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Prosecution trends of patents and trademarks in India- 2013
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NARENDRA BHATTA HL (FOUNDER & CEO)
DR. ANJU RAWAT AND RANI MADANAN (ASSOCIATES)
PROSECUTION TRENDS OF TRADEMARKS AND PATENTS IN
INDIA 2013
INTELLOCOPIA/HLNBHATTA
INTRODUCTION
06/01/20142
THE PRESENTATION IS:A COMPENDIUM OF PROSECUTION ACTIVITIES
SPECIFIC TO PATENTS AND TRADEMARKS APPLICATIONS/REGISTRATIONS AT IP OFFICE IN INDIA.
A CAPTURE OF TRENDS IN PROSECUTION .A HIGHLIGHT OF IMPORTANT REFORMS THAT THE
REGIME SAW IN THE YEAR 2013, AS IDENTIFIED BY THE AUTHORS.
TO BE CONSTRUED AS PERSONAL OPINION OF THE AUTHOR AND ALL ERRORS DISCREPANCIES, IF ANY, ARE ATTRIBUTABLE ONLY TO THE AUTHORS.
INTELLOCOPIA/HLNBHATTA 06/01/20143
PATENT REFORMS
INTELLOCOPIA/HLNBHATTA
PATENTS:
• Published guidelines for Examination of Biotechnology Applications for patent
Salient Features:
Emphasis given on sections 2(1)(j), 3b,3c, 3d, 3e,3i,3j, 3k, 3p , 10(4) and 10(5).
Illustrative examples were provided to demonstrate claimability of biotechnology related inventions.
Illustrative example for a priori and a posteriori determination of unity of invention was provided.
06/01/20144
INTELLOCOPIA/HLNBHATTA
PATENTS….cont’d : Published draft guidelines for Computer Related Inventions (CRIs) inviting stakeholders to provide comments/suggestions/objections/amendments.
36 firms/companies/organizations, both national and MNCs including Intellocopia posted their opinions.
A stakeholders’ meeting was held in Delhi subsequently.
Draft yet to be finalized.06/01/20145
INTELLOCOPIA/HLNBHATTA 06/01/20146
PATENTS….cont’d :
The draft guidelines proposed/provided the following:• Summary of terms/definitions used while
dealing with patentability of CRI.
• Examination procedure of CRI for assessing novelty, utility(industrial applicability) and inventive step (non obviousness) to be inline with MPEP guidelines for the same.
• Categorization of claims with illustrative example.
• Illustrative examples for determination of excluded subject matter related to CRI’s with emphasis on claim construction and analysis.
• Flowcharts illustrating claims (including claim construction) that render a certain CRI “not patentable”.
INTELLOCOPIA/HLNBHATTA 06/01/20147
PATENTS….cont’d :
• Electronic submission of reply to the
Examination Reports by using the
'Comprehensive e-filing services for Patents',
introduced to facilitate internal automation
and speedy disposal of Applications.
• Draft Amendment Rules published,
emphasizing on revision of Schedule I
Comments/suggestions/objections/amendme
nts from various stakeholders were invited.
INTELLOCOPIA/HLNBHATTA
PATENTS…cont’d:• To increase transparency of prosecution, CGPDTM-Patent Office introduced a series of dynamic utilities :
1) For viewing the month of Request for Examination in respect of which First Examination Report has been issued for each examination group of all jurisdiction of Patent Office.
2) For displaying the pending and grant status of Patent applications (upgraded to include various status in all available fields of invention).
3) For viewing the disposal of Patent Applications by examination groups as per respective jurisdiction.
4) For public to conduct a search to ascertain the status of a patent.
06/01/20148
INTELLOCOPIA/HLNBHATTA
PATENTS…cont’d:
•Indian Patent Office started functioning as
International Searching Authority and
International Preliminary Examining Authority
under the PCT w.e.f 15th October 2013.
06/01/20149
Individual Corporate
ISR 2500 10,000
IPER (where ISR issued by same ISA)
2500 10,000
IPER (where ISR issued by other ISA)
3000 12,000
INTELLOCOPIA/HLNBHATTA 06/01/201410
TRADEMARK REFORMS
INTELLOCOPIA/HLNBHATTA
TRADEMARKS
• Comprehensive e-filing services for filing of
Trademark applications under Indian
Trademark Act 1999 and under Madrid Protocol
launched.
• The guidelines relating to the international
registration of trademarks under the Madrid
Protocol published.
• E-filing of Reply to examination report in
respect of Trademark Applications through the
Comprehensive e-filing services introduced.06/01/201411
INTELLOCOPIA/HLNBHATTA 06/01/201412
• To increase transparency of prosecution,
CGPDTM-Trademark Registry introduced a
series of utilities :• Special drives for post registration changes.
• Speedy disposal of hearings.
• Detailed classification of goods and services under Section 8(1) of Trade Marks Act, 1999.
• Dynamic Trademark utility to facilitate real time viewing of various prosecution stages including detail of Examinations, show cause hearings, journal publications, registrations and disposal of applications.
TRADEMARKS…cont’d:
INTELLOCOPIA/HLNBHATTA 06/01/201413
PROSECUTION TRENDS
INTELLOCOPIA/HLNBHATTA
INTRODUCTION
06/01/201414
•The Controller is the final authority in granting or refusal of a Patent registration.
• The Controller’s decision related to Patents is a speaking order following circular 04-2011 and is published regularly.
•However, no such speaking orders in respect of Trademark matters are published by the Trademark Registry.
• The Controller has powers under various sections of The Patent Act and hence a review of all decisions of Controller issued in the year 2013 was performed to obtain a trend in Controller’s decision.
INTELLOCOPIA/HLNBHATTA
Section 15
Section 14
Section 25
Section 16
Section 11
Section 77
Section 62
Section 10
Section 59
Section 135
The Controller’s decision related to Patent matters were classified based on Sections
of the Patent Act and on nature of Applications filed
06/01/201415
94%
CLASSIFICATION OF DECISIONS BASED ON NATURE OF
APPLICATION
CLASSIFICATION OF DECISIONS BASED ON
SECTIONS
Secti
on 15
Secti
on 14
Secti
on 25
Secti
on 16
Secti
on 11
Secti
on 77
Secti
on 62
Secti
on 10
Secti
on 59
Secti
on 135
0%10%20%30%40%50%60%70%80%90%
100%
Local Applications
National Phase Applications
6 %
INTELLOCOPIA/HLNBHATTA
IPAB ORDERS/DECISIONS IN RESPECT OF TRADEMARKS AND PATENTS IN 2013
06/01/201416
INTELLOCOPIA/HLNBHATTA 06/01/201417
54
188PatentsTM
About 80% of the appeals filed before IPAB
in 2013 are related to Trademark matters
and about 20% arising out of Patents.
INTELLOCOPIA/HLNBHATTA
Further the IPAB Orders/Decisions related to Patent matters were classified based
on subject matter of appeal and nature of origin of appeal
06/01/201418
31%
35%
20%
13%
For revocationAgainst controllers de-cisionWithdrawl of appealMiscellaneous
CLASSIFICATION OF DECISIONS BASED ON TYPE
OF APPEAL
CLASSIFICATION OF DECISIONS BASED ON
SUBJECT MATTER
19
28
42 1
ORAOAMPTRARP
INTELLOCOPIA/HLNBHATTA
06/01/201419
112
50
8 2 3 4 3 6 ORAOAMPCODTRATASRRP
Further the IPAB Orders/Decisions related to Trademark matters were classified based on
nature of origin of appeal
About 60% of the appeals filed before IPAB arose out of Review Applications whereas about 26% of the appeals
were original appeals
INTELLOCOPIA/HLNBHATTA 06/01/201420
ABOUT US:
INTELLOCOPIA – stands for abundance of intellect and enables protection for the ideas which undergo metamorphosis through effort of the intellect turning them into creative works, inventions and brand generation as realised through Patents, Trademarks, Copyrights and Designs.
At Intellocopia, we facilitate acquisition, management and enforcement of IPR.
Our belief is: Protected Intellect is Power,
Protected Intellect is Wealth.
INTELLOCOPIA/HLNBHATTA 06/01/201421
SERVICES PROVIDED:
Development of IP Policies
IP Analysis and Review
Patent Drafting and Prosecution
Trademark , Copyright and Design
Registration.
Customized Training Sessions
IP Valuation.
IP Audit.
Technology Transfer and Licensing
INTELLOCOPIA/HLNBHATTA 06/01/201422
CONTACT US AT
Corporate Off:-29, ‘SHESHASRI’, I ‘C’ Cross, SN Layout, Basaveswarnagar, Bangalore-
560079Office at:-
890/4/5 , 3rd A Main, D Block, Rajajinagar II Stage, Bangalore -560010
E-mail: [email protected] ; Cell: +919448085810
ONLINE AND SOCIAL MEDIA CONTACT:
URL: WWW.IPCOPIA.COMFACEBOOK: http://www.facebook.com/intellocopia TWITTER: http://www.twitter.com/@ipcopia BLOG: http://ipcopia.wordpress.com
