Business brief 2010: India

Patents

How do you register or secure patent rights?

Patent rights are secured by filing patent applications at the patent office. India is unique in the world in that there are four functionally independent patent offices in four major cities.

Both provisional and final patent applications are possible. The patent prosecution includes pre-grant opposition during prosecution and post-grant opposition within one year of grant.

And is national or international coverage most appropriate?

Patent rights are territorial in India. Most inventions that originate in India seek protection within the country. However, about 15 percent of the inventions also desire international coverage. The Patent Cooperation Treaty route is preferred.

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

The costs of registering a patent range between $1,500 and $3,000 depending upon the complexity of the invention. The costs can also increase as a result of oppositions (approximately $3,000).

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

The inventive step provisions in India are unique. Many international businesses apply European and US standards of invention and fail to pass the Indian inventive step test.

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 is the relatively inexpensive cost of litigation in India and the distinct bias that most courts have towards the infringer, particularly in the pharmaceutical sector. The patent owner is looked upon as an oppressor and the infringer as a sort of martyr. However, I believe patent owners must not only take action against infringers but also liberally grant licences and be looked upon as technology providers rather than monopolists.

Trademarks

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

For the purposes of seeking and obtaining trademark registration, it is necessary to file an application in the prescribed form together with the prescribed fees at the appropriate office of the Trade Marks Registry under the applicable provisions of the Trade Marks Act, 1999 and the Trade Marks Rule, 2002.

Upon grant of registration, the registered proprietor is granted a statutory right for the registered trademark, as opposed to a mere right under common law arising on account of prior use. Whereas a right under common law can be enforced only through an action for passing-off (tort claim), a registered proprietor can sue an infringer for both infringement and passing-off.

What are the costs of registering a trademark?

A minimum of $1,000 in a straightforward case not involving any third-party opposition or any serious objections.

And what are the costs of defending it?

In trademark opposition proceedings, a minimum of $3,000; before a court, a minimum of $10,000.

What are the key threats to trademark owners?

Passing-off, infringement, domain name squatting, counterfeit and pirated goods.

What are the most common mistakes trademark owners make?

Not adopting distinctive trademarks. More often, trademark owners adopt non-distinctive trademarks, which are susceptible to refusal by the Registrar of Trade Marks at the inception stage on either absolute or relative grounds and/or dishonest adoption by unscrupulous traders because they lack inherent distinctiveness.

Counterfeiting and online piracy

How big a problem is counterfeiting and/or online piracy in your jurisdiction?

Enormous and constant.

What industries are particularly at threat?

Automobile, consumer electronics, software, clothing and pharmaceuticals, to mention a few.

What are the best strategies for dealing with the problem?

Seek statutory protection, be constantly vigilant and enforce rights through both the civil and criminal remedies available under the applicable statutes. Additionally and more importantly, constantly consult and seek your trademark agent’s advice on the portfolio of rights sought and obtained.

General

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

The legislation governing and regulating rights is already in place and conforms to those existing around the world.

The difficulty India is faced with is the extremely slow process by which rights are granted on account of the overall functionality of the respective intellectual property offices. Lack of qualified manpower and adequate state-of-the-art infrastructure, and corruption are the few basic flaws that need to be constantly kept in check if the IP regime in India is to keep pace with international IP regimes. The backlog of pending cases is just one example.

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

Dr. Mohan Dewan is an advocate, trademark and patent attorney at R K Dewan & Co. He can be contacted at: dewan@rkdewanmail.com

Vinay D. Dwarkadas is an advocate, trademark and patent attorney at R K Dewan & Co. He can be contacted at: vinay.dwarkadas@rkdewanmail.com