6 August 2005 © MarkPatent.Org 1 IP - Fostering the Globalization potential By Dr. Rajeshkumar H. Acharya

6 August 2005© MarkPatent.Org2 INTELLECTUAL PROPERTY ENHANCE THE MARKET VALUES Generate an income through the licensing, sale, or commercialization Generate an income through the licensing, sale, or commercialization Enhance the value or worth of company Enhance the value or worth of company In the event of a sale, merger or acquisition, IP assets may significantly raise the value of your company In the event of a sale, merger or acquisition, IP assets may significantly raise the value of your company

6 August 2005© MarkPatent.Org3 DIFFERENT IP RIGHTS Patents: innovative products and process Patents: innovative products and process Trademarks: for brand identity- of goods and services allowing distinctions to be made between different traders Trademarks: for brand identity- of goods and services allowing distinctions to be made between different traders Industrial design rights: Creative designs, including textile designs Industrial design rights: Creative designs, including textile designs Copy right: Cultural, artistic and literary works also for computer software and compilation of data Copy right: Cultural, artistic and literary works also for computer software and compilation of dataContinue…

6 August 2005© MarkPatent.Org4 … Layout-designs or topographies of integrated circuits: for microchip Layout-designs or topographies of integrated circuits: for microchip Geographical indication: for goods of given quality or reputation attributable to the geographical origin Geographical indication: for goods of given quality or reputation attributable to the geographical origin Protection of undisclosed information of commercial value: Trade secrets Protection of undisclosed information of commercial value: Trade secrets

6 August 2005© MarkPatent.Org5 PATENT A patent is an excusive right granted for an invention, which is a product or a process that provides a new way of doing something, or offers a new technical solution to a problem. A patent is an excusive right granted for an invention, which is a product or a process that provides a new way of doing something, or offers a new technical solution to a problem.

6 August 2005© MarkPatent.Org6 REASONS FOR PATENTING INVENTIONS Provide exclusive rights Provide exclusive rights Strong market position Strong market position Higher returns on investments Higher returns on investments Opportunity to licence or sell the invention Opportunity to licence or sell the invention Increase in negotiating power Increase in negotiating power Positive image for your company Positive image for your company

6 August 2005© MarkPatent.Org7 PATENTABILITY OF INVENTION Novelty Novelty Inventive step Inventive step Industrial applicability Industrial applicability Advisable to go for PATENT in early stage

6 August 2005© MarkPatent.Org8 NON PATENTABLE INVENTIONS invention which is frivolous invention which is frivolous contrary public order or morality or which causes serious prejudice to human, animal or plant life or health or to the environment contrary public order or morality or which causes serious prejudice to human, animal or plant life or health or to the environment scientific principle or discovery scientific principle or discovery new property or new use for a known substance new property or new use for a known substance Admixture AdmixtureContinue…

6 August 2005© MarkPatent.Org9 … arrangement or re-arrangement or duplication arrangement or re-arrangement or duplication method of agriculture or horticulture method of agriculture or horticulture process for the medicinal, surgical, curative, prophylactic, diagnostic, therapeutic process for the medicinal, surgical, curative, prophylactic, diagnostic, therapeutic plants and animals - other than microorganisms plants and animals - other than microorganisms mathematical or business method or a computer program mathematical or business method or a computer programContinue…

6 August 2005© MarkPatent.Org10 … artistic work or any other aesthetic creation artistic work or any other aesthetic creation scheme or rule or method of performing mental act scheme or rule or method of performing mental act presentation of information presentation of information topography of integrated circuits topography of integrated circuits traditional knowledge traditional knowledge invention relating to atomic energy invention relating to atomic energy

6 August 2005© MarkPatent.Org11 TYPES OF PATENT APPLICATION Application for ordinary Patent Application for ordinary Patent (i) Provisional specification (i) Provisional specification (ii) Complete specification (ii) Complete specification Patent of Addition Patent of Addition Divisional Application Divisional Application Convention Application Convention Application Application under PCT Application under PCT

6 August 2005© MarkPatent.Org12 ATTACHMENTS WITH THE APPLICATION Application for grant of a patent on Form-1 (3 Copies) Application for grant of a patent on Form-1 (3 Copies) Provisional/Complete Specification on Form- 2 (3 Copies) Provisional/Complete Specification on Form- 2 (3 Copies) Drawing (3 Copies) Drawing (3 Copies) Abstract (3 Copies) Abstract (3 Copies) Statement and Undertaking on Form 3 (3 Copies) Statement and Undertaking on Form 3 (3 Copies) Priority document(s) (if priority date is claimed) in case of convention application. Priority document(s) (if priority date is claimed) in case of convention application. Declaration as Inventorship on Form 5 (3 Copies) Declaration as Inventorship on Form 5 (3 Copies) Power of Authority on Form 26 (if filed through Patent Agent) Power of Authority on Form 26 (if filed through Patent Agent) Sequence listing in electronic form Sequence listing in electronic form Fee (Cash/Cheque/Draft) Fee (Cash/Cheque/Draft)

6 August 2005© MarkPatent.Org13 GENERAL INFORMATION REQUIRED TO FILL FORMS Name (s), Address (es) and nationality (ies) of the Applicant (s) Name (s), Address (es) and nationality (ies) of the Applicant (s) Name (s), Address (es), and Nationality (ies) of the Inventor (s) Name (s), Address (es), and Nationality (ies) of the Inventor (s)  If the Applicant is not the inventor: Relevant information explaining how the Applicant acquired the right to the invention for our preparation of a Statement which has to be filed with the Patent office. Relevant information explaining how the Applicant acquired the right to the invention for our preparation of a Statement which has to be filed with the Patent office. e.g. The Applicant is the assignee of the invention or The applicant the employer of the inventor etc. e.g. The Applicant is the assignee of the invention or The applicant the employer of the inventor etc.

6 August 2005© MarkPatent.Org14 CONTENTS OF COMPLETE SPECIFICATION Title: It should indicate the subject matter to which the invention relates. Title: It should indicate the subject matter to which the invention relates. The State of Prior Art: It should indicate the status of the technology in the field of invention with reference to experiments going on in the field, patents and pending patent applications. The State of Prior Art: It should indicate the status of the technology in the field of invention with reference to experiments going on in the field, patents and pending patent applications. Free patent search tools that can be used to perform these searches are: Continue…

6 August 2005© MarkPatent.Org15 … > The Intellectual Project Digital Library: of World Intellectual Property Organization > The US Patent and Trademark Office Patent Database Description: It contains fully and particularly describes the invention and its operation or use and the method by which it is to be performed. Description: It contains fully and particularly describes the invention and its operation or use and the method by which it is to be performed. Claims : The claim defines boundaries of the legal protection sought by the patent. Its object is to define clearly with conciseness, precision and accuracy the monopoly claimed. Claims : The claim defines boundaries of the legal protection sought by the patent. Its object is to define clearly with conciseness, precision and accuracy the monopoly claimed.Continue…

6 August 2005© MarkPatent.Org16 … Abstract: It should not be more than 150 words. It should contain a concise summary of the matter contained in the specification, indicate the technical field, technical problem its solution and the use of the invention. If it contains drawings it must be illustrated in the abstract. Abstract: It should not be more than 150 words. It should contain a concise summary of the matter contained in the specification, indicate the technical field, technical problem its solution and the use of the invention. If it contains drawings it must be illustrated in the abstract. Drawings: No special illustration of drawings required but it should mention in the specification itself. Drawings: No special illustration of drawings required but it should mention in the specification itself. Biological material: If biological material is mention in the specification and there is a requirement for deposition biological material than it should deposit at depository institution. The name, address of the depository institution and the date and number of the deposits of the material at the institution should be mentioned in the specification. Biological material: If biological material is mention in the specification and there is a requirement for deposition biological material than it should deposit at depository institution. The name, address of the depository institution and the date and number of the deposits of the material at the institution should be mentioned in the specification.

6 August 2005© MarkPatent.Org17 MARGIN REQUIREMENTS FOR TEXT

6 August 2005© MarkPatent.Org18 MARGIN REQUIREMENTS FOR DRAWINGS

6 August 2005© MarkPatent.Org19 PROCEDURE AFTER FILING PATENT APPLICATION TILL GRANT Filing of patent application  If applicant wishes earlier publication then he may file Request for publication before eighteen months from the date of filing of application or the date of priority (not mandatory)  Publication of Patent Application Continue…

6 August 2005© MarkPatent.Org20 … Request for examination after publication of the application should be made within 36 months from the date of priority of the application or from the date of filing of application  Issuance of Examination Report  Reply on examination report should be given within 6 months from the date of first statement of objection is issued to the applicant to comply with the requirements Reply on examination report should be given within 6 months from the date of first statement of objection is issued to the applicant to comply with the requirementsContinue…

6 August 2005© MarkPatent.Org21 … Grant of Patent  Renewal of Patent

6 August 2005© MarkPatent.Org22 OPPOSITION Pre-grant opposition: within three months from the date of publication or before the grant of patent Pre-grant opposition: within three months from the date of publication or before the grant of patent Post-Grant Opposition: before the expiry of a period of one year from the date of publication of grant of patent Post-Grant Opposition: before the expiry of a period of one year from the date of publication of grant of patent

6 August 2005© MarkPatent.Org23 INDIAN PATENT APPLICATIONS FEES Sr. No. On what payableFrom No Natural Person (s) Fees for other than natural Person(s) 1Application for Patent *For each sheet of specification in addition to 30 *For each claim in addition to 10 1Rs. 1000/- Rs. 100/- Rs. 200/- Rs. 4000/- Rs. 400/- Rs. 800/- 2Examination18Rs. 2500/-Rs /- 3Request for Publication9Rs. 2500/-Rs /-

6 August 2005© MarkPatent.Org24 TERM OF PATENT The term of every patent shall be 20 years from the date of filing of the application for the Patent. The term of every patent shall be 20 years from the date of filing of the application for the Patent. Renewal fees to be paid at every respective years. Renewal fees to be paid at every respective years.

6 August 2005© MarkPatent.Org25 INDIAN PATENT RENEWAL FEES Sr. No. On what payableFor Natural Person(s) (In rupees) For other than Natural Person(s) (In rupees) 1Renewal fee for 3 rd year – 6 th year500 (for each year)2,000 (for each year) 2Renewal fee for 7 th year – 10 th year1,500 (for each year) 6,000 (for each year) 3Renewal fee for 11 th year – 15 th year 3,000 (for each year) 12,000 (for each year) 4Renewal fee for 16 th year – 20 th year 5,000 (for each year) 20,000 (for each year)

6 August 2005© MarkPatent.Org26 EXCLUSIVE MARKETING RIGHTS EMR provisions abolished EMR provisions abolished Pending EMR applications to be treated as examination request. Pending EMR applications to be treated as examination request. Patent applications based on which EMRs granted to be examined immediately. Patent applications based on which EMRs granted to be examined immediately.

6 August 2005© MarkPatent.Org27 COMPULSORY LICENCE Controller can grant compulsory license if reasonable requirements of the public with respect to the patented invention have not been satisfied, or the patented invention not available at a reasonably affordable price or the patented invention is not worked in the territory of India. Also compulsory licence has been grant to pharmaceutical manufacturers for export to countries having insufficient or no manufacturing capabilities in the pharmaceuticals sector. Controller can grant compulsory license if reasonable requirements of the public with respect to the patented invention have not been satisfied, or the patented invention not available at a reasonably affordable price or the patented invention is not worked in the territory of India. Also compulsory licence has been grant to pharmaceutical manufacturers for export to countries having insufficient or no manufacturing capabilities in the pharmaceuticals sector.

6 August 2005© MarkPatent.Org28 IF DO NOT PATENT Somebody else might patent them Somebody else might patent them Competitors will take advantage Competitors will take advantage Possibilities to license, sell or transfer technology will be affected Possibilities to license, sell or transfer technology will be affected

6 August 2005© MarkPatent.Org29 TRADE MARKS A Trade Mark, (popularly known as Brand name), is an identification symbol which may be a device, a label or numeral etc. or a combination thereof used in the course of trade to enable the consumer to distinguish it from similar goods. A Trade Mark, (popularly known as Brand name), is an identification symbol which may be a device, a label or numeral etc. or a combination thereof used in the course of trade to enable the consumer to distinguish it from similar goods.

6 August 2005© MarkPatent.Org30 PROCEDURE FOR REGISTATION OF TRADE MARKS Search (Not Mandatory) [Making a request on form TM-55 Also further a request can be made on Form TM-54]  Filing an Application  Issuance of Examination report  Comply within one month form the receipt of the examination report Continue…

6 August 2005© MarkPatent.Org31 …Acceptance Advertised in the Trade Marks Journal  Notice of Opposition- within three months or within one month in thereafter for which extension request is to be made  Entered in the Trade Marks Register  Registration certificate issued  Renewal (Every Ten Years)

6 August 2005© MarkPatent.Org32 TERM OF TRADE MARKS: Perpetual CONVENTIONAL APPLICATION: Claim priority date in India Claim priority date in India Within six months from date of filing an application in convention country Within six months from date of filing an application in convention country File the priority documents along with the certified copy of translation File the priority documents along with the certified copy of translation

6 August 2005© MarkPatent.Org33 BENEFITS OF REGISTERING A TRADE MARKS Customers to distinguish products or services Customers to distinguish products or services Seen as a guarantee of consistent quality Seen as a guarantee of consistent quality Easiness in marketing and advertising abroad Easiness in marketing and advertising abroad Legal action against infringement and passing off. Legal action against infringement and passing off.

6 August 2005© MarkPatent.Org34 INDUSTRIAL DESIGNS A design of an article may be registered if the feature of shape, configuration, pattern or ornament given to an article by any industrial process or means, whether manual, mechanical or chemical, separate or combine manual, mechanical or chemical, separate or combined, which in the finished article appeal to and are judge solely by the eye. The principle or the mode of construction of the article or mere mechanical contrivance cannot be registered as designs. Trade Marks and Trade Names are also excluded from the scope of design. A design of an article may be registered if the feature of shape, configuration, pattern or ornament given to an article by any industrial process or means, whether manual, mechanical or chemical, separate or combine manual, mechanical or chemical, separate or combined, which in the finished article appeal to and are judge solely by the eye. The principle or the mode of construction of the article or mere mechanical contrivance cannot be registered as designs. Trade Marks and Trade Names are also excluded from the scope of design.

6 August 2005© MarkPatent.Org35 PROCEDURE FOR THE REGISTRATION OF INDUSTRIAL DESIGN Search (Not Mandatory) [Two types of search: 1. when registration number is supplied and 2. when registration number is not supplied by the applicant]  Filing an Application Examination Reply should be given within 3 months from the date of official communication of objection to the applicant or his agent Continue…

6 August 2005© MarkPatent.Org36 [The period for removal of the objection shall not exceed the time period of six months form the date of filing of the application]  On Acceptance  Registration and publication of the particulars of application and representation of the article to which the design has been applied in the Official Gazette Registration and publication of the particulars of application and representation of the article to which the design has been applied in the Official GazetteRenewal

6 August 2005© MarkPatent.Org37 TERM OF INDUSTRIAL DESIGNS Initially ten years form the date of registration, but in cases where claim to priority has been allowed the duration is ten years from the priority date. Initial period of registration may be extended by further 5 years only if an application made before the expiry of the said initial period. Initially ten years form the date of registration, but in cases where claim to priority has been allowed the duration is ten years from the priority date. Initial period of registration may be extended by further 5 years only if an application made before the expiry of the said initial period.

6 August 2005© MarkPatent.Org38 BENEFITS FOR THE REGISTRATION OF INDUSTRIAL DESIGNS Enables licensing and commercialization Enables licensing and commercialization Prevent the unauthorized use Prevent the unauthorized use Seek monetary compensation for losses incurred Seek monetary compensation for losses incurred

6 August 2005© MarkPatent.Org39 COPY RIGHT Copy right is a right given to creators of literary, dramatic, musical and artistic works and producers of cinematograph films and sound recordings to decide on its use. It provides rights of reproduction, public performance, recordings broadcasting and translation or adaptation of the work. Copy right is a right given to creators of literary, dramatic, musical and artistic works and producers of cinematograph films and sound recordings to decide on its use. It provides rights of reproduction, public performance, recordings broadcasting and translation or adaptation of the work.

6 August 2005© MarkPatent.Org40 PROCEDURE FOR THE REGISTRATION OF COPY RIGHT Application for NOC on form TM-60 before the T.M. Registry [If it is artistic work]  Examination report, Compliance, hearing  Receiving NOC from T. M. Registry  Filing of copy right application before the Copy Right Office, New Delhi Continue…

6 August 2005© MarkPatent.Org41 … Receiving Diary No.  Examination report, Acceptance, Publication Certificate No renewal

6 August 2005© MarkPatent.Org42 TERM OF COPY RIGHT : For 60 years BENEFITS OF COPY RIGHTS Gives recognition and economic rewards. Gives recognition and economic rewards. No unauthorized copying or piracy. No unauthorized copying or piracy. Increase access to and enhances the enjoyment of culture, knowledge, and entertainment all over the world. Increase access to and enhances the enjoyment of culture, knowledge, and entertainment all over the world.

6 August 2005© MarkPatent.Org43 GEOGRAPHICAL INDICATION A geographical indication is a sign used on goods that have a special quality or characteristics or reputation based upon the climate or production characteristic unique to the geographical location. A geographical indication is a sign used on goods that have a special quality or characteristics or reputation based upon the climate or production characteristic unique to the geographical location.

6 August 2005© MarkPatent.Org44 PROCEDURE FOR REGISTRATION OF GEOGRAPHICAL INDICATION Filing an application ExaminationAcceptance Advertised in GI Journal  Opposition (within  Allowed or  Appeal 3 months or 1 month Refused To IPAB 3 months or 1 month Refused To IPAB in aggregate from dt. in aggregate from dt. of available journal) of available journal)  Acceptance Acceptance Of GI Of GI  Enter in GI Register Particulars of regd. Enter in GI Register Particulars of regd.  GI entered in Part A  GI entered in Part A Of the register Of the register Particulars of regd. Particulars of regd. Authorized user entered Authorized user entered in Part B of the register in Part B of the register Registration certificate Registration certificate

6 August 2005© MarkPatent.Org45 EXAMPLES Roquefort for cheese produced in France Roquefort for cheese produced in France Swiss Watches Swiss Watches Basmati Rice Basmati Rice Kanchipurm Silk Saree Kanchipurm Silk Saree Nagpur Orange Nagpur Orange Kolhapuri Chappal Kolhapuri Chappal Alphanso Mango Alphanso Mango Dajeeling Tea Dajeeling Tea

6 August 2005© MarkPatent.Org46 TERM OF GI The registration of GI is for a period of ten years The registration of GI is for a period of ten years Renewal is possible for further periods of 10 years Renewal is possible for further periods of 10 years

6 August 2005© MarkPatent.Org47 BENEFITS OF REGISTRATION OF GI Legal protection Legal protection Prevent unauthorized use of registered geographical indication Prevent unauthorized use of registered geographical indication Increase exports of Indian geographical indications by providing legal protection Increase exports of Indian geographical indications by providing legal protection It promotes economic prosperity of producers It promotes economic prosperity of producers

6 August 2005© MarkPatent.Org48 Thank You