FAQ-1 - ipMetrix

FAQ's

Frequently Asked Questions about Intellectual Property

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What is a patent and how does it help a company?

A patent is a set of rights conferred by an authority for a limited period of time in recognition for uniqueness and usefulness of an invention to the society.

Patent provides the rights to block others from making, using, selling or offering for sale, and importing an invention. Companies can use the patent rights to attain monopoly over the invention to the extent covered by the rights and therefore gain competitive advantage in the relevant technology field over other players in the market. Patent gives a company 20 years to exploit the invention exclusively, from the date of initial filing.

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Which is the patent granting authority in India?

The Indian Patent Office (IPO) is the patent granting authority in India. IPO is administered by the Office of the Controller General of Patents, Designs and Trade Marks (CGPDTM). This is a subordinate office of the Indian government and administers the Indian law of Patents, Designs and Trade Marks.

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Who can file for a patent in India?

A patent application can be filed by a licensed attorney, agent, owner, and inventor.

A licensed attorney is typically a registered bar council member who is also registered as a patent attorney with the relevant patent office. While there is no requirement for patent attorneys to have technical background, it is highly desirable to hire patent attorneys with strong technology background. Only those attorneys have a strong technology background can understand the intricacies of an invention so that they can help in obtaining broadest possible protection for the invention.

A licensed patent agent is person is a person who is registered with the Indian patent office as a qualified professional to write and prosecution patent applications. Patent agents qualify for registration by writing an exam conducted by the Indian patent office. All patent agents have technical background.

Owners and inventors can also file patent applications on their own. However, due to the complexities of the law and the long drawn process involved in obtaining a patent, it is highly recommended that inventors and owners seeking to file patent applications take help from professionals to extract the best value from their inventions. Professional patent practitioners can help in obtaining broad protection for invention and also are knowledgeable to advise on the right strategies to adopt in obtaining patent rights.

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Where can I file a patent in India?

Patent applications may be filed at one of the four patent offices in India, depending on territorial jurisdiction of the applicant (based on the address of the applicant). The patent office information including the regions covered by the respective offices is provided hereunder:

1. Chennai

Address: Intellectual Property Office, Intellectual Property Office Building, G.S.T. Road, Guindy, Chennai-600032,
Phone: 044-22502081-84
FAX: 044-22502066,
Email: chennai-patent@nic.in

Regions covered: The States of Andhra Pradesh, Karnataka, Kerala, Tamil Nadu and the Union Territories of Pondicherry and Lakshadweep

2. Delhi

Address: Intellectual Property Office, Intellectual Property Office Building, Plot No. 32, Sector 14, Dwarka, New Delhi-110075,
Phone : 011-28034304, 28034305 28034306
FAX:011- 28034301,02
Email: delhi-patent@nic.in

Regions covered: The States of Haryana, Himachal Pradesh, Jammu and Kashmir, Punjab, Rajasthan, Uttar Pradesh, Uttaranchal, Delhi and the Union Territory of Chandigarh.

3. Mumbai

Address: Intellectual Property Office, Boudhik Sampada Bhawan, Near Antop Hill Post Office, S.M.Road,Antop Hill, MumbaiI – 400 037.
Phone : 24137701, 24141026, 24150381, 24148165, 24171457
FAX : 24130387
EMAIL: mumbai-patent@nic.in

Regions covered: The States of Maharashtra, Gujarat, Madhya Pradesh, Goa and Chhattisgarh; and the Union Territories of Daman and Diu, and Dadra and Nagar Haveli

4. Kolkata

Address: Intellectual Property Office, Intellectual Property Office Building, CP-2 Sector V, Salt Lake City, Kolkata-700091,
Phone : 23671945, 1946, 1987,
FAX-033-2367-1988,
Email:- kolkata-patent@nic.in
Regions covered: The rest of India

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Who is an Indian Patent Agent?

An Indian patent agent is an individual with a science or engineering degree who has cleared the Indian patent agent exam and is registered with the Indian patent office with good standing in his practice.

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What is the difference between a patent agent and a patent attorney?

A patent attorney is a (a) lawyer and (b) registered as a patent agent with the Indian patent office. A patent attorney in India may or may not possess a technical degree.

A patent agent is a (a) technical graduate, and (b) registered as a patent agent with the Indian patent office.

Differences:

A patent attorney can represent a client in a court of law, and patent agents cannot. However, patent agent can represent a client at the patent office and the Intellectual Property Appellate Board.
All patent agents have technical degrees, while not all patent attorneys have technical degrees.

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What is the process of acquiring a patent in India?

Acquiring patent involves the following steps of patent application preparation and filing:

1. Invention disclosure

We provide an invention disclosure format to facilitate inventors to provide relevant information. The invention disclosure format contains a list of questions arranged in a logical manner to capture the essence and details of the invention required to perform search and prepare patent specification draft. After reviewing the invention disclosure document, we request for one call or face to face meeting with the inventor to ensure that we understand the invention correctly.

2. Patentability search

Patentability search is not a mandatory step. In most projects, after receiving the invention disclosure and confirming our understanding with the inventor, we perform a search and prepare the patentability search report. Our patentability search report provides information about relevant prior art existing and also provides a rating on the strength of the invention in relation to the closest prior art uncovered. With the help of the report, you can make an informed decision on whether you would like to go ahead with the next steps in the patent process or not.
The turn-around time for a comprehensive patentability search report is 5-7 working days

3. Patent specification preparation

If you choose to go ahead with the patenting process after reviewing the patentability search report, we start the process of drafting the specification. The drafting process involves 2 to 3 iterations with the inventor where our analyst seeks clarifications or inputs or review comments from the inventor.
The turn-around time for drafting a specification is about 3 – 4 weeks. The turn-around time for drafting can vary significantly depending on the availability of the inventors.

4. Application preparation and filing

While the drafting process is in progress, our portfolio will be in touch with the inventors and applicants to gather relevant information and signatures. The portfolio team prepares the application forms and keeps it ready for filing. Once the drafting process is complete and a specification is ready for filing, portfolio team files the application either using in-house resources or through a partner attorney, depending on the country of interest.
Filing an application after drafting typically takes 1- 3 days.

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Who can help me file a patent application in India?

Any patent agent or patent attorney can help you file a patent application in India. We have a well trained and experienced team of attorneys and agents who can help you with your patenting needs.

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What value does a patent search add to me?

The process of obtaining patent rights can be laborious and costly. So, before committing to this process, it important for you to understand the chances of obtaining patent rights for a given invention. A patentability search report provides comprehensive analysis of relevant prior art and provides analysis on the chances for obtaining patent rights for any given invention. Using this report, applicants can make an informed choice on going ahead with the patent application process.

In most circumstances, we recommend performing a patentability search.

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Where can I perform a patent search?

Patent search can be performed in free and paid patent databases. Patent search can be done in almost all official patent databases.

Some of the free databases are,

google patents (Coverage US, EP, WIPO, CN documents)
freepatentsonline(Coverage US, EP, WIPO, Japan, German documents)
USPTO (US documents)
espacenet (EP documents)
WIPO (PCT documents)
SIPO (Chinese documents)
IPDL (Japanese documents)

Some of the paid databases are,

Totalpatents (Coverage)
Questel Orbit (Coverage)
Relecura
Thomson Innovation

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Can I search for patents in India?

Yes, You can search (published and granted) Indian patent documents at official patent database of India as well as other paid databases. Recently, it was announced that EPO patent database will include Indian patents as well.

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What is patentability opinion or patentability analysis?

The term patentability refers to the eligibility of an invention to obtain patent rights based on criteria laid by relevant patent laws. A patentability analysis report is prepared by an authorized patent agent and includes analysis based on the following criteria:

Novelty: An invention is said to be novel when the invention is not anticipated by any single prior art reference. In simple terms, the word anticipation means providing details regarding the workings and feasibility of the same invention.
Non-obviousness: An invention is said to be non-obvious, when the invention is not anticipated by any combination of known prior art references.
Useful: Invention is said to be useful if it has applications in an industrial setting.
Subject Matter: An invention is said to be eligible subject matter if the invention is not excluded by the patent law. The phrase subject matter refers to the concept or aspect that is intended to be protected by a patent. Few subject matters such as business methods are not patentable subject matter in India.

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Can I perform a patent search by myself ?

Yes, you can conduct patent search by yourself at free and paid patent databases. However, you have to understand patent database search operators and syntax to conduct exhaustive keyword search.

Also, you may not have access to paid patent database. So, you have to limit yourself to do patent search only in free patent databases. However, it is advisable to get a patent search done by a professional patent analyst. Patent analyst conducts patent search (including keyword and patent classification search) especially in paid databases which may be exhaustive in general, compare to patent search done by yourself in free databases.

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Are there free databases for patent search?

Yes, there are many free patent databases. Some of the free databases are,

google patents (Coverage US, EP, WIPO, CN documents)
freepatentsonline(Coverage US, EP, WIPO, Japan, German documents)
USPTO (US documents)
espacenet (EP documents)
WIPO (PCT documents)
SIPO (Chinese documents)
IPDL (Japanese documents)

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What is an invalidity search?

Invalidity search is performed in relation to an existing patent to prove that claims of the patent are invalid by discovering prior art which is filed before effective filing date of the patent-in-question. In other words, one can say that claims of the patent were granted by mistake by discovering valid prior art which was missed by patent examiner earlier, during examination process of the patent. In invalidity search, claims of the patent are scrutinized to determine the validity of the patent.

An invalidity search is also referred to as validity search. Irrespective of what we name the search, the goal is to check if a patent is valid or invalid.

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What is a Freedom to Operate (FTO) Search?

FTO search is a search conducted on patent databases to ascertain if there is free to operate a product in the market without violating any third party patent rights (active patents) in specified countries. A product feature or process does not have freedom to operate in a country, when all elements of a claim of a relevant patent (active patent) from that country read on the proposed product feature or process.

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If freedom to operate exists for a product, does it mean that the product is patentable as well?

Freedom to operate (FTO) does not guarantee patentability of a product.

In ascertaining FTO, it is determined that whether a product feature is violating any rights of an active patent. Typically search in an FTO study is limited to the country where the product or feature is supposed to be launched or sold or used or manufactured. In other words, in FTO the search and analysis would be restricted to active patents and the country (or countries) where the product or feature is to be launched or sold or used or manufactured.

In ascertaining patentability, the product or feature is analyzed based on novelty and non-obviousness with respect to all available prior art. Here, the prior art could be patent as well as non-patent literature. In contrast, there is no need to search non-patent literature in as an FTO study is only concerned about ascertaining the freedom to put out the product in the market without infringing any patent rights.

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If a product/process is patentable, does it mean that freedom to operate exists for that product?

It does not mean that freedom to operate exists for that product, if a product or process is patentable. FTO and patentability of an invention has different criteria. Please refer answer of question number 5 for criteria.

Let us consider an example scenario where Company A has a patented fan. The fan includes – three blades connected to a motor housing. Further, Company B has come up with an improved fan with aerodynamic blades. Company B obtains patent rights for a fan with improved blades. Fan by Company B includes – three aerodynamic blades connected to a motor housing.

Here, the improved fan from Company B is patentable because of the novel feature introduced by the aerodynamic blades. However, Company B cannot commercialize the improved fan without taking license to market a fan with three blades connected to a motor housing. In other words, Company B does not freedom to operate the improved fan, even though the improved fan is patentable.

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What is patent infringement?

A patent grants a set of rights, namely – making, using, selling or offering to sell, and importing. Any violation of these rights is referred to as infringement of patent rights or simply patent infringement.

Patent infringement is violating patent rights which is protected by a patent. Patent infringement occurs when your product or process has violated the rights afforded by a patent covering all or parts of the product or process.

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What is infringement analysis and when must it be done?

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Patentability Analysis & Search

Comprehensive patentability search and analysis of an invention involves searching worldwide databases for relevant prior art references based on identified novel elements of the invention and analyzing each of the references against the novel elements. Analysis includes citing relevant portions of text from the references, and comparative analysis of how the novel elements map on to the references.

Patentability search and analysis is extremely useful in helping our clients take decisions with respect to filing a patent application for their invention. The study helps in ascertaining the probability of a patent grant to an invention. Further, it helps in understanding the scope of protection that might be derived if a patent is granted to the invention. Furthermore, it helps in drafting patent specification that may get granted with lesser hassle.

We also provide a rating that suggests the chances of obtaining patent rights for an invention.

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Specification Drafting (Complete / Non-provisional)

Complete specification drafting includes preparing ready to file specification with relevant claims covering the subject matter, detailed drawings, and description. We take specific care to ensure that all necessary embodiments are covered in the description to provide maximum breadth to the scope of the claims. Before starting on drafting a specification, our analysts engaging at least one technical discussion with the inventor(s) to ensure that the invention is understood properly.

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Specification Drafting (Provisional)

Our approach to provisional specifications is no different from our approach to complete (or non-provisional) specifications. We try to prepare detailed provisional specifications and include maximum possible information to ensure that the claims in ensuing complete (or non-provisional) specifications have enough support. In fact, we write shadow claims even at the stage of drafting provisional specification to ensure that right specification is prepared

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Filing of a Divisional Application

A divisional patent application is a type of patent application which contains matter from a previously filed application. Whilst a divisional application is filed later than the parent application, it may retain its parent’s filing date, and will generally claim the same priority.

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Filing of a Patent of Addition

Patents of addition are granted for novel improvements or modifications to an invention which is already covered by a granted standard patent of invention (known as the “parent patent”). Patents of addition are granted for novel improvements or modifications to an invention which is already covered by a granted standard patent of invention (known as the “parent patent”).

A patent of addition:

Can only be filed by the same person or company which owns the parent patent;
Must have at least one inventor in common with the inventors named in the parent patent;
Cannot be filed before the filing date of the parent patent;
Cannot be granted until the parent patent has been granted.

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Obtaining Foreign Filing Permit

A permission to file a patent application outside the home country (usually the country of basic application) obtained from the Patent Office of that country is commonly referred to as the Foreign Filing Permit. The purported objective behind such check, perhaps, is to prevent the defense related inventions from being escaped to other jurisdictions without the State of origin being given first choice to use it.

Should it be desired to file an application in a country other than an inventor’s country of residence, it may be necessary to obtain a foreign filing license from the inventor’s national patent office to permit filing abroad. Some offices, such as the USPTO, may grant an automatic license after a specified time (e.g., 6 months), if a secrecy order is not issued in that time.

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Filing of Statement of Undertaking Regarding Foreign Filing

At the time of filing a patent application in India, the applicant must submit an undertaking stating that, he would keep the Controller updated from time to time about patent applications filed outside India relating to the same or substantially the same invention as filed in India. Such updates shall be provided till the patent is granted in India. The objective of seeking such information from the applicant is to assist the Indian Patent Office in examining the Indian patent application.

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Preparing & Filing Request for Change of Applicant's Name

If an applicant needs to change the inventorship in a non-provisional application, what is the applicant required to submit? To change inventor ship, an applicant must file a request listing the correct inventors. Additionally, the applicant must submit an inventor’s oath or declaration for each added inventor.

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Preparing & Filing Request for Obtaining Priority Documents / Certified True Copy

In patent, industrial design rights and trademark laws, a priority right or right of priority is a time-limited right, triggered by the first filing of an application for a patent, an industrial design or a trademark respectively. The priority right allows the claimant to file a subsequent application in another country for the same invention, design, or trademark effective as of the date of filing the first application. When filing the subsequent application, the applicant must claim the priority of the first application in order to make use of the right of priority. The right of priority belongs to the applicant or his successor in title.

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Preparing & Filing Request for Extension of time

Time limits for various actions while prosecuting a patent application and also for post grant procedures have been either specifically provided in the Patents Act or prescribed through the Patents Rules. These time limits are required to be followed strictly by every person concerned. Failure to adhere to the legally imposed time limits may turn out to be detrimental to the interests of the applicants, patentees or any other person interested. Other than few action or any proceedings, the time limits prescribed in the Rules for an action or any proceedings; may be extended by the Controller for a period of one month, if he thinks it fit to do so and upon such terms as he may direct.

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Preparing & Filing Request for Examination

In the Indian patent system, a request to patent office has to be made to process the application to the Examination stage. Unlike other countries like USA, where the examination fee has to be paid at the time of filing itself, Indian Patent Act 1970 provides 4 years time frame to file and pursue the application to the examination stage. The Patent Office will examine an application only if the applicant files a request for examination. If it is not filed within the specified time limit the application shall be treated as withdrawn.

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Preparing & Filing Request for Early Publication

Patent applications are generally published 18 months after the earliest priority date of the application. Prior to that publication the application is confidential to the patent office. After publication, depending upon local rules, certain parts of the application file may remain confidential, but it is common for all communications between an Applicant (or his agent) and the patent office to be publicly available.

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Recordation of Assignment

A patent assignment is the transfer of an owner’s property rights in a given patent or patents, and any applications for such patents. These transfers may occur on their own or as parts of larger asset sales or purchases.

Patent assignment agreements provide both records of ownership and transfer and protect the rights of all parties. In the case of published patent applications, there is no provision to record assignment or ownership, except at the time of filing the application when the inventors declare the ownership of the invention by their “assignee”, in case of inventions filed on behalf of a non-individual legal entity.

In the published application, the “assignee” is referred to as “applicant” and appears on the face of the published application. It would be helpful if recordation of ownership is provided, especially in the period between application filing and its grant as a patent. Under the Assignment the Assignee may pay off sum, revenue sharing or other payment for the assignment of the Patent, as but the parties may agree.

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Withdrawal of Application

As the name suggest it is a procedure whereby the application is withdrawn. One reason for withdrawing an application may be to avoid its publication, if for instance it has been decided to keep the invention secret instead of applying for a patent Withdrawal of an application is the dangerous procedural step as the application becomes dead without possibility of revival An application for a patent may be withdrawn at any time before it is granted.

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Filing Notice of Appeal

A notice of appeal may be filed after any of the claims has been twice rejected in applications for patent, including reissue or in an ex parte reexam based on a request filed before November 29, 1999. The limitation of “twice rejected” does not have to be related to a particular application. For example, if any claim was rejected in a parent application, and the claim is again rejected in a continuing application, then applicant can choose to file an appeal in the continuing application, even if the claim was rejected only once in the continuing application.

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Preparing, Reviewing and Filing Pre-appeal Brief

A pre-appeal request can be made in an application that has claims that have been rejected twice. This stems from the requirement that a notice of appeal must be filed along with the pre-appeal request and pre-appeal brief. If the claims have not been rejected twice, a notice of appeal is not proper and the pre-appeal request should be denied. Additionally, the pre-appeal request can only be filed in applications where there are either:

Clear errors in the examiner’s rejections or
The examiner’s omissions of one or more essential claim elements that are needed to establish a prima facie rejection of the claims.

Thus, it is important to understand and appreciate the rejection of the examiner to determine whether at least one of the criteria has been satisfied. A Request for Pre-Appeal Brief Review must be filed with the Notice of Appeal, and can include up to five pages of arguments against the rejections.

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Preparing, Reviewing & Filing Appeal

Where the Controller is satisfied that the application or any specification or any other document filed in pursuance thereof does not comply with the requirements of this Act or of any rules made there under, the Controller may refuse the application or may require the application, specification or the other documents, as the case may be, to be amended to his satisfaction before he proceeds with the application and refuse the application on failure to do so. The Controller has the powers to refuse the application. Under such circumstances, an Appeal stands effective.

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Filing Renewal Fee

Once the patent application complies with the requirements of the relevant patent office, a patent will be granted further official fees, and in some regional patent systems, such as the European patent system, translations of the application into the official languages of the states in which protection is desired must be filed to validate the patent.

The date of issue effectively terminates prosecution of a specific application, after which continuing applications cannot be filed, and establishes the date upon which infringement may be charged.

In many countries the term of patent is determined solely by the filing date and mostly the term is for 20 years.

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Amendment of Application

The Controller has the power to order for application to be made proper by amendments, as required. In compliance, to the said order we undertake the preparing, reviewing and filing the amendments.

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Filing of Working of Patents Statements

In India it is obligatory on part of the patentee and licensee (whether exclusive or otherwise) to supply information regarding the extent to which the patented invention has been commercially worked in India. The controller also has the power to call for such information at anytime during the continuance of the patent. Failure to furnish such information creates a presumption of non-working and may attract a fine.

Additionally, intentional furnishing of the false information is an offence punishable with imprisonment for up to six months and or fine or both. Accordingly, working of patents statements are necessary to submit with the Indian Patent Office with respect to every calendar year within three years of the end of each year.

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Substantial Prosecution Work - Analyzing, Preparing and Responding to Official Actions

An “office action” is a document written by an examiner in a patent, in response to an application after the examiner has examined the application. The office action cites prior art and gives reasons why the examiner has allowed, or approved, the applicant’s claims, and/or rejected the claims. An office action may be “final” or “non-final”. Our work mainly includes reviewing notices from patent office, preparing responses including office action responses, responding to opposition, hearing etc. Patent prosecution is passing the litmus test of patentability, which occurs in the form of objections/rejections raised by the patent office.

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Preparing Comment and Analysis Letter for Indian office Action

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Preparing Power of Attorney

A power of attorney is an authorisation given by the applicant to the practitioner. It may be incorporated in the oath or declaration form when the power of attorney is given by inventors.

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Reviewing Application Prepared by Client (formal compliance and multiple dependency review only)

Our extremely qualified team shall guide and channelize the applications prepared by clients with review and finalisation.

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Patent Watch

After registered for a patent, companies need to know if and when their competitors file similar patent applications or if a pending patent application has been issued that is similar to their own intellectual property so that suitable action can be taken in time to avoid the prohibitive costs likely to be involved at a later stage. Our team monitor all the patent applications around the subject IP application by searching different patent databases, thus helping companies defend their rights to their intellectual property and ensure their viability.

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Technology Trend Search and Analysis

Technology watch includes patent watch but is more exhaustive. This involves the progress and development of various technologies. It also involves the study of adjacent areas in trying to identify substitute product that are likely to enter the same product space and even includes watching out for emerging trends. Not all the technologies are protected through patents hence this detailed study is helpful.

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Competitor Tracking and Analysis

Technology is a potent means of gaining Competitive Advantage. Whether we are developing or manufacturing a product or only developing a technology, we definitely would need to know about what the competitor is doing both on the technology and the market front. Such information would help not being surprised by a competitor and could even assist in carving out a “niche” for ourselves.

Competitor Watch is a service that helps you gain a Competitive Advantage and thereby helps save a lot of time, money, effort and even reputation.

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Infringement Analysis

Infringement is an act of making, using, selling, offering for sale or importing the invention which is called for in the claims of the patent by an unauthorized person. Generally, a claim of the patent is said to have “LITERALLY” infringed if every element of the claim is found in the accused device. Further, if a claim of the patent is NOT literally infringed but the accused device performs substantially the same function in substantially the same way to obtain the same result as that of the patented device, the claim is said to be infringed under DOCTRINE OF EQUIVALENCE.

Infringement analysis is a skill intensive study conducted to determine if a product/process infringes a patent. Infringement analysis helps patent holders determine if a product/process violates their patent rights. On the other hand, infringement analysis helps companies associated with a product/process determine if their product/process violates rights of a patent. Infringement analysis is a vital step in product/process design/redesign.

We understand the criticality of infringement search and analysis for companies, and address the same by adopting a detailed approach in providing infringement opinion. Our approach includes charting claims of a patent and determining scope of claims of patents using proven methodologies. Further, we use various doctrines established by courts to determine scope of claims and provide reliable opinion relating to patent infringement.

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Landscape Search

Patent Landscape reports describe the patent situation for a specific technology in a given country, region or on the global level. They usually start with a state-of-the-art search for the technology of interest in suitable patent databases. The results of the search are then analyzed to answer specific questions, e.g. to identify certain patterns of patenting activity (Who is doing what? What is filed where?) or certain patterns of innovation (innovation trends, diversity of solutions for a technical problem, collaborations).

Looking at large sets of patent data provides a better understanding of the “big picture” to help you take informed decisions. Patent landscapes can therefore be useful for policy discussions, strategic research planning or technology transfer. However, they provide only a snapshot of the patenting situation at a certain point in time.

In a wider sense, some patent landscapes reports may analyze the validity of patents by referring to legal status data, and thereby form a basis, e.g. for freedom to operate analysis.

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White Space Analysis (based on landscape)

White Space Analysis or Gap Analysis is undertaken after any of the preliminary landscaping has been done. It involves identifying the gaps or White Space and then deliberating about how the gap may be bridged i.e. identifying the “White Space”. White Space is a pre-requisite to identifying an area where an invention may be generated, or to design an appropriate strategy and identify a market that may be exploited or even in identifying a “niche” product. White Space is the gap where further R&D; can be done or competitive advantage gained or may also be done to block other competitors.

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Freedom to Operate Analysis (FTO)

Freedom to Operate Analysis (FTO) is usually used to mean determining whether a particular action, such as testing or commercialising a product, can be done without infringing valid intellectual property rights of others. It is the ability for your company to develop, make and market products without legal liabilities to third parties (e.g. other patent holders)

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Validity Search and Analysis

A validity search is a search that is determined by the selected claims of an issued patent. Validity searches might be required for a number of reasons. Sometimes, the validity of a patent is brought up during litigation. Oftentimes, a validity search is requested even when no lawsuit has been filed, to identify potential attackers and/or references that challenge the presumption of validity of a subject patent.

A validity search also helps with the valuation of a patent. If the searcher discovers closely related prior art that may cast doubt on the validity of the subject patent, the patent may be considered “weak”. On the other hand, if the search does not discover these other documents, the subject patent may be considered “strong”. This kind of investigation plays in important role when licensing agreements or other royalties are being negotiated between the subject patent holder and a 3rd party interested in practicing its claimed subject matter.

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Portfolio Review and Analysis

We offer qualitative analysis with traditional quantitative analytics to understand the strengths and weaknesses of your patent portfolio with respect to the competitive landscape. “Portfolio Analysis” is the use of electronic tools and people’s skills to review a patent portfolio and identify patents and technologies that have licensing potential, by mining.

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Patent Data Mining and Effective Portfolio Management

An organization’s patent portfolio forms a critical part of its IP holdings alongside its designs, trademarks, copyrights and trade secrets. Much of the value from a portfolio can only be realized through its effective management. A clear and effective IP strategy critically incorporates a clear and effective strategy for managing an organizations patent portfolio. But what are the key components of an effective patent portfolio management strategy? In broad terms, it comprises five components:

What do I have? (the IP audit)
What do I need? (the gap analysis)
Acquire what I need (the investment strategy)
Divest what I don’t need (the deployment strategy)
Ongoing maintenance and monitoring for effective development of the IP strategy over time

Our proprietary web-based patent management and monitoring software, offers a flexible and easy to use interface that makes internal and competitive patent portfolio management and monitoring intuitive, affordable and simple to maintain.

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Trademark Search

Trademark Search is a thorough search of various trade-mark databases, business directories, telephone directories and the like, to verify that your trade-mark will not be mistaken for another. It is a form of research that assists in determining whether your mark fulfils the criteria of the Trade-marks Act

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Trademark Application preparation & filing

A trademark is a sign which is capable of serving as an indicator of commercial origin. A good trademark, or logo, makes your particular product or service stand out. At a time when the range of goods and services is ever increasing, a trademark is an ever more important part of a company. A trademark is what will represent you and your reputation.

Trademarks offer the various protection rights. There are certain requirements which your trademark must meet, in order to be able to protect it. It must, for example, be unique and be distinguishable from others. Before you apply for trademark protection, you should find out if it meets the requirements that have been set.

The Madrid Protocol is a treaty that enables you to file an international trade mark application.

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Responding to Examination Report, Preparing Affidavits, Exhibits & Processing Application (till registration)

In India, application for a trademark is made at one of the five offices of the Trade Marks Registry located at Mumbai, Delhi, Kolkata, Chennai and Ahmedabad. This will depend on the place where you reside or have your main place of business. You will need to do a pre-filing search before filing your trademark.

Once you register your trademark, you will be issued an official receipt with a TM number. Then an examination report is filed within three months from application. You will get a response to your registration either by an affidavit, a hearing or by an interview. Your application will be looked at to ascertain if it does not conflict with existing registered or pending trademarks.

After the objections raised by the registrar are overcome, your application is then published in the Indian Trade Marks Journal, with an endorsement stating either that it has been accepted or that it is being published before acceptance. Once it is published, any person has three months (which can be extended to a month at the registrar’s discretion) to file a notice of opposition to registration. Acceptance or refusal of your trademark application will be considered once the opposition proceedings have been completed. Based on this, an examination report is issued.

The term of registration of a trademark is 10 years. This may be renewed for a further period of 10 years on payment of the renewal fees. However, non-usage of a registered trademark for a continuous period of five years is a valid ground for cancellation of registration of such trademark at the behest of any aggrieved party.

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Sale, Transfer and Licensing

In various jurisdictions a trademark may be sold with or without the underlying goodwill which subsists in the business associated with the mark. However, this is not the case in the United States, where the courts have held that this would “be a fraud upon the public”. In the U.S., trademark registration can therefore only be sold and assigned if accompanied by the sale of an underlying asset. Examples of assets whose sale would ordinarily support the assignment of a mark include the sale of the machinery used to produce the goods that bear the mark, or the sale of the corporation (or subsidiary) that produces the trademarked goods. It means getting a permit from the trademark owner ( the licensor) to a third party, in order to commercial use the trademark legally. Which is a contract form between the two has all the policy and content scope.

The essential provisions to a trademark license identify the trademark owner, the third party (licensee), in addition to both policy and the goods or services agreed to be licensed. Most jurisdictions provide for the use of trademarks to be licensed to third parties. The licensor (usually the trademark owner) must monitor the quality of the goods being produced by the licensee to avoid the risk of trademark being deemed abandoned by the courts. A trademark license should therefore include appropriate provisions dealing with quality control, whereby the licensee provides warranties as to quality and the licensor has rights to inspection and monitoring.

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Trademark Portfolio Management and Maintenance

A trademark portfolio management and trademark maintenance services to manage a client”s national and international trademark portfolio, wherein the firm act as a single point of contact for a client having international trademark portfolio for management and maintenance of the portfolio. Our proprietary portfolio management software, having trademark intelligence enables us to offer high quality and user friendly portfolio management services. Our portfolio management services include:

Single platform to access a client’s international trademark portfolio
Single point of contact for dealing with national and international trade marks
Best prices for trademark filing, trademark prosecution, trademark registration and trademark maintenance in all countries without compromising on quality
Complete file history of each trademark and document retrieval
Time line tracking and automated alert mechanism to meet deadlines
Latest trademark status update
Renewal fee payment
Co-ordination with foreign trademark attorneys

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Trademark Opposition

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Trademark Risk Analysis

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Trademark Analysis Reports

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Preparation, Filing and Registration

Copyright is the exclusive and assignable legal right, given to the originator for a fixed number of years, to print, publish, perform, film, or record literary, artistic, or musical material.

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License Drafting

Copyright may also be licensed. Some jurisdictions may provide that certain classes of copyrighted works be made available under a prescribed statutory license (e.g. musical works in the United States used for radio broadcast or performance). This is also called a compulsory license, because under this scheme, anyone who wishes to copy a covered work does not need the permission of the copyright holder, but instead merely files the proper notice and pays a set fee established by statute (or by an agency decision under statutory guidance) for every copy made.

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Copyright infringement

Copyright infringement is the use of works under copyright, infringing the copyright holder’s exclusive rights, such as the right to reproduce, distribute, display or perform the copyrighted work, or to make derivative works, without permission from the copyright holder, which is typically a publisher or other business representing or assigned by the work’s creator.