disclaimer

• Before filing a patent application, it is important that a prior arts search, also known as a patentability search, is carried out. This search helps to gather information about the existing technology in the same field of invention. Based on the search results, one can proceed with drafting of the specification. A specification is of two types – provisional and complete. The former is usually filed when the invention has only been conceptualized, i.e. is only at the preliminary stage to block an early priority date. Alternatively, if the invention is complete, i.e. all supporting data has been generated, a complete specification is drafted. The patent application can be filed after the specification is finalized.

• True and first inventor,
• Assignee of the inventor, or
• Legal representative

An assignee can be a legal entity including a small entity and a startup. The small entity category was introduced in February, 2014 and has been defined as follows:

• In case of an enterprise engaged in the manufacture or production of goods, an enterprise where the investment in plant machinery does not exceed the limit specified for a medium enterprise under Section (7)(1)(a) of Micro, Small and Medium Enterprises Development Act, 2006: and

• In case of an enterprise engaged in providing or rendering of services, an enterprise where the investment in equipment is not more than the limit specified for medium enterprises under Section (7)(1)(b) of Micro, Small and Medium Enterprises Development Act, 2006.

In India, an invention ought to relate to a product or a process provided the product/process is novel, has inventive step, and is capable of industrial applicability.

An invention which is not a product or a process cannot be patented. In United States, plant patents allow their owner to have protection over any new and distinct variety of plant that has been asexually reproduced. However, in India, plant patents are not allowed. New plant varieties are protected under the Protection of Plant Varieties and Farmers’ Right Act, 2001. Similarly, a design patent gives the owner protection over the visual aspects of a product. In India, design patent is not allowed. Instead, protection of a new design is governed by the Designs Act, 2000. Utility models are also not allowed under the Patents Act of India. Utility models provide protection to minor inventions over the already existing products.

The product or process should be new that is it has not been used or known before, not obvious to person skilled in the art, and provides usefulness in an industry and which does not fall within the scope of the exclusions from patentability.

The Indian patent law prohibits patenting of products or processes if they fall under any of the following categories:

• an invention which is frivolous or which claims anything obviously contrary to well established natural laws;
• an invention the primary or intended use or commercial exploitation of which could be contrary to public order or morality or which causes serious prejudice to human, animal or plant life or health or to the environment;
• the mere discovery of scientific principle or the formulation of an abstract theory or discovery of any living thing or non-living substance occurring in nature;
• the mere discovery of any new property or new use for a known substance or of the mere use of a known process, machine or apparatus unless such known process results in a new product or employs at least one new reactant;
• a substance obtained by mere admixture resulting only in the aggregation of the properties of the components thereof or a process for producing such substance;
• the mere arrangement or re-arrangement or duplication of known devices each functioning independently of one another in a known way;
• a method of agriculture or horticulture;
• any process for medicinal, surgical, curative, prophylactic, diagnostic, therapeutic or other treatment of human beings or any process for a similar treatment of animals to render them free of disease or to increase their economic value or that of their products;
• plants and animals in whole or any part thereof other than microorganisms but including seeds, varieties and species and essentially biological processes for production or propagation of plants and animals;
• mathematical or business method or a computer program per se algorithms
• a literary, dramatic, musical or artistic work or any other aesthetic creation whatsoever including cinematographic works and television productions;
• a mere scheme or rule or method of performing mental act or method of playing game;
• a presentation of information
• topography of integrated circuits
• an invention which, in effect, is traditional knowledge or which is an aggregation or duplication of known properties of traditionally known component or components
• inventions relating to atomic energy

Patents protect a person’s inventions by providing him exclusive rights to make, use, sell and offer for sale his invention. This, in turn, encourages and incentivizes further inventions leading to industrial and technological advancement and growth.   This exclusive right is conferred in exchange for complete disclosure of the invention. Thus after the expiry of the exclusivity the general public can make use of the disclosure of the invention to take the art forward and further innovate

Various types of application can be filed in India in order to obtain a patent. The following types of patent applications can be filed: Ordinary application, convention application, PCT National Phase Application, Application for Patent of Addition and Divisional Application.

An application for patent that is first filed in the Patent Office without making any reference to any other previously made application is called an ordinary application. An ordinary application can be accompanied by a provisional specification or a complete specification.

A patent application accompanied with a provisional specification is a type of patent application that is filed to secure the priority date for the invention.  A provisional application is usually filed when the invention is in the development stage and time is required for its completion. A patent is never granted based on the provisional specification. A provisional specification must be "converted" into a complete specification within 12 months of filing the provisional specification.

A complete patent specification is a complete disclosure of the invention that fully and particularly describes the invention. Claims are an essential of the complete specification. It is the complete specification that is published, examined and granted.

When a complete specification is filed within 12 months of filing the provisional specification, the specification is called a complete after provisional specification.

When at the first instance, an application is filed with a complete specification, it is a direct complete specification.

When an application is filed within twelve months from the date of first filing of a similar application in a convention country and claiming the priority date of the said application filed in the convention country, it is called a convention application. A convention application is accompanied by a complete specification.

An application filed claiming the priority and the filing date of an international application that is made according to the Patent Cooperation Treaty (PCT) is called a PCT National Phase Application. A PCT National Phase application has to be filed within 30/31 months from the date of priority or from the date of filing of the international application, whichever is earlier. In India, PCT national phase application is filed within 31 months from the date of priority or from the date of filing of the international application, whichever is earlier.

When there is a slight modification or improvement in an invention for which an application is already filed, the applicant can choose to file an application for a patent of addition.  The date of filing an application for a patent of addition shall be the same or later than the date of filing of the application for the main invention and an application for patent of addition shall not be granted before granting of the patent for the main invention.

A divisional application is an application which is divided out of a parent application when the parent application relates to more than one invention. A divisional application can be filed by an applicant if she/he so desires or with a view to remedy an objection on the ground that the claims of the complete specification relate to more than one invention. The date of filing of a divisional application shall be deemed to be the same as that of the parent application.

• India has four patent offices located in New Delhi, Mumbai, Chennai and Kolkata.
• For Indian applicants:
• Territorial limits where the applicant resides or has a place of business.
• Territorial limits where the first applicant resides or has a place of business (in case of joint applicants)
• For foreign applicants (having no business place or domicile in India),
• The appropriate office will be according to the address for service in India given by the applicant or party in a proceeding, it could be the agent’s place of business

A patent is a territorial right, that is, a patent granted in India will give the owner the right to protect the invention only within the boundaries of Indian territory. Similarly, a U.S. patent gives protection only within United States.

There is no such thing as an international patent. An international application is an application made according to the Patent Cooperation Treaty. PCT does not grant any patent.

• Filing a PCT application allows one to seek patent protection for an invention simultaneously in each of 152 PCT member countries by filing a single patent application. The PCT is not a granting authority. It is a filing, searching and Examining Authority.
• PCT applications can be filed at the Indian Patent Office as Receiving Office for Indian nationals.
• The Indian Patent Office can also be elected as the ISA and IPEA.
• An Indian resident is not allowed to file or cause to be filed a PCT application as first filing without seeking a prior permission from the Indian Patent Office.

Applications can be filed manually or electronically. In fact, electronic filing is encouraged as the paper filing fees include a 10 % surcharge.

• Filing Requirement for Ordinary Application:
• Application form
• Provisional or complete specification
• Drawing (if necessary)
• Sequence Listing (if required)
• Abstract of the invention
• Information & undertaking listing the number, filing date & current status of each foreign patent application
• Declaration of inventor ship where provisional specification is followed by complete specification
• Power of attorney (if filed through Patent Agent)
• Fees (to be paid in cash/by cheque /by demand draft/online transaction)
• Permission from National Biodiversity Authority in case Biological material used from India. Otherwise mentioning the source in the specification. The permission may be procured later but before grant
• In case microorganisms are used that are not available to public and cannot be appropriately described the same to be deposited with International Depository Authority before filing of the application. The identification number may be informed to Patent Office later
• Filing Requirement for National Phase Application:
• Copy of the PCT Publication with the specification and drawings
• Copy of the specification (if the PCT application is not in English) required for filing in India
• Copy of the International Search Report
• Copy of the International Preliminary Report on Patent-ability
• Any amended pages filed on the basis of which examination in India is to be carried out
• Power of authority in our favour from the applicants
• Copy of Form PCT/IB/304
• All entry into Indian National Phase to be made with the same specification as in the PCT and amendments made at International Phase.

No. Any form of disclosure of the invention before filing of an application is prejudicial to the patentability of the invention.

This can be found out by carrying out a universal patentability or a prior art search using various search engines/software over patent and non-patent databases.

As per the patent law in India, if a biological material is used in the invention the applicant shall disclose the source and geographical origin of the biological material in the specification. If such material is not available to the public, the applicant shall deposit the material to an international depository under the Budapest Treaty and a reference thereof shall be made in the specification.

• If an invention uses a biological material from India, it is required that the applicant will seek approval from the National Biodiversity Authority. This is in regard with Section 6(1) of the Biological Diversity Act (BDA), 2002 which recites: No person shall apply for any intellectual property right, by whatever name called, in or outside India for any invention based on any research or information on a biological resource obtained from India without obtaining the previous approval of the National Biodiversity Authority before making such application.
• Provided that if a person applies for a patent, permission of the National Biodiversity Authority may be obtained after the acceptance of the patent but before the seating of tile patent by the patent authority concerned:
• Provided further that the National Biodiversity Authority shall dispose of the application for permission made to it within a period of ninety days from the date of receipt thereof.
• Biological resources as defined by the BDA: "biological resources" means plants, animals and micro-organisms or parts thereof, their genetic material and by-products (excluding value added products) with actual or potential use or value, but does not include human genetic material.

In recent times, Indian Patent Office has become very stringent and clear that inventions using biological material obtained from India will be subject to seeking permission from the NBA. Further, it has been made clear that application will not be granted until approval is received by Applicant. We have in a few extreme cases noted that not seeking NBA permission has been made a ground for the refusal of a patent application.

• The Indian Patents law requires an Applicant to keep the Patent office informed of the status of corresponding foreign applications filed outside India that relate to the same or substantially the same invention as filed in India within six months from date of such filing.
• The applicant is also required to submit the search and/or examination reports (office actions/communications from Examining Division) along with claims allowed of all corresponding foreign patent applications filed outside India when required by Patent office.

• Proof of right is a declaration of true and first inventor on the application form 1 or by way of separate assignment. If the application is made by a legal representative ‘death certificate or certificate of inheritance’ of the deceased should be filed as proof of right. Proof of right shall be submitted within six months from the date of application.

• At the expiry of 18 months from the date of filing of the said application or the date of the priority of the application, whichever is earlier, the application is published and this publication of application in the official journal is referred as 18 months publication. Such publication also marks the beginning of the pre-grant opposition period.
• Alternatively, a request of early publication, before expiry of the said timeline, may be made by the applicant along with prescribed fee.

• Examination of patent takes place only upon filing a request for examination along with the prescribed fees. A request for examination can be filed within 48 months of the date of priority or the date of filing the application, whichever is earlier.
• An express request for examination before the expiry of 31 months can be made only in respect of applications filed under the PCT (patent Cooperation Treaty) national phase application on payment of the prescribed fee.
• Another provision of expedited examination has been implemented from May, 2016, in which the patent applications which requested for expedited examination will be put in a queue separate from the patent applications for ordinary/ express examination. This provision of expedited examination is available only for startups and applicants who have elected India, in their PCT application as an International Searching Authority (ISA) or International Preliminary Examining Authority (IPEA).

• The lifetime of a patent is 20 years from the date of filing of the patent application.

• A patent can be kept in force by paying the renewal fee for every year till the completion of the full term. The renewal fees shall be payable at the expiration of the second year from the date of the patent or of any succeeding year and the same shall be remitted to the patent office before the expiration of the second or the succeeding year.

• Further, renewal of a patent can be done beyond the due date in the extended period of six months from that date on request filed with the prescribed fee. This period of six months is not extendable.

• If the renewal fee is not paid, the patent will lapse and stop being in force. A lapsed patent can however be restored on filing a valid request within a prescribed time.

• In case a design registration ceases to have effect due to failure to pay fees for extension an application for restoration may be filed within one year from the date of lapse.

• Trade mark registration provides exclusive right to use the registered trade mark in respect of the goods or services covered thereunder under the Indian Laws. This is subject to certain exceptions.
• Use of the ® symbol on goods/services adds to the brand value. Instils a sense of faith in the quality in the minds of the consumers.
• Acts as a notice/warning to possible infringers that the trade mark enjoys statutory protection.
• A trade mark registration certificate act as a prima facie proof of the rights vested in the registered proprietor in court proceedings.

• SPC is right usually granted by the European Union to extend the life of an active product protected under a patent. SPC is granted to compensate for the duration that is lost to obtain marketing authorization of the product. India does not grant a SPC.

• There are two types of Opposition proceedings in patents:
• Pre-grant Opposition
• Any person may file an opposition by way of representation to the Controller against the grant of Patent, at the appropriate office, at any time after publication of patent application, but before the grant of Patent on any of the grounds mentioned in provisions of the act.
• Post – Grant Opposition
• Any person interested can file a Post Grant opposition against the grant of Patent within twelve months from the date of publication of grant of patent at the appropriate Office.

Any person interested or the Central Government may make a petition on one or more of the several grounds made available for revocation before the Appellate Board or on a counter-claim in a suit for infringement of the patent before the High Court.

• The patentee and every licensee should furnish the details of working of the invention in respect of every calendar year within three months of the end of each year and within two months whenever required by the Controller.
• Failure to supply such information is punishable with fine which may extend to ten lakh rupees.

• Any person interested can make an application to the Controller for grant of compulsory license for a patent after three years from the “date of grant” of that patent, if the
•   reasonable requirement of public has not been satisfied or
•   it is not available to the public at affordable price or
• if the patented invention is not worked in India.

• Patents can be both assigned and licensed. An assignment would generally record the transfer of ownership for a patent whereas a license can be a full or partial transfer of rights, title and interest.

• Judicial actions (available to a Patentee):
• Civil remedies are essentially judicial remedies as well as administrative remedy has been made available against importation of infringing products through the Customs Law
• Civil Territorial jurisdiction
• One may institute an infringement suit at any court not lower than that of the District Courts. A patentee can also choose to file an infringement suit in the High Courts of Delhi, Bombay, Calcutta and Madras which exercise original jurisdiction subject to the pecuniary jurisdiction as prescribed under the respective rules.

•  The defendant may file a counterclaim for the revocation of the patent or may even choose to file a petition for revocation of the patent before the Intellectual property appellate Board (IPAB) on various grounds as specified under the law.

Certain acts under the Indian patent laws are not considered as infringement. The provision for the same is guided by Section 107A. The Section 107A(a) recites that an act of making, constructing, using, selling or importing a patented invention solely for uses reasonably related to the development and submission of information required under any law for the time being in force, in India, or in a country other than India, that regulates the manufacture, construction, use, sale or import of any product is not to be considered as an infringement of patent rights. This is in line with the ‘Bolar provision’. Also, importation of patented products by any person from a person who is duly authorized by the patentee to produce and sell or distribute the patented product is not to be considered as an infringement of patent rights.

• A trademark is a distinctive sign which identifies certain goods or services as those originating from a specific person or enterprise.
• A trade mark, commonly referred to as ‘brand’, is a mark capable of being graphically represented and which is capable of distinguishing the goods or services of one person from those of others. A trade mark may be a word, name, device, label, numerals, combination of colours, sound or shape used on goods or services to indicate point of origin of such goods or services.
• A trademark gives the owner exclusive rights to use the mark in connection with the sale of goods and/or provision of services. The owner may prevent others from making, using, selling, offering to sell, or importing goods and/or services that bear the registered mark.

• A trade mark identifies the source of goods and services and distinguishes the goods and services of one entity from those of others
•  Trade Mark acts as the main instrument for advertising and selling the goods or services
•  A trade mark allows the consumers and purchasers to be aware of the goods they are buying
•  A trade mark allows consumers to develop brand loyalty and affiliation further stimulating sale of such products
•  A trade mark helps in accumulating goodwill which eventually imparts enviable brand value to such trade mark

•  A trade mark must be easy to remember and catchy
• A trade mark must be short and easy to spell
• A trade mark must not be laudatory or descriptive of the goods/services in any sense
• A trade mark must not be identical/deceptively similar to an existing trade mark
• It is always advisable to carry out of search on the official website of the Trade marks Registry before applying for a trade mark to weed out the chances of conflict with prior proprietors of similar/identical marks.
•  It is always advisable to carry out of search on the official website of the Trade marks Registry before applying for a trade mark to weed out the chances of conflict with prior proprietors of similar/identical marks.

•  A trade mark which is devoid of any distinctive character, that is to say, not capable of distinguishing the goods or services of one person from those of another person;
•  A trade mark which consists exclusively of marks or indications which may serve in trade to designate the kind, quality, quantity, intended purpose, values, geographical origin or the time of production of the goods or rendering of the service or other characteristics of the goods or services;
•  A trade mark which consists exclusively of marks or indications which have become customary in the current language or in the bona fide and established practices of the trade, i.e., a trade mark which is common to trade, commonly used dictionary terms, names of places etc.;
• A trade mark which is of such nature as to deceive the public or cause confusion;
•  A trade mark which contains or comprises of any matter likely to hurt the religious susceptibilities of any class or section of the citizens of India or comprises scandalous or obscene matter;
•  A trade mark, the use of which is prohibited under the Emblems and Names (Prevention of Improper Use) Act, 1950 (12 of 1950);
•  A trade mark shall not be registered as a trade mark if it consists exclusively of the shape of goods which results from the nature of the goods themselves; or the shape of goods which is necessary to obtain a technical result; or the shape which gives substantial value to the goods;
•  A trade mark which is similar to a prior adopted/registered/used trade mark of another trader who has been using the trade mark with respect identical/similar goods or services;
•  Some trademarks are prohibited from registration under the directions of the Government. For example – the device or word ASHOK CHAKRA, names like Sai Baba, National etc;
• A trade mark which is similar or identical to well-known or reputed trademarks with respect to similar or dissimilar goods/services. For example: Bajaj, Sony, Infosys, Kit Kat, Amul, Tata etc.;
• A trade mark which is the commonly used and accepted name of any single chemical element or any single chemical compound (as distinguished from a mixture) in respect of a chemical substance or preparation, or which is declared by the World Health Organisation and notified in the prescribed manner by the Registrar from time to time, as an international non-proprietary name or which is deceptively similar to such name;

• Any person claiming to be the proprietor of a trade mark whether used or proposed to be used can file an application for registration of trade mark before the appropriate Trade Marks Registry office. A trade mark can be registered in the name of an individual, sole proprietor, joint owner or a body incorporate such as an incorporated company, LLP or a partnership firm, society, trust, H.U.F.

• A rectification application can be filed before the Trade Marks Registry or the Intellectual Property Appellate Board for the removal of a registered trade mark from the Register of Trade Marks on the various grounds as contained in the Trade Marks Act, 1999.
• A rectification application can be filed before the Trade Marks Registry or the Intellectual Property Appellate Board for the removal of a registered trade mark from the Register of Trade Marks on the various grounds as contained in the Trade Marks Act, 1999.
• The owner of a registered trade mark can take civil action against any person who infringes the trademark by way of filing an infringement law suit. An infringement suit for statutory remedies can be filed only on the basis on a registered trade mark. A passing off suit against third parties may, however, be filed by the owner of a registered or an unregistered trade mark underthe common law rights. The trademark owner is entitled to remedies by way of injunctions, damages and accounts. No court below that of the District Court has the jurisdiction in civil suits regarding trademark infringement.

• ‘Design’ means only the features of shape, configuration, pattern, ornament or composition of lines or colour or combination thereof applied to any article whether two dimensional or three dimensional or in both forms.
• A design may be applied by any industrial process or means, whether manual, mechanical or chemical, separate or combined which in the finished article appeal to and are judged solely by the eye.
• A design however does not include any mode or principle of construction or anything which is in substance a mere mechanical device.
• A design does not include any trade mark, property mark or any artistic works which have been defined in the Trade Marks Act, 1999, Indian Penal Code, 1908 and the Copyright Act, 1957.

• Copyright is a statutory right afforded to the creators or authors of literary, dramatic, musical and artistic works and producers of cinematograph films and sound recordings. Copyright is a bundle of rights including but not limited to, rights of reproduction, communication to the public, adaptation and translation of the work. Copyright warrants protection of the rights of authors over their creations, thus protecting and rewarding originality and creativeness. By affording such protection, it allows social and economic development as well as helps in the advancement of society.

• Copyright as provided by the Indian Copyright Act is valid only within the boundariesof the country. India, however, is a member of the following international conventions on copyright and neighbouring (related) rights which haveaided in obtaining protection of Indian works in foreign countries:
• Berne Convention for the Protection of Literary and Artistic works.
• Universal Copyright Convention.
• Convention for the Protection of Producers of Phonograms against
• Unauthorized Duplication of their Phonograms.
• Multilateral Convention for the Avoidance of Double Taxation of Copyright Royalties.
• Trade Related Aspects of Intellectual Property Rights (TRIPS) Agreement.
• Accordingly, copyrights of works of the countries mentioned in the International Copyright Order, 1999 are protected in India, as if such works are Indian works.

• A geographical indication (commonly referred to as GI) is a name or sign used to indicate the geographical location or origin (e.g. a town, region, or country) of certain products. The use of GI allows the consumer to identify products which have certain qualities, which may be due to the use of certain traditional methods of manufacturing or due to the fact that such products enjoy certain reputation and distinctive features which is essentially attributable to the fact of its origin in that defined geographical locality, region or country.

The .IN Domain Name Dispute Resolution Policy (the “Policy”) sets out the terms and conditions to resolve a dispute between the Registrant and the Complainant, arising out of the registration and use of the .in Internet Domain Name (for example, www.xyz.in). The policy is administered by the National Internet Exchange of India (NIXI). A complaint under this procedure begins with the filing of a complaint before the .IN Registry and is in the nature of an arbitration proceeding wherein the .IN Registry appoints an arbitrator to determine the domain name complaint who is required to conduct the proceedings as per the Arbitration and Conciliation Act, 1996 and the INDRP Policy and Rules thereunder. A personal hearing may be fixed at the instance of the Arbitrator if he so desires. The grounds of filing a complaint and the remedies are similar to those covered under the UDRP.

Darjeeling Tea, Mysore Sandal Soap, Nagpur Orange, Agra Petha, Kashmir Pashmina, Lucknow Chikan Craft, Baluchari Saree, Kancheepuram Silk. The entire list of GI’s which are registered in India can be obtained from the official website of the Geographical Indications in India.

• The goods/services are classified as per the current edition of the International Classification of goods and services (Nice Classification) published by the World Intellectual Property Organization (WIPO). Classification of goods and services comprises of 45 classes. Classes 1-34 classify goods whereas Class 35-45 classifies services.

• The Trade Marks Registry has also published an alphabetical index of goods and services including those of Indian origin. If there is any ambiguity in the classification the decision of the Registrar on the appropriate class is final.

• Online design search is not possible by general public and for determining whether prior registration subsists in respect of a particular design, a request can be made to the Controller with the details of the design desired to be registered. Design search is possible either by providing Registration or by providing drawings/photographs of the article.

• A registered geographical indication is infringed by any person who, not being the registered proprietor or authorized user, uses such indication on the goods or suggests that thegoods originate in some geographical area other than the true origin of the goods,in order to mislead the public.
• Civil Action
• The rights holder may either initiate an infringement and/or passing off proceedings against an infringer. The infringement proceedings may however be initiated only if the geographical indication has been registered. The court may, in the case of infringement and/or of passing off, grant injunction and also grant either damages or accounts of profits, delivery-up of the infringing labels and indication for destruction or erasure.
• Criminal Action
• Criminal action is also available in case of violation of geographical indications. The police have the power to suo moto conduct raids and seizure operations. However, before making any search and seizure, the police officer have to obtain the opinion of the Registrar of Geographical Indications on the facts involved in the offence and shall act only upon the opinion that has been obtained.

• The government has set up a Copyright Enforcement Advisory Council (CEAC) to review the progress of enforcement of Copyright Act periodically and to advise the Government regarding measures for improving the enforcement of the Act. The Copyright Act also provides for a quasi-judicial body called the Copyright Board consisting of a Chairman and two or more, but not exceeding fourteen, other members for adjudicating certain kinds of copyright cases.

• Petition for the cancellation of registered designs can be filed at any time during the term of registration before the Controller of Designs on grounds of prior publication, prior registration in India, lack of novelty and originalityetc.

• The Madrid Protocol came into effect in July, 2013. The Madrid Protocol is a gateway to protect trade marks in countries who are members of the Madrid Protocol. It aims to provide a cost-effective and efficient way for trademark holders, individuals and businesses to ensure protection for their trade marks in multiple countries through the filing of one application with a single office, in one language, with one set of fees, in one currency.
• For Indian trade mark owners/applicants one can file an international application with the Trade Marks Registry, India based on a basic application/basic registration and designate the countries in which they seek protection of the concerned trade mark. The Trade Marks Registry will charge a handling fee to conduct an eligibility check and certify the contents and forward the international application to the International Bureau of the WIPO within a period of 2 months. The International Bureau upon receipt of the application and the requisite fee (which will depend on the countries designated) will conduct a formality check. Once a formality check is successful the International Bureau will proceed to register the mark in the international register thereby leading to an international registration. The International Bureau will also publish the mark in a periodical gazette(WIPO Gazette of International Marks) issued by the International Bureau.
• Request for designation (territorial extension) can also be made after the filing of the international application and subsequent to the international registration. Once an International registration has been issued the International Bureau shall immediately notify the Trade Marks Office of concerned designated country of such designation. The concerned designated countries will examine the trade mark application under their own national law and rules and within a fixed time line (which will vary for each country that is designated) notify its acceptance and/or refusal and/or objection by way of an opposition to the said application to the International Bureau. As far as India is concerned a foreign national/body incorporate filing in India through the Madrid Protocol upon acceptance of the application(subject to no opposition) by the Trade Marks Registry, India will grant a status reflecting that the trade mark is ‘PROTECTED’ in India. No separate registration certificate will be granted to such foreign national/body incorporate. The registration of an international application happens at the International Bureau and not at the individual designated countries. The individual designated countries accord PROTECTION as per their national trade mark law.
• Some countries additionally issue registration certificates as a matter of procedure or on request, as the case may be.In particular, the United States issues a registration certificate with a United States registration number, whereas India will not. An international registration certificate is issued by the International Bureau.

• A patent can be restored within 18 months from the date of cessation, subject to the Controller's direction, upon filing following:
•  Application Form for restoration of lapsed patent with prescribed fee
•  Evidence to support the failure of renewal/maintenance fee was unintentional.

• Litigation in Intellectual Property Rights (IPR) is India is quite diverse because there are multiple Courts and different Courts have different practices. Such varied practices require formulation of different strategies. In IPR cases it is important to obtain ex-parte orders where infringement is of such nature that prior notice to the defendant will defeat the effectiveness of the action. Some Courts in India as a matter of practice do to grant ex-parteinjunctions because of internal policies and some Courts do grant such injunctions. This prompts the litigants to resort to forum shopping which is perfectly legitimate. However,forum shopping has limitations with respect multiple factors.
• On the question of jurisdiction, different facets of IPR have different provisions and this requires different litigation strategies. In Trademarks the owner can sue in the Court of his own territorial jurisdiction if his trademark is registered but he cannot do so in case of passing off where his trademark is used but unregistered. In Patents and Designs the right holder has to choose a Court where the defendant resides or where the infringing goods are made or sold. On the other hand, in case of Copyright infringement the owner can sue within his own jurisdiction irrespective of where the infringement action may have occurred. From, time to time, Court made laws have brought in changes in the practice which made finer interpretation of provisions resulting in hindrances in the choice of appropriate Courts where the right holder has access in accordance with law. For example, the right holder has places of business in five cities in India and has the right to sue in any of the five Courts in the five cities against the infringement of its registered trademark but Courts have held that the choice of forum in such cases would be confined to the Courts within the defendant has his place of business. This is to make sure that the plaintiff does not make wrongful use of its presence in multiple places to cause inconvenience to the defendant.
• With the increase in awareness the number of cases are growing and the Courts are getting greater and more frequent opportunities to deal with IPR cases and gather greater knowledge and experience. That is helping the enforcement laws getting streamlined and uniform in application. However, considering the vastness of the country and number of Courts in India exceeding 600 it is difficult have uniformity of approaches. In India most of the states have one High Court and some additional benches in different cities in the same States. India has about 24 High Courts each of which have appellate jurisdiction over about 30 District Courts, each, on an average.
• While the above is the status with regard to civil cases, the criminal laws also play a major role in trademark and copyright counterfeit actions.In India criminal law has no application in case of Patent and Designs. In litigations, investigation has a major role to play because the litigation strategies can be accurately formulated only with information on the defendants/counterfeiters and several successful litigations have been possible as a result of prior information on the details of the infringement and the infringers.

• For obtaining registration in India it generally takes approximately 8-10 months from the date of filing application in a straight forward case (where there are no objections by the Trade Marks Registry nor any opposition filed thereto). This would however depend entirely on the facts of the case. Where there are objections/oppositions time lines would vary on a case to case basis.

• The Internet Corporation of Assigned Names and Numbers (ICANN) is a body which is responsible for managing the Internet Protocol address spaces and assignment of address blocks to regional Internet registries, for maintaining registries of Internet protocol identifiers, and for the management of the top-level domain name space.
• The ICANN mandates that all registrars must follow the Uniform Domain-Name Dispute-Resolution Policy (UDRP). Under this policy, most types of trademark-based domain-name disputes between the registrant and any party (other than the registrar) must be resolved by agreement, court action, or arbitration before a registrar who has the power tocancel, suspend, or transfer thedomain name in dispute. Disputes alleged to arise from abusive registrations of domain names may be addressed by expedited administrative proceedings that the holder of trademark rights initiates by filing a complaint with an approved dispute-resolution service provider. Most Generic Top Level Domains(com, info, net, org, biz, name, pro ) are within the purview of the UDRP. To invoke the policy, a trademark owner should either (a) file a complaint in a court of proper jurisdiction against the domain-name holder or (b) in cases of abusive registration submit a complaint to an approved dispute-resolution service provider.[https://www.icann.org/resources/pages/udrp-2012-02-25-en]
• The World Intellectual Property Organisation (WIPO), Arbitration and Mediation Center is one such dispute resolution center working under the WIPO-initiated, ICANN-mandated UDRP. A complainant may therefore choose to file a complaint based on such UDRP guidelines on the grounds including but not limited to bad faith registration, using aregistered trademark to register a deceptively similar domain name and that the registrant has no legitimate rights or interest in the impugned domain name. As a remedy, one can seek de-activation and cancellation of the impugned domain name vis-a-vis the name of the registrant and seek the transfer of the impugned domain name by way of registration in favour of the Complainant.

• The procedure for registration is as follows:
• The author, publisher, owner of any copyright or any person interested in the copyright in any work may make an application for registration to the Registrar of Copyrights on the prescribed from accompanied by the prescribed fees;
• Individual applications must be made for registration of each work;
• The application must be signed by the applicant himself.

• The design should be new and original
• The design should not have been previously published or used in any country before the date of application for registration
• The novelty of the design may reside in the application of a known shape or pattern
• The design should relate to features of shape, configuration, pattern or ornamentation applied or applicable to an article.
• The design should be applied or applicable to any article by any industrial process.
• The features of the design in the finished article must appeal to and judged by the eye.
• The design must be capable of being sold separately.
• The design should not comprise or contain any obscene or scandalous matter.

• In the Third Schedule of Designs (Amendment) Rules, 2008 the classification of goods has been mentioned. Classification is based on Locarno Agreement. Only one class number is to be mentioned in one particular application.
• The classification of goods is on the basis of articles. Articles are grouped into 32 classes and further divided into sub-classes. E.g. class 1- Foodstuffs, class 2- Articles of clothing and haberdashery class 3- Travel goods, cases, parasols and personal belongings etc.)

• For filing a design application, one would require to submit the following information/documents:
• Name, address and nationality of the applicant
• Front, back, top, bottom, left side, right side and perspective views of the design (Photographs are preferred by the Design Office. Clear line drawings of the various views can be filed in case the product is not yet manufactured)
• Name of the article and International class number, if possible
• Nature of the article and its purpose of use
• Particulars of priority application (where applicable)
• Certified copy of Priority Document (when priority claimed) along with its English translation. Priority document can be filed after the filing of application but within three months’ time from the date of filing application subject to payment of late filing fees
• Power of Attorney/General Power of Attorney signed by the applicant

• Judicial remedies
• A copyright owner can take civil action against any person who infringes the copyright in the work. The copyright owner is entitled to remedies by way of injunctions, damages and accounts. No court below that of the District Court has the jurisdiction in civil suits regarding copyright infringement.
• Any person who knowingly infringes or abets the infringement of the copyright in any work also commits a criminal offence under the Copyright Act and is punished for a term which shall not be less than six months but which may extend to three years and with fine which shall not be less than fifty thousand rupees and which may extend to two lakh rupees.
• Copyright infringement is a cognizable offence and any police officer, not below the rank of a sub inspector, may, upon his satisfaction that an offence involving infringement of copyright in any work is being or likely to be committed, seize without warrant, all copies of such work and all plates used for the purpose of making infringing copies of the work, wherever found. All such articles/goods/ which have been seized as soon as possible has to be produced before a magistrate. No court inferior to that of a Metropolitan Magistrate or a Judicial Magistrate of the first class shall try an offence under the Copyright Act.

• Ownership in a registered design can be transferred by means of assignment, transmission or operation of law. A person may also be entitled to a design as mortgagee, licensee or otherwise.
• The instrument of transfer must be in writing.
• The person entitled under the transfer must within 6 months from the execution of instrument make an application for registration of his title.

• Pre-filing Search
• It is strongly recommended that a trade mark availability search is done prior to filing of any trade mark application(s).
• Requisites:
• Description or copy of the mark;
• Full name, nationality and registered office address of the applicant;
• List of goods/services according to International classification(Nice Classification current edition). One can file a multi class trade mark application;
• Date of first commercial use of the mark in India, if any. It is possible to file a trademark application with “intent to use basis”;
• Power of Attorney.

Once a Trade Mark application is notified in the Trade MarksJournal, a trade mark application may be opposed within four months from the date of such publication by any person. In case a trade mark application is opposed, the opposition proceedings would take place, after which, the mark would either be allowed or rejected by the Registrar of Trade Marks based upon the merits of the case.An appeal may be filed against the decision of the Registrar before the Appellate Board. If no opposition is filed within such four-monthperiod, the trade mark application would proceed to registration.

• India is a ‘first to use’ jurisdiction rather a ‘first to file’ jurisdiction, which means that the prior user of a trade mark has a better proprietary right than a prior registrant.User date of a trade mark refers to the date from which a trade mark is put to commercial use in any form in the market. Mere advertisement and test marketing does not amount to use of trade mark in commerce. It is extremely essential to put in the user date of a trade mark while applying for registration before the Trade Marks Registry which has already been put to use. Such user date may need to be substantiated with relevant documents at the time of prosecution of the trade mark application. A trade mark may be applied as “proposed to used” mark where the mark has not been put to use.

The owner of the copyright in any existing work or the prospective owner of copyright in any future work may assign to any person the copyright either wholly or partially and either generally or subject to limitations and either for the whole term of the copyright or any part thereof.

Geographical Indication is a public property belonging exclusively to the producers of the concerned goods and hence geographical indication cannot be assigned, transmitted, licensed, pledged, mortgaged or any other such agreement can arise from a registered Geographical Indication.

• A request for expedited examination of atrade mark application may be filed in the prescribed form on payment of the prescribed fees along with a statement comprising cogent reasons for filing such request. However, once such examination report is issued the application follows the normal time lines and no special priority is accorded to such application.

• Though, acquisition of copyright is automatic and does not require any formal registration, obtaining a registration of a copyright serves as prima facie proof of ownership of such copyright in cases of disputes relating to ownership of copyright.

• Both trade marks and geographical indications indicate the source of goods. However, geographical indications indicate goods having a common geographical origin and qualities which are specifically attributable to such geographical origin, whereas, a trade mark indicates the goods of one trader from those of another. A Geographical Indication is an indication of a place and all producers of such geographical region are entitled to use the geographical indication, on complying with certain standards. A trade mark is an indication of a particular traderwho has the exclusive right to use such trade mark.

• Appellate Board or the Registrar of Geographical Indications has the power to remove the geographical indication or an authorized user from the register suo moto or on an application made by an aggrieved person.

• Use of a registered design or its obvious imitation belonging to the same class in which the design has been registered, without the consent/ permission of the registered proprietor, for purpose of sale or importation or publishing such articles or exposing them for sale with the knowledge of illegal use of design amounts to piracy of registered design.
• A suit for infringement, injunction and recovery of damages etc. can be instituted by the registered proprietor of design in any court not below the court of District Judge. Any person infringing the copyright of design is liable to pay to registered proprietor of design for every instance of infringement a sum not exceeding Rs.25,000/- subject to a maximum of Rs.50,000/- for any one design recoverable as a contract debt.There is no criminal remedy however under Designs Act.

• The Copyright Act, 1957 protects the right of authors in the following classes:
• Literary work including computer programmes
• Dramatic work
• Musical work
• Artistic work
• Cinematograph films
• Sound recordings
• It is important to note that computer programmes are protected under the Copyright Act and are treated as literary works. In addition to the rights applicable to a literary work, owner of the copyright in a computer programme enjoys rights to sell or give on hire or offer for sale or hire, regardless of whether such a copy has been sold or given on hire on earlier occasion.
• Unlike patents, copyright protects the expressions and not the idea per se. There can be no copyright on an idea or a concept. It is also important to remember that copyright does not ordinarily protect titles or names, short word combinations, slogans, short phrases, methods, plots or any factual information. To get the protection of copyright a work must be original.

• It grants legal protection to GIs in India;
• Registering GI’s prevents unwarranted use and dilution of a Registered Geographical Indication by others;
• Registering a GI provides legal protection/security to the consumers and also protects the interest of the producers.
• Registering Geographical Indications helps in enhancing exports;
• Registering GI’s encourages producers of goods in that particular geographical territory

• After filing the application, the Design office takes around 2-3 months’ time to send Examination Report. The time limit however to respond to such official action is within threemonths’ time from the date of official communication failing which the applicant shall be deemed to have withdrawn his application. After complying with the examiner’s requirement, the Design Office generally issues registration certificate within 4-5 months’ time. Ordinarily, an application for registration of a design should be disposed off within 6 months from the date of application and in any case where the procedure has not been completed within such period due to any neglect or default of the Applicant, the application shall be deemed to be abandoned.

• An “article” means any article of manufacture and any substance, artificial, or partly artificial and partly natural; and includes any part of an article capable of being made and sold separately;

The duration of the registration of a design is initially 10years from the date of registration. Where priority is claimed and has been allowed the duration is 10 years from the priority date. Period of registration may be extended by further period of 5 years. The registered design holder may make application for such extension as soon as the design is registered.

• After a design is registered, relevant view(s) of the article alongwith other information is made available in the official gazette, which is published on every Saturday.

• Copyright protection is afforded for a limited period of time and generally lasts for 60 years. For original literary, dramatic, musical and artistic works the 60-year period is considered from the year following the death of the author. For cinematograph films, sound recordings, photographs, posthumous publications, anonymous and pseudonymous publications, works of government and works of international organizations, the 60-year period is considered from the year following the year in which it was first published.

• Registration of Geographical Indication is for a period of ten years but may be renewed from time to time onpayment of adequate fees. In the event a Geographical Indication is not renewed it is likely to be removed from the register.

• Initially a trademark is registered for 10 years and it has to be renewed every 10 years upon the payment of the renewal fee within the date of validity. A trademark can last perpetually.
• However, if one fails to pay the renewal fee within such date of validity the Registry may restore the trade mark subject to payment of additional fee/surcharge within a period of 1 year from the end of the date of validity. Failure to pay the renewal fee on time will lead to removal of the trade mark from the register of trade marks.

The owner of a registered trade mark can take civil action against any person who infringes the trademark by way of filing an infringement law suit. An infringement suit for statutory remedies can be filed only on the basis on a registered trade mark. A passing off suit against third parties may, however, be filed by the owner of a registered or an unregistered trade mark underthe common law rights. The trademark owner is entitled to remedies by way of injunctions, damages and accounts. No court below that of the District Court has the jurisdiction in civil suits regarding trademark infringement.

• Any person claiming to be the producer of the goods in respect of which a geographical indication has been registered, may be an authorized user. Any person desirous of becoming an authorized user of a geographical indication has to apply to the Registrar in the prescribed manner on payment of the requisite fee.

• Ordinarily the author is the first owner of copyright in a work.
• In the case of a literary or dramatic work the author, i.e., the person who creates the work.
• In the case of a musical work, the composer.
• In the case of a cinematograph film, the producer.
• In the case of a sound recording, the producer.
• In the case of a photograph, the photographer.
• In the case of a computer generated work, the person who causes the work to be created.
• In case of any work created or produced in the course of the author’s employment under a contract of service, the employer shall, in the absence of any agreement to the contrary, be the first owner of the copyright there in

• Any association of persons/producers/organization/authority who are representing the interest of the producers of the concerned goods or products can apply in writing to the Registrar for the registration of the geographical indication in the prescribed format.

• Though registration of a geographical indication is not compulsory, registration affords better legal protection and allows the registered proprietor or any authorized user to initiate infringement actions.