Frequently Asked Questions & Answers
1. Paper filing
2. Online filing
Document/Information required for filing trademark application:-
• Trademark name (logo/device/word /symbol)
• Applicant's name, nationality, address
• Registered description of the applicant (individual/ partnership firm/ joint firm/ Hindu undivided family/ body incorporate/ society/ trust as the case may be)
• Trade description of the applicant – such as Manufacturer / Service Provider / Distributor or as the case may be
• Date of use of the trademark (if the trademark is proposed to be used, date of use is not required)
• Class of the trademark
• Description of goods or services
For filing an ordinary application other than conventional application in a single class the prescribed form is TM -1 and statutory fee is 3500/-."
A trademark protects the reputation of the business of the trader. It helps the trader to establish the connection between the mark and the quality/characteristics of goods or services associated with it.
• He must advise you on the best form of trademark to be filed;
• He must strategize your trademark filing in the broadest possible manner;
• He must have a strong background in IP (Masters in IP from a leading institute and/or experience of prosecuting numerous trademarks);
• He must enable you to avoid trademark opposition;
• He must advise on various options for trademark filing in case of existence of conflicting marks.
• Whether the applied trademark describes the kind, quality, use or geographical origin of the goods or services for which it is used? Registration will not be granted if the trademark describes the goods or services for which it is used.
• Whether the trademark has any distinctive character? A trademark will be accepted only if it has distinctive character.
• Whether the applied trademark is obscene, scandalous or affects the religious acceptability of any society? trademark registration will not be granted if the mark is obscene or has an impact on religious sentiments of communities."
Action points - Indicating and prioritizing the IP actions to be taken by the company. IP Audits may be performed at regular intervals to uncover IP and manage it effectively. IP Audits may also be carried out at the time of entering into transactions such as licenses, joint ventures, research collaborations and so on.
2. Review of IP policy and processes of the company in the light of its business goals; and
3. Recommended IP action points with appropriate prioritization.
1. It will help in uncovering IP capable of being protected by the company
2. It will ensure that all actions with respect to protected IP and applied IP are taken
3. It will help a company in re-defining the IP strategy based on business dynamics
4. It will help in making IP investment or licensing decisions
5. It will add value for managing IP portfolios effectively
6. It will help in making decisions on IP maintenance and so on.
Term and Termination
1. Freedom to re-distribute software
2. Availability of source code
3. Freedom to copy and modify
4. License travels with the software
5. No discrimination based on technology, field or hardware; and so on
1. Availability of source code during distribution;
2. Attribution and change notices;
3. License remains the same with respect to modified versions; and so on.
1. Risks from original developer
2. Risks from third parties
Risks from the original developer generally come into picture in case of non-compliance of open source license terms. If the license terms are appropriately complied, the risks from the original developer can be mitigated to a large extent.
Risks from a third party primarily arise out of violation of a third party's IP by the open source developer or by you as a modifier. Such risks can be mitigated through appropriate due diligence.
Plant Variety Protection
Filing of an application
Review and acceptance of the application by the Registrar
Advertisement of acceptance
Opposition of the registration if any
Registration of the variety
(i) defined by the expression of the characteristics resulting from a given genotype of that plant grouping,
(ii) distinguished from any other plant grouping by expression of at least one of the said characteristics, and
(iii) considered as a unit with regard to its suitability for being propagated, which remains unchanged after such propagation, and includes propagating material of such variety, extant variety, transgenic variety, farmers variety and essentially derived variety.
• Application for Grant of Patent
• Provisional/Complete Specification
• Statement and Undertaking Regarding Foreign Applications
• Declaration as to Inventorship
• Form for Authorization of a Patent Agent in case a patent agent is representing an applicant
The above process of rejection of claims by the examiner and a response to the rejection by the applicant in the form of amendment and arguments continues until the invention in the patent application is considered to be patent worthy by the patent office and a patent is granted. The afore-mentioned process of exchange of such information which is material for determining the patentability of the alleged invention creates a prosecution history for that application.
Further, a determination is made as to whether the alleged invention has been in the public domain before such filing of the application. In determining as to whether the alleged invention is worthy of a patent and whether the alleged invention is in fact in the public domain or not, there is an exchange of information between the patent examiner and the applicant. Such exchange of information is referred to as prosecution.
The defenses are research exemptions, government use, parallel importation and so on.
For example, consider a case of a product A with elements A, B, C and D and an in-force patent D1 covering a product B with elements A, B and D in one claim. Due to the presence of the extra element C in the product, the product would be novel and non-obvious in light of the cited prior art (here we are assuming that there are no other relevant prior art) references. But if the owner of the patent covering the product A practices the product in that particular jurisdiction, he would be infringing on D1 as all the elements of D1 are present in product A.
In order to understand the logic behind the answer, one has to be aware of the various scenarios under which freedom to operate for a product might exist.
Further, it must be noted that freedom to operate is jurisdiction specific, for example, freedom to operate for a product might exist in India and not in US.
Some of the scenarios under which freedom to operate for a product might exist are listed below:
• The product has been disclosed in an expired patent. In this case, freedom to operate for the product will exist; however, the product might not be patentable.
• The product has been claimed in an in-force patent in a certain jurisdiction (example: US) and no such relevant patents have been granted in another jurisdiction (example: India). In this case, freedom to operate will exist for the product in Indian and freedom to operate for the product will not exist in US. Further, in this case, the product will not be patentable.
• The product has been disclosed in a patent document, but not claimed in the patent. In this case, freedom to operate for the product will exist; however, the product might not be patentable.
• The product has been disclosed in a non-patent document. In this case, freedom to operate for the product will exist, however, the product might not be patentable.
• Element(s) of product has not been disclosed. In this case, freedom to operate for the product will exist, and the product might also be patentable (if it fulfills patentability requirements).
If your friend, or someone else, uploaded a video, image, or recording of you without your permission, and you feel it violates your privacy or safety,
patent can be understood as a contract between an inventor and the government where the government grants the exclusive rights to the inventor in exchange of a detailed explanation and disclosure of the invention. This serves a two fold purpose, viz. firstly, the exclusive rights ensure that people are motivated to come up with more and more inventions, and secondly, public good is achieved as the people can enjoy the benefits of the latest technology.
Today, patents have become a very important tool in achieving business advantage. If a company has a patent over an invention then there is a clear cut advantage as they can maintain exclusivity for a period of 20 years from the date of filing of the patent application. The more the number of patents in a company’s portfolio the stronger and more valuable the company is supposed to be. In addition to the number of patents, quality of patents also matters a lot. It is advisable to approach an experienced and quality patent firm/agent in order to seek help and guidance on drafting, filing and prosecuting patent applications.
There are four patent offices in India. The patent offices are located at Mumbai, Chennai, New Delhi and Kolkata. An applicant will have to pick an appropriate office for filing a patent application based on the territorial jurisdiction of the patent offices. Territorial jurisdiction of each of the patent offices is provided below, and the same can be found at http://ipindia.gov.in/ipr/patent/patents.htm
The States of Maharashtra, Gujarat, Madhya Pradesh, Goa and Chhattisgarh and the Union Territories of Daman and Diu & Dadra and Nagar Haveli
The States of Andhra Pradesh, Karnataka, Kerala, Tamil Nadu and the Union Territories of Pondicherry and Lakshadweep
The States of Haryana, Himachal Pradesh, Jammu and Kashmir, Punjab, Rajasthan, Uttar Pradesh, Uttaranchal, Delhi and the Union Territory of Chandigarh
The rest of India
1. True and first inventor of the invention;
2. Assignee of the true and first inventor, which in most cases is the employer of the person;; or
3. Legal representative of any deceased person who immediately before his death was entitled to make such an application.
A patent application by any person from another country may be filed if the country is a member of the Paris Convention or is among the list of convention countries under the Indian Patent Act.
1. Where the applicant resides or has his domicile or has a place of business or
2. The place from where the invention actually originated.
In case of an International applicant not having a domicile or residence in India, a patent application must be filed through a patent agent. The appropriate patent office in such a case would depend on the address of service provided by the applicant.
Please follow the link to the Indian patent office website to know the territorial jurisdiction of the four patent offices.
A patent attorney, on the other hand is a lawyer enrolled at one of the Bar Councils in India in addition to being a patent agent. This means that the patent attorney can not only carry out all the activities of a patent agent but he can also represent a party in a patent litigation in Courts.
The process of acquiring a patent in India starts with the filing of the patent application. An application for a patent can be filed by any person who is either the:
• True and first inventor of the invention;
• Assignee; or
• Legal representative of the inventor or assignee.
An application for a patent has to be filed at one of the four patent offices according to the jurisdiction of the applicant. The four patent offices are Kolkata Patent Office, Delhi Patent Office, Mumbai Patent Office and Chennai Patent Office.
Provisional and Complete Specification
An application for a grant of patent may be filed along with either a provisional or complete specification:
• Provisional Specification – A Provisional specification is generally filed then the invention has been conceived but more work needs to be done on the invention to perfect it.
• Complete Specification – A complete specification is filed when the invention has taken the final shape and is ready to be filed in a complete manner.
If provisional application is filed, the patent law provides the applicant a time of 12 months to perfect his/her invention and file the complete application.
Forms to be filed
In addition to the filing of the patent specification in Form 2, certain other details are required under the patent law which has to be provided along with the patent specification. These are:
Form 3 –Information and undertaking regarding foreign applications
Form 5 - Declaration as to inventorship by the applicant
Form 26 - Authorization of patent agent or any other person. (if filed through a patent agent).
Publication of a patent application in India
Once all the aforementioned details have been provided, the application will ordinarily be published within18 months in the official gazette. However, the same may be expedited if a request for early publication is requested by the patent applicant. Once published the application is available for public inspection and any person may file an opposition to its grant. The advantage of publication to the applicant is that the rights of the patent applicant start from publication, however, they are not enforceable till the patent receives grant.
It should also be noted that there are certain situations under which a patent may be prevented from being published in the gazette. These include situations such as:
• Non filing of the complete specification within 12 months from the date of filing the provisional specification.
• Issuance of secrecy direction, or
• Withdrawal of application by the applicant.
Examination of a patent application
An application for patent is examined only after a request for examination has been made by the applicant. Such request should be made within 48 months from the date of filing of the application or priority. Once the request for examination has been made, the application will be examined by the patent office to verify the correctness of all documents and also to verify the patentability of the invention. After performing the examination, the patent office generally issues an examination report which is known as the First Examination Report (FER). The patent act also mandates a time period of 12 months from the date of issuance of the FER to put the application in order for grant by complying with the objections raised by the patent office.
Grant of a patent in India
Once all the objections have been satisfied and the requisite fee has been paid, the application is granted. Once the patent is granted, it is again published in the official gazette. Any person interested in filing for opposition to the grant of patent can do so within one year period from the grant of the patent by way of a post grant opposition. The patent application may also be opposed before grant, through a pre-grant representation.
Another point to note is that the patent rights which start from the date of publication are now enforceable.
Any patent which is granted will be valid for a maximum term of 20 years from the date of filing or priority, whichever is earlier. However, to keep the patent active for the said 20 years, the patent should be renewed every year.
• Patent search provides the inventor(s)/applicant with necessary information as to the strength of the invention against the currently used/existing art;
• Patent search may guide or inspire the inventor to improve his/her invention based on the disclosure provided in the prior art uncovered during the search;
• Patent search may provide necessary information to refine the claims at a later stage;
• Patent search will save money, time and effort in drafting and filing a patent application if the search result indicates that the alleged invention is already in the public domain; and
• Patent search will allow identifying corporations (which could be potential licensees) that own patents in the same technology as that of the applicant’s invention.
Considering the advantages of performing a patent search, a search is advisable before making a decision on filing a patent application. Patent search may also be done at conception, R and D planning and other stages in order to enable decision making.
There are independent resources available like:
Free Patents Online
Further, there are also paid databases like Thomson, LexisNexis Total Patents, and questel orbit available, which cover multiple jurisdictions and provide a common interface for searching.
The patents are classified under various classes depending on the content. WIPO, USPTO and EPO have separate classification system under which the patents and patent applications are classified (each patent maybe included in more than one class).
The best way to perform a search would be to perform a keyword search followed by a classification search. Both keyword search and IPC class search is possible on the Indian patent office database. Different keywords maybe used to search for relevant results. The classification search is a more comprehensive search involving two steps;
1. Identification of relevant classes (IPC or EP classes).
2. Searching of database for patents in those identified classes.
The Indian patent office database can be used to search all Indian Patents and Indian patent applications. In addition to the Indian patent office database, Indian patents may also be searched on EPO’s online database (http://ep.espacenet.com/advancedSearch?locale=en_EP), or other free databases such as Big patent and paid databases such as Total patent by Lexis Nexis.
A patent search can be conducted using online databases. Relevant patent documents are mined from these databases using search queries. Hence, selecting an appropriate database(s) to carry out the search and formulating effective search queries are key aspects of a patent search activity.
The table below provides links to free online databases that can be used to carry out patent search:
Patent database Data coverage Help for searching
Further, the links provided in the second column of the table provide the extent to which data is covered by the corresponding database and the links provided in the third column provide help corresponding the search syntaxes and operators that are supported by the databases.
In light of the data coverage and the search query flexibility offered by each of the databases, an appropriate database to carry out patent search may be selected based on our requirement.
Subsequent to selecting a database, search queries have to be formulated to query the database and retrieve relevant documents. A search query can include key words that are relevant to the technology coupled with syntaxes and boolean operator that are supported by the database. Alternatively, either exclusively or in combination with the key words, patent classification ( http://www.wipo.int/classifications/ipc/en/ )that are relevant to the technology can be used to query the database.
The effectiveness of the patent search largely depends on the ability to, formulate appropriate keyword strings and identify relevant patent classifications, in addition to using patent databases that provided wide scope of coverage and flexibility in formulating search queries (most paid databases are comparatively better than free databases in the aforementioned aspects).
The major patent databases provided by the patent offices for performing patent searches are provided below:
In addition to the aforementioned patent databases provided by the Patent Offices, there are a few free third party patent databases which may be used for performing patent searches and are listed below:
• Google Patents
• Free Patents Online
• Free Patent Search sponsored by Delphion
• Big Patents India