This Blog is in of analysis of various Laws/Policy/Cases and IP Issues. An Effort from Alumni of Law School, IIT Kharagpur.
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On September 2nd
2016 (Friday), Reliance launched it’s one of the ambitious projects-Jio. Many
of the leading newspapers i.e.The Times of India and the Hindustan Times provided
a full (front page) jacket advertisement with Prime Minister Narendra Modi,
dressed in a blue jacket, staring at them from under the words “Jio: Digital
Life”-Dedicated to India and 1.2 billion Indians.
For the purpose my
analysis, I tried searching images of Hon’ble Prime minister of India Mr.
Narendra Modi in Google. What I found is the current image which is used by
Reliance for its ad Jio is an image of September 05, 2015, almost a year back. Prime
Minister Narendra Modi, dressed in a blue jacket exactly that of the
advertisement on September 2nd 2016. The article titles as “Technology
with creative thinking can change lives: Prime Minister Narendra Modi”.
Previously photo uploaded on Sep 05 2015
convenience, please find the following link.
Tough the ad states
that: “Our Prime Minister’s vision is inspiring vision of digital India is one such
movement, “Jio is a dedication to that Digital India dream of the Prime
Minister, his vision for the 1.2 billion people of India.” Though being a
lawyer, I completely understand that Prime Minister of India does not directly relate
nor promotes the company in any way. However, two questions arise in my mind.
First, whether a private company or public company for the purpose can use
images of Hon’ble prime minister of India in its advertisement. Secondly, if
there is a violation of copyright.
Though this act of Reliance
is criticized in the social media, let me analyze it from a legal perspective.
Section 3 of The
Emblems and Names (Prevention of Improper Use) Act, 1950(“EN Act”), no
person shall, except in such
cases and under such conditions as may be prescribed by the Central Government,
use, or continue to use, for the purpose
of any trade, business, calling or profession or in the title of any
patent, or in any trade mark or design, any
name or emblem specified in the Schedule or any colorable imitation thereof
without the previous permission of the Central Government or of such officer of
Government as may be authorized in this behalf by the Central Government.
For the purpose, 9A of
the Schedule states that: The name of the name or pictorial representation of
10 [Chaatrapati Shivaji Maharaj or] Mahatma Gandhi 11[or Pandit Jawahar Lal
Nehru], 12[Shrimati Indira Gandhi] or
the Prime Minister of India 1[except the pictorial use thereof on calendars
where only the name of the manufacturers and printers of the calendars are
given and the calendars are not used for advertising goods].] (Emphasis
Reading Section 3 of
the EN Act states that no person shall use or continued to use any name or
emblem specified in the schedule for the purpose of any trade, business or in
any intellectual property like patent, trade mark or design without prior
permission from the Central Government. Schedule 9A of the EN Act clearly includes
the name of Prime Minister of India. Reading
Section 3 along with the Schedule suggests that No one should use the name of Prime
Minister of India without prior permission from Central Government for the
purpose of any trade, business or in any intellectual property like patent,
trade mark or design. However, there is a clarification which provides that the
Image of Prime Minister of India can be used on the calendars where only name
of manufacturers and printers of the calendars are provided and the calendar is
not used for any advertising goods.
The penalty as
mentioned in the Section 5 of the EN Act states that, any person who
contravenes the provisions of section 3 shall be punishable with fine which may
extend to five hundred rupees.
Well, analyzing the
advertisement from the EN Act perspective, though it seems that Reliance
violated Section 3 of the EN Act. However, the clarification provided in the
Schedule stated that Image of Prime Minister of India can be used on the calendars
where only name of manufacturers and printers of the calendars are provided and
the calendar is not used for any advertising “goods”. It states that the name of the Prime Minister of India
cannot be used for any purpose of advertisement for any “goods”. The
advertisement of Reliance was for the purpose of “Services”, which may take
reliance out of the purview of the EN Act.
It is to be seen if the
Company have taken prior permission from the Central Government or have relied
upon the loophole provided in the EN Act or have considered and ready to pay
the penalty which is negligible.
Secondly, copyright holder of the image may consider options under Indian Copyright Act, 1957.
and other relevant searches are important for Patents. The quality and
enforceability of a patent depends upon the initial search. If a search is
conducted diligently, then it becomes convenient at the time of prosecution and
enforcement. Hence a through search is a must before filing a patent. Also,
multiple searches at different stages in the life of a patent are necessary.
Patentability/ Inventbility search
Freedom to Operate (FTO) search
search: This search is conducted to ensure of the subject matter of the patent
is patentable or not. This is a global search. Patents, literatures, articles,
journals, books and relevant documents are considered while making a
patentability search. In India, Section 3 provides a list of inventions which
are not patentable. This search is required at initial stages of research. Even
if the inventions fulfill all the criteria of a patent, however, if the
invention does not pass the patentability search then the invention cannot be
patented. The main purpose of conducting this search is to ensure that the inventions
are patentable or not.
to Operate (FTO) search: This search is conducted to ensure if the invention is
infringing or encroaching upon someone’s patent and if there are prior arts to
make the invention obvious. FTO search may also refer as right to use search. The
purpose of this search is to ensure that companies avoid IP infringements prior
to commercialization of any product or process. The FTO search includes a
comprehensive patent search to identify and analyse un-expired patents and published
patent applications that are present in the jurisdiction of interest.
search: This search is conducted to invalidate patents of any third party.
search: This search is conducted to see if any third party is infringing one’s
In the last post I discussed some of the issues particularly in reference to Art. 14 of the Indian Constitution. On continuation to that there are few other issues which are, and aren't directly related to violation of fundamental rights per se, but definitely add to the unconstitutionality of the section 126 of the Patent Act. These issues are as follows:
1. The body selecting the patent agents: The patent office itself selects patent agents. It is well understood in law that the Controller (or proceedings before Patent Office) is a quasi judicial body. The Controller must just act judicially. Various proceedings in front of Controller are judicial proceedings. All the natural laws are well applicable to any person appearing before the Controller and a writ may be filed if such rights are violated.
If Controller prohibits a person appearing on behalf of an applicant for not being a Patent Agent and sticks to the requirement of representation only by a Patent Agent, the Controller in effect, selects legal representation of opponents in matters before quasi-judicial authority, in which the Patent Office is itself a party. What does it sound? Violation of administrative principles of bias and violation of natural right by snatching best possible legal representation? What more? Article 14 is gone.
2. Article 19 violation; I don't have much to say on this. Reasonable restrictions of Article 19 must meet the test of Article 14. If there is violation of Article 14 and the subject matter also environs article 19 on common grounds, essentially it must violate article 19 as well.
The drafted section 126 and 127 suffers from lots of constitutional issues. This might be due to hurriedly drafted Patent Amendment Act 2005. I suspect that some of these issues might arise in Appeal (if Patent Office decides to appeal). Whatsoever, I don't think apex Court should allow the petition declaring Section 126 of the Patent Act enforceable in law.
Meanwhile, I know of a RTI application filed asking clear guidelines in light of change in law and details related to the case. We will see more of this sooner.
Madras High Court decided on a matter concerning Section 67 (a) of the Patent
Amendment Act, 2005. It held the 2005 amendment unconstitutional and
unenforceable in law. The decision restores the deleted clause of section 126
back to the place and section 126 may now be read as: Qualifications for registration as patent agents.—(1) A person shall be
qualified to have his
name entered in the register of patent agents if he fulfills the following
(a) he is a citizen of India;
(b) he has completed the age of 21 years;
(c) he has obtaineda degree
in science, engineering or technology from any university established under lawfor the time being in force in the
territory of India or possesses such other equivalent qualifications as the
Central Government may specify in this behalf, and,in addition,—
(i) is an advocate within the meaning of The Advocate Act 1961 (25 of 1961; or
(ii) has passed the qualifying examination prescribed for the purpose; or
(iii) has, for a total period of not less than ten years, functioned either as
an examiner or discharged the functions of the Controller under section 73 or
both, but ceased to hold any such capacity at the time of making the
application for registration;
(d) he has paid such fee as may be prescribed.
through the decision was mazy and lead me to turn the pages multiple times
to realize a probable miss-out. Anyway, I thought of writing down where
Court might have missed pieces. Needless to say, it is also an opportunity to verify my understanding with all my readers. Your comments
and suggestions are welcome.
the underlined and bold part of the section 126 quoted above:
The judgment reiterates, that the prior to the impugned amendment (that is amendment of 2005), any
advocate could register themselves as the patent agent. This statement
is factually wrong. ( and this statement actually create a doubt on the
reasoning of the judgment and the obiter. I was actually lost thinking why would judge discuss law as social science? The amendment to the requirement of
science degree was not even challenged in the writ petition!!) Even prior to
2005 amendment, the law as it stood was to make only those advocates eligible
to be registered who held a degree in science/technology/engineering. Any
Advocate was not eligible to be registered as Patent Agent. I am not sure if the whole judgement is based on this mistaken fact ! Well this anomaly typically is pretty much distraction while
reading the judgment. (and while writing this blog as well !!).
Coming to the
constitutionality of section 126 of the Act. The judge struck down the 2005 amendment on the basis of Article 14, 19 and 21. I majorly agree on the conclusion of judgment,
however, my reasoning may not be in congruence with the judgment and I independently have tried to see the constitutionality of the amendment and section 126.
Article 14 wrt 2005 Amendment:
Article 14, being one of the Fundamental
Rights, mandates equal treatment of persons before law. However, the state may
choose unequal treatment if the state may justify the cause. Briefly speaking the
Article 14 may legally be violated if it passes the two step test i.e.:
enactment creates an intelligible diffrentia among the persons
that the intelligible differentia has a rational nexus with the object that the
statue seeks to achieve through the legislation.
intelligible diffrentia must clearly indicate the group of people created and
those who are clearly left out. The object of the enactment is gathered from
the mischief the enactment has sought to remedy and is a two way step:
the mischief that existed at the time of enactment.
legislation has remedified that mischief with respect to the enactment.
Having said this, let us see the intelligible differentia in Section 126 and the object of the enactment.
Intelligible differentia: The Science graduates who have passed the Patent Agent Examination.
Object of the Enactment: The object and reason section of the Patent Amendment Act, 2005 is silent in
this particular context. The object of the statue can be gathered from section
127 which states rights (and hence duties) of the Patent Agent. Section 127 is
Rights of patent agents. Subject to the provisions contained in this Act and in
any rules made thereunder, every patent agent whose name is entered in the
register shall be entitled-
to practise before the Controller; and
to prepare all documents, transact all business and discharge such other
functions as may be prescribed in connection with any proceeding before the
Controller under this Act.
Please note that section 127 doesn't mention any other object!! (No mention
of understanding the invention, or clarifying the invention or technology or
engineering or any other similar requirements).
Rational Nexus between the Differentia and Object: The intelligible differentia must have a rational nexus
with the object of the enactment. This is where the 2005 amendment gets a blow.
What is nexus between the drafting/pleading and transacting the documents in
front of controller and being a science graduate? The answer is that a drafter
or a prosecutor may be able to understand the subject matter more clearly and thoroughly.
The next question is how an Advocate, (who by the way, is science graduate and trained to and certified by BCI to argue cases and represent the clients in
District Court, High Court and Supreme Court in matters concerning the Patents
and other laws!!) is not creating a better nexus with the object of the
The unanswered question is more of question of fact. Are
the science grads after passing a Patent Agent Examination are better versed to
practice in front of Controllers than Advocates who are both lawyers and
science graduates, and are certified by BCI after due diligence? What does
Patent Agent Examination test? Knowledge in law or knowledge in technology or both?
If the Patent Agent examination is designed so as to cover the aspects
mentioned in section 127 of the Act, are aspects of section 127 alien to Advocates?
Is the subject matter covered in Patent Agent Examination is not covered in Law
Universities? What is more important, a specialized knowledge of the Patent Act
or understanding of law in general, or both?
Well my opinion: The object gathered from Section 127 is
not achieved by the Section 126, or at least there exist one class which is in equal
or better position to create the intelligible differentia, and is left out. Eliminating a better qualified class to achieve the object of the statue is unreasonable classification. For example, P Rajendran v State of Madras, the Apex Court has denied the Constitutionality of the enactment when the intelligible differentia environed a lesser qualified person to achieve the object than more qualified person through the statue. Case is similar here. Again, legislature must reflect the nexus in the Act. Courts are not going to take the argument that it is Constitutional because some international treaty is in force. International treaties are not binding on any Indian Court
The point is simple
and straight: Either the law is arbitrary, or the legislature hasn’t drafted
the Act diligently to make the section 126, section 127, and object of the Act robust
enough to withstand the test of Article 14.
I am not against the fact that the Patent Agents should
have legal and technical skills in a well blend mixture; I am just cognizant of
the fact that my law is not permitting this criteria as fundamental rights
violation are not justified with the present shape of the enactment. Either law
changes to bring a rational nexus or the enactment goes!!
The 2005 amendment did violated Article 14 at least on
rational nexus. There are some other parameters which might find
force in unconstitutionality of Section 126 at its present form. I will give it
a go right now for my next post.
 The test was clearly expressed by Das J in State
of WB v Anwar Ali Sarkar, AIR 1952 SC
75. The test has been repeated in different cases and is a strong
established precedence in the Apex Court.
per notification no: CG/Public notice/2013/77*, dated 12th February 2013,
which is available here.
All patentees and licenses (whether exclusive or otherwise) are required to
furnish information regarding the working of patented invention on
commercial scale in India in form 27, within three months of end of each
year. The Indian Patent Office has recently taken a serious note of the fact
that compliance with this provision has been overlooked by a majority of
patentees since long time.
Section 146 (1) of patent Act provides
power to controller to ask for information from a patentee at anytime during
the continuance of patent by notice in writing. This section casts a duty on
patentee or a licensee (exclusive or otherwise) to provide information related
to working of an invention on a commercial basis to controller in the form 27.
As the wording of this section uses “and” Both patentee and license holders
have to submit the form 27 duly filed. It is also required by the section that
duly filled form should be submitted to patent office within two months of such
notice by controller. Section 146 (2) of patent Act, mandates patentee &
license holders to furnish information to controller, not less than six months
from previous submission to controller. However, Section 146 (2) of patent Act
provides controller an authority to publish the information regarding
statements by patentees & license holder in the manner deemed fit.
Section 122(1) (b) of patent Act states
that if any person refuses or fails to furnish information under section 146 of
patents Act shall be punishable with fine whish may extend up to ten lakh of
rupees. Punishment here provided is compoundable.Section 122(2) of patent Act states that if
any person provides false information or statement which is false, shall be
punishable with imprisonment which may extend to six months or with fine or
with both. Punishment here provided is non-compoundable.
Options available to Patentees & License holders:
First option which is available to
patentee & license holders is to provide the information as sought by
controller within stipulated time(31st March in this case). If the
invention has not been worked upon, it’s high time that patentees & license
holders should start working on the invention & state in the form 27 that
invention is being worked upon and currently do not posses sales data,
manufacturing data, import data & choose option of partly met public
providing false information to controller:
If Patentee & License holder
chooses to submit the form by providing wrong information, then they shall be
punishable with imprisonment which may extend to six months or with fine or
with both. The very act of the Patentee & License holder will draw the
attention of criminal procedure code.
providing information regarding “Non-working” of an invention:If
Patentee & License holder
chooses to submit the form by providing the option of patented invention ‘not
worked”, then Patentee & License holder must state the reasons for not
working and steps being taken for ‘working of the invention’.
The non-working of a patented
invention on a commercial scale in India makes the patent vulnerable to compulsory
licensing provisions under the Act, especially to the inventions which are recently
granted. Applying & getting compulsory licenses are still at its nascent
stage in India; however we also need to consider the growth & development of
various aspects of technology as well as Intellectual property scenario. Practically
speaking for compulsory licensing, it requires expiration of three years from
date of grant, but non-working of invention will give an added advantage to the
person applying for compulsory licensing. Any interested party who has been unsuccessful in procuring a
voluntary license from the patentee can file an application with the Controller
requesting for a compulsory license after expiry of three years from grant of
the patent. Such person needs to establish the occurrence of any of the three
conditions mentioned in Section 84of the Act. One such condition is that the patent should have ‘not worked in the territory of India’.
If the Controller is satisfied, he may grant the applicant a non-exclusive
compulsory license for the balance term of the patent, unless a shorter term is
consistent with public interest. The patent can subsequently be revoked after
the expiration of two years from the grant of the compulsory license on
application by any third party or the Government if it is established that the
compulsorily licensed patent has not satisfied the purpose for which it was
It is a well established fact that a
patent is granted in order to encourage innovation and to ultimately serve the
public interest, however, Controller cannot suo moturevoke the patent. Neither is
‘non-working’ a ground for revocation of a patent by a person interested under
Section 64 of the Act. Therefore, non-working would not directly lead to
revocation of patent.
"It is advised to Patenees & License holders to file form 27 duly filed for working of invention & in case, invention has not been worked upon, it is high time to look upon"