Patent Law in India
Patents (Amendment) Rules 2016 effective 16 May 2016
Requirements for proceeding applications into registration in India
1. Simply signed Power of Attorney (POA). The duly executed PoA needs to be submitted at Indian Patent Office subsequent to filing as well, latest within 3 months of Indian Filing Date.
2. Assignment Deed Notarized: (signed by the Inventor(s)) needs to be submitted at Indian Patent Office subsequent to filing as well, latest within 6 months of Indian Filing Date.
3. Specification/Drawings: in Word format along with the Original Translation Verification Certificate [required only when the PCT Application is not in English]
4. Certified Priority Document: In case of the convention Applications.
Patent Registration Procedure in India
1. PCT National Phase at Indian Patent Office needs to be filed within 31 months from the Priority Date.
2. Request for Examination: to be filed within 48 months from priority.
Formalities check will apply.
Publication four (4) months.
Pre-Grant: After publication of the application and any time before the grant of patent
Post-Grant: One year from the date of publication of grant
On preparation and filing of Request for Examination (this usually is attended after the usual publication of the application after 18 months from priority date of filing but within 48 months from priority date of filing).
* For Applications other than National Phase of PCT International Application: It is possible to expedite the grant by filing a special request for early publication of an application before 18 months in case of a filing in India other than through the National Phase of PCT and immediately following with a request for examination.
* You can file a Request an expedited examination of the Application alongwith the National Phase entry in India (which is due within 31 months from priority date )
On receiving Examination Report and attending to objections raised by the Patent Office to obtain the grant of the patent (this is applicable after the issuance of the First Examination Report and on subsequent office actions which have to be attended within 12 months from the date of the First Examination Report to obtain grant)
* Search and Examination: Indian patent office conducts Substantive Examination on its own.
(Usually it is received about 2-3 of official actions during prosecution of application)
It is possible an extension of time to file Reply to Office Action on a patent application for a maximum period of 3 months.
For belated submission of corresponding foreign patent applications outside India after six months of the filing of the corresponding foreign application.
Every year starting from the third year
For attending to Post Grant formalities (this is applicable after grant of the patent and to maintain the patent in force).
Restoration of lapsed patent
Within 18 months from the date of lapse.
National Phase Entry : 31 months from the date of priority
Request for Examination : 48 months from the date of priority
Putting in order for grant : 6 months from date of issuance of First Examination Report to comply with any objections of the report.
* A further extension of time of 3 months is available.
The timeframe for patent registration in India from filing to grant is about 3 - 4 years.
Non-patentable subject matter
* Frivolous or contrary to well established natural laws Invention against public order
* Discovery of a scientific principle or formulation of an abstract theory
* Discovery of new form of a known substance which does not result in enhancement of any efficacy, any new property or new use for a known substance or mere new use of a known process, machine or apparatus
* Substance obtained by mere admixture
* Mere arrangement or re-arrangement or duplication of known devices
* Method of agriculture or horticulture
* Process for medicinal, surgical, curative, prophylactic, diagnostic, therapeutic or other treatment of human beings or animals
* Plants and animals in whole or any part thereof other than micro-organisms
* A computer program per se, other than its technical application to industry
* A mathematical method or business method, algorithms
* A literary, dramatic, musical or artistic work or any other aesthetic creation
* Scheme or rule or method of performing mental act or method of playing game
* Topography of integrated circuits
* Traditional knowledge
* A presentation of information
* Invention relating to atomic energy and inventions prejudicial to the interest of security of India.
Trademark Law in India
* Legal basis is the Trademark Act of 1999, which came into force on September 15, 2003 and was subsequently amended by the Trademarks (Amendment) Act, 2010.
The Indian Trademark law follows not only the codified law, but also common law principles.
The Madrid Protocol came into effect with respect to India on July 8, 2013.
* As per section 18 (1) of the Trade Marks Act 1999, any person claiming to be the proprietor of a trade mark used or proposed to be used by him, who is desirous of registering it, shall apply in writing to the Registrar in the prescribed manner for the registration of his trade mark.
* As per the recent Trade Marks Practice (namely Rule 25 of the Trade Marks Rules 2017) it is required that
(1) An application to register a trademark shall, unless the trademark is proposed to be used, contain a statement of the period during which, and the person by whom it has been used in respect of all the goods or services mentioned in the application.
(2) In case, the use of the trademark is claimed prior to the date of application the applicant shall file an affidavit testifying to such use along with supporting documents.
In case of a "proposed to be used" application, actual use per se is not required for obtaining registration of the mark in India.
* Trademark protection is obtained by registration. An unregistered trademark may be protected under common law, owing to use and reputation and goodwill garnered through such use.
Nice classification, 11th edition. Multiple-class applications are possible.
Information and Documents required
a) Name, address and legal status of the applicant;
b) Date of first use (dd/mm/yyyy) in commerce in India or whether to file the application on intent to use basis; (Please note that in case the application is to be filed on based on use, then an affidavit of use is required to be submitted at the time of filing the application).
c) Mark: If logo then pdf/jpeg format
d) Details of specification of goods and services; Classes 1 to 45.
e) Power of Attorney (POA) simply signed. Company with seal/stamp, affix thereupon (if apply).
Trademark Registration Procedure in India
Trademark Search: All trademarks are listed on the Trademark Registry. A trademark search is done in this database available at the Trademark. Registry to check whether there exists any same/ similar trademark. The search takes a minimum of 4 hours to a day.
Filing Trademark Application and Issuance of Official Receipt Once it is found out that the proposed trademark does not conflict with any other trademarks available at the Registry, a trademark application is filed at the Trademark Office. As soon as the trademark application is filed, an official receipt is issued. These procedures would take 1 or 2 days.
After filing, each application is examined by the Registrar and an Examination Report is sent. It might take 1-2 months time to receive the Examination Report. The Registrar might accept the trademark absolutely, conditionally or object. If the Registrar accepts the trademark unconditionally, the trademark is published in the Trademark Journal.
If the Registrar objects or wants fulfillment of certain conditions, a Response is sought from the Applicant within 1 month. After the filing of the Response, if the same is accepted, the Trademark proceeds for publication in the Trademark Journal. If the Response is not accepted, a hearing will be fixed. At the hearing, the Registrar may allow for the registration or reject it absolutely. If the Registrar allows, the Trademark proceeds for publication in the Trademark Journal.
The step of Publication is present in the Trademark Procedure so that anyone from the. public who has objections to the filing of the proposed trademark can present his objections. The time limit for objection is 4 months. If there is no opposition, the Trademark is registered. If anyone opposes, counter-statement and evidence are filed and a hearing at the TM Office occurs, wherein the Registrar hears to the parties and allows/refuses the registration of the trademark.
After registration, a registration certification is issued by the TM Office under its seal.
At present, after filing the application with the Indian Trade Marks Registry takes it around 7 to 8 months for obtaining registration in case no serious objection is raised by the Registry, depending on the Registry’s backlog. Registration relates back to the date of filing.
A registered trademark needs to be renewed after every 10 years.
Remarks about the trademark registration process in India
The application is filed at the Trade Marks Registry.
The application process includes a formal examination, an examination of distinctiveness and an examination as to prior conflicting trademarks. Signs not deemed distinctive in the examination can be registered if distinctiveness has been acquired by use. The Registrar may accept or refuse the application subject to absolute or relative grounds of refusal.