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India
mirandah asia provides tailor-made solutions for clients’ IP matters in this important emerging market. We have specialists covering all of our practice areas to assist clients’ needs, having helped clients since 1999 with Indian IP matters.

Overview

India has a long history of intellectual property protection – its Patents Act of 1970 and Patent Rules Act of 1972 are still binding, having been amended several times, most recently in 2005 and 2006. It is party to many major international treaties and organisations relating to IP, including the Paris Convention, the Agreement of Trade-Related Aspects of Intellectual Property Rights (TRIPS), the Madrid Protocol and the Patent Co-operation Treaty (PCT).

This means that international applications can be made, with respect to both trademarks and patents, to include Indian filings alongside those made in other countries that are signatories to either the Madrid Protocol or PCT.

Furthermore, India is one of a select group of 19 IP jurisdictions worldwide that have been appointed as an International Searching Authority (ISA) and International Preliminary Examining Authority (IPEA) for the PCT.

Growth of India’s IP Landscape

Under the slogan ‘Creative India: Innovative India’, Prime Minister Narendra Modi has pledged to boost India’s standing in international intellectual property rights protection through the National Intellectual Property Policy (NIPP). This aims to overhaul and bolster the administration processes at the country’s Trade Mark and Patent Offices, and to increase the number of local applicants – currently, around three-quarters of applications for patents, for example, are made from international business.

Given the size of the market at hand, protracted time frame from file-to-grant in India is a process that can take up to 2 to 3 years for trademarks, and 5 to 6 years for patents – without accounting for the opposition or litigation procedures. This demonstrates that the holistic level of experience and quality service mirandah asia provide every step of the way counts for everything.

 

Legal Basis Patents Act 1970 effective 20 April 1972

Patents (Amendment) Act 1999 effective 1 January 1995

Patents (Amendment) Act 2002 effective 20 May 2003

Patents (Amendment) Act 2005 effective 1 January 2005

Patents Rules 1972 effective 20 April 1972

Patents (Amendment) Rules 2003 effective 20 May 2003

Patents (Amendment) Rules 2005

Patents (Amendment) Rules 2006 effective 5 May 2006

Patents (Amendment) Rules 2016 effective 16 May 2016

Major international treaties signed
  • World Trade Organization effective 01 January 1995
  • Patent Cooperation Treaty effective 7 December 1998
  • Paris Convention effective 7 December 1998
  • Budapest Treaty effective 17 December 2001
  • Agreement on Trade Related Aspects of Intellectual Property Rights (TRIPS)
Costs of obtaining a patent Please contact us at india@mirandah.com
Average time to obtain a patent 5 to 6 years from filing in India
Official language for patent prosecution English or Hindi
Non-patentable subject matter
  • Frivolous or contrary to well established natural laws
  • Invention against public order
  • Discovery of a scientific principle or formulation of an abstract theory
  • Discovery of new form of a known substance which does not result in enhancement of any efficacy, any new property or new use for a known substance or mere new use of a known process, machine or apparatus
  • Substance obtained by mere admixture
  • Mere arrangement or re-arrangement or duplication of known devices
  • Method of agriculture or horticulture
  • Process for medicinal, surgical, curative, prophylactic, diagnostic, therapeutic or other treatment of human beings or animals
  • Plants and animals in whole or any part thereof other than micro-organisms
  • A computer program per se, other than its technical application to industry
  • A mathematical method or business method, algorithms
  • A literary, dramatic, musical or artistic work or any other aesthetic creation
  • Scheme or rule or method of performing mental act or method of playing game
  • Topography of integrated circuits
  • Traditional knowledge
  • A presentation of information
  • Invention relating to atomic energy and inventions prejudicial to the interest of security of India.
Grace period for prior disclosure or sale Public disclosure: First application not later than 12 months after the first disclosure

Public working (use): Prior working in India, 12 months before the priority date

Major prosecution events
National Phase Entry : 31 months from the date of priority
Request for Examination : 48 months from the date of priority
Putting in order for grant : 6 months from date of issuance of First Examination Report to comply with any objections of the report.

A further extension of time of 3 months is available.

Renewals of patents : Every year starting from the third year
Filing and prosecution procedures Stage 1: Filing
Stage 2: Publication & Pre-Grant Opposition (if any)
Stage 3: Examination
Stage 4: Grant
Stage 5: Post-Grant Opposition (if any)
Stage 6: Renewal/ Annuity
Extension of office action deadlines 3 months
Necessary document for filing A copy of PCT publication or Specification (in English or Hindi)
Verified English translation of PCT publication / specification (if applicable)
Power of Attorney (Form 26)
Assignment/Inventor(s) Executed Form1 (may be submitted later)
PCT IB304 or Certified copy of priority document (may be submitted later)
Verified English translation of priority document (if applicable, may be submitted later)
Pharmaceutical Data Exclusivity Laws Not available
Search and Examination Indian patent office conducts Substantive Examination on its own
Opposition term Pre-Grant: After publication of the application and any time before the grant of patent
Post-Grant: One year from the date of publication of grant
Term of patent protection 20 years
Patent term extension Not available
Restoration of lapsed patent Within 18 months from the date of lapse
Parallel Imports Available
Other forms of patents (e.g. Petty/innovation patents) Patents of Addition
Useful links www.mirandah.com
www.ipindia.nic.in
Infringement offence Available
Specialized courts for IP Not available. However, Intellectual Property Appellate Board (IPAB) is available to hear appeal against decision made by the Intellectual Property Office.
Outline of the enforcement steps Notice of Cease and Desist
Infringement lawsuit
Relief against groundless threats Available
Declaration of non-infringement Available
Preliminary injunctions Available
Time frame for various legal actions Revocation – 1 to 2 years
Infringement proceeding – 2 to 3 years
Alternative Dispute Resolution Arbitration
Conciliation
Availability of damages and other relief for infringement Injunction
Account of profits
Seizure, forfeiture or destruction of goods found to be infringing without payment of compensation
Civil Remedies As per above
Criminal Sanctions Not available

 

Patent Applications

Year Resident Non-Resident Total
2001 2,379 8,213 10592
2002 2,693 8,772 11465
2003 3,425 9,188 12613
2004 4,014 13,452 23675
2005 4,721 19,661 24382
2006 5,686 23,242 34614
2007 6,296 28,922 35218
2008 6,425 30,387 36812
2009 7,262 27,025 34287
2010 8,853 30,909 39762
2011 8,841 33,450 42291
2012 9,553 34,402 43955
2013 10,669 32,362 43031
2014 12,040 30,814 42854
2015 12,579 33,079 45658

Patent Grants

Year Resident Non-Resident Total
2001 529 1,020 1549
2002 619 921 1540
2003 615 911 1526
2004 851 1,466 2317
2005 1,396 2,924 4320
2006 1,907 5,632 7539
2007 3,173 12,088 15261
2008 2,541 13,520 16061
2009 1,725 4,443 6168
2010 1,208 5,930 7138
2011 776 4,392 5168
2012 722 3,606 4328
2013 594 2,783 3377
2014 720 5,433 6153
2015 822 5,200 6022

Source: WIPO

Legal Basis Trade Marks Amendment Act 2010

Trade Marks Amendment Rules 2013

Major international treaties signed
  • Paris Convention effective 7 December 1998
  • Madrid Protocol effective 8 July 2013
  • Agreement on Trade Related Aspects of Intellectual Property Rights (TRIPS)
Cost of obtaining a straightforward registration Please contact us at india@mirandah.com
Average time to obtain a trademark 24 to 36 months
Official language of trademark prosecution English or Hindi
Registrable marks Any distinctive device, monograms, brand, heading, label, ticket, name, signature, word, letter, numeral, shape of goods, packaging or combination of colors or any combination thereof, sound marks when represented in conventional notation or described in words by being graphically represented.
Filing and prosecution procedures Stage 1: Filing
Stage 2: Examination
Stage 3: Advertisement
Stage 4: Opposition (if any)
Stage 5: Registration
Stage 6: Renewal
Number of classes 45 (Nice Classification)
Multiple class filing Available
Filing of series marks Available
Necessary document for filing Power of Attorney
Priority document (where priority is claimed)
Common objections Descriptiveness
Non-distinctiveness
Prior conflicting rights
Extension of office action deadlines Available
Opposition term 4 months
Term of trademark protection 10 years (renewable)
Restoration of lapsed trademark Within 6 to 12 months from the expiry of the last registration
Parallel Imports Available
Minimum period of use to avoid non-use cancellation action 5 years (continuous)
Useful links Trademark Agents and Attorneys in India
www.ipindia.nic.in
Infringement offence Available
Specialized courts for IP Not available. However, Intellectual Property Appellate Board (IPAB) is available to hear appeal against decision made by Intellectual Property Office.
Outline of Enforcement Steps Civil
Infringement pursuant to the Trade Marks Act, 1999
Passing-offQuasi-Criminal
Falsifying and false application of a trademark(Counterfeiting)
False application of trade description
Sale, exposure and possession for sale of counterfeit goods or services
False representation of a mark as a registered mark
Relief against groundless threats Available (Summary Judgment)
Declaration of non-infringement Not available
Preliminary injunctions Available
Time frame for various legal actions 12 to 36 months
Alternative Dispute Resolution Arbitration
Conciliation
Availability of damages and other relief for infringement As per below
Civil remedies Interlocutory / permanent injunction
Damages or account of profits in lieu of damages
Order for delivery-up of infringing labels and marks for destruction or erasure
Criminal Sanctions For Falsifying/false application of trademark or trade description or for sale, etc. of counterfeit goods
Minimum imprisonment for 6 months term, extendable up to 3 years with a minimum fine go RS. 50,000 (USA 1110) extendable up to Rs. 200,000 (USD 4450)False representation of a mark as a registered trademark
Imprisonment up to 3 years or monetary fine or both
Others Enhanced penalty on second or subsequent conviction which include imprisonment and fine

Trademark Applications

Year Resident Non-Resident Total
2001 79,746 10,490 90236
2002 88,190 5,930 94120
2003 76,801 15,450 92221
2004 63,906 15,090 78996
2005 73,308 12,361 85669
2006 88,210 15,210 103420
2007 117,014 6,500 123514
2008 119,371 10,801 130172
2009 134,403 7,540 141943
2010 172,120 17,805 189925
2011 176,386 22,161 198547
2012 176,044 14,807 190851
2013 183,172 19,646 202818
2014 200,140 23,611 223751
2015 250,585 24,183 274768

Trademark Registrations

Year Resident Non-Resident Total
2010 58,117 9,695 67812
2011 122,440 20,503 142943
2012 48,014 7,177 55191
2013 52,117 8,140 60257
2014 45,720 12,794 58514
2015 53,515 15,607 69122

Source: WIPO

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India's IP landscape?
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mirandah asia (india) affiliate office
1 Coleman Street
#07 – 08 The Adelphi
Singapore 179803

Tel: +(65) 6336 9696
Fax: +(65) 6338 3739

Email: singapore@mirandah.com