What is a patent?

A patent is an exclusive right granted for an invention. In other words, a patent is an exclusive right to a product or a process that generally provides a new way of doing something, or offers a new technical solution to a problem. To get a patent, technical information about the invention must be disclosed to the public in a patent application.

The patent owner may give permission to, or license, other parties to use the invention on mutually agreed terms. The owner may also sell the right to the invention to someone else, who will then become the new owner of the patent. Once a patent expires, the protection ends, and an invention enters the public domain; that is, anyone can commercially exploit the invention without infringing the patent.

What rights does a patent provide?

A patent owner has the right to decide who may – or may not – use the patented invention for the period in which the invention is protected. In other words, patent protection means that the invention cannot be commercially made, used, distributed, imported, or sold by others without the patent owner’s consent.

What kinds of inventions can be protected?

Patents may be granted for inventions in any field of technology, from an everyday kitchen utensil to a nanotechnology chip. An invention can be a product – such as a chemical compound, or a process, for example – or a process for producing a specific chemical compound. Many products in fact contain a number of inventions. For example, a laptop computer can involve hundreds of inventions, working together.

How long does patent protection last?

Patent protection is granted for a limited period, generally 20 years from the filing date of the application.

Is a patent valid in every country?

Patents are territorial rights. In general, the exclusive rights are only applicable in the country or region in which a patent has been filed and granted, in accordance with the law of that country or region.

How are patent rights enforced?

Patent rights are usually enforced in a court on the initiative of the right owner. In most systems a court of law has the authority to stop patent infringement. However the main responsibility for monitoring, identifying, and taking action against infringers of a patent lies with the patent owner.

What does it mean to “license a patent” and why is it done?

Licensing a patent simply means that the patent owner grants permission to another individual/organization to make, use, sell etc. his/her patented invention. This takes place according to agreed terms and conditions (for example, defining the amount and type of payment to be made by the licensee to the licensor), for a defined purpose, in a defined territory, and for an agreed period of time.

A patent owner may grant a license to a third party for many reasons. The patent owner may not have the necessary manufacturing facilities, for example, and therefore opts to allow others to make and sell his/her patented invention in return for “royalty” payments. Alternatively, a patent owner may have manufacturing facilities, but they may not be large enough to cover market demand. In this case, he/she may be interested in licensing the patent to another manufacturer in order to benefit from another income stream. Another possible situation is one in which the patent owner wishes to concentrate on one geographic market; therefore the patent owner may choose to grant a license to another individual/organization, with interests in other geographical markets. Entering into a licensing agreement can help to build a mutually-beneficial business relationship.

Unlike selling or transferring a patent to another party, the licensor continue to have property rights over the patented invention.

What conditions must be met to obtain patent protection?

There are numerous conditions that must be met in order to obtain a patent and it is not possible to compile an exhaustive, universally applicable list. However, some of the key conditions include the following:

The invention must show an element of novelty; that is, some new characteristic which is not known in the body of existing knowledge in its technical field. This body of existing knowledge is called “prior art”.

The invention must involve an “inventive step” or “non-obvious”, which means that it could not be obviously deduced by a person having ordinary skill in the relevant technical field.

The invention must be capable of industrial application, meaning that it must be capable of being used for an industrial or business purpose beyond a mere theoretical phenomenon, or be useful.

Its subject matter must be accepted as “patentable” under law. In many countries, scientific theories, aesthetic creations, mathematical methods, plant or animal varieties, discoveries of natural substances, commercial methods, methods for medical treatment (as opposed to medical products) or computer programs as-such are generally not patentable.

The invention must be disclosed in an application in a manner sufficiently clear and complete to enable it to be replicated by a person with an ordinary level of skill in the relevant technical field.

Can I obtain a patent for a software-related invention?

Possibly, but laws and practices in this regard can differ from one country or region to another. For example, in some countries, “inventions” within the meaning of patent law must have a “technical character”. In other countries, such requirements do not exist, meaning that in these countries software is generally patentable subject matter.

However this does not mean that all software will be able to be patent protected. In order to obtain a patent, a software invention must not fall under other non-patentable subject matter (for example, abstract ideas or mathematical theories) and has to fulfill the other substantive patentability criteria (for example, novelty, inventive step [non-obviousness] and industrial applicability [usefulness]).

It is therefore recommended that you consult a practicing lawyer specializing in intellectual property or the intellectual property offices of those countries in which you are interested in obtaining protection.

Can I patent my app?

Whether you can obtain patent protection for an app depends on which element of your app you wish to protect. If you want to protect a technical idea or feature relating to the app, patent protection is a potential option. Depending on the applicable national law, the software that runs your app may be able to be protected by patents if it has certain technical features. You must be mindful however that your technical idea must meet all of the patentability requirements to obtain patent protection, and it may take years to get a patent.

In addition, it is important to ask yourself which element(s) of your app should be protected from free use by competitors. The software that runs your app can be protected by copyright (potentially also by patents, as described above). If you are interested in protecting logos or signs contained within your app however, you should consider protecting them using trademarks. Literary and artistic works included within your app, such as original databases, musical works, audiovisual works, works of fine art and photographs, are protected by copyright. Graphical objects and layouts can be protected using industrial designs.

Can I discuss details of my invention with a potential investor before filing a patent application?

It is important to file a patent application before publicly disclosing the details of an invention. In general, any invention which is made public before an application is filed would be considered “prior art ” (although the definition of the term “prior art” is not uniform at the international level, in many countries, it refers to any information which has been made available to the public anywhere in the world by written or oral disclosure before the filing date).

In countries which apply the above definition of the term “prior art”, an applicant’s public disclosure of an invention prior to filing a patent application would prevent him/her from obtaining a valid patent for that invention, since the invention would not comply with the novelty requirement. Some countries, however, allow for a grace period – usually between 6 and 12 months – which provides a safeguard for applicants who disclosed their inventions before filing a patent application. Further, the novelty criteria may be interpreted differently depending on the applicable law.

Why should I consider patenting my inventions?

Exclusive rights: Patents provide you with an exclusive right to prevent or stop others from commercially exploiting an invention for twenty years from the date of filing of the patent application.

Return on investments: Having invested a considerable amount of money and time in developing innovative products, through exclusive patent rights, you may be able to establish yourself in the market as the pre-eminent player and to obtain higher returns on investments.

Opportunity to license or sell the invention: If you choose not to exploit the patent yourself, you may sell it or license the commercialization of the patented invention to another enterprise, which could then be a source of income for your company.

Increase in negotiating power: If your company is in the process of acquiring the rights to use the patents of another enterprise through a licensing contract, your patent portfolio will enhance your bargaining power. That is to say, your patents may prove to be of considerable interest to the enterprise with which you are negotiating, and you could enter into a cross-licensing arrangement where, simply put, your enterprise and the other agree to license respective patents to each other.

Positive image for your enterprise: Business partners, investors and shareholders may perceive patent portfolios as a demonstration of the high level of expertise, specialization, and technological capacity within your company. This may prove useful for raising funds, finding business partners and raising your company’s market value.

What happens if I don’t patent my inventions?

If you don’t patent your invention, competitors may well take advantage of it. If the product is successful, many other competitor firms will be tempted to make the same product by using your invention without needing to ask for your permission. Larger enterprises may take advantage of economies of scale to produce the product more cheaply and compete at a more favorable market price. This may considerably reduce your company’s market share for that product. Even small competing enterprises may be able to produce the same product, and often sell it at a lower price as they would not have to recoup the original research and development costs incurred by your company.

But that’s not all. The possibilities to license, sell or transfer technology will be severely hindered if you don’t patent your invention; indeed, without intellectual property (patent) rights, transfers of technology would be difficult if not impossible. The transfer of technology assumes that one or more parties have legal ownership of a technology and this can only be effectively obtained through appropriate intellectual property (IP) protection. Without IP protection for the technology in question, all sides tend to be suspicious of disclosing their inventions during technology transfer talks, fearing that the other side may “run away with the invention”.

Finally, you have to consider the possibility that someone else may patent your invention first. The first person or enterprise to file a patent for an invention will have the right to the patent. This may in fact mean that, if you do not patent your inventions or inventions made the employees of your company, somebody else – who may have developed the same or an equivalent invention later – may do so. Thus they could legitimately exclude your enterprise from the market, limit your activities to the continuation of prior use (where the patent legislation provides for such an exception), or ask your company to pay a licensing fee for using the invention.

However, to ensure that no one is able to patent your invention, instead of filing a patent application, you may disclose the invention to the public so that it becomes prior art for any patent application that will be filed after your publication, thereby placing it in the public domain (commonly known as defensive publication). Because of the existence of such prior art, later filed patent applications containing the same or similar invention will be refused by a patent office on the grounds of the lack of novelty or inventive step. At the same time, if you disclose your invention before filing a patent application, you will severely limit your possibility of obtaining patent protection on that invention.

What is a trademark?

A trademark may be a word signature, name, device, label, numerals or combination of colours used by one entity for sale of its goods or supply of its services or other articles of commerce and is capable of distinguishing it from other similar goods or services traded by a different entity.

How to select a trademark?

Depending on the strength of distinctiveness, selection of a trademark can be made.

  • Coined, fanciful words or unique geometrical designs are considered to be the strongest trademarks. E.g. Kodak, Pepsi
  • Arbitrary words that bear no meaning for the goods or services they are associated with. E.g. Apple for computers
  • Suggestive words that may suggest or indicate or relate to the goods but does not describe the goods or services themselves. E.g. Airbus for airplanes
  • Descriptive words are those which merely describe the goods or services. E.g. Holiday INN for hotels
  • Generic words or common names enjoys no protection as these are generally the common names used for the goods or services. E.g. Aspirin

Geographical name, common personal name or surname should be avoided.

Also, adjectives and laudatory word or words that describe the quality of goods should not be considered for selecting a trademark.

It is always recommended to do a public search or market survey to assess the registrability of the proposed trademark.

Who can apply for a trademark and how ?

Any person who claims to be the owner or proprietor of the trademark may apply in prescribed manner of registration. The trademark can be anything which has been actually used or is being proposed to be used.  The application should contain the trademark, class of the goods/services, description of goods/services, name and address of applicant and agent (if any) with power of attorney, the period of use of the mark. In the event the trademark was being used before applying for registration then user affidavit with all evidence will also be required.

The application can be filed both offline at the counter of the respective trademark office or online through the e-filing gateway available at the official website.

What is the classification system for goods and services followed by India?

India has adopted NICE Classification for ascertaining the class of goods and services.

What are the various routes of filing a trademark?

The trademark can be filed domestically and then through the Madrid Protocol, the trademark can be registered in more than one countries (which are parties to the Madrid Protocol) claiming priority from the domestically filed trademark. This priority has to be claimed within six months of date of filing the domestic trademark. Another route will be to file the trademark individually in the jurisdiction of interest with or without taking priority of domestic mark.

What does the Indian Register of trademark contain?

The register of trademark primarily contains the following:

  • the trademark,
  • the class and details of the goods/services in respect of which it is registered;
  • conditions/disclaimers particulars affecting the scope of registration of rights conferred;
  • the address of the proprietors;
  • particulars of trade or other description of the proprietor, etc.

Is there a possibility of correction later in the application or the register of trademarks?

Yes, as per Section 22, the Registrar of Trademarks at his discretion, may allow correction of the trademark before or after acceptance, provided the trademark applied for should not be substantially altered affecting its identity.

What is the term of registration of a trademark in India?

The term of registration of a trademark is for a period of 10 years but the same can be renewed thereafter till the time the proprietor intends to keep the trademark registered.

Can a registered trademark be removed from the register?

Yes, a registered trademark can be removed from the register. It can be done on the directions of the Registrar, on application made in the prescribed form to the Registrar on the ground that the mark is wrongly remaining on the register.

What do TM and ® symbols signify?

The symbol TM is used to show that the proprietor has applied for the trademark but it is yet to be registered. The symbol TM can be used for unregistered marks as well for which no application has been filed.

The symbol ®is used to denote that the trademark is registered.

What is copyright?

Copyright is a legal right given to creators of literary, dramatic, musical and artistic works and producers of cinematograph films and sound recording works. For instance, the works range from books, music, paintings, sculpture and films to computer programs, databases, advertisements, maps and technical drawings.

What is a ‘bundle of rights’ offered by copyright?

The bundle of rights offered by copyright to the creators of work includes rights of reproduction, communication to the public, adaptation and translation of the work.

What is the scope of protection under copyright?

Broadly, the works protected by copyright from unauthorized uses include:

  • literary works such as novels, poems, plays, reference works, newspaper articles;
  • computer programs, databases;
  • films, musical compositions and choreography;
  • artistic works such as paintings, drawings, photographs and sculpture;
  • architecture; and
  • advertisements, maps and technical drawings.

The scope of copyright protection is limited only to expressions, and they do not extend to ideas, procedures, any process or mathematical concepts, etc.

Is it required to register a work to claim copyright?

No, since the acquisition of copyright by creator of the work is automatic and there is no mandatory requirement for registration. The copyright comes into existence as soon as the work is created, however, it is advisable to obtain registration since the registration serve as prima facie evidence in court of law with reference to dispute relating to ownership of copyright.

Can I copyright my computer programme or software?

Yes, computer programs and software are considered as literary works for copyright purposes. To comply with the formal requirements, ‘source code’ must be submitted along with the application for registration of copyright.

What is the term of copyright protection?

The term of copyright varies based on the type of work registered. For literary, dramatic, musical and artistic works, it’s author life plus 60-year period from the year following the death of the author. For the works falling under cinematograph films, sound recordings, photographs, posthumous publications, anonymous and pseudonymous publications, works of government and works of international organizations, the 60-year time period is counted from the date of publication.

Who is the holder of copyright for the work created during employment?

When a work is created in the course of author’s employment under a contract of service, the employer remains as the first owner of the copyright in such work created during the course of employment, unless there is an agreement to the contrary.

What is fair use?

Fair use allows for use of a work without permission from the holder of copyright for limited purposes subject certain conditions. The purposes include for research or private study, criticism, review and news reporting, judicial proceedings, as well as use of works in library and schools and in the legislatures.

What is work in public domain?

Work in public domain generally means that the work is no longer under copyright protection because the term of copyright protection has expired.

Can I copyright my website?

Since the website usually consists of different categories of work which may fall under different copyrightable subject matter. For instance, website may contain text, tables, computer programmes, compilations including databases, photograph, paintings, music, sound recordings and cinematographic films.

Therefore, websites as a whole are not subject to copyright protection and a separate application for each category of work appearing on a website needs to be submitted.

What is ‘Design’?

Design constitutes an ornamental or aesthetic aspect of an article involving features of shape, configuration, pattern or ornament or composition of lines or color or combination thereof applied to any article whether two dimensional or three dimensional or both, by any industrial process or means, which in finished article appeal to and solely judged by the eye.

What are the essential requirements for the registration of ‘design’?

The design should be:

  • new or original;
  • relate to features of shape, configuration, pattern or ornamentation applied or applicable to an article;
  • applied or applicable to any article by any industrial process;
  • appealing to and are judged solely by the eye i.e., the design must appear and be visible on the finished article;

The design protection does not cover any mode or principle of construction or operation or anything which is in substance a mere mechanical device and also the design cannot include any Trademark or property mark or artistic work.

What type of protection does design right offer?

The holder of design protection has the right to prevent third parties from making, selling or importing articles bearing or embodying a design which is a copy or substantially a copy of the registered design.

What kind of products can be applied for design protection?

Design protection can be obtained for a wide range of products of industrial and handicraft items. For example products such as packages, container, furniture, household products, electronic devices, textiles, etc.

What is the term of protection?

The term of protection of design is 10 years from the date of registration and the term can be extended for a further period of 5 years.

What is the difference between the design and a patent?

Design only protects the appearance or aesthetic features of a product, on the other hand, the patent protects an invention which provides a novel and inventive technical solution to a technical problem.

What are the marking requirements in cases of registered designs?

It is advisable to mark the article to indicate the number of registered design and this would allow the design holder to claim of damages from any infringer without having to additionally prove that the infringement took place with infringer’s knowledge of the existing registered design.

What is priority date?

The priority date refers to the date of first filing of the design application. India being party to the Paris Convention, it allows for the applicants who has filed application in India to claim priority date of Indian filing and apply for protection in other contracting states within six months.

Is the design registration obtained in one country valid in every country?

Design protection is territorial in nature and as a result design protection obtained in India is limited to Indian jurisdiction. To obtain protection in other countries, an application for the registration of the design must be filed in each of the desired country.

What if the design is not registered?

If the design is not protected, then the business owner may lose the exclusive right to the design and as a result the design is free for any third party to use or sell including the competitors. Consequently, this leads to loss in return of investments made in creation of the design by the business owner.







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