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Patent Questions:
Q1. State the grounds of revocation of patents under Patent Act 1970 The term “Revocation” means Cancellation of the patent rights acquired to patentee. The revocation of patent can be applied by making a petition by any person interested or it can be also applied by the Central Government. In most of the cases revocation are filed on a counter claim against patent infringement suits in High Court or in IPAB (the Intellectual Property Appellate Board). The provision for Revocation of patents is mentioned under section 104. Section 104 of the Patents Act, 1970 states that only IPAB or the High Court can be approached for revocation as no suit of infringement can be brought before a court inferior to the District Court having jurisdiction. Section 64: Grounds for Revocation Principally, Section 64 contains in-exhaustive grounds that dictate the conditions that warrant the revocation of patents. These grounds are following:
- Invention is obvious, lacks an inventive step or utility
- Invention isn’t new and, has been publicly used or published in India before the priority date or it is foreseen in light of the knowledge available within any local or native community in India or elsewhere.
- Either the party wasn’t entitled to the patent, or the subject isn’t patentable or doesn’t amount to invention
- The scope of patent specifications is incomplete or the specifications have either been already claimed in a patent that is granted
- The patent was wrongfully obtained in violation of another party’s rights, such as through incorrect or false representation, or leave to modify specifications was obtained through fraudulent means
- The information that has been disclosed under Section 8 is known to be false by the Applicant or he has been unable to furnish the required details
- Complete specification omits or erroneously attributes geographical origin or biological matter used in the invention
- The invention was either secretly used before the date or claim or the Applicant contravened secrecy instructions under Section 35
- The complete specification neither describes the invention and method sufficiently nor does it disclose the best method of performing it which was known and entitled protection. Other provisions for revocation of patents
- A revocation petition can be filed under section 65 if the patent granted relates to atomic energy. If the Central Government find the facts that a granted patent has been exercising by wrong means and it is mischievous to the State or prejudicial to the public, the central government has rights in the case to revoke the concerned patent and such decision is also published in official journal of patents.
- Revocation of patent under Section 85 of the Patents Act An application for revocation of patent can be filed after 2 years of grant of compulsory license. The grounds for revocation of a patent are same which are covered under Section 85 which mainly deal with following:- Reasonable price, Availability in the territory of India, and Requirements of the public not met. Section 85 reveals provision in the benefit of public. In these cases where the patentee does not take necessary actions that may help in better distribution of the product to the public and more profound availability at reasonable prices. Such revocations of patent are really useful to public. Q2: Discuss the procedure for grant of patent under Patent Act 1970 A patent is an exclusive right granted by the Government to the inventor to exclude others to use, make and sell an invention is a specific period of time. A patent is also available for improvement in their previous Invention. In modern terms, the patent is usually referred to as the right granted to an inventor for his Invention of any new, useful, non-obvious process, machine, article of manufacture, or composition of matter. Inventions must have following features to ensure that it is being patentable: 1. It should be Novel 2. It must involve an inventive step 3. It should be capable of Industrial Application There are three basic tests for any invention to be patentable: 1. Invention must be Novel: Firstly, the invention must be novel, meaning thereby that the Invention must not be in existence. 2. Invention must be non- obvious: Secondly, the Invention must be non- obvious, i.e. the Invention must be a significant improvement to the previous one; mere change in technology will not give the right of the patent to the inventor. 3. Invention must be useful in a bonafide manner: Thirdly, the invention must be useful in a bonafide manner, meaning thereby that the Invention must not be solely used in any illegal work and is useful to the world in a bonafide manner.
If you are at a very early stage in research and development for your Invention, then you can go for a provisional application. It offers the following benefits:
- Filing date.
- 12 months time for filing full specification.
- Lesser cost. After filing a provisional application, you secure the filing date, which is very important in the patent world. You get 12 months to come up with the complete specification; your patent application will be removed at the end of 12 months. When you have completed the required documents and your research work is at a level where you can have prototypes and experimental results to prove your inventive move; you can file the complete specification with the patent application. Filing the provisional specification is an optional step if you are in the stage where you have complete knowledge about your Invention you can go straight to the full specification. Step 6: Publication of the application Upon filing the complete specification along with the application for the patent, the application is published 18 months after the first filing. If you do not wish to wait until the expiration of 18 months from the filing date to publish your patent application, an initial publication request may be made with the prescribed fee. The patent application is usually published early as a one-month form request. Step 7: Request for Examination The patent application is scrutinized only after receiving a request for an RFE examination. After receiving this request, the Controller gives your patent application to a patent examiner who examines the patent application such as the various patent eligibility criteria:
- Patent subject
- Newness
- Lack of clarity
- Inventory steps
- Industrial application
- By enabling Step 8: Answer the objections
Most patent applicants will receive some type of objections based on the examination report. The best thing is to analyze the examination report with the patent professional (patent agent) and react to the objections in the examination report. This is an opportunity for an investor to communicate his novelty over the prior art in examination reports. Inventors and patent agents create and send a test response that tries to prove that their Invention is indeed patentable and meets all patent criteria Step 9: clearance of objections The Controller and the patent applicant is connected for ensuring that all objections raised regarding the invention or application is resolved and the inventor has a fair chance to prove his point and establish novelty and inventive steps on other existing arts. Upon receiving a patent application in order for grant, it is the first grant for a patent applicant. Step 10: Grant of Patent: Once all patent requirements are met, the application will be placed for the grant. The grant of a patent is notified in the Patent Journal, which is published periodically. Q3: What are the rights and duties of patentee in respect of Patent granted to him? Rights of Patentee:
1. Right to exploit patent: According to Sec 48 of the Patent Act 1970, the patentee or the person legally authorized by him can make commercial use of the patented invention. He can exclude third parties who do not have his consent. However, this right is subject to the conditions laid down in Sec 47 which empower the Govt. to import or use the patent product for its own use. The co-owners of a patent shall also be entitled to equal undivided share in patent. The patentee’s rights are exercisable only during the term of the patent. 2. Right to grant license: According to Sec 70, if a patentee is not able or willing to exploit the patent himself, he can grant license to some other person or authorize him to exploit the patent and pay him the consideration or royalty. The patentee has the discretion to transfer rights or grant licenses or enter into some other arrangement for a consideration.
If the patent is not worked satisfactorily to meet the reasonable requirements of the public, at a reasonable price, the Controller may grant compulsory licenses to any applicant to work the patent. A compulsory license is a provision under the Indian Patent Act which grants power to the Government to mandate a generic drug maker to manufacture inexpensive medicine in public interest even as a patent in the product is valid. Compulsory licenses may also be obtained in respect of related patents where one patent cannot be worked without using the related patent.
3. Revocation of patent: A patent may be revoked in cases where there has been no work or unsatisfactory result to the demand of the public in respect of the patented invention. 4. Secrecy Directions relating to Invention for defence purposes: Such patents may be subject to certain secrecy provisions, i.e. publication of the Invention may be restricted or prohibited by directions of Controller. Upon continuance of such order or prohibition of publication or communication of patented Invention, the application is debarred for using it, and the Central Government might use it on payment of royalties to the applicant. 5. Restored Patents: Once lapsed, a patent may be restored, provided that few limitations are imposed on the right of the patentee. When the infringement was made between the period of the date of infringement and the date of the advertisement of the application for reinstatement, the patent has no authority to take action for infringement. 4. State the grounds of opposition of patent? Or Who can oppose grant of patent and on what grounds? What is the procedure for opposing a patent? A patent is an exclusive right granted to the original inventor for a novel product or a novel process that provides, a unique way of doing something, or which discloses a new technical solution to a problem. It provides monopoly right to the inventor to make, sell his invention or product. Hence it is very essential that patent is only awarded to those innovations which justify the exclusive right and comply with the patentability criteria. Opposition proceedings are structured to restrain wrongful obtaining of patents and claiming of the frivolous or petty inventions. Laws providing under Indian patent act for pre grant and post grant of patent are essential to obstruct the unlawful grant of patent. Under Indian Patent act, there are two provisions when opposition may be filed either via pre-grant opposition or post-grant opposition provision depending upon the stage of the patent. The recent heave in patent filings in India may be attributed to the revolution in the Indian Patent System on 1st January, 2005, when India signed the Trade Related Aspects Intellectual Property Rights (TRIPS) agreement, wherein Section 25 of the Act was amended in light of the TRIPS agreement to introduce an "integrated" system of both pre-grant and post-grant opposition in India.
An application for a patent may be opposed by either a prior grant or a subsequent grant by any person on the grounds specified in s 25 (1) and 25 (2) of the former Act. No other grounds stated in the Act can be taken to oppose the patent. Some major opposition grounds, common to both pre-grant and post- grant opposition, are mentioned below:
- The Invention was published previously in India or elsewhere or was claimed previously in India.
- The Invention is the formation of a part of the prior public knowledge or prior public use or traditional knowledge of any community.
- The Invention is obvious and lacks an inventive step.
- The Invention does not constitute an invention within the meaning of the Act, or the Invention is not patentable under the Act.
- Failure to disclose information or furnishing false information relating to foreign by the applicant. Pre-Grant Protest: Section 25 (1) of the Patent Act and Rule 55 of the Patent Rules, 2003 provide the procedure to be followed for pre-grant opposition. Pre-grant opposition can be initiated by anyone after the application is published and before the patent is granted. If a request for examination is filed to oppose the application, the Controller considers representation only. If a request for examination has not been made by the applicant, it is possible for the opponent as an interested person to first file a request for examination under Section 11B, and then file a pre-grant opposition. Post-grant opposition: The procedure is followed to oppose the grant under Section 25 (2) of the Patents Act, 1970 and Rule 55A to 70 of the Patent Rules, 2003. A Post-grant opposition can be filed by any person interested in any of the specific grounds before a period of one year from the date of publication of the grant of the patent. Unlike a pre-grant protest, a pre-grant protest must be filed by an individual and not by a person. The expression (people interested) is defined under section 2(t) of the Patents Act, 1970 wherein a person/party is engaged, or is conducting research in the same field with which the Invention (which is to be opposed) is concerned. Q5: Define the term Invention. Explain the inventions which are not patentable under the Patent Act 1970? According to the Patent Act (of India), those that fall under the category of “Inventions” can be patented, as defined in Section 2 (j) of the Act which involves anything that is novel, capable of industrial application, and is not frivolous (subject-matters eligible for patentability). However, those that cannot satisfy such conditions (or restricts the scope of subject matters eligible for patentability) are non-patentable as mentioned in Section 3 and Section 4 of the Act. What Are Inventions?
Q6: Remedies for patent infringement Remedy for Infringement of Patent An action for infringement must be instituted by way of a suit in any District Court or a High Court having jurisdiction to entertain the suit. The plaintiff on satisfying the court about infringement of his patent would be entitled to the following relief:
**1. Interlocutory injunction
- Damages
- Account of profits
- Temporary or Interlocutory Injunction** A temporary injunction is invoked by the court at the initial stages of the suit filed by the plaintiff. This is passed in order to prevent the defendant from getting further gains by using other patented products. In order to invoke a temporary injunction, it is important for the patentee to prove that the patent is valid and has been infringed by the defendant. Also, the subsequent infringement in his patent rights has caused irreparable loss to him. 2. Permanent injunction A permanent injunction is invoked when the case is finally decided by the court. The interim injunction is transferred to a permanent injunction if the defendant is found guilty of patent infringement rights. But if the defendant is absolved from the liability, then the interim injunction stands dissolved and is not converted into a permanent injunction. 3. Damages In case the defendant is proven guilty, the plaintiff is either awarded damages or an account of profits by the defendant. Damages may not be provided to the plaintiff in case the defendant pleads ignorance and proves that he had no reasonable grounds to believe that the said patent existed at the time of infringement. In assessing the damages the important question is what is the loss sustained by the patentee. The loss must be the natural and direct consequence of the defendants acts. The object of damages is to compensate for loss or injury. 4. Accounts of Profits Where a patentee claims the profits made by the unauthorized use of his patent, it is important to ascertain how much of his invention was appropriated, in order to determine what proportion of the net profits realized by the infringer was attributable to its use.
IPR Questions on Trade Mark Q1: Procedure for registration of trade mark under Trade Marks Act 1999? Trademark is a branch of intellectual property rights. A Trademark is a sign capable of distinguishing the goods or services of one enterprise to those of other enterprise’s goods and services. It can be LOGO or characteristics which shows identity of the product. A trademark includes a name, word, or sign that differentiates goods from the goods of other enterprises. A trade mark is visual symbol used in relation to any goods or services to indicate some kind of trade connection between the goods or services and the person using the mark. In order to bring it within the scope of the statutory definition, a trade mark should satisfy the following essential requirements:
- It must be a mark that is a device, brand, heading, label, ticket, name or an abbreviation of a name, signature, word, letter or numeral shape of goods, packing or combination of colors or any combination thereof.
- It must be capable of being represented graphically.
- It must be capable of distinguishing the goods or services of one person from those of others.
- It must be used or proposed to be used in relation to goods or services.
- The use must be of a printed or other visual representation of the mark.
- In relation to services, it must be the use of the mark or availability or performance of services.
- The use must be for the purpose of indicating the connection in the course of trade between the goods or services, and some person having the right to use the mark either as proprietor or by way of permitted user as the case may be. It is not necessary that the person using the mark should reveal his identity. Registration of trademarks: The registration process in India is a first to file' basis. Therefore, it is important to apply for registration as soon as possible. A trademark usually takes 2-3 years to get registered, if the trademark is not being opposed by a third party. Trademark applications are handled by the Office of the Controller General of Patents, Trade Marks, Industrial Designs and Geographical Indications. Branches for these offices are available in Mumbai, Kolkata, Ahmedabad, Delhi and Chennai. The application must be filled as per territorial jurisdiction. And as per provisions of trademarks act, section 18.
Section 11 of the Act provides for relative grounds for refusal. If the examiner objects under this section it will be due to the mark having similarities with an already registered trademark. In this case, the examiner will attach the conflicting parts of the mark as well as the trademarks that it is conflicting with. At this point, the applicant has to overcome the objections placed by the examiner. This has to be done according to the section under which the objection has been raised.
- Rule 42. Notice of Opposition: A notice of opposition to the registration of a trademark under sub-section (1) of section 21, with such particulars as specified in Rule 43, shall be filed in form TM-O within four months from the date of publication of the trademark journal in which the application for registration of the trademark was advertised or re advertised.
- Rule 44: The counterstatement: The counterstatement required by sub-section (2) of section 21 shall be sent on Form TM-O within two months from the receipt by the applicant of the copy of the notice of opposition from the Registrar and shall set out what facts, if any, alleged in the notice of opposition, are admitted by the applicant. A copy of the counterstatement shall be ordinarily served by the Registrar to the opponent within two months from the date of receipt of the same.
- Rule 45. Evidence in support of opposition: (Within 2 months)
- Rule 46. Evidence in support of application: (Within 2 months)
- Rule 47. Evidence in reply by opponent: (Within 1month)
- Appeal: The Trade Marks Act, 1999 under section 9111 deals with appeal to appellate board. If the registration is refused the applicant has the final option of appealing to the Intellectual Property Appellate Board (hereinafter referred to as IPAB). An appeal to the IPAB must e filed within three months of the date of issuance of the refusal order by the registrar. This time limit may be extended if the appellant can show reasonable cause as to why he could only approach the IPAB after the time limit. Trademarks are the exclusive rights which a person enjoys with respect of his good and services. It allows the owners to have the benefits from their works when these are exploited commercially. A party who holds the rights to a certain trademark can sue other parties for trademark infringement.
Q2: What amounts to an infringement of a trade marks? Infringement of trademarks as per Section 29 of the Trademarks Act, 1999 is defined as a use of a mark, by an unauthorized or an authorised person or a person who is not the registered proprietor, which is identical or deceptively similar to the trademark in relation to the goods or services in respect of which the trademark is registered. In simple words, it is defined as the violation of exclusive rights that are attached to a registered trademark without the permission of the registered owner or licensees.
- Use of trademark by unauthorized person
- Unauthorized use of trademark which is identical or deceptively similar to the original trademark A registered trademark is said to be infringed in case of the following situation:
- If the mark in dispute is identical with or deceptively similar to the registered trademark and is in relation to the same or similar goods or services;
- If the identical or similar mark can cause confusion in the minds of general public to have an association with the registered trademark
- If the registered trademark is used as a part of trade name or business concern for goods and services in respect of which the trademark is registered
- If the trademark is advertised and as a result it takes unfair advantage or is contrary to the honest practices or is detrimental to the distinctive character and reputation of the registered trademark.
- If the registered trademark is used in the material meant for packaging or labelling of other goods or as a business paper without due authorization of the registered user.
- If an unauthorized person uses a registered trademark, if , in particular, he: o Affixes it to goods or the packaging thereof; o Offers or express goods for sale, puts them on the market, or stocks them for those purposes under registered trademark o Imports or exports goods under the mark; or o Uses the registered trademark on business papers or in advertisement According to Section 103, a person is said to be applying for a trademark wrongfully in the following conditions:
- If falsification of trademark has been committed;
- If any trademark has been falsely applied to goods and services;
- Makes, possesses or disposes of any instrument with the object and purpose of falsifying a trademark;
- Falsely indicates name of the country or place where the goods have been made or the name or address of the person who is responsible for its manufacturing;
- Alters or tampers with the indication of origin that is applied or required to be applied to a product.
In the case of Cadbury India Limited and Ors. V. Neeraj Food Products, the High Court of Delhi explained the difference between passing off action and an action for trade mark infringement as under: a) An action for trade mark infringement is a statutory remedy and on the other hand, an action for passing off is a common law remedy. b) The use of the trade mark of the plaintiff, by the defendant, is also a prerequisite in the case of an action for infringement while it is not a necessity of an action for passing off. c) In an action for infringement of the plaintiff's trade mark, it is immaterial that the outfit, outer covering and other written marks on the goods originate from a different source than that of a registered proprietor's trade mark. The liability of the defendant in such a case may be absolute. However, in case of passing off of trade mark, the defendant may escape liability if he can show that the material added by him is sufficient to distinguish his goods from that of the plaintiff's goods. d) In an action for infringement, the Plaintiff on account of it being a registered trade mark in dispute claims to have an exclusive right to use the mark concerning those goods. However, a passing off by a person of his goods as those of another, in essence, is an action of deceit. Sr. No. Basis Infringement Passing off 1 Type of remedy The statutory remedy under Section 29(1) of the Trade mark Act, 1999 Common-Law remedy 2 Registration It is a pre-requisite It is not required 3 Proof Plaintiff is only required to show deceptive similarity, as there is a presumption of confusion Apart from proving deceptive similarity, the Plaintiff is also required to prove confusion in public and the likelihood of injury to the plaintiff's goodwill 4 Jurisdiction The registered proprietor or registered user of the trade mark can institute the suit where they actually and voluntarily resides or carries his business or personally work for gain Section 20 of the Civil Procedure Code, 1908 would apply Meaning: Passing Off: According to Duhaime’s law dictionary, Passing Off is “making some false representation likely to induce a person to believe that the goods or services are those of another.” In simple language, passing off means when a trader/business person /or some other person make false representation to his/her customer or consumer, to make him/her believe that the goods or services he/she is providing is of another person.
Trademark Infringement: Section 29 of the Trademark Act 1999 deals with trademark infringement. It says that if a person uses the same trademark which is registered by another company or person and creates confusion in the minds of people, it will be liable for the trademark infringement. One of the trademark infringement case: Apple Corps v/s Apple Inc.: It is a long-run battle between the two major companies and one of the famous case law for trademark infringement. In this case, the Beatles found the Apple Corps music before Steve Jobs used the same word for his company. Steve Jobs was sued by the Beatles and later he agreed not to enter the music company by paying compensation. But the case again arose when Apple Inc. launched iTunes, again the suit was filed and the case was resolved when Steve Jobs agreed to purchase the trademark rights from Apple Corps. Difference between Passing Off and trademark infringement:
- Trademark provides protection to registered goods and services whereas Passing Off provides protection to unregistered goods and services. This is one of the most important differences between Passing Off and trademark infringement. But the point to be noted here is that the remedy provided in both Passing Off and trademark infringement is the same.
- The other difference between Passing Off and trademark infringement is that in Passing off it is not essential for the defendant to use the trademark of the plaintiff to bring an action of passing off but in trademark infringement, it is not the case.
- In the case of trademark infringement, the burden of proof lies on the plaintiff.
- Passing off is a common law remedy whereas Trademark infringement is a statutory remedy.
- For trademark infringement prosecution under criminal remedy is quite easy as compared in the case of Passing off.
- For the case of Passing off, the remedy has to be sought under Section 20 of Civil procedure code 1908, whereas trademark infringement suits can be solved under Section 134 of the Trademarks Act 1999.
- For trademark infringement registration is essential whereas for passing off Goodwill, damage, misrepresentation is essential. 4. Discuss the grounds for refusal of registration of a trade mark under the Trade Mark Act, 1999? Conditions for Registration of Trade Marks: The proprietor of a trademark must not only use but also register the trademark, failing which a suit for infringement cannot be filed. Therefore, in order to acquire effective trademark rights, registration, as well as the use of the said trademark in relation to the particular goods/services, is essential. The Trade
When two words are being compared, they must be compared as a whole. It would be inappropriate to compare two different parts of two words which are being compared. Q5: Who can file a suit for the infringement of Trade Mark? What are the defenses available for defendant? What relief can court pass? While any person can set the criminal law in motion in respect of the offence relating to applying false trademarks or false descriptions, only a registered proprietor of the trademark or a registered user of the trademark could launch proceedings for infringement of the Mark, according to section 52 of the Act. It is important that the mark is registered and renewed from time to time to make sure that the owner has the right to initiate an infringement suit. The registration gives to the registered proprietor, a statutory right and title to the mark. Section 27(1) makes it clear that no person shall be entitled to institute any proceeding to prevent the infringement of an unregistered trademark, although it is open to him to file for passing off under the common law remedy available to him. Who can sue for infringement?
- The registered proprietor or his legal successor. (Registered Proprietor in relation to Trademark means the person for the time being entered in the Register as Proprietor of the Trademark)
- Legal heirs of the Registered Proprietor of the Trademark
- The Registered user (The Registered user means a person who is for the time being registered as a registered user under section 49 of the Act)
- The Applicant for registration of Trademark
- Anyone of the joint proprietors of the Trademark Who can be sued for Infringement of Trademark?
- The person who infringes the Trademark
- The person who threatens to use the Trademark
- The agents of the infringer
- In case of a company, directors or promoters cannot be sued unless they are personally liable
- In a master-servant relationship, the master who orders the servant to make infringing copies is liable to be sued
Types of Infringement:
- Direct Infringement: Infringer aware of the fact that he is infringing the rights of Trademark holder and still they are infringing his rights
- Indirect Infringement: o Indirect Infringement occurs when a person, though not infringing directly, causes another person to infringe on a trademark. o When a person materially contributes or induces the direct infringer to commit the infringement, it is called contributory infringement. o When the person has the ability to control the actions of the direct infringer, or o When a person derives a financial benefit from the infringement or o When a person has knowledge of the infringement and contributes to it. The person is said to be vicariously liable. Infringement of Registered Trademark in India is described under Section 29 of the Trademark Act, 1999 Infringement of Unregistered Trademark (Passing Off) is described under Section 27 of the Trademark Act, 19999 For any infringement to come under Passing Off action, it must fulfill 3 conditions:
- Trademark has a reputation
- There was Misrepresentation by Infringer
- It has caused Injury or Loss What are the defenses available for defendant? 1 Fair use The classic fair use defense concerns the good faith use of a mark for is primary (descriptive) meaning, rather than its secondary meaning (which is when consumers associate a particular term or mark with a particular product provider or brand) 2 Nominative fair use The nominative fair use defense protects your ability to use a trademark to refer to a trademark owner or its goods or services for purposes of reporting, commentary, criticism, and parody, as well as for
