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Intellectual Property FAQ’s

BananaIP Counsels > Intellectual Property FAQ’s

Intellectual Property FAQ’s

 

Patents

A patent protects inventions that are novel, inventive and capable of being used in the industry (utility). It grants an exclusive right to prevent others from making, using, selling, offering for sale or importing an invention in the country in which the patent is applied for. For example, if a patent is applied for in India the applicant will have the exclusive right to make, use, sell, offer for sale and import the invention in India.

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.

Category: Patents

The Indian Patent Office (http://www.ipindia.nic.in/patents.htm) headed by Controller General of Patents, Designs, and Trade Marks is the patent granting authority in India. The office has been established under the Ministry of Commerce and Industry, Department of Industrial Policy and Promotion. nnThere 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. The territorial jurisdiction of each of the patent office is provided below, and the same can be found at http://www.ipindia.nic.in/jurisdiction-of-patent-offices.htm nnTerritorial Jurisdiction nnMumbai nThe States of Maharashtra, Gujarat, Madhya Pradesh, Goa and Chhattisgarh and the Union Territories of Daman and Diu & Dadra and Nagar Haveli nnChennai nThe States of Andhra Pradesh, Karnataka, Kerala, Tamil Nadu and the Union Territories of Pondicherry and Lakshadweep nnNew Delhi nThe States of Haryana, Himachal Pradesh, Jammu and Kashmir, Punjab, Rajasthan, Uttar Pradesh, Uttaranchal, Delhi and the Union Territory of Chandigarh nnKolkata nThe rest of India n

Category: Patents

An application for a patent may be filed in India by any of the following persons nn1. True and first inventor of the invention;n2. Assignee of the true and first inventor, which in most cases is the employer of the person; orn3. Legal representative of any deceased person who immediately before his death was entitled to make such an application.nnA 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. n

Category: Patents

A patent application in India can be filed at any of the four branches of the patent office located in New Delhi, Kolkata, Mumbai and Chennai. The appropriate office for an applicant to file a patent application would depend on:nn1. Where the applicant resides or has his domicile or has a place of business or n2. The place from where the invention actually originated.nnIn 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. nnPlease follow the link to the Indian patent office website to know the territorial jurisdiction of the four patent offices.nhttp://www.ipindia.nic.in/jurisdiction-of-patent-offices.htm n

Category: Patents

Any person who is a Patent Agent registered with the Indian Patent Office can help an individual or an organization in filing a patent application. As per the Indian patent act, only a patent agent registered with the Indian Patent Office is entitled to practice before the Controller, prepare all documents, transact all business and discharge any function as may be required in connection with any proceeding before the Controller which starts from the filing of the patent application and may end with the expiry of the patent.

Category: Patents

A patent agent is a person authorized to interact with the patent office on behalf of his client. He can file a patent application, prosecute the patent application and appear before the patent office or appellate board on behalf of his client. In India, only a person having a science, technology or an engineering degree can become a patent agent. In order to be registered as a patent agent, a person must clear the patent agent exam conducted by the patent office. Foreign citizens are not eligible to register as patent agents in India.

Category: Patents

A patent agent is a person who has cleared the patent agent exam conducted by the Indian patent office and has been registered with the Indian Patent Office as a patent agent. A patent agent can draft patent applications, file for patents and appear in proceedings before the Indian patent office, on behalf of a patent applicant.nA 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.n

Category: Patents

You do not have to file a patent application through a patent agent. A patent application may be filed by the inventor or applicant directly. However, it is advisable to go through a patent agent, who is well advised about the procedures and has experience with prosecuting patent applications.

Category: Patents

An Indian patent agent is a person who has a good understanding of the Indian Patent Act and Rules. His knowledge can help in determining the potential of a patent grant for an invention. Additionally, an Indian Patent Agent has the necessary qualification to represent your invention before the Indian Patent Office. A patent agent can draft a patent specification for your invention in conformance with the Indian Patent Act and can also file a patent application for your invention. Post filing, he can also prosecute the patent application by responding to examination reports issued by the patent office and attend hearings in the patent office, if required. Furthermore, he will address various statutory requirement set forth by the Indian Patent Office.

Category: Patents

Patent FilingnnThe 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:nn• True and first inventor of the invention;n• Assignee; orn• Legal representative of the inventor or assignee.nnAn 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.nPublication of a patent application in IndianOnce 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. 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. nnIt 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:nn• Non filing of the complete specification within 12 months from the date of filing the provisional specification. n• Issuance of secrecy direction, orn• Withdrawal of application by the applicant.nnExamination of a patent applicationnAn 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 6 (six) 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. nnGrant of a patent in IndiannOnce 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. nAnother point to note is that the patent rights which start from the date of publication are now enforceable.nnPatent TermnnAny 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. n

Category: Patents

An invention disclosure form enables a patent drafter/searcher to understand the invention, on hand. The Invention Disclosure form is filled by the inventor and should include as much detail as possible and should highlight the novel points of the invention.

Category: Patents

Patent drafting is a process of preparing a document that can be filed in a patent office. The document is a techno-legal description of the invention. The description in the document will be in compliance with the patent law of a particular country in which it is filed. The depth of the description in the document will be such that a person, who has sufficient knowledge in the field to which the invention relates, will be able to practice the invention without undue experimentation.

Category: Patents

A patent expert is needed for patent drafting because efficient patent drafting requires in depth understanding of both technical domain and legal principles. Generally an inventor may be well versed with the technology but may not understand the legal principles very well. It is advisable to take help of patent agents who specialize in that area of technology to which the invention belongs.

Category: Patents

The best person to draft a patent would be a person who has a blend of technical and legal knowledge. The technical knowledge enables him to understand the invention, while his legal knowledge enables him to draft the patent, keeping in mind the current legal framework.

Category: Patents

A Provisional patent application is generally filed when the invention has been conceived but more work needs to be done on the invention to perfect it. This is also known as ‘idea patenting’. Once a provisional application is filed, the applicant has a time period of 12 months to perfect his/her invention and file the complete application.

Category: Patents

A complete specification is filed when the invention has taken the final shape and is ready to be filed in a complete manner. A complete application will contain claims which define the scope of your invention.

Category: Patents

A patent application must contain the following forms:nnForm 1 – Application for grant of a patentnForm 2 – Specification (Provisional / complete) along with DrawingsnForm 3 – Statement and Undertaking regarding foreign applicationsnForm 5 – Declaration of inventorship nForm 26 – Authorization of patent agent or any other person. This is submitted in case a patent application is being filed through a patent agent. n

Category: Patents

Generally, a patent application gets published after 18 months from the priority date of the patent application. However, if an applicant wishes to get the application published before 18 months, he may get the application published earlier by filing a request in the patent office for early publication. The rights of a patentee start from the date of publication of the patent application. Hence, some applicants get the patent application published early.

Category: Patents

Patent examination is an activity carried out at the patent office. Subsequent to filing, a patent application and a request for examining the patent application, the patent office carries out patent examination. Patent examination is carried out by a patent examiner, and generally, the patent examiner will have necessary qualification/experience in the technology to which the invention relates. During patent examination, the examiner determines whether the invention fulfils the criteria that are set forth for an invention to be patentable. Some of the criteria being, novelty, inventive step, industrial application and acceptable subject matter, among others. Based on the examination, the patent office issues an examination report. During patent examination, depending on the actions taken by, the applicant of the patent and the patent office, several examination reports may be issued.

Category: Patents

The time taken to grant a patent application usually depends on the country in which the patent application is filed. While some countries grant an application is 2-3 years, some others take nearly as long as 10-12 years. nnThe average time for obtaining a patent in India is around 7-8 years.n

Category: Patents

The Indian patent office has provided an option to expedite the grant of a patent application by expediting the examination of the application.

Category: Patents

Request for Expedited Examination of a patent application is a commendable initiative introduced by the Indian patent office to reduce the time taken to examine patent applications. nnRequest for Expedited Examination may be filed by an applicant who:nn1. Is a start-up;nn2. Was a start-up at the time of filing the patent application;nn3. Has chosen India as an International Searching Authority (ISA) or as an International Preliminary Examining Authority (IPEA) in a corresponding PCT application.nnStart-ups can benefit greatly if they choose to file an expedited examination request rather than an ordinary request for examination. The biggest advantage of requesting for an expedited examination is that the applications for which expedited examination is requested are allotted to a queue that is different from the ordinary examination queue, which already has lakhs of applications awaiting examination.n

Category: Patents

To keep a patent in force, a renewal fee has to be paid by the patent holder after the grant of the patent for every year following the second year of the patent, until the patent term ends. The payment can be made by the patent holder himself or by hiring the services of an IP firm or a patent agent.

Category: Patents

The cost for obtaining a patent in India may range from anywhere between a few thousands to lakhs. The fee differs greatly depending on the type of the applicant. For instance, individuals and startups are offered a huge discount of over 90% and small and medium scale enterprises are offered a discount of around 50% of the maximum fees.

Category: Patents

Depending on if the patented subject matter is a product or a process, the patent holder gets certain exclusive rights. If the patented subject matter is a product the patent holder gets exclusive rights to prevent third parties from the act of making, using, offering for sale, selling or importing the product to India. Similarly, if the patented subject matter is a process the patent holder gets exclusive rights to prevent third parties from the act of using that process, and from the act of using, offering for sale, selling or importing, to India, the product obtained directly by that process in India.

Category: Patents

There are six different types of patent applications, these are:nn1. Ordinary Application: An application for patent filed in the Patent Office without claiming any priority either in a convention country or without any reference to any other earlier application under process in the office is known as an ordinary application.nn2. Convention Application: An application which claims the priority of another application filed in one or more of the convention countries in known as a convention application. Whenever an application is filed in a convention country (basic application), the applicant has to file in India within 12 months from the date of filing of basic application. If applications are filed in two or more countries then the applicant has to file in India within 12 months from the date of filing of earliest application.nn3. PCT Application: The Patent Cooperation Treaty assists applicants in seeking patent protection internationally for their inventions. By filing one international patent application under the PCT, applicants can simultaneously seek protection for an invention in 148 countries throughout the world. nnPCT application does not provide for the grant of an international patent, it simply provides a streamlined process for the patent application process in many countries at the same time. Applicant can enter into various countries within 30/31 months from the date of filing of PCT application.nn4. PCT National Phase Application: When a PCT application is filed in any or all of the PCT member states at the end of 30 or 31 months from the priority date or International Application date, whichever is earlier, the application so filed is known as a PCT national phase application.nn5. Patent of Addition: When an applicant comes up with an improvement or modification of the invention described or disclosed in main application for which he has already applied for or has obtained a patent, the applicant may make an application for Patent of Addition.nn6. Divisional Application: When an application made by applicant claims more than one invention, the applicant on his own or to meet the official objection may divide the application and file two or more applications, as applicable for each of the inventions. This type of application, divided out of the parent one, is called a Divisional Application.n

Category: Patents

Yes, but no person or company having a place of residence in India can file a patent application outside of India unless he /she has secured a Foreign Filing Permit / permission from the Indian patent office to do so or has filed a patent application in India and six weeks have passed since the application was filed in India.

Category: Patents

A patents search is not mandatory, however performing a patent search before filing a patent application will normally uncover certain granted patents/publications which belong to the same technological field as that of the invention. Conducting a patent search before proceeding to file an application for patent has many advantages some of which are identified below. nn• Patent search provides the inventor(s)/applicant with necessary information as to the strength of the invention against the currently used/existing art;n• 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;n• Patent search may provide necessary information to refine the claims at a later stage;n• 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; andn• 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.nnConsidering 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.n

Category: Patents

There are a lot of resources available online for performing a patent search. Some of these resources are free and belong to the respective patent offices. Some of the resources are listed below:nnhttp://www.uspto.govnhttp://ep.espacenet.com/ nhttp://www.wipo.int/pctdb/en/ nhttp://ipindiaservices.gov.in/publicsearch nnThere are independent resources available like:nnGoogle PatentsnFree Patents OnlinennFurther, 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.n

Category: Patents

Yes. Indian Patents and Published applications maybe searched on the Indian Patent office database which is available online. In addition to the online database, a physical search of these documents is also possible and is open to public at the patent office. nnThe 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).nnThe 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;nn1. Identification of relevant classes (IPC or EP classes).n2. Searching of database for patents in those identified classes. nnThe 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. n

Category: Patents

Patentability analysis or patentability opinion is a two-fold process. First step involves searching for prior art that consists of at least one element present in the claims of the invention for which the patentability analysis is being conducted. Once such a search is conducted the second step is to analyzed the shortlisted prior art references to identify whether the invention being analyzed is patentable or not. A patentability analysis requires both technical and legal expertise. Technical expertise is essential in order to understand the invention and pick the right prior art while legal expertise is required in order to understand the scope of each prior art document and analyze the patentability of the invention.

Category: Patents

A patent search for an invention can be performed by any person who has a fair knowledge of the technology to which the invention relates. However, the accuracy of the search may not be as good as the accuracy with which a patent professional might carry out a patent search. nnA 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. nnIn 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. nSubsequent 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. nnThe 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).nn

Category: Patents

Each patent office across the world provides a patent database which is generally searchable online and is free for anyone to use for performing patent searches.nnThe major patent databases provided by some major patent offices for performing patent searches are provided below:nn• http://www.uspto.govn• http://ep.espacenet.com/n• http://www.wipo.int/pctdb/en/n• http://ipindiaservices.gov.in/publicsearch nnIn 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:nn• Google Patentsn• Free Patents Onlinen• Free Patent Search sponsored by Delphionn• Patents.comn• Big Patents India n

Category: Patents

A patent invalidity search is a search conducted to invalidate claim(s) of an issued patent by uncovering appropriate prior art. Generally, the invalidity search will be of interest to a company/organization which is alleged to have infringed a patent. Although, each claim of a patent is presumed to be valid when granted, it is possible that the Patent Office may have allowed claims in error by overlooking the best prior art at least because of the limited time and resources allotted to a patent Examiner for conducting prior art searches. In such instances, the invalidity search conducted for the patent in question will/should uncover better prior art than the prior art of record uncovered earlier by the patent examiner.

Category: Patents

A Freedom to operate (FTO) search enables a company/individual to analyze if his product/process is infringing on in-force patents/patent applications, belonging to a third party. The FTO search is jurisdiction specific, for example, if a company wants to release a product in India, the FTO search done will look for patents/patent applications in India. An FTO Search is a search among the claims of in-force patents/patent applications for specific elements/steps of a product/process. A comparison is done between elements/steps of a product/process and individual claims of identified in-force patents/patent applications to determine the freedom to operate.

Category: Patents

If freedom to operate exists for a product, it doesn’t necessarily mean that the product is patentable as well. nnIn 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.nnFurther, 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. nSome of the scenarios under which freedom to operate for a product might exist are listed below: nn• 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.n• 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.n• 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.n• 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. n• 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 fulfils patentability requirements). n

Category: Patents

The criteria for the patentability of a product/process are that the product/process should be subject matter, useful, novel, non-obvious and enabled. An invention will be patentable only if it passes the aforesaid criteria. If a product/process is patentable, then it may NOT necessarily have freedom to operate within a particular jurisdiction because the criteria for assessing infringement for ascertaining freedom to operate is based on different principles when compared to patentability. Infringement is assessed based on whether a product/process falls within the scope of a patent in force.nnA product/process may be patentable and still infringing if it falls within the scope of patent claims of another patent that is in force.nnFor 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.n

Category: Patents

Infringement is an act of making, using, selling, offering for sale or importing the invention which is called for in the claims of the patent by an unauthorized person. Generally, a claim of the patent is said to be LITERALLY infringed if every element of the claim is found in the accused device. Further, if a claim of the patent is NOT literally infringed but the accused device performs substantially the same function in substantially the same way to obtain the same result as that of the patented device, the claim is said to be infringed under DOCTRINE OF EQUIVALENCE.

Category: Patents

Infringement analysis is conducted in order to determine whether a product or a process infringes upon an existing patent claim. In order to conduct an infringement analysis firstly the scope of the claim should be determined and then it should be checked whether all elements of the claim are present in the product or process. Infringement analysis must be done before launching a product or process in a particular Country. It may also be done for litigation proceedings.

Category: Patents

In a patent infringement law suit the party being sued for infringement may take certain defenses to avoid being penalized by the Courts. The first line of defense is to claim that the activity of the respondent does not violate the patent rights of the complainant. This may be achieved by proper construction of the claims of the complainant’s patent and proving that the respondent’s activity is not covered under the claims scope. The next defense that a respondent can raise is by counterclaiming that the patent is invalid due to existing prior art. For this purpose relevant prior art may be cited to indicate that a patent should not have been granted to the complainant in the first place. In addition to the two aforementioned defenses the respondent may claim inequitable conduct on part of the complainant. Inequitable conduct, once proved, results in invalidation of the patent itself.nOther defenses include research exemptions, government use, parallel importation and so on.n

Category: Patents

After an application for a patent has been filed by the applicant with the patent office, the patent office allocates the application to a patent examiner for examining the patent application. Initially, the patent examiner examines the patent application for its compliance with the formal requirements. Thereafter, the examiner further determines as to whether the claims made by the applicant in his/her invention falls under patentable subject matter as set forth in the Patent Act of that particular country where the Applicant has filed for a patent. nnFurther, 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.n

Category: Patents

During the prosecution of the patent application the examiner, more often than not, rejects the claims based on prior arts. In response to such a rejection, applicant may rebut/traverse the examiner’s rejection by setting forth certain arguments providing reasons as to why the claimed invention is patentable over the prior art and why the rejection should be withdrawn. Further, the applicant, in addition to the arguments, may make amendments to the claims in order to better define the claimed invention. nnThe above process of rejection of claims by the examiner and a response to the rejection by the applicant in the form of amendments 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. n

Category: Patents

The information obtained from the prosecution history of a patent application acts as an extremely important factor for determining the scope of claims. It has been observed over the past few years, by the patent community across the world, that if claim amendment is made to overcome the examiner’s rejections and the amendment is in the form of deleting certain features, the applicant is precluded from obtaining rights to those features or equivalents of each of those features at a later stage.

Category: Patents

Patent opposition is either a pre grant opposition or a post grant opposition. In other words, an opposition for a patent can be filed either before the grant of a patent or after the grant of a patent. A pre grant opposition can be filed by any person, by way of a written representation. However, a post grant opposition maybe filed only by any person interested, by giving a notice of opposition to the controller general of patents in the prescribed manner. The ‘person interested’ includes a person engaged in, or in promoting, research in the same field as that to which the invention relates.

Category: Patents

Patent opposition is either a pre grant opposition or a post grant opposition. In other words, an opposition for a patent can be filed either before the grant of a patent or after the grant of a patent. A pre grant opposition can be filed by any person, by way of a written representation. However, a post grant opposition maybe filed only by any person interested, by giving a notice of opposition to the controller general of patents in the prescribed manner. The ‘person interested’ includes a person engaged in, or in promoting, research in the same field as that to which the invention relates.

Category: Patents

A pre-grant opposition may be filed any time after a patent application has been published but before a patent is granted for the said application.

Category: Patents

Under the Indian Patents Act, any interested person can file a post grant opposition for a granted patent, within one year from the date of publication of grant of the patent.

Category: Patents

As the name suggests, a patent watch is a look out for patent applications and granted patents in the area of interest. Patent watch may be limited to a particular field of technology or a particular applicant.

Category: Patents

The Patent Cooperation Treaty (PCT) assists applicants in seeking patent protection internationally for their inventions, helps patent Offices with their patent granting decisions, and facilitates public access to a wealth of technical information relating to those inventions. By filing one international patent application under the PCT, applicants can simultaneously seek protection for an invention in a very large number of countries.

Category: Patents

An Indian citizen can file a PCT application with the Indian Patent Office as the receiving office or with the International Bureau at Geneva directly. However, if the PCT application does not claim priority from an existing provisional/complete Indian patent application filed at least six weeks before filing the PCT application, then a Foreign Filing Permit (FFP) needs to be obtained from the Indian Patent Office.

Category: Patents

The advantages of going through the PCT route arenn• The patent applicant has more time to decide the countries where he wants to file (30/31 months as opposed to 12 months, if he is filing directly in each of the countries); n• The patent applicant gets a comprehensive search report, which can serve as a guide as to the patentability of the invention; andn• The application can be fine tuned and modified to enable patentability during the examination phase.nnFiling a PCT application also provides cost and effort benefits with respect to filing an application in multiple countries. The PCT route is advised for clients, who are as yet unsure of their target countries. The PCT route is also advised for clients, who want to file the same patent application in more than three countries. n

Category: Patents

By filing a PCT application, one may opt for getting protection for his/her invention in 152 countries which are known as PCT contracting states. The list of PCT contracting states are provided in the following link – http://www.wipo.int/pct/en/pct_contracting_states.htmln

Category: Patents

Trademark

A trade mark is a representation used in trade or business. It protects the association between the mark and the business and the good will linked with it. It can be a word, symbol, color, sound, smell and so on.

Category: Trademark

A trade mark application may be filed by the applicant directly or through a trade mark agent. There are two ways to file a trademark application:

  1. Paper filing and
  2. Online filing.

Document/ Information require for filing trademark application:-

  • Trademark name (logo/Device/word /symbol)
  • Applicant’s name, nationality, address and
  • 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 use, 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/-.
Category: Trademark

Trade mark is an intellectual property, which provides the exclusive right to use the name, mark, symbol, logo, image or combination of these elements which are used as the brands / names under which goods and services of a merchant/trader are sold. It protects the unauthorized copy or use of a similar mark by any person for the same category of business. It provides the right to prosecute any person who infringes the brand name or identification mark. Even an unregistered trademark provides protection in form of a passing off action..

A trade mark 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.

Category: Trademark

The symbol ® signifies that the trade mark is a registered trade mark. The symbol ™ signifies that the word or logo is used as a trade mark. It may not be a registered mark. When a mark is used as a trademark, ™ symbol may be used along with the mark. Once the trade mark is registered, the ® symbol is generally used along with the mark.

Category: Trademark

A person may use a trade mark for his goods or services irrespective of trade mark filing or registration. Use of a trade mark for a certain period of time will enable the person to show acquired distinctiveness that will help in registration of the trade mark. If the trade mark is filed as a proposed to use mark, it must be used within a period of about five years.

Category: Trademark

A trademark clearance search is the search in the database of Indian Trademark Registry for existing marks (Registered or applied). If a trader wish to use any mark as his trademark, then this search will help him in ascertaining whether any same or similar mark already exists or not. Accordingly the trader can strategize whether he should go ahead with that mark or not or whether he should file a word mark or a logo mark.

Category: Trademark

A Trademark agent is a person who can act on behalf of the applicant of a trademark in all proceedings before the trademark registry except signing in an affidavit. A person having a basic degree in any field can become a trade mark agent by passing the qualification exam. A legal practitioner can register directly with the trade mark office as a trade mark attorney. A Trade Mark agent or attorney can represent his clients before the trade mark office.

Category: Trademark

It is important to choose the best trade mark attorney or agent to ensure that your trade mark protection is strong. A good trade mark agent or attorney must have the following qualifications:

  • He must advise you on the best form of trade mark to bee filed;
  • He must strategize your trade mark 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 trade marks);
  • He must enable you to avoid trade mark opposition; and
  • He must advise on various options for trade mark filing in case of existence of conflicting marks.
Category: Trademark

Yes, as per trademark Act, a trademark can be granted over a color or combination of colors. However, such protection is possible only if the color does not describe the nature of the product. For example GREEN for eco-friendly products may not be registrable because of its descriptive nature but green for headphones would be protectable. For protecting a color, a written description of the color might be required by the trademark registry. Such description can be accompanied by the relevant code(s) from an internationally recognized color identification system.

Category: Trademark

Word mark is a mark, in which a word, combination of alphabets, numerals or combination of alphabets & numerals is used as trademark (example ‘SAMSUNG’ & I10). A logo mark is a mark which is a symbol, design or a graphical representation used along with the words and/or numerals. Logo marks are generally created in a specific font style.

A word mark gets stronger protection than a logo mark because it allows the owner of the mark to prevent third parties from using the word in any format. On the other hand, logo mark only enables the owner to prevent others from using an identical or similar logo.

Category: Trademark

Yes, sound can be protected as a trademark. The definition of trademark in India states that trademark is a mark that is capable of being represented graphically. As sound can be represented graphically, it is capable of being protected as a trademark. Some sounds have already been protected in India as trade marks.

Category: Trademark

A trade mark can either be a fanciful mark, arbitrary mark, suggestive mark, descriptive mark or generic mark. A fanciful mark gets the strongest form of protection and generic the weakest form of protection.

A fanciful mark is a coined mark and does not indicate or have any connection with the goods or services to which it is applied. For example Kodak for photographic supplies, where the mark used is fanciful in nature and makes no sense with regard to the product. This type of marks are totally unknown and completely out of common usage. They are considered as the strongest marks.

An arbitrary mark provides the second strongest form of protection. Arbitrary marks are existing words applied to totally unrelated goods or services. For example Apple for computers, camel for cigarette, where the marks signify something other than the products or services on which it is used.

The next type of marks is suggestive marks. They suggest the kind of goods or services to which the mark is applied after application of certain amount of thought. They are protectable marks but not as strong as fanciful or arbitrary marks. For example, yellow pages for telephone directories.

The next category of marks is descriptive marks. These marks describe the goods or services for which they are applied and do not get strong form of protection. For example, Coffee Shop, for a shop that sells coffee is descriptive because it describes the nature of business being carried out. Such marks can be registered only if they acquire secondary meaning through prior usage.

Generic Marks are marks that become synonymous to the goods or services for which they are applied due to extensive or wide usage. The marks are so widely used that the goods or products are referred by the marks. Such marks are not distinctive and therefore, get very weak protection. For example, Xerox for photocopying machines has become generic and has lost its distinctiveness.

A person must choose fanciful or arbitrary marks for getting strong trade mark protection. Efforts must be put on choosing before launching the mark to ensure that similar marks do not exist. The best approach to choosing a trade mark is to shortlist three or four marks and carry out a trade mark clearance search. After performing the search, a mark that has no identical or similar marks can be chosen for protection.

Category: Trademark

Once an application is filed for trademark registration, the next step is the issuance of examination Report by the Trademark registry. This examination report consists of objections raised by the Examiner against registration of the Mark. The applicant has to respond to this examination report by overcoming all procedural irregularities, , if there are any and by giving appropriate reasons for registrability of the mark. Thereafter, if the registry requires, the applicant either himself or through his agent can give a representation to the Registrar in the form of oral hearing.

Then if the mark is accepted for publication, it will be published in the journal of Trademark Registry. Once the mark is published, the same is open for opposition for a period of three (3) months with one (1) month grace period. If there is no opposition filed during the opposition period, the mark will proceed for Registration. However, the applicant cannot used a ® symbol unless they receive a registration certificate from the Registry.

Category: Trademark

Yes, the status of any trademark application can be checked online. The searcher needs to have the application number for knowing the latest status. The application number can be entered on the website’s trademark status check section at https://www.ipindiaonline.gov.in/eregister/eregister.aspx

Category: Trademark

Along with a trade mark application, the applicant must submit all documents necessary to prove the date of first use of the trademark. Such proof can be in the form of invoice, sales order, purchase order, advertisement, price list, agreement and so on. Submission of such evidence in advance will enable faster processing of the trade mark application.

Category: Trademark

Trademark examination report is a report of examination conducted by Trademark Office after examining the registrability of the application, which includes distinctiveness, existing similarity with prior registrations, and filing of supporting documents.

If a mark is accepted during examination, the trademark office will issue an acceptance order and the trade mark will be published in the journal. However, a trade mark is rarely accepted without objections. If registration of a trade mark is objected by the examiner in the examination report, applicant or his agent must respond to it within one month from the date of receiving the examination report. The response to an examination report must include:

An answer to the objections raised;

  • Relevant case laws or precedents of the trade mark office; and
  • Supporting documents to prove inherent or acquired distinctiveness.
Category: Trademark

After filing the application, every trademark is examined by the examiners appointed by the Trademark Registry. After examination, an examiner issues an examination report in which the objections, if any, are raised by the examiner. On receiving the Examination Report, the applicant has to submit his/her response based on the objections in the examination report. In case the objections are not met to the satisfaction of the trade mark office through the response, the applicant can avail an opportunity of hearing before the Trademark Registrar, where he/she can present submissions orally. The hearing is generally conducted by the assistant Registrar of Trade marks.

Category: Trademark

Trademarks are published in the trademark journal. These journals are published by the trademark registry twice every month i.e. on the first and sixteenth day of every month. Any application accepted after the examination of the registry is published in the journal. The journals can be accessed online at http://ipindia.nic.in

Category: Trademark

A trademark is said to be infringed if a person uses an identical or similar trademark for identical or similar goods or services and such usage is likely to cause confusion among the consumers. Only a registered trademark owner can initiate proceedings for trademark infringement in India.

Category: Trademark

Identifying conflicting and infringing trademarks or applications is called trademark watch. A trademark watch enables a trademark owner to prevent registration of identical or similar marks by a third party. It also enables him to enforce his trademarks effectively.

Category: Trademark

A person using a trademark will get the right to prevent others from using the trademark. However, if a trademark is not registered, the trademark owner cannot file an action for infringement. An unregistered mark will have only the right of passing off under common law. However to exercise this right, the trader has to establish the use of the mark by factual evidence that he has an established trademark which has reputation and goodwill.

Category: Trademark

For registration of the trademark, the trademark registry will look for the following:

  • Whether the applied trademark has any conflict with any existing registered trademark or pending trademark application? A registration will be granted only if the mark for which application has been filed does not have any conflict with existing trademarks or applications.
  • 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 acceptabilities of any society? trademark registration will not be granted if the mark is obscene or has an impact on religious sentiments of communities.
Category: Trademark

A Famous trademark is one that has established a strong connection, in the minds of the consumers, between a specific good or service and the source of that good or service. For example, the COCA-COLA and SONY brands have been determined to be famous marks by courts.

The owner of a famous trademark can prevent another person from using the same or similar mark for any goods or services. He will also have the right to prevent others from registering identical or similar marks for any goods or services.

Category: Trademark

Common sets of goods or services are classified into different classes under the trademark law. While filing for a trademark, an applicant must indicate the class or classes to which his/her trademark belongs. Registration of a trademark is granted in a specific class or set of classes identified by the applicant. The international system of classification followed across the world is called as NICE Classification.

In India, classes 1-34 deal with goods and classes 35-45 deal with services.

Category: Trademark

Anyone who is in the business of goods and services which may come under more than one class may register his/ her trademark under multiple classes. It must be noted that, a mark registered under one class may not get protection under other classes, for example a mark registered for electronic goods under class 9 cannot get protection under class 25 for textile goods. If the producer is in multiple kinds of businesses, then he must file for registration of the trademark in all classes that relate to his business.

Category: Trademark

A trademark can be protected perpetually by continuously renewing it. After the initial registration, the trademark protection extends to ten years. After the expiry of ten years, it can be renewed every 10 years by payment of the prescribed renewal fee. This process of renewal can be started 6 months prior to its expiry. In case the trademark is not renewed it will be removed from the register but can be restored if a request is made within one year from the date of expiry or the date of last renewal. However, the applicant is required to pay additional fee for such renewal.

Category: Trademark

Every registered trademark has to be renewed once in every ten years from the date of filing of trademark and the fee for the renewal is Rs. 5000. The proprietor (the owner of the trademark) must pay the renewal fees before expiry of the term of ten years but not before 6 months from the date of expiry. If the renewal is done after the expiry but within 6 months then the fee will be Rs. 8000. If the renewal is done after 6 months of expiry but within 1 year, then the fee will be Rs. 10,000.

Category: Trademark

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