Speakers in yesterday’s morning sessionon trade secrets said that as US patentholders are growing increasingly con-

cerned about the state of patent protection,they are looking more towards trade secretprotection as a means of protecting innovation.Several speakers, including James Pooley of

James Pooley Law Group and Robert Titus ofEli Lilly, explained that patents are traditional-ly seen as a stronger means of protection thantrade secrets. However, recent developmentsin US law may have shifted this perception.“Patenting seems to have come under

attack and feels like a riskier alternative [thanbefore],” said Pooley, who is former DeputyDirector General of WIPO. He pointed torecent cases such as Mayo, Nautilus, Bilski, Aliceand Octane as developments that have made itmore difficult to enforce patents. He also char-acterized inter partes reviews as proceduresthat were supposed to strengthen the integrityof the patent system, but have instead turnedagainst patent holders. “[The IPR process] hascaused the title of very good patents to be ques-tioned,” he said. Whether an innovator should protect a

particular piece of technology using patent ortrade secret protection depends on severalfactors, including the type of innovationinvolved and the company’s goals. Titusexplained that one of the advantages of apatent is that it gives a monopoly on the tech-nology, though if the technology is later found

to be unpatentable then the company’s dis-closure has just revealed considerable infor-mation to the public. Trade secrets do not run this risk of public

disclosure, but the problem is that if a thirdparty invents and patents the same technology,then you may have lost your freedom to oper-ate. Furthermore, the client or the scientistswho came up with the technology may wish topublish in journals about it, which would notbe possible if kept as a trade secret. A thirdoption is to disclose the technology, which pre-vents others from patenting it, though you losethe ability to monopolize it or use it as a com-petitive advantage.Titus stressed that it is important to be goal-

oriented when making these decisions, to real-ly think through how this piece of informationor potential invention fits into the overall busi-ness plan.“This is the interesting discussion that we

have internally: what would you do withthis?” he said. “Do you want to just protectyour innovation? Do you just want to makesure you have exclusivity for what you’redoing? Or do you want to deter a competitor?Do you want to raise the bar for a genericentry? Do you want to make it more difficultfor a competitor to move into an area? Do youwant to get some licensing revenue from theinnovation?”Titus said that the AIA has actually made

trade secret protection more attractive by mak-

ing prior user rights stronger, thus potentiallymaking freedom-to-operate concerns less of aproblem should a third party seek a patent onyour secret technology. He warned that,though there are restrictions on the prior userdefense (for example, the right cannot be trans-ferred) and it is still narrower than in manyother countries, this expansion will help tomake trade secret protection a more viableoption for many companies.Congress is also paying more attention to

trade secrets, with the 2015 Defend TradeSecrets Act (DTSA) under consideration inboth the House and the Senate. The legisla-tion would create a Federal trade secretregime, where currently it is covered by vary-ing state laws. As Danielle Vanderzanden ofOgletree Deakins explained, the draft legisla-tion would standardize and help to clarify sev-eral important issues. For example, the legisla-tion would set a statute of limitation of fiveyears, where currently some states such asAlabama and Idaho have statutes of limitationof as short as two or three years. In addition,the legislation provides for both ex parteseizures and injunctive relief, key enforce-ment tools that currently are not available inseveral states.Pooley concluded: “The ground is shifting

much more frequently and in ways that areharder to predict. So we need to focus on theseissues in a way that traditionally we haven’tbeen looking at them.”

How the fair use doctrineis changingNEWS Page 5

During yesterday’s luncheonkeynote, US Register ofCopyrights Maria Pallante said

that the Copyright Office earlier thisweek received a request from the SenateJudiciary Committee to research and pro-vide information about copyright protec-tion and software. The Committee asked the Office to

look at how consumers can lawfully useproducts that are deeply integrated withcopyrighted software. Some other ques-tions included whether and to whatextent: 1) the design, distribution andlegitimate use of products are beingenabled or frustrated by copyright law tosoftware within the products; 2) innova-tive services are being enabled or frustrat-ed by copyright law as applied to theseeveryday products; and 3) legitimateinterests and business models for copy-right owners and users could be under-mined or improved with changes to thecopyright law.The Committee also asked the

Copyright Office to identify how copy-right intersects with other areas of lawand how it affects products that rely onsoftware functions.

SATURDAY EDITION

managingip.com AIPLA ANNUAL MEETING, WASHINGTON DC, SATURDAY, OCTOBER 24 2014

Get involved, saysDenise DeFrancoINTERVIEW Page 4

PUBLISHED BY

Focus shifts towardstrade secrets

CopyrightOffice toconductreview

DAILYREPORTAIPLA

Apacked crowd at the Women in IPLaw Committee Breakfast Meetingyesterday was treated to encourag-

ing statistics about the representation ofwomen on AIPLA panels and an informaland entertaining panel of women judgessharing their advice. The meeting started with the work of

Hathaway Russell (bottom left) for theCommittee being highlighted. She hasserved as Committee Chair between 2013and this year’s meeting, after serving asCommittee Vice Chair between 2011 and2013 and Networking Event Chair between2009 and 2011. Russell yesterday picked upan award for Project of the Year on behalf ofthe Committee, for organizing the 2015Women in IP Global Networking Dinners.Co-Chairs on the project were CarolThorstad-Forsyth and Yelena Morozova.

Christine Genge of Smart & Biggar thenshared some statistics from a gender study ofAIPLA Meetings. The good news is thatafter a dip in 2013, the percentage of womenspeakers and moderators on plenary/con-current sessions at AIPLA Annual Meetings

is more than 30%.A panel of Judges Laurie Michelson, Joy

Flowers Conti, Kimberly Moore and LoreleiRitchie then gave reflections and advice onthe legal profession including how to con-duct yourself before a court.

David Beck, director of IP at ViaviSolutions, gave an entertainingpresentation during a session

looking at the impact of the SupremeCourt’s Alice v CLS decision. In the style ofmovie reviews, he gave an overview of caselaw applying the ruling. The first case up for critical analysis was

the Federal Circuit’s Ultramercial v Huluruling in November of last year, whichfound ineligible the claims of a patentdirected to a method for allowing users tosee copyrighted content free if they watchan advertisement. This was after theFederal Circuit had twice found the patentvalid. Beck gave an inventive review of the case:

“The worst finale to a trilogy since ‘GodfatherThree’! The first two Ultramercials werewaaaaaaaaaaaaaaaaaaaaaaaay better!” The Federal Circuit found that using an

advertisement as exchange or currency wasabstract and it was not transformative. Someof the takeaways from the case were that itdid not provide an inventive concept, a largenumber of steps is not enough in itself to betransformative, and that Ultramercial waswrong to argue that “the addition of merelynovel or non-routine components to theclaimed idea necessarily turns an abstractioninto something concrete.”

Beck gave the case a rating of “Three-and-half crying patent attorneys.”The next case reviewed was the

December 2014 DDR Holdings v Hotels.comruling by the Federal Circuit. Beck suggestedtwo potential reviews for the case of, “A caseso good, that (if it were a movie) it wouldmake ‘Gone with the Wind’ look like a pile ofllama puke!” and, “It’s like Steven Spielbergwent back in time to direct Russell Croweand Beyoncé in ‘Casablanca!’ It’s that good!” The patent at issue was found to be an

abstract idea directed to making two webpages look the same. But it was ruled to betransformative, with Judge Chen writing“the claimed solution is necessarily rooted incomputer technology in order to overcome aproblem specifically arising in the realm ofcomputer networks.” Beck noted a strong dissent in the case

from Judge Mayer, which said the steps werenot transformative and that the claims per-form a business practice found in the realworld, such as a Starbucks inside a supermar-ket. Beck gave the case a review of “Threehappy and one suspicious patent attorneys.”The next case before Beck’s critical eye

was the more recent Internet Patents v ActiveNetwork ruling out of the Federal Circuit inJune. His review for this was: “It’s like AlfredHitchcock remade the movie ‘Psycho’ with

the Federal Circuit as Norman Bates andsoftware patents in the shower!” The patent, directed to retaining infor-

mation on navigation and online forms, wasfound to be abstract and not transformative. One takeaway from this was that both

DDR and Internet claimed improvement, butthe difference was that Internet lacked detailsabout how the invention performed its task.“They drew a true distinction here,” said Beck.“They said Internet lacks details about how theinvention works, but that DDR does describethe workings of the invention in great detail.That’s the difference for the court between‘something more’ and an abstract idea.”Beck gave it a review of “Three crying

patent attorneys and 458 unemployed soft-ware examiners” – “It’s a complicated ratingsystem,” he explained.Beck says the upshot for district courts is

that they are now trying to work out if theircases look more like Ultramercial or whethertheir cases look more like DDR. Beck out-lined the situation in movie terms:“Ultramercial v DDR – we haven’t seen ashowdown like this since Luke Skywalkerversus Darth Vader!” He analyzed the Klaustech v Admob case

in the Northern District of California, inwhich the claims were found not abstractand transformative. “Three and a half smil-

ing patent attorneys,” was Beck’s verdict.Less positively reviewed was eDekka v

3Balls.com, which was panned by the critics:“Cases like this are sinking software patentfaster than Leonardo DiCaprio on theTitanic. But unlike the movie there are nolifeboats here.”Judge Gilstrap in the Eastern District of

Texas found invalid eDekka’s patent direct-ed to a method for storing information pro-vided by a user. The patent had been used inmore than 200 patent lawsuits. The courtfound the claims were directed to an abstractidea of storing and labeling information,which Beck said is analogous to a file clerk’swork. The rating? “Two and a half crying patent

attorneys and one Zen patent attorney whois finally coming to inner peace with the newlandscape,” said Beck. “Hopefully we all are.”The session also featured a presentation

from BIO’s Hans Sauer. He said that biotechcompanies “are not that energized” aboutSection 101 compared to technology com-panies. But even here, there is some concern.“I would say we are starting to see some

patents coming under attack,” he said. “I amhearing from traditional pharmaceuticalcompanies saying patents are being attackedthat they never thought they would seeattacked [as result of Myriad and Mayo].”

2 NEWS SATURDAY, OCTOBER 24 2015 AIPLA DAILY REPORT

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Alice goes to the movies

Good news from the Womenin IP Law Committee

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Denise DeFranco says that one of her main goals asAIPLA president is to make sure that members’voices are heard in the debate about the develop-

ment of IP laws around the world. To this end, she encour-ages members to get involved in the committees.“One of the things that I’ve learned in my many years as a

member of AIPLA is that you really can make a difference inthe direction of policy in the US and abroad by gettinginvolved in the committees,” she says. “The committeesdevelop positions on pending rules and laws, court cases, andultimately all the activities of the committees feed up to theBoard, which in turn finalizes the policy statements thatAIPLA submits.” She continues: “The genesis of these positions really come

from this committee structure, and I encourage everyone totake advantage of the opportunity – every single member canimpact policy if they get involved. When I first joined, it tookme a while to learn that even little old me could have animpact.” DeFranco is a partner at Finnegan. Before entering private

practice, she was a USPTO examiner and clerk to Judge PaulMichel. DeFranco explains that her first AIPLA committee was

the Amicus Committee. Some of the notable briefs that sheworked on as a committee member include Bilski at thepanel level, the Philips claim construction case, Merck vIntegra, concerning interpretations of the Section271(e)(1) safe harbor for infringing activities related toobtaining FDA approval, and her first AIPLA amicus briefin KP Permanent v Lasting Impression I, a 2004 SupremeCourt trademark case.For many AIPLA members, especially those practicing in

the US, this involvement may be of particular importancegiven the many changes and debate about issues such asSection 101 and the new procedures at the PTAB. DeFrancosays that the growth in the number of cases applying Section101 has given AIPLA a real opportunity to weigh in on thisimportant subject. Similarly, as the USPTO continues torevise rules and regulations to make the PTAB proceedingsfair and balanced, the Association will have a strong voiceand providing its views on issues such as the ability to amendclaims.DeFranco also says that pending litigation about non-

practicing entities could have a big impact on how litigationoperates, and that it’s important that any changes made donot negatively impact how practicing entities use a systemthat for many years have for the most part worked very well.

“We don’t want to throw the baby out with the bathwaterwhen we look to check the abuses,” she says. “However, forthese other types of patent holders, their viewpoints can eas-ily get lost in the discussions because of all the hoopla aboutNPEs.”International issues are also on DeFranco’s agenda. She

explains that that harmonization efforts will have a big effecton AIPLA members and that the Association is participatingin continuing discussions with bodies such as Group B+ onissues such as patent grace periods.“I think it’s important for AIPLA to stay involved in the

worldwide harmonization dialogue and commit resources tothat effort,” she says. DeFranco says that she also plans to strengthen AIPLA’s

relationships with publishers. Through the SpecialCommittee on Publications, she says that the Associationlooks to foster and develop relationships with publishers andto work with them to publish more works that are of interestof not only of AIPLA members but also written by the mem-bers themselves. One topic that came up during AIPLA’s bi-annual

member survey is that there appears to be demand formore educational offerings about practice management –such as how to run law firms, how to handle practice-relat-ed logistical issues and how to nurture client relationships.DeFranco says that she was somewhat surprised by thisrequest, especially given that these topics are not tradi-tionally an area of focus for AIPLA. That said, she pointsout the Association’s membership is quite diverse, andthere are many experienced solo practitioners and smallfirm practitioners who can help provide resources to meetthis need.

4 NEWS SATURDAY, OCTOBER 24 2015 AIPLA DAILY REPORT

Meet your new President

Experts are back in patent casesThe Supreme Court is driving several trends in patent

and trademark litigation, as was discussed on the“Hot Topics in Litigation and Damages in IP” panel.

Alexandra Bistline of Pirkey Barber (pictured) discussedthe effect of the B&B Hardware ruling in March of this year,which found that decisions by the TTAB can have a preclusiveeffect on subsequent Federal trademark infringement suits,“[s]o long as the other ordinary elements of issue preclusionare met” and “the usages adjudicated by the TTAB are mate-

rially the same as those before a district court.”Bistline said this has left some uncertainty that will play out

in the courts. “Unfortunately, there is a fair amount of ambigu-ity around what that standard means and how courts are sup-pose go implement it,” she said.She explained the two biggest points of contention will be

what “usages” and “materially the same” mean. “Moving for-ward there is likely to be a fair amount of litigation on thesetwo points,” she said.Another question is that the Supreme Court left open the

possibility that sometimes the TTAB doesn’t provide a “fulland fair opportunity to litigate.” The snag, said Bistline, is“they gave zero examples of when that might be, so litigantscould make several arguments about why it wasn’t a fair andfull opportunity.”Another issue to watch is Justice Ginsburg’s concurrence in

the case, noting the Court’s finding that “for a great many reg-istration decisions issue preclusion obviously will not apply.”Justice Ginsburg noted in particular that “contested registra-tions are often decided upon ‘a comparison of the marks in theabstract and apart from their marketplace usage,’” and thatpreclusion would not apply in such cases.Bistline said of the concurrence: “It’s only one paragraph

long and it will likely be cited frequently. You will see a lot ofpeople using that as a guide for the scope of the ruling and itsimpact moving forward.”On the patent side, Jason Hoffman of BakerHostetler her-

alded the rise of the technical expert in claim construction as a

result of recent Supreme Court rulings. The FederalCircuit’s Philips v AWH ruling in 2005 had led to not havingexperts provide opinions with respect to claim construc-tions.But the Supreme court got involved with its Nautilus v

Biosig ruling in 2014, holding that a patent’s claims, “read inlight of the specification delineating the patent, and the pros-ecution history, fail to inform, with reasonable certainty,those skilled in the art about the scope of the invention.”The Teva v Sandoz decision this year held that when

reviewing a district court’s resolution of subsidiary factualmatters made in the course of interpreting a patent claim,the Federal Circuit must apply a “clear error,” not a de novo,standard of review. Hoffman said these decisions lay out the idea you should

look to the experts. He said that the combination of Nautilusand Teva has opened the door for litigants to submit experttestimony in support of proposed claim constructions andfor the expert testimony to be given more credence by thedistrict court.In addition, Teva gave some added protection to the fac-

tual conclusions made by a district court if it chooses to relyupon expert testimony, as such findings on review are nowsubject to the clearly erroneous standard.“So all of a sudden the Supreme Court is pointing towards

the experts,” he said. “As a result of this, the technical expertis back! It has basically become standard operating proce-dure this year to submit an expert.”

AIPLA President-Elect Denise DeFranco, who will take over from Sharon Israel today, talks about her goals forher upcoming term and the role that all members have in shaping IP law

During yesterday’s afternoon ses-sion on copyright, BrandonButler of the American University

Washington College of Law discussed thehistory and evolution of the fair use doctrine,including a look at last week’s Google Booksdecision. According to Butler, the decision isan important one because it is a refinementof fair use analysis by one of the most influ-ential thinkers on the subject.Though the four fair use factors have

been codified in the copyright statute since1976, Butler said that application had longbeen “mushy” and somewhat inconsistent,with judges applying a range of conceptsfrom equity concerns to market effect.Even after the seminal Sony v Betamax

case, fair use analysis was still relativelyundeveloped. Butler said that Judge PierreLeval, then of the Southern District of NewYork, admitted that he essentially had no

theory of fair use even after years of apply-ing it. In an attempt to fix this, Leval wrotean article looking at the history of copyrightand argued that the concept is justified byutilitarian concerns, that the incentive forauthors is a means to secure a societal bene-fit through increased human knowledge.Laval further suggested that fair use is justi-fied by the same model – a use is fair if itserves to increase overall human knowl-edge. The theory of “transformative use”,that a use is fair if it transforms the originalmaterial and creates new information,embodies this.Butler noted that a few years later, the

Supreme Court strongly endorsed the theo-ry of transformative use as an important partof fair use analysis in Campbell v Acuff-RoseMusic. In fact, several scholars found thattransformative use analysis has helped tomake fair use jurisprudence much more con-sistent and less “mushy.”Perhaps appropriately, last week’s Google

Books decision was written by Judge Leval,now a judge on the Second Circuit. Twenty-five years after his influential article on fairuse, he revisits the issue in what Butlerdescribed as a “tour-de-force” on his conceptof transformative use. In Google Books, Leval found that the

service was transformative because it provid-ed valuable information about the books,not the information inside. Furthermore, hethoroughly analyzed many key fair useissues, including the effect on the market-place, commercial versus non-commercialuse and the fact-expression dichotomy.However, what is most interesting about

the case is that Leval appeared to haveadded a new refinement to fair use analysisbased on market concerns. In addition torequiring a finding of transformative pur-pose, a use is fair only if it does not providea market substitute.“Even if your purpose is new, the effect

cannot be to provide market substitutes thatsubstantially impairs the market of the origi-nal,” Butler explained.“I think this is really interesting, and I

think it’s new.”

AIPLA DAILY REPORT SATURDAY, OCTOBER 24 2015 NEWS 5

AIPLA @aiplaUS Register of Copyrights Maria Pallante discussed thenewly released @CopyrightOffice Strategic Plan during

keynote address #aiplaAM15

Richard P. Beem @BeemPatentLawHans Sauer of BIO: 10 year sustained attack on patents ishurting biotech. #patent #aiplaAM15

Rocio del Mar @rociodelmar@bc_butler Great Fair Use presentation! #aiplaAM15Informative, plus artsy slides.

Katy Boyle @katytweetingFavorite session so far: Friday's Women in IP Law break-fast. A great group of women! #aiplaAM15

Michael Loney @mdloneyJudge Linn of CAFC accepting excellence award at#aiplaAM15: "You know it's a good day when you get to

listen to your own eulogy"

Brian D. Wassom @bdwassomTTAB panel: making cases more complicated & doingmore surveys is not the answer to B&B Hardware - just do

what you're doing #aiplaAM15

Jim Youngs @Law_Trek#aiplaAM15 Live TTAB hearing with follow up Q&A -Accelerated case resolution means money spent on the

legal dispute, not travel costs

Ryan Alley @RyanAlleyThought US patentable subject matter rules werelabyrinthine. Then I went to talk on JP and CN subject

matter standards. #NoExit #aiplaAM15

TWEETS

13th Fl., 27 Sec. 3, Chung San N. Rd., Taipei 104, Taiwan, R.O.C.Tel: 886-2-25856688 Fax: 886-2-25989900/25978989Email: email@deepnfar.com.tw www.deepnfar.com.tw

ProsecutionInfringementLitigationIP

A new fair useanalysis?

Are there any unique requirements for Indiapatents?Kanchan Vadehra: The first and most obvious unique fea-ture of the Indian patent system is the non-uniformity of prac-tices of the four jurisdictions of the patent office - Delhi,Mumbai, Kolkata and Chennai. Two major areas evidencingdivergence in practice are patentability of inventions relatedto electronics, telecommunications and computer relatedinventions, and permissible amendments in specifications andclaims.On the side of formal requirements, the decision of IPAB

in NTT DOCOMO made it mandatory to submit some sortof proof of right to make and prosecute the applicationworldwide or at least in India, be it a Form 1 executed by theinventors or an assignment document or any other documenttransferring rights from inventor to applicant. Another requirement which is likely to be news in coming

months is the requirement under Section 146(2) of thePatents Act as read with Rule 131 of the Patent Rules, 2003which requires every patentee and every licensee to furnishstatements in Form 27 as to the extent to which the patentedinvention has been worked on a commercial scale in India.Patent working norms are particularly important duringcompulsory licensing cases to help establish whether the pat-entee has fulfilled the reasonable requirements of the publicby selling the patented product at an affordable price. If a patentee fails to comply with the requirement, there is apenalty of up to INR 1,000,000 ($15,500), per Section 122.

However, I do not remember any precedent regarding theimposition of a fine by the Indian Patent Office for failure tofile the statement of working or filing of incomplete informa-tion in Form 27. Here, I would like to highlight the publicinterest litigation has been filed in the High Court of DelhiShamnad Basheer v Union of India asking the court to directthe government to fully enforce patent working norms andtake action against errant patentees.The disclosure requirements under Section 8 in view of

decisions of courts and IPAB has placed a huge burden onapplicants in terms of time, effort and money in collectingand filing information/documents in Indian Patent Officesfor related foreign applications. There are also some requirements at the patent office,

despite clear statutory provisions to the contrary, that contin-ue to trouble applicants. One such requirement is payment ofextra fees for pages of sequence listing in the inventions relat-ing to biotechnology, even though Rule 9 of the IndianPatents Rules, 2006 clearly states that if the patent discloses asequence listing of nucleotides or amino acids, the same shallbe filed in computer readable text format along with theapplication, and no print form of the sequence listing of thenucleotides or amino acid sequences is required.Another area which lacks clarity is the requirement to file

documentary proof to claim the benefit of “small entity” sta-tus under the Patents Act. There is ambiguity as to what kindof documents can be filed by a foreign entity in this regard. Ibelieve any official document such as registration with any

official body and tax returns which could establish the invest-ment in plant and machinery or equipment less than the limitprescribed can be filed with the Patent Office. I would cau-tion foreign applicants that the evidentiary proof must satisfythe criteria of small entity as prescribed by the Patents Act. Apart from these, there is uniqueness in terms of permis-

sible amendments in specification and claims for a conven-tion application in comparison to the national phase of aPCT application. There is some relaxation for conventionapplications which seems to be lacking for national phaseapplications under the PCT route. For the national phaseapplication, the title, description, drawings, abstract andclaims as filed with the international application under thePCT shall be taken as the complete specification. A formalrequest may be filed for amendment in the specification andclaims, along with the fee after national phase entry.However, an amendment in claims which do not fall whollywithin the scope of the PCT claims may not be allowed. Also,the scope of the amended claims cannot be beyond the scopeof the original claims, even if there is support in the originalspecification. Therefore, if amendment in specificationincluding claims is desired for national phase applications, itis prudent to amend the specification before national phaseentry of application in India. For convention applications, the Patents Act provides

more latitude for amendments. Thus, amendments to a ParisConvention application can be made at the time of the filingof the application in India even to the extent that the scope ofthe claims can be widened if the amended claims are based onthe matter disclosed in the priority application.It is to be noted here that even though India is a signatory

to the PCT, several categories of claims are not patentable. Inparticular, claims directed to a new use of a known substanceor a new form of a known substance without evidence ofincrease in efficacy, claims directed to method of treatment ormethod of diagnosis, and claims relating to computer pro-grammes are not allowed. Therefore, if an applicant files aPCT application containing claims directed to such non-patentable subject matter and does not amend the applicationin the international phase, the applicant is thus compelled toenter India with claims as filed with WIPO. This results in theapplicant paying huge official fees for claims which are nevergoing to be allowed by the Indian patent office.

What are the newest developments regardingpatentable subject matter?Sharad Vadehra: One development which is likely to have abearing on the patentability of inventions related to computerprogrammes, mathematical methods or business methods isEricsson v Intex Technologies, which was decided by the HighCourt of Delhi this March. Here, the Court made the observa-tion that “thus, it… appears to me prima facie that any inventionwhich has a technical contribution or has a technical effect and isnot merely a computer program per se… is patentable”. In thiscase the Court while making the above observation on Section3(k) appears to have followed EPO jurisprudence. Although the precedential value of this observation is

debatable, this statement from the Court marks a new shift inpatenting of software-related inventions in India. I believethe effect of this observation accompanied by the strongresistance from stakeholders to the draft Guidelines forExamination of Computer Related Inventions (CRIs) hasresulted in release of the final Guidelines, which in fact is awatered down version of the draft Guidelines. The Guidelines mark a paradigm shift in the patent

office’s thinking towards the patent eligibility of CRIs.Earlier, in CRIs there was a specific requirement to pinpointnovelty and inventive step in the hardware features and linkit to the software or computer programme used in the inven-

tion. The new Guidelines have done away with requiringnovel and inventive hardware features in computer-relatedinventions as a condition precedent. The final guidelinesspecifically point out that a combination of a novel comput-er programme with a known hardware going beyond thenormal interaction with such hardware and affecting achange in the functionality or performance of the existinghardware should not be considered as excluded subject mat-ter. In the guidelines, it has been mentioned that if in sub-stance, the claims, taken as whole, do not fall in any of theexcluded categories, the patent should not be denied. Perthe guidelines, what is barred from patentability are claimswhich are directed towards computer programmes per se,namely claims directed at computer programmes, sets ofinstructions, routines or sub-routines written in a specificlanguage and computer programmes per se stored in a com-puter readable medium.The requirements for patentability of claims relating to

mathematical methods has also been substantially relaxed.Now, use of a mathematical formula in a claim to clearly spec-ify the scope of protection would not in itself render the claimunpatentable. On the patentability of business method related inven-

tions, it has been mentioned that mere use of words such as“enterprise”, “business”, “sales”, “transactions”, “commerce”and “payment” in the claims should not lead to the conclu-sion that the CRI is just a business method. Instead, if thesubject matter is essentially about carrying out business,trade, or financial transactions or a method of selling goodsthrough web (such as providing web service functionality), itshould be treated as a business method. Further, if theclaimed subject matter specifies an apparatus or a technicalprocess for carrying out the invention even partially, theclaims shall be examined as a whole.

What tips do you have for helping patenteesfacing a Section 3(d) challenge to their applica-tion? What sort of evidence should they showto prove enhanced efficacy?KV: After the Supreme Court’s decision in Novartis, in orderto avoid falling under the purview of Section 3(d) of theIndian Patents Act, if the substance claimed in invention isnot a new chemical entity and is likely to be considered as aknown substance, it will be necessary to provide efficacy datato clearly establish advancement over what has been consid-ered the known substance and closest prior art capable ofbeing used for the same function.Therefore, I suggest that applicants develop efficacy data

with respect to the closest prior art or the similar composi-tions or compounds available for the same purpose.The examiners tend to insist on such data for standard

chemical and pharmaceutical inventions. While for chemicalinventions some evidence exhibiting better and improvedproperties or stability meets the requirement in many cases,for pharmaceutical inventions, the requirement is more strin-gent wherein evidence establishing enhanced therapeuticefficacy is required. The type of efficacy data appropriate for showing thera-

peutic efficacy should relate to the ultimate function of theclaimed product, not merely change in properties. Thedata should clearly reflect the functional improvement ofthe claimed product with respect to the closest prior artcapable of being used for the same function. The change inproperties may be admissible, only if such changes ulti-mately improve the function and are supported by efficacydata.Further, such efficacy data can be adduced as evidence

even at a later stage of prosecution of the patent application,perhaps in the form of an inventor declaration.

6 SPONSORED ROUNDTABLE SATURDAY, OCTOBER 24 2015 AIPLA DAILY REPORT

Kanchan Vadehra and Sharad Vadehra of Kan and Krishme discuss some of the unique features of the Indianpatent system and tips to overcome those challenges

Solving the India patent puzzle

If you do not heed the Section 8 requirements, even otherwise valid patents are prone to third party challenges which can result in invalidation.

What tips do you have for helping applicantsmeet the Section 8 requirement?SV: Section 8 casts a duty of disclosure on the applicantregarding corresponding foreign applications. While manyconsider it as similar to the USPTO’s IDS requirement, Iconsider it to be a different, more stringent and continuingrequirement. The Section 8 requirement has become an elephant in the

room for applicants. However, some practical solutions mayhelp in easing the burden of the requirement to some extent. My advice to applicants would be that once you have pro-

vided details of all corresponding foreign applications in Form3 even though you are under obligation to regularly updatesuch details, in view of the substantial information required tobe given, applicants should file a consolidated Form 3 with allthe updated information at the time of filing response to theexamination report and file a petition if required by the exam-iner in this regard. This strategy will be more cost effectivethan filing a new Form 3 every six months. Another requirement is under Section 8(2) of the Act.

Please be advised that the statutory requirement to submitinformation under Section 8(2) applies only when the patentoffice communicates the requirement. Therefore, once theapplicant has submitted all the documents and informationunder Section 8(2) as required by the examiner, there is nofurther legal requirement to provide other information to thepatent office. The requirement under Section 8(2) is based

on the requisition by the examiner. However, if after filing ofdocuments and information under Section 8(2) there aredevelopments in any corresponding foreign applicationwherein claims have been rejected or narrowed down, thenthe applicant may submit such information voluntarily toshow its bonafide. Further, if the applicant voluntarily submits the informa-

tion under Section 8(2) before the issuance of office action,the examiner may not raise this requirement in the officeaction and it may also lead to less prior art citations in the firstexamination report. I would also like to inform the readers that English lan-

guage summaries of office actions, search reports and the likeshall suffice, if the documents are originally not in English.Also, there is no obligation to submit details until grant of

patent under Section 8 during the post-grant opposition peri-od (12 months from the date of publication of grant).Section 8 requirements are a serious issue. If you do not

heed the requirements, even otherwise valid patents are proneto third party challenge which can result in invalidation.

What particular practical issues should international patent applicants be aware of?KV: Applicants entering India via the PCT should remem-ber that substantial amendments to the specification andclaims are not permissible. There are limitations on amend-ments even if supported by the description. Section 59 of the

Patents Act does not allow amendments which broaden thescope of the PCT claims. Secondly, if a PCT applicationcontains a large number of claims and the applicant deletessome during the national entry phase, the applicant mustpay fees even for the deleted claims. Also, the applicant canonly delete claims after national phase entry after filing a for-mal request along with the prescribed official fee. Further, a 2013 amendment in Rule 138 of the Patents

Rules, 2003 nullified the decision of Madras High Court inNokia v Deputy Controller of Patents. The amendmenttakes away the discretionary power of the patent office toextend the period for filing a national phase applicationunder Rule 20(4)(i) by one month (beyond the 31 monthsdeadline from the earliest priority) if the applicant showsgood cause.Another issue which affects prosecution times is that

applications are examined by the patent office in the orderthe request for examination is filed. I suggest filing a requestfor examination immediately after filing the application. WithPCT applications, applications should enter the nationalphase as soon as possible without waiting for the 31-monthdeadline, and immediately after entry into national phase filethe request for examination and publication. Further, I sug-gest filing a response to the first examination as soon as pos-sible after issuance of first examination report. Delay in filingof the response results in delay in consideration from thepatent office.

AIPLA DAILY REPORT SATURDAY, OCTOBER 24 2015 SPONSORED ROUNDTABLE 7

Kanchan Vadehra is a partner at Kan and Krishme. She is oneof the founding members of the firm and has been instrumen-tal in the firm’s growth.

She has over 20 years of experience in handling patentdrafting and prosecution of mechanical, electrics, telecommu-nications and automotive engineering subject matters.

She is a member of FICPI India, FICPI (InternationalFederation of Intellectual Property Attorneys), APAA (Asian

Patent Attorneys Association) and INTA (International Trademark Association).She works with both domestic and international companies, including Fortune

500 companies, and research institutions. Vadehra has prosecuted more than 3,000patent applications before the Indian patent office.

Vadehra has often been consulted by the Government of India on new guide-lines and rules related to the Indian Patent Act.

She has made presentations on IP law and practices with over 100 institutionsand corporate bodies in India and overseas including Japan, Europe and the US.

Kanchan Vadehra

Sharad Vadehra is the managing partner at Kan and Krishmeand also heads the IP litigation department. He joined theprofession in 1989, and is amongst the few attorneys in Indiawith both technical and legal qualifications.

Vadehra specialises in intellectual property, media, enter-tainment, sweepstake and promotions, marketing, commercialdisputes and litigation with more than 25 years of experience.He handles such matters for both domestic and international

companies, including Fortune 500 companies, and research institutions. He hasprosecuted more than 7,000 patent and trade mark applications.

He has spoken on IP law and practice with over 500 institutions and corporatebodies in India and overseas, and is the author of the book Indian Patent Law andPractice published by Chosakai in Japan in Japanese.

The Government of India regularly consults Vadehra when drafting proposedguidelines and rules relating to the Patent Law.

Vadehra, along with other colleagues founded FICPI India in 2009 and is heavilyinvolved with the group, acting as its president. He is one of the founding membersof GALA (Global Advertising Lawyers Alliance) and is president of its Asia Pacificbranch.

Sharad Vadehra

TODAY’S SCHEDULE: SATURDAY, OCTOBER 24 20157-8am WIPO Advisory Group Breakfast Meeting (Group Members Only) Virginia A, Lobby Level

8-9am President’s Forum: Patent Eligible Subject Matter: The Search For Solutions to a Growing Problem Marriott Ballroom Salon 2 & 3, Lobby Level

9am-12pm Closing Plenary Session: The Year-in-Review/Copyright/Trademarks/Trade Secrets and Licensing/ Marriott Ballroom, Salons 2 + 3, Lobby Level

Patents/Ethics at the USPTO (60 minutes)/Trade Secrets and Legal Ethics

12-2pm Networking Luncheon Virginia BC, Lobby Level

12-4pm Board of Directors’ Meeting Delaware AB, Lobby Level

During this year’s Annual Meeting Sharon Israel presented the 2014 – 2015Board of Directors with bobbleheads of themselves to thank them for theirefforts.

Among the recipients were outgoing Board Members Todd Baker, Annie PeeleCarter, Wayne Sabon, (rotating off of the Executive Committee and Board), BradleyForrest (not pictured), and Kevin Rhodes (not pictured). Also pictured below are DavidRuschke and Jody Drake.

Board Membersseeing double