Sunday, September 3, 2017
You have put in years of hard work and huge amounts of money in your invention, but what happens if somebody recreates it through a different method and calls it his own? That’s where patents come into play. Patents are exclusive rights which are granted to the true and first inventor of a product or process, to the exclusion of others, for a fixed period of time. Patentee can sell, assign or license these rights to others.
In our previous blog, we have dealt with the whole procedure of patent registration in India. But who does all this for an inventor? First there should be a clarification about the difference between a “patent attorney” and a “patent agent”.
A patent agent is a person who does patent prosecution i.e. patent drafting, filing and registration, for the inventor. He should have a degree in science, technology or engineering and must have qualified the Patent agent examination in India. He need not be a qualified lawyer. A patent agent is entitled to:
· Practice before the Controller; and
· Prepare all documents, transact all business and discharge such other functions as may be prescribed in connection with any proceeding before the Controller under the Patent Act, 1970.
On the other hand, a patent attorney deals with litigation aspects of a patent like infringement and filing an opposition. A patent attorney holds a degree in law and he may or may not have a technical background. He practices before a court of law and deals with the litigation part of patents.
Nowadays, many patent attorneys are registered patent agents as well to provide the full range of services from patent prosecution – prior art search, filing of patent application, publication, examination and registration of patent – to litigation in case of infringement and filing of opposition.
Saturday, August 19, 2017
Sweden and India – A step towards deeper ties between the two nations!
In recent times, IPR has been in limelight in India. The Modi government is trying hard to give a strong IPR regime in India. This will in turn benefit entrepreneurs, investors and businesses. For this purpose, the Cabinet meeting, led by Prime Minister Narendra Modi approved the proposed MoU on IPR cooperation between Sweden and India.
The MoU has set up a wide ranging and flexible system through which the two nations can trade best practices and cooperate with each other in organizing training programs and technical exchanges to highlight the issues on IPR and better protection on Intellectual Property Rights among public, SMEs and educational institutions of both the countries.
This in turn would help India to exchange experiences in innovation and IP ecosystem which will also enhance the knowledge of IPR. This will be a giant step towards India becoming a major player in Global Innovation and consequently will also further the objectives of National IPR Policy, 2016. The MoU will also cover cooperation in automation and modernisation projects, new documentation and information system in IP and procedures for management of intellectual property.
Saturday, February 6, 2016
Kwality is an iconic ice-cream brand in country. Founded in 1992, Kwality Ltd sells dairy products under its brand `Dairy Best'. But the relationship between the founder’s son, Ravi Ghai and his father’s former business partner, P.L. Lamba is no longer agreeable. Mr. Ghai has dragged Mr. Lamba to Court, alleging that the Lambas unlawfully transferred the intellectual property of brand `Kwality' to another company.
Mr. Ghai, a promoter of Mumbai based Graviss Holdings, accused the Lambas of selling the copyright of the artistic work of the word `Kwality' to a Delhi-based dairy firm Kwality Ltd in August. According to Mr. Ravi, Graviss owns the right of the trademark.
In the Delhi High Court, Graviss argued that it had allowed limited rights to the Lambas to use the trademark for ice-creams and ice lollies in the northern parts of India. This didn't entitle the “defendants to further assign the same in favour of a third party”. In December, the High Court ordered the Lambas and Kwality Ltd to restrain from the usage of the brand till further order.
Mr. Ravi alleged that the Lambas sold the rights to use the Kwality artwork in relation to milk products and non-alcoholic beverages to Kwality Ltd. After purchasing the `Kwality' artwork from Lambas, the company allegedly, roped in actor Akshay Kumar to endorse its products under the same brand name.
The order on this matter is still awaited. However, this dispute should not cause any suffering to our taste buds.
- Atanu Mistry
Tuesday, January 5, 2016
Harris Faulkner, an anchor for the show “Fox Report Weekend” and a co-host for “Fox Outnumbered” brought a suit against toy producer Hasbro for making a toy reflecting her in ditto.She instituted a suit under trademark law for false endorsement and unfair competition as well as violation of her right of publicity. She claimed five million dollars as penalty for this unreasonable similarity.
A small toy hamster that Hasbro has also named “Harris Faulkner” is based on Harris Faulkner. The toy has similar name and look with the Fox News presenter.Faulkner said that the hamster has 'physical resemblance to her traditional professional appearance, in particular the tone of its complexion, the shape of its eyes, and the design of its eye make up'. Hasbro used TM next to the name “Harris Faulkner”.
The reporter contented in her plea that using her name as trademark by Hasbro has violated Faulkner’s right to control the use of her name and likeness. Faulkner found it a ‘direct and contributory' acts of unfair competition and brought the suit under Lanham Act.
In response to this Hasbro said that“mere use of a real person's name for a fictional character is not actionable as a right of publicity claim absent additional evidence that the unique identity of that person has been misappropriated,". It also held that name-sameness is not enough to state a claim for a violation of one’s right of publicity under well-established law. Though the company argued its best, the act of the company is deemed to be intervening of someone’s right and it is more likely to get punished.
Friday, December 18, 2015
TrovaGene, Inc.(TROV), a developer of cell-free molecular diagnostics, on December 16, 2015 announced that the U.S. Patent and Trademark Office has issued Patent No 9,163,229 B2 entitled "Compositions, Methods and Kits for Isolating Nucleic Acids from Body Fluids Using Anion Exchange Media." This patent involves the methods for rapid separation, isolation of systemically derived cDNA, and purification of nucleic acids from urine samples using anion exchange media.
This new patent granted by the U.S Patent and Trademark Office, considerably boosts TrovaGene's intellectual property related to its Precision Cancer Monitoring (PCM) technology. Trovagene now has 87 patents issued and 61 patent applications pending in the U.S. and internationally. Of these, 59 issued patents are related to Trovagene's Precision Cancer Monitoring technology and the detection of cell free nucleic acids in bodily fluids.
Monday, December 14, 2015
Vandals have damaged a building housing Facebook's offices in Hamburg, smashing glass, throwing paint and spraying "Facebook dislike" on a wall, police in the northern German city said on Sunday.
The overnight attack on the social networking group was carried out by a group of 15-20 people wearing black clothes and hoods, police said in a statement. An investigation had been launched.
A Facebook spokesman said nobody was injured in the incident. He said he could not immediately comment on the possible motive for the act of vandalism.
The European head of Facebook is under investigation in Germany over the social network's alleged failure to remove racist hate speech.The investigation was announced last month as German politicians and celebrities voiced concern about the rise of anti-foreigner comments in German on Facebook and other social media as the country struggles to cope with a refugee influx.
Martin Ott, Facebook's managing director for northern, central and eastern Europe based in Hamburg, may be held responsible for the social platform's failure to remove hate speech, a spokeswoman for the prosecution said last month.
A Facebook spokesperson last month declined to comment on the investigation, adding "we can say that the allegations lack merit and there has been no violation of German law by Facebook or its employees."
Facebook has a partnership with a group called FSM, which monitors multimedia service providers on a voluntary basis, and has said it would encourage its users to push back against racism.
- Monidipa Sengupta
Monday, December 7, 2015
Patents are territorially limited. In order to protect one’s inventions in multiple countries one has these options:-
1. Paris Convention
2. PCT fiing
OVERVIEW OF PCT:
· The PCT is an international treaty with more than 145 Contracting States.
· The PCT makes it possible to seek patent protection for an invention simultaneously in a large number of countries by filing a single “international” patent application instead of filing several separate national or regional patent applications.
· The granting of patents remains under the control of the national or regional patent Offices in what is called the “national phase”.
· The purpose of the PCT is to streamline the initial filing process, making it easier and initially cheaper to file a patent application in a large number of countries.
· By filing through the PCT process one can embark on the path to seek patent protection for an invention simultaneously in every country that is a member to the Treaty.
· The PCT application may be filed at:
Ø National patent office of the Contracting States
Ø International bureau of WIPO, Geneva
Ø African Regional Industrial Property Organisation(ARIPO)
Ø European patent Office(EPO)
Ø Eurasian Patent Office(EAPO)
· An international patent application may be filed by anyone who is a national or resident of a Member Country.
· An international patent application has the effect of a national patent application (and certain regional patent applications) in or for all PCT Contracting States, provided that it complies with the minimum requirements for obtaining an international filing date.
THE PCT PROCEDURE
The PCT procedure consists of the following steps:
(i) Filing of international application in a Receiving Office (RO)
(ii) International Search by an International Searching Authority (ISA)
(iii) International Preliminary Examination by an International Preliminary Examining Authority (IPEA)
An international patent application is filed with national patent Office, or directly with WIPO if permitted by one’s State’s national security provisions. These Offices act as PCT “receiving Offices”. A National/ Resident of a country which is party to the ARIPO Harare Protocol, the OAPI Bangui Agreement, the Eurasian Patent Convention or the European Patent Convention, may alternatively file the international patent application with the regional patent Office concerned, if permitted by the applicable national law.
FILING A PCT APPLICATION IN INDIA:
Nationals/Residents of India can file an international application with the Indian Patent Office at Mumbai, Chennai, Delhi or Kolkata as the Receiving Office or The International Bureau of WIPO as the Receiving Office. An applicant can file up to 10 claims in a PCT application.
A request form must be filed in English or Hindi (PCT/RO/01) needs to be accompanied by :-
The international application must be filed in triplicate. The Regional Office keeps one copy of international application for record named ‘Home Copy’ RO sends one copy of international application to International Bureau (IB) of WIPO named ‘Record Copy’ RO sends one copy of international application to the International Searching Authority (ISA) named the ‘Search Copy’
Fees pertaining to the application are of three types and must be paid within a month from the date of its receipt.
· Transmittal fee
· International Filing Fee
· Search fee
The International Filing Date is considered to be the actual filing date in each country designated in the Request. The Receiving Office India (RO/IN) accords as the international filing date the date of receipt of the international application, after the following checks:
(i) the applicant is a resident/national of India,
(ii) the international application is in English or Hindi,
(iii) The international application contains at least the following element
· an indication that it is intended as an international application,
· the designation of at least one Contracting State,
· the name of the applicant, as prescribed,
· a part which on the face of it appears to be a description,
· a part which on the face of it appears to be a claim or claims.
PCT applications are mostly filed electronically. PCT applications can be filed electronically with any competent receiving Offices which accepts such filings. Preparing the PCT application using the WIPO web service (ePCTfiling) or the software provided by WIPO (PCT-SAFE) helps to prepare your applications by automatically validating the entered data and drawing your attention to incorrectly or inconsistently completed parts. Manage applications are easier in the electronic process, for example, with monitoring time limits for relevant actions. Certain PCT fee reductions are allowed when filing electronically. More details about PCT electronic filing can be found at http://www.wipo.int/pct-safe/en/
INTERNATIONAL SEARCH AND PRELIMINARY EXAMINATION:
Every international application is subject to international search by an International Searching Authority (ISA). An applicant may opt for international preliminary examination by an International Preliminary Examining Authority (IPEA). A few Patent offices in the world have been recognized by the WIPO to function as International Search Authority and International Preliminary Examining Authority under the PCT. The Indian Patent Office (presently, the Delhi branch) started functioning as ISA/IPEA from 2013.
An applicant from India can choose any one of the following ISA/IPEA for international search and preliminary examination Indian Patent Office
· Australian Patent Office
· Austrian Patent Office
· European Patent Office
· State Intellectual Property Office of the People’s Republic of China
· Swedish Patent and Registration Office
· United States Patent and Trademark Office
A PCT international search is a high quality search of the relevant patent documents and other technical literature. It is in those languages in which most patent applications are filed (Chinese, English, German and Japanese, and in certain cases, French, Korean, Russian and Spanish). The high quality of the search is assured by the standards prescribed in the PCT for the documentation to be consulted, and by the qualified staff and uniform search methods of the ISAs, which are all experienced patent Offices.
The results are published in an international search report and a written opinion of the ISA on the potential patentability of the invention. The international search report consists mainly of a listing of references to published patent documents and technical journal articles which might affect the patentability of the invention disclosed in the international application. The report enables one to evaluate chances of obtaining patents in PCT Contracting States.
The international application along with, the International Search Reports are published by the WIPO after expiry of 18months from the priority date of the application.
After establishment of ISR and publication by WIPO, the applicant may opt for International Preliminary Examination (IPE). IPEA establishes International Preliminary Report on Patentability (IPRP). If the applicant does not opt for IPE, the International Bureau of WIPO publishes the Written Opinion of the Search Authority as International Preliminary Report on Patentability.
IPE is optional. If an applicant opts for IPE, there are two kinds of fees payable:
· Preliminary Examination Fees
· Handling fee (for Indian applicants is 221 USD).
THE NATIONAL PHASE:
After the end of the PCT procedure, either after international search or after international preliminary examination and before 30/ 31 months from the priority date , applications for the grant of patents can be filed before the national (or regional) patent offices of the countries in which patent protection is desired. The filing procedure fee and processing are as per the requirements of national law relating to patents in each country. The filing date is the international filing date in all such countries. For grant of patent in India, the applicant has to file a national phase application in India before the expiry of 31 months from the priority date of the application. The international application as filed under the PCT is treated as corresponding application in India.