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JURISDICTIONS FOR FILING PATENT APPLICATIONS IN INDIA

 JURISDICTIONS FOR FILING PATENT APPLICATIONS IN INDIA

By Garima Rai, Senior Associate 

INTRODUCTIONNew Microsoft PowerPoint Presentation

India is a huge country with an area of 3.287 million km² and a large population of approximately 1300 million. That is why many governmental agencies in India work on policy of localization rather than centralization.   

Patent office in India is no exception. In India, there are FOUR Patent Offices in FOUR different cities namely, Delhi, Kolkata, Chennai and Mumbai. The Patent Office is headquartered in Kolkata but the Controller General of Patents, Designs and Trademark (CGPDTM) has his office at the Mumbai Location.

WHO CAN FILE IN WHICH JURISDICTION ?

According to Patent Rule 4(1)(i)(a), an Indian applicant can file application for patent at the appropriate Patent Office under whose jurisdiction he normally resides or has his domicile or has a place of business or the place from where the invention actually originated. In case of joint applicants, the jurisdiction will be decided depending on the first applicant among the joint applicants.

Further, according to Patent Rule 4(1)(i)(b), for an applicant, who is non-resident or has no domicile or has no place of business in India, the address for service in India or place of business of his patent agent determines the appropriate patent office where applications for patent can be filed.

For example, if a foreign applicant chooses an Attorney based in Delhi, then the Patent application will be filed at the Delhi Patent Office. Similarly, if the foreign applicant selects an Attorney who has place of business at Chennai, then the patent application will be filed at the Chennai Patent Office.

Although these days, with the introduction of electronic systems, attorneys and firms in one jurisdiction are able to file applications in patent offices located in other jurisdictions. This is very handy strategy for filing applications in certain fields in particular patent offices where there are more chances of favorable issuance by certain patent groups and examiners in those offices. However, many contend that though this strategy works presently, with centralization of examiners and their rotations, the relevance of this strategy will lose significance in coming future.

The functioning of all the four branches of the Patent Office is the same. The territorial jurisdiction for Indian applicants is provided below:

TERRITORIAL JURISDICTION[1] OF APPROPRIATE OFFICE FOR THE APPLICANTS

Office

Territorial Jurisdiction

Patent Office Branch, Mumbai

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

Patent Office Branch, Chennai

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

Patent Office Branch, New Delhi

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

Patent Office, Kolkata

The rest of India.

For queries, please email atmail@gip-india.in 

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INTRODUCTION OF NEW INDIAN TRADEMARK RULES, 2017

INTRODUCTION OF NEW INDIAN TRADEMARK RULES, 2017

 By Moumita Roy, Associate

On 6th March, 2017, the Department of Industrial Policy and Promotion (DIPP) revamped the rules for registering trademarks by notifying new Trade Mark Rules, 2017 suppressing the old rules instituted way back in 2002. These new rules are directed towards streamlining and simplifying the process of Trade Mark registration in India. We are summarizing the changes in few lines below.

  1. All the old TM forms are discontinued and replaced by new set of forms introduced by registry.

To give a respite from encumber some procedure of filing application, rectification, oppositions, renewal etc. 8 new forms have been introduced by the registry in replacement of earlier 74 forms.  The important new forms introduced are TM-A for filing application, TM-M for multi functions, TM-O to file opposition, and TM-R for renewals.

  1. Increase in govt. fee

In increasing the Govt. fee the Applicants are subdivided into certain categories, namely- individuals, startups, small entities & others.

The physical application filing fees is Rs 5000/- (USD 75/-) now onwards for an individual applicant, start up entities, and small entities.

For this purpose the meaning of “startups” and “small entities” have been explained.

  1. A startup entity has been defined as:

    Any entity incorporated within last 5 years and the turnover for any of the financial years, out of the above mentioned 5 years, did not exceed Rs. 25 crores. For the purpose of this explanation, foreign companies which fulfills the above criteria can also claim start up entity status.

  2. A small entity has been defined as:

    A company in service sector, whose capital investment does not exceed Rs.5 crores (Approx. USD .75 million) and for manufacturing sector, whose capital investment does not exceed Rs. 10 crores (Approx. USD 1.5 million).

Foreign companies fulfilling the above criteria can also claim small entity status. The fee has been increased to Rs.10,000/ for any other applicant.

The other prominent changes in the fee structure are as follows:

  • To register a subsequent proprietor in case of assignment or transfer for each Trade Mark has been exceeded to Rs.10,000/.
  • To extend time, for certified copy of registration certificate or duplicate registration certificate the fee is Rs. 1,000/- in the new rule.
  • To expedite the process of application the fee is Rs.40,000/- (USD 600/-) now onwards.
  • The fee to renew a registered trade mark has been increased to Rs.10,000/-.

To promote e-filing of TM applications, the fee for online filing has been kept at 10% lower than that for physical filing.

Moreover, overall fees have been rationalized by reducing the number of entries in Schedule I   from 88 to just 23.

  1. New provisions for registering 3D Marks, Colour Marks and Sound Marks.

A provision for registering 3D marks, Colour Marks, shape of goods and sound marks have been included in the new rules. In the earlier rules there were only the procedure to register a word mark and a device. These new regime will help the proprietors to get a better protection against infringement.

For registration of 3D marks, 3 different views of 3D marks have to be provided. For registration of sound marks, Mp3 sound notes of 30 seconds (at max) have to be produced. For registration of shape of goods or its packaging, five different views of the goods and its description in words has to be provided.

  1. Modalities for service of documents from applicants to the Registry and vice-versa through electronic means have been introduced to expedite the process;

With a strong thrust towards digitalizing the entire administration incentives have been provided for digital filing and electronic communication. E-mail has been made an essential part of address for service to be provided by the applicant or any party to the proceedings so that the office communication may be sent through email. To modernize the process hearing through video conferencing has been introduced. Hearing through video conferencing has also been introduced.

  1. Simplified and Expedited Registration process:

The provisions relating to expedited processing of an application for registration of a trade mark have been extended right up to registration stage. In the earlier rule it was only possible to expedite the examination process. Hence, in new rule one can apply for an expedited process still grant.

To speed up the registration process the numbers of adjournments in opposition proceedings has been marked a limit to a maximum number of two by each party, which will help dispose of matters in time.

The Procedures relating to registration as Registered User of trademarks have also been simplified.

  1. Modalities for determination of well-known trademarks have been laid out for the first time.

New Rules has for the first time laid out modalities for determination of well-known trademarks for brands that enjoy good reputation in the market. A brand can apply for the determination to be a well-known after e-filing of a fee of Rs 1 lakh or USD 1500 (Approx.).

  1. Conclusion

At the conclusion, we appreciate the strive of the registry to update the Trade Mark rules where the speed of the era is inculcated by promoting e-filing, introducing the electronic means for service of documents , granting video conference for hearing etc. Regarding the fee hike, it is true that there is sudden and dramatic increase in fee for filing. But, it also should be considered that the application fee was last increased in 2009. Moreover, to get a world class service from the Indian TMR, the fee must be competitive in the world market. It is a fact that we are much cheaper Trade Mark fee compared to other developing countries even after the increase in fee.   We should not overlook the humanitarian side of the new rule that small entities, startups and individuals are saved from this drastic fee hike to promote small business. Now, with a world class competitive fee structure of Indian trademarks and modernized rules, we are expecting to experience a world class transparent pace of process in the trade mark prosecution and grants.

 

Source: Trade Mark Rules, 2017