What’s the downside to the temporary-presidential-decree-followed-by-legislation approach to amending a patent law, you ask?  Remember, India did just this in order to comply with its January 1, 2005 TRIPs deadline.  To meet the deadline, a temporary presidential decree, or ordinance, was issued amending the law to change the scope of patentable subject matter to include various new categories, including pharmaceuticals and embedded software.

This month, the Indian parliament finally debated the issue and produced a legislative change to the law, with some key differences from the ordinance.  Most notably, the politically debated bill excludes embedded software and limits the patentability of new chemical forms of drugs.

Prior to the ordinance, pharmaceuticals were clearly excluded from patentable subject matter.  Software, on the other hand, was not such a clear issue.

Prior to December 27, 2004 (the effective date of the ordinance), the patentability of software was cloudy at best.  The ordinance changed that situation, placing software squarely within the scope of patentable subject matter.  So, after December 27 but before March 23 (the date on which Parliament passed the amendment), embedded software was patentable under the provisions of the decree.  Now, under the new legislative change, embedded software is clearly not patentable.

According to this article, almost 150 patents had been granted on software, some even prior to the ordinance.  So the clean-up effort begins.  Apparently the Patent Office is prepared to “reverse” these patents.  I have to wonder why the Office would undertake this effort.  The patents were valid when issued (at least those issued under the authority of the ordinance).  Also, the marketplace will likely assign trivial value to the patents considering their brief period of validity, making it unlikely that economic motivation exists to enforce the patents (three months of damages, at best?)

Your favorite rethinkers (Nipper, Sorocco, and I) have assembled the second rethink(ip) aloud podcast.  In this installment, we kick-off a series of interviews with each other about our blogs — the how, why and when details — with Steve Nipper interviewing me about the Promote the Progress blog.  Steve will turn the spotlight on Doug Sorocco about his PHOSITA blog in the next installment, and Doug and I will both fire questions at Steve about his Invent Blog in the final installment of the series.  We’re aiming to get the last two installments out shortly after Techshow.

You can download or stream the second podcast here (mp3).  A feed for adding to your favorite podcast aggregator, such as ipodder, is available here.

As Doug puts it, we’re getting a little more relaxed in our recordings as we gain more experience.  Keep sending feedback to rethinkip@gmail.com  so we can keep improving.

Show notes for the second podcast:

• The Invent Blog post on how we create our podcasts
• Conference Calls Unlimited
• J. Matthew Buchanan’s Promote the Progress Blog
• Dennis Kennedy’s Blog
• Promote the Progress blog on “PTO fee bill and the ‘Primary Keyword and Additional Entries’…”
• Dennis Kennedy Blog on — All Request Tuesday – What Are the Most Common Mistakes a New Legal Blogger Makes?
• Doug Sorocco’s PHOSITA blog.

I’d appreciate hearing from an Indian patent attorney (located in India).  I need some assistance with the recent Indian patent law amendment.

Contact me by e-mail at the address listed in the Contact Me tab.

Thanks in advance.

The American Bar Association’s Techshow takes place later this week.  I’ll be in attendance.  If you’re going, please make sure to introduce yourself.  If you’re not planning on attending, hurry-up and get registered.  At least mark this time on your calendar for next year.

The schedule is jam-packed with techno-oriented seminars.  I’ll have my trusty TabletPC and plan to blog during the show, at least a little bit.

I’ll give a full rundown awfter the show to help people decide whether they should attend next year’s show (hint:  you should).

And plenty of other bloggers are going too.  Its a great opportunity to meet your favorite legal bloggers and ask the questions you’ve always been afraid to leave in the comments.

Why am I following the recent changes in Indian patent law so closely (more than one reader has asked)?  Here’s a few reasons that came to me last night:

1.  It helps me be a better patent attorney to my clients.  US companies are becoming increasingly interested in India.  This is true in several industries for a variety of reasons and the trend is likely to continue.  I consider it part of my role as intellectual property counsel to be able to inform my clients about the ‘global climate.’  This allows me to help companies decide whether they should seek protection in India (and other countries), as opposed to simply taking the more traditional (and passive) role of arranging foreign counsel after such a decision has been made.  You know, the whole embedded patent attorney thing.

2.  The issues addressed by India will be addressed time and again around the globe.  India really struggled with some tough issues during this process, e.g., patentability of pharmaceuticals, the effects of patents on the cost of medicine, patentability of software, etc.  I think the Indian political debate on these issues is just a beginning.  We’re likely to see these same issues debated time and again around the globe, perhaps even at home.

3.  Encouragement.  Its encouraging to see a developing nation tackle these tough issues and to make the hard decision to strengthen its intellectual property system.  Who’s next?

4.  Its only a beginning.  Indian reforms will likely continue, with enforcement and administrative procedures in desperate need of change.  Indian patent law, and its intellectual property system in general, will likely garner significant international attention over the next several years as the country attempts to update these aspects of  the system.  Is an Indian patent valuable today?  Will it be valuable tomorrow?  Its great to be able to help clients make those determinations.

5.  Its different than ours.  As a law geek, I’m interested in comparing and contrasting different patent and intellectual property systems.  It appears that the ‘new and improved’ Indian patent law has substantial differences from ours.  Are the differences important?  What effect will they have ?  Can we learn something from the differences?  Time will tell.

I see Nipper is jumping on board too.  And he paid appropriate homage to the del.icio.us-IP grand master, Sorocco.  Excellent.

India’s upper house, the Rajya Sabha, today passed the controversial patent amendments bill, paving the way for the amendments to become law and to make Indian patent law TRIPs compliant. (yesterday actually, midnight just passed…)

The political debate in the parliament turned out to be as heated as expected.  Numerous amendments to the bill were submitted and approved, and several protests were mounted.  Some members even walked out of session in protest without casting votes.

What’s left after the debate?  Details aren’t clear yet (I’m even more appreciative of Thomas after following this issue…the online resources of the Indian parliament leave much to be desired), but it appears that drugs are in, and embedded software is out.

Did they get it right?  Where does this place the Indian patent law vis-a-vis that of the United States?  I plan to write a bit about that once I see a copy of the bill as passed.  An early thought I have is that many of the issues turned on obviousness (though not framed as such).  I think they nailed it on one side, and missed the mark on another.  More to come…

There has been a lot of interest lately in my posts relating to the ongoing changes to India’s patent laws.  So I’ve decided to use the del.icio.us sidebar to share some of the links I’ve collected on India.

Today, I changed the featured topic in the “Things I Find Delicious” sidebar on the main page to India – An Overview.  If you’re looking for basic information on Indian government and intellectual property law, these links are a great place to start.

CNN International has posted an article on the patent law amendment approved yesterday by the lower house of India’s parliament.

New info in the article:  apparently members of the opposition Bharatiya Janata Party walked out of yesterday’s session without casting their vote.

Today, the lower house of the Indian Parliament (the Lok Sabha, left) approved the bill designed to place India’s patent law in full compliance with TRIPs.  The upper house (the Rajya Sabha) still must approve the bill before it is effective.

The version approved by the lower house includes significant compromises on the original Presidential decree instituted on January 1, including the exclusion of embedded software as patentable subject matter and “inventive step” language designed to prevent evergreening practice in the pharmaceutical arts.

One article on today’s move claims the global drug industry welcomes it, while another claims that MNCs (multi-national corporations) are dismayed.