Back from Break, with a Summer Update!

Apologies for the extended summer break (not for the lack of thoughts or developments, though).

Let’s begin with a recap of what’s been happening for India at the international stage over the summer:

The ICJ and Justice Bhandari’s election:

1. Justice Bhandari was finally sworn-in as a judge of the International Court of Justice on 19 June 2012 (right before the Diallo judgment was read). For those interested, here’s a photo of Justice Bhandari being sworn in, and a video of him making the (rather short) solemn declaration (the oath).

2. On the debate surrounding Justice Bhandari’s nomination (see this for some background), two main criticisms have been leveled against Justice Bhandari’s nomination by India for the ICJ. The first, as reflected here, argues that as a national judge with little or no real experience in international law, Justice Bhandari’s nomination by the Indian national group of the PCA reflected absurd decision making. From an international legal perspective, the underlying assumption of this view is thus: “a judge may be well-versed with domestic legal traditions, but one assumes that a Judge at the International Court of Justice, the principal judicial organ of the United Nations, responsible for adjudicating on questions of international law (Article 38), would possess knowledge of international law!” The second criticism, as argued by Arghya Sengupta in an OpEd in The Hindu, takes issue with the nomination of Justice Bhandari, a sitting Supreme Court Judge, by the government of India on grounds of undermining the independence of the Supreme Court Judge (Justice Bhandari). As much as I understand, and perhaps even agree with, some of the sentiments behind these arguments, I still disagree with several individual arguments inherent in these criticisms, especially in light of the rather inchoate state of the international legal profession in India. However, I’d save my thoughts on this for later.

3. I’ve blogged about a right to Information application seeking information on Justice Bhandari’s nomination earlier. In response, the Ministry of External Affairs denied some information on Justice Bhandari’s nomination on the ground that the RTI Act allows withholding information related to strategic interests of the country, and besides it would also affect canvassing for Justice Bhandari. Now, the Central Information Commission has asked the MEA to provide the requested information. Interestingly, the CIC has also asked for the Indian national group of the PCA to answer some of the queries (could an argument be made here that the national group is not a “public authority” for the purposes of the RTI Act?).

Moving on to the Enrica Lexie incident (covered previously here and here):

There’s been considerable discussion on the international legal aspects of the incident.

1. Duncan Hollis, over on Opinio Juris, takes a look at the incident through the prism of the SS Lotus case decided by the PCIJ.

2. A debate in The Hindu captures the essential position and arguments both for and against the jurisdiction of Indian courts over the Italian marines. Samir Saran and Samya Chatterjee argue that the Indian courts do not have jurisdiction. Prabir Purkayastha and Rishabh Bailey, referring to Article 97 of the UNCLOS and the SS Lotus judgment, argue that Indian courts “also” have jurisdiction over the incident (as opposed to exclusive jurisdiction of Italy). Finally, Samir Saran disputes the above interpretation of Article 97 and also makes a very interesting argument based on the Indian Merchant Shipping Act.

3. Meanwhile, and perhaps more importantly, Judge Gopinath of the Kerala High Court has rendered (a reasonably well crafted) judgment in the writ petition filed by the Italian marines arguing that Indian courts do not have jurisdiction. The Court ruled that the Indian courts can exercise jurisdiction over the Italian marines under the Indian Penal Code and the Code of Criminal Procedure as they were within India’s contiguous/exclusive economic zone. It addressed a number of other important matters such as the sovereign immunity of the marines (held no sovereign immunity), the “compatibility” of several national laws (including the SUA Act) with the UNCLOS (held are “compatible”), and the relevance of past precedence (the Raymund Genacio case — differentiated on facts). Particularly interesting is the Court’s interpretation of the UNCLOS. For example, in defining valid exercise of sovereign authority by India in the territorial-, contiguous-, and exclusive economic zones under the UNCLOS, it notes:

To hold that a coastal state has no right whatsoever to protect its nationals exercising their legitimate rights inside the coastal state’s CZ/EEZ, would be nothing but a total travesty of justice and an outrageous affront to the nation’s sovereignty. Such a view would mean that any day, any passing-by ship can simply shoot and kill, at its will, fishermen engaged in earning their livelihood; and then get away with its act on the ground that it happened beyond the territorial waters of the coastal state. Such a view will not merely be a bad precedent, but a grossly unjust one, and will go against all settled principles of law. (para. 33)

At the WTO:

1. On 25 June, the DSB established a Panel with standard terms of reference in the poultry dispute between the US (complainant) and India (DS430: India — Measures Concerning the Importation of Agricultural Products).

2. According to news reports, the US has threatened to challenge India’s compulsory license for Nexavar at the WTO. This comes after reports that India’s commerce minister had defended the WTO consistency of the license.

Bilateral Investment Treaties/Arbitration:

1. The Sistema dispute appears to be moving forward, with the six-month notice period nearing its end and the selection of a legal team by India. Several names have been suggested, including Mr. Rodman Bundy, Prof. Donald McRae and Senior Advocate A K Ganguli.

2. Several NGO’s have written a letter to Prime Minister Manmohan Singh expressing concern over the ongoing US-India BIT negotiations. Their main attack appears to be against investor-state dispute settlement provisions.

3. In Nepal, a breakaway faction of the Unified Communist Party of Nepal (Maoist) has said that it will work towards scrapping of the recently concluded BIT with India.

4. The latest on the Vodafone BIT dispute is that it is moving forward with India not agreeing to Vodafone’s demands. Reports suggest that Prime Minister Singh would soon take a decision on Vodafone’s plea “seeking an undertaking that the [retrospective] amendment would not apply to it.”

And, finally, here’s the quote of the summer by none other than India’s (“underachieving“) Prime Minister:

“there are no international solutions to India’s problems”

– Prime Minister Manmohan Singh, returning from his trip to Los Cabos for the G20 and Rio.

A Freudian slip now, Mr Singh? : )

International IP, RTI and India’s Legal Representation at the WTO

I recently got back from National Law University, Jodhpur, after attending the Indian Ministry of Human Resource Development’s Roundtable on IP protection. The event was fantastic: from the concept of the roundtable itself (something not very popular with Indian law schools yet), to the organization, and the very interesting discussions. My session, with Mr. Anand Grover and Prof. Madhukar Sinha, on international IP protection was quite useful and provoking. From a pedagogical perspective, this was my first roundtable discussion (as opposed to conference presentations) and I personally think it is a much more engaging and meaningful format of dialogue for the participants and the audience.  I believe the organizers will be putting up videos and a podcast of the event — I will post a link as soon as I have one.

My talk at the roundtable was on unilateralism in international IP regulation, where I also revisited the generics seizures dispute. I will not go on to discuss that here, but just wanted to note a post by Prashant Reddy over on Spicy IP. Prashant had filed a right to information request regarding India’s legal repersentation and strategy for the WTO seizures dispute (DS409). I found the information he received from the government to be quite useful and telling. Here are some excerpts from the responses and his comments (the full RTI response is here):

(i) The first question pertained to the names of the lawyers/law-firms/law-professors engaged by the Government to advise it on the dispute: 

Ans. The Government had engaged the professional services of two Supreme Court lawyers and one foreign law professor to advise it on the dispute. The names and the fees charged by these lawyers are as follows:

(a) Mr. Krishnan Venugopal, Senior Advocate, Supreme Court.

Fees charged: Rs. 8.375 lakhs (Approx. US $ 16,500)

(b) Mr. Uday Nath Tiwari, Advocate, Supreme Court.

Fees charged: Rs. 2.01 lakhs (Approx. US $4,000)

(c) Professor Frederick M. Abbot, Professor of International Law at Florida University, College of Law.

Fees charged: Rs. 25.22 lakhs (Approx. US $50,000)

(ii) The second question pertained to the process adopted by the Government to select the above lawyers/law-professors: 

Ans. “The Department obtained opinion about the legal aspects of the case from the Advisory Centre for WTO Law (ACWL), Geneva and Indian law firm on the panel of the Dept. of Commerce. Dept. consulted the Permanent Mission of India (PMI), Geneva in selecting the foreign expert based on the recognized expertise in the IPR matters.

From amongst the Indian law firms/advocates the Deptt. considered their expertise in handling the WTO disputes and trade law matters. After short-listing the legal experts the Dept. took the approval of the Dept. of Legal Affairs for their engagement and payment terms.”

Comment: While Prof. Abbot is definitely a renowned expert on IP and WTO law, one does wonder why the Indian Government does not engage any Indian professors to advise it on such issues. For example Professor N.S. Gopalakrishnan, CUSAT has in the past advised the government on the TRIPs & ‘data exclusivity’. I don’t see the U.S. Government engaging Indian academics and their only hope of developing an expertise in the area is if their own government decides to engage them for advisory work. I do not understand the Indian Government’s obsession with foreigners. Aren’t Indians smart enough people? Moreover, even while selecting amongst Indians, the Government has to adopt a more transparent mechanism to select Indian lawyers.

(iii) The third question pertained to copies of the legal opinions submitted by the above lawyers to the Indian government. 

Ans. The Government denied us this information on grounds that it would hurt India’s economic interests. Please note that the Government has given us access to files pertaining to the 1999 Indo-E.U.-U.S. pharma trade dispute. I do not understand how these files suddenly become confidential especially when the Govt. claims that the dispute has been settled.

(iv) The fourth question pertained to the status of the dispute and as to why India was not pressing the dispute on the WTO stage. 

Ans. The Government replied with the answer that they had reached an ‘interim settlement’ with the E.U., as mentioned in the beginning of the post. Are ‘interim settlements’ allowed for under WTO law? I have no clue. The politics over this dispute are slightly complicated since India is in the middle of negotiating its biggest trade Free Trade Agreement (FTA) with the E.U. If the FTA does go through, it will be one of the biggest of its kind especially since the E.U. is already India’s largest trading partner. Since the door is still open, India should push ahead with the dispute and attempt to clarify the law on seizure of ‘in-transit’ consignments before such a provision is brought to the ACTA negotiating table.

I completely agree with Prashant on the availability of Indian experts in the field. Again, this is not to say that this is about Prof. Abbott — an excellent scholar in the field of WTO and international IP law. But this simply isn’t about that. The issue here involves the legal capacity of India, which can only truly be developed by engaging domestic lawyers and academics, for there is no such learning as experiential learning for international and WTO lawyers. I also agree with Prashant on the need for greater transparency in the selection of Indian lawyers, as well — I am sure that we’d be surprised by the talent we can find amongst a billion plus. Finally, I am surprised by the huge gap between the fees paid to the Indian lawyers versus Prof. Abbott. Here too, Prof. Abbott’s fee is rather reasonable by international standards, but what strikes me instead is the low fee of the Indian lawyers. I am sure WTO litigation does not form a bread and butter practice for these lawyers, and so there may be a sense of national service and prestige involved in such cases. Nevertheless, I see no cogent reason for such a discriminatory financial treatment between Indian and foreign experts. Of course, if Prof. Abbott was doing considerably more work and the Indian lawyers were only assisting, this could have been justified. But we don’t know if that was the case.

NLU Jodhpur Roundtable on IP Protection

National Law University, Jodhpur (India), is organizing a roundtable discussion on “[t]he Emerging Legal and Policy Landscape of Intellectual Property Protection for Pharmaceuticals in India” on 17th and 18th March 2012 at its campus in Jodhpur. Needless to say, the roundtable is a laudable effort.

For those interested in the international legal aspects of IP protection, the roundtable features a session on trade and international intellectual property on 17 March at 3.45 PM. Discussants for the session include Mr. Anand Grover, UN Special Rapporteur on the Right to Health, and Yours Truly. Mr. Grover will be talking about the implications of the emerging paradigm of IP protection in TRIPS-Plus FTA’s for access to medicines. I shall attempt to define the space for unilateral action under WTO law, with reference to the enforcement of IP rights. The Panel will be chaired by Prof. Madhukar Sinha of the Indian Institute of Foreign Trade.

The other sessions promise to be extremely interesting, as well. The full program of the event can be accessed here.

The roundtable is a part of the annual activities of the Ministry of Human Resource Development Chair for IP rights at NLU Jodhpur.

Those interested in attending the roundtable should send an email to mhrd-iprchair@nlujodhpur.ac.in or contact Prof. Yogesh Pai on +91-95 87 436 425.

India on ACTA

The most recent meeting of the WTO TRIPS Council was held on 28 and 29 February in Geneva. The agenda items included a lot of interesting issues, including the ACTA, Australia’s plain packaging law, and non-violation complaints under the TRIPS. You can find a brief description of the meeting on the WTO website here.

The discussion on ACTA in a truly multilateral setting (as opposed to a “selective” multilateral setting) is particularly interesting considering the controversy at the European level. India, for one, opposed the new agreement on familiar grounds of access to medicines and the interests of Big Pharma. In addition, following the seizure of generic pharmaceuticals transiting through Europe by European customs authorities (see past past posts here and here), India seems to be especially concerned about this issue, realizing that the seizure of in transit generics is more than just an isolated European practice and represents an emerging international standard for the enforcement of IP rights. Here is the full text of India’s statement (not checked against delivery):

At the last meeting, my delegation, had pointed out how the plurilateral agreements like ACTA and TPP contained TRIPS plus provisions that can undermine the flexibilities and disturb the delicate balance provided by the TRIPS Agreement and adversely affect access to health in the developing countries. The issue of access to health is not only limited to the developing countries but has begun to affect even the developed world. The unprecedented economic and financial crisis in the developed world and the austerity measures that have been taken by many countries, have adversely affected their health budgets. In this situation of shrinking health budgets it is essential that access to affordable medicines in every country, whether developed or developing, does not get circumscribed by the agreements like ACTA and TPP, which are basically motivated by the interests of big pharma companies. In this respect I would like to draw the attention of the Members to reports on , “Fiscal Crisis taking toll on Health of Greeks”. They highlight how the extensive public health care system of Greece that took care of every need of its people, has been pushed hard for dramatic cost savings, to cut back on the deficits. These measures are taking a brutal toll on the system and on the country’s growing number of poor and unemployed, who can neither afford high health insurance premiums or high cost of drugs provided by big pharma companies. Similar austerity measures in other parts of Europe have begun to affect access to medicines to their citizens.

Mr Chairman, the post TRIPS era that has seen reduction in the policy space required for designing the IP policy can be characterized by an enormous increase in cost of essential medicines and the countries that lack manufacturing capacity are in a further difficult situation. For the last few years we have seen barriers being created, even to import generic medicines, through their seizure, during their transshipment at the European ports. In addition attempts are being made through bilateral , regional and plurilateral agreements to stifle the manufacturers of generic medicines that are a life line for billions of poor in the developing countries. In fact, my delegation is of the opinion, that this august committee should deliberate on how the TRIPS agreement should promote access to health to the billions of needy people rather than discuss the IP agenda of a few countries.

We have heard the statements made by ACTA signatories and also their reassurance that ACTA will not affect access to medicines in developing countries. We are afraid that once ACTA comes into force, the ACTA Border measures which are currently limited to some parts of Europe could get extended to the territories of ACTA signatories; further stifling the supply of generic medicines to the needy countries. In fact on this issue we fail to understand the very need of ACTA when there are no reliable estimates of the extent of counterfeiting and piracy that exists or the exact impact of such activities on domestic industry. There are various industry estimates which have been seen to be based on downright incorrect data and at best dubious methodology to the extent that some estimates rely on failure to meet targeted sales as evidence of piracy and counterfeiting.
There are several provisions in ACTA despite the ostensible removal of ‘patents’ from the ambit of border measures which may be worrisome for the developing world.

1. The ACTA is not just against ‘counterfeiting’, as it is understood in the context of the TRIPS agreement as well as in the definition given in the text of the agreement. Even while admitting that the term ‘counterfeit’ applies to trademarks, the agreement in fact extends it to all forms of IPRs as covered under the TRIPS Agreement, including data, copyrights, patents, etc. It would be inappropriate to state that patents are not the subject matter of the Agreement. In fact, the parties are permitted (on option) to keep patents (and undisclosed information) outside the scope of Civil Enforcement. Thus, despite agreeing to keep patents (and undisclosed information) outside the scope of Border Measures the option on civil enforcement on patents remains in the agreement. This set of provision is still a marked increase over the TRIPS Agreement which limited itself to counterfeit trademark and pirated copyright goods only.

2. Article 23.2 of the ACTA clearly militates against parallel importation even though the relevant domestic law may not expressly forbid it. This it does by criminalising willful use of trade labels or packaging without the authority of the rightholder, which is exactly what parallel importers do.

3. On Border Measures, ACTA goes much beyond Article 51 of the TRIPS Agreement and includes all forms of Intellectual Property Rights. However thanks to the strong criticism of these provisions during the secret negotiations of ACTA and several incidents of generic drugs getting seized in transit at the European ports, the ACTA signatories finally decided to exempt patents and undisclosed test data from Border Measures. While we appreciate these exclusions, the imposition of Border Measures over other forms of IPRs can still affect the trade in goods that transit through the ports of ACTA Members.

4. Members may recall that during several TRIPS Council Meetings in the past, India and other countries highlighted their concerns over the seizure of generic medicines in transit at the European ports when there was in fact no IP violation. Some consignments were detained not for patent violation but were suspected of trade mark violation. ACTA’s expansion of border measures far beyond “counterfeit trademark or pirated copyright goods” can thus authorize seizures of suspected “confusingly similar” trademarks. Takking a decision on trademarks requires a comprehensive legal analysis, which is much less straightforward than determining whether goods are counterfeit. Such an assessment is typically performed by courts or trademark offices, which have the necessary legal expertise, case law, and experience to rely upon. Imposing this task on customs officers is likely to result in a considerable increase in seizures and temporary detentions based on right holder allegations that transiting products are confusingly similar.

5. ACTA Article 16, escalates the border seizure requirements while reducing safeguards. ACTA mandates ex officio seizures, extends the scope of requirements to include exports, and makes no mention of a prima facie evidence requirement or limited duration of the suspension pending a determination on the merits. This goes much beyond the TRIPS provision of Article 58 that imposes restrictions on the ability of border officials to take ex officio action to halt goods at the border without any complaint from a rights holder. Further rights holders could also use this customs authority to launch harassing actions against legitimate competitors.

6. The TRIPS Plus Border Measures under Article 22 of ACTA disturbs the delicate balance provided by Article 57 of the TRIPS Agreement that favour rights holders vis-a-vis the importer of goods. The disclosure of information provision could be used by right holders to discover details on distribution chains of generic companies on the basis of alleged infringement rather than proven infringement. These companies can then mount aggressive and expensive litigation against suppliers and intermediaries to deter generic entry into key markets.

Mr Chairman apart from these concerns we are afraid that ACTA would establish new benchmarks in international standards on IP enforcement. These standards are likely to become the bedrock of future negotiations between the developed and developing countries in the various RTA negotiations currently under way. As the lure of immediate market access is a potent one, many of the developing countries may end up accepting these standards as their own. This would severely inhibit South–South trade since it would impose obligations on the importing countries to follow the new standards of enforcement.

Mr Chairman, we also have concerns over the impact of ACTA on digital goods and Internet freedom. There is considerable interest about ACTA creating obligations on the enforcement of copyright, which are themselves problematic, including those involving digital rights management and technology protection measures, which are coupled with new norms for damages for infringement, such as the notion that injury can be the suggested retail price of goods. This is likely to have a severe impact on the efforts towards literacy and access to knowledge and information that has been at the core of the aspirations of the developing world to convert themselves into information societies and knowledge economies. In these areas, consumers in the US and the EU are rightfully concerned, because ACTA is fundamentally hostile to consumers, by systematically excluding consumer interests from having meaningful roles in the ACTA negotiations, a tradition that is expected to continue in the ACTA Committee, which is under no obligation to operate in a transparent, open, and inclusive manner.

To conclude my delegation reiterates that the adverse effect of the TRIPS plus enforcement provisions contained in ACTA and other plurilateral agreements in the pipe line would not only affect the developing countries but could also have an impact on the developed countries. It is therefore essential that collective efforts must be made to protect the policy space needed not only to access affordable medicines but also to provide freedom to let the nascent digital industry prosper in the interest of the mankind.

See also: Nate Anderson’s reportage over on Ars Technica.

India-EU generic drug seizures row resolved?

A recent press release issued by the Ministry of Commerce and Industry of the Government of India on 28 July 2011 suggests that a dispute between India and the EU over border enforcement of intellectual property (IP) rights may have been resolved.

[To recap, by 2010, the EU customs authorities (particularly the Dutch) had gotten into a habit of detaining generic drugs in transit between India and other nations. These drugs were generic both in the country of origin and the final destination, and were merely transiting through the EU – without any risk that they would have entered circulation in the EU market. Following these seizures, India (and Brazil) filed a complaint at the WTO alleging violation of GATT Art.V, and several provisions of the TRIPS Agreement. Following this, EU and India and entered into consultation for resolving the dispute. For a while, the EU gave several assurances that it would remedy the situation to not seize generic drugs, but did little to effectuate such a change in the law (two concurrent developments are to be noted: this issue of IP right enforcement against goods in transit is also currently pending before the ECJ (Case no. C-495/09. For details, see here), and; India and the EU are also in the process of negotiating a FTA). Following the EU’s assurances, India refrained from requesting the establishment of a WTO panel to hear the dispute]

According to the Press Release of July 28, India and EU have reached and finalized an “Understanding to to guide border enforcement of intellectual property in the EU.” According to the Press Release, a core element of the Understanding is that “the mere fact that medicines are in transit through EU territory, and that there is a patent title applicable to such medicines in the EU territory, does not in itself constitute enough grounds for customs authorities in any Member State to suspect that the medicines at stake infringe patent rights.” Based on this Understanding, India has assured the EU that it will not pursue the WTO dispute so long as the core element is respected.

The Press Release is available here. The text of the Understanding has not yet been made public.

Having had worked on this issue for some time now, and without access to the full text of the Understanding, a few concerns crop up in my mind:

1. It will be interesting to see if the Understanding talks only about generic medicines in transit through the EU, or goods in transit generally. Apart from seizure of generic drugs on allegations of patent infringement, EU customs have commonly detained other goods in transit over alleged violations of other IP rights (the incidence of detention of goods in transit and transshipment has been greatest in cases of suspected violation of copyright and related rights, followed by trademarks, patents and design rights in the transit country, respectively. See EU Enforcement Report at p.29 here). Thus, in case the Understanding effectuates greater caution on part of EU customs only in cases of generic drugs in transit, it would fail to solve the larger, and more important, issue of extraterritorial and unilateral enforcement of IP rights against goods in transit. In this sense, if the Understanding relates only to generic drugs, it would only provide symptomatic relief, rather than a cure.
2. Apart from this issue, there is a larger systemic concern about the entrenchment of a norm of enforcement against in transit goods within the international IP law regime. The US and EU have consistently negotiated agreements and treaties with other states that require these states to enforce IP rights against goods in transit (in essence what the EU was doing before the Understanding. See, amongst others, US-Bahrain FTA, art.14.10; DR-CAFTA, art.15.11, available here; US-Chile FTA, art.17.11, here, and; US-Peru TPA, art.16.11, here ). An Understanding between India and EU would have little effect on the obligations of these states under their respective bilateral agreements. Indeed, even if the Understanding does apply to all cases of IP rights infringement and not just generic drugs, it could not possibly apply to agreements concluded between third states. As such, to me, as a matter of international IP law, the issue of enforcement of IP rights against goods in transit under still seems quite nebulous.