6 August 2005 © MarkPatent.Org 1 IP - Fostering the Globalization potential By Dr. Rajeshkumar H....

6 August 2005 © MarkPatent.Org 1

IP - Fostering the Globalization potential

By Dr. Rajeshkumar H. Acharya

6 August 20056 August 2005 © MarkPatent.Org© MarkPatent.Org 22

INTELLECTUAL PROPERTY INTELLECTUAL PROPERTY

ENHANCE THE MARKET VALUESENHANCE THE MARKET VALUES

Generate an income through the licensing, Generate an income through the licensing, sale, or commercialization sale, or commercialization

Enhance the value or worth of companyEnhance the value or worth of company In the event of a sale, merger or acquisition, IP In the event of a sale, merger or acquisition, IP

assets may significantly raise the value of your assets may significantly raise the value of your company company


DIFFERENT IP RIGHTSDIFFERENT IP RIGHTS

Patents: innovative products and processPatents: innovative products and process Trademarks: for brand identity- of goods and services Trademarks: for brand identity- of goods and services

allowing distinctions to be made between different allowing distinctions to be made between different traderstraders

Industrial design rights: Creative designs, including Industrial design rights: Creative designs, including textile designstextile designs

Copy right: Cultural, artistic and literary works also Copy right: Cultural, artistic and literary works also for computer software and compilation of datafor computer software and compilation of data

Continue…Continue…


……

Layout-designs or topographies of integrated circuits: Layout-designs or topographies of integrated circuits:

for microchipfor microchip Geographical indication: for goods of given quality or Geographical indication: for goods of given quality or

reputation attributable to the geographical originreputation attributable to the geographical origin Protection of undisclosed information of commercial Protection of undisclosed information of commercial

value: Trade secretsvalue: Trade secrets


PATENTPATENT

A patent is an excusive right granted for A patent is an excusive right granted for an invention, which is a product or a an invention, which is a product or a process that provides a new way of doing process that provides a new way of doing something, or offers a new technical something, or offers a new technical solution to a problem.solution to a problem.


REASONS FOR PATENTING INVENTIONSREASONS FOR PATENTING INVENTIONS

Provide exclusive rights Provide exclusive rights Strong market position Strong market position Higher returns on investments Higher returns on investments Opportunity to licence or sell the invention Opportunity to licence or sell the invention Increase in negotiating power Increase in negotiating power Positive image for your company Positive image for your company


PATENTABILITY OF INVENTIONPATENTABILITY OF INVENTION

Novelty Novelty Inventive step Inventive step Industrial applicabilityIndustrial applicability

Advisable to go for PATENT in early stageAdvisable to go for PATENT in early stage


NON PATENTABLE INVENTIONSNON PATENTABLE INVENTIONS

invention which is frivolous invention which is frivolous contrary public order or morality or which causes contrary public order or morality or which causes

serious prejudice to human, animal or plant life or serious prejudice to human, animal or plant life or health or to the environmenthealth or to the environment

scientific principle or discoveryscientific principle or discovery new property or new use for a known substance new property or new use for a known substance AdmixtureAdmixture



……

arrangement or re-arrangement or duplication arrangement or re-arrangement or duplication method of agriculture or horticulture method of agriculture or horticulture process for the medicinal, surgical, curative, process for the medicinal, surgical, curative,

prophylactic, diagnostic, therapeuticprophylactic, diagnostic, therapeutic plants and animals - other than microorganisms plants and animals - other than microorganisms mathematical or business method or a computer mathematical or business method or a computer

program program



…… artistic work or any other aesthetic creationartistic work or any other aesthetic creation scheme or rule or method of performing mental actscheme or rule or method of performing mental act presentation of informationpresentation of information topography of integrated circuits topography of integrated circuits traditional knowledge traditional knowledge invention relating to atomic energyinvention relating to atomic energy


TYPES OF PATENT APPLICATIONTYPES OF PATENT APPLICATION

Application for ordinary Patent Application for ordinary Patent

(i) Provisional specification (i) Provisional specification

(ii) Complete specification (ii) Complete specification Patent of Addition Patent of Addition Divisional Application Divisional Application Convention Application Convention Application Application under PCT Application under PCT


ATTACHMENTS WITH THE ATTACHMENTS WITH THE APPLICATIONAPPLICATION

Application for grant of a patent on Form-1 (3 Copies) Application for grant of a patent on Form-1 (3 Copies) Provisional/Complete Specification on Form- 2 (3 Copies) Provisional/Complete Specification on Form- 2 (3 Copies) Drawing (3 Copies) Drawing (3 Copies) Abstract (3 Copies) Abstract (3 Copies) Statement and Undertaking on Form 3 (3 Copies) Statement and Undertaking on Form 3 (3 Copies) Priority document(s) (if priority date is claimed) in case of Priority document(s) (if priority date is claimed) in case of

convention application. convention application. Declaration as Inventorship on Form 5 (3 Copies) Declaration as Inventorship on Form 5 (3 Copies) Power of Authority on Form 26 (if filed through Patent Agent)Power of Authority on Form 26 (if filed through Patent Agent) Sequence listing in electronic form Sequence listing in electronic form Fee (Cash/Cheque/Draft) Fee (Cash/Cheque/Draft)


GENERAL INFORMATION GENERAL INFORMATION REQUIREDREQUIRED TO FILL FORMS TO FILL FORMS

Name (s), Address (es) and nationality (ies) of the Name (s), Address (es) and nationality (ies) of the Applicant (s)Applicant (s)

Name (s), Address (es), and Nationality (ies) of the Name (s), Address (es), and Nationality (ies) of the Inventor (s)Inventor (s)

If the Applicant is not the inventor:If the Applicant is not the inventor: Relevant information explaining how the Applicant acquired Relevant information explaining how the Applicant acquired

the right to the invention for our preparation of a Statement the right to the invention for our preparation of a Statement which has to be filed with the Patent office.which has to be filed with the Patent office.

e.g. The Applicant is the assignee of the invention or The e.g. The Applicant is the assignee of the invention or The applicant the employer of the inventor etc.applicant the employer of the inventor etc.


CONTENTS OF COMPLETE CONTENTS OF COMPLETE SPECIFICATIONSPECIFICATION

TitleTitle: It should indicate the subject matter to which the : It should indicate the subject matter to which the invention relates.invention relates.

The State of Prior ArtThe State of Prior Art: : It should indicate the status of the It should indicate the status of the technology in the field of invention with reference to technology in the field of invention with reference to experiments going on in the field, patents and pending patent experiments going on in the field, patents and pending patent applications.applications.

Free patent search tools that can be used to perform these Free patent search tools that can be used to perform these searches are:searches are:



……

>>The Intellectual Project Digital Library: of World The Intellectual Project Digital Library: of World Intellectual Property OrganizationIntellectual Property Organization

> The US Patent and Trademark Office Patent Database> The US Patent and Trademark Office Patent Database

DescriptionDescription: It contains fully and particularly describes the : It contains fully and particularly describes the invention and itsinvention and its operation or use and the method by which it operation or use and the method by which it is to be performed.is to be performed.

ClaimsClaims : : The claim defines boundaries of the legal protection The claim defines boundaries of the legal protection sought by the patent. Its object is to define clearly with sought by the patent. Its object is to define clearly with conciseness, precision and accuracy the monopoly claimed.conciseness, precision and accuracy the monopoly claimed.



…… AbstractAbstract: It should not be more than 150 words. It should : It should not be more than 150 words. It should

contain a concise summary of the matter contained in the contain a concise summary of the matter contained in the specification, indicate the technical field, technical problem its specification, indicate the technical field, technical problem its solution and the use of the invention. If it contains drawings it solution and the use of the invention. If it contains drawings it must be illustrated in the abstract.must be illustrated in the abstract.

DrawingsDrawings: No special illustration of drawings required but it : No special illustration of drawings required but it should mention in the specification itself.should mention in the specification itself.

Biological materialBiological material: If biological material is mention in the : If biological material is mention in the specification and there is a requirement for deposition specification and there is a requirement for deposition biological material than it should deposit at depository biological material than it should deposit at depository institution. The name, address of the depository institution and institution. The name, address of the depository institution and the date and number of the deposits of the material at the the date and number of the deposits of the material at the institution should be mentioned in the specification.institution should be mentioned in the specification.


MARGIN REQUIREMENTS FOR MARGIN REQUIREMENTS FOR TEXTTEXT


MARGIN REQUIREMENTS FOR MARGIN REQUIREMENTS FOR DRAWINGSDRAWINGS


PROCEDURE AFTER FILING PATENT PROCEDURE AFTER FILING PATENT APPLICATION TILL GRANTAPPLICATION TILL GRANT

Filing of patent applicationFiling of patent application

If applicant wishes earlier publication then he may file If applicant wishes earlier publication then he may file Request for publication before eighteen months from Request for publication before eighteen months from the date of filing of application or the date of priority the date of filing of application or the date of priority

(not mandatory) (not mandatory)

Publication of Patent ApplicationPublication of Patent ApplicationContinue…Continue…


……

Request for examination after publication of the Request for examination after publication of the application should be made within 36 months from application should be made within 36 months from

the date of priority of the application or from the date the date of priority of the application or from the date of filing of applicationof filing of application

Issuance of Examination ReportIssuance of Examination Report

Reply on examination report should be given within 6 Reply on examination report should be given within 6

months from the date of first statement of objection is months from the date of first statement of objection is issued to the applicant to comply with the issued to the applicant to comply with the

requirementsrequirementsContinue…Continue…


……

Grant of PatentGrant of Patent

Renewal of PatentRenewal of Patent


OPPOSITIONOPPOSITION

Pre-grant oppositionPre-grant opposition: : within three months within three months from the date of publication or before the grant from the date of publication or before the grant of patent of patent

Post-Grant Opposition: before the expiry of a Post-Grant Opposition: before the expiry of a period of one year from the date of publication period of one year from the date of publication of grant of patent of grant of patent


INDIAN PATENT APPLICATIONS FEESINDIAN PATENT APPLICATIONS FEES

Sr. No.

On what payable From No

Natural Person (s)

Fees for other than natural Person(s)

1 Application for Patent*For each sheet of specification in addition to 30 *For each claim in addition to 10

1 Rs. 1000/- Rs. 100/-

Rs. 200/-

Rs. 4000/-Rs. 400/-

Rs. 800/-

2 Examination 18 Rs. 2500/- Rs. 10000/-

3 Request for Publication 9 Rs. 2500/- Rs. 10000/-


TERM OF PATENT TERM OF PATENT

The term of every patent shall be 20 years The term of every patent shall be 20 years from the date of filing of the application for from the date of filing of the application for the Patent.the Patent.

Renewal fees to be paid at every respective Renewal fees to be paid at every respective years.years.


INDIAN PATENT RENEWAL FEESINDIAN PATENT RENEWAL FEES

Sr. No.

On what payable For Natural Person(s)(In rupees)

For other than Natural Person(s) (In rupees)

1 Renewal fee for 3rd year – 6th year 500 (for each year) 2,000 (for each year)

2 Renewal fee for 7th year – 10th year 1,500 (for each year)

6,000 (for each year)

3 Renewal fee for 11th year – 15th year



4 Renewal fee for 16th year – 20th year




EXCLUSIVE MARKETING RIGHTSEXCLUSIVE MARKETING RIGHTS

EMR provisions abolishedEMR provisions abolished

Pending EMR applications to be treated as Pending EMR applications to be treated as examination request. examination request.

Patent applications based on which EMRs Patent applications based on which EMRs granted to be examined immediately.granted to be examined immediately.


COMPULSORY LICENCECOMPULSORY LICENCE

Controller can grant compulsory license if reasonable Controller can grant compulsory license if reasonable requirements of the public with respect to the requirements of the public with respect to the patented invention have not been satisfied, or the patented invention have not been satisfied, or the patented invention not available at a reasonably patented invention not available at a reasonably affordable price or the patented invention is not affordable price or the patented invention is not worked in the territory of India. Also compulsory worked in the territory of India. Also compulsory licence has been grant to pharmaceutical licence has been grant to pharmaceutical manufacturers for export to countries having manufacturers for export to countries having insufficient or no manufacturing capabilities in the insufficient or no manufacturing capabilities in the pharmaceuticals sector. pharmaceuticals sector.


IF DO NOT PATENT IF DO NOT PATENT

Somebody else might patent themSomebody else might patent them Competitors will take advantage Competitors will take advantage Possibilities to license, sell or transfer Possibilities to license, sell or transfer

technology will be affectedtechnology will be affected


TRADE MARKS TRADE MARKS

A Trade Mark, (popularly known as Brand A Trade Mark, (popularly known as Brand name), is an identification symbol which may name), is an identification symbol which may be a device, a label or numeral etc. or a be a device, a label or numeral etc. or a combination thereof used in the course of trade combination thereof used in the course of trade to enable the consumer to distinguish it from to enable the consumer to distinguish it from similar goods.similar goods.


PROCEDURE FOR REGISTATION PROCEDURE FOR REGISTATION OF TRADE MARKSOF TRADE MARKS

Search (Not Mandatory)Search (Not Mandatory)[Making a request on form TM-55[Making a request on form TM-55

Also further a request can be made on Form TM-54]Also further a request can be made on Form TM-54]

Filing an ApplicationFiling an Application

Issuance of Examination reportIssuance of Examination report

Comply within one month form the receipt of the examination Comply within one month form the receipt of the examination reportreport



……

AcceptanceAcceptance

Advertised in the Trade Marks JournalAdvertised in the Trade Marks Journal

Notice of Opposition- within three months or within one month Notice of Opposition- within three months or within one month in thereafter for which extension request is to be madein thereafter for which extension request is to be made

Entered in the Trade Marks RegisterEntered in the Trade Marks Register

Registration certificate issuedRegistration certificate issued

Renewal (Every Ten Years)Renewal (Every Ten Years)


TERM OF TRADE MARKSTERM OF TRADE MARKS: Perpetual: Perpetual

CONVENTIONAL APPLICATIONCONVENTIONAL APPLICATION:: Claim priority date in India Claim priority date in India Within six months from date of filing an Within six months from date of filing an

application in convention country application in convention country File the priority documents along with the File the priority documents along with the

certified copy of translation certified copy of translation


BENEFITS OF REGISTERING BENEFITS OF REGISTERING A TRADE MARKSA TRADE MARKS

Customers to distinguish products or services Customers to distinguish products or services Seen as a guarantee of consistent quality Seen as a guarantee of consistent quality Easiness in marketing and advertising abroadEasiness in marketing and advertising abroad Legal action against infringement and passing Legal action against infringement and passing

off.off.


INDUSTRIAL DESIGNSINDUSTRIAL DESIGNS

A design of an article may be registered if the feature A design of an article may be registered if the feature of shape, configuration, pattern or ornament given to of shape, configuration, pattern or ornament given to an article by any industrial process or means, whether an article by any industrial process or means, whether manual, mechanical or chemical, separate or combine manual, mechanical or chemical, separate or combine manual, mechanical or chemical, separate or manual, mechanical or chemical, separate or combined, which in the finished article appeal to and combined, which in the finished article appeal to and are judge solely by the eye. The principle or the mode are judge solely by the eye. The principle or the mode of construction of the article or mere mechanical of construction of the article or mere mechanical contrivance cannot be registered as designs. Trade contrivance cannot be registered as designs. Trade Marks and Trade Names are also excluded from the Marks and Trade Names are also excluded from the scope of design.scope of design.


PROCEDURE FOR THE REGISTRATION PROCEDURE FOR THE REGISTRATION OF INDUSTRIAL DESIGNOF INDUSTRIAL DESIGN

Search (Not Mandatory)Search (Not Mandatory)[Two types of search: 1. when registration number is supplied [Two types of search: 1. when registration number is supplied

and 2. when registration number is not supplied by the and 2. when registration number is not supplied by the applicant]applicant]

Filing an ApplicationFiling an Application

ExaminationExamination

Reply should be given within 3 months from the date of official Reply should be given within 3 months from the date of official

communication of objection to the applicant or his agentcommunication of objection to the applicant or his agentContinue…Continue…


[The period for removal of the objection shall not exceed the time [The period for removal of the objection shall not exceed the time period of six months form the date of filing of the application]period of six months form the date of filing of the application]

On AcceptanceOn Acceptance

Registration and publication of the particulars of application and Registration and publication of the particulars of application and

representation of the article to which the design has been representation of the article to which the design has been applied in the Official Gazetteapplied in the Official Gazette

RenewalRenewal


TERM OF INDUSTRIAL DESIGNSTERM OF INDUSTRIAL DESIGNS

Initially ten years form the date of registration, Initially ten years form the date of registration, but in cases where claim to priority has been but in cases where claim to priority has been allowed the duration is ten years from the allowed the duration is ten years from the priority date. Initial period of registration may priority date. Initial period of registration may be extended by further 5 years only if an be extended by further 5 years only if an application made before the expiry of the said application made before the expiry of the said initial period. initial period.


BENEFITS FOR THE REGISTRATION BENEFITS FOR THE REGISTRATION OF INDUSTRIAL DESIGNSOF INDUSTRIAL DESIGNS

Enables licensing and commercialization Enables licensing and commercialization Prevent the unauthorized use Prevent the unauthorized use Seek monetary compensation for losses Seek monetary compensation for losses

incurred incurred


COPY RIGHT COPY RIGHT

Copy right is a right given to creators of Copy right is a right given to creators of literary, dramatic, musical and artistic works literary, dramatic, musical and artistic works and producers of cinematograph films and and producers of cinematograph films and sound recordings to decide on its use. It sound recordings to decide on its use. It provides rights of reproduction, public provides rights of reproduction, public performance, recordings broadcasting and performance, recordings broadcasting and translation or adaptation of the work. translation or adaptation of the work.


PROCEDURE FOR THE PROCEDURE FOR THE REGISTRATION OF COPY RIGHTREGISTRATION OF COPY RIGHT

Application for NOC on form TM-60 before the T.M. Application for NOC on form TM-60 before the T.M. Registry [If it is artistic work]Registry [If it is artistic work]

Examination report, Compliance , hearingExamination report, Compliance , hearing

Receiving NOC from T. M. RegistryReceiving NOC from T. M. Registry

Filing of copy right application before the Copy Right Filing of copy right application before the Copy Right

Office, New DelhiOffice, New DelhiContinue…Continue…


……

Receiving Diary No.Receiving Diary No.

Examination report, Acceptance, PublicationExamination report, Acceptance, Publication

CertificateCertificate

No renewalNo renewal


TERM OF COPY RIGHTTERM OF COPY RIGHT : For 60 years : For 60 years

BENEFITS OF COPY RIGHTSBENEFITS OF COPY RIGHTS Gives recognition and economic rewards. Gives recognition and economic rewards. No unauthorized copying or piracy. No unauthorized copying or piracy. Increase access to and enhances the Increase access to and enhances the

enjoyment of culture, knowledge, and enjoyment of culture, knowledge, and entertainment all over the world.entertainment all over the world.


GEOGRAPHICAL INDICATIONGEOGRAPHICAL INDICATION

A geographical indication is a sign used on A geographical indication is a sign used on goods that have a special quality or goods that have a special quality or characteristics or reputation based upon the characteristics or reputation based upon the climate or production characteristic unique to climate or production characteristic unique to the geographical location.the geographical location.


PROCEDURE FOR REGISTRATION OF GEOGRAPHICAL INDICATIONPROCEDURE FOR REGISTRATION OF GEOGRAPHICAL INDICATION Filing an applicationFiling an applicationExaminationExaminationAcceptanceAcceptanceAdvertised in GI Journal Advertised in GI Journal Opposition Opposition (within(within Allowed or Allowed or Appeal Appeal

3 months or 1 month3 months or 1 month Refused To IPAB Refused To IPAB in aggregate from dt.in aggregate from dt. of available journal)of available journal)

AcceptanceAcceptance Of GIOf GI Enter in GI Register Particulars of regd.Enter in GI Register Particulars of regd. GI entered in Part AGI entered in Part A Of the registerOf the register

Particulars of regd.Particulars of regd. Authorized user entered Authorized user entered in Part B of the registerin Part B of the register

Registration certificateRegistration certificate


EXAMPLES EXAMPLES

Roquefort for cheese produced in FranceRoquefort for cheese produced in France Swiss WatchesSwiss Watches Basmati RiceBasmati Rice Kanchipurm Silk SareeKanchipurm Silk Saree Nagpur OrangeNagpur Orange Kolhapuri ChappalKolhapuri Chappal Alphanso MangoAlphanso Mango Dajeeling TeaDajeeling Tea


TERM OF GITERM OF GI

The registration of GI is for a period of ten The registration of GI is for a period of ten yearsyears

Renewal is possible for further periods of 10 Renewal is possible for further periods of 10 yearsyears


BENEFITS OF REGISTRATION OF GIBENEFITS OF REGISTRATION OF GI

Legal protectionLegal protection Prevent unauthorized use of registered Prevent unauthorized use of registered

geographical indicationgeographical indication Increase exports of Indian geographical Increase exports of Indian geographical

indications by providing legal protectionindications by providing legal protection It promotes economic prosperity of producers It promotes economic prosperity of producers


ThankThank You You

6 August 2005 © MarkPatent.Org 1 IP - Fostering the Globalization potential By Dr. Rajeshkumar H....

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