The launch of a Startup India initiative was announced by the Hon’ble Prime Minister Shri. Narendra Modi on 15th August 2015. Mainly aiming to promote and encourage young entrepreneurs of our country and as an initiative to transform India. The startup India initiative launched on 16th January 2016 focuses on funding and establishing a support system to encourage innovation and entrepreneurship. More than 45% of the startups recognized by the Department of Industrial Policy and Promotion have women entrepreneurs. The revolution of Make in India has transformed India into a global manufacturing center in sectors such as automobiles, chemicals, textiles, pharmaceuticals, infrastructure, tourism, Information Technology and so on.

http://www.origiin.com/2019/02/13/startup-india-government-public-sector/

 

A mark capable of being represented graphically and it can also distinguish one goods and services from those of other. Trademarks could be a word, any symbol, design, color, sound or smell, and are a legal concept.“Goodwill” also refers to value, which is attached to a trademark. Trademarks which has higher quality products tend to enjoy more goodwill because of their potential market base. The difficulty lies in determining the value of goodwill. Although many companies has developed their own method for determining the value attached to their brands.

http://www.origiin.com/2019/02/18/value-of-goodwill-in-trademarks/

 

Industrial design is the use of a combination of applied art and applied science to improve the aesthetics, ergonomics, and usability of a product, but it may also be used to improve the product’s marketability and production.

http://www.origiin.com/design/

As you know, a good contract is of vital importance for any business. We have skilled team of advocates to draft and review a wide variety of legal documents.

http://www.origiin.com/contract-law/

Market research is essential for any organization to understand the kind of work competitor are doing, their patent portfolios, product details and pricing.

 

http://www.origiin.com/market-research/

The inventor can hire an attorney so that he can try to get the registration done in his best possible way from the Indian Patent Office.

Prerequisite for foreign filing– An inventor has be a resident of India.

Under following circumstanced foreign Filing permission can be availed:

1. When the inventor does not wish to make a prior patent filing in India and seeks to directly file patent application in foreign countries.
2. When the inventor has filed a patent application in India and before the expiry of six weeks seeks to file a foreign application.
3. When no direction is given under sub-section (1) of section 35 concerning the application in India, or when all such direction have been revoked (i.e., the application is not relevant to defence purpose or atomic energy, and secrecy directions are not imposed).

• Foreign filing license is not required after the expiry of six weeks from the date of filing the patent application in India.

When all these conditions are found satisfactory the inventor can apply for a foreign filing.

The application for seeking permission for a patent filing outside India has to be made in form 25.

Within 21 days of such request made at the patent office, the controller disposes the request, unless the invention relates to a defence purpose and in such cases where secrecy directions would be imposed.

Documents to be filed to obtain a foreign filing Licence:

• Form 25.
• Invention Disclosure Form.
• Name and address of the inventor and or assignee.
• Name of the countries, where the application would be filed.
• Power of attorney forms.
• Filing without seeking Prior permission is a punishable offence, followed by imprisonment or fine or both, also the patent application gets abandoned and if patent granted can be revoked.

Timeline for patent publication in India

Once the patent application is drafted and filed at the Indian Patent Office (IPO), it takes 18 months from the filing date/ priority date for the application to be published in the patent gazette.

However, one is not required to wait for 18 months to proceed with commercialization of the invention. The task of commercialization can be taken up once the patent application is filed at the Indian Patent Office.

Important considerations before filing for a patent

1. Prior art search: A prior art search or patentability search is one of the crucial steps to be carried out before proceeding with drafting and filing of the patent application. It provides a structure to an idea and helps to identify some of the most relevant patents/applications which enables an inventor to assess the value of his/her invention.
2. Confidentiality: An inventor is advised to maintain a high level of confidentiality before his patent application is filed. Further, inventors are advised to execute an NDA with a patent professional prior to disclosing any details with respect to their invention.
3. Documentation of the invention: It is extremely important for an inventor to document every detail of the invention so as to enable the patent professional to effectively capture all the novel elements of the invention.
4. Making the right decision: An inventor can choose to proceed with one of the following tasks depending on the completeness of his invention:

1. 1. Provisional application: If an inventor wishes to protect his invention at a nascent/ pre-mature stage, filing of a provisional application is highly advisable as the inventor can continue with his research activities while enjoying protection for his basic idea/concept.
   2. Complete application: If an inventor has reached the proto-type stage, filing a complete application will be advisable.

Note: A complete application must be filed within 12 months of filing a provisional application.

Fee

The Official fee for patent filing in India can be referred by clicking the following link:

http://www.ipindia.nic.in/form-and-fees.htm

Steps

The process of patent filing in India includes the following steps:

1. Drafting and filing of a patent application: A provisional/complete application may be filed depending on the completeness of an invention. If an inventor files for a provisional application, he must file for a complete application within 12 months from the priority date obtained while filing the provisional application.
2. Patent Publication: The patent application will be published in the patent gazette after 18 months from the priority date/ filing date.
3. Pre-grant opposition: Once a patent application is published, it is open to opposition based on various criteria such as lack of novelty, inventive step or industrial applicability which together form the criteria of patentability.
4. Examination & issuance of First statement of Objections: After an application is published, the patent office will examine the invention and raise objections in case at least one of the three criteria of patentability are not satisfied and/or if the invention falls under the purview of invention not patentable provided under Section 3 and 4 of the Indian Patents Act, 1970. Patent agents prepare responses to these objections and submit it to the Controller General of Patents.
5. Patent Grant: Once the Controller General is convinced with the responses filed for the First statement of Objections, the applicant will be granted the patent. The applicant is required to pay an annual maintenance fee to keep the patent active.
6. Post-grant opposition: Once a granted patent is published, it is open to opposition based on various criteria such as lack of novelty, inventive step or industrial applicability.
7. Patent revocation: After 12 months from the date of grant, a granted patent can be invalidated by means of revocation under Section 64 of the Indian Patents Act 1970.

United States Patent and Trademark Office (USPTO) often is one of the favorite or lucrative destination for the applicants for filing a patent application for various reasons, the prime reason being that usually the target as well as potential market of the invented product or process is US. Another major reason for interest in filing in US is that US patent laws permit broader spectrum of software patents compared to Indian Patent Law which says that software per se is not patentable till it has technical application. For all these reasons, at the time of filing for a patent, the biggest dilemma an inventor has is where to file for a patent first, in India or US?

In this article, we will explore the advantages of filing in India first and consequences of filing in US first if the inventor is a resident of India.

Filing in India first makes sense (U/S 39)

Before taking a decision on where to file first, it is essential to understand what does Indian Patent Law says about foreign filing. The issue is sensitive as well as critical and lack of expert legal advice on the same may have fatal consequences.

Accordingly to Section 39 (Residents not to apply for patents outside India without prior permission) of the Patents Act 1970, a person who is resident in India shall not make application for grant of patent outside India without:

1. Either taking Foreign Filing Permission (FFP) from the Controller of patents. This permission is usually granted by the Controller within 21 days and is required not only for foreign filing but also for filing a PCT application; or
2. Filing for a patent for the same invention in India and waiting for 6 weeks.

Who is “Resident of India”?

The term “Resident of India” has not been defined in the Patents Act, 1970 but according to Income Tax Act, an individual can be termed as a ‘Resident of India’ if he stays for the prescribed period during a fiscal year i.e. 1st April to 31st March, either for:

1. 182 days or more; or
2. Has been in India in aggregate for 365 days or more in the previous four years.

Any person who does not satisfy these norms is termed as a ‘Non-Resident’. A resident individual is considered to be ‘ordinarily resident’ in any fiscal year if he has been resident in India for nine out of the previous ten years and, in addition, has been in India for a total of 730 days or more in the previous seven years. Residents who do not satisfy these conditions are called individuals ‘not ordinarily resident’.

Rational behind filing in India first

Main rational behind having Section 39 is to safeguard national defense and security. If the invention is relevant for defense purpose or atomic energy, the Controller shall not grant permission for foreign filing without the prior consent of the Central Government. Such application may be imposed Secrecy Directions and the Controller may give direction for prohibiting or restricting the publication of such application if it appears to him that the invention in question falls in one of a classes notified to him by Central Government as relevant for defense purposes or the Controller himself considers it to be so. However, this section shall not apply in relation to an invention for which an application for protection has first been filed in a country outside India by a person resident outside India.

Do you lose anything by filing in India first?

It is a myth that by filing in India first and US later, one loses on the date and the date of filing in US gets delayed. The fact is that even if you file for a patent in India first, you can file the same application in US (as convention application) immediately after expiry of 6 weeks from the date of Indian filing. At the time of filing in US, you can claim priority date from your Indian filing as both India and US are convention countries. Effectively, this means that even though you file in India first and US later, the same date of priority can be maintained in USPTO as well as . Infact when priority is claimed from Indian filing, the applicant has to submit in USPTO, the priority document obtained from the Indian Patent Office.

Therefore, it actually doesn’t matter where you filed first, but yes, it certainly is a better and a safe choice to either file for a patent in India first or take permission from the Controller for foreign filing.

Consequences of violating section 39

If a person makes or causes to be made an application for the grant of a patent in contravention of section 39, he shall be punishable with imprisonment for a term which may extend to two years, or with fine, or with both. Hence, it is important to either file application in India first or take FFP from the Controller of Patents.

Conclusion

In the instances where the applicant is a resident of India, it is important to consider filing for a patent in India or taking permission for foreign filing from the Controller, before filing for a patent in foreign country ot PCT the the reason that violation of this provision can lead to fatal consequences.