Published on April 14, 2014
INTRODUCTION 06/01/2014INTELLOCOPIA/HLNBHATTA2 THE PRESENTATION IS: A COMPENDIUM OF PROSECUTION ACTIVITIES SPECIFIC TO PATENTS AND TRADEMARKS APPLICATIONS/REGISTRATIONS AT IP OFFICE IN INDIA. A CAPTURE OF TRENDS IN PROSECUTION . A HIGHLIGHT OF IMPORTANT REFORMS THAT THE REGIME SAW IN THE YEAR 2013, AS IDENTIFIED BY THE AUTHORS. TO BE CONSTRUED AS PERSONAL OPINION OF THE AUTHOR AND ALL ERRORS DISCREPANCIES, IF ANY, ARE ATTRIBUTABLE ONLY TO THE AUTHORS.
PATENTS: • Published guidelines for Examination of Biotechnology Applications for patent Salient Features: Emphasis given on sections 2(1)(j), 3b,3c, 3d, 3e,3i,3j, 3k, 3p , 10(4) and 10(5). Illustrative examples were provided to demonstrate claimability of biotechnology related inventions. Illustrative example for a priori and a posteriori determination of unity of invention was provided. 06/01/2014INTELLOCOPIA/HLNBHATTA4
PATENTS….cont’d : Published draft guidelines for Computer Related Inventions (CRIs) inviting stakeholders to provide comments/suggestions/objections/amendment s. 36 firms/companies/organizations, both national and MNCs including Intellocopia posted their opinions. A stakeholders’ meeting was held in Delhi subsequently. Draft yet to be finalized. 06/01/2014INTELLOCOPIA/HLNBHATTA5
06/01/2014INTELLOCOPIA/HLNBHATTA6 PATENTS….cont’d : The draft guidelines proposed/provided the following: • Summary of terms/definitions used while dealing with patentability of CRI. • Examination procedure of CRI for assessing novelty, utility(industrial applicability) and inventive step (non obviousness) to be inline with MPEP guidelines for the same. • Categorization of claims with illustrative example. • Illustrative examples for determination of excluded subject matter related to CRI’s with emphasis on claim construction and analysis. • Flowcharts illustrating claims (including claim construction) that render a certain CRI “not
06/01/2014INTELLOCOPIA/HLNBHATTA7 PATENTS….cont’d : •Electronic submission of reply to the Examination Reports by using the 'Comprehensive e-filing services for Patents', introduced to facilitate internal automation and speedy disposal of Applications. • Draft Amendment Rules published, emphasizing on revision of Schedule I Comments/suggestions/objections/amendments from various stakeholders were invited.
PATENTS…cont’d: • To increase transparency of prosecution, CGPDTM- Patent Office introduced a series of dynamic utilities : 1) For viewing the month of Request for Examination in respect of which First Examination Report has been issued for each examination group of all jurisdiction of Patent Office. 2) For displaying the pending and grant status of Patent applications (upgraded to include various status in all available fields of invention). 3) For viewing the disposal of Patent Applications by examination groups as per respective jurisdiction. 4) For public to conduct a search to ascertain the status of a patent. 06/01/2014INTELLOCOPIA/HLNBHATTA8
PATENTS…cont’d: •Indian Patent Office started functioning as International Searching Authority and International Preliminary Examining Authority under the PCT w.e.f 15th October 2013. 06/01/2014INTELLOCOPIA/HLNBHATTA9 Individual Corporate ISR 2500 10,000 IPER (where ISR issued by same ISA) 2500 10,000 IPER (where ISR issued by other ISA) 3000 12,000
TRADEMARKS • Comprehensive e-filing services for filing of Trademark applications under Indian Trademark Act 1999 and under Madrid Protocol launched. •The guidelines relating to the international registration of trademarks under the Madrid Protocol published. • E-filing of Reply to examination report in respect of Trademark Applications through the Comprehensive e-filing services introduced. 06/01/2014INTELLOCOPIA/HLNBHATTA11
06/01/2014INTELLOCOPIA/HLNBHATTA12 •To increase transparency of prosecution, CGPDTM-Trademark Registry introduced a series of utilities : • Special drives for post registration changes. • Speedy disposal of hearings. • Detailed classification of goods and services under Section 8(1) of Trade Marks Act, 1999. •Dynamic Trademark utility to facilitate real time viewing of various prosecution stages including detail of Examinations, show cause hearings, journal publications, registrations and disposal of applications. TRADEMARKS…cont’d:
INTRODUCTION 06/01/2014INTELLOCOPIA/HLNBHATTA14 •The Controller is the final authority in granting or refusal of a Patent registration. • The Controller’s decision related to Patents is a speaking order following circular 04-2011 and is published regularly. •However, no such speaking orders in respect of Trademark matters are published by the Trademark Registry. • The Controller has powers under various sections of The Patent Act and hence a review of all decisions of Controller issued in the year 2013 was performed to obtain a trend in Controller’s decision.
Section 15 Section 14 Section 25 Section 16 Section 11 Section 77 Section 62 Section 10 Section 59 Section 135 The Controller’s decision related to Patent matters were classified based on Sections of the Patent Act and on nature of Applications filed 06/01/2014INTELLOCOPIA/HLNBHATTA15 94% CLASSIFICATION OF DECISIONS BASED ON NATURE OF APPLICATION CLASSIFICATION OF DECISIONS BASED ON SECTIONS 0% 10% 20% 30% 40% 50% 60% 70% 80% 90% 100% Local Applications National Phase Applications 6 %
06/01/2014INTELLOCOPIA/HLNBHATTA17 54 188 Patents TM About 80% of the appeals filed before IPAB in 2013 are related to Trademark matters and about 20% arising out of Patents.
Further the IPAB Orders/Decisions related to Patent matters were classified based on subject matter of appeal and nature of origin of appeal 06/01/2014INTELLOCOPIA/HLNBHATTA18 31% 35% 20% 13% For revocation Against controllers decision Withdrawl of appeal Miscellaneous CLASSIFICATION OF DECISIONS BASED ON TYPE OF APPEAL CLASSIFICATION OF DECISIONS BASED ON SUBJECT MATTER 19 28 4 2 1 ORA OA MP TRA RP
06/01/2014INTELLOCOPIA/HLNBHATTA19 11250 8 2 3 4 3 6 ORA OA MP COD TRA TA SR RP Further the IPAB Orders/Decisions related to Trademark matters were classified based on nature of origin of appeal About 60% of the appeals filed before IPAB arose out of Review Applications whereas about 26% of the appeals were original appeals
06/01/2014INTELLOCOPIA/HLNBHATTA20 ABOUT US: INTELLOCOPIA – stands for abundance of intellect and enables protection for the ideas which undergo metamorphosis through effort of the intellect turning them into creative works, inventions and brand generation as realised through Patents, Trademarks, Copyrights and Designs. At Intellocopia, we facilitate acquisition, management and enforcement of IPR. Our belief is: Protected Intellect is Power, Protected Intellect is Wealth.
06/01/2014INTELLOCOPIA/HLNBHATTA21 SERVICES PROVIDED: Development of IP Policies IP Analysis and Review Patent Drafting and Prosecution Trademark , Copyright and Design Registration. Customized Training Sessions IP Valuation. IP Audit. Technology Transfer and Licensing
06/01/2014INTELLOCOPIA/HLNBHATTA22 CONTACT US AT Corporate Off:- 29, ‘SHESHASRI’, I ‘C’ Cross, SN Layout, Basaveswarnagar, Bangalore-560079 Office at:- 890/4/5 , 3rd A Main, D Block, Rajajinagar II Stage, Bangalore -560010 E-mail: firstname.lastname@example.org ; Cell: +919448085810 ONLINE AND SOCIAL MEDIA CONTACT: URL: WWW.IPCOPIA.COM FACEBOOK: http://www.facebook.com/intellocopia TWITTER: http://www.twitter.com/@ipcopia BLOG: http://ipcopia.wordpress.com
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