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(DESIGN + COPYRIGHT + PATENT + GEOGRAPHICAL INDICATION) Registration - An Overview

DESIGN

Essential requirements for registration

A design should:

  • Be new or original
  • Not be disclosed to the publication in tangible from or by use or in any other prior to the filing date, or where applicable, the priority date of the application for registration.
  • Significantly distinguishable from known design or a combination of known designs
  • Not comprise or contain scandalous or obscene matter
  • Not be a mere mechanical contrivance.
  • Be applied to an article and should appeal to the eye
  • Not be contrary to the public order

Who can apply for registration?

Any person claiming to be the proprietor of any new or original design, not previously published in any country and which is not contrary to public order or morality, may apply for the registration of the same. An agent appointed for the same may also apply for registration on the behalf of the owner.

Documents Required for DESIGN Registration

  • General Power of Attorney given to the agent duly signed by the proprietor, partner or one of the Directors of the company
  • Four copies of Representation of the design on A4 size paper which shall be exactly similar drawings, photographs, tracings or other representations of the design.
  • Documentary proof of Priority (if any) (i.e. any previous registration or application for registration)
  • List of countries to claim the priority, if any, where the application / applications for design has/ have been filed, along with date and application number.

INFORMATION REQUIRED:

  • The name, address and nationality of the Applicant. If the Applicant is not a natural person the legal status and the place of incorporation
  • Name of the article to which the design is to be applied.
  • A brief statement of the novelty one claims for his design
  • Class of the article embodying the design
  • Name(s), age and address (es) and nationality (ies) of the Applicant/s whether they are partners or Directors of the firm/company.
  • Name, address, designation and nationality of the person who signs the General Power of Attorney

OUTLINE PROCEDURE FOR THE REGISTRATION OF DESIGN:

  • The application for Design Registration is required to be submitted at the Designs Office, Kolkata.
  • The application received by the Branch Offices is transmitted to the Head Office for processing.
  • Application duly filed in on the prescribed form (Form-1) along with the prescribed fees, stating name & full address, nationality, name of the article, class number, and address for service in India is required to be submitted.
  • The application is required to be signed either by the applicant or by his authorized agent.
  • Representation of the article in quadruplicate, stating the view e.g. front view, etc. is required to be submitted with prescribed application.
  • A statement of novelty and disclaimer (if any) in respect of mechanical action, trademark, word, letter, numerals should be endorsed on each representation sheet and should be duly signed and dated.
  • The application is examined by the Design Office and objections, if any, are raised thereto.
  • The certificate granting copyright in registered design is issued by the Design Office after the objections, if any, are removed to the satisfaction of the department. The term for validity of copyright in registered Design is 10 years. The copyright may be extended for a period of 5 years from the original design is renewed after ten years from the expiration of the original period of 10 years on filing application for extension of copyright along with payment of the prescribed fees.

COPYRIGHT

COPYRIGHT REGISTRATION PROCEDURE

The procedure for registration is as follows:

  1. Application for registration is to be made on as prescribed in the first schedule to the Rules;
  2. Separate applications should be made for registration of each work;
  3. Each application should be accompanied by the requisite fee prescribed in the second schedule to the Rules; and
  4. The applications should be signed by the applicant or the advocate in whose favor a Vakalatnama or Power of Attorney has been executed. The Power of Attorney signed by the party and accepted by the advocate should also be enclosed.

TIME FOR PROCESSING APPLICATION

After you file your application and receive a diary number you have to wait for a mandatory period of 30 days so that no objection is filed in the Copyright office against your claim that particular work is created by you.

SCOPE AND EXTENT OF COPYRIGHT REGISTRATION

Both published an unpublished works can be registered. Copyright in works published before 21st January 1958, i.e., before the Copyright Act, 1957 came in force, can also be registered, provided the works still enjoy copyright. Three copies of published work may be sent along with the application.

If the work to be registered is unpublished, a copy of the manuscript has to be sent along with the application for affixing the stamp of the Copyright Office in proof of the work having been registered. In case two copies of the manuscript are sent, one copy of the same duly stamped will be returned, while the other will be retained, as far as possible, in the Copyright Office for record and will be kept confidential. It would also be open to the applicant to send only extracts from the unpublished work instead of the whole manuscript and ask for the return of the extracts after being stamped with the seal of the Copyright Office. When a work has been registered as unpublished and subsequently it is published, the applicant may apply for changes in particulars entered in the Register of Copyright in Form V with the prescribed fee.

All kinds of literary and artistic works can be copyrighted, you can also file a copyright application for your website or other computer programs. Computer Software or program can be registered as a ‘literary work’. As per Section 2 (o) of the Copyright Act, 1957 “literary work” includes computer programs, tables, and compilations, including computer databases. ‘Source Code’ has also to be supplied along with the application for registration of copyright for software products. Copyright protection prevents the undue proliferation of private products or works and ensures the individual owner retains significant rights over his creation.

PATENT

For patent registration in India, you must submit the specified forms at the patent office. If you own a digital certificate of Class 3, you can easily submit it online.

In the case of online applications, the patent office will be charging an additional 10% as the fee. The step-by-step process of how to patent your idea or invention/intellectual property is mentioned below:

Step 1: Patent Search

For a successful patent registration, you need to ensure that your invention/idea is non-obvious and unique. Carrying out a patent search will help you to ensure this and also to avoid lengthy official procedures. You can search for yourself or can take professional help from experts. You can also conduct a patent search with the help of experts.

You may skip the below-mentioned steps if you come across a similar patent registered already.

Step 2: Filing a Patent Application

For patent filing in India, one of the most crucial aspects to consider is the preparation of patent specifications. The entire process of drafting a patent specification is a specialized task that can be done best by experienced professionals only.

Ideation: Here, you need to pen down the idea or concept, clearly mentioning the key details about the invention and the desired patent.

Visualisation: Visualise your idea and elements in the form of diagrams that explain more about the invention.

Verification and Patentability Search: The next step is to verify whether your invention is patentable as per provisions mentioned in the Indian Patent Act. Your ideas/inventions must meet the patentability requirements such as:

Novelty

Non-obviousness

Usefulness

Patentable subject matter

Drafting a patent application is an art in itself. Seeking the help of a patent professional will be a wise choice here. If you are in the initial stages of the research and development process, then it is best to file an optional preliminary application called the provisional patent application.

Step 3: Preparation of a Patentability Report

Authorized patent professionals or patent agents will then do extensive research and prepare the patentability report that contains the analyses based on the above-mentioned criteria. You should also attach all the specified documents along with the patent application. Have a thorough check on the documents before submission, to avoid any rejection in the future.

Step 4: Publication of Patent Application

The application is then published in the Patent Journal within 18 months. A request for early filing of the patent application can be made along with a prescribed fee. Publication of Filed Patent

For patent registration in India, the Indian patent office keeps every patent application confidential until it gets officially published in the patent journal

The publication of a filed patent happens automatically after 18 months from filing the applications, and there is no need for any request to be raised

To get the patent published in advance, the applicant has to initiate a formal request and it will get published within 1 month of the request

The publication date does matter the most as the inventor is entitled to protect his work legally, immediately after the publication.

Step 5: Patent Examination

There would be a formal submission of a request for the patent examination which must be filed within 48 months from the first filing of the patent (provisional patent or complete patent). If the applicant fails to file within the time frame specified in the Patent Act, the application will be treated as withdrawn by the patent office. The examiner then conducts a comprehensive investigation and releases the first examination report called patent prosecution.

Step 6: Patent Objections

It is common for patent applicants to receive objections, like “inconsistent or unclear claims” or “inventions lacking novelty”, etc. Hence, it is mandatory to analyze the patent examination report and draft a proper response to the objections.

Step 7: Grant of Patent

Once all the patentability requirements are met, the notification to grant a patent will be published in the patent journal.

Documents Required for PATENT Registration

  • Application form in duplicate (Form 1)
  • The provisional or complete specification in duplicate. If the provisional specification is filed, it must be followed by the complete specification within 12 months (Form 2)
  • Drawing in duplicate (if necessary)
  • Abstract of the invention in duplicate
  • Information & undertaking listing the number, filing date, & current status of each foreign patent application (if such exist) in duplicate (Form 3)
  • Priority document (if the priority date is claimed) in convention application, when directed by the Controller
  • Declaration of inventor-ship where the provisional specification is followed by complete specification or in case of convention/PCT national phase application (Form 5)
  • Power of attorney (if filed through any patent agent)
  • Fees (to be paid in cash/by cheque/by demand draft).

GEOGRAPHICAL INDICATION

Step by step procedure for registration of Geographical Indication

Step 1-Filing of the Application

A Geographical Indication registration application must be submitted in three copies.

The application, along with the statement of case, must be signed by the applicant or his representative and filed with the required form. GI-1

A single application can be lodged for many classes of commodities, with fees payable for each of those classes of products.

An affidavit must be presented with the forms by an association of persons, producers, organisations, or authorities representing the producers’ interests in certain items and how the applicant claims to represent their interests.

What should be the contents of the application?

Section 11 (2)

  • To begin with, it should explain how the geographical indication is used to identify goods as coming from the concerned territory of the country, region, or locality, as the case may be, in terms of quality specifications, reputation, and characteristics that are solely due to certain environmental conditions with inherit natural or human factors relating to the territory.
  • It should also specify the type of items that will be covered by the geographical indication.
  • A geographical map of the country’s  or region’s territory, or the place within the country where the commodities are produced or made, should be given.
  • Details on how the geographical markers appear, including whether they are made up of words, figurative components, or both.
  • Statement providing the applicant’s information, including names, residences, and other information as may be required from time to time.

Forms for registration of GI are available on the website of Geographical Indications Registry (http://www.ipindia. ic.in/forms-gi.htm)

Step 2 and 3 – Preliminary Scrutiny and Examination

Section 11 (5) to (7)

  • The examiner will look over the application for any errors or inconsistencies.
  • If there are any deficiencies or discrepancies, the applicant must correct them within one month of receiving notification.
  • The Registrar will then review the correctness and validity of the substance of the statement provided by the applicant in conjunction with a group of experts consisting of no more than 7 specialists who are well-versed in the subject.
  • The examination report will be released only after thorough scrutiny and examination.

Step 4 – Issue of Show Cause Notice

(Section 12)

If the Registrar has any objections to the application, the applicant will be notified.

The applicant has two months from the date of receipt of the notice to answer, or he can request a hearing.

If the Registrar believes there has been a mistake on the side of the applicant and it has been communicated to him, he has the authority to withdraw the application after providing the applicant a reasonable opportunity to be heard.

If you disagree with the Registrar’s decision, you have one month to file an appeal.

Step 5: Advertisement

(Section 13)

  • Every application for registration of geographical indication that has been accepted absolutely or with subject to conditions or limitations shall
    within three months of acceptance shall be published in the Geographical Indications Journal.

Step 6: Opposition to Registration

Section 14

Any individual can file a notice of opposition to the Geographical Indication
application published in triplicate in the Journal, along with the form GI-2, within three months (extendable by another month on request, which must be filed before three months).

The registrar shall serve a copy of the notice on the applicant for registration, and the applicant shall send to the Registrar a copy of the counter statement stating the grounds on which he relies on his application within two months of receipt of such notice; failure to do so will result in the application being abandoned.

The Registrar shall serve a copy of the rebuttal statement to the person who has filed the notice of opposition after receiving it from the applicant.

Any evidence on which the applicant or opponent relies must be submitted to the registrar in the manner and period specified by the registrar from time to time.

The Registrar must allow both parties sufficient time to be heard.

The registrar will decide whether to approve the application with or without limitations or conditions after hearing both parties and evaluating all of the evidence.

If the registrar discovers that either the applicant or the person filing the notice of opposition does not reside or conduct business in India, the registrar may require him to provide security for the cost of the proceedings before him, and in the event that such security is not provided, the application or opposition may be treated as abandoned.

The Registrar may grant permission to fix or amend a mistake in the notice of opposition or counterstatement upon request.

 Step 7– Corrections and amendments-

Section 15

The Registrar may from time to time with subject to certain terms and conditions permit either before or after the acceptance of the application, the correction of any error or an amendment of the application.

Step 8 : Registration

Section 16

  • On acceptance of the application, the registrar shall register the geographical indication for the same.
  • If registered the date of filing of the application shall be deemed to be the date of registration.
  • The registrar shall then issue to the applicant a certificate with the seal of the Geographical indication’s registry in Form-02 as per Rule 55 0f The Geographical Indications of Goods (Registration and Protection) Rules, 2002

Step 9: Duration, Renewal And Restoration

Section 18

A registered Geographical Indication is valid for ten years and can be renewed for another ten years by paying a renewal fee.

The Registrar shall send a notice to the registered proprietor or authorised user, as the case may be, about the date of expiration and the conditions for payment of fees and upon renewal of which registration shall be obtained, at least 30 days prior to the expiration of the last registration of a geographical indication.

If this is not done, the geographical indication may be removed.

Where a geographical indication has been removed by the Registrar due to non-
payment of renewal fees, the Registrar may, after six months and within one year from the expiration of the last registration of the geographical indication, restore the geographical indication for a period of ten years from the expiration of the last registration, on an application in a prescribed manner and after payment of prescribed fees, restore the geographical indication for a period of ten years from the expiration of the last registration.

Step 10: Appeal to the Appellate Boards

Section 31

  • Any person aggrieved by an order or decision of the Registrar under the act or under the rules made thereunder, may prefer an appeal to the Intellectual Property Appellate Board (IPAB) within three months from the date on which the order or decision sought to be appealed is communicated.

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