This document summarizes recent developments in patent and trademark prosecution in India. It outlines new guidelines published on examining biotechnology and computer-related invention patents. It also describes the Indian Patent Office beginning to process international applications and the launch of e-filing services for patents and trademarks. Statistics are provided on appeals data to the IPAB for patents and trademarks. The document was produced by Intellocopia, an Indian intellectual property services firm.

2. INTRODUCTION
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 THE PRESENTATION IS:
 A COMPENDIUM OF PROSECUTION ACTIVITIES
SPECIFIC TO PATENTS AND TRADEMARKS
APPLICATIONS/REGISTRATIONS AT IP OFFICE IN INDIA.
 A CAPTURE OF TRENDS IN PROSECUTION .
 A HIGHLIGHT OF IMPORTANT REFORMS THAT THE
REGIME SAW IN THE YEAR 2013, AS IDENTIFIED BY THE
AUTHORS.
 TO BE CONSTRUED AS PERSONAL OPINION OF THE
AUTHOR AND ALL ERRORS DISCREPANCIES, IF ANY,
ARE ATTRIBUTABLE ONLY TO THE AUTHORS.

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4. PATENTS:
• Published guidelines for Examination of
Biotechnology Applications for patent
Salient Features:
 Emphasis given on sections 2(1)(j), 3b,3c, 3d,
3e,3i,3j, 3k, 3p , 10(4) and 10(5).
 Illustrative examples were provided to
demonstrate claimability of biotechnology related
inventions.
 Illustrative example for a priori and a posteriori
determination of unity of invention was provided.
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5. PATENTS….cont’d :
Published draft guidelines for Computer
Related Inventions (CRIs) inviting stakeholders
to provide
comments/suggestions/objections/amendment
s.
 36 firms/companies/organizations, both
national and MNCs including Intellocopia
posted their opinions.
A stakeholders’ meeting was held in
Delhi subsequently.
Draft yet to be finalized.
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PATENTS….cont’d :
The draft guidelines proposed/provided the following:
• Summary of terms/definitions used while dealing
with patentability of CRI.
• Examination procedure of CRI for assessing
novelty, utility(industrial applicability) and inventive
step (non obviousness) to be inline with MPEP
guidelines for the same.
• Categorization of claims with illustrative example.
• Illustrative examples for determination of excluded
subject matter related to CRI’s with emphasis on
claim construction and analysis.
• Flowcharts illustrating claims (including claim
construction) that render a certain CRI “not

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PATENTS….cont’d :
•Electronic submission of reply to the Examination
Reports by using the 'Comprehensive e-filing
services for Patents', introduced to facilitate internal
automation and speedy disposal of Applications.
• Draft Amendment Rules published, emphasizing
on revision of Schedule I
Comments/suggestions/objections/amendments
from various stakeholders were invited.

8. PATENTS…cont’d:
• To increase transparency of prosecution, CGPDTM-
Patent Office introduced a series of dynamic utilities :
1) For viewing the month of Request for Examination in
respect of which First Examination Report has been
issued for each examination group of all jurisdiction of
Patent Office.
2) For displaying the pending and grant status of Patent
applications (upgraded to include various status in all
available fields of invention).
3) For viewing the disposal of Patent Applications by
examination groups as per respective jurisdiction.
4) For public to conduct a search to ascertain the
status of a patent.
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9. PATENTS…cont’d:
•Indian Patent Office started functioning as International
Searching Authority and International Preliminary
Examining Authority
under the PCT w.e.f 15th October 2013.
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Individual Corporate
ISR 2500 10,000
IPER
(where ISR
issued by same
ISA)
2500 10,000
IPER
(where ISR
issued by other
ISA)
3000 12,000

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11. TRADEMARKS
• Comprehensive e-filing services for filing of
Trademark applications under Indian Trademark Act
1999 and under Madrid Protocol launched.
•The guidelines relating to the international
registration of trademarks under the Madrid Protocol
published.
• E-filing of Reply to examination report in respect of
Trademark Applications through the Comprehensive
e-filing services introduced.
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•To increase transparency of prosecution,
CGPDTM-Trademark Registry introduced a series
of utilities :
• Special drives for post registration changes.
• Speedy disposal of hearings.
• Detailed classification of goods and services under
Section 8(1) of Trade Marks Act, 1999.
•Dynamic Trademark utility to facilitate real time
viewing of various prosecution stages including detail
of Examinations, show cause hearings, journal
publications, registrations and disposal of applications.
TRADEMARKS…cont’d:

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14. INTRODUCTION
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•The Controller is the final authority in granting or
refusal of a Patent registration.
• The Controller’s decision related to Patents is a
speaking order following circular 04-2011 and is
published regularly.
•However, no such speaking orders in respect of
Trademark matters are published by the Trademark
Registry.
• The Controller has powers under various sections
of The Patent Act and hence a review of all
decisions of Controller issued in the year 2013 was
performed to obtain a trend in Controller’s decision.

15. Section 15
Section 14
Section 25
Section 16
Section 11
Section 77
Section 62
Section 10
Section 59
Section 135
The Controller’s decision related to Patent matters
were classified based on Sections of the Patent Act
and on nature of Applications filed
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94%
CLASSIFICATION OF DECISIONS
BASED ON NATURE OF APPLICATION
CLASSIFICATION OF
DECISIONS BASED ON
SECTIONS
0%
10%
20%
30%
40%
50%
60%
70%
80%
90%
100%
Local Applications
National Phase
Applications
6 %

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54
188
Patents
TM
About 80% of the appeals filed before IPAB in
2013 are related to Trademark matters and
about 20% arising out of Patents.

18. Further the IPAB Orders/Decisions related to
Patent matters were classified based on subject
matter of appeal and nature of origin of appeal
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31%
35%
20%
13%
For revocation
Against controllers
decision
Withdrawl of appeal
Miscellaneous
CLASSIFICATION OF
DECISIONS BASED ON TYPE OF
APPEAL
CLASSIFICATION OF
DECISIONS BASED ON
SUBJECT MATTER
19
28
4
2 1
ORA
OA
MP
TRA
RP

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11250
8 2 3 4 3
6
ORA
OA
MP
COD
TRA
TA
SR
RP
Further the IPAB Orders/Decisions related to
Trademark matters were classified based on nature
of origin of appeal
About 60% of the appeals filed before IPAB arose out of Review
Applications whereas about 26% of the appeals were original
appeals

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ABOUT US:
INTELLOCOPIA – stands for abundance of intellect
and enables protection for the ideas which undergo
metamorphosis through effort of the intellect turning
them into creative works, inventions and brand
generation as realised through
Patents, Trademarks, Copyrights and Designs.
At Intellocopia, we facilitate acquisition, management
and enforcement of IPR.
Our belief is: Protected Intellect is Power,
Protected Intellect is Wealth.

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SERVICES PROVIDED:
Development of IP Policies
 IP Analysis and Review
 Patent Drafting and Prosecution
 Trademark , Copyright and Design Registration.
 Customized Training Sessions
 IP Valuation.
 IP Audit.
Technology Transfer and Licensing

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