Copyright Law Blog

SAMSUNG CHALLENGES CONSTITUTIONALITY OF INDIA’S CUSTOMS REGULATIONS GOVERNING IMPORT OF IP GOODS

August 8th, 2009 at 06:41am Under intellectual property

Samsung India Electronics Pvt. Ltd, Indian arm of Samsung Electronics Co. Ltd has challenged the constitutionality of India’s customs regulations governing the import of IP goods in Delhi High Court by filing a writ petition. Samsung India is aggrieved by action of the Indian customs department that is not clearing its imports of dual-SIM-card mobile phones in view of application for registration of patent rights filed by the patentee in respect of similar technology with custom office. More precisely Samsung India has challenged the custom notification no. 47/2007 Customs (N.T.) dated 08.05.2007 called Intellectual Property Right (Imported Goods) Enforcement Rules, 2007 read with Circular No. 41/2007 Custom Circular dated 29.10.2007 called Instructions for implementation of Intellectual Property Rights (Imported Goods) Enforcement Rules, 2007 issued by Central Board of Excise and Customs. Under said provisions any right holder (patentee or licensee) can register his/their patent for a period of 5 years with intellectual property rights cell of Office of Commissioner of customs on filing of an application along with grounds of suspicion, brief disclosure of technology and executing an indemnity bond. 

The brief history of the matter is as follows:

March 4, 2002               Patent Application filed in the Chennai Patent Office with 4 claims and 12 drawings being Patent Application no. 161/MAS/2002 titled as “Mobile Phone with multiple number of SIM Cards to receive and/or to send multiple number of signals at a time”

March 03, 2003             PCT application filed in WIPO PCT/IN03/00044

September 12, 2003       International Publication no. WO 03/75543 A2 with 11 claims and 11 drawings, titled as “Mobile phone with multiple number of SIMCards to transreceive multiple number of mobile companies towers at a time”

January 4, 2004            Amended claims filed on WIPO, 11 claims replaced by 19 claims, first time plurality of headphone/earphone jacks or plugs are disclosed.

January 8, 2004            International Search Report was published on WIPO

March 4, 2004               Amended claimed published on WIPO

January 5, 2006            Revised ISR published on WIPO

January 23, 2006          Amended Claims filed before WIPO, claims increased to 17 from 11

April 6, 2006                  Amended claims with statement published on WIPO    

November 17, 2006        Patent Application was amended, no. of claims was increased to 20, drawings to 13 and title was changed to “Mobile telephone having a plurality of SIMcards allocated to different communication networks”. First time plurality of headphone/ earphone jacks, plurality of headphone/ earphone plugs and plurality of Bluetooth devices were disclosed and claimed.

June 1, 2007                 Patent Application published in Indian Patent Journal with 20 claims, titled as “Mobile telephone having a plurality of SIMcards allocated to different communication”

February 11, 2008         Patent Granted being Patent No.  214388

December 08, 2008        Defendant no. 1 filed an e-application no. UTRN0.TINMAA4PR0009 with Officer of Commissioner of customs, intellectual property rights cell at Chennai under under custom notification no. 47/2007 Customs (N.T.) dated 08.05.2007 called Intellectual Property Right (Imported Goods) Enforcement Rules, 2007 read with Circular No. 41/2007 Custom Circular dated 29.10.2007 called Instructions for implementation of Intellectual Property Rights (Imported Goods) Enforcement Rules, 2007 issued by Central Board of Excise and Customs

January 27, 2009          Office of Commissioner of customs, intellectual property rights cell at Chennai communicated vide letter no. F No.SIIB/IPR/1/08-ACC to Defendant no. 1 that his application has been registered and has been allotted UPRNo. A01671NMAA4PR.

The claims that are allowed to Mr. Ram Kumar by Chennai Patent Office are related to mobile instruments having provision for plurality of current or modified sim sockets for accommodating plurality of current or modified sim cards and essentially having plurality of  headphone/earphone jacks for accepting plurality of headphone/earphone plugs and/or plurality of Bluetooth devices in order to operate simultaneously so as a plurality of incoming/ outgoing calls can be communicated simultaneously with respective simcards. The above invention is totally different from dual-sim technology as dual sim technology envisage mobile devices with incorporation of plurality of sim cards, and the present patent is step further then that as mobile device disclosed here has a  provision for plurality of sim sockets for accommodating plurality of sim cards and having plurality of  headphone/earphone jacks for accepting plurality of headphone/earphone plugs and/or plurality of Bluetooth devices to operate simultaneously so that a plurality of incoming/ outgoing calls can be communicated simultaneously with respective simcards.

This is not for the first time that provisions of Indian Laws are challenged by MNC companies, Novartis has in the past tried same. But in the instant matter there is nothing wrong in the Indian Custom regulations, if any fault can be attributed it has to be on Chennai Patent office that has granted a Patent with title that is confusing the custom authority, which being non technical are not clearing the shipments. Though the brief disclosure of technology by Mr. Ram Kumar made to Custom office makes it clear that his invention is different from dual sim or multi sim technology.

As per Rule 7 of the custom notification no. 47/2007 Customs (N.T.) dated 08.05.2007 called Intellectual Property Right (Imported Goods) Enforcement Rules, 2007 if Deputy Commissioner of Customs or Assistant Commissioner of Customs (suo motto or on a notice by patentee) has reasons to believe that imported goods are suspected to be goods infringing IP rights, he has to suspend the clearance of goods.  In case of suo motto action Deputy Commissioner of Customs or Assistant Commissioner of Customs must have some prima facie evidence or reasonable grounds. The reasons of suspension have to be immediately issued to importer, right holder (patentee or licensee) or their respective authorised representative by speed post or fax/email. There is provision that if the right holder or his authorised representative does not join the proceedings within 10 working days from date of suspension of clearance (or within further extended period of 10 days in appropriate cases), the case may be decided ex parte on merit and goods could be cleared.

Further in case of suo motto action the right holder has to file an application/ notice and execute indemnity bond etc. within 5 working days from suspension of clearance otherwise the custom office has to release the goods subject to other requirements under custom act.

Therefore Indian Customs regulations provide reasonable opportunity to importers whose goods are not cleared. The stipulated time frame for representation is also just and if any loss or damages are caused to importer because of any such non-action, they could seek damages as custom authorities are indemnified by the right holder. Further, the issue of technology has to be settled by one importer once in respect of a particular patented product and henceforth the decision could be relied by importer as well as custom authorities.    

It has been a settled principal of law where alternative remedy is available resort to writ petitions (extra ordinary jurisdiction) should not be taken. Apart from administrative relief from the custom authorities the importers could also take relief under Section 105 of the Indian Patent Act by filing a suit in the court for declaration that there product is not infringing a particular patent.

Further mobile instruments under no circumstances can be said to be perishable goods that will get perish if not cleared within a time frame by custom authorities warranting exercise of extraordinary jurisdiction.

As per the recent information; the Samsung has withdrawn the writ petition and Ramkumar has got a stay again Samsung and many others mobile companies apart from Micromax which has filed a declaration suit under Section 105 of the Indian Patent Act that their instrument does not violate Ramkumar’s Patent and has got a stay order from the Gurgaon District Court.    

Patent Attorney – India Agarwal & Co. – Trademark, Patent Attorneys

July 28th, 2009 at 12:42am Under trademark law

LEGISLATION

The Indian law of patents is enshrined in the Patents Act, 1970. The Act seeks to provide for legal protection for inventions. The rights granted under the Act, are operative in the whole of India.

OBJECT

The object of the patent law is to provides a statutory right to owner of the patent for a certain period of time and disclose invention to use it and practice that invention and make it work thus encourage scientific research and new technology, stimulate new inventions of commercial utility and pass invention into public domain after the expiry of the fixed period of the monopoly.

PRIORITY CLAIMS

India is one of the countries party to the Paris Convention so the right of priority are applicable. The applicant may within the six months apply for protection.

WHAT IS A PATENT

A Patent is an exclusive monopoly granted to an inventor over his invention for a limited period of time. It provides an enforceable legal right to prevent others from exploiting an invention.

RIGHTS CONFERRED BY REGISTRATION

Patent represents one of the powerful intellectual property rights. The registration of a patent confers on the patentee the exclusive right to use, manufacture or sell his invention for the term of the patent. It means that the invention cannot be commercially made, used, distributed or sold without the patentee’s consent. The patent rights can usually be enforced in a court of law.

WHO CAN APPLY

Any person claming to be the true and first inventor of the invention;

Any person being the assignee of the person claming to be the true and first inventor in respect of the right to make such an application;

Any legal representative of any deceased person who immediately before his death was entitled to make such application Patent Search;

It is prudent to conduct searches as early as possible to avoid spending time and money re-inventing a known matter. A patent is not granted to an invention if it is already available with the public either in the form of published literature or common knowledge.

PATENTABLE INVENTIONS

To be patentable, an invention must, in general, satisfy certain criteria. The invention must be of industrial applicability, must be new and must show an inventive step which could not be deduced by a person reasonably skilled in the field. Above all, its subject matter must be accepted as “patentable” under law. As for example, Inventions which are frivolous or claim anything contrary to well established natural laws are not patentable. There are also other specific categories of inventions which are declared as non-patentable.

PATENT SPECIFICATION

The process of patenting typically involves conducting prior art searches to distinguish the invention and develop a description that illustrates the best method of working the invention. The description of the invention is called specification. Depending upon the sufficiency of the description a specification may be either provisional or complete Specification.

PROVISIONAL AND COMPLETE SPECIFICATION

A provisional specification is often the first application filed in respect of an invention, and usually contains only a brief description of the invention. It need not contain claims. Compared with the provisional, the complete specification contains the full description of the invention, and the best method of making the invention work. The complete specification comprises a title, field of invention, the background of the invention, the description of the related art, drawbacks of the prior art, the summary of the invention, the brief description of the figures, the detailed description of the preferred embodiments, claims and abstract. Complete specification must be filed within 12 months from the date of filing of the provisional specification.

Claims are the most important component in the patent specification as it is the legal operative part which define and determine the legal protection sought for. The extent of patent protection for an invention shall be determined by the terms of the claims. The description and the appended drawings may be used to interpret the claims.

FILING AND PROSECUTING PATENT APPLICATIONS

The procedure for the grant of a patent starts with filing of the patent application along with the prescribed fees at the patent office followed by filing of request for examination in the prescribed format, after the publication of the application. The applications are examined substantively and a first examination report stating the objections is communicated to the applicant. Application may be amended in order to meet the objections. If the applicant does not comply with the objection, the application will be abandoned. After complying off the requirements the application is published in the Official Journal. At that time, opposition can be filed on limited grounds, but hearing is not mandatory. Patent will be granted if the application is found to be in order. Then, the application and other related documents will be open for public inspection. Thereafter, at any time after the grant but before the expiry of a period of one year from the date of publication opposition on substantive grounds is available. The whole process typically takes at least two years.

DURATION OF A PATENT

The tenure for patents is 20 years from the date of filing of the application for the patent before the patent office. It is the responsibility of the patentee to maintain an issued patent by paying the annuities until the patent expires. After 20 years term the invention claimed in the patent falls into the public domain.

RESTORATION

Restoration of a patent that lapses due to non-payment of renewal fees can be made within one year of lapse. However, certain limitations will be imposed on the rights of the patentee when the patent is restored.

LIST OF INFORMATION REQUIRED FOR PATENT REGISTRATION

1. Name address of the applicant.

2. Complete Specification.

3. Drawing.

4. Request.

5. Abstract.

6. Power of Attorney.

7. Priority documents (if any).

There is no international or world patent. An inventor has to file an application in each country, where he seeks to protect his invention. However, there are regional and/or International treaties to facilitate the procedure to seek protection like Patent co-operation Treaty (PCT) or European Patent Convention (EPC).

Saket Agarwal

Agarwal & Co.

Trademarks, Patent Attorneys

94, Ajanta Apartment, 36, I.P. Extension

New Delhi – 110092 (INDIA)

+91-11-22732540; +91-9810176867

Patent Attorney – India Agarwal & Co. – Trademark, Patent Attorneys

July 27th, 2009 at 06:45pm Under trademark law

LEGISLATION

The Indian law of patents is enshrined in the Patents Act, 1970. The Act seeks to provide for legal protection for inventions. The rights granted under the Act, are operative in the whole of India.

OBJECT

The object of the patent law is to provides a statutory right to owner of the patent for a certain period of time and disclose invention to use it and practice that invention and make it work thus encourage scientific research and new technology, stimulate new inventions of commercial utility and pass invention into public domain after the expiry of the fixed period of the monopoly.

PRIORITY CLAIMS

India is one of the countries party to the Paris Convention so the right of priority are applicable. The applicant may within the six months apply for protection.

WHAT IS A PATENT

A Patent is an exclusive monopoly granted to an inventor over his invention for a limited period of time. It provides an enforceable legal right to prevent others from exploiting an invention.

RIGHTS CONFERRED BY REGISTRATION

Patent represents one of the powerful intellectual property rights. The registration of a patent confers on the patentee the exclusive right to use, manufacture or sell his invention for the term of the patent. It means that the invention cannot be commercially made, used, distributed or sold without the patentee’s consent. The patent rights can usually be enforced in a court of law.

WHO CAN APPLY

Any person claming to be the true and first inventor of the invention;

Any person being the assignee of the person claming to be the true and first inventor in respect of the right to make such an application;

Any legal representative of any deceased person who immediately before his death was entitled to make such application Patent Search;

It is prudent to conduct searches as early as possible to avoid spending time and money re-inventing a known matter. A patent is not granted to an invention if it is already available with the public either in the form of published literature or common knowledge.

PATENTABLE INVENTIONS

To be patentable, an invention must, in general, satisfy certain criteria. The invention must be of industrial applicability, must be new and must show an inventive step which could not be deduced by a person reasonably skilled in the field. Above all, its subject matter must be accepted as “patentable” under law. As for example, Inventions which are frivolous or claim anything contrary to well established natural laws are not patentable. There are also other specific categories of inventions which are declared as non-patentable.

PATENT SPECIFICATION

The process of patenting typically involves conducting prior art searches to distinguish the invention and develop a description that illustrates the best method of working the invention. The description of the invention is called specification. Depending upon the sufficiency of the description a specification may be either provisional or complete Specification.

PROVISIONAL AND COMPLETE SPECIFICATION

A provisional specification is often the first application filed in respect of an invention, and usually contains only a brief description of the invention. It need not contain claims. Compared with the provisional, the complete specification contains the full description of the invention, and the best method of making the invention work. The complete specification comprises a title, field of invention, the background of the invention, the description of the related art, drawbacks of the prior art, the summary of the invention, the brief description of the figures, the detailed description of the preferred embodiments, claims and abstract. Complete specification must be filed within 12 months from the date of filing of the provisional specification.

Claims are the most important component in the patent specification as it is the legal operative part which define and determine the legal protection sought for. The extent of patent protection for an invention shall be determined by the terms of the claims. The description and the appended drawings may be used to interpret the claims.

FILING AND PROSECUTING PATENT APPLICATIONS

The procedure for the grant of a patent starts with filing of the patent application along with the prescribed fees at the patent office followed by filing of request for examination in the prescribed format, after the publication of the application. The applications are examined substantively and a first examination report stating the objections is communicated to the applicant. Application may be amended in order to meet the objections. If the applicant does not comply with the objection, the application will be abandoned. After complying off the requirements the application is published in the Official Journal. At that time, opposition can be filed on limited grounds, but hearing is not mandatory. Patent will be granted if the application is found to be in order. Then, the application and other related documents will be open for public inspection. Thereafter, at any time after the grant but before the expiry of a period of one year from the date of publication opposition on substantive grounds is available. The whole process typically takes at least two years.

DURATION OF A PATENT

The tenure for patents is 20 years from the date of filing of the application for the patent before the patent office. It is the responsibility of the patentee to maintain an issued patent by paying the annuities until the patent expires. After 20 years term the invention claimed in the patent falls into the public domain.

RESTORATION

Restoration of a patent that lapses due to non-payment of renewal fees can be made within one year of lapse. However, certain limitations will be imposed on the rights of the patentee when the patent is restored.

LIST OF INFORMATION REQUIRED FOR PATENT REGISTRATION

1. Name address of the applicant.

2. Complete Specification.

3. Drawing.

4. Request.

5. Abstract.

6. Power of Attorney.

7. Priority documents (if any).

There is no international or world patent. An inventor has to file an application in each country, where he seeks to protect his invention. However, there are regional and/or International treaties to facilitate the procedure to seek protection like Patent co-operation Treaty (PCT) or European Patent Convention (EPC).

Saket Agarwal

Agarwal & Co.

Trademarks, Patent Attorneys

94, Ajanta Apartment, 36, I.P. Extension

New Delhi – 110092 (INDIA)

+91-11-22732540; +91-9810176867

Violation of Copyright Law 1957

July 11th, 2009 at 12:40am Under copyright law

The Indian Copyright Law under the Indian Copyright of 1957 is the true manifestation of the Berne Convention of Copyrights, of which India is an active member. Moreover, India is also a dynamic member of World Intellectual Property Organization, Geneva. The act was put in place in 1957 by the government of India to protect the interest of pioneers and dreamers.

The Indian Copyright Law of 1957 bans the reproduction of a previously written artistic material or performance rights without prior consent of the owner. The law clearly states that the owner has the sole right on his copyright. The law not only protects works of art from ‘theft’ but also protects dramatic, artistic and musical works along with cinematography films and sound recording.

The use of ‘available material’ without sanction of author for personal profit is illegal and this act breaks the copyright law 1957. There are special copyright attorneys in India that can help you in the case of any possible violation. Violation of copyright law 1957 is an offense and is punished likewise. However there are some cases where the law cannot be enforced. If the theme is the same, but it is presented as a new work with no reference to the original one, there is no violation of the law.

You will get the best results if you take help, in case of any violation, of trained copyright lawyers. Moreover there are a number of agencies in India offering copyright services, and can help you in case of any breach of intellectual property. Many pioneers create a copyright management system in which they protect their online data using passwords and registration. However be careful that you hire a reputed Indian attorney for your work.