Articles, Brand Valuation, India, Intellectual Property, IP industry, IP Litigation, Trademark, Trademark Litigation

Trademark Opposition System in India: Grounds, Provisions and Procedure at Indian Patent Office (IPO)

Written by adminApril 29, 2020

Introduction

Once a trademark application is filed at Trademark Registry, it is examined by the Trademark Registrar with respect to distinctiveness of an applied mark. If the Trademark Registrar gets satisfied about the distinct nature of the applied mark and feels that there are no existing similar mark(s) in the register of Trademarks, then the applied mark is published into the Trademark Journal.

The published Trademark is opened for public inspection/opposition by third parties for a period of 04 months. In matters where no opposition is filed during this period, the mark gets registered. In another situation, where oppositions are filed, then the opposition proceedings are initiated and decision of the applied mark depends upon on the outcome of the opposition proceedings at the Trademark Registry.

Time duration for Filing Notice of Trademark Opposition

The notice of opposition may be filed within 03 months from the date of publication of a trademark in the Trademark Journal which is further extendable by 01 month (3+1). The time duration is not extendable under any circumstance. In matters where the notice of opposition gets filed after 03 months but before the expiry of 4th month, then it should be accompanied by a request for an extension by 01 month along with one or more suitable reasons for such delay in filing the opposition.

Who can file a Trademark Opposition?

Under Section 21 of Trade Mark Act, “Any person” who is having thinking that his/ her brand name/logo or reputation of a company could be damaged if the trademark application gets registered. He / She could opt to oppose such registration by filing a Notice of Opposition by prescribed form along with requisite fee.

There is no restriction on who may file an opposition. Anyone who is having an opinion that the published trademark application may create confusion among the public as having similar goods, may file for the opposition and wait for further trademark proceedings.

The opponent does not mandatorily have to be a registered proprietor of a trademark. He / She could be either a purchaser, customer or a member of the public likely to use the similar goods. The logic behind this opposition provision is that the opponent is not only representing himself / herself but also represents public because having two similar marks in the market dealing with same goods may result unnecessary confusion amongst the public. 

Grounds of trademark opposition

There are various grounds of Trademark Opposition on the basis of which one can file trademark opposition:

  • In case the trademark found similar or identical to an earlier or existing registered trademark;
  • In case the trademark is devoid of any distinctive character or descriptive in nature;
  • The trademark gets likely to deceive the public or cause confusion among the public;
  • In case the trade mark is of customary in the current language, or it comes under the established practices of business;
  • In case, the trademark mark becomes contrary to the trademark law or gets prohibited under the Emblem and Names Act, 1950;
  • The trademark mark that may contain subject matter which is likely to hurt religious sentiments of any class or section of people 

Advantages of Trademark Opposition

  1. Beneficial Remedy for TM proprietor: Trademark opposition becomes an efficient tool in stopping other trademark owners to continue similar marks as it may hinder/dilute their brand/logo image or may cause confusion in the market dealing with same kinds of goods.
  2. Public Consultation: As the trademark brands are created on the basis of public popularity and demand, it is mandatory to first consult the public before trademark approval regarding trademark applied and seeking for registration. 

Documents required to file a Trademark Opposition

The documents which are required at the time of filing Trademark Opposition are as under:

  • Applicant’s details: Full name, Address, Nationality etc. details of the applicant.
  • Power of Authorization (POA): POA allows the attorney or a trademark agent to file the trademark opposition on the behalf of the applicant.
  • Affidavit: Affidavit with the basic required information related with the trademark and its first usage date and proof of use/evidences.
  • Details regarding the opposed mark along with all possible grounds of oppositions: Detailed information related to the trademark against which the trademark opposition needs to be filed, e. all possible grounds for filing the opposition.

Different Stages in Trademark Opposition Proceedings

Stage 1 – Filing a Notice of Opposition/Filing a Counter-Statement

Any person may submit Notice of Opposition within 04 months of publication in TM Journal along with prescribed fees and forms. Once notice of opposition is submitted at the TM Registry, it is reviewed by the Registrar for formality requirements and the registrar accordingly issues the opposition notice to the applicant.

Stage 2 – Filing of counter statement

A counter-statement or reply to the notice of opposition is required to be filed within two (02) months. There is no extension to file a counter-statement provided by the TM Registry which clearly states that in case the Trademark applicant fails to submit a counter-statement within two (02) months of issuance of the Notice of opposition, the mark will be then deemed to be abandoned.

Stage 3 – Filing of Evidence in support of Opposition

Within two (02) months which may be further extendable by one (01) month of getting the counter-statement, the opponent is required to provide evidences in support of the Notice of Opposition in Affidavit form in order to strengthen the case. Opponent may also opt to waive filing an Affidavit if he / she wishes to rely on the facts which are stated in the Notice of Opposition. Whatever maybe the option selected by the opponent, the opponent need to inform the TM Registry and the applicant within the prescribed time. In case he / she does not inform the same, the opposition proceedings would be treated as abandoned.

Stage 4 – Filing of Evidence in support of Counter- Statement

Within two (02) months of getting evidence or information regarding waiver by the opponent, the Applicant need to file evidence in support of his / her submitted counter-statement/application. The Applicant here is also having an option to waive his right to submit any evidence. 

Stage 5 – Filing of Evidence in Reply

Within one (1) month of issuance of evidence or getting waiver, the Opponent again gets the option to submit additional evidence(s) in support of his / her opposition. This option is to acquire some sort of clarity in the proceedings, for proving rebut the evidence(s) produced by Applicant.

Stage 6 – Hearing

Within three (03) months of the finishing of the evidences, a hearing gets appointed and both the parties i.e. opponent and applicant are informed. After hearing both the parties and considering the evidences in detail, the TM Registrar takes a decision whether the trademark need to be accepted or not. However, in cases where either party i.e.  Opponent or Applicant aggrieved by the Registrar’s decision could challenge the Registrar’s decision and may file an appeal before the Intellectual Property Appellate Board (IPAB).

Notice of Opposition based on Trans-Border Reputation

Section 35 of the Indian Trade Marks Act, 1999 reveals a provision for protection of foreign trademarks on the basis of their international reputation under the term “Trans-border Reputation”. Indian Trade Marks Law acknowledges internationally renowned foreign brands and their goods and such brands/marks are given protection against identical and similar marks and owners of marks of these foreign brands are granted legal protection in India, irrespective of use of goods/services or registration of marks in India. The goodwill acquired by the manufacturer is not necessarily limited to the country where the goods are freely available because the goods, though not available, are widely advertised in newspapers periodical, magazines, and in other Media. The result is that though the goods are not available in the country, the goods and the mark under which they are sold acquires wide reputation. Some legal precedents from key decisions in India are as under: N.R. Dongre And Ors vs Whirlpool Corporation And Anr 1996; Indian Shaving Products Ltd. & Anr. vs Gift Pack & Anr. 1998; Milmet Oftho Industries & Ors. v. Allergan Inc. 2004.

Conclusion

India’s Trademark law provides provisions for trademark opposition – An efficient and effective method for preventing or revoking the grant of non-eligible marks. However, this provision of opposition proceedings leads to backlog of trademark prosecutions at the Indian Trademark Registry. The oppositions also delay in the process of grant of the marks.

Trademark opposition helps opponents in securing their logos/marks. The Indian Trademark law has provisions to oppose such unfair use, e.g. to oppose the deceptively similar marks. The owner/applicant of the deceptively similar mark could try to encash the immense goodwill and reputation earned by the opponent. If allowed, the mark would be registered as a registered mark in India, and the applicant of deceptive similar trademarks may not be able to protect their brand in India after registration. Therefore, in order to protect the reputation and goodwill earned by applicant’s mark, our recommendation is to file a: NOTICE OF OPPOSITION. 

Authors

Dr. Amit Goel (Director) can be reached at amit.goel@effectualservices.com and Jyoti Chauhan (Manager). For any query related to trademark opposition system in India, please feel free to contact at info@effectualservices.com.

Effectual Services is one of the fastest growing Intellectual Property Management Advisory firms offering IPR services (trademark, copyright, design and patent) and knowledge research services to Fortune 500 companies, law firms, start-ups, research institutes, universities, and venture capital/PE firms.

 

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Blog, Brand Valuation, Compulsory Patent License, IP industry, Patent, Patent Opposition

Patent Opposition System in India: Grounds, Provisions and Current Scenario at Indian Patent Office (IPO)

Written by adminApril 9, 2020

Introduction

For invalidating a patent, there are time consuming and expensive patent litigation proceedings in various  jurisdictions around the world. Another way for invalidating a competitor’s patent application / granted patent can be through patent pre and post grant opposition  proceedings. That is, one may challenge a pending patent application (prior to grant) or after patent is granted. Indian Patent Act 1970 provides opposition provisions wherein a party (“opponent”) may oppose a patent application before grant of patent which is called “pre-grant opposition” and the oppositions which  are filed after the grant are called “post-grant opposition”.

Patent Opposition Provisions

In India, both oppositions (pre- grant and post-grant), proceedings takes place in front of Controller General of Patents, India. The main advantage of filing opposition proceedings in Indian Patent Office is that it is time-specific and therefore the interested parties/opponents need not to undergo time consuming expensive lengthy procedures as conducted in Courts. The involved cost in oppositions is also minimal as compared to litigation cost in Courts.

The pre-grant opposition provides detailed information to patent examiner which could  prevent grant of patent for ineligible patent matter which does not qualify either  patentability criteria or other procedural/ formality requirements as per Indian Patent Act. Further, in pre-grant proceedings, hearing is not mandatory, however, in post-grant proceedings, based on hearing, the controller takes decision for a patent.

Sections 25(1) and 25(2) of the Indian Patents Act 1970 discloses grounds for proceedings before the Controller General of Patents, India. The grounds for pre-grant and post-grant oppositions are almost same and there is no restriction for filing pre-grant opposition thereafter filing post-grant oppositions; however, there are few procedural differences between the two oppositions.

Pre-Grant Opposition

According to Patent Amendment Rules 2016, once a patent application gets published, any person can file a pre-grant opposition before grant of the patent by filing Form 7A (under Sec. 25(1)). There is no official fee for filing pre-grant opposition. One needs to file and submit written representation to the Controller of Patents including statement and evidence(s). The applicant is given three months to file a reply to representation from the receipt of notice from the Indian Patent Office.  Based on the representation submitted by opponent and reply submitted by the applicant, the controller may schedule hearing, if required. The Controller may either refuse or grant the patent application; or suggest requests for amendment of specifications/claims to the applicant after completion of opposition proceedings.

Post-Grant Opposition

Any interested person as defined under Section 25(2) of the Indian Patents Act, may file notice of opposition i.e. with prescribed Form 7 within one year from grant date which is mentioned in Patent Journal i.e. Date of Publication of Grant along with payment of prescribed official fee. The notice of opposition must disclose following items:

  • The nature of the opponent’s interest;
  • The facts under which opposition is done; and
  • The relief which the opponent seeks

Thereafter, patentee may challenge the opposition by filing a reply statement within two months from the receipt of the opposition notice. After that, the opponent may file further evidences within one month of receipt of reply by the patentee. In case where the patentee do not submit reply of opposition notice, then in absence of any reply by the patentee, the patent may be deemed to be revoked/ abandoned.

On receipt of a notice of opposition, the controller may thereafter form an opposition board, which further comprises of three members, including one chair member. The opposition board analyses the opposition facts, opposition statement in detail and then sends its recommendations to the controller within three months. Based on the recommendations of the opposition board, the controller takes his decision, however these recommendations are not binding opinion to the Controller, but if the controller is of opinion that is contrary to the recommendations of the opposition board, then the controller passes a reasoned order  which contains his or her analysis and detailed analysis. The controller may also schedule a hearing between both parties and takes a decision for the patent to be revoked, maintained or amended.

The final decision taken by the controller of patent related to regarding a pre-grant or post-grant opposition may be further appealed to the Intellectual Property Appellate Board (IPAB). The time limit for making such appeal is within three months of the date of the decision..

  • Grounds of Opposition:

Section 25 discloses various following grounds for opposition:

  • Lack of novelty (i.e, the invention was previously published in India or elsewhere, or was previously claimed in India i.e. anticipation by prior date, Prior claiming in India).
  • The invention formed part of the prior public knowledge or the prior public use or traditional knowledge of any community.
  • Obviousness and lack of inventive step i.e. the invention is obvious and lacks inventive step.
  • Ineligibility of invention (i.e., the subject of a claims does not constitute an invention within the meaning of the Patents Act or is not patentable under the act).
  • Failure to disclose information or furnishing false information relating to foreign applications filed by the applicant for the same or substantially the same.
  • Wrongfully obtaining the invention.
  • Insufficiency of description of the invention.
  • Non-disclosure of information as per the requirement or providing materially false information by an applicant.
  • Patent application not filed within 12 months of filing the first application in a convention country.
  • Nondisclosure/ wrong mention of source of biological material.
  • Invention anticipated with regard to traditional knowledge of any community, anywhere in the world.
  1. Statistics – Pre-Grant Patent Oppositions

The Annual Journal report issued by the Intellectual Property Office i.e.  Controller General of Patents, Designs, Trademarks and Geographical Indications office report 2018-19 reveals that a total number of patents  which were published under Section 11A were around 46899 during the reporting year (2018-19), while  number of pre-grant oppositions which were filed by the opponents was around only 260, that constitutes around 0.55% of the total published applications. Also, the below data reveals since 2013 to 2016 there has been considerable growth in the trend of count of pre-grant oppositions i.e. 0.98%, 0.91% and 0.69%, respectively.

Year Number of Patent Publication Number of Pre-grant Opposition Pre-grant opposition / Patent Application Publication (%)
2013-14 31413 309 0.98
2014-15 26934 247 0.91
2015-16 41752 290 0.69
2016-17 86766 206 0.23
2017-18 46899 260 0.55

 

   Source: http://www.ipindia.nic.in/annual-reports-ipo.htm

Conclusion

Based on the analysis done on available data captured by the Indian Patent Office’s online discloses that the major grounds on the basis of which both pre-grant and post-grant opposition were filed last year were “The invention constitutes non patentable subject matter” and  the “invention lack inventive step”. Also, the formality objection ground relating to Section 8 was also noticed extensively. In the pharmaceutical field, the grounds of opposition were related to the subject matter is non-patentable under Section 3 (d) of the Patents Act. Here, the opposing party is required to prove that the claimed compound is only a mere derivative of a known substance or claimed invention is new property or new use for a known substance or of the mere use of a known process, Such machine or apparatus as claimed unless such known process results in a new product or employs at least one new reactant.

India’s patent law provides provision for both pre-grant and post-grant opposition. This provides efficient and effective method for preventing or revoking the grant of a non-eligible patent. The provision of opposition proceedings also adds to the backlog of patent prosecution at IPO. These opposition also may delay in the grant of the patents. Furthermore, a pre-grant opponent may also file a post-grant opposition after the patent grant. The opponent may also file IPAB appeal if not satisfied by IPO decision.

For any query related to opposition system in India, please feel free to contact at info@effectualservices.com.

Authors:

Dr. Amit Goel (Director) can be reached at amit.goel@effectualservices.com

Jyoti Chauhan (Manager)  can be reached at jyoti.chauhan@effectualservices.com

Effectual Services is one of the fastest growing Intellectual Property Management Advisory firms offering IPR services (trademark, copyright, design and patent) and knowledge research services to Fortune 500 companies, law firms, start-ups, research institutes, universities, and venture capital/PE firms.

 

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Blog, Brand Valuation, Patent

Uptick in unsupervised machine learning to manage and analyse patent data

Written by adminMarch 25, 2020

A patent is a valuable asset for a company or individual – any missed deadline could result in irrevocable loss or a hefty fee to recover it. Various patent professionals work with patent analytics teams to analyse and manage patent information. Currently, these files are managed manually, which involves the use of office tools (eg, Word or Excel). However, with the astounding growth of intellectual property throughout the world and the steep increase in the number of patents granted every year, patent professionals are facing myriad challenges. Analysing patent information manually is highly demanding on time and resources too, as files can sometimes run in to thousands of documents.

With growing competition in various industries, companies need to know their competitors and their areas of interest. However, it can be challenging to allocate appropriate monetary and human resources to analyse the patent information.

To tackle this, law firms have adopted various patent management tools based on machine learning. In particular, unsupervised machine learning tools are being used to manage patent data and big data in many areas of manufacturing and operations. This has proven to be greatly advantageous for low to mid-size companies as these tools provide them with the high-quality data necessary for them to survive in a competitive marketplace.

The following patent activities can be managed using unsupervised machine learning:

  • training a system based on unlabelled and/or uncategorised patent data;
  • identifying the knowledge focus and dynamics of a particular technology or domain; and
  • discovering various trends, patterns and relationships between unlabelled/labelled patent data.

Unsupervised machine learning tools eliminate the need for human effort since they produce an outcome based on input alone and require no feedback. Further, these tools are capable of managing and analysing patent information by directly connecting with patent offices. Search analysis can be performed based on the full description of a patent application and not just abstracts, claims or the application summary.

One example of an unsupervised machine learning tool is the Knowing, Mapping and Exploration (KMX) tool, which allows for:

  • the rapid classification of a large number of patents or scientific articles based on very minimal training examples, which provides versatile and agile analysis; and
  • a very swift full patent analysis by ranking patents based on key features of the invention.

The advantages of unsupervised machine learning for managing patent data are as follows:

  • it is time and cost efficient;
  • it provides high-quality analysis;
  • there is a higher success rate during the patent examination stage; and
  • it creates a single platform for all jurisdictions.

Comment

Rather than performing tasks such as analysing the full description of an application, classification, tracking upcoming responses to office actions and payment of maintenance fees, among other things, use of these automation tools streamlines tasks and allows patent professionals to concentrate on more substantive work.

For further information contact:

Amit Goel
Effectual Knowledge Services Pvt Ltd
View website

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Blog, Brand Valuation, India, Intellectual Property, Patent

Impact of national ban on E-cigarette patent applications. What’s the road ahead?

Written by adminMarch 23, 2020

“E-cigarette”, the term that epitomizes the anti-hero of the smoke world, revolutionized the tobacco business when it entered the market in 2005. The idea of quitting tobacco by blowing aerosol filled clouds ringed like music to the ear of smokers across the world and the song has gained a lot of traction since then. But, the road for these battery-operated cigarettes has hit a speed-breaker if not a dead-end in India.

Well! talking about the subject, as soon as e-cigarettes entered the Indian market, the rampage of the tobacco and cigarette users started marching towards its direction, the reason for which can partially be attributed to social media/western influence and partly due to its wide availability of flavours (over 100 flavours) and in no time, this pen-shaped-vapor-blowing item was in their hands.

But, wait! have you heard of this phrase – “No addiction is encouraged via legal approach”. Yes! Despite being considered as a safe way of smoking and finding heaven in China, United States and European Countries, e-cig has been banned in India. And of course! with the imposed ban, it is of no use to get patents on the product in the country.

The world’s fifth largest economy to dwell a powerful hand at several categories of technology is none other than India, itself. And for the same reason, all the behemoth e-cig companies wanted to set shop in the country. Unfortunately, the ban on e-cigarettes has crushed the dreams of many e-cigarette manufacturers and online suppliers such as Juul Labs, Altria Group (formerly known as Philip Morris), British American Tobacco, Imperial Brands and RELX etc. Moreover, these companies have already invested a huge amount for filing their e-cig patent in India as a plan to market their products. And to their remorse, the item is already banned so, there is no point for further filing an application for its patent and launching the products.

After several court hearings and days being adjourned, the Delhi High-court imposed the restriction on import of e-cigarette inside the nation on 18th September 2019. Not only this, the court also made ademption of the existing product’s sale, manufacture or distribution of any form of Electronic Nicotine Delivery system (ENDS). This includes e-hookah, Vape, e-sheesha etc.

The big question for the government here is, -Will they refund the money of the companies whose patents have been awarded? And what about the applications which are still in the examination phase?

All of this is a situation of dilemma.

Let us understand the actual definition of the term E-cigarette. How did it come into existence? We will be taking a deeper look into the future of E-cigarette Patent Application in India after the nation imposed a ban on it.

Why E-cig?

The concept of the e-cigarette was introduced, when American Herbert A. Gilbert filed his first patent, i.e. “US3200819A” on e-cigarette on 14 April 1963. This invention of Herbert replaced the burning of tobacco and the paper with non-tobacco based cigarettes. And in return, it produced flavored smoke without/with nicotine.

Thus, it was accepted as the safest alternative. Later on, the idea of non-tobacco cigarettes took a larger shape in between 2003-2007, when Chinese pharmacist Hon Lik created the first electronic cigarette. The e-cigarette used piezoelectric heating elements to vaporize the liquid contained chemicals. After a huge success in china, e-cigarettes gained popularity via the internet in many countries. From there on, it caught the eye of the rest of the world and all the American big players started manufacturing and supplying these nicotine vaporizers.

An e-version of cigarettes are often comprised of three parts, i.e. Chargeable battery, Atomizer and cartridge of nicotine liquids. These liquids convert nicotine into vapor/ aerosol upon inhaling. When the smoker inhales, a pressure is created which in turn activates a sensor sending signal to the electric circuit. Further, the current is sent to the atomizer’s pump and heating element which then draws the liquid containing nicotine. And it results in generating the vapor as the heating elements been heated up. As a result, vapor gets inhaled by the smoker. The cartridge of the nicotine liquid consists of various flavors (US20150122277A1) depending upon the choice of the smoker and is detachably attached with e-cigarette.

Currently, e-cigarettes come in various shape and size for e.g. USB flash drives, pens, matchbox etc.

Patent filing trends in E-cigarettes in India

 

[Source: Derwent Innovation]

It’s obvious for any company which is procuring their product on a larger scale, that they would be launching it on a wider platform. And regarding this, they must acquire permission for patents granted in their jurisdiction. And accordingly, these companies conduct several scientific experiments and market research which cost them millions of dollars for their patents.

Now, let us have a glance at the below line graph.

From the above line graph, we get to acknowledge the pattern of the patent filing of E-cigarettes in India over time. Here, the thing to be kept in mind is that, India is not only the second largest consumer of tobacco in the world but it also provides great potential for the E-cigarettes market too. So, the tobacco companies saw a potential biggie in the form of Indian market and as evident from the graph, the filings in the country show a sharp spike since the initial filings in 2011. Till 2014, the patent filing trend seems to be constant but if we look at the patent filing trend from 2014-2016, we can observe that the uptake for E-cigarette patents has risen dramatically. Afterwards, the main challenge encountered by tobacco industries was the banned news of ENDS (Electronic Nicotine Delivery Systems) devices in India which became the source reason for fewer patents been filed in between 2016-2018 and hence coming to a halt in 2020.

Top Assignees of E-cig in India

[Source: Derwent Innovation]

Advancement in technology is a perpetual process. Companies file patents with the defensive approach in their mind to protect their technology. The monopolizing and control of trade and commerce was treated for their businesses. Companies which are highlighted in the bar graph adapted a similar approach to launch their product in India.

From the analysis of patent filing trend of E-cigarettes by top tobacco manufacturers, we have concluded some pin points.

It can be observed that British American Tobacco PLC is having the highest number of E-cigarettes patents filed in India, i.e. 71.

  • Similarly, Philip Morris International has also increased its E-cigarettes patent portfolio but relatively less than British American Tobacco PLC.
  • Juul announced to launch its ENDS device in India in January 2019, with 10 patents application in India.
  •  Indian Tobacco Company Limited (ITC LTD) and Godfrey Phillips India (GPI Ltd.) each owed 11 and 6 patents respectively being regulated in India

Conclusion

Looking further to what is coming ahead, individuals such as NGO and social workers started protesting for the prohibition of e-cigarrete. Not to forget, this stand was taken for other drugs, liquors, etc. as well. But this digital item was rising the addiction of several youths too. Economically, the sale of this product grew up to meet the demand of an ongoing crowd. Instead of slowing down, e-cigarrete created an era of more of depression, anxiety, and panic attacks in people. E-cigarrete acted as a relief to their pains and their blind eyes could not see the drowning health. In the similar line, justifying the ban, Nirmala Sitharaman (Finance Minister and Corporate Affairs) said, “E-cigarettes were promoted as a way to get people out of their smoking habits but reports have shown that many people are not using it as a weaning mechanism but are rather addicted to it.” But, its other side is very sad on which the government has kept silence, which are mentioned below-

  • As patents enhances the technology which are directly/indirectly associated with the product manufacture and launch. So, what will happen to the companies like Juul, Altria Group, British American Tobacco, Imperial Brands etc. who have a strong patent portfolio in India?
  • Can such other products be discontinued in India, which is a concern for many companies, due to which they may be afraid to file a patent in India?
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Blog, Brand Valuation, India, Intellectual Property, Trademark, Trademark Litigation

INDIAN PERSPECTIVE ON TRADE MARK REGISTRATION FOR START-UPS

Written by adminJanuary 15, 2020

Introduction

Over the past few years, the term ‘Start-up’ is doing the rounds around us. With ‘Start-up India Scheme’ being introduced by the Government of India in the year 2016, many young entrepreneurs have been encouraged to set off their businesses. However, in order to gain market presence and flourish in the commerce, protection of Intellectual Property becomes crucial for start-ups and at the same time plays a very significant role to make their presence felt in the market and also to sustain in the competition.

The Government of India has introduced a number of benefits to start-ups with an objective of providing support to protect their Trade Marks, Ideas, Designs or any other Intellectual Property. Some of the benefits being offered by the Government to Start-ups in protecting their trade marks are enumerated herein below:

REBATE ON OFFICIAL FEES

The Government offers a rebate of fifty percent on official fees for filing trade marks for Start-ups or small scale industries. Further, a rebate on filing request for expedited processing of application is also being offered by the Government thus reducing their overall expenses in the initial years and at the same time providing aid in speedy processing of their application.

REBATE ON E-FILLING OF APPLICATIONS

In addition to rebate on statutory filing fees for Start-ups and small scale enterprises, the Government offers a further discount of ten percent on the official fee for filing applications online when compared to the physical filing of applications.

SCHEME FOR FACILITATING START-UPS

A Scheme for facilitating ‘Start-ups Intellectual Property Protection’, popularly known as the “SIPP Scheme”, has been introduced by the Government in order to help young entrepreneurs to have their trademarks or other Intellectual Property protected. The Government has empanelled Trade Mark Practitioners and Registered Trade Mark Agents as Facilitators under this Scheme who not only facilitate Start-ups in obtaining registration for their brands but also provide support in protecting and enforcing their trade mark rights. Under this scheme, the Start-ups are required to pay only the statutory fees while the entire facilitation costs are borne by the Government.

EXPEDITED REGISTRATION

The Government has also been endeavoring to reduce the total turn-around time to obtain trademark registration. The Government offers the facility of filing a request for an expeditious processing of application up to the grant of trade mark registration. Further, a rebate of fifty percent on the official fees is also offered to Start-ups and small scale enterprises for filing such request.

Conclusion

Start-ups have a limited number of resources, and therefore, it sometimes becomes an impediment for them to protect their business identity, to position their product and / or services and to gain reputation in the market. Thus, by offering benefits to the young entrepreneurs, the Government has taken significant steps in promoting the establishment and growth of Start-ups as well as facilitating registration and protection of their Intellectual Property in a speedy manner and at significantly reduced costs.

 

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Blog, Brand Valuation, India, Intellectual Property, Patent

Revocation of Patents in India

Written by adminJanuary 14, 2020

The term “Revocation” means Cancellation of the patent rights acquired to patentee. The revocation of patent can be applied by making a petition by any person interested or it can be also applied by the Central Government. In most of the cases revocation are filed on a counter claim against patent infringement suits in High Court or in IPAB (the Intellectual Property Appellate Board). The provision for Revocation of patents is mentioned under section 104.

Section 104 of the Patents Act, 1970 states that only IPAB or the High Court can be approached for revocation as no suit of infringement can be brought before a court inferior to the District Court having jurisdiction.

Section 64: Grounds for Revocation

Principally, Section 64 contains in-exhaustive grounds that dictate the conditions that warrant the revocation of patents. These grounds are following:

  1. Invention is obvious, lacks an inventive step or utility
  2. Invention isn’t new and, has been publicly used or published in India before the priority date or it is foreseen in light of the knowledge available within any local or native community in India or elsewhere.
  3. Either the party wasn’t entitled to the patent, or the subject isn’t patentable or doesn’t amount to invention
  4. The scope of patent specificationsis incomplete or the specifications have either been already claimed in a patent that is granted
  5. The patent was wrongfully obtained in violation of another party’s rights, such as through incorrect or false representation, or leave to modify specifications was obtained through fraudulent means
  6. The information that has been disclosed under Section 8 is known to be false by the Applicant or he has been unable to furnish the required details
  7. Complete specification omits or erroneously attributes geographical origin or biological matter used in the invention
  8. The invention was either secretly used before the date or claim or the Applicant contravened secrecy instructions under Section 35
  9. The complete specification neither describes the invention and method sufficiently nor does it disclose the best method of performing it which was known and entitled protection.

 

Other provisions for revocation of patents

A revocation petition can be filed undersection 65 if the patent granted relates to atomic energy.

If the Central Government find the facts that a granted patent has been exercising by wrong means and it is mischievous to the State or prejudicial to the public, the central government has rights in the case to revoke the concerned patent and such decision is also published in official journal of patents.

Moreover, to prevent the wastage of judicial machinery, it was laid down by the Supreme Court in the Enercon (India) Ltd and Ors. v. Enercon Gmbh, that post grant opposition proceedings and petitions or counter-claims of revocation against the same patent, cannot be simultaneously instituted. Frivolous litigation shouldn’t be encouraged as it is viewed as a tool for cash-rich litigants with dishonest interests.

Revocation of patent under Section 85 of the Patents Act

An application for revocation of patent can be filed after 2 years of grant of compulsory license.  The grounds for revocation of a patent are same which are covered under Section 85 which mainly deal with following:-

  • reasonable price,
  • availability in the territory of India, and
  • requirements of the public not met.

Section 85 reveals provision in the benefit of public. In these cases where the patentee does not take necessary actions that may help in better distribution of the product to the public and more profound availability at reasonable prices. Such revocations of patent are really useful to public.

For more information on revocation, please contact us at info@effectualservices.com

 

 

 

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Blog, Brand Valuation, Design, Digital Right Management, Hi Tech Patent Litigation, India, Intellectual Property, IP Licensing, IP Litigation, Trademark, Trademark Litigation

Trademark Filing in India- Importance and Analysis of the Market

Written by adminDecember 27, 2019

The Government of India has been taking significant steps to develop favorable arena for Trademark filing. With registered trademark, one can stop others from using the trademarked business name/logo/word with respect to goods or services. Trademarks serve as a mark for identification of good or services and provide a better way to reach out to the huge audience. Trademarks influence the customers’ purchasing decision, reputation and acceptability such brands represent. Trademarks function as a valuable asset as they serve as a life-long support for business expansion. Even the giant companies like Apple protect their important assets for the business by means of trademark.

Recent amendments in Trademark Rules 1999, notified in March 2017, not only simplified the trademark registration process but also removed a number of redundant provisions thus making the overall process extremely user-friendly. Major changes that were brought in by Trademark Amendment Rules 2017 include –

1) reduction of number of Forms needed to be filled from 74 existing forms to 8 consolidated forms.

2) Single application form isrequired to file all type of trademark applications.

3) inclusion of online mode of service.

4) concession in fees to start-ups, individuals and small enterprises.

Trademark Filling in India- Importance and Analysis of the Market By Amit Aggarwal
Co-Founder and Director, Effectual Services

http://www.licensingcorner.com/know-how/trademark-filling-in-india-importance-and-analysis-of-the-market/

Article was 1st published On Licensing Corner

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Blog, Brand Valuation, Digital Right Management, India, Intellectual Property, Patent

Intellectual Property Rights – A Reform Transforming the Education Sector

Written by adminDecember 27, 2019

The National Intellectual Property Rights Policy, aimed at creating a “Creative India; Innovative India” was approved by the Indian cabinet on May 12, 2016. It is noteworthy that this is the first IPR policy that was ever framed by the Indian government, the policy was enacted to ensure compliance to the Doha Development Round and TRIPS Agreement. Along with the IPR policy, the Government of India also prepared a Scheme for IPR Awareness, under which a professional body – Cell for IPR Promotion and Management (CIPAM), was also formed whose primary objective is to create IPR awareness across India. The duration of the scheme is for 3 Years (April 2017 – March 2020), and the efforts by CIPAM are currently underway.

One of the main objectives, Objective 2 of the 7 objectives that were laid down in the IPR policy,was:“Generation of IPR”. More specifically, under this objective, the policy states:

India has a large talent pool of scientific and technological talent spread over R&D institutions, enterprises, universities and technical institutes. There is a need to tap this fertile knowledge resource and stimulate the creation of IP assets.

It is also desirable to introduce IPRs as part of academic curriculum in educational institutions, especially universities, law and technical institutions.

Shortly after the creation of the policy, the University Grants Commission, which is the central body governing the universities and is responsible for maintaining the quality standards, issued a notice on July 15, 2016 requesting universities and affiliated colleges to devise, through academic council, inclusion of the IPR as a genericelective subject under the Choice Based Credit System (CBCS). Read More

Intellectual Property Rights – A Reform Transforming the Education Sector By Amit Aggarwal
Co-Founder and Director, Effectual Services

https://startupsuccessstories.in/intellectual-property-rights-a-reform-transforming-the-education-sector/

Article was 1st published On Startup Success Stories

 

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Blog, Brand Valuation, Design, Digital Right Management, India, Intellectual Property, IP Licensing, Patent, Patent Infringement

How patents have transformed the Health Care Sector

Written by adminDecember 27, 2019

Currently India is aggressively adopting ‘Smart life’ where everything is driven by smart technology like artificial intelligence and IoT, but a grave reality still haunts most of the population is lack of basic healthcare facilities.

Currently India is aggressively adopting ‘Smart life’ where everything is driven by smart technology like artificial intelligence and IoT, but a grave reality still haunts most of the population is lack of basic healthcare facilities. In recent years, many projects and initiatives have been undertaken to improve the quality of life of common people, however, more concrete steps are still required to achieve the dream of ‘Healthy India’.

In a developing country like India, cheaper drugs & affordable healthcare infrastructure models can work wonders because the more it is affordable the more it is accessible. To make things affordable, we need innovation in drugs, developing therapeutic domain and building healthcare facilities. In last couple of decades India has developed a strategy of delivering highest quality drugs at lowest cost to patients within the country and other developing ones.

India revised the patent regime in pharmaceutical sector to comply with the WTO agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPS) in 2005,which excluded certain types of chemical entities such as polymorphs and salts combination of drug patentability so as to prevent patent ‘evergreening’ by large pharmaceutical companies, which can make drugs unaffordable to the general population. Below are the changes that Indian Pharmaceutical Industry has gone through during the pre-compliance (till 2005) and post compliance(after 2005) phases. Read More

How patents have transformed the Health Care Sector By Amit Aggarwal
Co-Founder and Director, Effectual Services

https://health.economictimes.indiatimes.com/news/industry/how-patents-have-transformed-the-health-care-sector/68721028

Article was 1st published On ETHealthworld

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Blog, Brand Valuation, Digital Right Management, Hi Tech Patent Litigation, India, Intellectual Property, Patent

Artificial intelligence: Empowering patent filing

Written by adminDecember 27, 2019
Patent filing in artificial intelligence in India is emerging on a rapid scale, and some of the top companies filing for patents are TATA and HCL Technologies

With the advent of Artificial Intelligence in every imaginable sphere that matters, it is hardly surprising that innovators are now in a rush to build their Intellectual Property portfolio in AI. The popularity of Artificial Intelligence, machine learning, neural networks and all other things related to Intelligent machines has been on the rise for quite some time now. A similarly whopping growth has been observed in the number of machine learning or AI-related patents/applications which have been filed in recent years. A recently published article revealed that patent applications based on machine learning have nearly quadrupled in the last few years, owing to the widespread use of the same in all major technological fields. Since the formal conception of Artificial Intelligence and machine learning, way back in the 50s, more than 300,000 patent applications and over a million scientific journals have been published.

Further, WIPO has stated that over one-third of the published patents/applications in the AI domain are related to Machine Learning. It has been estimated that the average annual growth in patents related to machine-learning is somewhere between 25 and 30 percent. Machine learning techniques such as deep learning, reinforcement learning, neural networks have seen unprecedented growth in terms of patent filings in the last few years.

AI has often been compared to the “Electricity of the new era”. If so, Machine learning can surely be considered to be the wire which conducts it. WIPO has recently taken upon itself to develop a framework for the field of AI, including the applications of machine learning such as processing of speech and digital signal processing. The vital areas which would be completely transformed by AI were also identified, such as Transport and Communication. However, other sectors such as Law, Banking, Medicine, Entertainment, Agriculture are not far behind either in utilizing machine learning and AI, and building their respective patent portfolios as well. Bearing these facts in mind, it is not hard to see the growing interest of inventors in patenting their AI end applications.

Artificial intelligence: Empowering patent filing By Amit Aggarwal
Co-Founder and Director, Effectual Services

Artificial intelligence: Empowering patent filing

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