Patent and Trademark prosecution trends-2013

67 %
33 %
Information about Patent and Trademark prosecution trends-2013
Law

Published on April 14, 2014

Author: ipcopia

Source: slideshare.net

Description

Prosecution trends of patents and trademarks in India- 2013

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.

06/01/2014INTELLOCOPIA/HLNBHATTA3

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

06/01/2014INTELLOCOPIA/HLNBHATTA10

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:

06/01/2014INTELLOCOPIA/HLNBHATTA13

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/HLNBHATTA16

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: bhatta@ipcopia.com ; 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

Add a comment

Related presentations

This brief presentation covers the concept of 'Fit for purpose' obligation in vari...

The Affordable Care Act (ACA) has met with further hurdles as a DC Court of Appeal...

An impartial and clear mindset is needed when presiding over court proceedings tha...

VONNIS waarbij Hedwig Van Roy niet meer mag zeggen uitvinder te zijn van CLICS. Er...

Constitucional habeas corpus cc liminar

Law

A truly comprehensive estate plan will address the eventualities that you may face...

Related pages

United States Patent and Trademark Office

The USPTO is the Federal agency for granting U.S. patents and registering trademarks. The USPTO registers trademarks based on the Commerce clause of the ...
Read more

Trademark Prosecution | LinkedIn

Trademark Prosecution at a glance: 7,309 LinkedIn members have this skill. ... Senior Patent Prosecution. Greater New York City Area. Legal Services. See more.
Read more

Trademark Prosecution | LinkedIn

Trademark Prosecution at a ... Chemical and BioMedical / Trademark Portfolios at ... Patent and Trademark Prosecution at ...
Read more

Patent prosecution - Wikipedia, the free encyclopedia

Patent prosecution describes the interaction between applicants and their representatives, ... Director of the U.S. Patent and Trademark Office, ...
Read more

Patent Prosecution - Trademark Prosecution - Intellectual ...

Patents Prosecution and Trademark Prosecution are intellectual property ... Prosecution. Patent prosecution and trademark prosecution are some of the ...
Read more

(PPH) - United States Patent and Trademark Office

Patent Prosecution.Highway Pilot Program between the United States Patent and Trademark Office and the ... of a Patent Prosecution Highway (PPH) ...
Read more

Trademark Prosecution, Trademark Prosecution Process

Trademark Prosecution Get complete details about trademark prosecution, ... Trademark Services; Patent Services; IPR Services; Business Services;
Read more

Trademark Prosecution - Trademark and Patent Attorney

Trademark prosecution is an industry term used to describe the process that involves filing a trademark or service mark application with the United States ...
Read more

Patent prosecution - What is Patent Prosecution Process ...

The Patent Prosecution is the formal and promotional interaction between an applicant or his representative ... Trademark Services; Patent Services; IPR ...
Read more