Most Frequently Asked Questions
- Requirement for Foreign Filing License Under Section 39
According to Section 39 of the Indian Patents Act, an inventor resident in India cannot file a patent application abroad (including a PCT application filed at the Indian Patent Office as the Receiving Office), or cause such an application to be filed outside India by his assignee without obtaining a Foreign Filing License or without first filing the application in India and then waiting for 6 weeks for any secrecy direction, before filing an application abroad.
Kindly note that the key criteria is residentship of inventors and not citizenship.
In a recent case, wherein Dell Products L.P., filed a writ petition before the Delhi High Court, the High Court determined that obtaining prior permission under Section 39 (Foreign Filing License) is mandatory for a resident in India before filing a PCT application with the Indian Patent Office as the Receiving Office.
- Details of Corresponding Foreign Applications and Their Prosecution History
(Under Sections 8(1) & 8(2) of the Act)
Non-compliance of Section 8(1) or 8(2) alone may be fatal during prosecution, or in an opposition or cancellation proceeding. The requirements under Section 8(1) and Section 8(2) must be complied with until grant of a patent on the Indian application.
According to Section 8(1) of the Act, only data particulars (Country, Filing Date, Application Number, Publication Number, Patent Number, Date of Grant) pertaining to all corresponding foreign applications (including divisional applications, patent of additions, continuation applications, continuation-in-part applications), and their updated/current status (e.g. Published, Under Examination, Granted, Opposed, Revoked, Refused, Withdrawn, Appealed, etc.), are required to be submitted at the Indian Patent Office within 6 months from the Indian filing date or within 6 months from the respective filing date of those foreign applications filed subsequent to the Indian filing.
Compliance of Section 8(2)
The Indian Patent Office now interprets the statutory requirement under Section 8(2) of the Act in a manner which is different from the way it used to prior to certain High Court and Intellectual Property Appellate Board (IPAB) decisions. Thus, even though the Act and the Rules with respect to Section 8 have not changed, interpretation and requirements to comply with such provisions have changed drastically.
Based on the recent decisions of the High Court and the IPAB, in order to comply with the statutory requirement of Section 8(2), we suggest the following, that requires the applicant to submit the minimal documentation to meet this statutory requirement thereby minimizing translation cost:
- Submit copies of granted U.S. and European patents.
- In case of Non-English jurisdictions, if a patent has been granted, the English translation of the granted claims along with the bibliographic details indicating prior art references cited during the prosecution may be submitted. Prosecution documents and related correspondence are not required.
Compliance with Section 8(2) requires the applicant to keep the Indian Patent Office informed about all the prior art references cited during prosecution of counterpart foreign patent applications and about claim amendments made to restrict the scope of the claims to overcome the objection against lack of novelty and/or inventive step in view of prior art documents. Hence such claim amendments and related correspondence may only be provided.
Any Search Report/Office Action/Examination Report where prior art documents have been cited which are not relevant for questioning, the novelty and/or inventive merit of the claimed subject matter and the claims have not been restricted in view of such prior art documents, such Search Report/Office Action/Examination Report and response and amendments filed thereto need not be submitted at the Indian Patent Office.
If one or more of the prosecution documents pertaining to corresponding foreign application(s) is/are submitted at the Patent Office before expiry of six months from the issuance of the FER, no petition will be required. However, if the Section 8(2) documents are submitted after expiry of six months from the date of issuance of the FER, a petition will be required to be submitted along with the prescribed official fee to condone the delay.
- Timeline for Filing Divisional Applications
In the past, as a strategic measure, voluntary divisional applications were filed with claims which were identical to the claims pending for the parent application to gain time for obtaining a patent on the claimed subject matter.
However, according to the recent stand of the Indian Patent Office and in view of the recent decisions by the Intellectual Property Appellate Board (IPAB) on this issue, no a divisional application cannot be filed voluntarily with claims identical to, or not patentably distinct from, those of the parent application in order to maintain patent rights. A divisional application can be filed only if there is a situation of lack of unity of invention in the parent application with claims which relate to a different inventive concept to those being pursued in the parent case. If there is plurality of inventions in the parent application, the applicant may either voluntarily file a divisional application with claims which are patentably distinct from the parent application but disclosed in the original disclosure, or may file a divisional application to meet the objection raised by the Examiner/Controller of the Patent Office on the ground of lack of unity of invention. Under no other circumstances may an applicant may file a divisional application, and the Indian Patent Office is now refusing to admit/allow divisional applications which have been filed with claims identical to the parent application maintain patent rights.
A divisional application cannot be filed after grant of a patent on the parent application. One or more divisional application(s) proposed to be filed to meet the objection on the ground of non-unity of invention OR voluntary divisional applications with the claims relating to distinct inventions (and if divisional applications have been filed in parallel jurisdictions with the said set of distinct claims) must be filed when the parent application is pending. Hence, it is advisable to file divisional applications before filing a response to the First Examination Report (FER). If a hearing has been fixed in any application, it is recommended to file one or more divisional application(s) soon after discussions with the Controller at the hearing or before filing written note of arguments subsequent to attending the hearing.
- Formal hearing After Expiry of Final Last Date
It is usual practice of the Indian Patent Office to schedule formal Hearings after the expiry of the final last date for putting an application in order for grant, wherein numerous technical/substantive and formal objections are again raised/maintained.
The final last date expires after 6 months from the date of issuance of the First Examination Report (FER), or 9 months if extension is taken, on the application and during this prosecution period, the Patent Office may issue more than one Examination Report. However, in the recent past, it has been observed that instead of issuing a second or a third Examination Report, the Patent Office is issuing Hearing Notices for most of the applications after the expiry of the last date, or sometimes even before the expiry of the last date, but after filing response to the First Examination Report.
- Submission of Working Report for Granted Patents
WORKING STATEMENT FOR YEAR 2020 DUE ON 30 SEPTEMBER 2021
FOR GRANTED INDIAN PATENTS CURRENTLY IN FORCE
The Working Report form and requirements have changed consequent to the new Patent( Amendment) Rules effective October 2020.
Working Report for the year 2020 covering the period 1st April 2020 to 31st March 2021 has to be filed by the patentee and its licensees for patents granted before 1st April 2020 by the deadline of 30 September 2021.
Unlike previous years, the new Form now requires to fill-in the revenue accrued to the patentee by using the patent in India in the relevant period when filing a “worked” report.
In accordance with the new Rules , the official e-filing module of the Patent Office has been designed in such a way that unless a pure numerical digit is entered under the relevant head “manufacturing in India” or “importing into India” in the online generated Form 27 the e-filing module will not allow to submit a “worked” report. Only an approximate value of the total revenue accrued in India from commercially exploiting the patent has to be mentioned , an exact figure need not be mentioned and no documents in support of the revenue earned is required to be submitted when filing the Working Report.
We do not recommend entering revenue amount as “zero” when declaring the patent as worked in India to skip the requirement of providing the required information as per the new Patent Rules.
We have therefore advised our clients to put atleast a token revenue amount accrued to the patentee if they wish to file a “worked” report. This is the correct procedure.
For example, US$100/INR. 7400 should be mentioned and in addition explanation given as to why the correct revenue amount cannot be provided. Please write the revenue accrued amount under the relevant head “ manufacturing in India “ OR “importing into India”.
We enclose a Working Report form for filling-up and return. There is no need to sign the form as we shall sign it on behalf of the patentee.
Please check and confirm that the patent is currently in force by way of timely renewal before sending us instructions to file the Working Report. We cannot conduct status check without incurring costs.
INFORMATION REQUIRED TO FILE WORKING REPORTS
- Name and address and nationality of the patentee as on record of the Indian Patent Office against the patent. This is mandatory.
- Name and address and nationality of the licensee ( if any) as the licensee has to file a separate Working Report. This is mandatory.
The approximate value/revenue accrued in India to the patentee/licensee where the patent is “WORKED IN INDIA” has to be mentioned under the applicable head “Manufacturing in India” or “Importing into India” and if both are applicable then please mention the amount of the revenue accrued under each head . This is mandatory.
- Where a patent has been “WORKED”, it is mandatory to provide brief comments on the nature of working of the patent ( we shall edit your comments and put appropriate wordings and if no comments provided by the patentee then we shall fill-in appropriate comments).
- For patents which have NOT BEEN WORKED , it is mandatory to provide a brief reason ( 5 to 20 words) for not working the patented invention and the steps being taken for working of the invention. If the patentee is unable to specify the reason for not being able to work/use the patent in India, we shall put an appropriate/acceptable brief reason for non-working.
- Each licensee must file individual/separate Working Reports.
- The amended Working Report Form allows single submission of related patents( used together) , wherein the approximate revenue/value accrued from a patented invention cannot be derived separately from the value accrued from related patents and all such patents are granted to the same patentee.
STATUTORY REQUIREMENT OF FILING YEARLY STATEMENT OF WORKING OF GRANTED PATENTS ON FORM 27 – FREQUENTLY ASKED QUESTIONS
Q 1. WHAT IS A WORKING REPORT/STATEMENT OF WORKING OF A GRANTED PATENT AND WHO NEEDS TO FILE IT
Annual Statement on Form 27 by the patentee(s) and their licensee(s) giving the extent of commercial exploitation in India of the patented invention is called a Working Report. Filing of a Working Report is a statutory requirement.
A Working Report has to be filed even if there has been no commercial exploitation of the patent, in India.
Each licensee has to file a separate Working Report irrespective of whether the patent has been worked or not worked.
The name , address and nationality of the patentee provided on the Working Report form, should be as currently on record of the Indian Patent Office.
In case of co-patentees , if the patent has been worked by any one of the patentees in India in the relevant period , then the patent is deemed to have been worked in India .
Q 2. IS A STATEMENT OF WORKING REQUIRED TO BE FILED FOR ALL GRANTED PATENTS
No, it is required to be filed only for those granted patents which are currently in force by way of timely payment of annuities/renewal fee and its patent term has not expired. There is no need to file a Working Report if the patent is planned to be abandoned or the patent term is set to expire in the year in which the Working Report is due.
Further, as the Statement of Working has to be filed every year for the previous financial year ( Indian financial year 1st April to 31st March ) there is no need to file a Working for the financial year in which the patent was granted.
Q 3. WHAT IS THE DEADLINE FOR FILING A STATEMENT OF WORKING AND WHAT IS THE PERIOD OF USE TO BE COVERED
As per the Patents (Amendment) Rules, 2020 effective from October 2020, a Statement of Use/Working shall be furnished once for every financial year, starting from the
financial year commencing immediately after the year in which the patent was granted and shall be furnished within six months from the expiry of each such financial year.
- Deadline for filing yearly Working Report is now 30 September each year.
- Period of information /statement of use starts from 1st April upto 31st March each year ( Indian financial year ) .
A) For patents granted prior to 1st April 2020 , Working Report must be filed by :
30 September 2021 covering the period 1st April 2020 to 31st March 2021.
B) For patents granted after 1st April 2020 , the first Working Report will have to be filed by :
30 September 2022 covering the period 1st April 2021 to 31st March 2022 .
Q 4. HOW DOES THE CHANGE IN PERIOD OF USE FROM CALENDER YEAR TO FINANCIAL YEAR AFFECT PATENTS FOR WHICH WORKING REPORT WAS FILED LAST YEAR . IS IT REQUIRED TO FILE SEPARATE WORKING STATEMENT FOR THE MISSING PERIOD OF JANUARY 2020 TO MARCH 2020 OR INCLUDE THE PERIOD IN THE SAME STATEMENT
Where Working Report for previous year 2019 was filed upto 31 December 2019, it is not required to provide any information for the period 1st January 2020 to 31st March 2020 when filing the Working Report for year 2020. Working Report has to be filed only for the relevant period 1st April 2020 to 31st March 2021.
Q 5. WHAT INFORMATION IS REQUIRED TO BE MENTIONED ON THE WORKING REPORT FORM 27
|-||Whether the patent has been worked or not worked.|
|-||Name and address and nationality of the patentee as on record against the patent. This is mandatory. |
|-||Name and address and nationality of the licensee ( if any) where the licensee has to file a separate Working Report. This is mandatory. |
FOR “WORKED” PATENTS : The approximate value/revenue accrued in India to the patentee/licensee has to be mentioned under the applicable head “Manufacturing in India” or “ Importing into India” and if both are applicable then please mention the amount of the revenue accrued under each head . This is mandatory. Only an approximate value of the total revenue accrued in India from commercially exploiting the patent has to be mentioned , an exact figure need not be mentioned and no documents in support of the revenue earned is required to be submitted when filing the Working Report.
It is also required to provide brief comments on the nature of working of the patent.
|-||For patents which have NOT BEEN WORKED , it is mandatory to provide a brief reason ( 5 to 20 words) for not working the patented invention and the steps being taken for working of the invention. |
Q 6. WHO CAN SIGN THE STATEMENT OF WORKING FORM 27
The authorised local agent of the patentee/licensee can sign the Statement of Working on Form 27 on behalf of the patentee/licensee . The Form 27 does not require the signature of the patentee or licensee .
Q 7. CAN THE PATENTEE FILE A STATEMENT OF WORKING ON BEHALF OF THE LICENSEE
The patentee may file a Statement of Use/Working on Form 27 on behalf of the licensees , however, a separate Form 27 for each licensee has to be filed in addition to the Form 27 for the patentee.
Q 8. CAN A “WORKED” STATEMENT BE FILED WITHOUT DISCLOSING THE REVENUE ACCRUED AMOUNT
No , it is mandatory to provide the approximate revenue accrued to the patentee by using the patent in India, under the relevant head “Manufacturing in India” or “Importing into India”, if a “WORKED” statement is to be filed. The official e-filing module does not allow to enter any text in the revenue field ( only numeric digit indicating the revenue accrued can be entered ) nor does the e-module allow to submit the Working Report leaving the revenue field blank.
Q 9. WHAT IF THE REVENUE AMOUNT CANNOT BE DETERMINED FOR INDIVIDUAL PATENTS ( METHOD PATENTS AND PATENTS WHICH CANNOT BE USED INDEPENDENTLY )
The amended Working Report Form allows single submission of related patents( used together) wherein the approximate revenue/value accrued from a patented invention cannot be derived separately from the value accrued from related patents and all such patents are granted to the same patentee.
Q 10. IS THE INFORMATION PROVIDED ON THE STATEMENT OF WORKING TREATED AS CONFIDENTIAL
Information submitted in Working Reports is not treated as confidential. Working Reports are made available to the public on the official website of the Indian Patent Office.
Q 11. IS IT REQUIRED TO SUBMIT DOCUMENTS EVIDENCING WORKING OF A PATENT
No supporting documents are required to be submitted when filing a Working Report . The declaration of the approximate revenue accrued amount is sufficient without any requirement to submit documents/invoices.
Q 12. WHAT ARE THE CONSEQUENCES OF NOT FILING A STATEMENT OF USE
A. Non-filing of Working Report does not result in revocation or lapse of the Patent, however,
non-filing of Working Statements under Section 146 (2) can result in imposition of fine under Section 122(1) (b), which may extend to One Million Rupees ( approximately, thirteen thousand five hundred U.S. Dollars) and if any person submits false information then it may result in the imposition of fine as well as imprisonment, which may extend to 6 months, under Section 122(2).
The imposition of the fine under Section 122(2) is not strictly enforced as of now. However, in some situations, competitors and rivals have used this route to harass patentees, and even to block enforcement of the patent on this ground.
In case of an infringement suit, if it is shown that the patented invention is “not worked” in India, no injunction will be granted by a Court of Law, in favour of the plaintiff/patentee. Hence the Working Report as available on the Indian Patent Office website is cited by most defendants to ensure that no preliminary injunction is granted.
The infringer can also use the data submitted by the patentee and in the declarations made by the patentee in the Working Report to show discrepancies in the averments made in the Patent infringement complaint and Working Report. Should a mismatch or false statement be detected then a petition can be filed in the Court directing the Patent Office to act against the Patentee and pass an Order under Section 122(2), irrespective of the merits in the infringement suit.
- Is the country a member of the Madrid Protocol?
Yes. The Madrid Protocol has been implemented in India on and from 8th July, 2013. International Trademarks granted before this date cannot be extended to India.
- Are Services protectable in India?
Yes, in classes 35 to 45 under the 11th Edition of the International (Nice) Classification.
- Can a partial or a multiple Paris Convention priority be claimed?
Priority can only be claimed for the same Trademark in respect of the same goods/services, as filed on the same date, in the Convention Country.
- May some or all of the supporting documents (excluding Convention priority documents) be filed after the filing date?
The simply signed Power Form and use information is required for filing the application. If pre-filing date of first use in India is claimed, then Evidence of Use in the form of an Affidavit with a document supporting the date of use is required to be filed with the Application. If there is no pre-filing use of the mark in India, then the basis will be “proposed to be used”. It is not mandatory to use the trademark post filing of the application, to obtain registration.
- May a Trademark be modified in order to facilitate its registration, for instance, by adding a logo or in case the mark in use has changed?
Under the law, a Trademark may be modified provided such modification is not a substantial one and permissible under the Act. However, in practice the Trademark Office rarely acts on requests for modification of the trademark.
- Is a consent obtained from the owner of a prior mark always accepted by the Office?
A Consent Letter is generally accepted if the consent does not pertain to the same/similar mark for same/similar goods /services. Accepting a Consent Letter would depend upon the nature, class and market use of the mark. The main concern of the Office is the public interest.
- Is use required to file a trademark application? Can use statement be amended after filing of the trademark application?
Use of the trademark is not required to file a trademark application or to obtain registration. “Proposed to be used” basis is accepted. However, if use has already started in India before filing of the trademark application, the date of first use must be stated along with documentary evidence submitted in the form of an Affidavit.
While there is no express provision in the Trade Marks Act prohibiting amendment of the use statement, the present policy of the Trademark Office does not allow such amendment.
- Can an opposition be filed by any party based on other reasons, such as absolute grounds?
Yes. An opposition can be filed based on any of the absolute grounds specified in the law that would render a mark unregistrable.
- Can the owner of a non-registered well-known (6bis Paris Convention) mark file an opposition?
Yes. A comparable provision is available under Section 11 of the Trademarks Act, 1999.
- Is recording of a licence agreement mandatory?
Recording a trademark licence agreement is not mandatory. However, if recordal is desired then the request must be filed within 6 months of the execution date. Licences can be recorded for registered trademarks only.
- Definition of what constitutes a protectable design; Meaning of “Design” in Relation to the Designs Act, 2000; What is an Article; Design Applied to Part of an Article; Essential Requirements to the Registration of a Design and Originality/Novelty
“Design” means only the features of shape, configuration, pattern, ornament or composition of lines or colours applied to any article whether in two dimensional or three dimensional or in both forms, by any industrial process or means, whether manual, mechanical or chemical, separate or combined, which in the finished article appeal to, and are judged solely by the eye, but does not include any mode or principle of construction or anything which is in substance a mere mechanical device, and does not include any trade mark as defined in clause (v) of sub-section (1) of section 2 of the Trade and Merchandise Marks Act, 1958 or property mark as defined in section 479 of the Indian Penal Code or any artistic work as defined in clause (c) of section 2 of the Copyright Act, 1957.
“Article” means any article of manufacture and any substance, artificial, or partly artificial and partly natural; and includes any part of an article capable of being made and sold separately.
Stamps, labels, tokens and cards are not considered articles for the purpose of registration of a design because once the alleged design, i.e. ornamentation is removed, only a piece of paper, metal or like material remains and the article referred to ceases to exist. The article must have its existence independent of the designs applied to it. However, novel shapes of labels, tokens, card, etc., can be registered as designs.
Novelty in respect of designs is absolute. In order to meet novelty requirements the article should not have been published in India or in any other country. Novelty in India in respect of designs is lost if the product is published, sold or used within India or in any other country prior to the filing date, or where applicable the priority date, of the application for registration.
- Who is entitled to register a “Design”?
Any person claiming to be proprietor of a new or original design not previously published in any country, and which is not contrary to public order or morality, may apply for registration of such design to the Head Office of the Patent Office in Calcutta and in the Branch Offices of Indian Patent Office in Mumbai, Delhi and Chennai. However, design applications are examined, prosecuted and registered only in Calcutta (Kolkata) Head Office. In case of an application claiming priority, the application should be made by a person who made the application in the United Kingdom or any of the other convention countries or groups of countries that are members of inter-governmental organisations, or by his or her legal representative or assignee, within six months from the date of the convention application. [Convention countries include members of the Paris Convention and the World Trade Organisation].
- Procedure for Filing an Application for the Registration of a Design?
In India, there is no provision to file a multiple design application. Separate applications have to be filed for designs which are similar but not same. Protection can be obtained for a design applied to an article in a particular configuration/state/position. Separate applications have to be filed for designs illustrating the article in different configurations/states.
In India divisional applications cannot be filed for designs. It is recommended to file the important variations in the first instance.
Application for registration of a design (Convention and non-Convention) under the new Designs Act, 2000, shall be filed on the prescribed form (Form 1 under the Designs Rules, 2001) accompanied by the prescribed fee.
A design may be registered in more than one class by making separate applications, and in respect of any or all of the articles in a prescribed class of articles.
Requirements for filing a design application remain as follows unless notified otherwise:
Four copies of drawings, photographs, tracings or specimens suitable for record, duly prepared or pasted on durable paper of A4 size should be filed in the Calcutta Patent Office, or Branch Offices of the Indian Patent Office in Mumbai, Chennai and Delhi, accompanied by the prescribed fee.
Secondly, the design should be shown as applied to the article and if one view of the article is not sufficient to properly show the design, different views such as side elevation, top view, bottom view, front view, rear view, or perspective views should also be filed. In case of textile designs with repeated surface pattern, each specimen should be of sufficient portion of the repeat in length and width and shall not be less than 5 inches by 4 inches or 13 centimetres by 10 centimetres, so as to clearly show at least one full repetition of the design.
Thirdly, the name, address and nationality of the applicant must be provided. A power of authority can be filed any time within six months of filing the application (no legalization is necessary). One general power of authority is sufficient for all applications by a particular applicant.
India became a member of the Paris Convention with effect from 07 December, 1998. Priority can be claimed by anyone who first filed applications in the United Kingdom or any of the other convention countries or groups of countries which are members of inter-governmental organisations. The list of convention countries including members of the Paris Convention and the World Trade Organisation will be notified separately. Priority cannot be claimed from an EPO/PCT application even if it designates one of the convention countries. Certified copy of the design first filed in a convention country is required for a priority application. It is preferable that a brief statement of novelty claimed for the design be endorsed on each copy of the design.
Where a design has been registered in respect of an article contained in a class, the application of the proprietor of the design to register it in respect of other article (s) in that class shall not be refused, nor the earlier registration invalidated, either on the ground of novelty, or on the ground of publication, by reason only that it was previously registered, provided that such subsequent registration shall not extend the period of copyright in the design beyond that arising from the previous registration.
Further, if any person applies to register in respect of an article, a design not substantially different from a design previously registered by another person in respect of the same or some other article, and if at any time while the application is pending the applicant becomes the registered proprietor of the previously registered design, then the applicant shall be treated as the registered proprietor of the previously registered design from the time of making the application.
The Designs Rules, 2000, has notified the adoption of the International Classification for Goods.
In case of any doubt regarding the class to which any particular description of article belongs, it shall be determined by the Controller, whose decision shall be final.
- Post Application Stage
- Following an application for registration of a design, the application is numbered, dated and examined and defects (objections), if any, are communicated to the applicant.
- The applicant should meet the official objections and put the application for the design in order for acceptance within six months from the date of application. The said period of six months may be extended for maximum three months under Rule 18 of the Designs Rules, 2001, as amended in 2008, with the prescribed fee before the expiry of the six months. When an application for registration of a design is in order, it will be accepted; on acceptance, a certificate of registration is issued to the applicant and the registration is recorded in the Register of Designs.
- The Designs Rules, 2000, provides for the applicant or his agent to be “heard” by the Controller before the Controller takes the final decision for grant or refusal of a design. Appeal from the Controller’s decision will lie before the High Court.
- The Controller has been empowered to make orders regarding substitution of applications at any time before a design has been registered on satisfactory submission, in the prescribed manner, of claims of joint applicants or rights of surviving applicant(s) by common consent or by operation of law.
- On acceptance of the design in respect of an application, the Controller has also been empowered to cause publication of the particulars and registration of the design, and as notified in the Designs Rules, 2000, one or more view(s) of the design will be selected by the Controller for its publication in the Gazette, which in his opinion would best depict the design.
- Register of Designs
- The Register of Designs is maintained by the Calcutta Patent Office as a statutory requirement. It contains the design number, the class number, date of filing (in India) and reciprocity date (if any), the name and address of the proprietor, and such other matters as would affect the validity or proprietorship of the design.
- The Register of Designs is open to public inspection on payment of the prescribed fees, soon after the design is registered.
- The registration of a design confers upon the registered proprietor copyright in the design for the period of registration. “Copyright” means the exclusive right to apply a design to any article belonging to the class in which it is registered.
- Duration of Protection
The duration of registration of a design is initially ten years from the date of registration. The initial period of registration may be extended for a final period/term of five years on an application to the Controller before the expiry of the copyright, accompanied by the prescribed fee. Where a design has ceased to have effect by reason of failure to pay the prescribed fee for extension of copyright, the proprietor of the design or his legal representative or one or more of joint holders without joining the others, may, with the leave of the Controller, make an application for restoration of the design in the prescribed manner with the prescribed fee, within one year from the date on which the design ceased to have effect.
- Expunging/Cancelling Registration
The registration of a design may be canceled on any of the following grounds:
- that the design has been previously registered in India; or
- that it has been published in India or in any other country prior to the date of registration; or
- that the design is not a new or original design; or
- that the design is not registrable under this Act; or
- it is not a design as defined under clause (d) of section 2
According to clause (d) of section 2
- “design” means only the features of shape, configuration, pattern, ornament or
composition of lines or colours applied to any article whether in two dimensional or three dimensional or in both forms, by any industrial process or means, whether manual, mechanical or chemical, separate or combined, which in the finished article appeal to and are judged solely by the eye; but does not include any mode or principle of construction or anything which is in substance a mere mechanical device, and does not include any trade mark as defined in clause (v) of sub-section (1) of section 2 of the Trade and Merchandise Marks Act, 1958 or property mark as defined in section 479 of the Indian Penal Code or any artistic work as defined in clause (c) of section 2 of the Copyright Act, 1957.
- Infringement of a Design
The application of a design or its fraudulent or obvious imitation to any article belonging to the particular class of goods in which the design has been registered for the purpose of sale or importation of such articles without the consent of the registered proprietor constitutes infringement of the design. Publishing such articles or exposing terms for sale with knowledge of the unauthorized application of the design also amounts to infringement of the design. Under Section 22 of the Designs Act, 2000, during the existence of copyright in any design it shall not be lawful for any person: If any person acts in contravention of this section, he or she shall be liable: Suit for infringement of registered design cannot be instituted in any court lower than that of a District Judge, and, in the event of defence being taken by the defendant or alleged infringer on the grounds available for cancellation of registration of the concerned design, the proceedings shall be transferred to the High Court for decision.
- Marking of an Article and Penalty for Infringement of a Registered Design
It is not compulsory that an article to which a registered design has been applied be marked by the registered proprietor. However, it is advantageous to the registered proprietor to mark the articles so as to indicate the registered design number (except in the case of textile designs and in respect of articles made of charcoal dust which are brittle). Otherwise, as is the case with patents, a registered proprietor would not be entitled to claim damages from any infringer unless it can be shown that all proper steps to ensure the marking of the article were taken, or unless it can be shown that the infringement took place after the infringer knew or had received notice of the existence of the copyright in the design. An infringer who has proceeded on the basis of a report from the Patent Office that no registration subsists in respect of a particular design and is later held as infringing copyright for the said design can plead as an innocent infringer and get relief from damages.
Anyone contravening the copyright in a design is liable to pay for every offence a sum not exceeding Rs.25,000/- to the registered proprietor, subject to a maximum of Rs.50,000/- in respect of any one design. The registered proprietor may bring a suit for the recovery of the damages for any such contravention and for an injunction against repetition of the same.
- Defences to Infringement
- The design has been previously registered in India;
- The design has been published in India or in any other country prior to the date of registration;
- The design is not a new or original design; or
- The design is not registrable under the provisions of the Designs Act, 2000;
- No suit or other proceedings can be commenced in respect of piracy of a registered design, if committed between the date on which the registration of the design ceased to have effect and the date of restoration of the design.