Frequently Asked Questions (FAQ’s): Patents

What is a Patent?

Patent is a statutory right for an invention granted for a limited period of time to the patentee by the Government, in exchange of full disclosure of his invention for excluding others, from making, using, selling, importing the patented product or process for producing that product for those purposes without his consent.

Does Indian Patent give protection worldwide?

Patent protection is territorial right and therefore it is effective only within the territory of India. However, filing an application in India enables the applicant to file a corresponding application for same invention in convention countries or file under Patent Cooperation Treaty, before expiry of twelve months from the filing date in India. Therefore, separate patents should be obtained in each country where the applicant requires protection of his invention in those countries. There is no patent valid worldwide.

Is it possible to file international application under Patent Cooperation Treaty (PCT) in India?

It is possible to file an international application known as PCT application in India with the Indian Patent Offices located at Delhi, Mumbai, Chennai, and Kolkata. All these offices act as Receiving Office (RO) for International application.

What can be patented?

An invention relating either to a product or process that is new, involving inventive step and capable of industrial application can be patented. However, it must not fall into the categories of inventions that are non- patentable under section 3 and 4 of the Act.

Who can apply for a patent?

A patent application can be filed either by true and first inventor or his assignee, either alone or jointly with any other person. However, legal representative of any deceased person can also make an application for patent.

How can I apply for a patent?

A patent application can be filed with Indian Patent Office either with complete specification or with provisional specification along with prescribed fees. In case the application is filed with provisional specification, then one has to file complete specification within 12 months from the date of filing of the application. There is no extension of time to file complete specification after expiry of said period.

What are the criteria of patentability?

An invention to become patentable subject matter must meet the following criteria:

–          It should be novel.

–          It should have inventive step or it must be non-obvious

–          It should be capable of Industrial application.

–          It should not fall within the provisions of section 3 and 4 of the Indian Patents Act 1970.

Should application for patent be filed before or after, publication of the details of the invention?

The application for patent should be filed before the publication of the invention and till then it should not be disclosed or published. Disclosure of invention by publication before filing of the patent application may be detrimental to novelty of the invention as it may no longer be considered novel due to such publication.  However, under certain conditions, there is grace period of 12 months for filing application even after publication.

Can any invention be patented after publication or display in the public exhibition?

Generally, a patent application for the invention which has been either published or publicly displayed cannot be filed. However the Patents Act provides a grace period of 12 months for filing of patent application from the date of its publication in a journal or its public display in a exhibition organised by the Government or disclosure before any learned society or published by applicant under certain conditions.

What is a provisional specification?

Indian Patent Law follows first to file system. Provisional specification describes the nature of the invention to have the priority date of filing of the application in which the inventive idea has been disclosed. It must be followed by a complete specification describing the details of the invention along with a statement of claims within 12 months after filing of the provisional application. If the complete specification is not filed within the prescribed period, the application is treated as deemed to have been abandoned

Is it necessary to file a provisional application?

Generally, an application filed with provisional specification is known as provisional application which is useful in establishing a priority date for your invention. Moreover, filing of a provisional application is useful as it gives sufficient time to the applicant to assess and evaluate the market potential of his invention before filing complete specification. However, it is not necessary to file an application with provisional specification and one can file application directly with complete specification.

Does the Indian Patent Office Keep information of the invention Secret?

Yes. All the patent applications are kept secret up to 18 months from the date of filing or priority date whichever is earlier and thereafter they are published in the Official Journal of the Indian Patent Office which is published every week and also available on the IPO website. After its publication, public can inspect the documents and also may take the photocopy thereof on payment of the prescribed fees.

When an application for patent is published?

Every application for patent is published after 18 months from the date of its filing or priority date whichever is earlier. However, following applications are not published:

–          Application in which secrecy direction is imposed;

–          Application which has been abandoned u/s 9(1); and

–          Application which has been withdrawn 3 months prior to 18 months.

Is there any provision in the law for early publication?

Yes, the applicant can make a request for early publication in Form 9 along with the prescribed fee. After receiving such request the Indian Patent Office publishes such application within a period of one month provided the invention contained thereon does not relate to atomic energy or defence purpose.

Is patent application once filed is examined automatically?

The patent application is not examined automatically after its filing. The examination is done only after receipt of the request of examination either from the applicant or from third party.

When the request for examination can be filed?

The request for examination can be filed within a period of 48 months from the date of priority or date of filing of the application whichever is earlier.

Is there any provision for early examination?

There is no provision for filing a request for early examination. The applications are examined in the order in which requests for examination are filed. However, an expedited examination may be requested under some conditions.

What happens to a patent application once it is examined?

After examination, the Indian Patent Office issues an examination report to the applicant which is generally known as First Examination Report (FER). Thereafter the applicant is required to comply with the requirements within a period of six months from the date of FER. In case, the application is found to be in order for grant, the patent is granted, provided there is no pre-grant opposition is filed or pending. A letter patent is issued to the applicant. However, in case a pre-grant opposition is pending, the further action is taken after disposition of the pre-grant opposition.

Does applicant gets an opportunity of being heard before his application is refused?

If applicant has not complied with the requirements within the prescribed time and no request for hearing has been made by the applicant, the controller may not provide the opportunity of being heard. However the Controller shall provide an opportunity of being heard to the applicant before refusing his application if a request for such hearing has been made by the applicant within prescribed time period.

What are the various stages involved in the grant of patent?

After filing the application for the grant of patent, a request for examination is required to be made by the applicant or by third party and thereafter it is taken up for examination by the Indian Patent Office. Usually, the First Examination Report is issued and the applicant is given an opportunity to correct the deficiencies in order to meet the objections raised in the said report. The applicant must comply with the requirements within the prescribed time otherwise his application would be treated as deemed to have been abandoned. When all the requirements are met, the patent is granted and notified in the Indian Patent Office Journal. However before the grant of patent and after the publication of application, any person can make a representation for pre-grant opposition.

What is time limit for filing the representation for pre-grant opposition?

A representation for pre-grant opposition can be filed before grant of patent from the date of publication of the application.

Is it possible to file pre-grant opposition even though there is no request for examination filed?

Yes, it is possible to file representation for pre-grant opposition even though there is no request for examination has been filed. However, the representation will be considered only when a request for examination is received within the prescribed period.

What is the time limit for filing post-grant opposition in the Indian Patent Office?

The time for filing post-grant opposition is 12 months from the date of publication of the grant of patent in the official journal of the Indian Patent Office.

Where the information relating to patent application is notified?

The information relating to the patent application is published in the Indian Patent Office Journal issued on every Friday.

What are the contents of the Indian Patent Office Journal?

The Indian Patent Office Journal contains information relating to patent applications which are published u/s 11A, post grant publication, restoration of patent, notifications , indexes, list of non-working patents and notices Issued by the Indian Patent Office relating to Patents, etc.

Can one use the words “Patent Pending” or “Patent Applied For”?

These words are normally used by the patent applicant to their products after filing his application for patent so that the public is made aware that a patent application has been filed in respect of that invention. Use of these words where no application has been made is prohibited under the Patent law. However, use of such words by the patent applicant does not prohibit the third party to plead as innocent unless the patent number is indicated.

What is the term of patent?

Term of every patent in India is 20 years from the date of filing of patent application, irrespective of whether it is filed with provisional or complete specification. However, in case of applications filed under PCT the term of 20 years begins from International filing date.

When can a patent be restored after its cessation?

A request for restoration of patent can be filed within 18 months from the date of cessation of patent along with the prescribed fee. The Indian Patent Office after processing the request will publish the same in Journal to notify the public. In absence of opposition in prescribed period from date of publication, the patent shall be restored.

Is it mandatory to obtain prior permission from the Indian Patent Office to directly file application for patent outside India or abroad?

If a resident of India intends to file patent application directly outside India, he/she needs to take prior permission from Indian Patent Office before making or causing to make such an application outside India.

Under what circumstances, it is necessary to obtain a prior permission from the Indian Patent Office?

The person is required to take prior permission from the Indian Patent Office under following circumstances:

–          The applicant is Indian resident;

–          Applicant does not wish to file patent application in India prior to filing abroad; and

–          If the applicant is Indian resident, a patent application has been filed in India and six weeks period is not yet over from that date.

Is it essential to deposit biological material in the international depository authority?

If the invention uses a biological material which is new, it is essential to deposit the same in the International Depository Authority (IDA) prior to the filing of the application in India in order to supplement the description. The description in the specification should contain the name and address of the International Depository Authority and, date and number of deposition of Biological material.

Frequently Asked Questions (FAQ’s): Trademarks

What is a Trademark?

A trademark (popularly known as brand name) in layman’s language is a symbol which may be a word signature, name, device, label, numerals, sound 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.

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?

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.

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.

Devices, including fancy devices or symbols.

Combination of colours or even a single colour 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.

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 of Trademarks.

What does the Register of Trademarks contain?

The Register of Trademark 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.

Frequently Asked Questions (FAQ’s): Designs

What is meant by ‘Design’ under the Designs Act, 2000 of India?

‘Design’ means only the features of shape, configuration, pattern or ornament or composition of lines or colour or combination thereof applied to any article whether two dimensional or three dimensional or in both forms, by any industrial process or means, whether manual, mechanical or chemical, separate or combined, which in the finished article appeal to and are judged solely by the eye, but does not include any mode or principle or construction or anything which is in substance a mere mechanical device, and does not include any trade mark, as define under the Trade and Merchandise Marks Act, 1958, property mark or artistic works as defined under Copyright Act, 1957.

What is meant by an article under the Designs Act?

Under the Designs Act the “article” means any article of manufacture and any substance, artificial, or partly artificial and partly natural; and includes any part of an article capable of being made and sold separately.

What is the object of registration of Designs?

Object of the Designs Act is to protect new or original designs so created to be applied or applicable to particular article to be manufactured by Industrial Process or means. Sometimes purchase of articles for use is influenced not only by their practical efficiency but also by their appearance. The important purpose of design Registration is to see that the artisan, creator, originator of a design having aesthetic look is not deprived of his / her bona fide reward by others applying it to their goods.

Can stamps, labels, tokens, cards be considered an article for the purpose of registration of Design?

No. Because once the alleged Design i.e., ornamentation is removed only a piece of paper, metal or like material remains and the article referred ceases to exist. Article must have its existence independent of the Designs applied to it. [Design with respect to label was held not registrable, by an Order on civil original case No. 9-D of 1963, Punjab, High Court]. So, the Design as applied to an article should be integral with the article itself.

What is a Register of Designs?

The Register of Designs is a document maintained by The Patent & Design Office, Kolkata as a statutory requirement. It contains the design number, class number, date of filing (in this country) and reciprocity date (if any), name and address of Proprietor and such other matters as would affect the validity of proprietorship of the design and it is open for public inspection on payment of prescribed fee & extract from register may also be obtained on request with the prescribed fee.

What is the effect of registration of design?

The registration of a design confers upon the registered proprietor ‘Copyright’ in the design for the period of registration. ‘Copyright’ means the exclusive right to apply a design to the article belonging to the class in which it is registered.

What is the duration of the registration of a design? Can it be extended?

The duration of the registration of a design is initially ten years from the date of registration, but in cases where claim to priority has been allowed the duration is ten years from the priority date. This initial period of registration may be extended by further period of 5 years on an application made in prescribed form accompanied by prescribed fees before the expiry of the said initial period of ten years.

What is the date of registration?

The date of registration except in case of priority is the actual date of filing of the application. In case of registration of design with priority, the date of registration is the date of making an application in the reciprocal country.

Is it possible to re-register a design in respect of which Copyright has expired?

No. A registered design, the copyright of which has expired cannot be re-registered.

What is piracy of a Design?

Piracy of a design means the application of a design or its imitation to any article belonging to class of articles in which the design has been registered for the purpose of sale or importation of such articles without the written consent of the registered proprietor. Publishing such articles or exposing terms for sale with knowledge of the unauthorized application of the design to them also involves piracy of the design.

Is marking of an article compulsory in India in the cases of article to which a registered design has been applied?

It would be always advantageous to the registered proprietors to mark the article so as to indicate the number of the registered design except in the case of Textile designs. Otherwise, the registered proprietor would not be entitled to claim damages from any infringer unless the registered proprietor establishes that the registered proprietor took all proper steps to ensure the marking of the article, or unless the registered proprietor show that the infringement took place after the person guilty thereof knew or had received notice of the existence of the copyright in the design.

Can the Registration of a Design be cancelled?

The registration of a design may be cancelled at any time after the registration of design on a petition for cancellation in prescribed form with prescribed fee on the following grounds:

–                  That the design has been previously registered in India; or

–         That it has been published in India or elsewhere prior to date of registration; or

–                   The design is not new or original; or

–                    Design is not registrable; or

–                    It is not a design under the Design Act.

Is it mandatory to make the article by industrial process or means before making an application for registration of design?

No, design means a conception or suggestion or idea of a shape or pattern which can be applied to an article or capable to be applied by industrial process or means. For example a new shape which can be applied to a pen thus capable of producing a new appearance of a pen on the visual appearance. It is not mandatory to produce the article first and then make an application.

Why is it important for filing the application for registration of design at the earliest possible?

First-to-file rule is applicable for registrability of design. If two or more applications relating to an identical or a similar design are filed on different dates only first application will be considered for registration of design.

Can the same applicant make an application for the same design again, if the prior application has been abandoned?

Yes, the same applicant can apply again since no publication of the abandoned application is made by the Patent Office, provided the applicant does not publish the said design in the meanwhile.

Whether it is possible to transfer the right of ownership?

Yes, it is possible to transfer the right through assignment, agreement, transmission with terms and condition in writing or by operation of law.

What is meant by priority claim?

India is one of the countries party to the Paris Convention so the provisions for the right of priority are applicable. On the basis of a regular first application filed in one of the contracting state of Paris Convention, the applicant may within the six months apply for protection in other contracting states of Paris Convention. Latter application will be regarded as if it had been filed on the same day as the first application.

Can the name, address of proprietor or address for service be altered in the register of design?

Name and address of the registered proprietor, or address for service can be altered in the register of designs provided this alteration is not made by way of change of ownership through conveyance i.e. deed of assignment, transmission, licence agreement or by any operation of law.

How does a registration of design stop other people from exploiting?

Once a design is registered, it gives the legal right to bring an action against those persons (natural/legal entity) who infringe the design right, in the Court not lower than District Court in order to stop such exploitation and to claim any damage to which the registered proprietor is legally entitled. However, it may please be noted that if the design is not registered under the Designs Act, 2000 there will be no legal right to take any action against the infringer under the provisions of the Designs Act, 2000.

What are the important criteria for determining a “set of article”?

If a group of articles meets the following requirements then that group of articles may be regarded as a set of articles under the Designs Act, 2000:

–            Ordinarily on sale or intended to be used together.

–            All having common design even though articles are different (same class).

–            Same general character.

–         Generally, an article having the same design and sold in different sizes is not considered as a set of articles. Practical example: “Tea set”, “Pen set”, “Knife set” etc.

What is an artistic work which is not subject matter of registration?

An artistic work as defined under the Copyright Act, 1957 is not a subject matter for registration which reads as follows:

–        “Artistic works” means: ‘A painting, a sculpture, a drawing (including a diagram, map, chart or plan) on engraving or a photograph, whether or not such work possesses artistic quality.’;

–              An work of architecture; and

–              Any other work of artistic craftsmanship.

What are the essential requirements for the registration of ‘design’ under the Designs Act, 2000?

The design should be new or original, not previously published or used in any country before the date of application for registration. The novelty may reside in the application of a known shape or pattern to new subject matter.

The design should relate to features of shape, configuration, pattern or ornamentation applied or applicable to an article.

The design should be applied or applicable to any article by any industrial process.

The features of the design in the finished article should appeal to and are judged solely by the eye. This implies that the design must appear and should be visible on the finished article, for which it is meant.

Any mode or principle of construction or operation or anything which is in substance a mere mechanical device, would not be a registrable design. For instance a key having its novelty only in the shape of its corrugation or bent at the portion intended to engage with levers inside the lock associated with, cannot be registered as a design under the Act.

The design should not include any Trade Mark or property mark or artistic works as defined under the Copyright Act, 1957.

Disclaimer: The above FAQ’s have been sourced from websites of the Indian Patent Office, the Indian Trade Mark Office and Indian Design Office. The answers given above to the probable questions are for explanatory purposes only and which cannot be quoted in any legal proceedings and will have no legal purpose. For any clarification and further information, you may contact us at mehta@mehtaip.com.