Feb 16, 2023 | Indian Patents Act 1970, IPR & Business
A geographical indication (GI) is a sign used on products that have a specific geographical origin and possess qualities or a reputation that are due to its origin. In order to function as a GI, a sign must identify a product as originating in a given place. Some examples of GI are Mysore silk, Pashmina, Nagpur orange etc.
A geographical indication right enables the owners to use the indication to prevent its use by a third party (ies) whose product does not conform to the applicable standards. For example, in the geography or jurisdictions in which the Darjeeling tea as geographical indication is registered, producers of Darjeeling tea can exclude use of the term “Darjeeling” for tea not grown in their tea gardens or not produced according to the standards specified in the code of practice for the geographical indication.
A geographical indication shall be registered to claim rights over it and is usually obtained by acquiring a right over the sign that constitutes the indication. The steps to register GI are as below:
Steps to register a Geographical Indication (GI)
STEP 1: Filing of application (Fees for filing registration is 5000/- each class)
Please check whether the indication comes within the ambit of the definition of a Gl under section 2(1)(e).
The association of persons or producers or any organization or authority should represent the interest of producers of the concerned goods and should file an affidavit how the applicant claims to represent their interest.
- Application must be made in triplicate.
- The application shall be signed by the applicant or his agent and must be accompanied by a statement of case.
- Details of the special characteristics and how those standards are maintained.
- Three certified copies of the map of the region to which the GI relates.
- Details of the inspection structure if any to regulate the use of the GI in the territory to which it relates.
- Give details of all the applicant together with address. If there is a large number of producers a collective reference to all the producers of the goods may be made in the application and the G.I., If registered will be indicated accordingly in the register.
Please sent your application to the following address in India
- Geographical Indications Registry
Intellectual Property Office Building
Industrial Estate, G.S.T Road
Guindy, Chennai – 600 032
Phone: 044 – 22502091-93 & 98
Fax: 044 – 22502090
E-mail: gir-ipo@nic.in
Website: ipindia.gov.in
The applicant must have an address for service in India. Generally, application can be filed by (1) a legal practitioner (2) a registered agent.
STEP 2 and 3: Preliminary scrutiny and examination
- The Examiner will scrutinize the application for any deficiencies.
- The applicant should within one month of the communication in this regard, remedy the same.
- The content of statement of case is assessed by a consultative group of experts will versed on the subject.
- They will ascertain the correctness of particulars furnished.
- Thereafter an Examination Report would be issued.
STEP 4: Show cause notice
- If the Registrar has any objection to the application, he will communicate such objection.
- The applicant must respond within two months or apply for a hearing.
- The decision will be duly communicated. If the applicant wishes to appeal, he may within one month make a request.
- The Registrar is also empowered to withdraw an application, if it is accepted in error, after giving on opportunity of being heard.
STEP 5: Publication in the geographical indications Journal
- Every application, within three months of acceptance shall be published in the Geographical Indications Journal.
STEP 6: Opposition to Registration (Notice of opposition to registration is 1000/- each class, 300/- in case of time extension & Counter statement to that notice is 1000/-)
- Any person can file a notice of opposition within three months (extendable by another month on request which has to be filed before three months) opposing the GI application published in the Journal.
- The registrar shall serve a copy of the notice on the applicant.
- Within two months the applicant shall sent a copy of the counter statement.
- If he does not do this be shall be deemed to have abandoned his application. Where the counter-statement has been filed, the registrar shall serve a copy on the person giving the notice of opposition.
- Thereafter, both sides will lead their respective evidences by way of affidavit and supporting documents.
- A date for hearing of the case will be fixed thereafter.
STEP 7: Registration
- Where an application for a GI has been accepted, the registrar shall register the geographical indication. If registered the date of filing of the application shall be deemed to be the date of registration.
- The registrar shall issue to the applicant a certificate with the seal of the Geographical indication’s registry.
STEP 8: Renewal (fees is 3000/-)
- A registered GI shall be valid for 10 years and can be renewed on payment of renewal fee.
STEP 9: Appeal
- Any person aggrieved by an order or decision may prefer an appeal to the intellectual property appellate board (IPAB) within three months. The address of the IPAB is as follows:
- Intellectual Property Appellate Board
Annexe 1, 2nd Floor, Guna Complex,
443, Anna Salai, Chennai – 600 018
Subscribe to our YouTube Channel HERE
Contact us at to avail services in Patent, Trademark, Contracts, Patent Licensing, M&A
Email: info@origiin.com
Whatsapp: +91 7483806607
Feb 13, 2023 | Indian Patents Act 1970, Patent
Indian Patent Agent Examination
A patent is one of the most complex legal documents that is techno-legal in nature. Drafting and prosecution of patent needs technical skills as well as thorough knowledge of patent law. There is a provision in the Patents Act for appointment of a Patent Agent by the inventor/applicant to assist him in filing and other modalities in the Patent Office.
A Patent Agent or a patent attorney is person who has the specialized qualifications necessary for representing clients in obtaining patents and acting in all matters and procedures relating to patent law and practice. A Patent Agent may be appointed by the inventor/ applicant to perform various actions before the patent office on behalf of the applicant and in consultation with him.
The term Patent Agent is used differently in different countries. In some jurisdictions, the terms Patent Agent and patent attorney are interchangeable and used as synonym but in others, the latter is generally used only if the person is qualified as a lawyer and additionally is registered as Patent Agent. This means that a patent attorney can not only practice before Indian Patent Office but also is eligible to practice in the Courts. Some jurisdictions also use the term “patent attorney” to include attorneys, who are not admitted to practice before the Patent Office, but who represent parties in patent litigation and other legal matters. Such attorneys may or may not have technical backgrounds.
Registration as a Patent Agent in the register of Patent Agents
An attorney, who is not a Patent Agent, is not admitted to practice before the Patent Office but he may represent parties in patent litigation before Court of law. On the other hand, a Patent Agent may prosecute patent applications but may not be qualified to represent parties in patent litigation. Indian Patent Act, 1970 (Section-132) does not stop an advocate, not being a Patent Agent, from taking part in any hearing before the Controller on behalf of a party who is taking part in any proceeding under the Act.
In India, a person registered to practice before Indian Patent Office (IPO) is called as “Registered Patent Agent” or a “Patent Agent”. Indian Patent Office conducts a qualifying examination for Patent Agent registration twice a year and the candidates qualifying the examination are registered as Patent Agents and are authorized to practice before IPO.
According to the Indian Patents Act, 1970, a Patent Agent is a person who has passed Indian Patent Exam and is registered as a Patent Agent. He is authorized to represent applicants before the Controller of Patents in the preparation, filing, and prosecution of patent applications. In order to become a registered Patent Agent in India, an individual must pass the Patent Agent Examination conducted by the Indian Patent Office and register himself/herself as a Patent Agent. Patent Agents in India play an important role in helping inventors, companies, and organizations register patents in India.
The Indian Patent Agent Examination is a written examination conducted by the Indian Patent Office to test the knowledge of individuals who wish to become registered Patent Agents in India. The examination is designed to test evaluate the candidate’s knowledge of on Indian Patents Act, 1970 and the rules / regulations related to patent practice and procedure in India. Additionally, patent specification drafting and prosecution skills of the candidates are also evaluated.
Procedure for applying online:
- Go to www.ipindia.nic.in
- Refer the guidelines thoroughly: http://ipindiaonline.gov.in/AgentExam2020/Documents/Guidelines2023.pdf
- Click on “Registration for Patent/Trade Marks Agent Examination 2023”. The online
application filing system will be available from 03/01/2023 (12:00 noon) to 31/01/2023
(05:30 PM).
- Registration (New Applicant): http://ipindiaonline.gov.in/AgentExam2020/User/frmLogin.aspx
- After successful registration, sign in to your account and fill Application Form. Upload scanned copy of coloured photograph, signature in prescribed format, documents of proof of age, citizenship and degree certificate.
- Ensure to have correctly entered all the details before clicking on Final submit.
- Complete the application by paying the fee online through Make Payment.
- Submitted application form and payment details can be viewed any time using Pre-View and Print CBR
The Indian Patent Office does not conduct the exam at fixed regular intervals. The last two exams were conducted in May 2022 and October 2018. However, notification of the exam comes atleast 2 months prior to the date of the examination.
There is minimum qualification, age and nationality prescribed for the candidates, who can write the Indian Patent Agent examination. Eligible candidate shall write and pass the Indian Patent Agent Examination and request the Controller to register him as a registered Patent Agent and finally the Controller adds his name in the Register of Patent Agents.
- A person shall be qualified to have his name entered in the register of Patent Agents if he fulfils the following conditions:
- He is a citizen of India;
- He has completed the age of 21 years;
- He has obtained a degree in science, engineering or technology from any university established under law for the time being in force in the territory of India or possesses such other equivalent qualifications as the Central Government may specify in this behalf, and, in addition:
- Omitted by Act 15 of 2005.
- Has passed the qualifying examination prescribed for the purpose; or
- Has for a total period of not less than ten years, functioned either as an examiner or discharged the functions of the Controller under section 73 or both, but ceased to hold any such capacity at the time of making the application for registration.
The exam structure shall consist of the following papers and marks, namely: –
Paper I (Two Hours) – Patent Act and Rules-100 marks, (Nature: Objective type; Multiple Choice Questions)
Paper II (Three Hours) – Drafting and interpretation of Patent specification and other documents (Nature: Descriptive and Viva-Voce) – 100 marks
Viva-Voce: 50 marks
Total: 250 Marks.
Schedule for Viva-Voce examination is announced after the completion of the written exam. Only those candidates who have scored a minimum of 50% marks in each paper will be allowed to appear for Viva-Voce.
Candidates who are eligible for Viva-Voce shall appear at the designated Patent Office (Delhi/Mumbai/Kolkata/Chennai) opted. Candidates who score an aggregate of 60% from Paper-I, Paper-II and Viva-Voce shall be qualified as Patent Agents.
A candidate shall be required to secure a minimum of fifty 50 marks in Paper-I and Paper-II and shall be declared to have passed the examination only if he obtains an aggregate of sixty per cent of the total marks (Aggregate of Paper-I, Paper-II and Viva-Voce)
Examination centre will fall in the city which you selected while filling the form to write exam. Exam will be conducted in some college, about which you will be informed when a hall ticket is issued to you.
After passing the Patent Agent Examination, the successful candidate shall request the Controller to register him as Patent Agent in the Register of Patent Agents.
Every person who desires to be registered as a Patent Agent shall make an application in Form-22 [Application for registration of Patent Agent under rule 109 (i) or 112]. This form is required to be filled and sent only after the Patent Agent examination result has been declared and the person is declared as successful (pass).
The applicant shall furnish the additional information required by the Controller such as attested copy of degree certificate or character certificate. A person desirous to appear in the qualifying examination [Rule 110, Particulars of the qualifying examination for Patent Agents], shall make a request to the Controller along with the fee of 1600 INR after the announcement of Patent Agent examination within the period specified in the announcement.
A Patent Agent in India is authorized to represent individuals and organizations in matters related to obtaining and enforcing patents. Every Patent Agent whose name is entered in the register shall be entitled:
(a) To practice before the Controller during prosecution process such as at the time of opposition to the grant of patent, he can practice before the Controller; and
(b) To prepare all documents, transact all business and discharge such other functions [such as filing of patent, sending request for early publication or examination, reply to examination report, paying renewal fee etc.] as may be prescribed in connection with any proceeding before the Controller under this Act.
Yes, an advocate is eligible to write the Indian Patent Agent Exam if he/she has graduation degree in science. Advocates with BA, LLB or BCom LLB degree are not eligible to write exam. However an advocate, without being a Patent Agent can represent clients in the Court of law in patent litigations.
The Controller shall maintain a register, called “Register of Patent Agents” in which the names, addresses, phone number, fax number, email id and other relevant particulars of all persons qualified to be registered as Patent Agent shall be entered under Section-126 [Qualifications for registration as Patent Agents]. Controller may keep the register of Patent Agents in computer floppies, diskettes or any other electronic form and safeguards appropriately. The names and addresses of persons registered as Patent Agents shall from time to time be published.
The Controller may remove of any person from the register of Patent Agent under certain circumstances.
- The Controller may remove the name of any person from the register when he is satisfied, after giving that person a reasonable opportunity of being heard and further inquiry:
- That his name has been entered in the register by error on account of misrepresentation or suppression of material fact;
- That he has been convicted of any offence and sentenced to a term of imprisonment or has been guilty of misconduct in his professional capacity which in the opinion of the Controller renders him unfit to be kept in the register.
- The Controller may on application and on sufficient cause being shown, restore to the register the name of any person removed.
The Controller may, on application and on sufficient cause being shown, restore the name in the register of Patent Agent.
- An application for the restoration of the name in the register of Patent Agents shall be made in Form-23[1] [On application for restoration of the name of a person in the register of Patent Agents under rule 117 (1)] within 2 months from the date of such removal.
- If the name of a person is restored to the register of Patent Agents, his name shall be continued for a period of one year from the date on which his last annual fee became due.
- The restoration of a name to the register of Patent Agents shall be communicated to the Patent Agent and also published on the official website.
Yes, renewal fee shall be paid at the rate of 800 INR per annum in case of on-line filing and INR 880 in case of physical filing.
In connection with the patent application (s) filed by the Patent Agent, there may be several communications between the Patent Agent and the Controller. However, the Controller may refuse to deal with certain Patent Agents under specific circumstances.
- The Controller may refuse to recognize as agent in respect of any business:
- Any individual whose name has been removed from the register and not restored.
- Any person who has been convicted of an offence under Section-123 [Practice by non-registered Patent Agents].
- Any person who is not registered as a Patent Agent but is engaged wholly or mainly in acting as agent in applying for patents in India or elsewhere in the name or for the benefit of the person by whom he is employed.
- any company or firm, if any person whom the Controller could refuse to recognize as agent in respect of any business under this Act, is acting as a director or manager of the company or is a partner in the firm.
- The Controller shall refuse to recognize as agent in respect of any business, any person who neither resides nor has a place of business in India.
A career as a Patent Agent can be both challenging and rewarding. The career prospects for a Patent Agent are diverse and can include:
- Working in a law firm, where they handle patent-related matters for clients in a wide range of industries.
- Patent Agents can also work in-house at companies, where they handle patent-related matters for the company and its affiliates.
- Patent Agents can also work in government agencies, such as the Indian Patent Office, where they handle patent-related matters and advise on policy.
- Patent Agents can also go into teaching and research on intellectual property laws, patent laws and related fields.
- Patent Agents with enough experience and clients can start their own practice and serve as independent practitioners.
No person shall practice as a Patent Agent or call himself a registered Patent Agent, if he is not registered in the Register of Patent Agent.
- No person either alone or in partnership with any other person, shall practice, describe or hold himself out as a Patent Agent, or permit himself to be so described or held out, unless he is registered as a Patent Agent or he and all his partners are registered.
- No company or other body corporate shall practice, describe itself or hold itself out as Patent Agents or permit itself to be so described or held out.
Practice as a Patent Agent includes any of the following acts, namely:
- Applying for or obtaining patents in India or elsewhere;
- Preparing specifications or other documents for the purposes of this Act or of the patent law of any other country;
- Giving advice other than of a scientific or technical nature as to the validity of patents or their infringement.
It is not necessary under the patent law to engage a registered Patent Agent for filing an application for patent. The applicant is free to file an application by himself or through the Patent Agent. However, an applicant who is not a resident of India is required to file either through the registered Patent Agent or must give an address for service in India.
No, Patent Office does not make any recommendations regarding selection of a Patent Agent. However, a list of Patent Agents is maintained by the office. This list can also be viewed at Patent Office website. The applicant is free to appoint any Patent Agent from the said list.
No. This is a discussion between the Patent Agent and the applicant. The fee a Patent Agent charges is not determined by the Patent Office. However, the Patent Office has engaged the facilitators to help start-ups submit patent applications and has set a cap on the amount of fee reimbursement that can be paid to the facilitators under the SIPP scheme. You can view the specifics of the programme at https://ipindia.gov.in/.
The term patent agent is used differently in different countries. In some jurisdictions, the terms patent agent and patent attorney are interchangeable and used as synonym but in others, the latter is generally used only if the person is qualified as a lawyer and additionally is registered as patent agent. This means that a patent attorney can not only practice before Indian Patent Office but also is eligible to practice in the Courts. Some jurisdictions also use the term “patent attorney” to include attorneys, who are not admitted to practice before the Patent Office, but who represent parties in patent litigation and other legal matters. Such attorneys may or may not have technical backgrounds.
A Patent Agent can not file trademark application on behalf of his clients. However, an Advocate or a registered trademark agent is authorised to file trademark applications. A Patent Agent is authorised to represent his client to file and prosecute Design applications in India.
Certainly, a Patent Agent who is registered in India, can file and prosecute PCT applications on behalf of its clients.
Paper 1
- Buy a copy of Indian Patents Act 1970 (Bare Act)
- Get familiar with important terms used in the Act
- Start reading The Patents Act thoroughly including all the amendments and refer Patent Manual published by Indian Patent Office.
- Keep marking important Sections and Rules. Interpret the difference and co-ordination between the sections and the rules.
- Analysis of each and every section and their interpretation is important.
- Correlate each rule with a respective section.
- Read the updated annexure for the forms and fees.
- Go through recent case-laws to understand the subject in detail. You may expect case-law based questions during Viva.
Important Tips
- While answering questions from Paper 1, it is advisable to mention appropriate rules, sections, forms, fee etc. This will help you fetch more marks.
- Map appropriate rules with the sections.
- Solve previous year question papers and identify frequently asked questions.
Paper 2
- Learn about all the treaties and conventions with respect to Patent law and other forms of Intellectual Property like PCT, Budapest treaty, Paris convention, Madrid convention, CDB, GATT, WTO etc).
- Understand basic concept of drafting patent specifications including claims. Understand the process and procedures of PCT.
Important Tips
- Download some patents from free platforms and understand anatomy and construction of patent specifications.
- Practice drafting patent specifications including the claims.
- Visit official website of WIPO and understand PCT process and procedures and don’t miss out fee structure applicable.
- Solve previous year question papers and identify frequently asked questions.
- Learn to manage time well especially in case of patent specification drafting questions.
Trainings conducted by Origiin
Origiin is a Bangalore based legal and IP firm handling work in the area of Patent, Trademark, Copyright, Design, Contracts & Policies, IP Licensing and mergers/acqusition of the companies. Origiin has been training candidates to clear Indian Patent Agent Exam since 2009 and we have brillint content prepared by practicing patent agents and attorneys.
Printed Study material (Edition 8.0)
Module 1: Complete interpretation of Indian patent act, each and every section/rule
Module 2: How to start preparations, PCT, IP conventions, patent drafting, tips to viva question, FAQ
Online course in Udemy
Module 1: Patent Act and Rules, https://www.udemy.com/course/patent-specification-drafting/
Module 2: Patent Spec Drafting, https://www.udemy.com/course/patent-specification-drafting/
Subscribe to our YouTube Channel HERE
Contact us at to avail services in Patent, Trademark, Contracts, Patent Licensing, M&A
Email: info@origiin.com
Whatsapp: +91 7483806607
***
[1] Fee payable is 800 INR (continuation under entry number 34).
Feb 9, 2023 | Indian Patents Act 1970, Key Terms of Patents Act
Novelty is one of the prime requirements of patentability. An invention is considered to be not patentable, if the claimed subject matter was disclosed before the date of filing or before the date of priority. The word “Anticipation” means a prior action that takes into account or forestalls a later action or visualization of a future event or state.
With reference to Patent laws, “anticipation” means any description of the invention, which destroys the element of novelty of the invention.
U/S 13 [Search for anticipation by previous publication and by prior claim], the examiner to whom an application for a patent is referred under section 12 shall make investigation for the purpose of ascertaining whether the invention has been anticipated by means of claiming in any claim of the complete specification or has been published previously.
Chapter 6 [Anticipation] deals with certain exceptional acts, wherein even if the invention is disclosed before the priority date, but still not deemed to be anticipated. When examination of application takes place and examiner checks novelty of the invention, the provisions of this chapter (Section 29-33) are taken into consideration.
Important section under Chapter 6 of Indian Patents Act 1970 are as follows:
Section 29: Anticipation by previous publication
Section 30: Anticipation by previous communication to Government
Section 31: Anticipation by public display, etc
Section 32: Anticipation by public working
Section 33: Anticipation by use and publication after provisional specification
Section 34: No anticipation if circumstances are only as described in Sections 29, 30, 31and 32.
Watch Video HERE (Anticipation- Term 6)
Subscribe to YouTube Channel HERE
Join India’s largest Linkedin Group: Indian Patent Agent Exam
Feb 7, 2023 | Indian Patents Act 1970, Key Terms of Patents Act
The objective of the Patent system is not only to grant a monopoly right to the patentees but also to ensure that the granted patents are commercialized or worked in India without undue delay. The term The word “working of the patent” means that the patented invention shall be commercialized, in order to meet reasonable requirements of the public and patented products are available at reasonable price to the public. Patents are granted to enhance industrial development and, therefore, should be worked in its fullest extent within the territory of India.
Patentee or licensee shall inform Patent Office every year about working of his patent by submitting the statement of working. It a statutory obligation of the Patentee/licensee to provide the declaration regarding the patent commercialization status to the Patent Office. The onus is on the patentee or licensee to state the working status of the patent and to pay the renewal fee annually until the lifetime of the patent. Failure to submit the statement of working may create a presumption of non-working of the patent, which may be one of the grounds for third parties to apply for compulsory license.
Legal Perspective
Section 83 in The Patents Act, 1970 states
(a) that patents are granted to encourage inventions and to secure that the inventions are worked in India on a commercial scale and to the fullest extent that is reasonably practicable without undue delay;
(b) that they are not granted merely to enable patentees to enjoy a monopoly for the importation of the patented article
To oblige to Section 83, Section 146 of the Indian Patents Act, 1970, states the “Power of Controller to call for information from patentees” which mandates that the Patentee/licensee shall furnish the details of the working status of the patented invention in India for the respective financial year.
The statement of working of patents is furnished through Form 27 as prescribed in the Second schedule of the Patents Act, 1970 read with Rule 131.
The information to be submitted includes:
- Information whether the patent was worked in India during the year
- If worked, the value generated
- If not worked, a brief reason for not working and steps being taken to work the invention
- If manufactured in India or imported from other countries
- Licences and sub-licences granted during the year
There is no fee to file Form 27 and from the year 2012, the working of Patents filed by Patentees are made available to public (E-Register) by the Indian Patent Office.
Initially, Form 27 to be filed within 3 months from the end of every calendar year i.e., March 31st of each year. However, the amendments to the Patent Rules, 2020, the Form 27 shall be furnished within 6 months from the end of the financial year. As per the amended rules, the due date to file the statement of working via Form 27 is September 30th of each year for the preceding financial year.
Implications
Any failure in furnishing of the working of patents des not invalidate the Patent but have the following consequences:
- Considered as a punishable offence that includes a fine that may extend up to 10 lakh rupees
- Furnishing wrong information is punishable offence with imprisonment up to six months, or with fine or both
- Patent can be revoked on the ground of non-working
To conclude, the statement of working of patents creates a transparency in providing the status of commercialization of the patented invention, provides an updated information of the patented inventions to the interested person, value of the patented inventions, the adequate steps taken by the Patentee/licensee to work on the patented invention, encourages the innovators and their interest in trade and business in the fields of science and technology.
Subscribe to our YouTube Channel HERE
Contact us at to avail services in Patent, Trademark, Contracts, Patent Licensing, M&A
Email: info@origiin.com
Whatsapp: +91 7483806607
Origiin IP Solutions is listed as one of the Top 3 Patent lawyers in Bengaluru, KA by ThreeBestRated.
