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LES India Hosts Country’s Finest Gathering of Licensing Executives

LES India Hosts Country’s Finest Gathering of Licensing Executives

Lex Witness joins LES India as the Official Conference Secretariat

The LES India Chapter, along with Lex Witness – India’s 1st Magazine on Legal & Corporate Affairs as the Official Conference Secretariat successfully convened a stateof- the-art 3-day conference – The LES APAC Conference 2018 including a startup business plan competition and an excursion to The Taj Mahal, Agra as well. The conference included eminent speakers, panelists, dignitaries and distinguished guests from different industries, academia, patent offices, government, policy bodies, law firms, and IP, legal and licensing professionals globally. With the overriding theme as IP Drives the Bottom Line, the conference focused on the need for strong IP regimes, licensing challenges and best practices across industries, the impact of technological advancements on IPR and licensing and much more.

AN OVERVIEW OF THE SPECIAL ADDRESSES

Chief Guest, Hon’ble Justice Mr. Dipak Misra, Former Chief Justice of India, emphasized on original intelligence is the source of artificial intelligence and that AI should not be considered supreme or preferred over human intelligence. While emphasizing the need for protection of IP, he also acknowledged that where a patent is obtained in public interest, it should not be utilized for individual interest and must succumb to the public interest. He also stated that a Patent cannot stand superior to public welfare. He emphasized upon the necessity of awareness wrt promoting licensing in the country.

Hon’ble Justice Mr. Shiva Kirti Singh, Chairperson of Telecom Disputes Settlement and Appellate Tribunal, in his special address mentioned impact of facilitators in transfer of technology and further proceeded to acknowledge the importance of IP awareness, and the adverse effects of piracy on the value of an IP and recommended on need of strong regulations for tackling piracy and counterfeiting. He emphasized from a judicial viewpoint that the police and executives need to be sensitized in cases where disputes arise with regards to the rights pertaining to intangible property. He further stressed on the necessity of full mechanism in order to obtain recognition of rights in the field of IP and concluded by laying stress on the importance of these conferences in order to spread awareness on the ever-rising issues in such a vast field such as IP.

Guest of Honour, Mr. Rajiv Aggarwal, Joint Secretary, DIPP, GoI, addressed on key initiatives and steps taken up by the regulatory authority jointly headed by him which included the expedited process of examination and grant of Trade Marks and Copyrights. Apart from Artificial Intelligence and Blockchain, he stressed the fact that IPR is included in school education as part of the subject business studies. He also discussed training programmes being conducted for police officers in India regarding the procedures to be followed in conducting search and seizure with respect to trademark and copyright infringement. He further acknowledged the current challenges faced by Indian businesses and attorneys are valuation & commercialization of IP. He finally insisted on the part that if the patent is in public interest then there should be full disclosure in the market and briefly discussed compulsory licensing in light of Bayer Vs NATCO case.

TECHNICAL SESSIONS – DAY 1 – 12TH NOV 2018

Moderated by Sameer Swarup, Deputy Controller of Patents & Designs, IT Division, Patent Office, GoI.

Alfred Yip, Director, Intellectual Property Office of Singapore appreciated the expedited and efficient steps taken by the Singapore IP Office with respect to examination and prosecution of IPRs. He then stated that the Asian Countries, which were passive recipients in terms of IPR applications, are now actively working towards developing and acquiring rights over their Intellectual Properties developed domestically. He further pitched on the importance of innovation and the process of bringing ideas into life. He further enlightened the audience on the crucial steps taken by the Singapore Government to promote innovation like funding a 1 Billion Singapore Dollars as innovation fund and making the process of application formless to avoid the hassle and to ensure speedy filing of the Patent Applications.

Daniel Ryman, Director, Office of Patent Quality Assurance, USPTO enlightened on the importance of training examiners and other officials via video conferencing by experts all over the world and also stated that the USPTO has been following the process for a few years and the process has helped the USPTO to effectively and efficiently dispose of the numerous applications filed by the applicants. He further stressed upon the external surveys and the holistic approach to work on externally derived data and concluded his address by emphasizing on the need to spread awareness amongst the start-ups and other Small and medium enterprises about the importance and necessity of protection of IPRs.

Georg Weber, Director, European Patent Office gave us an insight into the statistics and facts of the EPO and enlightened us on the steps taken by the EPO and targets set for the near future. He shared that the number of patents granted in EPO in 2017 was almost 105,000 which is 3.7% of the total number of applications filed. He also laid emphasis on the importance of granting patents in time and encouraged end-to-end patent granting process, reduction of process time by training and recruitment of the officials. Various targets set by the EPO to reduce the grant-time of Patents include generation of combined search report in 4.8 months, total grant time in 12 months (currently 22 months) and disposal of opposition proceedings in 15 months. These targets shall eventually increase the effective life of a Patent which shall have a huge positive impact on the current scenario. Other steps taken by EPO include regularly updating guidelines for oppositions and examination, gathering and evaluation feedback, fast-track complaint redressal and bringing uniformity in the examination process.

Takehiro Takei, Director – Intellectual Property Rights, JETRO, gave his views on transforming IP regime in Japan and various initiatives taken up by Japan Patent Office. He also discussed how Japan Govt is working towards encouraging Small and Medium Enterprises and Local Enterprises for acquiring protection of rights through IPRs and stressed upon obtaining Patents for emerging technologies. He further discussed in detail various steps taken by the JPO to improvise on the system of grant/ examination of Patents. These include Updated examination guidelines, reliable examination of IoT related invention and better access to Patent information. The JPO is also following the process of conducts consultation sessions for the examiners with IoT Patent Experts and also accumulate and share knowledge on IoT technologies within the examination panel. He concluded by emphasizing on the need to recognize and promote and protect emerging technologies and simultaneous training of the examiners/ authorities regarding these emerging technologies.

Moderated Lakshika Joshi, Global IP Head and Legal Leadership, Aricent Inc.

Dr. Santosh Mohanty, Vice President of IP and Product Engineering, Tata Consultancy Services initiated the session by describing IP in layman language as the capability of a computer to perform a human task and talked about various sorts of machine learning necessary especially in the field of AI. He also discussed the pros and cons of data levelling and the necessity of human supervision in levelling of data, thus making it a man and machine-oriented process. While discussing also on the technical aspects of AI, its applicability and worldwide acceptance and utilization, he also indicated that AI shall continuously grow by leaps and bounds every passing day and discrepancies are bound to occur in such growing and dynamic field. Lastly, he affirmed with Hon’ble Justice Mr. Dipak Misra’s statement that original intelligence is the source of artificial intelligence and gave similar views on originality of ideas and their application.

John Paul, Partner, Finnegan and LESI Board Member discussed the growth of IP and gave his inputs on issues like ownership in case of joint inventors and disclosure among co-inventors. He also discussed in short, the positive impacts of the growth of AI in the IPR market as well as the business but stressed mainly on the preservation of rights in cases of coinventors or joint inventors. He expressed his views about recognition to people who contribute to the inception of the invention and stressed upon the need to disclose the details of those patents which if used by a large number, shall prove beneficial for the public interest.

Garima Sahney, Partner, Saikrishna & Associates started with the note that the life of some medicines in the pharma field for example Paracetamol is long, however, the same is not applicable in case of software which keeps on upgrading at a very fast pace. She briefly discussed the types of IPs which can cover Artificial Intelligence. She pointed out that AI can seek protection under Copyrights or Patents. She stated that it is very easy to obtain a Copyright protection for AI software. However, the problem arises in deciding the patentability of AI software as the position of Indian Patent Office is not very clear in the light of Section 3 (k) of Patents Act, 1970. Therefore, it is of primary importance to bring some clarity with regard to the scope of the patentability of software.

Nikhil Narendran, Partner, Trilegal very precisely touched upon the ethical issues behind AI. He laid emphasis on the fact that AI should be created for the greater good of mankind. He pointed out that a transparent system is a prerequisite in order to safeguard the interest of the consumers as well as the developers. He further stated that the developer of AI and the person who puts it in the market should be responsible for maintaining AI ethics. He also said that a proper AI assessment should be conducted before making it available in the market for usage.

Moderated by Patricia Bunye, Senior Partner, Cruz Marcelo & Tenefrancia and Past President, LESI.

Prof (Dr) Subhash Gupta, Pro Vice- Chancellor, K.R. Mangalam University added that an IP licensing group is required to establish synergy between commercialization or monetization of the IP & the product itself. Dr. Gupta recommended that the law students and the MBA students should consider the IP as an extremely important subject and must learn about the impact of it in generating the business. He further explained how the contribution and coordination of all the individuals working together for the creation & commercialization of the IP, leads to a better business model.

Kaushik Gala, IP Manager, Tata Consultancy Services discussed that in order to monetize IP, the IP licensing group should focus upon the Patent Analytics & Patent Portfolio management with strategic planning to license IP. He stated that a lot of coordination is required between the Licensing Group and R&D team. IP licensing group is required to do a lot of research regarding the nature of the product, the market for the product, customers targeted and also the capacity of the licensee company to commercialize the product. In the case of software licensing, the biggest complexity is the prevalent use of the open source and third-party software. Further, the IP licensing group is required to monitor the various things that are being used during software development as the software can be easily used and modified.

Sukla Chandra, Managing Director India, GE Licensing and Technology Ventures stated that for creating an IP licensing group, a substantial training is required. For a graduate who possesses a technical ground, the training would be to learn the know-how of the legal aspects under the supervision of the IP Experts. She discussed that a structured training exercise is required to create an IP licensing group which deals simultaneously with the Intellectual Property, technology, business, and commercial affairs and takes a substantial period of time. On one hand, the licensing professional is required to understand the technical background and the nature of the IP involved and on the other hand; he is required to understand the commercial and legal aspects.

Tanvi Bhatia, Senior Manager – Rights Management, Pearson while addressing the skills set required for successful IP licensing professionals stated that while commercializing the product, one should possess the basic knowledge of IP and he should ensure that the product is not infringing the other’s IPRs, which subsequently imposes an extra degree of responsibility on the part of the licensing group to ensure due diligence before entering into the market. She also stated that it always remains a challenge to find out the skilled professional who understands the product i.e technological aspect, business, laws and who is well aware of the nuances of the negotiation and the time frame requisites.

Moderated by Richa Pandey, Partner, Krishna & Saurastri.

Richa started the session with a very insightful note that India has been one of the biggest ‘improvers’ in the 2019 World Bank’s Ease of Doing Business study, with its rank shooting up from 100 to 77, among 190 countries. Thus, India has been successful in facilitating an extremely prolific environment for various businesses to flourish in the last decade. She asked the panelist to through some light on the situation of Biotech and Drug industries and various Indian regulations.

Dr. Ajay Sharma, Director- Policy, Organization of Pharmaceutical Producers of India applauded the IPO for its progressive approach. He expressed his view that it’s not only the cost of medicine which will decide the affordability standards. Even where the medicines are available free of cost still there is no 100% access to those medicines. He stated that accessibility of medicines lies beyond its cost and there are other factors also which need to be focused upon.

Dr. Archana Chugh, Associate Professor, Kusuma School of Biological Sciences, IIT Delhi raised her concerns about lack of any regulations in place in the field of nano-similar unlike in the case of Bio-similar which is still explored to a certain extent. She stated that it is important to understand and study the nano-technology and then proceed to formulate the regulations.

Prof. (Dr.) Rekha Chaturvedi, MHRD IPR Chair, University of Delhi primarily spoke about the excess of medicines to the public. She stated that our provisions are TRIPS compliant and excess to medicines has improved with the advent of grant of product patent. She also pressed upon the role of Drug Pricing Organization in efficiently controlling the price of the drugs.

Dr. Usha Rao, Assistant Controller of Patents & Designs, Delhi Patent Office briefly discussed the development in the Patents Act in the recent past which has led to efficient processing of applications. She also stated the fact that WIPO has recognized IPO as a very transparent organization. She then enlightened the delegates on the amount of increase in the number of filings by start-ups and MSME’s due to various incentives provided to them such as 50% rebate in official fees. She further spoke about various IP awareness programmes being conducted by the Government in collaboration with IPO. She also emphasized on the establishment of Commercial Courts which facilitate speedy disposal of disputes in IP.

Moderated by Hasit Seth, Advocate, Bombay High Court

Hasit set the tone with IP issues around blockchain. The focus was on whether blockchain is an opportunity or threat to the Indian companies that are actively building IP portfolios. Issues in discussion focussed on blockchain standards, IP portfolios, and future of blockchain itself.

Arnab Das, VP, Global Business Development, IOT, Edge Innovations & Analytics, Aricent spoke from his long experience in technology to assess how the blockchain IP ecosystem will develop in the future. He particularly outlined how the standards in IoT have developed and the possible arc of standards for blockchain technology. He was hopeful of blockchain integrating with other technologies, and blockchain IP playing a key role in building a new technology infrastructure.

Mayank Lau, Principal Consultant, DSCI outlined the landscape of blockchain technology and its application. He emphasized that despite umpteen attempts to break blockchain encryption and security technology has proven its reliability. He was hopeful of blockchain standards developing quickly and not get fragmented like Linux distributions by forking. Given how blockchain is developed by anonymous people, it seems hard how core technology can be monopolized by IP nets.

Subodh Kumar, IP Program Head, Tata Consultancy Services spoke from his long experience in corporate IP and IT industry in particular that blockchain IP is a remarkable opportunity. He presented patent families concerning blockchain both in India and foreign patent holders. While there is IP activity around blockchain but portfolios are small as of now. There was keen interest in blockchain’s application in the Indian software industry.

Vishal Nigam, Chief Blockchain Evangelists, DIYblockchain gave a sharp and short introduction to blockchain technology. He presented many applications of blockchain where IP can be created. He outlined efforts at BIS (Bureau of Indian Standards) and internationally about standardization of blockchain. He was hopeful of the blockchain field growing well to fulfill its massive promise.

Moderated by Ichiro Nakatomi, President & CEO of NanoCarrier and Past President of LES Japan

Ichiro focussed on discussing the current situation of start-ups and the contribution of start-ups in innovation and IP.

Dr. Hemang Shah, IP Engineering (Innovation, Product and Business Strategy), Qualcomm also acknowledged the necessity awareness about IP for start-ups and invest in protecting their IPs. He laid emphasis on every start-up to be IP oriented.

Narendra K. Sabharwal, Chair – IPR Committee, FICCI, Former Deputy Director General – WIPO, Former Convener Member – Think Tank on IP Policy, GOI appreciated the steps taken up in the recent past to promote start-ups and spoke about how such initiative has led to boost in innovation in India.

Ravi Bhola, Partner and Chair of Patents Practice, K&S Partners having enormous experience in working very closely with start-ups and protecting their IP’s stated that the amendment in the Indian Patent Act has provided many incentives in terms of rebate in fees and expedited examination of the patent application.

Subramaniam Vutha, Past President, LES India discussed the importance of promoting participation of start-ups in innovation. He also stated that it is extremely important for a start-up to understand Intellectual Property Law and for that they must seek legal advice at the inception of the start-up. He stated that the problem with the start-ups is that they don’t address the issue of IP at the initial stage. He pressed upon the need for every start-up to seek a proper advice regarding IP at the initial stage and invest in protecting their IPs which will ultimately help in the growth of the startup.

Moderated by Sanjay Mehra, Head of Multimedia and Partnerships, Asian News International (ANI)

Sanjay briefly updated the delegates about the topics to be discussed in the foregoing session.

Dominic D’souza, VP – Legal, Hinduja Ventures talked mainly about the evolution of media and anti-piracy measures for the media industry. He further talked about there being enough statutory provisions in the Copyright Act to promote Assignment (Section 18 and 19) and Licensing (Section 30) of the copyright. He then affirmed to the fact that the Copyright Law in India is a progressive one but admitted that there should be uniform codes for the upcoming medium of media such as OTT platforms. He stated that usually, every big broadcaster has its own OTT platform, thus reducing the litigation part of the new and rising industry. He then mentioned that Copyright licensing has come a long way and contracts have become a lot more intense. He further stressed on careful drafting and negotiation of the contracts and the importance of defining terms and words which have not been defined in the Act. He further concluded by saying that Copyright Act is influenced by other people’s work stating the example of the sweat of the brow doctrine being diluted on the basis of uniqueness of work and stated that law has itself established that there can be no assignment of something which doesn’t exist today.

Lakshika Joshi, Global IP Head and Legal Leadership, Aricent Inc. spoke briefly about how Indian media is using blockchain effectively and change in media being brought about by technological advancements. She then predicted that the day is not far when we shall have our own artificially intelligent entertainer. She further stressed on the new dimensions and easy availability being brought about in the media world due to such fruitful technological advancements and urged to the fact that the laws need to be in synchronization with the rapidly growing technology in order to rightly and completely protect the latest form of media advancements.

Monica Datta, Partner, Saikrishna & Associates critically appraised the Copyright Act as being technology neutral and further continued to mention the lack of updated provisions to protect and enhance upcoming and ever-growing fields such as OTT platforms and other digital media being appraised in the country. She also stated that unlike broadcasting and TV channels, OTT platforms suffer from lack of compliance as there are no uniform codes of law in existence for OTT platforms to follow. She then appraised the delegates with the fact that the modern-day media like OTT platforms, being a big budgeted industry, easily hires the services of A-grade talent and has even grabbed hold of various personalities from the Indian film Industry. She then described OTT players as the mafia of modern-day media and recognized the importance of having a uniform code especially enacted for the digital media of today’s modern high-end functioning society. She then praised India’s Copyright law in terms of providing royalties which have been adopted from Germany (even Germany is a civil law country and India is a common law country).

Raghavender G. R., Joint Secretary, Department of Justice, Ministry of Law and Justice, Government of India spoke about the hardships of protecting the modern day works (articles and youtube videos) through Copyright protection. He then recited the fact that an artist should feel free to create new works and should not fear to get the protection of their work prejudiced in any manner. He then explained the difference between Indian Copyright Law and its counterparts and also discussed the scope of protection provided by the Copyright Act. He then accurately discussed the various stages of amendment of the copyright act and the impact on the nature of protection by various important amendments such as the introduction of Licensing in Chapter 6, Copyright Society in Chapter 7 and Broadcasting Rights in Chapter 8 of the Act. He then moved on to briefly discuss the transfer of rights as per the Beijing Treaty on Audio-visual Performances and concluded by describing the language of the Copyright Act as techno neutral.

Moderated by Dr. Hemang Shah, IP Engineering (Innovation, Product and Business Strategy), Qualcomm.

Fiona Nicolson, Partner, Bristows and President-Elect, LES International discussed the scenario of tech transfer and eco-system in the UK. She explained that most of the jobs in the UK are generated by SMEs. Mostly the research and development of these SMEs are sponsored by the UK government. She stated that the government expends a lot of funds to sponsor the public research and the start-ups and universities can apply for these funding for their R&D in collaboration with big industries. She stated that in the UK, many public funded independently run centers set up the governments strives to bridge the academia and the investors which turns out the ideas into the reality.

Kaushik Gala, IP Manager, Tata Consultancy Services discussed about the scenario of tech transfer and IP commercialization in India. He stated that about 2/3rd of the research in India is sponsored by the Indian Government. Further, he explained that the initiative of creating technology transfer office by the government and facilitating start-ups for their IP protection is the new movement toward developing eco-system and encouraging innovation.

Ningling Wang, Partner, Finnegan, Henderson, Farabow, Garrett & Dunner, LLP discussed the situation of the technology transfer and IP commercialization in China. She stated that the Chinese government in 2008 took an initiative to promote innovation by encouraging the IP applications. She also added that China has also IP exchange centers which facilitate the IP commercialization.

Supreet S. Saini, Senior Associate, Houlihan Lokey discussed the scenario of technology transfer in the USA. He stated that most of the research is driven by the US federal government which funds universities to carry out the research. Further, he stated that the federal government provides an eco-system which facilitates the inventors and owner of the Intellectual Property in a better way. This facilitation results in a positive outcome and a developed ecosystem. The concept of tech-transfer office is a gateway to sponsorship and innovators

Moderated by Ganapathy Narayanan, Lead- Corporate IP Governance, Tata Consultancy Services

Ganapathy explained the definition of ‘Open Innovation’ and subsequently the discussion was taken over by the panelist.

Dr. Kshitij Kumar Singh, Assistant Professor at Campus Law Centre, University of Delhi explained the concept of open innovation in the light of academia. He discussed the problems faced in open innovation in the field of biotech. According to him, open innovation is much feasible in the software industry, however, when it comes to open innovation in biotech, it is very difficult as a proper set up to conduct such research.

Aahit Gaba, Senior Open Source Counsel, Hewlett Packard Enterprise shared a slight glimpse of what open source is all about with the delegates. He stated that almost 99% of the applications today consume open source. He enlightened us with the importance of acknowledging the open source if such is used by anyone. He also discussed the repercussions of not doing the same in the light of Cisco judgment.

Ashish Gupta, Partner, Krishna & Saurastri led the delegates to understand how the concept of Patent Pooling has emerged as a balance between a stringent patent regime and open innovation. He also emphasized the importance of patent pooling in setting the royalty standards and helping in eliminating the cost by facilitating licensing. At the same time, he also touched upon the negative impacts of Patent Pooling and how such concentration of power can be avoided.

Subhankar Pal, Assistant Vice President, Innovation, Aricent touched upon the technology perspective to open innovation. He briefly discussed the technology drivers of open innovation which mainly are Outside in and Inside Out. He took the examples of companies like IBM and Procter and Gamble to explain the concept of open innovation and how these companies have benefitted by taking the aid of open innovation.

Moderated by Santanu Mukherjee, Advocate and Head, Ex Lege Chambers Advocates & Regulatory Policy Advisors

Santanu briefly explained how the data is so relevant in today’s world followed by Panellists who further discussed the nuances of data protection.

Erick Robinson, Partner, Simone IP Services Asia started with a note that the mentality of people, in reality, is that most of the people are okay with free services even where there is a consumption of personal data unless there is any harm which is inflicting upon them. Then he proceeded to discuss how different countries are reacting to the data inflow and what are the relevant policies for the same especially Europe, China, and the US.

Vikas Yadav, VP IT Risk Management and CISO, Max Life Insurance started with a light note that if you are getting something for free, then you are not a customer but you yourself are the product. He also discussed the instance of data leak in Amex India Cards. He finally noted that there is a requirement of the paradigm shift to win the trust of people and provide a stringent data protection regime.

Srinjoy Banerjee, Founder, Excaliburancy explaining the current situation stated that there is a lack of regulation to keep a check on the data stored in machines/tools/automation collecting and storing in such high amount and how such data is being used.

Rama Vedashree, CEO, DSCI spoke about the importance of data in every filed for instance public policy, academia etc. She expressed her views that the kind of data inflow at present has resulted in rising concerns and demands from the organizations to regulate such data inflow. She conveyed the need for our country to demonstrate that we have a strong data protection regime and that the global data will be safe here.

Moderated by Pravin Anand, Managing Partner, Anand and Anand

Pravin started the discussion by giving his views that how MRTP Act, 1969 (Monopolies and Restrictive Trade Practices) was revoked and replaced by Competition Act, 2002. MRTP Act was enacted to deal with monopolistic, restrictive and unfair trade practices, but due to certain limitations, the Competition Act was introduced, which changed the focus from curbing monopolies to promoting competition. He gave his views that in which cases the Competition law can look IP matters. To answer the above question, he said that whenever it is restrictive, unfair trade practices or whenever there is an abuse of dominance position especially in SEP cases, competition laws has looked. There are several cases where the Competition Commission has looked into the IP matters. He further talked that the CCI can take action in the grant of licenses as well. He said that there could be a denial of Licence but in case of SEP’s, would be a violation and some sort of abuse of dominant position.

Further, he talked about Patent Pool and their effect on competition. In the patent pool, multiple IP holders assign their patent right to each other or to grant a license to third parties. However, given that patent rights bestow a legal monopoly, it has to be ensured that patent holders will not use a patent pool to fix and raise prices.

Further, he said that if charges or the royalty fee is inconsistent in cases of SEPs is considered as anti-competitive and can be taken care by CCI.

He also discussed the Ericsson V. CCI, case. The question, in this case, was that Can a patent holder be an ‘enterprise’ under the Competition Act, 2002 (“Competition Act”) and can patent be ‘goods’ or ‘services’? The court considered that Ericsson could potentially be an enterprise for the purpose of the Competition Act, since “Ericsson has a large portfolio of patents and is, inter alia, engaged in developing technologies and acquiring patents. He also discussed the case of Ericsson in which Delhi high court dismisses Ericsson’s plea challenging CCI order. According to Ericsson, the Patents Act being a special act would prevail over the Competition Act in case of an irreconcilable repugnancy or conflict between the two statutes, and the Defendants should seek remedy under the provisions of the Patents Act. Ericsson argued that the Patents Act is a self-contained statute and it provides remedies for abuse of patent rights by the patentee including abuse of a dominant position The Court disagreed and stated that “There is no irreconcilable conflict between the Competition Act and Patents Act and in the absence of any irreconcilable conflict between the two legislations, the jurisdiction of CCI to entertain complaints of abuse of dominance in respect of patent rights cannot be ousted”. The Court also held that the Competition Act is not concerned with patent rights of a person or enterprise (which is within the domain of the Patents Act), but the exercise of such rights.

Lastly, Mr. Anand made aware to the audience that if there is any disobedience of an order given by CCI there could be a criminal consequence.

Dr. Heinz Goddar, Partner, Boehmert & Boehmert gave his views on FRAND terms. What is FRAND? and licensing to a third party should be fair and reasonable. If not, then competition commission can look into it.

Manoj Pandey, Adviser (Law), Competition Commission of India gave his views on the background of CCI. How it came in force and about its four limbs i.e. Sec 3, Sec 4, Sec 5, Sec 6 of Competition Act. According to Sec 3(5) of Competition Act, if IP holder has the right to hold its IP right under agreement clauses, then CCI will not intervene. He further briefed that CCI is free to look in the behaviour of the market in accordance to Sec 4 of the Competition Act. He also discussed the role of CCI in SEP’s taking reference of Ericsson case. He told that the competition commission comes when there is an abuse of dominant position according to Sec

Pratap Shanker, Founding Partner, Legal Consultus talked about the role of commercial tribunal court in IP disputes. He also suggested that there should be a proper techno-legal system to solve the IP disputes cases. He also talked that how an innovator could protect their commercial right.

Vladimir Biriulin, Partner, Gorodissky & Partners discussed that the Trademark is also entertained by Competition Commission when there a is unfair competition or abuse of dominant position. He explained that abuse of a right is an anti-competitive in cases of the trademark.

Moderated by Archana Shanker, the Senior Partner at Anand and Anand.

The Panel focussed on the scope of the Patents Act and the Plant Varieties and Farmer’s Right Act in the light of the recent judgment of Division Bench of High Court in Monsanto V. Nuziveedu.

Dr. K.C. Bansal, Senior Fellow & Area Convenor, Nano Biotechnology Centre, TERI spoke about the importance of agriculture in India and stated that 60% of the Indian population is thriving on agriculture. Therefore, more investment should take place to promote indigenous innovation programmes and not completely relying on foreign aids. He praised Indian legislation for enacting both the Acts namely the Plant Varieties and Farmer’s Right Act and Biodiversity Act. With respect to Monsanto case, he expressed that gene is nothing but DNA which is a chemical composition and hence not living.

Dr. K.S. Kardam, Senior Joint Controller of Patents & Design, Indian Patent Office, New Delhi, stated that as far as IP is concerned patents are excluded for the subjects of Plant Variety Act. He stated that the conflict of the said acts will be clear once the judgment of Supreme Court in Monsanto case is delivered. He informed the delegates regarding the opening of a 100-day window by NBA for applicants seeking permission under Section 10 (4) of the Patents Act, 1970. He further informed the delegates about various training programmes being conducted by NBA and Patent Office in collaboration to train the Examiners on NBA issues which are raised in the Patent Application. He also clarified that training programmes are conducted for the Examiners to update them with new technologies in different fields so that they are efficiently able to handle the inventions pertaining to such technologies.

Dr. Sunil Archak, Officer in Charge Biotechnology (Plant Science) agriculture Knowledge Management Unit, ICAR-National Bureau of Plant Genetic Resource discussed Genetic Engineering Technology and Digital Sequence Information and raised concern whether our provisions ready to embrace such technologies and confer appropriate protection. Further, Dr. Archak also informed the delegates that a new technology is soon going to be introduced in India i.e. DNA Fingerprinting Technology will be used in India for the first time to differentiate pre-existing variety with the new varieties.

Moderated by Vishnumohan Rethinam, Partner, Remfry & Sagar

The session started with a broad outline on the topic and emphasizing on the human element – pushes and pulls of an in-house counsel, conserving costs without portfolio dilution, external counsel and policy perspective and asked panellists to draw on their experiences in this regard.

Puja Tiwari, Senior Manager – Legal, IPR and International Business, Godfrey Phillips provided in-house insights on brand creation, protection and enforcement. She took the example of Popcorn and how previously, branding packaged Popcorn was unheard of. She delved into timely registration, diligent watch and market surveillance and effective enforcement. Puja also talked about iconic brands and changing perspectives on protection and enforcement thereof.

Surup Ray Chaudhuri, Corporate Director – Legal, Taj Hotels Palaces Resorts Safaris lent further depth into the discussion surrounding the role of in-house counsel in the hospitality industry. Drawing on the unique precedents in the nonconventional trade mark space, he discussed in detail the decision to trade mark the image of the Taj Mahal Palace Hotel. He talked about the concept of recognizing trade mark value in unconventional ‘properties’ and how legal teams can create revenue generation/monetization models using non-conventional brand protection.

Priya Rao, Partner and Head of Enforcement and Criminal Litigation, K&S Partners added teeth to the discussion by elaborating on the role of an external counsel in liaising with and advising an in-house counsel on optimal brand protection and enforcement. She elaborated on the stages of brand conception, development, protection/monetization and enforcement and emphasized on diligence at every step. Priya discussed drawing up strategies at every step and the fluid nature and adaptability of strategies to account for changing circumstances in business.

Shilpi Jha, Officer-in-Charge, USPTO, Office of South Asia rounded the session with her perspectives on policy and its role in brand building. She talked about her analyses of TM jurisprudence in India and neighbouring countries and enabling such neighbouring jurisdictions to develop their trade mark law to boost brand building. She talked about her experiences in running IP awareness programs in such countries and being involved in recruitment of examiners with expertise.

Surup Ray Chaudhuri, Corporate Director- Legal, Taj Hotels Palaces Resorts Safaries lent further depth into the discussion surrounding the role of inhouse counsel in the hospitality industry. Drawing on the unique precedents in the non-conventional trade mark space, he discussed in detail the decision to trade mark the image of the Taj Mahal Palace Hotel. He talked about the concept of recognizing trade mark value in unconventional ‘properties’ and how legal teams can create revenue generation/monetization models using non-conventional brand protection.

The session saw a valuable and engaging discussion which educated one and all in the dynamic landscape of brand building.

The LES APAC Conference 2018 was graciously supported by Anand & Anand, Monsanto, GE, Intel, Saikrishna & Associates, Krishna & Saurastri, Gorodissky, Qualcomm, Finnegan, K&S Partners, SKS Law Associates, LexOrbis, Khurana & Khurana, Bristows, Remfry & Sagar, International Chamber of Commerce, Asia Business Law Journal and India Business Law Journal.

This conference takes forward LES India’s continued focus in driving the overall LES objectives stated above to make a visible impact on IP and licensing in India and in the global ecosystem.

About Lex Witness

Lex Witness Bureau

The LW Bureau is a seasoned mix of legal correspondents, authors and analysts who bring together a very well researched set of articles for your mighty readership. These articles are not necessarily the views of the Bureau itself but prove to be thought provoking and lead to discussions amongst all of us. Have an interesting read through.