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Patents

A patent protects inventions that are novel, inventive and capable of being used in the industry (utility). It grants an exclusive right to prevent others from making, using, selling, offering for sale or importing an invention in the country in which the patent is applied for. For example, if a patent is applied for in India the applicant will have the exclusive right to make, use, sell, offer for sale and import the invention in India.

Today, patents have become a very important tool in achieving business advantage. If a company has a patent over an invention then there is a clear cut advantage as they can maintain exclusivity for a period of 20 years from the date of filing of the patent application. The more the number of patents in a company’s portfolio the stronger and more valuable the company is supposed to be. In addition to the number of patents, quality of patents also matters a lot. It is advisable to approach an experienced and quality patent firm/agent in order to seek help and guidance on drafting, filing and prosecuting patent applications.

The Indian Patent Office (http://www.ipindia.nic.in/patents.htm) headed by Controller General of Patents, Designs, and Trade Marks is the patent granting authority in India. The office has been established under the Ministry of Commerce and Industry, Department of Industrial Policy and Promotion.  

There are four patent offices in India. The patent offices are located at Mumbai, Chennai, New Delhi and Kolkata. An applicant will have to pick an appropriate office for filing a patent application based on the territorial jurisdiction of the patent offices. The territorial jurisdiction of each of the patent office is provided below, and the same can be found at http://www.ipindia.nic.in/jurisdiction-of-patent-offices.htm 

Territorial Jurisdiction  

Mumbai

The States of Maharashtra, Gujarat, Madhya Pradesh, Goa and Chhattisgarh and the Union Territories of Daman and Diu & Dadra and Nagar Haveli 

Chennai

The States of Andhra Pradesh, Karnataka, Kerala, Tamil Nadu and the Union Territories of Pondicherry and Lakshadweep 

New Delhi

The States of Haryana, Himachal Pradesh, Jammu and Kashmir, Punjab, Rajasthan, Uttar Pradesh, Uttaranchal, Delhi and the Union Territory of Chandigarh 

Kolkata

The rest of India

An application for a patent may be filed in India by any of the following persons

  1. True and first inventor of the invention;
  2. Assignee of the true and first inventor, which in most cases is the employer of the person; or
  3. Legal representative of any deceased person who immediately before his death was entitled to make such an application.

A patent application by any person from another country may be filed if the country is a member of the Paris Convention or is among the list of convention countries under the Indian Patent Act.

A patent application in India can be filed at any of the four branches of the patent office located in New Delhi, Kolkata, Mumbai and Chennai. The appropriate office for an applicant to file a patent application would depend on:

  1. Where the applicant resides or has his domicile or has a place of business or
  2. The place from where the invention actually originated.

In case of an International applicant not having a domicile or residence in India, a patent application must be filed through a patent agent. The appropriate patent office in such a case would depend on the address of service provided by the applicant.

Please follow the link to the Indian patent office website to know the territorial jurisdiction of the four patent offices.

http://www.ipindia.nic.in/jurisdiction-of-patent-offices.htm

Any person who is a Patent Agent registered with the Indian Patent Office can help an individual or an organization in filing a patent application. As per the Indian patent act, only a patent agent registered with the Indian Patent Office is entitled to practice before the Controller, prepare all documents, transact all business and discharge any function as may be required in connection with any proceeding before the Controller which starts from the filing of the patent application and may end with the expiry of the patent.  

A patent agent is a person authorized to interact with the patent office on behalf of his client.  He can file a patent application, prosecute the patent application and appear before the patent office or appellate board on behalf of his client. In India, only a person having a science, technology or an engineering degree can become a patent agent. In order to be registered as a patent agent, a person must clear the patent agent exam conducted by the patent office. Foreign citizens are not eligible to register as patent agents in India.

A patent agent is a person who has cleared the patent agent exam conducted by the Indian patent office and has been registered with the Indian Patent Office as a patent agent. A patent agent can draft patent applications, file for patents and appear in proceedings before the Indian patent office, on behalf of a patent applicant.

A patent attorney, on the other hand is a lawyer enrolled at one of the Bar Councils in India in addition to being a patent agent. This means that the patent attorney can not only carry out all the activities of a patent agent but he can also represent a party in a patent litigation in Courts.

A patent application must contain the following forms:

Form 1 – Application for grant of a patent

Form 2 – Specification (Provisional / complete) along with Drawings

Form 3 – Statement and Undertaking regarding foreign applications

Form 5 – Declaration of  inventorship

Form 26 – Authorization of patent agent or any other person. This is submitted in case a patent application is being filed through a patent agent.

Generally, a patent application gets published after 18 months from the priority date of the patent application. However, if an applicant wishes to get the application published before 18 months, he may get the application published earlier by filing a request in the patent office for early publication. The rights of a patentee start from the date of publication of the patent application. Hence, some applicants get the patent application published early.

Patent examination is an activity carried out at the patent office. Subsequent to filing, a patent application and a request for examining the patent application, the patent office carries out patent examination. Patent examination is carried out by a patent examiner, and generally, the patent examiner will have necessary qualification/experience in the technology to which the invention relates. During patent examination, the examiner determines whether the invention fulfils the criteria that are set forth for an invention to be patentable. Some of the criteria being, novelty, inventive step, industrial application and acceptable subject matter, among others. Based on the examination, the patent office issues an examination report. During patent examination, depending on the actions taken by, the applicant of the patent and the patent office, several examination reports may be issued.

A patents search is not mandatory, however performing a patent search before filing a patent application will normally uncover certain granted patents/publications which belong to the same technological field as that of the invention. Conducting a patent search before proceeding to file an application for patent has many advantages some of which are identified below.

  • Patent search provides the inventor(s)/applicant with necessary information as to the strength of the invention against the currently used/existing art;
  • Patent search may guide or inspire the inventor to improve his/her invention based on the disclosure provided in the prior art uncovered during the search;
  • Patent search may provide necessary information to refine the claims at a later stage;
  • Patent search will save money, time and effort in drafting and filing a patent application if the search result indicates that the alleged invention is already in the public domain; and
  • Patent search will allow identifying corporations (which could be potential licensees) that own patents in the same technology as that of the applicant’s invention.

Considering the advantages of performing a patent search, a search is advisable before making a decision on filing a patent application. Patent search may also be done at conception, R and D planning and other stages in order to enable decision making.

There are a lot of resources available online for performing a patent search. Some of these resources are free and belong to the respective patent offices. Some of the resources are listed below:

http://www.uspto.gov

http://ep.espacenet.com/

http://www.wipo.int/pctdb/en/

http://ipindiaservices.gov.in/publicsearch

There are independent resources available like:

Google Patents

Free Patents Online

Further, there are also paid databases like Thomson, LexisNexis Total Patents, and questel orbit available, which cover multiple jurisdictions and provide a common interface for searching.

Yes. Indian Patents and Published applications maybe searched on the Indian Patent office database which is available online. In addition to the online database, a physical search of these documents is also possible and is open to public at the patent office.

The patents are classified under various classes depending on the content. WIPO, USPTO and EPO have separate classification system under which the patents and patent applications are classified (each patent maybe included in more than one class). 

The best way to perform a search would be to perform a keyword search followed by a classification search. Both keyword search and IPC class search is possible on the Indian patent office database. Different keywords maybe used to search for relevant results. The classification search is a more comprehensive search involving two steps;

  1. Identification of relevant classes (IPC or EP classes).
  2. Searching of database for patents in those identified classes.

The Indian patent office database can be used to search all Indian Patents and Indian patent applications. In addition to the Indian patent office database, Indian patents may also be searched on EPO’s online database (http://ep.espacenet.com/advancedSearch?locale=en_EP), or other free databases such as Big patent and paid databases such as Total patent by Lexis Nexis.  

Patentability analysis or patentability opinion is a two-fold process. First step involves searching for prior art that consists of at least one element present in the claims of the invention for which the patentability analysis is being conducted.  Once such a search is conducted the second step is to analyzed the shortlisted prior art references to identify whether the invention being analyzed is patentable or not. A patentability analysis requires both technical and legal expertise. Technical expertise is essential in order to understand the invention and pick the right prior art while legal expertise is required in order to understand the scope of each prior art document and analyze the patentability of the invention.

Each patent office across the world provides a patent database which is generally searchable online and is free for anyone to use for performing patent searches.

The major patent databases provided by the some major patent offices for performing patent searches are provided below:

In addition to the aforementioned patent databases provided by the Patent Offices, there are a few free third party patent databases which may be used for performing patent searches and are listed below:

  • Google Patents
  • Free Patents Online
  • Free Patent Search sponsored by Delphion
  • Patents.com
  • Big Patents India

A patent invalidity search is a search conducted to invalidate claim(s) of an issued patent by uncovering appropriate prior art.  Generally, the invalidity search will be of interest to a company/organization which is alleged to have infringed a patent.  Although, each claim of a patent is presumed to be valid when granted, it is possible that the Patent Office may have allowed claims in error by overlooking the best prior art at least because of the limited time and resources allotted to a patent Examiner for conducting prior art searches.  In such instances, the invalidity search conducted for the patent in question will/should uncover better prior art than the prior art of record uncovered earlier by the patent examiner. 

A Freedom to operate (FTO) search enables a company/individual to analyze if his product/process is infringing on in-force patents/patent applications, belonging to a third party.  The FTO search is jurisdiction specific, for example, if a company wants to release a product in India, the FTO search done will look for patents/patent applications in India. A FTO Search is a search among the claims of in-force patents/patent applications for specific elements/steps of a product/process. A comparison is done between elements/steps of a product/process and individual claims of identified in-force patents/patent applications to determine the freedom to operate.

If freedom to operate exists for a product, it doesn’t necessarily mean that the product is patentable as well.

In order to understand the logic behind the answer, one has to be aware of the various scenarios under which freedom to operate for a product might exist.

Further, it must be noted that freedom to operate is jurisdiction specific, for example, freedom to operate for a product might exist in India and not in US. 

Some of the scenarios under which freedom to operate for a product might exist are listed below:

  • The product has been disclosed in an expired patent. In this case, freedom to operate for the product will exist; however, the product might not be patentable.
  • The product has been claimed in an in-force patent in a certain jurisdiction (example: US) and no such relevant patents have been granted in another jurisdiction (example: India). In this case, freedom to operate will exist for the product in Indian and freedom to operate for the product will not exist in US. Further, in this case, the product will not be patentable.
  • The product has been disclosed in a patent document, but not claimed in the patent. In this case, freedom to operate for the product will exist; however, the product might not be patentable.
  • The product has been disclosed in a non-patent document. In this case, freedom to operate for the product will exist, however, the product might not be patentable.
  • Element(s) of product has not been disclosed. In this case, freedom to operate for the product will exist, and the product might also be patentable (if it fulfils patentability requirements).

The criteria for the patentability of a product/process are that the product/process should be subject matter, useful, novel, non-obvious and enabled. An invention will be patentable only if it passes the aforesaid criteria.  If a product/process is patentable, then it may NOT necessarily have freedom to operate within a particular jurisdiction because the criteria for assessing infringement for ascertaining freedom to operate is based on different principles when compared to patentability.  Infringement is assessed based on whether a product/process falls within the scope of a patent in force.

A product/process may be patentable and still infringing if it falls within the scope of patent claims of another patent that is in force.

For example, consider a case of a product A with elements A, B, C and D and an in-force patent  D1 covering a product B with elements A, B and D in one claim. Due to the presence of the extra element C in the product, the product would be novel and non-obvious in light of the cited prior art (here we are assuming that there are no other relevant prior art) references. But if the owner of the patent covering the product A practices the product in that particular jurisdiction, he would be infringing on D1 as all the elements of D1 are present in product A.

Infringement is an act of making, using, selling, offering for sale or importing the invention which is called for in the claims of the patent by an unauthorized person.  Generally, a claim of the patent is said to be LITERALLY infringed if every element of the claim is found in the accused device.  Further, if a claim of the patent is NOT literally infringed but the accused device performs substantially the same function in substantially the same way to obtain the same result as that of the patented device, the claim is said to be infringed under DOCTRINE OF EQUIVALENCE.

The Patent Cooperation Treaty (PCT) assists applicants in seeking patent protection internationally for their inventions, helps patent Offices with their patent granting decisions, and facilitates public access to a wealth of technical information relating to those inventions. By filing one international patent application under the PCT, applicants can simultaneously seek protection for an invention in a very large number of countries.

An Indian citizen can file a PCT application with the Indian Patent Office as the receiving office or with the International Bureau at Geneva directly. However, if the PCT application does not claim priority from an existing provisional/complete Indian patent application filed at least six weeks before filing the PCT application, then a Foreign Filing Permit (FFP) needs to be obtained from the Indian Patent Office

The advantages of going through the PCT route are

  • The patent applicant has more time to decide the countries where he wants to file (30/31 months as opposed to 12 months, if he is filing directly in each of the countries);
  • The patent applicant gets a comprehensive search report, which can serve as a guide as to the patentability of the invention; and
  • The application can be fine tuned and modified to enable patentability during the examination phase.

Filing a PCT application also provides cost and effort benefits with respect to filing an application in multiple countries. The PCT route is advised for clients, who are as yet unsure of their target countries. The PCT route is also advised for clients, who want to file the same patent application in more than three countries.

By filing a PCT application, one may opt for getting protection for his/her invention in 152 countries which are known as PCT contracting states.   The list of PCT contracting states are provided in the following link

http://www.wipo.int/pct/en/pct_contracting_states.html

A patent search for an invention can be performed by any person who has a fair knowledge of the technology to which the invention relates. However, the accuracy of the search may not be as good as the accuracy with which a patent professional might carry out a patent search.

A patent search can be conducted using online databases. Relevant patent documents are mined from these databases using search queries. Hence, selecting an appropriate database(s) to carry out the search and formulating effective search queries are key aspects of a patent search activity.

The table below provides links to free online databases that can be used to carry out patent search:

Patent database

Data coverage

Help for searching

Further, the links provided in the second column of the table provide the extent to which data is covered by the corresponding database and the links provided in the third column provide help corresponding the search syntaxes and operators that are supported by the databases.

In light of the data coverage and the search query flexibility offered by each of the databases, an appropriate database to carry out patent search may be selected based on our requirement.

Subsequent to selecting a database, search queries have to be formulated to query the database and retrieve relevant documents.  A search query can include key words that are relevant to the technology coupled with syntaxes and boolean operator that are supported by the database. Alternatively, either exclusively or in combination with the key words, patent classification ( http://www.wipo.int/classifications/ipc/en/ )that are relevant to the technology can be used to query the database.

The effectiveness of the patent search largely depends on the ability to, formulate appropriate keyword strings and identify relevant patent classifications, in addition to using patent databases that provided wide scope of coverage and flexibility in formulating search queries (most paid databases are comparatively better than free databases in the aforementioned aspects).

A patent watch maybe carried out in order to update the recent developments in technology or may also be done to monitor a competitors’ patent portfolio. A patent watch may be done by anyone who is either interested in researching on a particular technology and wants to be updated on the developments in a particular field, or by an entity who is interested in traversing around a patent in order to gain business advantage over a competitor’s product.

 

You do not have to file a patent application through a patent agent. A patent application may be filed by the inventor or applicant directly. However, it is advisable to go through a patent agent, who is well advised about the procedures and has experience with prosecuting patent applications.

An Indian patent agent is a person who has a good understanding of the Indian Patent Act and Rules. His knowledge can help in determining the potential of a patent grant for an invention. Additionally, an Indian Patent Agent has the necessary qualification to represent your invention before the Indian Patent Office. A patent agent can draft a patent specification for your invention in conformance with the Indian Patent Act and can also file a patent application for your invention. Post filing, he can also prosecute the patent application by responding to examination reports issued by the patent office and attend hearings in the patent office, if required. Furthermore, he will address various statutory requirement set forth by the Indian Patent Office.

Patent Filing

The process of acquiring a patent in India starts with the filing of the patent application. An application for a patent can be filed by any person who is either the:

  • True and first inventor of the invention;
  • Assignee; or
  • Legal representative of the inventor or assignee.

An application for a patent has to be filed at one of the four patent offices according to the jurisdiction of the applicant. The four patent offices are Kolkata Patent Office, Delhi Patent Office, Mumbai Patent Office and Chennai Patent Office.

Publication of a patent application in India

Once all the aforementioned details have been provided, the application will ordinarily be published within18 months in the official gazette. However, the same may be expedited if a request for early publication is requested by the patent applicant. The advantage of publication to the applicant is that the rights of the patent applicant start from publication, however, they are not enforceable till the patent receives grant.

It should also be noted that there are certain situations under which a patent may be prevented from being published in the gazette. These include situations such as:

  • Non filing of the complete specification within 12 months from the date of filing the provisional specification.
  • Issuance of secrecy direction, or
  • Withdrawal of application by the applicant.

Examination of a patent application

An application for patent is examined only after a request for examination has been made by the applicant. Such request should be made within 48 months from the date of filing of the application or priority. Once the request for examination has been made, the application will be examined by the patent office to verify the correctness of all documents and also to verify the patentability of the invention. After performing the examination, the patent office generally issues an examination report which is known as the First Examination Report (FER). The patent act also mandates a time period of 6 (six) months from the date of issuance of the FER to put the application in order for grant by complying with the objections raised by the patent office.

Grant of a patent in India

Once all the objections have been satisfied and the requisite fee has been paid, the application is granted. Once the patent is granted, it is again published in the official gazette. Any person interested in filing for opposition to the grant of patent can do so within one year period from the grant of the patent by way of a post grant opposition.

Another point to note is that the patent rights which start from the date of publication are now enforceable.

Patent Term

Any patent which is granted will be valid for a maximum term of 20 years from the date of filing or priority, whichever is earlier. However, to keep the patent active for the said 20 years, the patent should be renewed every year.

 

An invention disclosure form enables a patent drafter/searcher to understand the invention, on hand. The Invention Disclosure form is filled by the inventor and should include as much detail as possible and should highlight the novel points of the invention.

Patent drafting is a process of preparing a document that can be filed in a patent office. The document is a techno-legal description of the invention. The description in the document will be in compliance with the patent law of a particular country in which it is filed. The depth of the description in the document will be such that a person, who has sufficient knowledge in the field to which the invention relates, will be able to practice the invention without undue experimentation.  

A patent expert is needed for patent drafting because efficient patent drafting requires in depth understanding of both technical domain and legal principles. Generally an inventor may be well versed with the technology but may not understand the legal principles very well. It is advisable to take help of patent agents who specialize in that area of technology to which the invention belongs.

The best person to draft a patent would be a person who has a blend of technical and legal knowledge. The technical knowledge enables him to understand the invention, while his legal knowledge enables him to draft the patent, keeping in mind the current legal framework.

A Provisional patent application is generally filed when the invention has been conceived but more work needs to be done on the invention to perfect it. This is also known as ‘idea patenting’. Once a provisional application is filed, the applicant has a time period of 12 months to perfect his/her invention and file the complete application.

A complete specification is filed when the invention has taken the final shape and is ready to be filed in a complete manner. A complete application will contain claims which define the scope of your invention.

The time taken to grant a patent application usually depends on the country in which the patent application is filed. While some countries grant an application is 2-3 years, some others take nearly as long as 10-12 years.

The average time for obtaining a patent in India is around 7-8 years.

The Indian patent office has provided an option to expedite the grant of a patent application by expediting the examination of the application.

Request for Expedited Examination of a patent application is a commendable initiative introduced by the Indian patent office to reduce the time taken to examine patent applications. Request for Expedited Examination may be filed by an applicant who:

  1. Is a start-up;
  2. Was a start-up at the time of filing the patent application;
  3. Has chosen India as an International Searching Authority (ISA) or as an International Preliminary Examining Authority (IPEA) in a corresponding PCT application.

Start-ups can benefit greatly if they choose to file an expedited examination request rather than an ordinary request for examination. The biggest advantage of requesting for an expedited examination is that the applications for which expedited examination is requested are allotted to a queue that is different from the ordinary examination queue, which already has lakhs of applications awaiting examination.

To keep a patent in force, a renewal fee has to be paid by the patent holder after the grant of the patent for every year following the second year of the patent, until the patent term ends. The payment can be made by the patent holder himself or by hiring the services of an IP firm or a patent agent.  

The cost for obtaining a patent in India may range from anywhere between a few thousands to lakhs. The fee differs greatly depending on the type of the applicant. For instance, individuals and startups are offered a huge discount of over 90% and small and medium scale enterprises are offered a discount of around 50% of the maximum fees.

Depending on if the patented subject matter is a product or a process, the patent holder gets certain exclusive rights. If the patented subject matter is a product the patent holder gets exclusive rights to prevent third parties from the act of making, using, offering for sale, selling or importing the product to India. Similarly, if the patented subject matter is a process the patent holder gets exclusive rights to prevent third parties from the act of using that process, and from the act of using, offering for sale, selling or importing, to India, the product obtained directly by that process in India.

There are six different types of patent applications, these are:

  1. Ordinary Application: An application for patent filed in the Patent Office without claiming any priority either in a convention country or without any reference to any other earlier application under process in the office is known as an ordinary application.
  2. Convention Application: An application which claims the priority of another application filed in one or more of the convention countries in known as a convention application.Whenever an application is filed in a convention country (basic application), the applicant has to file in India within 12 months from the date of filing of basic application. If applications are filed in two or more countries then the applicant has to file in India within 12 months from the date of filing of earliest application.
  3. PCT Application: The Patent Cooperation Treaty assists applicants in seeking patent protection internationally for their inventions. By filing one international patent application under the PCT, applicants can simultaneously seek protection for an invention in 148 countries throughout the world.

PCT application does not provide for the grant of an international patent, it simply provides a streamlined process for the patent application process in many countries at the same time. Applicant can enter into various countries within 30/31 months from the date of filing of PCT application.

  1. PCT National Phase Application: When a PCT application is filed in any or all of the PCT member states at the end of 30 or 31 months from the priority date or International Application date, whichever is earlier, the application so filed is known as a PCT national phase application.
  2. Patent of Addition: When an applicant comes up with an improvement or modification of the invention described or disclosed in main application for which he has already applied for or has obtained a patent, the applicant may make an application for Patent of Addition.
  3. Divisional Application: When an application made by applicant claims more than one invention, the applicant on his own or to meet the official objection may divide the application and file two or more applications, as applicable for each of the inventions. This type of application, divided out of the parent one, is called a Divisional Application.

Yes, but no person or company having a place of residence in India can file a patent application outside of India unless he /she has secured a Foreign Filing Permit / permission from the Indian patent office to do so or has filed a patent application in India and six weeks have passed since the application was filed in India.

Infringement analysis is conducted in order to determine whether a product or a process infringes upon an existing patent claim. In order to conduct an infringement analysis firstly the scope of the claim should be determined and then it should be checked whether all elements of the claim are present in the product or process. Infringement analysis must be done before launching a product or process in a particular Country. It may also be done for litigation proceedings.

In a patent infringement law suit the party being sued for infringement may take certain defenses to avoid being penalized by the Courts. The first line of defense is to claim that the activity of the respondent does not violate the patent rights of the complainant. This may be achieved by proper construction of the claims of the complainant’s patent and proving that the respondent’s activity is not covered under the claims scope. The next defense that a respondent can raise is by counterclaiming that the patent is invalid due to existing prior art. For this purpose relevant prior art may be cited to indicate that a patent should not have been granted to the complainant in the first place. In addition to the two aforementioned defenses the respondent may claim inequitable conduct on part of the complainant. Inequitable conduct, once proved, results in invalidation of the patent itself.

Other defenses include research exemptions, government use, parallel importation and so on.

After an application for a patent has been filed by the applicant with the patent office, the patent office allocates the application to a patent examiner for examining the patent application.  Initially, the patent examiner examines the patent application for its compliance with the formal requirements.  Thereafter, the examiner further determines as to whether the claims made by the applicant in his/her invention falls under patentable subject matter as set forth in the Patent Act of that particular country where the Applicant has filed for a patent.

Further, a determination is made as to whether the alleged invention has been in the public domain before such filing of the application.  In determining as to whether the alleged invention is worthy of a patent and whether the alleged invention is in fact in the public domain or not, there is an exchange of information between the patent examiner and the applicant.  Such exchange of information is referred to as prosecution.

During the prosecution of the patent application the examiner, more often than not, rejects the claims based on prior arts.  In response to such a rejection, applicant may rebut/traverse the examiner’s rejection by setting forth certain arguments providing reasons as to why the claimed invention is patentable over the prior art and why the rejection should be withdrawn.   Further, the applicant, in addition to the arguments, may make amendments to the claims in order to better define the claimed invention.  

The above process of rejection of claims by the examiner and a response to the rejection by the applicant in the form of amendments and arguments continues until the invention in the patent application is considered to be patent worthy by the patent office and a patent is granted.  The afore-mentioned process of exchange of such information which is material for determining the patentability of the alleged invention creates a prosecution history for that application.

The information obtained from the prosecution history of a patent application acts as an extremely important factor for determining the scope of claims. It has been observed over the past few years, by the patent community across the world, that if claim amendment is made to overcome the examiner’s rejections and the amendment is in the form of deleting certain features, the applicant is precluded from obtaining rights to those features or equivalents of each of those features at a later stage.

Patent opposition is either a pre grant opposition or a post grant opposition. In other words, an opposition for a patent can be filed either before the grant of a patent or after the grant of a patent. A pre grant opposition can be filed by any person, by way of a written representation. However, a post grant opposition maybe filed only by any person interested, by giving a notice of opposition to the controller general of patents in the prescribed manner. The ‘person interested’ includes a person engaged in, or in promoting, research in the same field as that to which the invention relates.

Patent opposition is either a pre grant opposition or a post grant opposition. In other words, an opposition for a patent can be filed either before the grant of a patent or after the grant of a patent. A pre grant opposition can be filed by any person, by way of a written representation. However, a post grant opposition maybe filed only by any person interested, by giving a notice of opposition to the controller general of patents in the prescribed manner. The ‘person interested’ includes a person engaged in, or in promoting, research in the same field as that to which the invention relates.

A pre-grant opposition may be filed any time after a patent application has been published but before a patent is granted for the said application.

Under the Indian Patents Act, any interested person can file a post grant opposition for a granted patent, within one year from the date of publication of grant of the patent.

As the name suggests, a patent watch is a look out for patent applications and granted patents in the area of interest. Patent watch may be limited to a particular field of technology or a particular applicant. 

Trademarks

A trade mark is a representation used in trade or business. It protects the association between the mark and the business and the good will linked with it. It can be a word, symbol, color, sound, smell and so on.

A trade mark application may be filed by the applicant directly or through a trade mark agent. There are two ways to file a trade mark application:
1. Paper filing and
2. Online filing.

Document/ Information require for filing trade mark application:-

• Trade mark name (logo/Device/word /symbol)
• Applicant’s name, nationality, address and
• Registered description of the Applicant (Individual/ partnership firm/ joint firm/ Hindu undivided family/ body incorporate/ society/ trust as the case may be).
• Trade description of the Applicant – such as Manufacturer / Service Provider / Distributor or as the case may be.
• Date of Use of the trade mark (if the trade mark is proposed to be use, date of use is not required. If the trade mark in use, a user affidavit testifying the date of usage of the mark is required to be submitted at the time of filing of an application).
• Class of the Trade mark
• Description of Goods or services.
• For filing an ordinary application other than conventional application in a single class, the prescribed form is TM -A and the statutory fee is as follows:

a) If filed by an Individual, Start-up or SME, fee is INR 4,500
b) If filed by a Body incorporate, fee is INR 9,000

Trade mark is an intellectual property, which provides the exclusive right to use the name, mark, symbol, logo, image or combination of these elements which are used as the brands / names under which goods and services of a merchant/trader are sold. It protects the unauthorized copy or use of a similar mark by any person for the same category of business. It provides the right to prosecute any person who infringes the brand name or identification mark. Even an unregistered trade mark provides protection in form of a passing off action.

A trade mark protects the reputation of the business of the trader. It helps the trader to establish the connection between the mark and the quality/characteristics of goods or services associated with it.

The symbol ® signifies that the trade mark is a registered trade mark. The symbol ™ signifies that the word or logo is used as a trade mark. It may not be a registered mark. When a mark is used as a trade mark, ™ symbol may be used along with the mark. Once the trade mark is registered, the ® symbol is generally used along with the mark.

Can I start using the mark after filing or must I wait for registration to use the trade mark?
A person may use a trade mark for his goods or services irrespective of trade mark filing or registration. Use of a trade mark for a certain period of time will enable the person to show acquired distinctiveness that will help in registration of the trade mark. If the trade mark is filed as a proposed to use mark, it must be used within a period of about five years.

Word mark is a mark, in which a word, combination of alphabets, numerals or combination of alphabets & numerals is used as trade mark (example ‘SAMSUNG’ & I10). A logo mark is a mark which is a symbol, design or a graphical representation used along with the words and/or numerals. Logo marks are generally created in a specific font style.
A word mark gets stronger protection than a logo mark because it allows the owner of the mark to prevent third parties from using the word in any format. On the other hand, logo mark only enables the owner to prevent others from using an identical or similar logo.

Yes, sound can be protected as a trade mark. The definition of trade mark in India states that trade mark is a mark that is capable of being represented graphically. As sound can be represented graphically, it is capable of being protected as a trade mark. Some sounds have already been granted trade mark registration in India. For example, Yahoo – Human voice yodelling Yahoo, Nokia – Guitar notes on switching on the device.

Yes, the status of any trade mark application can be checked online. The searcher needs to have the application number for knowing the latest status. The application number can be entered on the website’s trade mark status check section at https://ipindiaonline.gov.in/eregister/eregister.aspx

Along with a trade mark application, the applicant must mandatorily submit a notarized user affidavit testifying the usage of the mark, if the mark has already been in use. Along with the user affidavit, all necessary documents to prove the date of first use of the trade mark can be submitted. Such proof can be in the form of invoice, sales order, purchase order, advertisement, price list, agreement and so on. Submission of such evidence in advance will enable faster processing of the trade mark application.

Trade marks are published in the trade mark journal. These journals are published by the trade mark registry twice every month i.e. on the first and sixteenth day of every month. Any application accepted after the examination of the registry is published in the journal. The journals can be accessed online at http://ipindia.nic.in

A trade mark is said to be infringed if a person uses an identical or similar trade mark for identical or similar goods or services and such usage is likely to cause confusion among the consumers. Only a registered trade mark owner can initiate proceedings for trade mark infringement in India.

For registration of the trade mark, the trade mark registry will look for the following:

• Whether the applied trade mark has any conflict with any existing registered trade mark or pending trade mark application? A registration will be granted only if the mark for which application has been filed does not have any conflict with existing trade marks or applications.

• Whether the applied trade mark describes the kind, quality, use or geographical origin of the goods or services for which it is used? Registration will not be granted if the trade mark describes the goods or services for which it is used.

• Whether the trade mark has any distinctive character? A trade mark will be accepted only if it has distinctive character.

• Whether the applied trade mark is obscene, scandalous or affects the religious acceptability of any society? Trade mark registration will not be granted if the mark is obscene or has an impact on religious sentiments of communities.

A Famous trade mark is one that has established a strong connection, in the minds of the consumers, between a specific good or service and the source of that good or service. For example, the COCA-COLA and SONY brands have been determined to be famous marks by courts.

The owner of a famous trade mark can prevent another person from using the same or similar mark for any goods or services. He will also have the right to prevent others from registering identical or similar marks for any goods or services

Anyone who is in the business of goods and services which may come under more than one class may register his/ her trade mark under multiple classes. It must be noted that, a mark registered under one class may not get protection under other classes, for example a mark registered for electronic goods under class 9 cannot get protection under class 25 for textile goods. If the producer is in multiple kinds of businesses, then he must file for registration of the trade mark in all classes that relate to his business.

A trade mark clearance search is the search conducted in the database of Indian Trade Mark Registry for existing marks (Registered or applied). If a trader wishes to use any mark as his trade mark, then this search will help him in ascertaining whether any same or similar mark already exists or not. Accordingly, the trader can strategize whether he should go ahead with that mark or not or whether he should file a word mark or a logo mark.

A Trade mark agent is a person who can act on behalf of the applicant of a trade mark in all proceedings before the trade mark registry except signing in an affidavit. A person having a basic degree in any field can become a trade mark agent by passing the qualification exam. A legal practitioner can register directly with the trade mark office as a trade mark attorney. A Trade Mark agent or attorney can represent his clients before the trade mark office.

It is important to choose the best trade mark attorney or agent to ensure that your trade mark protection is strong. A good trade mark agent or attorney must have the following qualifications:
• He must advise you on the best form of trade mark to be filed;
• He must strategize your trade mark filing in the broadest possible manner;
• He must have a strong background in IP (Masters in IP from a leading institute and/or experience of prosecuting numerous trade marks);
• He must enable you to avoid trade mark opposition; and
• He must advise on various options for trade mark filing in case of existence of conflicting marks.

Yes, as per trade mark Act, a trade mark can be granted over a color or combination of colors. Single color trade mark registrations granted are very rare as they lack the capacity to distinguish. In order to obtain trade mark over a color, the color or combinations of color should be capable of distinguishing the business of one entity from another. To obtain registration over a color, strong evidence should be submitted to overcome any possible objections from the Trade mark Registry.

A trade mark can either be a fanciful mark, arbitrary mark, suggestive mark, descriptive mark or generic mark. A fanciful mark gets the strongest form of protection and generic the weakest form of protection.

A fanciful mark is a coined mark and does not indicate or have any connection with the goods or services to which it is applied. For example, Kodak for photographic supplies, where the mark used is fanciful in nature and makes no sense with regard to the product. These type of marks are coined marks and not in existence before the adoption of the mark. They are considered as the strongest marks.

An arbitrary mark provides the second strongest form of protection. Arbitrary marks are existing words applied to totally unrelated goods or services. For example, Apple for computers, camel for cigarette, where the marks signify something other than the products or services on which it is used.

The next type of marks is suggestive marks. They suggest the kind of goods or services to which the mark is applied after application of certain amount of thought. They are protectable marks but not as strong as fanciful or arbitrary marks. For example, yellow pages for telephone directories.

The next category of marks is descriptive marks. These marks describe the goods or services for which they are applied and do not get strong form of protection. For example, Coffee Shop, for a shop that sells coffee is descriptive because it describes the nature of business being carried out. Such marks can be registered only if they acquire secondary meaning through prior usage.

Generic Marks are marks that become synonymous to the goods or services for which they are applied due to extensive or wide usage. The marks are so widely used that the goods or products are referred by the marks. Such marks are not distinctive and therefore, get very weak protection. For example, Xerox for photocopying machines has become generic and has lost its distinctiveness.

A person must choose fanciful or arbitrary marks for getting strong trade mark protection. Efforts must be put on choosing before launching the mark to ensure that similar marks do not exist. The best approach to choosing a trade mark is to shortlist three or four marks and carry out a trade mark clearance search. After performing the search, a mark that has no identical or similar marks can be chosen for protection.

Trade mark Registration Process

Once an application is filed for trade mark registration, the Trade Mark Registry reviews the application and if the basic criteria is met, the application completes the ‘Formalities Check Pass’ stage and proceeds to examination stage where the examiner reviews the application and issue an examination report. This examination report consists of objections raised by the Examiner against registration of the mark. The applicant has to respond to this examination report within 30 days by overcoming all procedural irregularities, if any and by giving appropriate reasons for registrability of the mark. Thereafter, once the Examiner reviews the examination response, the Registry may call for a representation in the form of oral hearing. At the time of the hearing, the Agent or the Applicant is required to submit all documentary evidence to prove the usage of the mark.

Then if the mark is accepted for publication, it will be published in the journal of Trade Mark Registry. Once the mark is published, the same is open for opposition for a period of four (4) months. If no third party files for an opposition during the opposition period, the mark will then proceed for Registration. However, the applicant cannot use a ® symbol unless they receive a registration certificate from the Registry.

Examination report is a report of examination conducted by Trade mark Office after examining the registrability of the application, which includes distinctiveness, existing similarity with prior registrations, and filing of supporting documents.

If a mark is accepted during examination, the trade mark office will issue an acceptance order and the trade mark will be published in the journal. However, a trade mark is rarely accepted without objections. If registration of a trade mark is objected by the examiner in the examination report, applicant or his agent must respond to it within thirty (30) days from the date of receiving the examination report. The response to an examination report must include:

• An answer to the objections raised;
• Relevant case laws or precedents of the trade mark office; and
• Supporting documents to prove inherent or acquired distinctiveness.

After filing the application, every trade mark is examined by the examiners appointed by the Trade Mark Registry. After examination, an examiner issues an examination report in which the objections, if any, are raised by the examiner. On receiving the Examination Report, the applicant has to submit his/her response based on the objections in the examination report. In case the objections are not met to the satisfaction of the trade mark office through the response, the applicant can avail an opportunity of hearing before the Trade Mark Registrar, where he/she can present submissions orally. The hearing is generally conducted by the assistant Registrar of Trade marks.

Identifying conflicting and infringing trade marks or applications is called trade mark watch. A Trade Mark watch enables a trade mark owner to prevent registration of identical or similar marks by a third party. It also enables him to enforce his trade marks effectively.

A person using a trade mark will get the right to prevent others from using the trade mark. However, if a trade mark is not registered, the trade mark owner cannot file an action for infringement. An unregistered mark will have only the right of passing off under common law. However, to exercise this right, the trader has to establish the use of the mark by factual evidence that he has an established trade mark which has reputation and goodwill.

Common sets of goods or services are classified into different classes under the trade mark law. While filing for a trade mark, an applicant must indicate the class or classes to which his/her trade mark belongs. Registration of a trade mark is granted in a specific class or set of classes identified by the applicant. The international system of classification followed across the world is called as NICE Classification.

In India, classes 1-34 deal with goods and classes 35-45 deal with services.

A trade mark can be protected perpetually by continuously renewing it. After the initial registration, the trade mark protection extends to ten years. After the expiry of ten years, it can be renewed every 10 years by payment of the prescribed renewal fee. This process of renewal can be started 6 months prior to its expiry. In case the trade mark is not renewed it will be removed from the register but can be restored if a request is made within one year from the date of expiry or the date of last renewal. However, the applicant is required to pay additional fee for such renewal.

Every registered trade mark has to be renewed once in every ten years from the date of filing of trade mark and the fee for the renewal is INR 9000. The proprietor (the owner of the trade mark) must pay the renewal fees before expiry of the term of ten years but not before 12 months from the date of expiry. If the renewal is done after the expiry but within 6 months, then the fee will be INR 13,500. If the renewal is done after 6 months of expiry but within 1 year, then the fee will be INR 18,000

Copyrights

Copyright is a bundle of rights granted to the creator (author) of literary, dramatic, musical and artistic works, computer programme and producers of cinematograph films and sound recordings. It is a bundle of exclusive rights of reproduction, publication, translation and adaptation and communication to the public. Copyright protection arises automatically once an original work of authorship is fixed in a tangible medium of expression such as written, filmed, recorded etc. Copyright protects only the expression and not the idea underlying a particular work.

An application for registration of copyright has to be filed in the office of Registrar of Copyrights. The Copyright Office has been set up and is headed by a Registrar of Copyrights and is located at B.2/W.3, C.R. Barracks, Kasturba Gandhi Marg, New Delhi- 110 003. The applications for registration of works can be filed at the counter set up at the Copyright Office from 2.30 P.M. to 4.30. P.M. from Monday to Friday. The applications are also accepted by post. One can also file an on-line application for registration through “E-filing facility” on the official website of the Copyright office- http://copyright.gov.in

Yes, you can get copyright protection over your software. The term ‘literary work’ includes computer programs, software and computer databases fixed in any tangible form. Since software can be expressed tangibly in the form of source code, Copyright protection accrues from the moment it is so expressed in a computer memory or on a paper. A software can be registered as a literary work.

A copyright license agreement is an agreement by which the owner of the copyright in a work grants or authorizes another person to exercise his rights. The licensee gets to do all those exclusive acts of the owner that are licensed to him. A license agreement has to be in writing and signed by the owner or his authorized agent.

According to the procedure under the Indian copyright law, it takes about two to three months to get a copyright registration. But in many cases due to procedural delays and the copyright office being overburdened it may take upto 6 to 8 months to get the complete registration.

The term of the copyright varies according to the kind of work and authorship/ownership. In cases of literary, dramatic, musical or artistic work other than photograph, the author/owner gets a copyright for his life time and sixty years from the next calendar year following the year he dies. In case the said work is by joint authors, it is sixty years following the death of the author who had survived the others. In cases of anonymous, pseudonymous and posthumous works, the copyright subsists for sixty years from the next calendar of the year the work is published. In case the identity of the author/owner of such work is disclosed, the work would get the copyright protection for a period of sixty years from the following calendar year from the year of the death of the author, if the work is owned jointly, sixty years from the following calendar year from the date of the death of the owner who dies later. In case of photographs, cinematograph films, sound recording, government works, works of public undertakings or any international organization, the copyright would subsist for sixty years from the date of the publication of the respective work.

Copyright registration of any work gives a bundle of rights to the author/owner of the work. Various rights that registration provides is right to reproduce, right to publish, right to translate, right to make or issue copies, right to sell, right to adapt etc. One important right provided by registration is right of commercial exploitation through which the owner can make commercial gains out of his work.

Copying or using of any work without the authorization or permission of the author/owner of the copyright is known as copyright infringement. Violation of any right provided by copyright protection may amount to infringement.

The Copyright law allows using any copyrighted work for few restricted purposes which are considered to be defenses to copyright infringement. Any work used for the limited purposes of research, private study, for any criticism or review, reporting current events in a newspaper; magazine or any periodical does not constitute infringement. This concept of using the copyrighted work for specific purpose is fair use in copyright.

Any individual who is an author of the work or owner of the rights in the work or assignee or legal heir can file an application for copyright of a work.

Yes. A website is capable of getting the copyright protection. The literary content of a website may be registered as literary work. The multimedia content such as photographs, music and video files may be registered as photograph, sound recording and cinematographic film respectively. The overall look of the website and its user interface may be registered as artistic work.

If a person makes copies of a music CD only for the purpose of personal use, research or for criticism or review there is no infringement of copyright. It is deemed to be a fair dealing of the copyrighted work. However, the extent of such flexibility may vary from country to country.

The producer of the movie is the first owner of the copyright. If there is a prior agreement to the contrary, then the agreement will determine ownership.

No, registration is not necessary for copyright protection. The author gets a copyright over his work as soon as he creates the work. However, registration of copyright is always an added advantage as the registration certificate serves as a prima facie evidence of copyright in the said work. Also the copyright registration serves as notice to public about the ownership of copyright.

Facts and ideas can be copied in a work. But when facts are copied from an existing work care should be taken that the facts should not be expressed in the same style as the existing work. An inference that can be drawn from this is that there is no copyright in facts but a copyright is possible in the manner facts are arranged/compiled.

No, facts are not copyrightable. This is because there is no creativity involved in stating a fact. Facts just state reality and hence no one can claim copyright over facts.

IP Audit

IP Audit is an exercise carried out by a company or a research institute to ensure that the organization’s IP protection and management is in line with its business and other objectives. An IP Audit report generally has the following components:

1. IP Inventory – Listing the IP existing in a company along with legal status of each entry in the list;
2. IP Process verification – Identifying the loopholes or lacunae in the processes being followed in the company; and
3. Action points – Indicating and prioritizing the IP actions to be taken by the company.

IP Audits may be performed at regular intervals to uncover IP and manage it effectively. IP Audits may also be carried out at the time of entering into transactions such as licenses, joint ventures, research collaborations and so on.

IP Audits may be performed at regular intervals to uncover IP and manage it effectively. Regular audits will help a company uncover IP and streamline the processes in the light of its changing business goals.

IP Audits may also be carried out at the time of entering into transactions such as licenses, joint ventures, research collaborations and so on. In such situations, IP Audits will help parties to enter into risk free relationships.

It is advisable to carry out an IP Audit atleast once every two (2) years. Having said that IP Audits may be performed at more or less frequent intervals based on the IP dynamics of a company.

The product of an IP Audit will be a report, which includes the following elements:

1. Inventory of IP held by the company and uncovered during the audit, which is capable of being protected;
2. Review of IP policy and processes of the company in the light of its business goals; and
3. Recommended IP action points with appropriate prioritization.

IP Audit will benefit your company in many ways. Some important benefits are:

1. It will help in uncovering IP capable of being protected by the company;
2. It will ensure that all actions with respect to protected IP and applied IP are taken;
3. It will help a company in re-defining the IP strategy based on business dynamics;
4. It will help in making IP investment or licensing decisions;
5. It will add value for managing IP portfolios effectively;
6. It will help in making decisions on IP maintenance and so on.

IP License

An IP License is an authorization given by the holder/owner of the IP to any person to use his IP rights in exchange for an agreed consideration. The rights granted by the IP owner with respect to its/his/her IP may include right to use, copy, distribute, modify, make, sell, sub license and importation. The rights may vary based on the kind of IP.

Different IP issues that should be considered in agreements include aspects such as, ownership of IP, protection of IP, transfer of IP, third party IP and so on.

Important IP clauses that should be considered in Services Agreements include clauses such as, ownership of IP, protection of IP, transfer of IP, third party liability, indemnity and warranty.

NDA stands for “Non Disclosure Agreement”. As the name suggests, the agreement is entered in order to prevent the disclosure of confidential information by the party receiving the confidential information. The purpose of an NDA may vary based on the transaction between the parties.

NDA and Confidentiality Agreement are two different names used for the same agreement.

Agreements & Contracts

Important IP clauses that should be considered in Research Collaboration Agreements include clauses such as, IP created out of research, ownership of IP, protection of IP, transfer of IP, third party IP liability, commercialization of IP created out of research, indemnity and liability and so on.

Yes, IP agreements in different fields have different issues and must be drafted in the light of transactions pertinent to each field. For example, a license in the biotech field will have different issues and clauses when compared to an agreement in the software field

An IP Agreement may be drafted by anyone who understands the transaction of the agreement and has a strong understanding of IP laws. Though you may draft an IP license by yourself, it is advisable to approach an experienced IP attorney who is specialized in your field.

 

IP Ownership, indemnity and liability are the most highly negotiated IP clauses other than grant, term and royalty clauses.

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Geographical Indication

Geographical Indication (GI) is the indication of quality and characteristics of goods or products originating from a particular geographical region. Protecting a GI enables the owners in preventing others from associating their goods to the GI used for the goods or products of the owners of GI. Mysore silks is an example of GI.

The registration of a GI in India involves following steps:

STEP 1: Filing of application

If the intended goods/product falls within the ambit of the definition of GI under section 2(1)(e), an application for registration may be made in the Geographical Indications Registry by any association of persons or producers or any organization or authority representing the interest of producers of the concerned goods/product.

STEP 2: Preliminary scrutiny and examination

The Examiner will scrutinize the application for any deficiencies and may raise office objections. The applicant should remedy the same within one month. The content of statement of case is assessed by a consultative group of experts and an Examination Report is issued.

STEP 3: Objections, appeals and hearing

If the Registrar has any objection to the application, he will communicate such objection. The applicant must respond within two months or apply for a hearing. After the decision of the registrar the applicant may make an appeal within one month.
The Registrar is also empowered to withdraw an acceptance, if an application is accepted in error, after giving an opportunity of hearing.

STEP 4: Publication in the geographical indications Journal
The application, if accepted will be published in the Geographical Indications Journal within three months.

STEP 5: Opposition to Registration

Any person can file a notice of opposition within three months (extendable by another month on request which has to be filed before three months) opposing the GI application published in the Journal. The applicant has to make a counterstatement within two months of the communication of opposition.
If no counterstatement is made within the given time, the application will be deemed to have been abandoned. Where the counter-statement has been filed, both sides will lead their respective evidences by way of affidavit and supporting documents and a hearing is conducted.

STEP 6: Registration

If the opposition is decided in favor of the applicant the Registrar will register the GI and the registration is granted from the date of filing. The registrar issues a certificate with the seal of the Geographical Indications Registry.

For any goods to get Geographical Indication the basic requirements are that the goods must originate from a particular geographical area. Secondly, the quality or characteristics of such goods must be associated to their geographical area of origin.

A trade mark is a mark used in the course of trade to distinguish goods or services of one person from those of others. Whereas a geographical indication is an indication used to identify goods having special characteristics and originating from a definite geographical territory.

Open Source Software

A software that is governed by a license that is either approved by the open source initiative or follows the open source definition can be considered to be an open source software. The basic principles of the open source definition are:

1. Freedom to re-distribute software;
2. Availability of source code;
3. Freedom to copy and modify;
4. License travels with the software;
5. No discrimination based on technology, field or hardware; and so on.

No, all open source softwares are governed by licenses that impose limitations and conditions for use of the software. For example, as per General Public License (GPL), an open source software cannot be distributed in combination with a proprietary software. The flexibilities provided by an open source license vary from license to license.

You can assure open source license compliance by reviewing the license thoroughly and following the conditions provided under the license. An expert having a good understanding of license requirements will be able to help you with compliance of Open Source Software Licenses.

Yes, there are patent risks if open source software is used. A person can be liable to a third party if the open source software being used falls within the scope of the third party’s patent(s).

Patent risks can be avoided by carrying freedom to operate analysis in jurisdictions in which the software is proposed to be used.

Yes, there are models such as Open Source Maturity Model (OSMM) and Business Readiness Rating (BRR) model that can help you in managing your software. You may contact experts, who can help you use these models for your company.

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An open source license is a license that governs an open source software and follows the open source definition. The open source initiative has approved more than hundred licenses as open source licenses. Some of the popular open source licenses are General Public License (GPL), Mozilla Public License (MPL), Apache License and so on.

 

Conditions for use of open source software depend on the license governing it. Some of the general conditions for use of open source software are as follows:

1. Availability of source code during distribution;
2. Attribution and change notices;
3. License remains the same with respect to modified versions; and so on.

The risks in using open source software may primarily be classified into two types:

1. Risks from original developer; and
2. Risks from third parties.

Risks from the original developer generally come into picture in case of non-compliance of open source license terms. If the license terms are appropriately complied, the risks from the original developer can be mitigated to a large extent.

Risks from a third party primarily arise out of violation of a third party’s IP by the open source developer or by you as a modifier. Such risks can be mitigated through appropriate due diligence.

OSS Compliance can be achieved by hiring open source experts. There are very few open source software consultants in India, who have strong experience in the field.

Code scanning is carried out to identify any open source software in a product sought to be commercialized by a company. Such a scanning will help companies comply with OSS requirements. Companies like Black Duck, Protecode and Palamida offer code scanning services. A legal opinion from an open source expert is required after code scanning.

Traditional Knowledge

Traditional Knowledge (TK) is knowledge that is generally held and preserved by a person or groups of persons and is being transferred from generation to generation. Such knowledge is generally held by indigenous communities, who are cut off from the societies and live in isolation. The knowledge with respect to traditional medicine among groups of people in Kerala is one example of traditional knowledge.

As per the plant variety protection law in India, a plant variety is defined as “a plant grouping except micro-organisms within a single botanical taxon of the lowest known rank, which can be

(i) defined by the expression of the characteristics resulting from a given genotype of that plant grouping,
(ii) distinguished from any other plant grouping by expression of at least one of the said characteristics, and
(iii) considered as a unit with regard to its suitability for being propagated, which remains unchanged after such propagation, and includes propagating material of such variety, extant variety, transgenic variety, farmers variety and essentially derived variety.

The process for acquiring plant variety protection includes the following steps:

Filing of an application;
Review and acceptance of the application by the Registrar;
Advertisement of acceptance;
Opposition of the registration if any; and
Registration of the variety.

India does not have a traditional knowledge protection statute but is in the process of drafting one. Some provisions under the Biodiversity Act and Plant Varieties Act enable defensive protection of traditional knowledge and benefit sharing.

In order to get plant variety protection, a variety must be novel, distinct, uniform and stable. Furthermore, it must also be given a denomination.

General

The process of uncovering IP that has not been protected by a company but has tremendous business value is called IP mining. Mining of IP is generally done by IP attorneys through technology review, document review and interviews.

IP mining helps a company uncover valuable IP that can provide business and competitive advantage. It will help the company in taking protection decisions before possibilities of protection are lost.

IP optimization means planning the resources of a company in order to maximize IP asset value of the company. It helps a company to prioritize and plan for IP protection in the light of resources at a particular point of time.

Managing the IP resources in a company to gain business and competitive advantage is called IP Management. Management of IP can have various facets at the Macro and Micro levels. Managing IP effectively and efficiently helps a company to maximize business benefits from IP.

Before disclosing ideas to VCs, investors, advisors or any other third parties, a start up company must protect its IP appropriately. Steps such as filing a patent application, signing of non-disclosure agreement, filing of a trade mark or copyright and so on will help the start up company in preventing loss of IP.

 

Yes, Bananaip, formerly Brain League is one such company. Having incubated out of IIMB’s entrepreneurship cell (NSRCEL), BananaIP has worked with many start up companies and understands their requirements very well. The firm also offers special fee cuts and services for start up companies.

IP mining must be carried out at least once every year. Having said that, the periodicity of the exercise may vary based on technology and business dynamics of a company.

You can build IP culture and hygiene in your company by taking the following steps:

Training different groups in the company on aspects of IP relevant for them; Organizing events relating to IP such as plays, quizzes, role plays and so on; By setting up an IP process and mandating that it must be followed; Instituting an IP incentive mechanism; and so on.

Any IP Management company can help you with IP optimization. Brain League is one company in India that specializes in IP optimization. It has been working with many companies on optimizing their IP for business advantage.

IP Risk Clearance is an activity carried out to ensure that a company does not infringe any third party’s IP. It also clears risk of loss of IP due to acts or ommissions of a company.

You can avoid IP risks by carrying out regular due diligence activities to prevent infringement and loss of IP. Risk from infringement can be avoided by performing search, infringement analysis and FTO analysis. Risks from loss of IP can be avoided by carrying out IP Audits and checks at regular intervals.

Intellectual Property protection provides business and competitive advantage to a company. While IP is important for all companies, its value for A Start Up Company, especially, a technology or knowledge based company, is very high. In addition to providing business and competitive advantage, IP can play a very important role in enabling a Start Up company to build business relationships, raise funds, face cut throat competition and so on. In the light of the value that can be derived by a Start Up company from IP, its protection and management is very important.

Despite the value IP can provide to Start Up Companies, the lack of financial resources in such companies poses challenges for protecting and managing IP.

Yes, a start up company or entrepreneur can minimize expenses for IP protection. Proper planning coupled with expert advice will enable in cost reduction and optimization of resources. Based on the focus of the company, a good IP expert can help a start up company plan its expenses to get maximum out of its financial resources.