IPR overview

Patents Trademarks Service Mark Copyrights Designs Geographical Indications Biological Diversity Other IPR o Plant Varieties o Trade Secrets/Confidential Info. o Data Protection o Traditional Knowledge o IC Layouts o Domain Name International Treaties o Paris Convention, as of December 7, 1998. o Patent Cooperation Treaty (PCT), as of December 7, 1998 o TRIPS Agreement (WTO), as of January 1, 1995.

Patents India: Patent Law & Application

A Patent is a legal monopoly, which is granted for a limited time by a country to the owner of an invention. Merely to have a patent does not give the owner the rights to use or exploit the patented invention. That right may still be affected by other laws such as the health and safety regulation, or the food and drugs regulation or even by other patents. A patent, in the eyes of the law, is a property right and it can be given away, inherited, sold, licensed and can even be abandoned. As it is conferred by the government, the government in certain cases, even after the grant or even if it has been in the meantime sold or licensed, can revoke it.

A Patent gives an inventor the right for a limited period of time to stop others from making, using, selling or importing the patented invention without the permission of the inventor. That is why a patent is called a "negative right" Patents are generally concerned with functional and technical aspects of products and processes and must fulfill specific conditions to be granted. Most patents are for incremental improvements in known technology - evolution rather than revolution. The technology does not have to be complex. Patent rights are territorial; an Indian patent does not confer any rights outside India. Patent rights last for up to 20 years in India and in most countries outside India. Depending on where you wish your patent to be in effect, you must apply to the appropriate body. In India, it is The Indian Patent Office. There are various Patent Offices around the world. Alternatively, a Patent Agent can apply on your behalf.

1. Legal Basis

The Patents Act 1970, as amended by The Patents (Amendment) Act 2005. The Patents Rules, 2003, as amended by The (Amendment) Rules 2006.

To view the Flowchart of Procedure for Filling Patent Application Click here - see attachment

2. Filing Application
Any person, even if he or she is a minor, may apply for a patent either alone or jointly with any other person. Such persons include the inventor, or his assignee or legal representative in the case of an ordinary application or, in the case of a priority application, the applicant in the convention country or his assignee or his legal representative. A corporate body cannot be named as an inventor. Foreigners and nationals not living in India need an address for service in India for this purpose. They may appoint a registered agent or representative whose address for service can be the address for service in India.

Place of filing:
An application for patent must be filed at the Patent Office branch within whose territorial jurisdiction the applicant resides or has his principal place of business or domicile. A foreign applicant must file at that Patent Office branch within whose jurisdiction his address for service is located.

Priority:
Priority can be claimed from the earliest corresponding application in a convention country, provided that the Indian application is filed within twelve months of the priority date. Multiple and partial priorities are allowed.

Specification:
A priority application must be filed with a complete specification in the first instance but a non-priority application may be filed with either a provisional specification or a complete specification. Where a provisional specification is filed in the first instance, a complete specification must be filed within twelve months. Where two or more provisional specifications have been filed, the specifications may be cognated and all the subject matter may be incorporated into a single complete specification to be lodged within twelve months of the date of the earliest filed provisional specification.

Naming of inventor(s):
As regards non-priority applications, the inventor(s) must be named in the application form. As regards priority applications, a declaration as to inventorship must be filed with the application or within a period of one month.

Information of corresponding applications in other countries:

It is necessary at the time of filing a patent application in India, to inform the Controller of the details of all corresponding applications in other countries and to

undertake to keep the Controller so informed up to the grant of the Indian application. Failure to do so could result in the refusal of the application in case it is opposed, or even revocation of a patent in proceedings before the High Court.

3. Patent Examination

Examination of application:
Both formal and substantive examinations are made by the Indian Patent Office. Examination is by request.

Procedure:
An applicant is required to meet all the objections and requirements of the Patent Office within a period of twelve months from the date of the first examination report (FER) issued by the Controller. No extension of time is permitted. If a patent application is not put in order in twelve months from the date of the FER it lapses.

Amendment of application:
An applicant may, of his own accord, apply to the Controller for amendment of his application or any document filed in respect thereof but such amendments must be filed by way of correction, explanation, or disclaimer. An applicant may also amend his application or specification at the instance of the examiner and file a separate divisional application(s) for the other invention(s) which will be accorded the date of filing of the complete specification of the original application or such later date as the Controller may fix. The divisional application must be filed prior to the grant of the parent application.

4. Patent Publication
Publication takes place 18 months from the date of the application. Urgent publication is possible on request on payment of fees. From the date of publication of the application for a patent and until the date of grant of the patent, the applicant will have the like privileges and rights as if a patent for the invention had been granted on the date of publication of the application. 11A[7]

Pre-Grant opposition of patent application :

After publication but before the date of grant, anyone may file anopposition to the grant of a patent, by way of representation

Publication of subject matter:

The grant of an application is published in the official journal and is notified therein for post Grant opposition. A patent can be revoked within one year after grant by postgrant opposition proceedings before the Controller of Patents .

Revocation of a patent:
It is possible on the grounds of prior publication anywhere in the world, public use or knowledge in India, lack of novelty with regard to the subject matter, obviousness, lack of inventiveness, ambiguity, insufficiency of description of the invention, fraud, false suggestion or representation that the person named as the inventor is not the true inventor, lack of utility, non-patentability of subject matter (e.g. food, drug or medicine per se, atomic energy, mere admixture, mere arrangement of known devices, process of testing, method of agriculture or horticulture, process of medicinal treatment), failure to furnish or falsity in material particulars of information regarding corresponding applications in other countries supplied to the Controller or that the invention is contrary to law or morality.

Annuities:
Except in the case of a patent of addition, for which no annuities are payable, annual renewal fees must be paid during the life of an Indian patent, the first of such fees falling due at the end of the second year of the life of a patent granted. Renewal fees falling due during the pendency of the application are payable within a period of three months from the date the patent is taken on record in the Register of Patents. Two or more year's renewal fees may be paid in advance if the patentee so desires. A maximum extension of six months may be obtained on payment of the prescribed penalty fees. If the renewal fee in question is not paid within the extended period available, the patent will lapse.

Restoration:
A lapsed patent may be restored if an application for restoration is made within 18 months of the date of lapsing of the patent, provided it can be shown that the lapsing of the patent was unintentional and that there was no undue delay in making the application for restoration.

Working of patents:
Every patentee and every licensee is required to furnish within three months from the end of every calendar year, a statement as to the extent to which the invention has been worked in India on a commercial scale in the preceding year. Non filing of this statement is a criminal offence.

Compulsory licenses:
After three years from the date of sealing of a patent, an interested party may apply to the Controller for the grant of a compulsory license alleging that the reasonable requirements of the public with respect to the invention have not been satisfied or that the invention is not available at a reasonable price. If the Controller is satisfied that a prima facie case for an applicant for compulsory license has been made out, he shall serve a notice on the patentees who, if they so desire, may oppose the application for compulsory license.

Marking:
It is not compulsory but advisable as otherwise damages may be difficult to recover in cases of infringement. The invention may be marked with the word Patented or Patent accompanied by the number and year of the patent.

Infringement:
An infringement suit may be instituted by a patentee or his exclusive licensee. Every ground for revocation is available as a defense and revocation can be counter claimed in infringement proceedings. The Court may grant relief in respect of a valid claim or claims even though one or more other claims in the suit may be held to be invalid. Relief may include damages and costs as awarded by the court. A suit for injunction may be instituted and damages recovered in cases where there have been groundless threats. Any person may institute a suit for declaration as to non-infringement of a patent. The onus of proof of non-infringement lies with the defendant.

5. Patents and Computer Software

It is possible to patent programs for computers which when run on a computer produce a "technical effect or includes hardware" . However, if a program does not produce a technical effect when run on a computer, it is unlikely to be patentable. A technical effect is generally an improvement in technology and needs to be in an area of technology, which is patentable. For instance, an improved program for translating between Japanese and English is not patentable because linguistics is a mental process, not a technical field. On the other hand, a program which speeds up image enhancement, may be patentable because it produces a technical improvement in a technical area. Some countries, such as the USA, which may be a large potential market for your software, have a more liberal approach to software patenting and often grant patents for software, which would be excluded in India and other countries. Deciding whether or not a particular computer program is patentable is a complex issue and advice from a Patent Agent may help to determine which is the most effective form of protection available.

Trade Mark Law in India: Trademark Application

A Trademark is any sign which can distinguish the goods and services of one trader from those of another. A sign includes words, logos, colours, slogans, three-dimensional shapes and sometimes sounds and gestures. A trademark is therefore a "badge" of trade origin. It is used as a marketing tool so that customers can recognise the product of a particular trader. To be registrable in India it must also be capable of being represented graphically, that is, in words and/or pictures.

Changes in the Indian Trade Mark Law

On February 8, 2007, India ratified its accession to the Madrid Protocol, a system for international registration of trade marks. In order to bring into force the Madrid Protocol in India, The Trade Marks (Amendment) Act, 2010 was passed on 21st September, 2010. However, the Amendment Act has not yet been implemented, i.e., the effective date for the Amendment Act to come into force has not been notified by the government. The important changes to be introduced by this Act are as follows: 1. The Trade Marks (Amendment) Act, 2010, incorporates a new chapter IV-A containing special provisions relating to international registration of trade marks. An international application may be made in India for extending the protection in the designated countries within a period of 18 months. 2. The Trade Marks (Amendment) Act, 2010, also removes the discretion of the registrar to extend the time for filing a notice of opposition of published applications and provides a uniform time limit of four months in all cases. Some of the important features of the present Trade Marks Act, 1999, which was introduced in India from September 15, 2003, are as follows: [1] Service Marks: A mechanism is available to protect marks used in the service industry. Thus businesses providing services like computer hardware and software assembly and maintenance, restaurant and hotel services, courier and transport, beauty and health care, advertising, publishing, educational and the like are now in a position to protect their names and marks. [2] Collective Marks: Marks being used by a group of companies can be protected by the group collectively. [3] Well-known marks: Marks which are deemed to be well known have been defined by the Trade Marks Registry.Such marks will enjoy greater protection. Persons will not be able to register or use marks which are imitations of well-known trademarks. [4] Enlarged scope of registration: Persons who get their marks registered for particular goods in a particular class and commence using their marks can sue and prevent other persons from (i) Using the same or similar marks even for different goods falling in other classes; (ii) Using the same or similar marks even only as part of their firm name or company name; (iii) Using the same or similar mark only in advertising or on business papers; (iv) Importing or exporting goods under the said trade mark; (v) Unauthorized oral use of the said trademark. [5] Stringent punishment: Punishment for violating a trademark right has been enhanced. The offence has now been made cognizable and wide powers have been given to the police to seize infringing goods. At the same time the power of the Courts to grant ex parte injunctions have been amplified.

[6] Appellate Board: An appellate board (IPAB) has been constituted (based in Chennai )for speedy disposal of Appeals and rectification applications. [7] Expedited procedure: Mechanisms have been set in place for expediting search and registration by paying five times the normal fee. [8] Enhanced renewal period: Registered trademarks need to be renewed every ten years. [9] License agreements do not need to be compulsorily registered. [10] Marks may include the shape of goods. [11] Marks may include a combination of colors.

1. Legal Basis

The Trade Marks Act, 1999 The Trade Marks Rules, 2002. The law is based mainly on the United Kingdom Trade Marks law and provides for the registration of trademarks which are being used, or which will be used, for certain goods to indicate a connection between them and some person who has the right to use the marks with or without any indication as to the identity of the person.

For viewing Flow-Chart of Procedure for Registration of Trademark click here

2. Filing a Trademark Registration in India

Application for registration:

An application for registration may be made by any person claiming to be the proprietor of a mark but only as regards the particular goods or service in respect of which he/she is using or proposing to use the mark. At the time of filing the application, the proprietor must have the intention to use the mark himself/herself or though a registered user.

Foreigners and nationals not living in the country:

Such persons may be recorded as being registered proprietors of trademarks but they must provide the Registry with an address for service in India, otherwise, they must appoint a registered agent or representative.

Kind of marks:

The law provides for the registration of association trademarks, certification marks, defensive marks and collective marks.

Registrability:
To be registrable, a trademark application must contain or consist of the following essential particulars:
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The name of a company, individual or firm represented in a special or particular manner; The signature of the applicant for registration or some predecessor in his/her business; An explanation with sufficient precision, a description by words of the trademark, if necessary, and depiction of the graphical representation of the trademark, which may be: One or more invented words; One or more words having no direct reference to the character or quality of the goods and not being, according to its ordinary signification, a geographical name, or a surname, or a personal name, or any common abbreviation thereof, or the name of a sect, caste or tribe in India; Any other distinctive mark. No trademark shall be registered in respect of analgin, aspirin, chloropromazine, ferrous sulphate, piperazine and its salts such as adipate, citrate and phosphate or for a new single ingredient drug first introduced in India. The Indian national flag, the name or pictorial representation of Mahatma Gandhi, Jawahar Lal Nehru, Chatrapati Shivaji, or the Prime Minister of India and the names and emblems of certain international organizations may not be registered as trade marks. In the case of portraits, the name of the person depicted must be stated.

Service marks:
Registerable in India in eleven classes(35-45)

Priority:
Can be claimed from the earliest corresponding application in a Convention country provided that application is filed in India within six months of the priority date. Multiple and partial priorities are allowed.

Classification:
The international classification of goods is used and separate applications must be filed for goods falling in different classes. Classes 1 to 34 are available for goods; and classes 35-45 are availble for services.

Territory Covered:

The trademark legislation covers the whole of the territory of India, including the States of Jammu and Kashmir and the territories of Goa, Daman, Diu, Dadra, Nagar Haveli and Pondicherry.

3. Examination

Applications are examined to ensure that they comply with the requirements of the law and that they do not conflict with marks which are already registered, or which are the subjects of earlier pending applications.

Amendments:
An application may be amended provided the amendment does not constitute a major alteration of the mark.

Ground for refusal:

Registration may be refused in respect of marks which are scandalous or obscene, which are likely to deceive, cause confusion, or offend religious susceptibilities, which are contrary to the law or morality, or which would otherwise be disentitled to protection in a court, which are accepted chemical names or which are identical to other marks for the same goods or description of goods. In the case of identical marks, registration may, however, be allowed upon proof that the mark was being used concurrently and in good faith.

Hearing:
Hearing may be sought with regard to applications which the Registrar proposes to refuse and an appeal may be made to the Intellectual Property Appellate Board against any orders issued at a hearing.

4. Granting, Protection

Opposition:
Applications which have been accepted are advertised in the Trade Marks Journal and opposition may be filed within three months of the date of advertisement; an extension of time of one month for filing opposition may be obtained upon application. The Register was formerly divided into two parts. Part A contained the marks already registered under the Trade Marks Act 1940 and all marks which were distinctive or had acquired distinctiveness (satisfactory evidence to this effect must be produced) could be registered in Part A of the Register. Part B contained marks which could not be registered in Part A or which were not distinctive but were capable of distinguishing the goods of the applicants. Since 2003 this distinction is removed. There is now only a single register.

Duration of registration:
Ten years, renewable for further periods of ten years each.

Renewal fees:
Must be paid before but not more than six months before the date of expiry of the last registration; a mark may be restored within one year from the last date of renewal upon application to the Registrar, either completely or subject to such conditions and limitations as he/she may think fit to impose. A trademark which has been removed from the Register for non-payment of renewal fees can be cited against an application for registration during a period of one year as from the date of removal.

Assignment:
A registered trademark can be assigned with or without the goodwill of the business concerned. An unregistered trade mark is not assignable without the goodwill of the business concerned except if it is used in the same business as a registered trademark and assigned to the same person and along with a registered trademark covering the same goods.

Registered user:
The Central Government can refuse the registration of a registered user if it is against the public interest or the development of industry, trade or commerce in India. Before doing so the Central Government must disclose the facts and circumstances on the basis of which it proposes to refuse the registration of a registered user and give the applicant an opportunity of a hearing.

Marking of goods:
The law does not prescribe that a registered trademark, when used by its proprietor, be described as such on the goods to which it is applied nor does it require that the proprietor identity be disclosed. Where a mark is used by a registered user, however, goods must be marked in such a way as to disclose the identity of the registered proprietor and the fact that the mark is being used by the registered user by permission of the registered proprietor. All goods imported into or manufactured or assembled in India may be required to be marked in such a way as to indicate their country of origin. Under Section 139 of the Act, the Indian Government will, from time to time, issue notifications specifying the manner in which the goods are to be marked.

Rectification for non-use:

The Register may be rectified (removal of a mark) in respect of a registered mark and one of the grounds for applying for rectification is the non-use of a mark for a period exceeding five years and one month before filing of the rectification application unless there are special circumstances excusing non-use.

Infringement:
Suits may be filed against the infringement of registered marks and in any suit, registration may be regarded as valid in all respects even years from the date of

registration. Unregistered trademarks with reputation in India or internationally wellknown trademarks, can be protected against misuse in a passing off action.

Service Mark India: Service Mark Application & Litigation

The Trade Marks Act, 1999 has come into force from the 15th of September 2003. An important feature of the Act is the introduction of the registration of Service Marks in India. Previously, Service Mark registration in India was not allowed. Protection of service marks was available only under the common Law. From September 2003, it has now become possible to separately register and therefore statutorily protect Service Marks. What are Service Marks? Service Marks are marks used in any form of service business where actual goods under that mark are not traded. For instance, a Hotel or a restaurant is a service: under the marks Taj, Oberoi, Sheraton, Meridian, Sher-e-Punjab, Khyber, Chinese Room, no goods are traded, but services are offered and purchased, these marks are statutorily protected under the Act. Similarly, marks for software services or business process outsourcing services, or health, insurance, repair services or airlines services or educational services can be protected by registration. Goods and Services are classified under various classes. Under the old trademark law, Only 34 classes for goods were available. Under the Act of 99, 11 more classes have been created for protection of service marks, i.e. classes 35 to 45. The services under these classes are classified as follows: Class 35: Advertising; business management; business administration; office functions Class 36: Insurance; financial affairs; monetary affairs; real estate affairs. Class 37: Building construction; repair; installation services Class 38: Telecommunications. Class 39: Transport; packaging & storage of goods; travel arrangement Class 40: Treatment of materials

Class 41: Education; providing of training; entertainment; sporting & cultural activities Class 42: Scientific & technological services, research & design; industrial analysis & research services; design & development of computer hardware & software. Class 43 Services for providing food & drink; temporary accommodation. Class 44: Medical services; veterinary services; hygienic and beauty care for human beings or animals; agriculture, horticulture and forestry services. Class 45: Legal services; security services for the protecting property and individuals; personal as social services rendered by others to meet the needs of individuals. These are general classes. Each class has hundreds of entries for services falling under a class. Thus, for instance, Compilation of information into computer databases is a service falling in class 35 but a service for providing financial information is a service falling in class 36. Again, a service providing Installation, maintenance and repair of Computer hardware falls in class 37 but Installation and Maintenance of Computer software falls in class 42. Class 43 covers hotel and restaurant services. Medical clinics and Beauty parlors fall in class 44 and horoscope casting in class 45.

Copyright Registration: Copyright Law & Application in India

Copyright Registration in India gives the creators of materials, such as literature, art, music, sound recordings, films and broadcasts, economic rights enabling them to control the use of their material in a number of ways, such as by making copies, issuing copies to the public, performing in public, broadcasting and use on-line. It also gives moral rights to be identified as the creator of certain kinds of material and to object to its distortion or its mutilation. (Material protected by copyright is termed a "work".) However, copyright does not protect ideas, names or titles. The purpose of copyright law in India is to allow copyright registrants to gain economic rewards for their efforts and to encourage future creativity and the development of new material which benefits us all. Copyright material is usually the result of creative skills and/or significant labour and/or investment and without protection, it would often be very easy for others to exploit material without paying the creator. Most uses of copyright material therefore require permission from

the copyright owner. However there are exceptions to copyright, so that some minor uses may not result in copyright infringements. Copyright protection is automatic as soon as there is a record in any form of the material that has been created. Under the Indian Copyright Act there is a provision to register copyright although this is voluntary.

Owner of Copyright

In the case of a literary, dramatic, musical or artistic work, the general rule is that the author, i.e. the person who created the work, is the first owner of the economic rights under copyright. However, where such a work is made in the course of employment, the employer is the first owner of these rights, unless an agreement to the contrary has been made with the author. In the case of a film, the principal director and the film producer are joint authors and first owners of the economic rights and similar provisions as referred to above apply where the director is employed. In the case of a sound recording the record producer is the author and first owner of copyright; in the case of a broadcast, the broadcaster; and in case of a published edition, the publisher.

Copyright is, however, a form of property which, like physical property, can be bought or sold, inherited or otherwise transferred, wholly or in part. So, some or all of the economic rights may subsequently belong to someone other than the first owner. In contrast, the moral rights accorded to authors of literary, dramatic, musical and artistic works and film directors remain with the author or director or pass to his or her heirs on death. Copyright in material produced by a Government department belongs to the Government of India. Copyright owners generally have the right to authorise or prohibit any of the following things in relation to their works:

Copying of the work in any way eg. photocopying / reproducing a printed page by handwriting, typing or scanning into a computer / taping live or recorded music. Issuing copies of the work to the public. Public delivery of lectures or speeches etc. Broadcasting of the work, audio / video or including it in a cable programme. Making an adaptation of the work such as by translating a literary or dramatic work, transcribing a musical work and converting a computer program into a different computer language or code.

Copyright is infringed when any of the above acts are done without authorisation, whether directly or indirectly and whether the whole or a substantial part of a work, unless what is done falls within the scope of exceptions to copyright permitting certain minor uses of material. There are a number of exceptions to copyright that allow limited use of copyright works without the permission of the copyright owner. For example, limited use of works may be possible for research and private study, criticism or review, reporting current events, judicial

proceedings, teaching in schools and other educational establishments and not for profit playing of sound recordings. But if you are copying large amounts of material and/or making multiple copies then you may still need permission. Also where a copyright exception covers publication of excerpts from a copyright work, it is generally necessary to include an acknowledgement. Sometimes more than one exception may apply to the use you are thinking of. Exceptions to copyright do not generally give you rights to use the copyright material; they just state that certain activities do not infringe copyright. So it is possible that an exception could be overridden by a contract you have signed limiting your ability to do things that would otherwise fall within the scope of an exception. It is important to remember that just buying or owning the original or a copy of a copyright work does not give you the permission to use it the way you wish. For example, buying a copy of a book, CD, video, computer program etc does not necessarily give you the right to make copies (even for private use), play or show them in public. Other everyday uses of copyright material, such as photocopying, scanning, downloading from a CD-ROM or on-line database, all involve copying the work. So, permission is generally needed. Also, use going beyond an agreed licence will require further permission.

Design Registration in India: Patenting a Design

Design means only the features of shape, configuration, pattern or ornament or composition of lines or color 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 of construction or any thing which is in substance a mere mechanical device and does not include any trade mark, as defined in clause (v) of sub-section of Section 2 of the Trade and Merchandise Marks Act, 1958, property mark or artistic works as defined under Section 2(c) of the Copyright Act, 1957. In India, designs are protected by two legal rights:

Registered designs and Artistic copyright

Design registration in India gives the owner, a monopoly on his or her product, i.e. the right for a limited period to stop others from making, using or selling the product without their permission and is additional to any design right or copyright protection that may exist automatically in the design.

1. Legal Basis

Designs Act, 2000

Designs Rules, 2001

2. 'Article' under the Designs Act, 2000

Under the Designs Act, 2000 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.

3. 'Set of article' under Designs Act 2000

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.

4. 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. Practical example: The known shape of "Kutub Minar" when applied to a cigarette holder the same is registrable. However, if the design for which application is made does not involve any real mental activity for conception, then registration may not be considered. The design should relate to features of shape, configuration, pattern or ornamentation applied or applicable to an article. Thus, designs of industrial plans, layouts and installations are not registerable under the Act. The design should be applied or applicable to any article by any industrial process. Normally, designs of artistic nature like painting, sculptures and the like which are not produced in bulk by any industrial process are excluded from registration under the Act. 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; Thus, any design in the inside arrangement of a box, money purse or almirah may not be considered for showing such articles in the open state, as those articles are generally put in the market in the closed state. Any mode or principle of construction or operation or any thing which is in substance a mere mechanical device, would not be registerable design. For instance, a key having its novelty only in the shape of its corrugation or bend at the portion intended to engage with levers inside the lock associated with, cannot be registered as a design under the Act. However, when any design suggests any mode or: principle of construction or mechanical or other action of a mechanism, a suitable disclaimer in respect thereof is required to be inserted on its representation, provided there are other registerable features in the design.

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

To view the Flow chart for Registration of design Click Here

5. Applying for Registration of Design

The application for registration of design can be filed by the applicant himself/herself or through a professional person (i.e. patent agent, legal practitioner). However, for the applicants not being residents of India, an agent residing in India has to be employed.

6. Place of applying for Registration of Design

Any person who desires to register a design shall submit the following documents to the Controller of Designs, The Patent Office at Kolkata, or at any of its branch offices at New Delhi, Mumbai and Chennai. For address and contact numbers, click here

7. Duration of the Registration of a Design and its extension

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 a further period of 5 years on an application made in Form-3 accompanied by a fee of Rs. 2,000/- to the Controller before the expiry of the said initial period of Copyright. The proprietor of a design may make application for such extension even as soon as the design is registered.

8. Cancellation of Registration of a Design

The registration of a design may be cancelled at any time after the registration of the design, on a petition for cancellation in form 8, with a fee of Rs. 1,500/- to the Controller of Designs, 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 the date of registration or The design is not new or original or Design is not registrable or It is not a design under Clause (d) of Section 2.

9. Restoration of a lapsed design due to non-payment of the extension fee within the prescribed time

A registration of design will cease to be effective on non-payment of the extension fee for a further term of five years, if the same is not paid before the expiry of the original period of 10 years. However, a new provision has been incorporated in the Act so that lapsed designs may be restored, provided the following conditions are satisfied:

Application for restoration in Form-4 with a fee of Rs. 1,000/- is filed within one year from the date of lapse stating the ground for such non-payment of extension fee with sufficient reasons. If the application for restoration is allowed, the proprietor is required to pay the extension fee of Rs: 2,000/- and an additional fee of Rs. 1,000/- and finally the lapsed registration is restored.

10. Piracy of a Design

Piracy of a design means the application of a design or its imitation to any article belonging to the 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 them for sale with knowledge of the unauthorized application of the design to them also involves piracy of the design.

11. Penalty for the piracy of a registered Design

If anyone contravenes the copyright in a design for the every contravention he/she is liable to pay a sum not exceeding Rs. 25,000/- to the registered proprietor subject to a maximum of Rs. 50,000/- recoverable as contract debt in respect of any one design. The registered proprietor may bring a suit for the recovery of the damages for any such contravention and for injunction against repetition of the same. Total sum recoverable shall not exceed Rs. 50,000/- as contract debt as stated in Section 22(2)(a). The suit for infringement, recovery of damage should not be filed in any court below the court of District Judge.

Geographical Indications India

The Geographical Indications Act affords protection to goods that can be identified as originating or manufactured in the territory of a country or a region or locality in that territory where a given quality, reputation or other characteristic of such goods is essentially attributable to its geographical conditions. In the case where such goods are manufactured goods, one of the activities of production, processing or preparation of the goods concerned takes place in such territory or locality as the case may be. The term is initially for a period of 10 years and can be renewed from time to time. Until recently India did not have a specific law governing geographical indications of goods, which could adequately protect the interests of producers of such goods. Unless a geographical indication is protected in the country of its origin, there is no obligation under the Agreement on Trade Related Aspects of Intellectual Property Rights (TRIPS) for other countries to extend reciprocal protection. In view of this, it was considered necessary to have a comprehensive legislation for registration and for providing adequate protection for

geographical indications. Thus,the government enacted a pertinent legislation, namely, the Geographical Indications of Goods (Registration and Protection) Act, 1999. The legislation is administered through the Geographical Indications Registry under the overall charge of the Controller General of Patents, Designs and Trademarks. This Act, along with the Geographical Indications of Goods (Registration and Protection) Rules,2002 came into force on September 15,2003. Geographical Indication Rights have already been obtained for 'Darjeeling Tea', 'Paithani Sarees', Kota Doria. A Geographical Indications Registry has been established in Chennai for the purpose of administering the legislation. Appeal against the Registrar's decision would be to the Intellectual Property Appellate Board established under the Trade Marks legislation.

Biological Diversity Overview

The Convention on Biological Diversity (CBD)
The year 1992 is the landmark year for introducing the concept to protect traditional knowledge and biodiversity. The Convention on Biological Diversity (CBD) agreement is applicable at national and international level. India has adopted this agreement which has taken into account various aspects of biological diversity.

Objectives

Conservation of biological diversity Sustainable use of its components (genetic resources) Fair and equitable sharing of benefits arising from its use

Articles related to the above objectives of CBD are

Article 1 - fair and equitable sharing of the benefits arising out of the utilization of genetic resources, including access to genetic resources, appropriate transfer of technologies, considering all rights over those resources to technologies and appropriate funding. Article 8(j) - provision to encourage the equitable sharing of the benefits arising from utilization of knowledge, innovations and practices of indigenous and local community embodying traditional lifestyles relevant for conservation and sustainable use of biological diversity

The Biodiversity Act, 2002 (BDA)

This Act is applicable to India. It enforced prior approval of the National Biodiversity Authority (NBA), which was established on 1st October, 2003, before applying for any kind of intellectual property rights (IPRs) based on any research or information on a biological resource obtained from India. The National Biodiversity office is located at Chennai, India.

The National Biodiversity Authority exempts the use of biological resources forrying out research. It is mandatory to seek the permission of the NBA before obtaining any biological resource occuring in India for research or for commercial utilization. .

Salient features of NBA

The objectives of the NBA are provided as follows

Section 6 provides that anybody seeking any kind of intellectual property rights on a research based upon biological resource or knowledge obtained from India needs to obtain a prior approval of the NBA. The NBA may impose benefit-sharing conditions. Section 18(iv) stipulates that one of the functions of the National Biodiversity Act (NBA) is to take measures to oppose the grant of IPRs in any country outside India on any biological resource obtained from India or knowledge associated with such biological resource For ensuring equitable sharing of benefits arising from the use of biological resources and associated knowledge, Sections 19 and 21 stipulate prior approval of the National Biodiversity Authority (NBA) before their access. While granting approval, NBA may impose terms and conditions, which secure equitable sharing of benefits Section 36(iv) provides protection to the knowledge of local people relating to biodiversity through measures such as registration of such knowledge and the development of a sui generis system.

Transfer of biological resource or knowledge

According to Section 20,

No person who has been granted approval U/s 19 shall transfer any biological resource or knowledge associated thereto which is the subject matter of the said approval except with the permission of the National Biodiversity Authority Any person who intends to transfer any biological resource or knowledge associated thereto shall make an application in a form as prescribed to the National Biodiversity Authority On receipt of the application, the National Biodiversity Authority may grant approval after making enquiries, subject to certain terms and conditions, including the imposition of charges by way of royalty or for reasons to be recorded in writing, reject the application. No such order for rejection shall be made without giving an opportunity of being heard to the person affected The NBA gives a public notice of the approval granted under this section

Access to biological resources and associated traditional knowledge

For seeking prior approval to access, use and / or transfer biological resources for research or commercial purposes, the following application forms are to be filled and submitted at Chennai office, India.

Forms

Description / Category Application for access to biological resources and associated traditional knowledge Application for seeking prior approval of the National Biodiversity Authority for transferring the results of research to foreign nationals, companies, NRI`s, for commercial purposes Application for seeking prior approval of the National Biodiversity Authority for applying for Intellectual Property Right Application form for seeking approval of the National Biodiversity Authority for third party transfer of the accessed biological resources and associated traditional knowledge

Fees (Indian Rupees) 10,000 = 00

Form I

Form II

5,000 = 00

From III

500 = 00

From IV

10,000 = 00

International Treaties

Paris Convention The Paris Convention is an international convention for promoting trade among the member countries, devised to facilitate protection of industrial property simultaneously in the member countries without any loss in the priority date. (Read More) Patent Cooperation Treaty (PCT) The Patent Cooperation Treaty - PCT is a multilateral treaty, entered into force in 1978. (Read More) TRIPS Agreement TRIPS (Trade Related Aspects of Intellectual Property Rights) Agreement is an offshoot of a series of negotiations going on around the world since the inception of the Paris Convention in the year 1883. (Read More)

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