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Frequently asked questions

Intellectual Property

What is Intellectual Property?


The word intellectual refers to anything related to intelligence or mental ability. Property is an asset that has value. Hence, intellectual property is an intangible asset created with the help of human intellect, for example, software, technological innovation, design, trade secrets etc.




What are Intellectual Property rights?


Intellectual Property Rights (IPR) are legal rights provided by law for the protection of a person’s intellectual property for a certain time period. Patents, trademarks, designs, copyrights, geographical indications are examples of IPRs. IPRs enable people to benefit financially or get recognition from their inventions or creations and also take legal action against anyone for commercially exploiting their intellectual property without permission.





Trademark

What is a Trademark?


Trademark is a word, phrase, symbol or design that identifies and distinguishes the goods and services of one company/source from the other. It is an effective tool that helps customers recognize a brand in just a glance.




Why use a Trademark?


Any company’s profit is commensurate to the level of confidence and goodwill it has built over time with its customers/clients by offering quality products or services. Hence, trademarks are required to safeguard a company’s reputation and name from being misused by unscrupulous players in the market. Legal action can be taken against anyone involved in the unauthorized use of a trademark that is likely to cause deception or confusion about the source of the goods and services.




What are the features of a good trademark?


A trademark should be distinctive (for example- it can be a newly created word) and short. It should not be descriptive but can be suggestive of the quality of goods it represents. Since trademarks are valuable corporate assets and the process of selecting and registering a trademark may be complex, taking the help of a registered trademark attorney would be a good option.




Is trademark registration mandatory?


No, trademark registration is not mandatory in India. But it is recommended to get trademarkregistration done, as the registration offers several advantages like: Notice to the public about proprietor’s claim of ownership Exclusive right to use the mark nationwide with respect to the goods or services sought in the registration Advertises goods and services of the proprietor Remedies available in case of infringement Unregistered trademarks are vested with rights of passing-off under 'common law' rights. Passing-off rights accrue by simply using a trademark in the trade. However, it is difficult and expensive to prove ownership in case of passing-off and the scope of the rights is usually not very clear. Therefore, it is always advised to get a trademark registration.




What are different types of Trademarks that can be registered in India?


The different types of trademarks that can be registered in India are as follows: Any name (including personal or surname of the applicant) Any arbitrary or invented word, not being directly descriptive of the character or quality of thegoods/service. For example, Kodak Letters or numerals or any combination thereof Slogans Signature Logos Monograms Combination of colors or even a single color in combination with a word or device Shape of goods or their packaging 3- dimensional mark Sound marks Smell marks




What would be a good trademark?


  • Be easy to speak, spell and remember
  • Be invented words or coined words or unique geometrical designs
  • Be distinctive
  • Not be descriptive or deceptively similar
  • Not be laudatory word or words that describe the quality of goods (such as best, perfect,super etc.)




What is the duration of protection?


The term of trademark registration is 10 years from the date of filing of the application, renewable every 10 years. However, it has to be maintained by the payment of the annuity due every 10 years.




Is TM different from SM?


Yes. Trademark is a mark used for the identification of the source or origin of the goods or products. On the other hand, service mark is like trademark only, but it identifies the source of services instead of goods. For example, McDonald’s is a registered service mark but BigMac for burgers is a trademark.





Copyrights

What are Copyrights and how are they different from Patents?


Copyrights are exclusive legal rights granted for expression of ideas such as literary, dramatic, musical or artistic works- books, films, songs or paintings. Patents, on the other hand, are granted for inventions, products or innovative technology. For example-machines, new chemical processes, medicines, etc.




Why do I need to register my Copyright?


The creator of any original work is automatically entitled to copyright protection from the time the work is created. However, the logic behind copyright registration is to place the copyrighted work on record so that in the event of any dispute related to plagiarism or infringement, the owner of the copyright can produce a copy of the original work from the official government source.




How long is a Copyright valid for?


In India, Copyright protection lasts for 60 years. For 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 organizations, the 60-year period is counted from the date of publication. Copyright length varies from country to country. After copyrights expire, the creative work protected by them is shared in the public domain and can be used without restrictions.




Is it mandatory to file an application for registration of a Copyrighted work?


No, given that India is a member of Berne Convention, rights are automatically vested with the creator/author as soon as work is created. However, it is recommended to obtain registration of a copyrightable work.




What is the term of copyright protection in India?


In India, Copyright protection lasts for 60 years. For 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 organizations, the 60-year period is counted from the date of publication.

Copyright length varies from country to country. After copyrights expire, the creative work protected by them is shared in the public domain and can be used without restrictions.





Industrial Designs

What is an industrial design?


Industrial Design refers to a 2D or 3D shape, configuration, pattern or ornament or composition of lines or color or combination that is applied to any article which results in the ornamental or formal appearance of a product. If you get your Industrial Design registered it can be called a Registered Design that is protected under the (Indian) Designs Act, 2000.




Why is Industrial design registration required if my product is already patented?


Consumers like to buy products that catch their attention. The shape or design of any product technically called Industrial designs may not contribute anything to the utility of a product but can certainly enhance its aesthetic and commercial value and hence it’s demand. Patent, on the other hand, is granted for an innovation/technology that has utility and doesn’t take into account the aesthetic aspect. Hence for ensuring that your product can compete on all aspects of the market, getting a Design Patent becomes an important step. Getting your design registered provides a legal remedy against infringement and you gain exclusive rights to sell, make or import the articles with your Industrial Design.




What is the duration of protection of a design?


An Industrial Design is initially protected for a period of 10 years which can be further extended by a period of 5 years on the payment of renewal fees. In India the maximum validity of a registration under the (Indian) Designs Act, 2000 can be 15 years.





Patent

What is a patent and why should I apply for it?


Patent is an exclusive right granted by the Government to an inventor for a process, technology, design or invention for a designated period (in India, it is 20 years) in exchange for disclosing the invention to the public. It helps to deter others from making, selling, importing or using your invention and grants you the power to take legal action if your patented product is commercially exploited by anyone without your permission.




How can I tell if an invention qualifies for a patent?


Your innovation can be considered for obtaining a patent if you think that it would be able to solve a problem in the most creative and novel way possible. This becomes clearer by conducting a Patentability Search before filing a patent application. Technically, the following conditions are to be met to obtain a patent:

  • An invention must be novel or it must not have been made public before your patent application is filed.
  • It must involve ‘an inventive step’. Inventive step means that your innovation should not be obvious or known to any person skilled in the relevant field.
  • It must be capable of industrial application.




How do I make money out of my patent application?


It needs to be understood that patent itself is not a source of income but it can certainly be utilized to generate revenue. Like all other forms of property, a patent can be sold, licensed to a single/ multiple parties in return of a royalty payment or can be used as collateral to loan money from a bank.




Is patent valid in every country?


Patents are territorial rights and are effective against infringements only within the country they are granted in. For example, an Indian patent will give ownership rights within India only. You need to apply separately in every country where you wish to seek a patent. Also, rules and regulations regarding patents in other countries may differ from your home country.




Can I file a patent application on my own?


You can file a patent application on your own without involving a patent attorney. However, in practical terms, it requires you to have some legal skills and the ability to understand the complexity of patent documents. Hence, it is highly advisable to seek legal assistance from a patent attorney for drafting a patent application.




What is a Provisional Patent?


Provisional patent is filed, before filing a regular patent, for obtaining an interim protection. It is usually filed when the invention is not entirely complete and is in the development phase but it can be disclosed on paper. Provisional Patent reserves an earlier filing date for the applicant and any similar inventions filed after the filing date of the provisional application cannot become prior art for the applicant's invention. This provides an inexpensive way to inventors to protect their inventions temporarily until they decide to pursue a full patent. However, a Provisional patent must be followed up by a complete patent application within 12 months from the date of the filing.




What are the steps for filing a patent application?


Step 1: Jot down your invention details

You need to write down the description of the invention with as many details as possible and collect all the information pertaining to your invention such as its uses, advantages, etc.

Step 2: Patentability Search

The next step would be to make sure whether your invention meets all patentability criteria i.e. Novelty, Non-obviousness and whether it has an industrial application. The novelty and non-obviousness are ascertained by performing a search on the patent and non-patent databases available which is called Patentability Search. This search is helpful in checking if any invention similar to your invention exists already.

Step 3: Drafting and Filing a patent application:

Patent drafting involves writing the patent description and claims. Since this process can be quite complex, it is highly recommended that you take the help of a patent attorney to avoid glitches in the later stages. Depending on your suitability, you may go in for a Provisional Application or a Complete Patent Application.

Step 4: Publication of the application:

Your complete patent application shall be published after 18 months of first filing although you can request an early date of publication by submitting a prescribed fee.

Step 5: Request for Patent Examination:

Patent examination is only conducted if a formal Request for Examination (RFE) is filed by the inventor. In case the patent examination request is not filed within 48 months from the date of filing of the patent, the patent application shall be treated as withdrawn by the Indian Patent Office. A request for an early examination can also be initiated if needed.

Step 6: Patent Examination:

For Patent examination, a patent examiner is appointed who inspects the patent application for different patentability criteria like:

  • Patentable subject matter
  • Novelty
  • Non-obviousness
  • Inventive step
  • Industrial application

After reviewing your application for the above terms, the examiner creates a first examination report of the patent application.

Step 7: Objections and Response:

After examination, it is very likely that the patent applicant will receive some kind of objections based on the examination report. You as an applicant need to assess and analyze the examination report with a patent professional to prepare a response to the objections that have been raised in the examination report.

Step 8: Resolving all objections:

If the inventor with the help of the patent professional has been successful in resolving all the objections via written submissions or in some cases even via hearings, the application then moves to the final step i.e. the grant of the patent.

Step 9: Grant of patent:

If the application is found to be meeting all patentability criteria, it would be placed for a grant of patent.

Step 10: Renewal:

Once granted, patent needs to be renewed regularly during its 20 years lifetime by paying the patent renewal fees to the Indian Patent office. This step is mandatory to maintain a granted patent in force.




Can I file patent applications online in India?


Yes, patent applications can be filed online. In fact, the Government charges for online filing are less as compared to paper filing. Government charges for e filing may range from Rs.1600 to Rs.4000 to Rs.8000 and for physical filing-Rs.1750 to Rs.4400 to Rs.8800 depending on the category of the applicant i.e. Natural persons or startup/Small entity/others.





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SS Intellectual Property Neeti Consultancy LLP, 2019

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