Frequently Asked Questions

 

About Our Services

How experienced is YPT Team?

YPT is a Team of 125+ technology/industry experts who speak inventor`s language and having deep understanding of Indian and Global patent laws.

What benefits will I be getting partnering with YPT?

YPT utilizes its knowledge of both patent prosecution process and patent enforcement to draft applications that are enforceable (even 20 years from now) yet sail through the prosecution saving you lot of money.

What industry verticals have you served?

YPT has unique understanding of global and industry wide IP best practices as it has supported 1,000+ clients from 45+ countries in multiple technology areas ranging from complex subject matters in life sciences/engineering/ICT to simple household inventions.

How comfortable is YPT with Indian patent offices?

YPT has in-depth understanding of working style of each of the four patent offices in India and also of their staff members.

How accurate will be your approach?

YPT has a good network within Indian Patent Office for expedited and accurate information.

 

More about Patents in India

What types of industrial property rights exist in India?

India has patents, patents of addition, designs and trade marks. Applications for all of these can be filed with the Indian Patent Office.

What are patents of addition in India?

Patents of addition relate to improvements in or modifications to patented inventions. A patent of addition cannot be granted before the main patent is granted. If the main patent is revoked, the patentee may request the conversion of the patent of addition into an independent patent. Patents of addition have the same term as patents for the main invention.

How long is the term of protection of Indian patents?

The term of protection of an Indian patent is 20 years from the date of filing of the application, subject to the payment of annual fees. The 20-year term was introduced by the Patents (Amendment) Act 2002. It also applies to all granted patents whose term had not expired on 20 May 2003. Under the previous law the term was 14 years from the date of filing.

What inventions cannot be patented in India?

Chapter II, Section 3 of the Indian Patents Act stipulates what is not considered an invention under the law and is therefore not patentable in India:

  • inventions being frivolous or contrary to public order, morality, public health, the environment, etc.
  • scientific discoveries
  • mere discoveries of new forms of known substances
  • methods of agriculture or horticulture
  • diagnostic, therapeutic and surgical methods for the treatment of humans or animals
  • plants and animals other than micro-organisms
  • mathematical or business methods or computer programs per se or algorithms
  • literary, dramatic, musical or artistic work or any other aesthetic creation
  • schemes, rules or methods of performing mental acts or methods of playing games
  • presentations of information
  • topography of integrated circuits
  • traditional knowledge

Inventions relating to atomic energy are not patentable either.

Can computer software be patented in India?

Under Section 3(k) of the Indian Patents Act, computer programs as such are not considered patentable subject-matter, but they may be protected under copyright law. An invention containing a computer program may be patentable if an essential part of the invention claimed is subject-matter other than a computer program and if this subject-matter is sufficiently disclosed in the specification.

Is India a member of the Patent Cooperation Treaty (PCT)?

Yes, India became a contracting state to the Patent Cooperation Treaty (PCT) on 7 December 1998. Since then it has been possible to designate India in international patent applications filed via the PCT route.

As a foreign applicant, do I need to appoint a professional representative in India?

The law does not say that you have to. However, if you reside abroad, you must furnish an address for service in India which will be used for all communications from the Indian Patent Office. The address of an authorised patent agent, for example, could serve as an address for service.

Which of India’s four filing offices should I file my patent application with?

India’s four filing offices are in Kolkata, New Delhi, Mumbai and Chennai. Each has a separate territorial jurisdiction. Where you file your application depends on

  • where you live
  • where your business is located, and
  • where the invention actually originated.

For foreign applicants without a place of business or address in India, the territorial jurisdiction is defined by the address or place of business of their patent agent.

What language must I use for a patent application in India?

The official filing languages in India are English and Hindi. In the case of Patent Cooperation Treaty (PCT) applications not filed or published in English, an English translation must be submitted within the 31-month time period.

Can I claim priority for an application filed in India?

Yes, you can claim priority when filing a patent application in India. A certified copy of the priority document must be submitted within three months of the date of filing of the application. The priority period is 12 months from the earliest priority claimed. It is possible to claim multiple priorities. Domestic priority (based on a previously filed application in India) is also available.

What do I need to do to get an early filing date in India?

For non-Convention applications it is possible to get an early filing date by filing a provisional specification, which has to be followed by a complete specification within 12 months of filing. Provisional specifications cannot be filed for divisional, Convention or PCT national phase applications.

Does India allow divisional applications?

Yes, applicants may file one or more divisional applications at any time prior to the grant of a patent.

What is a provisional specification in India?

Provisional specifications can be used to secure a priority date for an application. They describe the nature of the invention without claims, and should contain the title and description of the invention. A full specification, including claims and an abstract, must be submitted within 12 months of the provisional filing.

Are Indian patents subject to substantive examination?

Indian patents are subject to formal and substantive examination. Substantive examination is carried out on request (by the applicant or an interested party) to determine if the invention meets the patentability requirements (novelty, inventive step and industrial applicability).

How soon after filing an application in India do I need to file a request for examination?

You must submit this request within 48 months of the date of priority or the date of filing of the application, whichever is earlier. If you do not file a request for examination within the prescribed time limit, the application will be deemed to be withdrawn.

Can I request that my application be published earlier than 18 months from the filing date in India?

Yes, you can request early publication. The application will be published within one month of the date of the request, subject to payment of the prescribed fee.

Can I withdraw my application before it is published in India?

Yes. In India, if you make a request for the withdrawal of your application within 15 months of the date of filing or date of priority, whichever is earlier, the application will not be published.

Can I submit third-party observations on an Indian patent application?

Yes. Any person can oppose the grant of a patent by submitting observations to the Controller of the Indian Patent Office at any time after the publication of the patent application and before the announcement of the decision to grant. The statement and evidence presented in this “pre-grant opposition” will only be considered if and when a request for examination of the application has been filed.

When is the first office action usually issued in India?

Since May 2006, the first office action, also called the First Examination Report (FER), is normally issued within six months of the date of the request for examination.

What is the time limit for responding to official actions in India?

You should comply with all the legal requirements and meet all the objections put forward in the First Examination Report (FER) as soon as possible. If you fail to respond to the FER within 12 months of the date of issue, your application will be deemed to have been abandoned.

When do I have to pay annual fees in India?

In India, the annual fees are due from the second year of the pending application. You have to pay the first annual fee on the second anniversary of the date of filing of the complete specification. If the application is granted more than two years after the date of filing, the accumulated annual fees are payable within three months of the date on which the patent was recorded in the register. Further annual fees are due each year, in advance. India has a two-tier fee system with different fees for individuals and legal entities.

Is there a grace period for paying annual fees in India?

Yes. The time limit for the payment of annual fees can be extended by up to a maximum of six months. This extension can be obtained on request, upon payment of a fee for each month of extension.

Can a lapsed patent be restored in India?

In India, provided the failure to pay the annual fee was unintentional, patent holders can file a request for restoration of a patent within 18 months of the lapse date, subject to the payment of an additional fee.

Can I request an extension of the patent term in India?

No, currently India does not allow the extension of patent terms.

How can I challenge a granted patent in India?

Since January 2005, India has had a post-grant opposition system under which you can oppose a granted patent within 12 months of the announcement of the decision to grant.

Interested parties, or the government, can also file a petition for revocation of a patent at any time during the life of the patent. Such petitions must be lodged with the Intellectual Property Appellate Board (IPAB) or at High Court level.

Where can I search Indian patent information in English?

The Indian Patent Office website provides a free search system for Indian patent information called “InPASS” (Indian Patent Advanced Search System). The system allows full text searches for published patent applications, granted patents and legal status information for Indian patents. It also provides online access to the Patent Office Journal, which is updated weekly on Fridays.

Where can I find official information about patent fees in India?

You will find the Indian Patent Office’s current fee schedule under Forms and fees on the IP India website.

Can I access the documents in the file of an Indian patent application?

Yes. Once an application has been laid open, anyone can file a written request for file inspection and obtain certified copies upon payment of the requisite fee.

Alternatively, provided the relevant records have been digitised, you can download the documents in the file from the Indian Patent Office’s free InPASS website.

Where can I find information about patent agents in India?

You can find information about patent agents in India in the Electronic list of patent agents on the IP India website.

 

When can a phrase ‘patent applied’ or ‘patent pending’ or ‘patented’ be used?

When an article or invention is sold at a stage where the patent application is yet to be granted/ rejected/ withdrawn or abandoned, then the phrase ‘patent applied’ or ‘patent pending’ can be used on it. The term ‘patented’ can be used on an article or invention or product when it has been granted a patent.

What is the difference between a Provisional Specification and a Complete Specification?

A regular patent application that is prosecuted, examined and granted by the patent office is known as a Complete Specification.  A Complete Specification consists of the total disclosure of the invention along with Claims that define the legal limits of the invention. The disclosure also contains a detail method stating the working procedure of the invention.

A complete specification is sometimes difficult to produce as an invention may still be in its developmental stage.  In that scenario, a Provisional Specification is provided which does not consist of the Claims and is comprised of the Novelty and inventive features of the invention.

Below mentioned are some important points that are to be noted when it comes to Provisional and Completed Specification:

  • Within 12 months from the date of filing of a Provisional Specification, the Complete Specification should be filed or else the application is considered to be abandoned.
  • There is no hard and fast rule to apply for a Provisional Specification before filing a Complete Specification. An applicant can directly file a Complete Specification while applying for a patent.
  • Although a Provisional Specification doesn’t consist of a Claims Section, it still defines the legal state or demarcations of an invention. Hence the applicant must be careful while drafting a Complete Specification as the Claims Section in it cannot be elaborate in scope when compared to the Provisional Specification.
  • One or more Provisional Specifications can be combined to form a Complete Specification. In this case the Provisional Specifications needs to be of similar nature or derivatives of similar languages.

What are patents? What are the advantages/objectives of it?

A patent is a set of rights granted by the government to an inventor for a definite period of time. They are techno-legal documents containing the details of a novel, non-obvious and commercially feasible inventions or products. These exclusive legal rights prohibit third parties from making, using, and selling of products without the patentee’s consent. This also holds true for importing or exporting the patented product from a particular country. If a third party or entity wrongfully uses the rights, then the patentee can sue for patent infringement.

The advantages of patent are as below:

  • The inventor/ company which have been granted patent for a particular product enjoys monopoly over that product and thus can keep competitors at bay.
  • Researchers or inventors can license their patents to other entities which will eventually be monetarily beneficial for them.
  • An increase in chances of investment.
  • The status ‘patented’ helps in effective branding.

In what modes can a patent be filed internationally?

It is known that there is no such thing called a ‘global patent’ that is acceptable worldwide. An applicant has to file separately either through the Paris Convention or Patent Co-operation Treaty System to get acknowledged of an international patent.

Paris Convention– For all member countries enlisted in the Paris convention, an applicant can file directly in the corresponding country within 12 months from the date of filing that is the Priority Date.

Patent Co-operation Treaty– In this system an applicant can file the patent application in the PCT contracting states within 30-34 months from the Priority Date ( here is an exception to the usual 12 months’ time frame from the Priority Date). All formal works are done in the form of documentation and simplified logistics. Through the PCT system an applicant can also get to know the International Search Report of his invention. However, an applicant must be aware that the PCT application itself must be filed within 12 months from the Priority Date.  It must also be noted that every Paris Convention country may not be a member of the PCT contracting state and for filing patent applications in those countries; applicant has to take help of the Paris Convention.

What is the term of a patent? Can a patent be renewed after its expiry?

A patent is generally valid for twenty years from the date of filing in case of domestically filed patents (this is applicable globally). For national phase applications which are filed through the PCT the validity is again of twenty years from the date of International Filing. In some countries, this time limit or validity term can be adjusted if the Patent office delays in granting a patent. This is also true for a delay from regulatory bodies in case of pharmaceutical and agricultural patents. However, in India an extension of patent term or term adjustment is not entertained. After the expiry of a patent, it cannot be renewed.

What is the relevant date from the infringement perspective?

A patent infringement lawsuit can only be filed after the grant of patent. The patentee shall still enjoy the privileges considering the patent was granted on the date of publication of the application. The patent owner can however sue back and claims for damages from the infringement date or patent application publication date, whichever among the two will be later.

What is patentability search and is it mandatory?

The prime objective of a patentability search is to find out whether a particular invention is eligible for acquiring a patent or not. The search is conducted to find out if an invention is novel, non-obvious and is commercially applicable. All these three criterions together determine the patentability of an invention. Since patent registration is quite costly procedure it is always advisable to conduct a thorough patentability search worldwide or at least in the countries where the applicant wishes his invention to be protected. This process can be done by the applicant himself or an experienced patent professional too (a patent professional can help much better while searching). However, if an applicant is confident enough that his invention is one and unique and meets all the patentability criterions, he can go ahead and directly file a patent application.

Who may file a request for examination and what time is allowed for putting application in condition of grant?

A request for examination can be filed by the applicant himself, his immediate subsidiary who might be interested or his agent. A First Examination Report or FER is usually sent to the primary applicant and is also uploaded online for public. After an issue of the FER, it is mandatory for the applicant to respond to it or to subsequent Examination Reports if any. All this entire procedure should be done by the applicant within 12 months from the date of issue of First Examination Report (FER). Failing to clear this will lead to refusal of a patent

What are restrictions for filing outside India for Indian residents?

For Indian residents opting for foreign or international filing, they have to abide by the following rules:

  • An Indian applicant has to wait for a minimum time period of 6 weeks before he can file a patent application abroad. However if he wishes to file the application prior to this waiting time he has to get the permit by submitting a request for Foreign filing at the Patent Office.
  • An applicant may wish to file directly at a foreign country before applying for the same in India. In that scenario too he needs to file a request for Foreign Filing permit at the Patent Office. Only after obtaining permit from the office he can proceed further.

If an applicant fails to take permission from the Indian Patent Office before filing of an international Patent Application, his/her patent application will be considered as abandoned and a granted application will be officially cancelled. The applicant might have to serve a period of 2 years of imprisonment or fine or both.

Can the technical aspects of a patent be modified by any means?

There is no chance to do any modifications or add something in a Complete Specification. Still if the applicant needs to amend or add some new matters, he can do so by filing a Patent of Addition apart from the original patent application filed. The improvements or amendments to be done must be mentioned in this Patent of Addition.

What is the process of application for a patent?

The persons who can apply for a patent application are the true or first inventor, an assignee or a legal representative. The form is to be properly filled and submitted at the required patent office. The 4 main offices in India are located at Delhi, Mumbai, Kolkata and Chennai. The applicant is required to file application only with the offices which comes under the jurisdiction of his state of residence, or the place of origin of invention. For foreign applicants who do not have a business place or are not resident of India can take the help of a patent agent to file the application with the correct office.

The initial or very first date on which the patent application is filed is known as the Priority Date. The Priority Date carries much significance because among patent applications with almost similar subject matter, the one with the earlier filing date is given the first priority.

For foreign or international filing, the patent application with an earlier priority date is taken into consideration. All the applications filed subsequently will have similar priority date as that of the parent application. The subsequent applications are thus referred as the family members of the parent application. The process of application is generally the same with only a minor change in format which depends on the country where the application is filed for. The applicant needs to take the help of the patent agent or attorney of the required country as he/she will not be able to file individually.

What is the procedure for Patent Co-operation Treaty?

The PCT comprises of the following procedures:-

Filing– You need to file an international application with WIPO or a national or regional patent office. The application must abide by the requirements of PCT. It must be drafted in a language and submitted along with a set of fees.

International Search– An International Searching Authority is a major patent office in the world which is responsible for finding out probable ‘prior-arts’. Whether an invention is patentable or not and the inventor’s potential patentability is declared by the ISA in a written format.

International Publication– The contents of the publication is disclosed just after 18 months from the earliest filing date.

Supplementary International Search– There is a second ISA that finds out the prior-art on request if they are overlooked by the first ISA. This is entirely optional.

International Preliminary Examination– This is again an optional step which is conducted on request generally on the amended version of a patent application.

National Phase– This is done at the end of the PCT phase, usually 30 months from the very first application filing date.

How do I protect my invention in multiple countries?

Patent rights are limited to territories. To protect invention in several countries simultaneously you can go for the Direct or Paris Route or the PCT Route.

What is a PCT Route?

You can file an application under the PCT directly or within the 12-month from the filing date of a first application under the Paris Convention. This is applicable for all Contracting States of the PCT. It is much simpler and cost-effective.

Who can use the PCT Route?

The PCT Route is generally used by the major corporations, research institutions, and universities in order to obtain international patent protection. Small and medium sized enterprises (SMEs) and individual inventors also seek protection through PCT. A yearly list of the PCT filers is published in the PCT newsletter.

How does an International Patent Application effect?

Generally the international patent application you file serves the purpose or is equally effective as that of the national patent application (and certain regional patent applications). If the international patent application meets all the rules and regulations as stated in the Treaty and Regulations along with its applicability in all PCT Contracting States, then it will not be required to adapt to or draft a separate national phase patent application. The requirements as stated in Treaty and Regulations if met successfully will not require further adaptation to national or regional requirements. You will be exempted from the cost too.

Who can file an international patent application under the PCT?

A person is eligible to file in an international patent application if he/she is a native or resident of a PCT Contracting State. An application may comprise of several applicants. In those scenarios, only one of those applicants needs to fulfill the requirements.

Where can I file an international patent application?

You can file an international patent application with the national Patent Office or directly to the WIPO (subjected to provision of permission by the state’s national security). These two offices act as the PCT receiving office. However you will be required to file an international application with the respective regional patent office if you are a resident of a country which is party to the European Patent Convention, ARIPO Harare Protocol and OAPI Bangui Agreement.

What is the cost of filing an international application under the PCT?

A PCT applicant is generally required to pay three types of fees while filing an international patent application. They are (a) an international filing fee (b) a search fee depending on chosen ISA and (c) a transmittal fee that depends upon the receiving offices. More details on forms and fees are described elaborately in www.ipindia.nic.in

How much fee reduction is available under the PCT?

For all applicants who file electronically, are always eligible for a fee reduction depending on the type of filing and application format submitted. Apart from this to make more people leave the conventional pen and paper method and adapt to electronic filing of the PCT system, applicants from developing nations get additional concession on fees. These individuals get almost a 90% reduction in some determined fees which include the international filing fee.

How long does it take for a PCT process to be completed?

An applicant has a time span of 18 months from the time an international patent application is filed (or usually 30 months from the filing date of the initial patent application) before he/she proceeds with the national phase procedures and formalities. This additional buffer time enables an inventor/ applicant to judge the potential and commercial viability of the invention in the desired countries. The overall time required for a patent to be granted varies depending upon the national or regional patent offices. This is because each and every regional or national office examines a patent application according to the corresponding regional patent laws.

What is the significance of “Claim Priority” of an earlier patent application?

Applicants who wish to protect their invention in multiple countries are required to first file a national or regional patent application with their national or regional patent Office. Within 12 months from the filing date (Priority Date) of the first application, the applicant has to file an international application under the PCT. Claiming Priority of an earlier filed application negates the possibility of invalidation of a patent for any reason.

In what language can you file an international patent application?

An international patent application can be filed in any language with the receiving office. If your application is in a language that is not or cannot be supported by ISA then you are required to submit a translation of your application. It is required for the purpose of an international search. Receiving offices however accepts application that is in a language competent to ISA and a “publication language”. Publication language is one of those in which international patent applications are published. Those languages are Arabic, Chinese, English, French, German, Japanese, Korean, Portuguese, Russian and Spanish. Thus as a translator you always have an option or choice of language while filing application.

Which Office will be responsible for carrying out the international search of a PCT application?

The availability of an International Searching Authority or ISA to the residents of a country is determined by the receiving Office where the international application was filed. Sometimes, receiving offices do give a choice to the applicant to choose an ISA.

What is PCT International Search?

It is a high quality search of the relevant patent documents and other technical literature in those languages in which majority of the patent applications are filed. The search quality is maintained as per the standards prescribed in the PCT and is executed by qualified staffs. The results are published in an international search report. A written opinion on potential of an invention is also drafted by ISA.

What is the value of the international search report?

This report enables you to determine the chances of obtaining patents in the PCT contracting states. The report result can be both in your or against your favor. This however will help you in deciding whether and how you should proceed further with your application (this is when search report is favorable) or how you can amend the claims in your application or can withdraw them (in case of unfavorable search report).

Is an international search carried out for all international applications?

The thumb rule is to conduct an international search for all international applications. However, there might be certain conditions when ISA will be unable to conduct a search. In those cases, ISA will issue a declaration stating non-issuance of international search report. ISA can also issue a partial report search if it feels that the application has multiple inventions but the applicant has not paid additional fees to conduct the search for all entailed additional inventions.

What does the written opinion of the International Searching Authority signify?

Simultaneously while the international search report is published, a preliminary opinion on whether the invention adheres to or meets the patentability criteria is established. The written opinion is sent to the applicant along with the international search report. It helps an applicant understand and interpret as to how the chances of obtaining a patent can be enhanced.

What is a PCT supplementary international search?

Apart from the PCT International Search, an applicant can request the ISA to conduct one or more supplementary searches apart from the PCT main international search. This can reduce the scope of new patents to be discovered in the national phase itself. Also, it helps in determining the technical scope of an invention to broader realm.

What is a supplementary international search report?

This is more or less similar to the main international search report. The supplementary international search report consists of a list of patent documents and literatures that might pose a challenge to the patentability of the invention claimed in the international application. Sometimes, the supplementary international search report contains a detail analysis and explanation than the main international search report.

What does an international publication under the PCT consist of?

WIPO is responsible for publishing the international application shortly after the expiration of 18 months from the priority date along with the international search report.  All PCT international applications are published online and can be found on PATENTSCOPE.

Can third parties access documents in the file of an international application?

Nobody is allowed access an international application unless the applicant himself requests or authorizes it (till the time of international publication that is 18 months after the priority date). If an applicant withdraws the application before international publication the also third parties cannot access it. After the international publication some documents are made public in PATENTSCOPE which then serves as a medium to access.

What is an international preliminary examination?

An International preliminary examination is a second step to evaluate the patentability of an invention according to the standards on which the written opinion of the ISA is based. After an initial international search and the report published an applicant may wish to make changes in the international application in order to overcome challenging documents identified. This preliminary examination allows participating in the examination process and influencing the findings of the examiner before entering the national phase.

What is the value of the international preliminary report?

The international preliminary report provides an even stronger ground to evaluate the chances of gaining patents.

How to enter the national phase?

Once you have decided that you wish to proceed further with your international application you have to enter the national phase. This requires paying requisite fees, submitting translation of applications in some cases.

What happens to my application in the national phase?

Once an applicant has entered the national phase, the national or regional patent Offices begin the process of determining as to grant you the patent or not. The PCT international search report, the written opinion of ISA and sometimes an international preliminary examination report make the examination easier for the concerned offices.

What is a Patent Co-operation Treaty or PCT?

It is an international treaty with more than 150 participating countries. For Inventors who wish to seek patent protection in multiple countries can do so by filing a single patent application. It is not required to file separate national applications for multiple regions. Whether the patent will be granted on not depends on national or regional patent Offices.

What is a Paris Route?

It is also known as the Direct Route. You can file applications separately in countries where you wish to seek patent protection. All the applications can be filed simultaneously. Also, you can file an application in any one of the member states of the Paris Convention. The remaining applications can be filed separately within 12 months from the filing date of that first patent application.

 

More about Trademarks in India

What is a trademark?

A trademark (popularly known as brand name) in layman’s language is a visual symbol which may be a word signature, name, device, label, numerals or combination of colours used by one undertaking on goods or services or other articles of commerce to distinguish it from other similar goods or services originating from a different undertaking. The legal requirements to register a trademark under the Act are:

  • The selected mark should be capable of being represented graphically (that is in the paper form).
  • It should be capable of distinguishing the goods or services of one undertaking from those of others.
  • It should be used or proposed to be used mark in relation to goods or services for the purpose of indicating or so as to indicate a connection in the course of trade between the goods or services and some person have the right to use the mark with or without identity of that person.

How to select a good trademark?

If it is a word it should be easy to speak, spell and remember. The best trademarks are invented words or coined words or unique geometrical designs.
Please avoid selection of a geographical name, common personal name or surname. No one can have monopoly right on it.
Avoid adopting laudatory word or words that describe the quality of goods (such as best, perfect, super etc.)

It is advisable to conduct a market survey to ascertain if same/similar mark is used in market.

What is the function of a trademark?

Under modern business condition a trademark performs four functions:

  • It identifies the goods / or services and its origin.
  • It guarantees its unchanged quality
  • It advertises the goods/services
  • It creates an image for the goods/ services.

Who can apply for a trademark and how ?

Any person, claiming to be the proprietor of a trademark used or proposed to be used by him, may apply in writing in prescribed manner for registration. The application should contain the trademark, the goods/services, name and address of applicant and agent (if any) with power of attorney, the period of use of the mark. The application should be in English or Hindi. It should be filed at the appropriate office.

The applications can be submitted personally at the Front Office Counter of the respective office or can be sent by post. These can also be filed on line through the e-filing gateway available at the official website.

What are different types of trademarks that may be registered in India?

  • Any name (including personal or surname of the applicant or predecessor in business or the signature of the person), which is not unusual for trade to adopt as a mark.
  • An invented word or any arbitrary dictionary word or words, not being directly descriptive of the character or quality of the goods/service.
  • Letters or numerals or any combination thereof.
  • The right to proprietorship of a trademark may be acquired by either registration under the Act or by use in relation to particular goods or service.
  • Devices, including fancy devices or symbols
  • Monograms
  • Combination of colors or even a single color in combination with a word or device
  • Shape of goods or their packaging
  • Marks constituting a 3- dimensional sign.
  • Sound marks when represented in conventional notation or described in words by being graphically represented.

Who benefits from a trademark?

The Registered Proprietor of a trademark can create establish and protect the goodwill of his products or services, he can stop other traders from unlawfully using his trademark, sue for damages and secure destruction of infringing goods and or labels.
The Government earns revenue as a fee for registration and protection of registration of trademarks
The Legal professionals render services to the entrepreneurs regarding selection registration and protection of trademarks and get remunerations for the same

The Purchaser and ultimately Consumers of goods and services get options to choose the best.

What are the benefits of registering a trademark?

The registration of a trademark confers upon the owner the exclusive right to the use the trademark in relation to the goods or services in respect of which the mark is registered and to indicate so by using the symbol (R), and seek the relief of infringement in appropriate courts in the country. The exclusive right is however subject to any conditions entered on the register such as limitation of area of use etc. Also, where two or more persons have registered identical or nearly similar marks due to special circumstances, such exclusive right does not operate against each other.

What are the formalities and government fees for major trademark transactions ?

For filing new applications there are prescribed forms depending on the nature of application such as Form TM-1, TM-2, TM-3, TM-8, TM-51 etc. Fees: Rs.4000/
To file a Notice of Opposition to oppose an application published in the Trade Marks Journal (FormTM-5). Fees: Rs. 2,500/- for each class covered

  • For Renewal of a Regd. trademark (Form TM-12 ). Fees: Rs.5,000/-
  • Surcharge for belated renewal (Form TM-10).Fees: Rs. 3,000/-
  • Restoration of removed mark (Form TM-13) Fees: 5,000/-
  • Application for rectification of a registered trademark (Form TM-26) Fees: Rs. 3,000/-
  • Legal Certificate (Form TM-46) (Providing details of entries in the Register) Fees: Rs.500/-
  • Copyright search request and issuance of certificate (Form TM-60) Fees: Rs, 5,000/-.

What are the sources of trademark laws?

  • The national statues i.e., the Trade Marks Act, 1999 and rules made thereunder .
  • International multilateral convention.
  • National bilateral treaty.
  • Regional treaty.
  • Decision of the courts.
  • Office practice reduced in Manuals and guidelines and rulings of the Courts
  • Decision of Intellectual Property Appellate Board.
  • Text books written by academician and professional experts.

What does the Register of trademark contain?

The register of trademark currently maintained in electronic form contains inter alia the trademark the class and goods/ services in respect of which it is registered including particulars affecting the scope of registration of rights conferred; the address of the proprietors; particulars of trade or other description of the proprietor; the convention application date (if applicable); where a trademark has been registered with the consent of proprietor of an earlier mark or earlier rights, that fact.

Can any correction be made in the application or register?

But the basic principle is that the trademark applied for should not be substantially altered affecting its identity. Subject to this changes are permissible according to rules detailed in the subordinate legislation.

Can a registered trademark be removed from the register?

It can be removed on application to the Registrar on prescribed form on the ground that the mark is wrongly remaining on the register. The Registrar also can suo moto issue Notice for removal of a registered trademark?

 

More about Industrial Design Registrations

What is an industrial design?

In a legal sense, an industrial design constitutes the ornamental or aesthetic aspect of an article.

An industrial design may consist of three dimensional features, such as the shape of an article, or two dimensional features, such as patterns, lines or color.

What kind of protection does an industrial design right offer?

In principle, the owner of a registered industrial design or of a design patent has the right to prevent third parties from making, selling or importing articles bearing or embodying a design which is a copy, or substantially a copy, of the protected design, when such acts are undertaken for commercial purposes.

What kind of products can benefit from industrial design protection?

Industrial designs are applied to a wide variety of products of industry and handicraft items: from packages and containers to furnishing and household goods, from lighting equipment to jewelry, and from electronic devices to textiles. Industrial designs may also be relevant to graphic symbols, graphical user interfaces (GUI), and logos.

How are industrial designs protected?

In most countries, an industrial design needs to be registered in order to be protected under industrial design law as a “registered design”. In some countries, industrial designs are protected under patent law as “design patents ”.

Industrial design laws in some countries grant – without registration – time- and scope limited protection to so-called “unregistered industrial designs”.

Depending on the particular national law and the kind of design, industrial designs may also be protected as works of art under copyright law.

How long does industrial design protection last?

Industrial design rights are granted for a limited period. The duration of the protection of industrial designs varies from country to country, but it amounts at least to 10 years. In many countries, the total duration of protection is divided into successive renewable periods.

How are industrial design rights enforced?

Industrial design rights are usually enforced in a court, generally on the initiative of the owner of the rights, as provided for by the applicable law. The remedies and penalties vary from country to country and could be civil (injunctions to desist from an infringement, payment of damages, etc.), criminal or administrative.

What is the difference between an industrial design right and a patent?

An industrial design right protects only the appearance or aesthetic features of a product, whereas a patent protects an invention that offers a new technical solution to a problem. In principle, an industrial design right does not protect the technical or functional features of a product. Such features could, however, potentially be protected by a patent. Find out more about patents.

What conditions must be met to obtain industrial design protection?

Depending on the applicable laws, independently created industrial designs must fulfil some or all of the following criteria: novelty/originality.

The assessment of novelty and originality varies from country to country. In general, an industrial design is considered to be new or novel if it has not previously been disclosed to the public and it may be considered original if it significantly differs from known designs or combinations of known design features.

Who grants industrial design registrations or design patents?

Industrial design registrations or design patents are granted by the IP office of the country (or region) where an application is filed. View a list of national/regional IP offices.

Do I need an agent to file an application?

Depending on the applicable law, you may file an application for the registration of an industrial design or for the grant of a design patent yourself or you may be required to appoint an agent.

How much does it cost to obtain industrial design protection?

As the costs for filing for protection vary from country to country, it is best to contact your national (regional) IP office for details on the fee structure. If protection abroad is sought, in addition to the ordinary filing fees, you should take into account the translation costs and the costs of using a local agent.

Is the industrial design protection granted in one country valid in every country?

Industrial design rights are territorial. This means that these rights are limited to the country (or region) where protection is granted.

How can industrial design rights be obtained in other countries?

At present, no “world” or “international” industrial design right exists.

In general, in order to obtain protection in other countries, an application for the registration of an industrial design or for the grant of a patent for an industrial design must be filed in each country where protection is sought, in accordance with the law of that country. In other words, if protection is sought in countries A and B, an application should be filed with the intellectual property (IP) office of country A and another application with the IP office of country B.

To avoid having to submit applications in each and every country where protection is sought, WIPO’s Hague System provides a practical business solution for registering up to 100 designs in a large number of territories – all through one single international application. Find out more about the Hague System.

In certain regions, it is also possible to obtain protection for industrial designs in the region concerned by filing an application with a regional IP office. This is the case in the African Intellectual Property Organization (OAPI), which registers industrial designs in states party to the Bangui Agreement; the African Regional Intellectual Property Organization (ARIPO), which registers industrial designs in states party to the Lusaka Agreement; the Benelux Office for Intellectual Property (BOIP), which registers industrial designs in the three “Benelux” countries; and the Office for Harmonization in the Internal Market (trademarks and designs) (OHIM), which registers industrial designs in the member states of the European Union.

What practical steps do I have to take to obtain protection for my industrial design?

An application for the registration of an industrial design or for the grant of a patent for an industrial design can be filed with the intellectual property (IP) office of the country (or region) in which protection is sought. We recommend that you consult our directory of IP offices to find the relevant office.

Alternatively WIPO’s Hague System for the International Registration of Industrial Designs provides a practical business solution for registering up to 100 designs in a large number of territories through filing one single international application. Find out more about the Hague System.

When should I file an application?

Timing is very important. Taking into account the novelty and/or originality requirement for industrial designs in most legislation, it is in general crucial to file an application for registration or for the grant of a patent before publicly disclosing it, so as to avoid destroying its novelty/originality.

If the industrial design has already been disclosed to the public (for example, by an advertisement published on the company’s website), it may no longer be considered as “new” or “original” and may become part of the public domain. Some countries, however, allow for a “grace period” to file after disclosure of the industrial design. Such a period provides a safeguard for applicants who have disclosed their industrial design before filing an application. Such a “grace period” is usually 6 or 12 months.

How can I search for industrial designs that have already been registered?

Intellectual property offices may make online databases of industrial design/patent for industrial design registrations available. Consult our directory of IP offices.

How can I find the industrial design laws of various countries?

WIPO Lex provides easy access to intellectual property legislation from a wide range of countries and regions as well as to treaties on intellectual property.

Many national or regional intellectual property offices also provide information concerning national or regional legislation on their websites. View a list of links to national and regional intellectual property offices to find out more.

How are industrial designs relevant to my business?

Industrial designs make a product attractive and appealing to customers. Design drives consumer’s choice: the appearance of a product can be a key factor in the consumer’s purchase decision. In other words, the success or failure of a product may rest, at least partially, on how it looks. Industrial designs can therefore be very important for both small- and medium sized enterprises (SMEs) and larger companies alike, regardless of their sector of activity.

What are the advantages to my business of protecting my industrial designs?

The protection of industrial designs should form an integral part of any business strategy. The main reasons to protect industrial designs are the following:
  • Return on investments: Protection contributes to obtaining a return on investments made in creating and marketing attractive and innovative products.
  • Exclusive rights: Protection provides exclusive rights for at least 10 years, so as to prevent or stop others from commercially exploiting or copying the industrial design.
  • Strengthen brands: Industrial designs can be an important element of a company’s brand. Protecting industrial designs contributes to protecting a company’s brand.
  • Opportunity to license or sell: Protection provides rights that may be sold or licensed to another enterprise, which will then be a source of income for the owner of the rights.
  • Positive image: Protection helps convey a positive image of a company, since industrial designs are business assets which may increase the market value of a company and its products.
  • Reward: Protecting industrial designs rewards and encourages creativity.

What happens if I don’t protect my industrial design(s)?

If you don’t protect your industrial design(s) then it follows that you may not enjoy exclusive rights to them. Consequently, your competitors may take a product to market, incorporating your industrial design, without getting your permission.

So if a competitor or anyone else makes, sells or imports products bearing or embodying a design which is a copy (or substantially copy) of your industrial design without your consent, you will have no legal means to fight them. Moreover, it is likely that copies of the industrial design will be sold at a lower price as competitors do not have to recoup the investments made in the creative process. This could reduce your market share for the product in question and be harmful both to your firm’s reputation and to that of your products.

Can I file PCT applications electronically?

Mostly the PCT applications are filed electronically. It can be filed with receiving offices that accepts electronic applications. Filing a PCT application through the WIPO web service or the WIPO software enables you to prepare applications by simultaneously validating the entered data. It also helps you monitor your patent application on a timely basis for any related actions. Filing electronically also qualifies you for some reduction in fees for PCT.