In a recent order, accessible here, the Indian patent office has dispensed with the requirement of filing complete specification and abstract in Form 2 at the time of filing of a PCT National Phase Application in India.

Main Points of CG’s Order

 1.  Applicant will no more be required to file multiple copies of documents already available with International Bureau (IB) of WIPO.

 2. IPO will be able to utilize such documents accessed electronically from IB (This would also result in more efficient usage of the valuable resources of IPO and reduce errors in data entry).

 3. For filing a PCT National Phase Application in India, which does not claim priority of any PCT National Phase Application filed previously in India, only the following contents are required :

FORM 2: Column 1, 2, 3 and last page of claims (first page, if claims comprise of only one page) with date and signature.

4. The documents filed by the Applicant should exactly correspond with the up-to date information available on the record of IB on the date of filing of the PCT National Phase Application in India.

5. The international application was either not filed or has not been published in English, the Applicant shall file translation of the Application in English, duly verified by the Applicant or the person duly authorized that the contents thereof are correct and complete.

6. It has also been clarified that the IPO does not allow an Applicant to amend the specification or the related documents before he actually enters National Phase in India.

 7.  Applicable from 6th July 2012

Note on Practice

Therefore, from 06th July 2012, an applicant will be required to provide the following documents to the patent office at time of filing:

  1. FORM 1
  2. FORM 2 with only Column 1, 2 & 3 filled along with last page of claims with date and signature
  3. FORM 3 (If Applicable)
  4. FORM 5 (If Applicable)

Also, the CG has clarified that IPO does not allow an Applicant to amend the specification or the related documents before he actually enters National Phase in India. However, I believe this does not stop an applicant to file preliminary amendments just after entering India in the national phase.

Kshitij Malhotra

Kshitij.malhotra@inohelp.com

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Intellectual Property is jurisdiction specific. A patent or trademark registered in India can seek protection against infringement only in India. Thus it is important to register your IP globally, to seek protection under the laws of the respective countries. Since a lot of money is involved in this area, it is advised that the applicant files registration application in those countries in which it wishes to seek protection within the time specified.  Here is a brief write up for your reference with respect to various forms of Intellectual Property.

Patents

India is a member of the following International Organizations and Treaties in respect of patents:

These treaties make it possible for Indian applicant (companies/ persons) to seek patent protection for an invention simultaneously in each of a large number of countries. Presently, two routes exist by means of which an Indian applicant may be able to file patents in foreign countries. These routes are:

  1. Paris Convention Route: Under this route, an applicant can file patents in any of the member countries within 12 months from making the first patent application in India. The following illustration explains the timeline for making foreign application:

PARIS CONVENTION TIMELINE

2. PCT Route: Under this route, an applicant is allowed to file a PCT application within 12 months from making the first patent application in India. The filing of the PCT application extends the time for filing in any of the PCT contracting members for the applicant to 30/31 months from the date of first filing. The following illustration explains the PCT timeline.

PCT TIMELINE

A PCT application may be filed by anyone who is a national or resident of India. It can be filed at the Indian patent office, or directly with the International Bureau of World Intellectual Property Organization, which administers the treaty, and is located in Geneva.

Importantly, the international application is subjected to what is called an “international search.” That search is carried out by one of the major patent offices, called the International Search Authorities (ISA). India is scheduled to soon become an ISA. The international search results in an “international search report,” that is, a listing of the citations of published documents that might affect the patentability of the invention claimed in the international application. In addition, a preliminary and non-binding, written opinion on whether the invention appears to meet the patentability criteria in light of the search report results is also issued.

The international search report and the written opinion are communicated to the  applicant who, after evaluating their content, may decide to withdraw his application, in  particular where the content of the report and opinion suggest that the granting of patents is unlikely, or he may decide to amend the claims in the application. This is the biggest advantage of using this route.

Designs

India is one of the countries party to the Paris Convention so the provisions for the right of priority are applicable. On the basis of Paris convention, a regular first application filed in one of the contracting state, the applicant may within the six months apply for protection in other contracting states; latter application will be regarded as if it had been filed on the same day as the first application. Please note that there is no registration authority that gives you a worldwide protection of your design.

Further, please note that since India is not a party to Hague Agreement, the benefits of filing single applications for designs (like a PCT) is not available to Indian nationals and companies.

Trademarks

Protection of trademarks internationally is done with the aid of the Madrid Protocol. A protection can be availed in all those countries to whose citizens India also provides protection by simply making a trademark application in those countries. Please note that there is no deadline to make corresponding trademark applications in such foreign countries.

The Protocol is managed by the World Intellectual Property Organization (WIPO). Additionally, it also offers a trademark proprietor the possibility of having a mark protected in up to 77 countries and the European Community (EC) by filing one application, in one language (English, French or Spanish), with one set of fees, in one currency (Swiss Francs). The proprietors wishing to use the Madrid system must apply for trademark protection in a relevant national or regional trademark office before seeking international protection. Thereafter, the international registration can be maintained and renewed through a single procedure at WIPO.

Copyrights

The Berne Convention, which is administered by the World Intellectual Property Organization (WIPO) in Geneva, Switzerland and to which India is also a party, ensures that the copyrights of Indian nationals are well protected in all member countries that are party to the Berne Convention. However, please note that an author’s work is not automatically protected under “international copyright” throughout the world. Protection against unauthorized use usually depends on the national laws of a particular country. However, most countries do provide protection of foreign works under certain conditions and these conditions are specified by International copyright treaties and conventions.

For more details regarding international protection of IPR, please feel free to contact me at kshitij.malhotra@inohelp.com.

Kshitij Malhotra

Inohelp IP

Patents are always thought to be serious business. But here are some patents which are fun and hilarious at the same time. Have a look:

1.     Anti eating face mask – US Patent No. 4344424

In the year 1980, the inventor of this incredible ‘anti eating face mask’ had foreseen the sedentary life of today’s generation. Be it the 30 minutes pizza or the happy meal, the temptation to over eat is virtually irresistible. Hence this device! It puts a check on your consumption of food. Along with curbing obesity this amazing invention is sure to give all the fitness centre’s a run for their money!

2.     Animal Ear Protector- Patent No. 4233942

Are you tired of washing your dog’s long hair every time it gets soiled while eating? Then here is good news for you. All you need to do is strap this device up your poodle’s hair to keep its ears away from the mouth and the food while eating.  This surely calls for an extra bowl of pedigree for your dog tonight.

3.     Instant face lift – Patent No. 4995379

      The age old theory of ageing gracefully has taken a back seat. From anti wrinkle creams to face lifts to Botox, people (read women) are ready to go to any extent to look younger. This unique invention will lift your face along with your spirits without any surgery. Check it out!

 

 

 

 

4.     Life expectancy watch- Patent No. 5031161

This spectacular watch can tell you something that even Google cannot. Hard to believe? Well this life expectancy watch depicts the time remaining in a user’s life.  Our sound advice to Insurance

companies: please be careful!

For more such patents, see this link.

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This post is a follow up to our earlier post on Copyright, which can be accessed here, and in which we have discussed the concept of copyright protection.

This article will outline some of the basic facts about copyright law and answer some of the common questions regarding copyright registration process like ‘Need of Copyright registration?’, ‘Who grants copyrights?’, ‘Submissions required?’, and ‘Term of Copyright’ etc. This article is intended to enlighten some of the core fundamental issues related to copyright law, and help you understand effective use of copyright for businesses as part of IP strategy. For making the article easy to comprehend, please note that we have used a point by point explanation approach.

1.     Do you need copyright registration?

Though copyright registration is not mandatory, formal registration of copyright has its unique advantages. Firstly, it helps an author to prove that he is an original owner of the work. Secondly, it gives a legal sanction to the ownership of your work, and gives an unparalleled advantage of bringing the law on your side. Since copyright registration provides a legal sanction on ownership of the work, it allows the author to leverage his rights by selling or agreeing a transfer of his copyright to someone else. More importantly, registered copyright may act as an indispensible strategic tool to keep away competition eating into your business. Holding exclusive copyright in a work gives you an advantage to control your competitive space. Additionally, registration of copyright and its related rights boosts creative advancement, and provides its creators incentives in the form of recognition and economic rewards.

2.     Who grants copyright registration and under which act?

The procedure for registration of work comes under the Copyright Act, 1957. The registration of copyright can be done at the Copyright Office, which is in immediate control of a Registrar of Copyrights appointed by the Central Government. The entries made in the register of copyrights serve as prima-facie in the court of law.

3.      Submissions required?

For registering a copyright, an applicant needs to send three copies of published work along with the application. If work that is to be registered is unpublished then a copy of manuscript is required, which is to be sent along with the application for affixing the stamp of the copyright office in proof of the work having been registered.  Applicant can also send only extracts from unpublished work instead of the whole manuscript. As per the procedures, application for registration is to be made on an official form including statement of particulars. It is necessary to file separate applications for registration of each work and applications has to be signed by the applicant or advocate in whose favor power of attorney has been executed. Also, it is mandatory to enclose a copy showing that power of attorney is signed by the party and accepted by the advocate. Fee is required to be accompanied by the application.

4.      How long does it take for copyright registration?

After filing the copyright application, one needs to wait for a period of 30 days till the time no objection is filed in the copyright office. If the objections are filed, these objections are required to be traversed with strong persuasive arguments, backed by citations of legal principles of copyright law. It is a complex process to convince the copyright office for registration, and it is strictly advised to take help of a legal practitioner for the same. Further, when objection is filed, it may take few months to decide whether work could be registered or not. Therefore, the key is to frame the copyright application in such a way so as to prevent any future objections regarding the copyright registration.

5.    What is the Term of Copyright Protection?

Copyright protection is not indefinite. The general rule is that copyright lasts for 60 years. In the case of original literary, dramatic, musical and artistic works the 60-year period is counted from the year following the death of the author. In the case of cinematograph films, sound recordings, photographs, posthumous publications, anonymous and pseudonymous publications, works of government and works of international organisations, the 60-year period is counted from the date of publication.

6.     International protection of Copyrights

Author’s work is not automatically protected under “international copyright” throughout the world. Protection against unauthorized use usually depends on the national laws of that particular country. However, most countries do provide protection of foreign works under certain conditions and these conditions are specified by International copyright treaties and conventions. Therefore, it is advised to seek copyright registration in foreign countries to substantiate infringement claims.

Costs for obtaining copyright protection

1.     Government fees

During copyright registration, certain amount of prescribed fees have to be paid to the government for registration of copyright and its maintenance. Fees can be paid by postal order/demand draft –payable to registrar of copyright, New Delhi. The filing fees varies between INR 50/- to 400/- per work.

2.     Professional Fees

Copyright registrations are provided by Indian firms at affordable prices, which meet the client’s requirements and expectations easily, though the cost may vary from firm to firm. The professional fees of registering one single work may ideally be between INR 5,000/- to INR 20,000/- depending upon the content of the work.

Issues faced while obtaining copyright registration

1.     What are potential roadblocks in copyright registration?

For a work to be registered, it is important that it should have a requisite level of creativity (originality) in order to qualify for copyright protection. Further, if the work is just representation of facts without any creativity, then it can’t be protected.  Therefore, facts, ideas, systems, or methods of operation can’t be protected. Also, a work cannot be registered if it comprises or contains scandalous or obscene matter or if it contains matter likely to hurt the religious susceptibilities of any class or section of the citizen of India.

2.      How to ensure you don’t meet these roadblocks?

Foremost thing a person must do if he/she is interested in copyright registration is to ensure that work is totally his/hers. In many cases it may happen that, creations are done while person is an employee of a company and the work belongs to the employer. Secondly, a person must ensure that work is not obscene, scandalous or hurting religious susceptibilities of a class or section of citizens of India. Thirdly, one should ensure that the filing of the copyright application is in consonance with the requirements and procedures established under copyright statute. A pre-emptive action can ensure an easy registration of a copyright, thereby saving energy, money and efforts.

Please Note: The following information on copyright is intended as general guide only. This material is not intended to constitute any legal advice whatsoever and should not be relied on as such.

For more details regarding copyright registration, please feel free to contact me at kshitij.malhotra@inohelp.com.

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It came as a pleasant surprise to all of us at Inohelp when we got to know that we have been quoted in The Economic Times (ET). Pleasant because ET is India’s largest financial daily, and the world’s second largest in terms of circulation after, The Wall Street Journal. Surprise because we got quoted long back in April, and did n’t come to know till our Mumbai partner, Abhishek, told us about it. The issue of the article related to a recent litigation filed by an Ahmedabad based company, Tirupati Foams, against a Bangalore based company, Peps Industries, for the alleged violation of its trademark “Sweet Dreams”. Peps Industries was using the mark “Greens Dreams” for its Sleep solution products.

Descriptive trademarks have been an area of great debate in the trademark jurisprudence of India. Example of descriptive trademarks include trade names whose dictionary meaning which is used in connection with products or services is directly related to that meaning. In this case, the term “Sweet Dreams” may be considered as a descriptive word for sleep solution products. Time and again various cases have appeared before the various High courts and the Supreme Court where validity of such trademarks, and accordingly, infringement thereof has been challenged. The mandate is to not to give a monopoly on such words to anyone.

Position of Law

1.     Registration of Descriptive Trademarks

The position of law regarding the registration of descriptive marks is unequivocal. Descriptive marks should not be afforded registration under section 9 of the Trademark Act in normal circumstances. However, courts have interpreted that descriptive marks can be afforded a registration only in exceptional circumstances. If a mark has acquired distinctiveness as a result of prolonged use, the mark may be considered for registration by the trademark authorities. Therefore, marks, such as International Business Machine (IBM) for computers, Sharp for television, and Glucon-D for revitalizing beverage, among others, are or may be registered under these exceptional circumstances.

In a recent decision of the Division Bench of Delhi HC in Marico’s case [1], the honorable Delhi HC has held that: “when the descriptive trademark is used only by one person undisturbed for a very long period of time, without anyone else attempting to use the trademark during this long period time, a case can be established of a descriptive word having achieved distinctiveness and a secondary meaning.” This strengthens the aforementioned proposition that descriptive trademarks are not allowed registration until there is a strong case of distinctiveness as a result of prolonged use.

2.     Infringement of Descriptive Trademarks

Remedies provided against infringement of trademarks are essentially deduced from the Trademark Act, in case the trademark has been registered under the act. However, it should be noted that an infringement of an unregistered trademark can still be remedied according to common law rights of a trademark owner to act against any person for passing off goods.

The position of law regarding infringement of descriptive trademarks is also well settled. In general, the courts have always discouraged monopolizing of descriptive marks or descriptive marks in case the mark has not attained a secondary meaning. Accordingly, the courts usually decide against the trademark owner in such cases. In fact, based on the decision of the Marico’s case, the courts can even suo motto go into validity of trade mark where the defendant has not challenged the validity of Plaintiff’s mark.

Other cases where the position of law regarding infringement of descriptive trademarks has been discussed are listed below. It should be noted that the decision of the courts in all these cases have been against the owner of the descriptive trademark.

This is a key learning for any entrepreneur who is taking the step of naming his/her business. The key is to coin a business name whenever possible. Keeping a name, which is descriptive for the product or services, can prove to be detrimental to registration of the name as a trademark. This means loosing out in future in litigation battles, such as the ones described above.
EXAMPLES OF SOME BUSINESS NAMES YOU SHOULD NOT ADOPT FOR YOUR CORRESPONDING GOODS/SERVICES
1. ‘Chinese Kitchen’ for a restaurant selling Chinese cuisine
2. ‘Lactose’ as a brand name for selling Diary products
3. ‘Vitamins’ for orally taken supplement capsules
4. ‘Rasoi’ for groundnut oil
5. “Booze” for a pub serving beverages
6. “COMPUTERLAND” for a computer store
7. “PC NEWS” for a magazine covering IT news
8. “Class” for a fashion label
9. “Acoustics” for a Music store
PS: The name and characteristic of our firm has been incorrect mentioned in the article. We are a private limited company and not a Law firm.

[1] MARICO LIMITED V. AGRO TECH FOODS LIMITED, (OS) No. 352/2010

Kshitij Malhotra

Inohelp IP

United States Patent & Trademark Office (USPTO) issued its 8 millionth patent today to a Swiss implantable visual prosthetics company, Second Sight Medical Products. The patent claims a “visual prosthesis” that uses a camera that then sends a stimulating impulse to neural tissue in a subject’s eye. This figure is a clear indication of the continuous success of patent policies of present and past US governments. Patents have been integral part of US state policy towards rewarding inventors for their inventive creations, and a prime reason why US is an invention superpower (comments welcome).

This must also incite an obvious query in your mind? Where does India stand with respect to patent figures? The recent annual report published by our patent authority, Indian Patent Office, states that the Indian patent office has issued 53,784 patents in last 7 years.

 

However, the encouraging fact is that the things are improving. The average percentage increase of patent grants in last 7 years has been + 37.38 percent.

For more details see: http://www.uspto.gov/news/pr/2011/11-47.jsp

Kshitij Malhotra

Inohelp IP

Many entrepreneurs and MSMEs are ignorant about the concept of copyright, and filling and registration procedures related to copyright protection. Prima facie, copyright seems to be a difficult concept to comprehend and the procedure, just like any other bureaucratic procedure, seems to be complex. This article will outline some of the basic facts about copyright law and answer some of the common questions like ‘What is copyright?’ and ‘What amounts to copyright infringement?’ etc. This article will focus on the core fundamental issues related to copyright law, and help you understand effective use of copyright for businesses as part of IP strategy. A follow up of this article will be a post, which will explain the procedure of copyright registration in India.

Introduction to Concept of Copyright

1.     What is copyright?

Copyright is a form of intellectual property right that protects original artistic works, including work of authors, such as literary, dramatic, musical and other artistic works. It protects the interests of owners of artistic work against those who ‘copy’. It is important to note that, copyright does not protect facts, ideas, systems, or methods of operation, although it may protect the way these things are expressed. For legal reference read – section 14 of Copyright Act, 1957, explaining the meaning of copyright.

2.     Subject matter of copyright?

Subject matter of copyright can be divided into:

  • Literary works – Poems, short stories, novels, and any other writings; whether fiction or non-fiction; whether handwritten, printed or typed; whether published or unpublished.
  • Musical works – Serious or light songs, choruses, operas, musicals, operettas; whether one instrument or more instruments – sonatas, chamber music, bands, orchestras etc.
  • Artistic works – Two–dimensional–(drawings, paintings, etching, lithographs etc) or three–dimensional (sculptures, architectural works etc); maps or technical drawings.
  • Photographic works – Portraits, landscapes, current events etc.
  • Motion pictures – Cinematographic works; whether silent or with soundtrack.
  • Works of applied art – Artistic jewelry, lamps wallpapers, furniture etc.
  • Choreographic works, phonographic records, tapes and broadcasts.
  • Software works – Codes etc.

3.     Copyright as a strategic business tool

What many entrepreneurs don’t know is that copyright may be used as an important source of income for their businesses. If your business owns a copyright in any piece of work, for instance, let’s say an advertising jingle, technical manual or a magazine article – then you can control its commercial use completely and avoid its misuse by competitors. For example, you can easily charge every time if someone uses your jingle for radio show or downloads your manual from the internet or reprints your magazine article etc. Copyright is a type of intellectual property right and like other property rights it can be sold or licensed. It can also be transferred and inherited. Today, copyright owners are coming together to form collective societies that work on their behalf to collect royalties by issuing licenses.

4.     Is copyright assignable?

Yes, copyright is assignable. The owner of the copyright of an existing work or the prospective owner of the copyright can assign to any person the copyright either wholly or partially.

5.     What amounts to infringement of copyright?

There are chances that you might have to face heavy penalty if you infringe a copyright; whether you use it fully or use its ‘substantial part’, without copyright owner’s permission. Therefore, it is advisable not to copy a work, sell, rent or lend copies of work to the public, broadcast that work or make adaptation of the work; all these are strictly forbidden. Some of the common copyright infringements are –

  • Putting up infringing copies for sale or hire
  • Permitting any performance which constitutes infringement of copyright work in public
  • Distributing infringing copies for the purpose of trade
  • Public exhibition of infringing copies by way of trade
  • And last but not the least, importation of infringing copies into India

6.     What are the forms of copyright infringement?

Most common form of copyright infringement in businesses is – Software misuse. Generally, people easily make illegal copies of software, which also amounts to breach of software license. Another common form is to play copyrighted music in the public, whether recorded or broadcast, without obtaining license for it.

7.     Is copyright infringement a criminal offence?

Yes, if any person knowingly commits an act of copyright infringement for any work, he/she commits a criminal offence under section 63 of the Copyright Act. If you infringe copyright, you could be taken to court and as well as be asked to pay damages or compensation to the owner of the work. There are chances, you might also face injunction against you, in order to stop you from using the copyrighted material.

8.     Infringement Precedents – India

  • Software copyright infringement case – SAP Aktiengesellschaft & Anr. v. Mr. Sadiq Pasha [CS(OS) No. 255/2005] – The case was decided by the Delhi High Court, in the favour of the plaintiffs.  The defendant was ordered to pay punitive damages amounting to rupees one lakh to the plaintiffs. The facts of the case are that first plaintiff is a German company and the second plaintiff is its Indian subsidiary. The plaintiffs claimed that the first plaintiff had developed certain programmes- namely SAP R/2 and SAP R/3, which were highly customized and off the shelf programmes. The plaintiffs alleged that the defendant’s company offered training for the plaintiffs’ software in Bangalore and claimed that they had no legal right to use their software and provide the concerned training, as they had not granted the defendant any license to use their software.
  • In Apple Computer Inc v Mackintosh Computers [2 S.C.R. 209, 20643, 20644 (S.C.C. 1990)], the court held that it was an infringement of the copyright in a literary, dramatic, musical work to reproduce the work in computer-readable form, such as on magnetic tape.
  • In Gramaphone Company of India Ltd v Super cassette industries Ltd [1995 IIAD Delhi 905, 1995 (1) ARBLR 555 Delhi], the defendant launched a version recording of the songs of popular Hindi film – Hum Apke hain kaun. Plaintiff raised the contention that the defendant by creating the version recording infringed the copyright of the musical work in the film. High Court granted an injunction restraining the sale of the version recordings when the owner of copyright responded to the party proposing to make the sound recording and expressly refused permission.
  • In a recent case from Bollywood, music composer Annu Malik has accused another music composer, Pritam Chakraborty of plagiarism for the song “Character Dheela Hai”, part of the soundtrack of the film Ready, starring Salman Khan. Anu Malik claims that the song is a copy of his composition of “Mohabbat naam hai kiska” from the 2001 Akshaye Kumar, Kareena Kapoor starrer Ajnabee. This accusation, if proved, will be a gross violation of the Copyright Act 1957, which protects the composer from such plagiarism.

TO FOLLOW: THE PROCESS OF COPYRIGHT REGISTRATION IN INDIA

For more details regarding copyright registration, please feel free to contact me at kshitij.malhotra@inohelp.com

Please Note: The following information on copyright is intended as general guide only. This material is not intended to constitute any legal advice whatsoever and should not be relied on as such.

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