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Patent Protection and Intellectual Property Enforcement in India
Guidelines for Entrepreneurs
What intellectual property objects are protected and where are they registered
Intellectual Property (IP) in India is protected under various national laws. The Office of the Controller General of Patents, Designs and Trade Marks (CGPDTM) is the primary administrative body for patents, designs, trademarks, and geographical indications.
- Copyright (literary, dramatic, musical, artistic works, cinematograph films, sound recordings)
Voluntary registration with CIPC
- Voluntary registration with The Copyright Office is possible at the rightsholder's discretion.
Registration with The SICLD Registry is required to obtain statutory protection
- Semiconductor Integrated Circuits Layout Designs (SICLD)
Registered by Protection of Plant Varieties and Farmers' Rights Authority (PPVFR Authority)
- Plant Varieties (under a separate act)
Registered by Office of the Controller General of Patents, Designs and Trade Marks (CGPDTM)
- Patents
- Designs
- Trademarks
- Geographical Indications (GIs)
How to find a patent attorney?
A list of registered patent agents is maintained by the office. This list can be viewed at CGPDTM website. The applicant is free to appoint any patent agent from the said list.
https://iprsearch.ipindia.gov.in/AgentRegister/
Further, for assisting startups to file the patent applications, the Patent Office has enrolled the facilitators and prescribed a certain limit of fee reimbursement to be paid to the facilitators under the SIPP scheme.
https://iprsearch.ipindia.gov.in/AgentRegister/
Further, for assisting startups to file the patent applications, the Patent Office has enrolled the facilitators and prescribed a certain limit of fee reimbursement to be paid to the facilitators under the SIPP scheme.
International filing systems
International filing systems provide a unified registration procedure that allows an applicant to file a single application and subsequently obtain legal protection for IP objects in the designated member states.
IP Objects
Patent
Definition:
An invention relating either to a product or process that is new, involves an inventive step, and is capable of industrial application can be patented. However, it must not fall into the categories of inventions that are non-patentable under sections 3 and 4 of the Patents Act, 1970.
Where is application submitted?
Indian Patent Office functions from four locations viz. Delhi, Mumbai, Kolkata and Chennai with defined areas of territorial jurisdiction. Patent applications can be filed offline (in person or by post to the appropriate Patent Office with required forms and fees) or online using the following weblink.
Every patent application upon filing the request for examination undergoes the substantial examination. The timeline for various step involved in the process of grant is mentioned in Patents Act and Patents Rules. Further, provision of expedited examination is available under Rule 24C of the Patent Rules for specific categories of applicants.
International registration systems:
Patent Cooperation Treaty (PCT)
An invention relating either to a product or process that is new, involves an inventive step, and is capable of industrial application can be patented. However, it must not fall into the categories of inventions that are non-patentable under sections 3 and 4 of the Patents Act, 1970.
Where is application submitted?
Indian Patent Office functions from four locations viz. Delhi, Mumbai, Kolkata and Chennai with defined areas of territorial jurisdiction. Patent applications can be filed offline (in person or by post to the appropriate Patent Office with required forms and fees) or online using the following weblink.
Every patent application upon filing the request for examination undergoes the substantial examination. The timeline for various step involved in the process of grant is mentioned in Patents Act and Patents Rules. Further, provision of expedited examination is available under Rule 24C of the Patent Rules for specific categories of applicants.
International registration systems:
Patent Cooperation Treaty (PCT)
DESIGNS
Definition:
"Design" means the features of shape, configuration, pattern, ornament or composition of lines or colours applied to any article whether in two dimensional or three dimensional or in both forms, by any industrial process or means, which in the finished article* appeal to and are judged solely by the eye. It does not include any mode or principle of construction, any mechanical device, a trademark, or an artistic work.
* - Under the Designs Act, 2000 the "article" means any article of manufacture and any substance, artificial, or partly artificial and partly natural; and includes any part of an article capable of being made and sold separately.
"Design" means the features of shape, configuration, pattern, ornament or composition of lines or colours applied to any article whether in two dimensional or three dimensional or in both forms, by any industrial process or means, which in the finished article* appeal to and are judged solely by the eye. It does not include any mode or principle of construction, any mechanical device, a trademark, or an artistic work.
* - Under the Designs Act, 2000 the "article" means any article of manufacture and any substance, artificial, or partly artificial and partly natural; and includes any part of an article capable of being made and sold separately.
TRADEMARKS
Definition:
A trademark may be a mark in the form of a device, brand, heading, label, ticket, name, signature, word, letter, numeral, shape of goods, packaging or combination of colours or any combination thereof, provided it is capable of being represented graphically and distinguishing the goods or services of one person. It includes a sound mark.
Stages of examination:
International registration systems:
Madrid System
A trademark may be a mark in the form of a device, brand, heading, label, ticket, name, signature, word, letter, numeral, shape of goods, packaging or combination of colours or any combination thereof, provided it is capable of being represented graphically and distinguishing the goods or services of one person. It includes a sound mark.
Stages of examination:
- Initial Examination: An Examiner prepares a report. If the trademark is found acceptable, it is published in the Trademark Journal. If not, an examination report is issued. The applicant must respond to objections within 30 days.
- Response to Examination Report: The applicant’s reply is considered. If objections are not satisfied, a hearing is scheduled.
- Publication and Opposition: If no opposition is filed within four months from the date of publication, the trademark becomes eligible for registration.
- Opposition Process: If an opposition is filed, both parties are given a hearing. If the opposition is dismissed, the trademark is registered.
International registration systems:
Madrid System
GEOGRAPHICAL INDICATIONS (GIS)
Definition:
A GI is an indication which identifies goods as originating or manufactured in a territory, region or locality where a given quality, reputation or other characteristic of such goods is essentially attributable to its geographical origin. "Goods" means any agricultural, natural or manufactured goods or any goods of handicraft or of industry and includes foodstuff.
Stages of examination:
A GI is an indication which identifies goods as originating or manufactured in a territory, region or locality where a given quality, reputation or other characteristic of such goods is essentially attributable to its geographical origin. "Goods" means any agricultural, natural or manufactured goods or any goods of handicraft or of industry and includes foodstuff.
Stages of examination:
- Preliminary Examination: The registry issues a report. The applicant must comply with deficiencies within one month.
- Pre-hearing: Scheduled in case of non-compliance or partial compliance.
- Consultative Group of Experts: The registry constitutes a group of experts to evaluate the application. The applicant is given an opportunity to make a presentation. Based on the recommendation, an Examination report is issued. The applicant must comply with requirements, if any, within two months.
- Publication: During the publication period of four months, any person may oppose the application and file a Notice of Opposition. If no opposition is filed during this period the Application proceeds for registration and registration certificate is issued.
- Registration: If no opposition is filed, the certificate is issued.
COPYRIGHT
Definition:
The Copyright Act, 1957 protects original literary, dramatic, musical, artistic works, cinematograph films, and sound recordings.
Stages of examination:
International conventions:
Copyright protection is automatic under the Berne Convention
The Copyright Act, 1957 protects original literary, dramatic, musical, artistic works, cinematograph films, and sound recordings.
Stages of examination:
- Application Submission: The registrar assigns a diary number.
- Waiting Period: There is a mandatory 30-day waiting period for opposition. If no objections are received, the application proceeds to the next stage.
- Examination: The application is scrutinized by the copyright examiner for discrepancies.
- Opposition Handling: If an opposition arises, both parties are notified and a hearing may be scheduled. The application proceeds only if the opposition is rejected and discrepancies are resolved.
- Issuance of Certificate: Once the application is approved by the Registrar/Deputy Registrar, the copyright registration certificate is issued upon approval.
International conventions:
Copyright protection is automatic under the Berne Convention
Semiconductor Integrated Circuits Layout Designs (SICLD)
Definition:
A layout of transistors and other electronic circuitry elements and includes lead wires connecting such elements and expressed in any manner in a semiconductor integrated circuit.
(A semiconductor integrated circuit means a product having transistors and other electronic circuitry elements inseparably formed on a semiconductor material or an insulating material or inside the semiconductor material and designed to perform an electronic circuitry function.)
List of documents for filing an application:
Stages of examination:
1. Filing of application.
2. Acceptance of application.
3. Registrar may accept, refuse, or accept with modifications.
4. Advertisement of accepted applications within 14 days.
5. Opposition can be filed within 3 months of advertisement.
6. Counter-statement to be filed within 2 months from the date of receipt of the notice of opposition.
7. Hearing with the parties.
8. Decision on originality and registration.
9. Appeal to the Appellate Board or Court.
A layout of transistors and other electronic circuitry elements and includes lead wires connecting such elements and expressed in any manner in a semiconductor integrated circuit.
(A semiconductor integrated circuit means a product having transistors and other electronic circuitry elements inseparably formed on a semiconductor material or an insulating material or inside the semiconductor material and designed to perform an electronic circuitry function.)
List of documents for filing an application:
- Application on Form LD-1.
- Three sets of drawings or photographs of mask Layout (can be submitted as GDS-II file with the PDK information).
Stages of examination:
1. Filing of application.
2. Acceptance of application.
3. Registrar may accept, refuse, or accept with modifications.
4. Advertisement of accepted applications within 14 days.
5. Opposition can be filed within 3 months of advertisement.
6. Counter-statement to be filed within 2 months from the date of receipt of the notice of opposition.
7. Hearing with the parties.
8. Decision on originality and registration.
9. Appeal to the Appellate Board or Court.
Stages of registration in the Office of CGPDTM
Filing an application
Applications can be filed online or offline (by post or at the counter) at the appropriate office
Formal Examination (Preliminary)
A preliminary report is issued to check for deficiencies and compliance with the respective Act and Rules
Compliance/Response
The applicant must respond to the objections or deficiencies raised in the examination report within the prescribed time (e.g., 30 days for Trademarks)
Substantive Examination / Hearing
The application is examined on substantive grounds. In some cases, a hearing is scheduled to resolve objections (e.g., for Trademarks and GIs)
Publication
Accepted applications are published in the relevant official journal (Trademark Journal, GI Journal, etc.) for opposition
Opposition Period
Third parties can oppose the registration within a specific period (e.g., 4 months for Trademarks and GIs)
Registration and Grant of Certificate
If no opposition is filed, or if the opposition is dismissed, the IP is registered, and a registration certificate is issued
IP Objects Comparison
Measures to Prevent Infringement of Intellectual Property Rights
Publication of information in open registers
The trademarks accepted by the Trademarks Registry are advertised/published online in the official Trademarks Journal before registration. This ensures that the public is aware of the trademarks that are liable to be registered if no opposition is filed.
Similarly, Geographical Indications (GIs) applications are published in the Geographical Indications Journal, allowing third parties to oppose registration within a specified period (four months).
Similarly, Geographical Indications (GIs) applications are published in the Geographical Indications Journal, allowing third parties to oppose registration within a specified period (four months).
Marking of goods with protection symbols
Trademarks: The owner of a registered trademark may use the ® symbol to indicate that the mark is officially registered, serving as a deterrent.
Border Enforcement Measures
Copyright: The Copyright Act provides for the prohibition of import and destruction of imported goods that infringe the copyright of a person with the assistance of the customs authorities of India.
Contractual Regulation
Licensing Agreements: Use licensing agreements to control how others can use the copyrighted work. This can involve specifying terms of use and any fees associated with the use of the work.
Documentation
Keep detailed records of your creations, designs, or marks. Documenting creation dates and development stages can help prove ownership.
Monitoring
Regularly monitor the market for potential infringements. This can include online searches, market surveys, and using intellectual property watch services.
Liability for IP Rights Infringement
Criterion | Civil Liability | Criminal Liability | Administrative / Border Enforcement |
Jurisdictional authority | District Court or High Court (Section 134 of Trade Marks Act, Section 66 of GI Act, Chapter XVIII of Patents Act). | Magistrate/Criminal Court (Chapter XIII of Copyright Act, Section 56 of SICLD Act). | Customs Authorities of India (Border enforcement for Copyright). |
Subject of claims (sanctions) | - Injunction (including ex-parte). - Damages or an account of profits (at plaintiff's option). - Delivery-up of infringing labels and marks for destruction or erasure. | - Imprisonment. - Fines. - Seizure of infringing copies. - Delivery of infringing copies to the owner. - Forfeiture of goods (for SICLD). | - Prohibition of import. - Destruction of imported goods that infringe copyright. |
Conditions of application | For Patents, the suit for infringement can be filed only after a patent is granted. For Designs, relief can be claimed from the date of registration. | Infringement of Copyright is a criminal offense. For SICLD, penalty for contravening Section 18 of the Act. | For Copyright infringement, assistance from customs authorities is available. |
Additional information | For Patents, in case of a counter-claim for revocation, the suit is transferred to the High Court. | Criminal remedies complement civil remedies (for Copyright). | - |
Unregistered IP Rights Enforcement and Protection
Patents
Patent registration is mandatory to avail statutory protection.
Subject matter of an invention will not be protected if it is not registered or if the Patent is not renewed.
Subject matter of an invention will not be protected if it is not registered or if the Patent is not renewed.
Designs
Unregistered designs do not have the statutory protection provided under the Designs Act.
Common law principles can offer some protection if the design is associated with a well-established reputation Limited and not as robust as the protection for registered designs.
Common law principles can offer some protection if the design is associated with a well-established reputation Limited and not as robust as the protection for registered designs.
Trademarks
A trademark owner is not entitled to initiate infringement proceedings for an unregistered trademark.
The owner can take legal action under the common law principle of "passing off" (Section 27(2) of the Trade Marks Act, 1999).
The owner can take legal action under the common law principle of "passing off" (Section 27(2) of the Trade Marks Act, 1999).
Geographical Indications
No person is entitled to institute proceedings for infringement of an unregistered GI.
The right to action against any person for passing off goods as the goods of another person (injunctions, damages, accounts of profits) is not affected.
The right to action against any person for passing off goods as the goods of another person (injunctions, damages, accounts of profits) is not affected.
Copyright
Registration is not mandatory. As per the Berne Convention, unregistered copyrights receive the same protection.
The original creator can avail the legal remedies provided under the Copyright Act.
The original creator can avail the legal remedies provided under the Copyright Act.
Semiconductor Integrated Circuits Layout Designs (SICLD)
No person is entitled to institute any proceeding for infringement of an unregistered layout-design (Section 16 of the SICLD Act, 2000).
Registration is necessary for legal protection.
Registration is necessary for legal protection.
What to do in case of infringement of unregistered rights?
Step 1
Gather Evidence:
Document the infringement with as much detail as possible, including dates, evidence of the infringing activity, and its impact on your business
Step 2
Send a Cease and Desist Letter:
Send a formal letter to the infringer requesting them to stop their infringing activities. This letter can also outline your legal claims and demand corrective actions
Step 3
Seek Mediation or Arbitration:
Consider alternative dispute resolution methods to resolve the issue without going to court
Step 4
File a Lawsuit:
If informal resolution methods fail, you may need to file a lawsuit to enforce your rights. Legal action can be costly, so it’s often a last resort
Main National IP Laws
- The Patents Act, 1970 and The Patents Rules
- The Designs Act, 2000 and The Designs Rules
- The Trade Marks Act, 1999
- The Geographical Indications of Goods (Registration & Protection) Act, 1999 and The GI Rules, 2002
- The Copyright Act, 1957 and The Copyright Rules, 2013
https://copyright.gov.in/Copyright_Act_1957/index.html
https://copyright.gov.in/Copyright_Rules_2013/index.html
- The Semiconductor Integrated Circuits Layout Design Act, 2000 and The SICLD Rules, 2001
- The Protection of Plant Varieties and Farmers' Rights (PPVFR) Act, 2001
- Code of Civil Procedure, 1908 (for civil suits related to IP)
- Code of Criminal Procedure, 1973 (for criminal remedies related to IP)