Business brief 2011: India

Patents

How do you register or secure patent rights, and is national or international coverage most appropriate?

In India, patent rights are secured by filing an application for registration along with the requisite forms and documents and prescribed fees at the patent office. India’s patent administration system is unique in that it has four independently functioning patent offices. The patent office within whose jurisdiction the applicant is domiciled or resides, or where the invention actually originated, is where the patent application will need to be filed.

In India, one may file either a provisional specification or a complete specification along with the patent application. The patent prosecution in India includes pre-grant opposition during prosecution, and within one year of grant of the patent, any interested party may file a post-grant opposition.

Patent rights are territorial in nature. For most inventions originating in India, patent protection is sought in India alone. However, for about 15 percent of the inventions, international coverage is also desired. The Patent Co-operation Treaty route is preferred.

What are the costs for obtaining a patent, and what are the costs of defending it?

Depending upon the complexity of the invention, the cost of obtaining a patent ranges between $1,500 and $3,000. The costs can also increase as a result of oppositions (approximately an additional $3,000).

Where can you find information on existing patents in your jurisdiction (i.e. online database, patent office request, etc.)?

The best online sources for information on existing patents are the website of the patent office (http:// ipindia.nic.in/ipirs1/patentsearch.htm) and certain commercial databases. However, for the purposes of litigation, extracts/printouts from either of these sources cannot be relied upon. For such purposes, a request has to be filed with the patent office for certified copies of documents relating to the application, their status, specifications and drawings.

Is there anything unusual about the patent law that companies should be aware of—what are the most common mistakes businesses make?

International businesses usually apply US or European standards of determining inventive step; however, it must be remembered that the Indian standards in this regard are different.

What are the key threats to patent owners, and what is the best strategy if you suspect someone is infringing your patent?

The key threat to patent owners in India is the cost of litigation, which is relatively inexpensive; another threat is that the courts sometimes have a biased view of the infringer, particularly in the pharmaceutical industry, where the infringer is often seen as a martyr and a saviour of the oppressed masses, and the patent owner as an oppressor and monopolist.

However, it is my belief that patent owners should not only actively enforce their patent rights against infringers but also liberally grant licences, to help them avoid the threat of compulsory licensing and make them appear to be technology providers rather than monopolists.

Have there been any changes to the patent law(s) in the last 12 months?

Though there have been no amendments to the Patents Act, 1970, there have been several proposals to amend the patent rules, including the proposal to make the e-filing of patent applications mandatory in order to improve efficiency and transparency in filing and processing patent applications. Plans are also afoot to implement the compulsory licensing provisions of the Patent Act.

Trademarks

How do you register or secure trademark rights, and what protection does it grant?

Though in India trademarks need not be registered, it is always advisable to do so for the purposes of securing prima facie evidence of use and priority of the trademarks, and also because a suit for infringement can only be filed if the infringed trademark is registered.

For the purposes of registration, it is necessary to file an application for registration in the prescribed form, together with supporting documents where required, along with the prescribed fees at the appropriate office of the Trade Marks Registry as per the provisions of the Trade Marks Act, 1999 and the Trade Marks Rule, 2002.

Upon registration of the trademark, the registered proprietor is granted a statutory right to the registered mark, as opposed to a mere right under common law arising out of prior use. A common law right in a trademark can only be enforced by way of an action for passing-off, while a registered proprietor can institute a suit for infringement as well as passing-off against an infringer.

What are the costs for registering a trademark, and what are the costs of defending it?

The minimum cost for registering a trademark, without any opposition by third parties or any serious objections, is $1,000. When there are opposition proceedings before the Controller of Trade Marks, the minimum cost is $3,000; before a court of law, the minimum cost is $10,000.

What are the key threats to trademark owners (counterfeiting, passing-off) online infringement, etc.), and what is the best strategy for dealing with infringement?

The key threats to a trademark holder are passing-off, infringement, domain name squatting, and the marketing and sale of counterfeit and pirated goods. To deal with infringement, it is best to send a cease and desist notice to the infringer before embarking on litigation.

If the infringer refuses to comply, we attempt to get the suit finally determined in the shortest possible time and suggest to clients that they proceed with the trial of the suit instead of pressing for an interim injunction application. Following this course of action enables the client to recover sooner, the damages suffered by them due to the unlawful activities of the infringer.

What are the most common mistakes trademark owners make?

The most common mistake trademark owners make is not adopting a distinctive/nondescriptive trademark. Such marks are susceptible to be refused by the Registrar of Trade Marks at the inception of the registration process itself, on either relative or absolute grounds of refusal and/or dishonest adoption by unscrupulous traders because they lack inherent distinctiveness.

Have there been any changes to the trademarks law(s) in the last 12 months?

Though the Trade Marks Act of 2000 has not been altered, certain changes have been made to the trademark rules. These include: trademark searches have become free and are available at the Indian Patent Office’s (IPO) official website; one may no longer file a request to the Registrar for an official search; examination reports have been made available to the public on the IPO website; and e-filing has also become available.

Copyright

What are the key challenges to copyright holders in your jurisdiction?

Copyright infringement is rampant in literary and musical works; and pirated books and movies are freely available.

How should people ensure they are protected against copyright infringement?

People should ensure that their copyright is registered, and that a statement to that effect is stated on the work or its cover or packaging.

What is the best way to deal with infringement, and what are the costs associated with it?

The most effective way to combat infringement is to keep a vigil against piracy and actively prosecute the infringer under both criminal as well as civil laws. The minimum cost for institution of a civil suit and the minimum cost for prosecuting an infringer under criminal law is $5,000.

Counterfeiting

How big a problem is counterfeiting in your jurisdiction?

Counterfeiting is rampant in India.

What industries are particularly at threat?

A lot of industries face this problem, including clothing and accessories, consumer electronics, software, automobiles and pharmaceuticals.

What are the best strategies for dealing with the problem?

Luck favours the vigilant; constant vigilance and dogged prosecution and enforcement of rights through both civil and criminal remedies available under applicable statutes is the best strategy. It is strongly advised that you constantly consult your trademark agent on the portfolio of your rights—both sought and obtained.

General

Are there any legislative changes to the IP regime that would make businesses’ life easier?

The legislation in India governing and regulating intellectual property rights is already in place and conforms to standards existing around the world.

The primary difficulty lies not with the legislation, which is well equipped, but with the extremely slow process of granting right. This is due to the overall functionality of the respective intellectual property offices, which lack adequately qualified manpower and adequate state-of-the-art infrastructure and facilities. In addition to these shortcomings being addressed, corruption also needs to be kept in check if the IP regime in India is to keep pace with its international counterparts.

It is not a matter of ‘making life easier’. The Indian government is duty bound to follow the law and ensure grant of rights to the rightful proprietors, and their protection through efficient enforcement bodies, and more so when the statues governing their regulation and enforcement are adequately in place. So there can be no excuse for a lapse.

Dr Mohan Dewan is the proprietor of R K Dewan & Co and a patent and trademark attorney. He can be contacted at: dewan@rkdewanmail.com