Intellectual Property Services Since 1971
DLF Star Tower, Office No.10, Sector 30,
Gurgaon 122001 Delhi (NCR), India
14/2 Palm Avenue, Calcutta 700019, India
Telephone: +91 33 40177100, Telefax: +91 33 40088262
email: enquiries@dpahuja.com, patents@dpahuja.com, trademarks@dpahuja.com
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General Information

ALERTS

  • National Phase Entry: In the absence of priority, the deadline for National Phase Entry in India is 31 months from the priority date or International filing date, both under PCT Chapter I and II. No extension of this period is possible.
  • Amendments: Amendments of PCT specification, other than PCT Article 19 or 34 amendments, are not allowed at the time of National Phase entry in India. All amendments and changes not done and notified in the International Phase are required to be carried out after entry into the Indian National Phase by following the stipulated procedure. The only amendment that is allowed at the time of National Phase entry in India is deletion of claims. Any addition/deletion or amendment in the context of claim language or introduction of any new claims is not allowed.
  • Filing Voluntary Amendments:There is no prescribed period for carrying out the voluntary amendment of the specification. However it is suggested that the amendments be carried out either before filing the Request for Examination or soon after, such that when the patent application is taken up for examination the First Examination Report will be based on the amended set of claims. It is required to submit support and basis for each amendment in the originally filed specification at the Indian Patent Office. If the claims are being amended then it is also necessary to indicate in the support and basis that each of the amended claims falls within the scope of one or more originally filed claims.
  • Divisional applications: According to the practice presently followed by the Indian Patent Office, a voluntary divisional application is only allowed with claims which are patentably distinct from the claims of the parent application. The Indian Patent Office is now refusing to admit/allow divisional applications which have been filed with claims identical to the parent application to maintain patent rights or to gain prosecution time.
  • Hearings: All Hearings are now being conducted through video-conferencing. Travelling to the Hearing location is not required anymore. We have several video conference rooms. We also have offices in Delhi(NCR), Calcutta, Chennai and Pune.
  • Time-line after the Issuance of First Examination Report (FER): According to the Patents (Amendment) Rules, 2016 which came into effect from 16th May 2016, the last date for filing a response to the FER has been reduced from one year to six months. Thus, the normal due date for filing a complete response is 6 months from the date of issuance of the First Examination Report. This date can be extended by a maximum of 3 months, provided a formal request for extension of time is filed before expiry of the above-mentioned 6 months timeline, along with the prescribed official fee.
    In case any further objections/requirements arise after filing a response to the First Examination Report (FER), the responsible Controller/Examiner informs the concerned person before issuing a final order. Such objections/requirements are addressed by us whenever required and clients are suitably informed well in time. Due to the large backlog of pending applications since 2009 it is not unusual to receive a very late response from the Patent Office in India. There are thousands of applications for which responses have been filed but no Hearing Notice or grant intimation has been received, even after 12 months of filing the response.
    Even if the application is not found to be in order, the Controller is statutorily bound to give the applicant an opportunity of being heard before issuing any adverse decision. In such case, when a Hearing is appointed, a final list of objections, requirements and issues are sent by the Controller. The Applicant is expected to cure the defects, prepare arguments, show how corresponding patents were granted in other jurisdictions with similar objections, prepare amendments to suggest at the hearing and attend the hearing. The written arguments along with all documents, information, petitions, required fees, arguments and amendments are then required to be submitted on the Patent Office portal (e-module) within 15 days from attending the hearing. Thus, a final opportunity is given even after the last date.
  • Appeal: If the patent application is refused by the Indian Patent Office, an appeal may be preferred before the Intellectual Property Appellate Board (IPAB) within 3 months from the refusal/rejection decision of the Indian Patent Office along with the prescribed fee.
    The appeal should contain the applicant's detailed submission with respect to each of the issues raised by the Controller in his decision of rejection. A matter number is accorded to the case by the registry of the IPAB and thereafter a notice is given by the IPAB fixing a Hearing in the matter. After the hearing the IPAB either dismisses the appeal while upholding the Controller's decision of refusing the application, or allows the appeal and remands the case back to the Patent Office for reconsideration. An appeal from a decision of the IPAB can further be preferred in the Division Bench of the High Court. Moreover, an appeal from a decision of the Division Bench of the High Court can be filed before the Supreme Court of India.
  • Trademarks are presently applied and registered under the Trade Marks Act, 1999, and Trade Mark Rules, 2017 (implemented on 6 March, 2017). The fees have increased significantly under the new Rules.
  • It is possible to file applications electronically in the e-Filing Portal of the Trademark Office. Official Fees for e-filing are 10% lower than paper filing.
  • India Trademark Office follows the current edition of the International Classification of Goods & Services, presently the 11th Edition. It is possible to file applications in all 45 classes of Goods and Services.
  • In non-conventional trademarks, registration for Sound Marks has been introduced under the new Rules. It is also possible to seek registration of three dimensional trademarks and certification marks.
  • It is now possible to file a request with fee for determination of “well-known mark” by the Registrar.
  • It has been possible to designate India in International Applications under the Madrid Protocol since 8 July, 2013.
  • Multiclass application is possible and Division of Multiclass application is also possible.
  • Official filing fees for individual applicants are significantly lower than that for companies.
  • Estimated current time line for grant of registration can be between 12 months (if accepted in the first instance and with no third party opposition) to 24 months (if objections are received and responded successfully and there is no third party opposition). On account of e-filing and faster examination, the grant period has been significantly reduced.
  • Trademark applications are published in the electronic Trademarks Journal for third party opposition. The opposition period is 4 months from publication date.
  • Trademarks are granted for a period of 10 years from application date and are renewable for terms of 10 years thereafter.
  • If a registered trademark is not used in India commercially within any continuous period of 5 years after registration, it becomes vulnerable to an action for cancellation on the ground of non-use by any third party aggrieved by the remaining on the Register of such registered trademark.
  • It is possible to record licenses for registered trademarks provided the request for recordal is filed within 6 months of the effective date of the licence agreement.
  • Design applications in India are processed under the provisions of 'The Designs Act, 2000' and 'The Designs Rules, 2001' as amended in 2008 and 2014.
  • Design applications are examined/processed in the order they are filed and there is no special provision for acceleration of examination process for design registration in India.
  • A design may be granted within four to five months, if the application is found in order for acceptance even without issuing the First Examination Report. To explore the possibility, it is advisable to complete all the filing formalities/requirements at the time of filing the application.
  • It takes nearly 6 to 12 months for a design to be accepted for registration in India after filing an application.
  • In India, there is no provision for filing a multiple design application. Separate applications have to be filed for designs which are similar but not same. Further, please note that in India divisional applications cannot be filed for designs.
  • Partial design is allowed by the Indian Patent Office, provided the partial design is applicable on any part of an article, which is capable of being made and sold separately. Only that 'part of an article' on which the partial design is sought to be applied, has to be shown separately in the representation of the design instead of showing it as part of an article.
  • Design registration relates only to external features i.e. shape, configuration, pattern or ornamentation etc. of an article or composition of lines or colours applied to any article, whether in two dimensions or three dimensions or in both forms. Any mode or principle of construction or operation of a device or article is not registrable under the Designs Act. Also, anything contrary to public order or morality is not registrable.
  • Novelty in respect of Designs is absolute in India. The article should not have been available or published in India or anywhere in the world.
  • A design is initially valid for 10 years from the date of Registration (Priority date or the date of filing the application in India, if there is no priority) without payment of any renewal/annual fee. It can be renewed for a final term of five years, on payment of renewal fee at any time before the expiration of ten years from the date of Registration.
  • We charge a consolidated one time fee for filing a Design application in India, including Prosecution and Grant applications.
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From the Private Art Collection of S. D. Ahuja

Our office is partially open on Saturdays and is equipped to file new applications.
 
D.P. Ahuja & Co.
Patent & Trademark Attorneys
DLF Star Tower, Office No. 10, Sector 30
Gurgaon 122001 Delhi (NCR), India
14/2 Palm Avenue, Calcutta 700019, India
Telephone: +91 33 40177100
Telefax: +91 33 40088262
email: enquiries@dpahuja.com patents@dpahuja.com trademarks@dpahuja.com


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