IP filings

Lalit Ambastha
Patentwire Consultants Pvt. Ltd.
IHOW TO FILE
INTELLECTUAL PROPERTY RIGHTS

“Everybody wants to go to heaven, but nobody wants to die”
Peter Tosh

0 200000 400000 600000 800000
USA
Europe
Korea
Germany
Japan
India
China
501162
274174
223517
175550
473137
42953
734081
DEVELOPED COUNTRY Vs. INDIA
In Year 2013-14
9, 950
© Patentwire Consultants Pvt. Ltd. www.patentwire.co.in

1995
TRIPS
Within 5 years
It was mandatory to implement the TRIPS provision into
all domestic IP laws.
Provisions:
 National Treatment
 Right to Import
 Compulsory License
 Proper enforcement against infringement
NOW, INDIA IS FULLY COMPLIANT WITH
TRIPS OBLIGATIONS

Current IP Laws in India
Copyright
Copyright Act of 1957
Customs
Intellectual Property Rights (Imported Goods) Enforcement Rules, 2007
Designs
The Designs Act, 2000
The Design (Amendment) Rules, 2008
Geographical Indications
Geographical Indications of Goods (Registration and Protection) Act, 1999
Geographical Indications of Goods (Registration and Protection) Rules, 2002
Information Technology
The Information Technology Act, 2000
The Information Technology Rules, 2000
Cyber Regulations Appellate Tribunal (Procedure) Rules, 2000
Patents
The Patents Act, 1970
The Patents (Amendment) Act, 2005
The Patents Rules, 2003
The Patents (Amendment) Rules, 2006
Plant
Plant Varieties Protection and Farmers' Rights Act, 2001
Semiconductor and Integrated Circuits
Semiconductor Integrated Circuits Layout Design Act 2000
Rules for the Semiconductor Integrated Circuits Layout Design Act 2000
Trademarks
The Trade Marks Act, 1999
The Trade Marks Rules, 2002

Berne Convention (Literary and Artistic Works)
w.e.f. April 1, 1928
Geneva Convention (Unauthorized Duplication of Phonograms)
w.e.f. February 12, 1975.
World Intellectual Property Organization (WIPO)
w.e.f. May 1, 1975
Nairobi Treaty (Olympic Symbol)
w.e.f. October 19, 1983
Convention on Biological Diversity
w.e.f. February 18, 1994
World Trade Organization (WTO) Member and Signatory to TRIPS Agreement
w.e.f. January 1, 1995
Paris Convention
w.e.f. December 7, 1998
Patent Cooperation Treaty (PCT)
w.e.f. December 7, 1998
Budapest Treaty (for deposition of microorganisms)
w.e.f. from December 17, 2001
Madrid Protocol (for Trade Marks)
w.e.f. from July 8, 2013
India – Convention and Treaty

GLOBAL PATENT?
IP IS A TERRITORIAL RIGHT

COMMON JARGONS
APPLICANT
INVENTOR
ASSIGNMENT
PRIORITY
PRIOR ART
FER
PERSON SKILLED IN THE ART
ANTICIPATION
POA
PROOF OF RIGHT

PATENT
Patent is a reward for intellectual mind, granted as a territorial right for a
limited period by the Government.
Criteria: Any NEW process or product
Inventive step
Industrial applicability
Duration: 20 Years from the date of filing
Rights: to make, use, and sell the patented article and prevent
others from doing the same.
Fee: 1, 600/- for individual
4, 000/- for small entity
8, 000/- for large entity
Mode of Filing: Physical or E-filing as per location of applicant/attorney

What are the parts of a patent document?
2
3
4
5
Specification
Claims
Abstract
Drawings
1 Bibliographic
Information

Provisional/Complete
Request for examination
PATENT FILING
Within 12 months
FER
Within 48 months
Complete
Publication
On/After 18 months
Form 1;
Form 2 and Specification;
Form 3;
Form 5; and/or
Form 9.
Form 2 and Specification with claims
GarbageCertificate of Grant
www.ipindia.nic.in
User Id
Digital Signature [class III]
Online Payment Facility
E-Filing
DELHI MUMBAI
CHENNAI KOLKATA

PCTPARIS CONVENTION
Members: 176 Members: 151
MANAGEMENT OF INTERNATIONAL PATENTS
EPO
EAPO
ARIPO
OAPI
GCC

US
FIRST APPLICATION
FAMILY PATENT
FOREIGN PATENT
Within 12 months
CHINA EUROPE JAPAN CANADA KOREA SINGAPORE
CONVENTION ROUTE

US
FIRST APPLICATION
FAMILY PATENT
FOREIGN PATENT
Within 12 months
CHINA EUROPE JAPAN CANADA KOREA SINGAPORE
Within 18 months
PCT APPLICATION
PCT ROUTE

 Patent is granted after 5-6 years from the date of filing.
 80-85% inventory of granted patents remain idle with no
commercialization
 Only 8% of granted patents generate 90% of total revenue
worldwide
 60% patent applications rejected due to failure to meet
patentability criteria
 30-40% of patent applications rejected due to poor drafting or poor
strategy
 China, US, Japan, Korea & EU are major filers of patent
applications
 Indian just file 10k patent applications in a year
 Cost of patent increases every year [50k per jurisdiction] without
guarantee of grant or commercialization
Some Interesting Facts

TRADEMARK
Criteria: Distinctive
Non-Descriptive
Duration: Unlimited subject to renewal
Rights: Prevent unauthorized use of the mark and counterfeiting
Fee: 4, 000/- for individual or a company
Mode of Filing: Physical or E-filing as per location of applicant or attorney
Trademark is an identity or distinctive feature of a product or services of one
individual or a company from other.
NAME, WORD, LOGO, SYMBOL, DESIGN, PHRASE

TM1 & Representation
TRADEMARK FILING
Within 12-18 months
Examination
Registered
Published
www.ipindia.nic.in
User Id
E-Filing
DELHI MUMBAI
CHENNAI KOLKATA
AHMEDABAD

 You may use the symbol “TM” or “SM” without
filing the trademark application
 You cannot use the symbol “®” without registration
of your mark
 You may file a civil suit without having registered
mark
 Rejection of mark does not mean rejection of
ongoing business
 There are several classes for filing a trademark
application
 Filing in one class does not mean that you have
right on other class except for well Known mark

Criteria: Novelty
Non-Obviousness
Duration: 10 + 5 years from date of filing
Rights: Prevent unauthorized use, make, sell or import of the
protected design
Fee: 1, 000 for individual
2, 000 for small entity
4, 000/- for large entity
Mode of Filing: Physical or E-filing before Kolkata Design Office
AN INDUSTRIAL DESIGN REFERS TO THE ORNAMENTAL OR
AESTHETIC ASPECTS OF A PRODUCT
DESIGN

Form 1 & Representation
DESIGN FILING
Within 6-9 months
Examination
Registered
Published
www.ipindia.nic.in
User Id
E-Filing
Rejected

COPYRIGHT
A COPYRIGHT IS AN EXCLUSIVE RIGHT OVER THE WAY OF
EXPRESSION
Books Novels Poems Plays
Films Newspapers Songs Lyrics
Software Mobile Apps Databases Musical
Compositions
Choreography Acting Paintings Drawings
Photographs Brochures Letter Head Web Pages
Sculptures Architecture Advertisements Maps
Technical
Drawings
Presentations Documentary Animations
Music White Papers Research Papers Thesis

 You own the copyright right away with creation of a work [say, on
pressing the click button of camera]
 If you are working as an employee, your works under employment
belong to the company
 You own the rights to any images/music/written material you make
during a freelance assignment
 You can’t copyright an idea
 If you download picture/song/video from the internet and use* it for
own purposes, it is a copyright infringement. [* T&C
Apply]
 You may sell or transfer the ownership of a copyright. However, you
would retain a "moral right" to the property which is non-transferable.
 The use of the copyright symbol © appearing on your creative work
indicates a claim of ownership.

LALIT AMBASTHA| PATENT ATTORNEY
Patentwire Consultants Pvt. Ltd.
lalit.ambastha@patentwire.co.in
Mobile: 9811367838

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