May 12, 2024 | General
Mother’s Day is celebrated to express love, appreciation, and gratitude towards Mothers and Mother figures for their unconditional love, support, and sacrifices. It is not only a time to express gratitude for the nurturing mothers in our lives but also an opportunity to celebrate their remarkable achievements and contributions to the world. While we often acknowledge mothers for their caregiving roles, it’s equally important to recognize their ingenuity and innovative spirit. Throughout history, countless Mothers have made significant contributions to the world of invention, leaving a lasting impact on society. This Mother’s Day, let us delve into the fascinating realm of mother inventors and explore a few of their groundbreaking creations.
The Pioneering Legacy of Mother Inventors
In the vast landscape of invention, certain individuals stand out not only for their groundbreaking creations but also for the barriers they shattered and the paths they forged. Among these pioneers are Mothers whose ingenuity and determination have left an indelible mark on history. From revolutionizing industries to empowering communities, these remarkable women have paved way for innovators and are inspiring generations to come.
From household conveniences to groundbreaking technologies, Mother inventors have played a pivotal role in shaping our daily lives. Despite facing numerous challenges and juggling multiple responsibilities, these remarkable women have demonstrated exceptional creativity and resilience. Their inventions have not only simplified tasks but have also revolutionized industries and sparked new avenues of innovation.
Let us explore a few innovative contributions by Mother Inventors.
- The Disposable Diaper, invented by Marion Donovan
Marion Donovan, a mother of two, revolutionized infant care with her invention of the disposable diaper. In the late 1940s and early 1950s, Donovan, a mother frustrated with the inconvenience of cloth diapers, set out to create a more practical and convenient alternative. Donovan’s first breakthrough came when she developed a waterproof covering for cloth diapers using shower curtains. This innovation helped to prevent leaks and made diaper changes easier. Building on this idea, she then created the first disposable diaper prototype using layers of absorbent material, a waterproof outer layer, and a fastening system to keep the diaper in place. In 1951, Marion Donovan patented her disposable diaper design, known as the “Boater.” The disposable diaper revolutionized childcare practices by providing a more hygienic, convenient, and time-saving option for parents. Since Donovan’s initial invention, disposable diapers have undergone numerous improvements and innovations, including the introduction of elastic leg cuffs, resealable fasteners, and advanced absorbent materials. Today, disposable diapers are a staple product for parents around the world, offering convenience and comfort for both babies and caregivers.
- Glass Bead Liquid Culture Technology, invented by Dr. Seema Prakash.
Dr. Seema Prakash, a mother of two from Uttar Pradesh, invented Glass Bead Liquid Culture Technology (GBLCT). With Glass Bead Liquid Culture Technology (GBLCT), sterilized glass beads and liquid nutrients are used to replace the agar as the culture medium, where by using the glass beads, the cost of the media is brought down by 94% on a per plant basis. Glass Bead Liquid Culture Technology is different from traditional tissue culture, as traditional tissue culture uses agar as a gel, whereas in Glass Bead Liquid Culture Technology, the media is a liquid that surrounds the glass beads. This allows for aeration when the culture vessels are shaken and the glass beads offer a greater surface area between the piece of plant tissue that is used to initiate the tissue culture and the liquid medium. Using glass beads with liquid beneath them provides good root aeration for the plantlets and when combined with the high humidity in the culture vessels, results in plants that need less hardening because they develop a stronger root system. This invention will help in cost-effective plant cloning, which in turn will benefit Indian Farmers.
- Dishwasher, invented by Josephine Cochrane
Josephine Cochrane, a mother, invented the first commercially successful dishwasher in the late 19th century. She was frustrated with the chipping and breakage of her fine Chinaware during handwashing, which resulted in designing of a mechanical dishwasher that used high-pressure jets of water to clean dishes. Her invention not only saved time and labour but also preserved delicate tableware, catering to the needs of households and commercial kitchens alike. In 1886, she patented the first practical dishwasher, which used high-pressure jets of water to clean dishes in a wire basket. The invention was showcased at the 1893 World’s Columbian Exposition in Chicago and was initially marketed towards hotels and restaurants. Over time, improvements and innovations have been made to dishwashers, including advancements in efficiency, water and energy consumption, noise reduction, and additional features such as adjustable racks and specialized wash cycles. Now, dishwashers are common household appliances, simplifying the chore of dishwashing for millions of people worldwide.
- Windshield Wipers, invented by Mary Anderson
Mary Anderson, a widowed mother and entrepreneur, invented the windshield wiper in 1903. While traveling in New York City, Anderson noticed that streetcar drivers struggled to see through their windows during rainy weather. In search of a solution for this problem, she developed a manually operated windshield wiper system that cleared away rain and snow, improving visibility and safety for drivers. Mary Anderson patented the first operational windshield wiper in 1903, where the invention consisted of a swinging arm mechanism with a rubber blade that could be operated manually from inside the vehicle to clear rain or snow from the windshield. The windshield wiper remains an essential component of vehicle safety, helping drivers maintain clear visibility on the road in adverse weather conditions.
- Kevlar, invented by Stephanie Kwolek
Stephanie Kwolek, a chemist and mother, made a groundbreaking discovery while working at DuPont in the 1960s. In her pursuit of developing a lightweight fibre for tires, Kwolek accidentally created Kevlar, a high-strength synthetic material. Kevlar is a synthetic fiber known for its high tensile strength-to-weight ratio, making it incredibly strong yet lightweight. Kwolek was conducting research on high-performance fibers when she discovered a liquid crystalline solution that could be spun into exceptionally strong fibers. This discovery led to the development of Kevlar, which has since found widespread applications in various industries. Kevlar’s remarkable durability and resistance to impact made it an ideal material for bulletproof vests, revolutionizing personal protective equipment for law enforcement and military personnel worldwide. Kevlar is also used in helmets, gloves, and other protective gear. Additionally, Kevlar is utilized in aerospace applications, such as reinforcing composite materials in aircraft and spacecraft. Its high strength, durability, and heat resistance make it valuable in numerous industrial and consumer products, including tires, ropes, cables, and sporting equipment. Stephanie Kwolek’s invention has had a significant impact on various fields, enhancing safety, performance, and efficiency in numerous applications.
- Home Security System, invented by Marie Van Brittan Brown
Marie Van Brittan Brown, a nurse and mother, developed the first home security system in 1966. Brown worked long hours as a nurse and often came home late at night. Her husband also worked irregular hours and Brown worried about who might knock on her door if she were home alone at night. Concerned about the safety of her family in their New York City apartment, Brown designed a system comprising peepholes, cameras, and two-way microphones connected to a monitoring device. In 1966, Brown first had the idea, and she soon applied for a patent alongside her husband Albert Brown. The system includes a motorized camera to project images on a monitor with four peepholes. In addition, the invention includes a remote control to unlock doors for easy access to first responders, in emergencies. Brown was later granted an award from the National Scientists Committee for her innovation. The innovative security apparatus laid the groundwork for modern home surveillance systems, empowering homeowners to protect their properties and loved ones.
Honouring Mother Inventors
As we celebrate Mother’s Day, let’s pay tribute to the remarkable achievements of Mother inventors around the world. Their ingenuity, perseverance, and groundbreaking contributions continue to inspire generations of innovators. From everyday conveniences to life-saving technologies, the legacy of Mother inventors serves as a testament to the power of creativity and determination. So, let us cherish and celebrate the indomitable spirit of motherhood and innovation this Mother’s Day, recognizing the invaluable contributions of mother inventors to our shared human experience.
We wish you all a Happy Mother’s Day!!
Author: Megha Nadiger, Senior Patent Associate, Origiin IP Solutions
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May 6, 2024 | Copyright, General
Copyright is a form of intellectual property.[1] Copyright law offers multiple advantages that support in protecting the rights of original creators while also allowing room for creative expression and commentary through the usage.
The Fair Use Doctrine permits the legal copying of a copyrighted work, and it is prescribed under Section 52 of The Copyright Act, 1957[2]. This Doctrine provides an exception against the protections of copyright when the copying of the work is done with the intent and goal of studying, reviewing or even criticising it. As an extension of the same, parody or satire of a copyrighted work is deemed to be covered under this exception. However, from a practical perspective, parody operates in a legal indeterminate area.
Parody and satire are terms used interchangeably, but the two are not identical or equivalent. Although Parody and Satire are both tools of humour that are often used to criticise, review or even merely poke fun at something. However, it is important to note that these two must be necessarily differentiated in order to determine the legality of the same in the context of intellectual property infringement.
While both parody and satire use humor as a tool to effectuate a message, again, the purpose of a parody is to comment on or criticize the work that is the subject of the parody. By definition, a parody is a comedic commentary about a work that requires an imitation of the work. Satire, on the other hand, even when it uses a creative work as the vehicle for the message, offers commentary and criticism about the world, not that specific creative work. Therefore, parodies use copyrighted works for purposes that fair use was designed to protect in the first place.[3] While the difference between parody and satire has been exclaimed on numerous circumstances, the judicial bodies however, tend to club these two terms as the same while passing out their ratio decidendi.
The value of a brand parody
Courts and observers appear to agree that parody has societal significance as critical speech, irrespective to think a particular parody deserves legal protection.
As the Supreme Court has stated, “Like less ostensibly humorous forms of criticism, parody can provide social benefit, by shedding light on an earlier work, and, in the process, creating a new one.” [4]
Although courts generally acknowledge parody, they are noticeably less appreciative of parodies that act as brands.
The First Amendment5 and jurisprudence governing trademark, both grant non-commercial communication a distinct standing. However, the issue with brand parodies goes past doctrine; courts appear to disagree on whether a defendant’s commercial goals conflict with the free speech interest in the parody.
However, there is a compelling argument that, at least in the context of trademarks, the inclusion of parody in a brand achieves expressive purposes that are not at all possible through regular, non-branding speech. Most branding parodies, if not all of them, carry a double-intended message. They are not just making fun of the targeted brand when they use its name.
Beyond just doing a parody for some trademark, brand parodies also capture the branding mechanism and use it to provoke the critical thought about the atmosphere of brands in our society.
Therefore, brand parody that are genuine in nature have societal value and are not likely to lead to confusion or a loss of the uniqueness of the target mark; as a result, trademark courts should rarely forbid them. however, disputes over brand parodies can go on for years as courts disagree on how and when the law should apply in that circumstance.
Because of the commercial nature of these parodies or because of the impression of exploitation and clout riding that has been created, there may be ambiguity and incorrect application of the law.
Circumstances when parody cannot be used as a defence
While parody may be protected under the fair use doctrine in some cases, it is not an absolute defence, and each situation should be evaluated on the basis of the case and legal jurisdiction in order to determine its validity. Even while there is no existence of an absolute defence for parody, common sense and rationality suggests that it may be difficult to prove what does and does not amount to a ‘successful parody’, which could be where the idea of humour is directly communicated to the target audience. Hence, proving infringement against a strongly- alleged claim of parody is likely to be very challenging. There are instances where parody is not subject to blanket protection under the doctrine of fair use provided by the statute.
In the case of Leibovitz v. Paramount Pictures Corporation[5], an acclaimed photographer by the name Leibovitz had taken a picture of actress Demi Moore during her pregnancy during a professional photoshoot. She was seen to be making passionate facial expressions in the picture. Certain aspects of the picture stood out, such as the way the subject was positioned and posed, the kind of lightning, etc. that gave a distinct feel for the same. The controversy now, which led to the case, stemmed from the fact that Paramount Pictures released a picture of actress Leslie Nielsen shortly after the Leibovitz photo, suggesting ideas that were similar to those in Demi Moore’s image.
The stance taken by the court made the concerned parties realize that anything under the sun does not become a parody simply because it involves a trace of humor. If it is discovered that the defendant has tried to take advantage of a reputed work only to make commercial gains by simply involving some humor in the work, then such a work can be denied the defence of parody.
Similarly, in the famous Superman Logo case of 2015[6], in the United States of America, The defendant was an apparel line that featured the well-established and recognisable Superman shield design on its items. The word “Dad” was shaped like a superman emblem on the T-shirts. The defendant said that there was little chance that customers would confuse their SuperDad T-Shirts for the iconic Superman insignia because they were a blatant and obvious mimic of it.
The defendants of this particular dispute had the contentions that the word ‘dad’ relates to the acknowledgment of the real-life hero which a father is to their children and the undue self-importance that is given. While this was a creative argument stirred up by the Counsel for defendants, it was not enough for convincing the honourable court. The court dismissed the contentions laid down by the defendants and held that although the defendant’s use of the word ‘Dad’ was with the intent of humour, the purpose is only to promote their t-shirts using the famous logo of the plaintiff, and this certainly cannot be protected as a parody under the law.
Conclusion
In conclusion, the Fair Use Doctrine and copyright laws offer an essential balance between defending the rights of the original creators and permitting parody as a form of creative expression and commentary. Parodies can be regarded as a tool for critical discourse since they provide new light on past works and generate new points of view when the intention is present. However, the legal landscape for brand parodies is complex, as courts grapple with the intersection of commercial interests and free speech rights. While genuine brand parodies have societal value, disputes can be prolonged and contentious. Parody is not an absolute defense, and its validity depends on the specific circumstances and legal jurisdiction for which the dispute can be handled in the interests of justice, equity and good conscious
Author: Ayushman Kumar B.
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Apr 29, 2024 | General
“You are an original when you stay true to what you know.” Following this philosophy for 40 years since 1984, Natural Ice Cream has become a well-known brand for using fruits in creating ice creams. With around 125 flavors to offer 147 outlets across the country and the recently launched factory in Mumbai, Natural Ice Cream is poised to continue expanding its reach in spreading the joy of fruits and natural ingredients in the form of delicious and mouth-melting ice creams.
Where today, most ice creams in the market consist of fruit flavors, stabilizers, and additives; what makes Natural Ice cream so different from others is being true to their tradition and traditional methods, which include the non-usage of any preservatives, stabilizers and artificial colors or chemicals and relying on three ingredients only, i.e., milk, fruit, and sugar, most of them sourced from India, making Natural Ice cream delicious and wholesome.
Furthermore, Natural Ice Cream is recognized as one of the pioneering brands responsible for introducing flavors such as Tender Coconut Ice Cream, Jackfruit Ice Cream, Watermelon Ice Cream, and Chickoo Ice Cream, among others, which are consistently available throughout the year. They also pioneered the idea of seasonal specials like Naturals Sitaphal Ice Cream, Naturals Mango Ice Cream, Pink Guava, Lychee, and more. Additionally, several new flavor concepts, including festive flavors, Friday Funday flavors, and berry festival flavors, were introduced a few years later, all offered at highly affordable prices.
Consistent focus on evolving while preserving its authentic flavors drives Natural Ice Cream’s sustained growth. Unsurprisingly, the brand has been recognized among the top 10 Home-grown brands in India by the KPMG Consumer survey and honored as Icons of India by the Economic Times.
History
The journey began with a fruit venture in a small village in Mangalore, where Mr. Raghunandan Kamath, the founder, aided his father, a mango seller. Enchanted by the realm of fruits, he mastered the skills of selecting, plucking, sorting, and preserving ripe produce. This profound knowledge became an asset for the company in crafting fruit ice creams.
From Mangalore to Bombay, armed with a second-class ticket and a brilliant idea, Mr. Raghunandan Kamath embarked on his entrepreneurial journey. Initially serving Pav Bhaji as the main dish, he cleverly added ice cream as an enticing addition to attract customers. This modest eatery quickly garnered attention, evolving into a bustling ice cream parlor known as “NATURALs,” inaugurated as the First Outlet in Juhu Scheme, Mumbai, on February 14, 1984. The overwhelming demand for their ice cream led to traffic congestion in Juhu’s narrow lanes. To meet the increasing demand, Mr. R S. Kamath had to innovate and develop new machines capable of producing more ice cream using existing methods.
By 1994, the company expanded its presence by inaugurating five additional outlets in Malad, Borivali, Bandra, Lokhandwala Complex, and Vile Parle. In 2000, Pune became the company’s first branch outside of Mumbai, further expanding into Ahmedabad, Goa, Hyderabad, Bangalore, Jaipur, Delhi, and Kolkata. In response to its increasing popularity, the company also introduced distinctive thermocol packaging, quickly becoming ubiquitous nationwide.
Trademark
One of the obstacles that Natural Ice Cream faced was its trademark. When Mr. Raghunandan Kamath began his business of a full-fledged ice cream parlor in Mumbai on February 14, 1984, under the mark ‘NATURAL’, it became the company’s identity. Over time, the mark obtained trademark registrations across multiple classes, including 29, 30, 35, 42, and 43. Under this trademark, the company has expanded its network to 140 franchisees across 42 cities in India. Moreover, it has extensively advertised on social media platforms like Facebook and Twitter. Despite having such a reputation, there were instances where the company had to deal with consumer confusion due to the similarity of trademarks with those of other companies.
One such instance can be found in the recent case of Siddhant Icecreams LLP & Ors. Vs. Ameet Pahilani & Ors, where the plaintiff filed a suit against Partners of NIC Natural Ice Creams seeking a decree of permanent injunction from trademark infringement along with an application for ad-interim injunction before the Hon’ble Delhi High Court[1]. It occurred when NIC NATURAL ICE CREAMS, another ice cream firm, started enticing customers with its varied range of ice cream flavors, which were not only accessible in physical stores throughout India but also featured on online food delivery platforms, much like Natural Ice Cream. However, since both firms utilized the same mark, ‘NATURAL,’ in an equal shade of green and dealt primarily with comparable products and services, as well as similar packaging, concerns of infringement, misrepresentation, and customer confusion were likely to arise. The primary allegation was that Ameet Pahilani, a partner at NIC Natural Ice Creams, was formerly associated with one of the franchisees of Natural Ice Cream. Following the termination of their agreement, he allegedly registered a mark bearing the name ‘NIC Natural Ice Creams’ in a dishonest manner.
In conclusion, on October 19, 2022, Justice Jyoti Singh issued an “ex parte ad interim injunction” in favor of the plaintiffs Siddhant Ice Creams LLP & others. The court found that all the evidence and facts favor the plaintiff, and thus, not granting an injunction order could result in “irreparable loss” to the plaintiffs. The court’s ruling forbade the defendants, NIC Natural Ice Creams, from using the plaintiffs’ marks in any way, including marks that were similar to them, and from utilizing the same trade dress, colors, and packaging. Additionally, they were barred from using domain names containing the mark ‘NATURAL’ and the plaintiffs’ marks as meta-tags or keywords for advertisement. The court even ordered food delivery aggregators to verify that infringing trademarks were not used in conjunction with the defendants’ business[2]. An appeal by the defendants followed this injunction order. However, both parties reached an interim arrangement on November 25, 2022, allowing them to conduct business without prejudice.
Before this incident, Natural Ice Cream faced a similar situation in the case Siddhant Icecreams LLP and Ors v. Natural Ice Cream And Anr., [3]in which Raghunandan Kamath promoted firms Siddhant Icecreams LLP, and Kamaths Ourtimes Ice Creams Pvt Ltd filed a lawsuit against the Manjalpur (Vadodara)-based ‘Natural Ice Cream.’ In addition to requesting damages for trademark infringement of Rs. 150 crore, the lawsuit aimed to stop the defendant brand in Vadodara from using the same trade name for its goods. The court ruled that the proprietor of the defendant company had no independent right to use the ‘NATURAL’ mark, even if the signage indicated usage ‘since 1992’. The plaintiffs, registered proprietors with usage dating back to 1984, sufficiently demonstrated a prima facie case. This led to the injunction order restraining the defendants from using or infringing the ‘Natural’ Family registered marks for their products or business names until September 9. Due to such brand recognition, Natural Ice Cream has been able to preserve and protect its brand identity and maintain consumer trust.
Conclusion:
In conclusion, Natural Ice Cream has garnered numerous accolades over the years, including the Corporation Bank’s National SME’s Excellence Award in the Food and Agro-Industry in 2006, Best in Customer Service – Regional Retailer Of the Year in 2013, a gold medal for the most innovative ice cream flavor (cucumber) in the Great Indian Ice Cream Contest in 2014, and recognition in 2016 for its homegrown concept in food service by Coca-Cola Golden Spoon Awards. These achievements underscore the brand’s reputation, which extends beyond mere advertising to the genuine appreciation of its customers. With a keen understanding of fruit-based ice cream’s potential, the company and its founder have consistently delivered a delicious end product celebrated nationwide. Natural Ice Cream remains a symbol of excellence in the ice cream industry, firmly establishing itself as one of India’s premier homegrown brands.
Author: Gautam Bhatia, CHRIST University
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Apr 24, 2024 | Patent
Patents serve as powerful instruments within the realm of intellectual property, providing inventors with exclusive rights to their inventions for a specified duration, typically spanning 20 years[1]. These legal tools not only incentivize innovation by shielding inventive work but also contribute to the overall socio-economic development of the country by fostering technological progress and economic development. However, the protection bestowed by patents is not absolute, as statutory provisions like Section 66 of the India Patents Act, 1970[2] introduce a critical layer of regulatory oversight.
Under the ambit of Section 66, the seemingly impenetrable shield provided by patents undergoes legal scrutiny, particularly when the public interest is perceived to clash with the exclusive rights granted to patent holders. Section 66 of the Act runs as follows:
“Where the Central Government is of opinion that a patent or the mode in which it is exercised is mischievous to the State or generally prejudicial to the public, it may, after giving the patentee an opportunity to be heard, make a declaration to that effect in the Official Gazette and thereupon the patent shall be deemed to be revoked.”
Revocation of Patents in India
Revocation, in simple terms, refers to the action of withdrawing something previously granted. The same principle applies to patents, which, despite being granted initially, do not hold a permanent status. Individuals other than the patent holder are granted the right to submit a revocation petition if they encounter issues related to someone else’s patent rights. In this context, “people” encompass any interested party with legally acceptable grounds for challenging the patent’s validity, including the Central Government.
Section 66 of the Patents Act, 1970
Section 66 plays a pivotal role in elaborating on the revoking of patents that are considered mischievous to the State or contravening to the public interest in India. On such occasions, the Central Government holds the power to revoke a patent, given that the patentee is allowed an opportunity to display their case against revocation. If the Government is still not satisfied, it can issue a notification in the Official Gazette regarding the final revocation.
Due to the sensitivity of this provision, it has been used only twice in the country. While the first time was in 1994, the second time was almost two decades later, in the year 2012. In order to understand this Section better, it is pertinent to understand the circumstances that led to the Central government exercising its power of revocation in these two cases.
- The Agracetus Case- 1994[3]
The first case where the patent was revoked under Section 66 of the Act was related to a process patent to Agracetus, granted to a U.S.-based company, for genetically engineered cotton cell lines. In 1994, this patent faced revocation in the public interest, as it was deemed as detrimental to farmers’ rights. The Government asserted that cotton, a pivotal crop crucial to the national economy, should not be subject to patent rights.
Indian Patent No. 168950, entitled “Method of producing transformed Cotton Cells by tissue culture”, had been granted to Agracetus based on patent application number 919 Cal 87, filed on 24/11/1987, by the Indian Patent Office.
Notably, no pre-grant opposition was raised by any party, leading to the patent being granted successfully. However, the implications of such a patent became evident later, prompting criticism from the farming community. Concerns were raised that the patent adversely affected their interests, impacting a major national crop and potentially harming the Indian economy. India, being the world’s third-largest cotton-producing nation after China and the U.S., has a significant population dependent on cotton cultivation for income.
In response to farmer protests asserting that the patent infringed upon their fundamental right, given the significance of cotton in their livelihoods and its impact on the Indian economy, the Central Government took action. In a historic move, the Government invoked Section 66 of the Patent Act, 1970, to revoke Agracetus’ patent on October 24, 1994 citing that the patent granted was generally preducial to the public. The decision was made through notification No. SO762(E) by the Department of Industrial Policy and Promotion, under the Ministry of Commerce and Industry, Government of India.
The decision was grounded in the belief that the patent would have far-reaching consequences for India’s cotton economy, adversely affecting farmers and the cotton industry, ultimately leading to negative ramifications for the Indian economy.[4] Subsequently, the United States also followed suit and revoked Agracetus’ patent.[5]
- The Avesthagen Case- 2012[6]
The second instance came about when the Government of India utilized the provisions of Section 66 to revoke Avasthagen’s patent in 2012. Avasthagen, a company specializing in producing medicines, had secured patent protection for a diabetes-controlling medicine/tonic incorporating jamun, lavangpatti, and chundun. The patent, granted under application number 1076/CHE/2007, pertained to a “synergistic ayurvedic/functional food bioactive composition”.
Avasthagen also filed a patent application for the same composition with the European Patent Office (EPO). However, during the examination process, the patent examiners cross-referenced the patent with the Traditional Knowledge Digital Library (TKDL) database. It was discovered that the patent claimed subject matter that was disclosed by TKDL, thereby infringing upon traditional knowledge. The Council of Scientific and Industrial Research (CSIR) had made individual intervention for the same as well.
The Indian Patent Office, citing a lack of access to the TKDL database, admitted that its examiners had previously approved the patent without knowledge of this conflicting information related to traditional knowledge. Once informed, the Indian Government, invoking Section 66, revoked the patent. The government’s rationale for revocation emphasized that the use of Jamun for diabetes treatment was long-established in India, and therefore, the patent claimed subject matter already known in the public domain through India’s Traditional Knowledge.
Avasthagen argued that while it might be known in traditional knowledge that these plants were used for treating diabetes individually, the combination’s aggressive effect was not recognized. They asserted that their formulation was innovative, noble, and scientifically screened for efficacy and safety using modern technology. The company defended its patent, stating that it had adopted a different approach by initially selecting about 100 plants for formulation, later shortlisting to 10. Additionally, they claimed their invention was novel and provided scientific validation to Indian Traditional Knowledge, pledging support to Indian farmers and promising employment opportunities.
The Government countered these arguments, asserting that the use of these plants for managing diabetes had been known for centuries, and, therefore, the patent lacked inventiveness. Officials argued that when plants are recognized for their efficacy against a specific disease, extracts would inherently serve the same purpose. The government contended that a patent could not be granted for validating something inherent to Traditional Knowledge.[7]
Ultimately, dissatisfied with Avasthagen’s arguments, the Government revoked the patent on October 18, 2012. The patent which was initially granted in April 2012 was revoked on the grounds of being generally prejudicial to the public. The decision was conveyed through Notification No. SO2517(E) by the Department of Industrial Policy and Promotion, under the Ministry of Commerce and Industry, Government of India.
Traditional Knowledge Digital Library (TKDL) and The Way Forward
While the rationale behind applying Section 66 for the revocation of the Avesthagen patent may be a subject of debate, there is no denying the value of the Traditional Knowledge Digital Library (TKDL) in safeguarding India’s traditional knowledge. The questions now pertain to whether similar inventions grounded in traditional knowledge, which were previously granted, will undergo a similar trajectory as the Avesthagen patent, and if so, how they will be interlinked with the public interest of the country.
Striking a Balance between Public Interest and Honouring Innovation
The incorporation of Section 66 underscores the acknowledgment that certain inventions, despite their innovative value, may have detrimental effects on public interest and welfare. This raises a pivotal question: how can we strike a balance between safeguarding the exclusive rights of inventors and ensuring the overall well-being of the public?
While public interest is paramount, acknowledging the crucial role of innovation in driving economic growth and technological progress is equally important. Innovators invest significant resources in developing novel solutions that can transform industries and enhance lives. Section 66, therefore, demands a balanced approach to ensure that the power of revocation is not exercised arbitrarily, obstructing genuine innovations that could positively contribute to society.
Conclusion
An inherent challenge of Section 66 lies in the subjective nature of assessing what exactly poses a threat to public interest. Achieving a balance requires a nuanced approach that considers the societal impact of the invention, its implications on critical sectors, and the overall potential benefits or harm it may bring about.
As technology and industries continue to evolve, the relevance and application of Section 66 will likely evolve as well. Continuous dialogue among policymakers, legal experts, and stakeholders is essential to refining the interpretation and implementation of this provision, ensuring its ongoing effectiveness in balancing the promotion of innovation and the protection of public interest.
Author: Manya Manohar, Symbiosis Law School, Pune
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Apr 17, 2024 | IPR & Business, Patent
Introduction
The concept of Intellectual Property Rights (IPR) in these modern times is progressing as people across the globe create more and more intangible assets with the use of their intellect and creativity. IPR protections various Intellectual Properties (IP) and fosters a sustainable mechanism to make it harmonious with growth. Patent is a subset of IPR, and it focuses on technical inventions, their application and process of manufacture. Patent grants exclusive right to prevent third parties from making, using, selling, offering for sale and importing the patented invention in the jurisdiction where patent is granted. But first, there are certain criteria laid out by the Indian Patents Act, 1970, which must be fulfilled for a product or a process to be considered as an invention; they are Novelty, Inventive Step and Industrial Application. In the case of Novartis AG vs. Union of India, we witness the standard requirements and importance of novelty and inventive steps in India. The Honourable Supreme Court of India clarified various terms stated under Section 3(d)[1] and applied the concept of Evergreening of Patents to solve the case effectively. The appeal was dismissed by the court on the basis that “Glivec” failed to show enhanced efficacy when compared to an already patented drug “Imatinib Mesylate”.
Facts
One of the largest multinational pharmaceutical corporations, Novartis AG, based in Switzerland, created a drug called “Imatinib Mesylate” and in 1992 filed it for a patent at the United States Patent and Trademark Office (USPTO), which was granted. In 1997, Novartis AG filed another patent application in the United States for a “Beta Crystalline” form of imatinib mesylate named “Glivec”, which was also granted a patent in the US. This same drug was also granted a patent in 35-plus countries[2]
Then, in 1998, Novartis AG filed a patent application for Glivec at the Madras Patent Office, India, which was facilitated via the TRIPS agreement. The application specified that it was a beta crystalline form of Imatinib mesylate and further illustrated that it helps to treat cancer, specifically Chronic Myeloid Leukemia (CML) and Gastrointestinal Stromal Tumors (GIST). Novartis AG claimed the superiority of Glivec over previously patented imatinib mesylate, as it had improved flow properties, thermodynamic stability and lower hygroscopicity[3].
Prior to the Patent (Amendment) Act, 2005, India didn’t grant product patents but only process patents as per Section 5[4] of the Patents Act, 1970. Until the section was repealed, Novartis AG couldn’t pursue a product patent for Glivec.
In 2005, the Madras Patent Office considered and later (in 2006) rejected the product patent application filed by Novartis AG for Glivec on the basis that it was not novel, that is obvious to a person skilled in the art and was anticipated by the prior publication of Zimmermann patent; Novartis AG had also wrongly claimed date of filing of the application in Switzerland as the priority date in India. Further, Section 3(d)[5] of the Patents Act, 1970 was applied, “the mere discovery of a new form of a known substance which does not result in the enhancement of the known efficacy of that substance or the mere discovery of any new property or new use for a known substance or of the mere use of a known process, machine or apparatus unless such known process results in a new product or employs at least one new reactant.” and the patent office concluded that glivec was a new form of an already known substance which didn’t result in enhanced efficacy.
Aggrieved by the patent office’s rejection, Novartis AG filed multiple (one by the appellant and one by the Indian power of attorney holder) writ petitions in Madras High Court under Article 226[6] of the Constitution of India.
The appeals claimed Section 3(d)[7] of the Patents Act, 1970, to be unconstitutional, as it was alleged to be in contradiction to the TRIPS agreement and in violation of Article 14[8] of the Constitution.
In 2007, the Madras High Court transferred the case to the Intellectual Property Appellate Tribunal (IPAB) after its formation, along with the previous writ petitions challenging the order of the Assistant Controller. IPAB heard the appeal and reversed certain findings of the controller by approving Glivec’s novelty and nonobviousness but still rejected the application for a patent grant as the product was adequately being hit by Section 3(d)[9] of the Patents Act, 1970. As per IPAB reasoning, Section 3(d)[10] establishes high standards for patentability in India and stops the “evergreening of patents”, which is necessary for the benefit of the citizens of India, especially when it comes to life-saving drugs.
In 2009, Novartis AG filed a Special Leave Petition (SLP) under Article 136[11] of the Constitution before the Honourable Supreme Court of India, pleading against the order of IPAB.
Issues Raised
- To define “Known Substance”, stated in Section 3(d)[12] of the Patents Act 1970?
- To define “Efficacy”, as stated in Section 3(d)# of the Patents Act 1970,
- Whether Section 3(d)[13] of the Patents Act, 1970, allow a certain amount of increase in bioavailability to be qualified as increased efficacy?
- To compare the stated improvements of glivec with imatinib mesylate properties and judge the patentability?
Relevant Legal Provisions
- Section 3(d)[14] of the Patents Act, 1970: “the mere discovery of a new form of a known substance that does not result in the enhancement of the known efficacy of that substance or the mere discovery of any new property or new use for a known substance or of the mere use of a known process, machine or apparatus unless such known process results in a new product or employs at least one new reactant.
Explanation.—For the purposes of this clause, salts, esters, ethers, polymorphs, metabolites, pure form, particle size, isomers, mixtures of isomers, complexes, combinations and other derivatives of known substance shall be considered to be the same substance, unless they differ significantly in properties with regard to efficacy”.
Article 27(1)[15], TRIPS: “Subject to the provisions of paragraphs 2 and 3, patents shall be available for any inventions, whether products or processes, in all fields of technology, provided that they are new, involve an inventive step and are capable of industrial application. Subject to paragraph 4 of Article 65[16], paragraph 8 of Article 70[17] and paragraph 3 of this Article, patents shall be available and patent rights enjoyable without discrimination as to the place of invention, the field of technology and whether products are imported or locally produced”.
Judgment
In 2013, the Hon’ble Supreme Court of India gave its final verdict, wherein the court rejected the patentability claim of Glivec, filed by Novartis AG. The court upheld previous verdicts of Glivec (a beta crystalline form of imatinib mesylate) as being a new form of an already-known substance with minor improvements. The court defined the word “Efficacy” as stated under Section 3(d)[18] of the Patents Act, 1970, apropos to “Therapeutic Efficacy” and “Known Substance” as something in public or traditional knowledge. Addressing the issue of a 30% increase in bioavailability, previously claimed by Novartis AG, the Honourable Supreme Court cleared that it would amount to an increase in efficacy, but Novartis AG failed to produce any proper evidence of the same (30% increase in bioavailability of Glivec when compared to imatinib mesylate). Further, the court tested all the other claims of improved flow properties, thermodynamic stability and lower hygroscopicity of Glivec with Imatinib Mesylate and found them to be of no value regarding enhanced therapeutic efficacy. No further documents were provided by Novartis AG, which claimed enhanced efficacy of Glivec over the previously patented drug imatinib mesylate. Lastly, no violation of the TRIPS agreement was found.
Conclusion
India is a developing country which is making a positive mark on geo-politics despite its demographic drawbacks. India upholds the responsibility of prioritising public health, and this judgment replicates the same. There was no violation of the TRIPS agreement because India successfully adopted Article 27[19] of TRIPS without contradicting it. Furthermore, the TRIPS agreement mandates countries to adopt the stated measures but gives member countries flexibility to adopt them at their convenience. The concept of Evergreening of Patents was used by the Honourable Supreme Court, especially in the context of the pharmaceutical industry, to stop big companies from exploiting public and welfare initiatives. Section 3(d)[20], among other areas, safeguards medicine availability to the public at large on a cheaper by price by stopping pharmaceutical companies from getting their inventions patented in perpetuity upon introducing minor changes; this means once the designated time of protection ends, those medicines will be available to the public for manufacture and trade at a cheaper price, without taking consent from the proprietor. Hence, the Honourable Supreme Court safeguarded all Indian citizens, especially the ones in need, from exploitation by the Pharmaceutical Industry. The high and fair criteria of patent protection in India promote fair competition and harmonise all industries. The court interpreted and defined the term “efficacy” as a tool to analyse the notion of invention and as a criterion to judge novelty and inventive steps. Ultimately, the Honourable Supreme Court gave clearance to Novartis AG to get patients over the drug Glivec, but the company failed to fulfill the established criteria.
Author: Hardik Manwani, UPES Dehradun
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