with the possible use of remote participation in the future. The Director General said that this was a good idea, but he pointed out that this was up to the Members to consider and possibly implement. He also noted that it was only recently that WIPO started webcasting meetings and that there would be issues of time management with remote participation.

On a question about the increasing number of meetings at the WIPO, the Director General acknowledged that this was a problem and that the respective Committees had to decide if it was essential to convene a meeting ever so often. But he also pointed out that the Secretariat cannot interfere in such matters and could only facilitate discussion on these issues. He also said that it might be better if experts met regularly to discuss technical issues and negotiators met only when an issue had matured.

On a further question on the number of documents being released for every meeting and their increasing length, the Director General joked that it was unlikely that anyone under the age of 30 would read all the documents. He said that this is an issue that should be looked into.

For more details visit http://editors.cis-india.org/a2k/blogs/report-on-wipo-director-general-meeting-with-ngos

Report on CDIP-12

puneeth — 2014-04-22T09:53:55Z

The 12th meeting of the Committee on Development and Intellectual Property (CDIP) was held from November 18-21, 2013 at WIPO. This report discusses the proceedings of the meeting and issues that CIS could get involved at future CDIP meetings.

Agenda

The most important item on the Agenda of CDIP was to finalise the terms of reference for the Independent Review of the Implementation Development Agenda Recommendations under the Coordination Mechanism as per the request of the WIPO General Assembly (CDIP 12/5). However, the Committee was unable to reach a consensus on the Terms of Reference for the Independent Review and further discussion has been put off until the next CDIP.

In addition, the CDIP considered and discussed Progress Reports on the following ongoing WIPO projects:[1]

Specialized Databases’ Access and Support – Phase II;
A Pilot Project for the Establishment of “Start-Up” National IP Academies – Phase II;
Strengthening the Capacity of National IP Governmental and Stakeholder Institutions to Manage, Monitor and Promote Creative Industries, and to Enhance the Performance and Network of Copyright Collective Management Organizations;
Project on Intellectual Property and Product Branding for Business Development in Developing Countries and Least-Developed Countries (LDCs);
Project on Intellectual Property and Socio-Economic Development;
Project on Intellectual Property and Technology Transfer: Common Challenges – Building Solutions;
Project on Open Collaborative Projects and IP-Based Models;
Project on Patents and Public Domain;
Project on Enhancing South-South Cooperation on IP and Development Among Developing Countries and Least Developed Countries;
Project on IP and Brain Drain;
Project on IP and the Informal Economy;
Strengthening and Development of the Audiovisual Sector in Burkina Faso and Certain African Countries; and certain African Countries; and
Project on Developing Tools for Access to Patent information – Phase II.

The Committee also discussed ongoing projects like measuring WIPO’s contribution to the Millennium Development Goals, proposal for new WIPO activities related to the use of Copyright to promote access to information and creative content, and a study on Patents and the Public Domain.[2]

The following section discusses areas where CIS can play a role at future CDIPs.

Future work for CIS

Using Copyright to Promote Access to Information and Creative Content

This project is aimed at using copyright to promote access to information in three areas: education and research; software development practices, including free and open source software; and public sector information. In addition the WIPO is also looking at new projects that may help Member States achieve development goals through improved Access to Knowledge. In CDIP 11, the Committee identified six projects which could be carried out by the CDIP in the pursuance of these aims. These projects are a result of a paper by Sisule Musungu assessing the feasibility of WIPO projects in the area. [3] The implementation plan for the above was presented at CDIP 12. The six projects are as under:

Pilot Project on Creation of a Centralized Database in order to make IP-Related Education and Research (E&R) Resources Available on an Open Access (OA) Basis
Applicability of Open Licensing to E&R Resources produced by International Organizations
Development of a Training Module on Licensing and Open Source Software Development
Integrating Open Source Licensing in WIPO Copyright-Related Courses and Training Programs
Development of Model Copyright Policies and Legal Provisions for Different Copyright Approaches to Public Sector Information
International Conference for Least-Developed Countries (LDCs) on Copyright and the Management of Public Sector Information

Discussion at CDIP 12

Thiru of KEI proposed a project on a possible model copyright law similar to the Tunis Model Law for Developing Countries adopted in 1976.[4] However, the delegation from the US objected to such a proposal. Representatives from many countries suggested modifications to the 6 proposals under discussion. Revised findings will be discussed at the next CDIP.

Scope for CIS work

Many of the proposals under consideration speak directly to the work being done by the A2K team in the Indian context. I will be contributing to a critique by the TWN on these projects. Such critiques can continue on the one hand. On the other hand, CIS can get involved in the preparatory work in the lead up to future CDIPs by working closely with the south centre and TWN to mobilize opinion among developing countries. Our expertise from working with domestic policy issues in India will come in handy in shaping future work commissioned by the WIPO in these areas.

Study on the Public Domain (II)

This is the second in a series of studies commissioned by the WIPO under the Project on Patents and the Public Domain (CDIP/7/5/Rev). The paper was authored by James Conley, Peter Bican and Neil Wilkof. Among other things, it concludes that the patent process contributes to a richer public domain. While the conclusions are acceptable in principle, the paper makes some troubling assumptions with regard to the public domain and also some surprising claims with respect to Patent Pools.

Discussion at CDIP 12

TWN pointed out that the study was restricted in scope as it defined the public domain as being limited to information that has lost its patent protection either through expiration of the term of the patent or through other processes that make the patented information part of the public domain de facto. While the author offered to revise the scope of the study, the US objected to it. At a later point, the representative from Egypt picked up on this critique but wrongly attributed it to the EU. When this was pointed out, he withdrew his statement. As it stands, the study will not be revised.

Scope for CIS work

The most surprising conclusion of the paper is that Patent Pools serve to narrow the public domain or that on a scale of contribution to the public domain rank second to last to Non-Practicing Entities (NPEs). I will be contributing to the TWN critique and focus on the conclusions with respect to Patent Pools. Given the implications of the study to our Pervasive Technologies project, we should get involved in the larger project on Patents in the Public domain and respond to future work in the area as well.

[1]. For a summary of the Progress Reports, see CDIP/12/2

[2]. For a full list, see the Agenda of CDIP 12

[3]. CDIP/11/6

[4]. See http://portal.unesco.org/culture/en/files/31318/11866635053tunis_model_law_en-web.pdf/tunis_model_law_en-web.pdf

For more details visit http://editors.cis-india.org/a2k/blogs/report-on-cpdip-2

NGO Profile: Third World Network

puneeth — 2014-03-14T13:32:07Z

In the second blog in this series, I profile the work of the IP team of Third World Network (TWN) at the various International Organisations in Geneva.

About the Organisation

Third World Network is an organisation that engages in research and advocacy relating to development, developing countries and North-South affairs. Their mission is to bring about a greater articulation of the needs and rights of peoples in the South, a fair distribution of world resources, and forms of development which are ecologically sustainable and fulfil human needs.[1] As an international NGO, they have a strong presence in Geneva representing third world interests in many of the International Organisations that are located here.

International Organisations in Geneva

TWN attends meetings at the WIPO, WHO and is part of APBREBES which has observer status at UPOV. It also follows the activities of the WTO TRIPS Council (although it is not an observer). Their work is centred on development issues and issues affecting developing countries in particular and largely revolves around meetings/sessions held by these organisations.

Work at the WIPO

TWN closely follows all the main WIPO Committees including the Development and Intellectual Property (CDIP), the Standing Committee on the Law of Patents (SCP), Standing Committee on the Law of Trademarks, Industrial Designs and Geographical Indications (SCT) and the Standing Committee on Copyright and Related Rights (SCCR).

Activities
TWN’s main activities with regard to WIPO consists of monitoring and reporting on developments in various WIPO committees and also providing relevant technical assistance and expertise on various issues being discussed. Members of the team also document the proceedings of relevant meetings, which is then used to produce analysis for public consumption.

TWN also produces documents summarizing the issues to be discussed before a meeting as part of their advocacy efforts. This helps raise awareness regarding issues that may affect developing countries. They sometimes engage in capacity building through policy research to engage with representatives from developing countries in order to better inform policy makers.

Publication

TWN publishes reports and analysis of the proceeding of the WIPO meetings via its mailing list –IP Info.. The published articles are available on their website.

[1]. See http://www.twnside.org.sg/twnintro.htm

I would like the thank Alexandra Bhattacharya for agreeing to do the interview which was the primary source of this blog.

For more details visit http://editors.cis-india.org/a2k/blogs/ngo-profile-third-world-network

Report on the 9th Session of the WIPO Advisory Committee on Enforcement

puneeth — 2014-03-14T13:54:36Z

The 9th Session of the Advisory Committee on Enforcement ended here in Geneva last week. In this report, I look at the major issues discussed at the Session and the deadlock over future work of the Committee.

The 9^th Session of the Advisory Committee on Enforcement (ACE) was held from 3^rd-5^th March here in Geneva. The Meeting featured presentations from Member States, NGOs and IP experts from around the world on the use of alternate dispute resolution mechanisms for the settlement of IP disputes.

About ACE

Unlike other Committees, the ACE is a knowledge sharing platform where Member States discuss their experiences in relation to the enforcement of intellectual property. The Committee’s Mandate is limited to discussing technical assistance and coordination in the field of enforcement and specifically excludes norm setting. There is little debate and most of the proceedings are based on presentations.

9^th Session

Ambassador Thomas Fitschen, Deputy Permanent Representative, Permanent Mission of Germany, was elected as the Chair of the 9^th Session of the ACE, and was a proactive chair during the session, encouraging States to resolve disagreements through compromise and ensuring the session ran on time. Ms Ekaterine Egutia, Deputy Chair of the National Intellectual Property Center (SAKPATENTI) of Georgia, and Mr Wojciech Piatkowski, First Counsellor, Permanent Mission of Poland were elected as Vice-Chairs.

The presentations kicked off with Mr Trevor Cook from Wilmer Hale who made an informative presentation about the resolution of international IP disputes through ADR. In all the Session saw 22 presentations on two broad issue areas:

Practices and operation of alternative dispute resolution (ADR) systems in IP areas; and
Preventive actions, measures or successful experiences to complement ongoing enforcement measures with a view to reducing the size of the market for pirated or counterfeited goods.[1]

Notable among the presentations is the growing cooperation between private actors and States in the enforcement of IP rights, and the use of outreach programmes at the grassroots level to increase awareness about IP rights. The issue, however is whether these programmes paint a holistic picture of IP rights- with due regard for flexibilities or merely stress on the importance of enforcement of rights.

Discussion

Developing countries raised issue with the fact that the ACE was becoming enforcement centric and not enough attention was being paid to coordination and technical assistance. They stressed the relation between development and enforcement of IP in developing countries. The delegation of Egypt on behalf of the Development Agenda (DAG) Group in particular highlighted the fact that Development Agenda Recommendation 45 and other items directly related to the competencies of the ACE, but the ACE had to expand the scope of its discussions to make them consistent with the objective of building respect for IP, which is broader and more inclusive than sheer IP enforcement.[2]

However, the Delegate of the Czech Republic on behalf of the CEBS (Central Europe and Baltic States) Group stated that IP enforcement was a key tool to development and allowed countries to be more competitive and was in line with Recommendation 45. Echoing the sentiment, the delegate of Japan on behalf of Group B (which comprises Japan, US, EU and other developed countries) stated that the core agenda of ACE, namely, the exchange of experiences on enforcement contributed to Recommendation 45, and that the strength of IP enforcement mechanisms in a country were becoming an important factor for investors to invest in a country- and this in turn contributed to the overall development of the country.

Future Work

There was agreement on proposals 1 and 2 (which were already discussed during the current session) with respect to future work of the Committee, as under:

Continuation of practices and operation of alternative dispute systems in IP areas
Preventive actions, measures or successful experiences to complement ongoing enforcement measures with a view to reducing the size of the market for counterfeit or pirated goods.

However, there was a deadlock on item 3; and there was insufficient time to discuss items 4 and 5. Item 3, proposed by the DAG Group related to exchange of information and national experiences on WIPO’s enforcement-related technical assistance to build respect for IP[3] . The disagreement was on extending legislative and administrative assistance to prevent abuse of IPR enforcement procedures and to use the flexibilities of the IP system. Group B objected to this as they believed it sent the wrong message. But the proposers were keen on the holistic treatment of IP and the importance of public interest considerations with respect to enforcement.

Item 4, proposed by Group B related to the exchange of information and national experiences on awareness building activities as a means for building respect for IP, especially among school aged children and students. Item 5, proposed by Poland, the US and UK was about the specialization of the judiciary and intellectual property courts. These issues will be discussed under future work of the committee at the next session of the ACE to be held in 2015.

[1]. See http://www.wipo.int/enforcement/en/news/2014/news_0003.html

[2]. See Chair Summary of the 9th Session (yet to be made public, in file with the author).

[3]. Italicised text represents the exact wording of the proposal.

For more details visit http://editors.cis-india.org/a2k/blogs/report-on-ninth-session-of-wipo-advisory-committee-on-enforcement

NGO Profile: Knowledge Ecology International

puneeth — 2014-03-11T16:10:57Z

As CIS’ observer in Geneva, I will be profiling NGOs and other prominent actors at the WIPO. In the first in a series of blogs, I profile the work of Knowledge Ecology International (KEI) at the various International Organisations in Geneva.

Knowledge Ecology International (KEI) is an NGO that searches for better outcomes, including new solutions, to the management of knowledge resources. KEI is focused on social justice, particularly for the most vulnerable populations, including low-income persons and marginalized groups.[1]

KEI has a strong presence in Geneva and their works revolves around the International Organisations that are located here. Their Geneva office is run by Thiru Balasubramaniam, who previously worked with the WHO.

International Organisations in Geneva

KEI is active in the World Intellectual Property Organization (WIPO), the World Health Organisation (WHO) and the World Trade Organization (WTO) in Geneva. At the WHO KEI is represented at the World Health Assembly and the WHO Executive Board. KEI was alsoan active participant at the Intergovernmental Committee on Public Health, Innovation and Intellectual Property (IGWG), which existed from 2006-08.

At the WTO, KEI is engaged in work around TRIPS council meetings- this includes technical assistance to Members and research and analysis of the outcomes of these meetings (the TRIPS Council unlike the WIPO is not open to Observers). KEI along with other NGO’s are also looking towards a possible Treaty on the Supply of Global Public Goods.

Work around WIPO

KEI is active at the following WIPO Committees: the General Assembly, the Standing Committee on the Law of Patents (SCP), the Standing Committee on Copyright and Related Rights (SCCR), the Committee on Development and Intellectual Property (CDIP). Their work in these areas is outlined below:

KEI has been actively involved in the Development Agenda at the WIPO from the beginning. They have actively participated in shaping discussions related to the transfer of technology and access to knowledge (A2K). Jamie Love, the Director of KEI was commissioned by the WIPO to author a paper on Alternatives to the Patent System. KEI had also mooted the idea for a Global Conference on Open Collaborative Research in 2003. The idea had widespread support from the scientific community, which saw fruition with the organization of the conference in January, 2014.

KEI was instrumental in the conception and passage of the Treaty for the Visually Impaired (TVI) at the WIPO. They are currently engaged in work surrounding the Broadcast Treaty and Limitations & Exceptions for Libraries and Archives. KEI’s stance[3] on the former is that the proponents of the Treaty have not made a strong enough case in favour of the Treaty and that it could potentially impede access to knowledge and create barriers to the enjoyment of the internet. On the latter, they believe that the Berne appendix must be revisited to recraft it to strengthen the education exception and that the Tunis Model Law on Copyright for Developing Countries (1976) should also be used as a way for developing countries to serve their education and libraries needs.

Publication

KEI’s publications and Research Notes can be accessed here. In addition, they run two Listserves on IP-Health and A2K which can be accessed here.

I would like to thank Thiru Balasubramaniam, KEI’s representative in Geneva for agreeing to do the interview which was the primary source of this blog.

[1]. See http://www.keionline.org/about

[2]. The proposal can be accessed here: http://keionline.org/sites/default/files/kei_wto_agreement_on_public_goods.pdf

[3].Interview with Thiru Balasubramaniam on file with the author.

For more details visit http://editors.cis-india.org/a2k/blogs/ngo-profile-knowledge-ecology-international

Do You Have the Right to Unlock Your Smart Phone?

puneeth — 2013-08-07T07:32:52Z

In this blog post Puneeth Nagaraj looks at the recent controversy over the expiration of the exemption granted by the US Library of Congress for unlocking phones and compares the Indian position as per a 2005 Andhra Pradesh High Court judgment.

Being a gadget freak in India is difficult. Smartphone companies take months to release their latest product in India (if they do at all) and even when they are released, they are overpriced. For instance, Google's offering in the entry level tablet market, the Nexus 7 was released in India only in April — a full 9 months after its US debut. It is priced at Rs. 16,000 (USD 300) while it costs only USD 200 in the US. Google’s other device Nexus 10 is yet to make its way to the Indian market.

For long, the Indian gadget freak has relied on friends or family travelling abroad to get his/her hands on the latest gadgets on offer. It was not uncommon in the days following the release of the earlier models of the iPhone for eager owners of foreign bought phones to unlock or “jailbreak” their phones so they could use it in India. But the practice of “jailbreaking” or “android rooting” (hereinafter referred to as unlocking [*] for convenience) phones serves a wider purpose. Unlocking smart phones allows users to overcome limitations imposed by hardware manufacturers or carriers. As a result, users can freely switch service providers. While some manufacturers (like Apple) strongly oppose unlocking- even threatening to cancel warranty in case of unlocked devices, others do not mind it and some (like Google and HTC) even encourage it.

US Library of Congress Exemption

The whole controversy surrounding the legality of unlocking phones started in the US last October when the Library of Congress decided against renewing a copyright exemption it granted in 2006. As a result, the exemption expired in January and caused a furore in the US. The DMCA (1201 of the USC), prohibits circumvention of technological measures that protect access to a copyrighted work. This sort of protection is necessary to protecting copyrighted works in a digital format. But the US Congress was informed of the restrictive effects of such a prohibition. Consequently, the Congress created statutory exemptions to allow circumvention of these technological measures and empowered the Library of Congress to grant or renew such exemptions.

Despite the exemption granted by the Library of Congress in 2006, many phone companies successfully sued hardware providers who enabled unlocking of phones. With the expiration of the exemption in January, the status of phone unlocking hangs in a balance. This is especially troublesome as it is a widespread and in some cases essential practice. Both the White House and the FCC have been petitioned to legalise unlocking. In response, four different proposals have been tabled in the US Congress just for this purpose (here is an analysis of each of the bills).

At the moment, the unlocking of phones to run unapproved software is still legal as a result of an exemption granted in 2012. But this is also up for review in 2015. There is a need for a more comprehensive solution to address both these issues and the proposals before the Congress fall short.

Indian Position

Syed Asifuddin v. State of Andhra Pradesh
A case based on the unlocking of phones came before the Andhra Pradesh High Court in 2005. Certain Employees of TATA Indicom had facilitated the migration of customers contracted to Reliance for 3 years by unlocking their phones. Representatives of Reliance filed a criminal complaint against them alleging criminal breach of trust (IPC Section 409), cheating (IPC Section 420) and criminal conspiracy (IPC Section 120). They also claimed the violation of copyright and sought punishment under Section 63 of the Copyright Act, as well as Section 65 of the IT Act.

The court dismissed the criminal petitions under the IPC, IT Act and the Copyright Act. However, on the question of copyright infringement, the court held that if a person alters computer programme of another person or another computer company, the same would be infringement of copyright. The court also found that a cell phone would fall under the definition of a computer under Section 2(1) (i) of the Information Technology Act. Consequently, the court held that Section 65 of the IT Act, which deals with the tampering of computer source documents, would be applicable to the present case. The decision itself may not have precedent value on the issue as the High Court was merely ruling on the admissibility of the case on the basis of the above provisions and sent the matter back to the trial court to decide based on the evidence available. But the opinion of the court on copyright infringement and the IT Act is troubling.

Criticism

First, the court used the rather expansive definition of computers in the IT Act (Section 2(1) (i)) to include mobile phones as well. The definition under the above section reads as under:

any electronic, magnetic, optical or other high speed data processing device or system which performs logical, arithmetic and memory functions by manipulations of electronic, magnetic or optical impulses, and includes all input, output, processing, storage, computer software or communication facilities which are connected or related to the computer in a computer system or computer network.

It would not be unreasonable to see smartphones as being capable of “high speed data processing” or “input, output, processing, storage”. However, the phones in question here were basic Samsung N191 and LG-2030 phones (images of these phones can be seen here and here). Even if it might be conceivable that such basic phones can be put in the same bracket as desktop computers or laptops, the court had to examine the definition in the context of the substantial provision. In this case, the substantial provisions were Section 65 and 66 of the IT Act, which deal with tampering source documents and hacking computer systems respectively. So, by equating a basic mobile phone to a computer, the court equated unlocking a mobile phone to hacking a computer. This problem is exacerbated by the fact that Section 66 prescribes criminal punishment to hackers.

Second, the court also erred in its ruling on the Copyright Act. Once again, the court held a basic phone to mean a computer under Section 2(ffb). More worryingly, it was held that the Electronic Serial Number (ESN), a unique code given to every phone would qualify as a computer program under Section 2(ffc) and is thus subject to copyright under Section 14 of the Copyright Act. In doing so, the court has set the bar extremely low for copyrightablity of computer programs. Needless to say this judgment needs to be reconsidered if not watered down. While there is recognition that bootloader protection programmes barely meet the standard for copyright, the Andhra Pradesh High Court has granted protection to a randomly generated 11 digit number.

Fortunately, the case of Syed Asifuddin was not a final ruling on the issue as the court sent the matter back to the trial court. However, there is every chance that a future court can rely on the erroneous reasoning in this case. Further, fair use arguments can always be mad in the favour of an individual consumer who wishes to migrate to another service provider.

The larger problem is that by giving an expansive meaning to the provisions in the Copyright Act and the IT Act, it can be used to target businesses that facilitate unlocking devices that can be targeted (like in the US). Unlike in the US, phone unlocking is not a business in India and is usually done by small business owners who sell and repair mobiles. The consequences of suing such businesses can be worse in India as they can end up in jail for an act that falls in an undefined area of the law. It seems that the situation may be resolved in the US in the near future in favour of the consumer — although the issue of the business of unlocking phones must be resolved finally. The position in India is worrisome especially due to the threat of criminal persecution.

[*]. The term jailbreaking is used specifically in the case of iOS devices and android rooting, as the name suggests is used in the case of android devices. Technically speaking, they are very different given that most android devices do not restrict access to their “bootloaders”. Acknowledging the difference between the two, the discussion here is focused on overriding technological measures meant to protect underlying copyrighted works.

For more details visit http://editors.cis-india.org/a2k/blogs/do-you-have-right-to-unlock-your-smart-phone

Comments on the Draft Guidelines for Computer Related Inventions

puneeth — 2013-08-02T08:27:03Z

The Centre for Internet and Society (CIS) submitted the below comments to the office of the Controller General of Patents Designs & Trademarks, Mumbai on July 26, 2013.

July 26, 2013

To,
The Office of the Controller General of Patents, Designs & Trade Marks
Bhoudhik Sampada Bhavan,
Antop Hill, S. M. Road,
Mumbai - 400 037

Subject: Comments on the Draft Guidelines for Computer Related Inventions
The Centre for Internet and Society (“CIS”) would like to commend the Office of Controller General of Patents, Designs and Trade Marks (“Controller General”) for preparing and inviting comments on the Draft Guidelines on Computer Related Inventions (“Guidelines”). With respect to the Guidelines, CIS would like to submit the following comments:

Background

The patent examiner is the most important link in the chain of patent law as he/she acts as the gatekeeper to defend the boundaries of patent law. This is especially so in the case of CRIs as the debate is centered on the question of the subject matter of patents. We are in full agreement with the position of excluding computer programs per se from patent protection. Especially given that they already qualify for protection under both copyright and trademark law. The question of patenting CRIs is problematic as such inventions have a high rate of obsolence. To avoid this, CRIs need to meet a higher standard during patent examination. It is in this interest that CIS presents the following comments on the Guidelines.

Scope of Section 3(k) , paragraph 2.4:
"Therefore, the re-instatement of the original phraseology of section 3 (k) clearly indicates that the legislature intended to retain the original scope of exclusion and did not approve its widening under this sub-section as attempted through the ordinance."

The Guidelines correctly identify the position of law as regards Section 3(k) and the evolution of the provision through the 2002 and 2004 amendments. However, it does not explain the meaning of the provision with regard to the way it applies to patent examination. The meaning of Section 3(k) is to exclude the grant of patents for computer programs per se based on the subject matter test.

So, the proposition here is that if a patent application were to fall in the category of nonpatentable subject matter, the patent should not be awarded. This should be made clearer for the benefit of prospective patent applicants and examiners. Our submission is that the explanation to Section 3(k) should include the subject matter test.
Definition of “per se”, paragraph 3.11:
The term “per se” is not defined in Indian statutes and hence, for interpretation of this term, the general dictionary meaning may be used.

In our comment on the 2010 Patent Manual, we had asked for clarification on the meaning of the phrase “per se” in Section 3(k).[1] While the Guidelines attempt to clarify the meaning, referring to the dictionary meaning of the phrase creates numerous issues. The phrase per se was first used in the European Patent Convention and the Proposed EU Directive on CRIs where per se was taken to mean on the face of it.

When similar phraseology was used in the Indian Act, some groups felt that this should be interpreted similarly rather than to mean by itself. The Guidelines do refer to the latter meaning. But the issue is with the use of the phrase in the provision and its cumulative meaning. So, it would help if the Guidelines, while explaining the meaning of the phrase also clarify that 3(k) means computer programs by themselves.
Definitions of “algorithm”, “software”, “hardware” and “firmware”, paragraph 3
Once again the Guidelines make reference to the Oxford Dictionary while defining these words. It is understandable that there is some difficulty in defining them as there are no statutes that explicitly define these words. However, the definitions in the Dictionary pertain to general usage and the implications of these words can change based on context. In this regard, it would be useful for the patent examiner to consult an expert while dealing with the usage of these terms or at least use a technical dictionary that defines these words as per their usages in that particular field.
Claims concerning CRIs- subject matter, paragraph 4
This Section correctly identifies the categories under which claims are made in patent applications for CRIs. However, even before making such categories, the applications must be tested on the question of subject matter. As pointed out earlier, if an invention falls outside defined subject matter, it should not be granted a patent.

The number of patents filed has gone up by almost 50% this year[2] and there is a need to dispose off, applications in a speedy but efficient manner. It must also be noted that there have been many cases where business methods and algorithms have been passed off as inventions and granted patents. [3] In order to avoid such errors and reduce transaction costs, it would help to carry out a preliminary subject matter evaluation at the outset.
Examination Procedure, paragraph 5
The examination procedure of patent applications relating to CRIs is common with other inventions to the extent of considering novelty, inventive step and industrial applicability.

The Guidelines suggest that CRIs can be tested on the same standards as other inventions on the above three questions. However, CRIs differ from other inventions. Most CRIs are an incremental innovation on existing CRIs. Many CRIs also become obsolete in a very short time. In the field of data storage for instance, the first CD was invented in 1982, DVD in 1995 and the flash drive in 1999. While each of these inventions was far superior to their predecessor, the time between each incremental innovation has drastically reduced.

If an invention can become obsolete in as little as 2 years, it would make little sense to grant monopoly rights for 20 years. So even if a CRI passes the three tests of novelty, inventive step and industrial applicability, it needs to be evaluated from the perspective of its possible obsolence. In such a scenario, the examiner should look at the history of innovation in that particular field to ascertain that the invention does not become obsolete in a short time.

Inventive Step, paragraph 5.3
(ja) "inventive step" means a feature of an invention that involves technical advance as compared to the existing knowledge or having economic significance or both and that makes the invention not obvious to a person skilled in the art;

The Guidelines quote Section 2(ja) of the Patents Act and refer to the IPAB decision in the Enercon case to explain the meaning of inventive step. But, the meaning of certain terms, like “technical advance” and “person skilled in the art” is unclear.

With respect to “technical advance”, one could infer the meaning from (4) of the quote from the Enercon case (citing Windsurfing and Pozzoli) which reads:
Imputing to a normally skilled but unimaginative addressee what was common general knowledge in the art at the priority date

However, as Prof. NS Gopalakrishnan notes, the standards for what is an inventive step differs based on the industry.[4] For instance, the pharmaceutical industry has a relatively lower standard for inventiveness when compared to other industries.[5] Given the unique nature of CRIs, it is important to clarify to what the standard for inventiveness or the “technical advance” is in this case.

In the same respect, the meaning of “person skilled in the arts” also needs explanation in relation to CRIs. This is especially so since the patentable subject matter as per the Guidelines are software attached to a hardware device. As per the case of Schlumberger v. EMGS[6] before the English Court of Appeals, in case of inventions which involve the “marriage of skills”, a person skilled of arts can be a team of persons. The case also held that the person who judges sufficiency and the person from whose standpoint nonobviousness is judged are different. Given the range of areas that are involved in CRIs, a person skilled of art would have no set description and would more often than not be a team of people.
Ordering of paragraphs 5.4.5 to 5.4.7
These paragraphs deal with the subject matter test. Paragraphs 5.4.5 and 5.4.6 deal with computer programs and the implications of the use of the phrase “per se”. Paragraph 5.4.7 deals with business method, mathematical method and other excluded patents as per law. As argued earlier, the subject matter evaluation needs to be made in the first instance. So a patent examiner must be made aware of the exclusions at first and then the exception or the dilution of such exclusion. These paragraphs seem to accomplish this in the reverse order. For greater clarity we propose that the paragraphs be ordered as: 5.4.7, 5.4.5 followed by 5.4.6.
Flow Chart Showing Procedure of Examination, paragraph 9
The flow chart shows a step by step process of examining CRIs. However, the subject matter determination is done towards the end. There is debate on whether there should be a set order for examining patents. However, in the case of CRIs there must be an exception as the statute explicitly prohibits certain types of patents (business method, algorithm etc). As argued earlier, in order to reduce transaction costs, the subject matter test must be made at the very beginning. There should at least be a preliminary determination as to Section 3(k) to reject patent applications for those inventions that can easily be classified under this provision.

[1]. See http://cis-india.org/a2k/blog/cis-submission-draft-patent-manual-2010 (Accessed on 23rd July, 2013).

[2]. See http://www.thehindubusinessline.com/news/science/number-of-patent-applications-up-nearly-50-thisyear/
article4508058.ece (Accessed on 23rd July, 2013).

[3]. See for business method patents granted in India: http://spicyipindia.blogspot.in/2013/01/guest-post-whyare-
business-method.html (Accessed on 19th July, 2013).

[4]. NS Gopalakrishnan and TG Agitha, “Principles of Intellectual Property” (1st ed. 2009), at 91.

[5]. Ibid.

[6]. [2010] EWCA Civ 819.

For more details visit http://editors.cis-india.org/a2k/blogs/comments-on-draft-guidelines-for-computer-related-inventions