Intellectual Property Management (IPM)

Introduction to Intellectual Property Management (IPM)

Knowledge matters and so does its protection. NIF recognises the true value of intellectual property rights in the spawning of grassroots innovations, traditional knowledge practices by empowering the knowledge rich, economically poor grassroots innovators and traditional knowledge holders.

To enable the progress of this mission, the IP Management division receives innovations from various sectors namely engineering, human health, veterinary health and agriculture. The innovations are submitted by both, grassroots innovators and student innovators (from IGNITE program). With regards to Engineering, innovations from broad engineering sectors are received and processed for Intellectual Property Rights (IPR).

The team of Intellectual Property Management (IPM) is actively engaged in conducting prior art searches, drafting & filing of patent applications, coordinating with various IP firms/attorneys globally for mobilizing pro bono or paid support for grassroots innovators in filing patents, trademarks and other means of IP protection on their behalf. From time to time, IPM team also provides legal assistance to the innovators in negotiating and drafting licensing arrangements, providing legal assistance to the innovators in dealing with issues of infringement of their IP rights, screening of patents & patent applications based on Indian traditional knowledge and grassroots innovations, so as to oppose the improper applications/ granted patents, particularly those dealing with practices entered in the National Patent Register.

IPM team also prepares and submits applications to National Biodiversity Authority, India for obtaining clearance for applying for patents of technologies and innovations employing bio resources (herbs and other plant material).
 
NIF has achieved considerable progress in these objectives. Till date over 800 patent applications have been filed in India by NIF and its associate organizations and out of these, 40 patents have been granted in India. NIF had also filed 8 patent applications at United States Patent and Trademark Office (USPTO), out of which 5 have already been granted. In the same time period NIF has filed up to 21 Design registrations for innovations of the grassroots and student innovators. IPM team have also filed 10 trade mark applications and in addition to these, NIF also applied for registration of 41 farmer's plant varieties under PPV&FRA scheme..

Procedure for filing of Patent Application in India

To file a patent application, a set of forms (Form-1, Form-2, Form-3 and Form-5) has to be submitted to the patent office and it should be filed for innovative R&D work only.

The Patent Office provides the facility to file a Patent Application online from the native place of the applicant or agent of the applicant through e-filing at the below link:

http://ipindiaonline.gov.in/epatentfiling/goForLogin/doLogin

Alternatively, one can file patent application offline in hard copies to the patent offices located at Delhi, Kolkata, Mumbai and Chennai. But the patent office charges 10% additional fee if the applications are filed offline.

The patent application has to be filed in the appropriate office based on your/your company location. The table below provides the addresses of the patent offices in India and their respective territorial jurisdiction.

Office

Territorial Jurisdiction

Mumbai

The States of Maharashtra, Gujarat, Madhya Pradesh, Goa and Chhattisgarh and the Union Territories of Daman and Diu & Dadra and Nagar Haveli

Chennai

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

New Delhi

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

Kolkata

The rest of India.

The patent application has to be written in specified manner before filing the patent application in Indian patent office. In case your invention is maturing stage, you have the option to file the provisional patent application, and after that you can file the complete patent specification within 12 months from the date of filing of provisional application.

After filing your patent application, the patent application is published after 18 months from the date of first filing. If you would like to expedite your patent protection, place a request for early publication in Form-9 and the application will be ordinarily published within a month from the date of request.

Next step would be filing a request for examination in form-18 and the controller assigns the patent application to a patent examiner to scrutinize your invention to verify the invention matter is patentable or not. During the patent prosecution, the examiner submits the examination report, in which he may cite the relevant prior art/ patent, which might negate the claimed invention. The inventor has to analyze the report to respond the examination report along with providing proper reasoning about his invention for patentable. After meeting the objection raised by the examiner, the application would be placed order for grant and the grant will be notified in Patent journal.

An overview of each of the aforementioned Forms is as below.

Form 1-Application for Grant of Patent :
As the name suggests, this form is an application for grant of patent in India. In this form, one has to furnish information, such as, name and address of the inventor(s), name and address of the applicant(s), information corresponding to prior patent applications relating to the current invention, which any authorized entity has filed, and some declarations, among other information.

Form 2-Provisional/Complete Specification
Form 2 is used to furnish one patent specification. The patent specification can be provisional or a complete patent specification depending of the type of patent application (provisional or complete) one is filing. Additionally, the number of sheets and claims (extra fee for more than 30 sheets and more than 10 claims) is to be counted and the appropriate fee calculated. While counting the sheets, even the drawing sheets will have to be taken into account.

Form 3-Statement and Undertaking Under Section 8
Form 3 is used to furnish information/actions relating to patent applications filed in other countries for the current invention. Further, using form 3 one undertakes that h/she will be keeping the patent office informed in writing the details regarding corresponding applications for patents filed outside India.

Form 5-Declaration as to Inventorship
This form is used to declare the inventors of the subject matter sought to be protected using the current patent application.

Form 9-Request for Publication
The patent specification will be published by the patent office after 18 months from the priority date (filing of the first patent application for the current subject matter). But by filing this form, one can generally have the patent specification published within 1 month from filing this form. Note that the patent rights start from the date of publication of the patent application (enforceable only after the grant of patent).

Form 18-Request for Examination of Application for Patent
This form can be filed within 48 months from the priority date. The patent office will not consider a patent application for examination unless this form is filed. Hence, if one wishes to expedite the patenting process, filing of form 9 and 18 at an early stage is advised.
In the table below, the list of forms that have to be submitted and their respective fees is provided. Please note that, the fee mentioned is for E-filing only. The patent office charges an additional fee of 10% over the fee for applications filed offline.

Form

Title

Patent Office Fee (INR) for E-Filing only

Applicant-Natural person

Applicant-other than natural person

Small Entity

Others except small entity

1

Application for Grant of Patent

1600

4000

8000

2

Provisional/Complete Specification

No Fees*

No Fees

No Fees

3

Statement and Undertaking Under Section 8

No Fees

No Fees

No Fees

5

Declaration as to Inventorship

No Fees

No Fees

No Fees

9

Request for Publication

2500

6250

12500

18

Request for Examination of Application for Patent

4000

10000

20000

* - A fee of 160/400/800/sheet, based on the type of applicant, is applicable for each sheet exceeding 30 sheets in a patent specification. Further, a fee of INR 320/800/1600/claim, based on the type of applicant, is applicable for each claim exceeding 10 claims in the patent specification.

For more details, please visit http://ipindia.nic.in/ipr/patent/patents.htm

 

US Patenting Process

A US patent application is filed at United States Patent and Trademark Office (USPTO), an agency of the US Department of Commerce. Its role is to grant patents and registering trademarks for the protection of inventions. A patent can be a utility patent, design patent or a plant patent. A utility patent may be granted to anyone who invents or discovers new and useful process, machine, article of manufacture or composition of matter, or any new and useful improvement thereof. A design patent may be granted to anyone who invents a new, original and ornamental design for an article of manufacture while a plant patents may be granted to anyone who invents or discovers, and asexually reproduces any distinct and new variety of plant.

The patent application in US can be filed as US non-provisional patent one or through Patent Cooperation Treaty (PCT) as US national phase application. If the applicant wishes to file provisional application to secure priority, he/she has to file a non-provisional application within 12 months from the date of priority.

After filing a non-provisional patent application, the application for patent is published immediately after the expiration of 18 months from the earliest filing date. An application can be published before 18 months of request (by the applicant) for early publication, along with a publication fee.

The Office of Initial Patent Examination (OIPE) conducts the pre-exam process and checks for the requirements. If the application is not complete, the OIPE shall request the applicant to complete all formalities. Once the application is complete, the examiner determines whether the application relates to a single invention or to multiple ones. If there are more than one inventions, it becomes necessary to elect one invention and move forward. For the remaining, the applicant may file divisional applications. The examiner then reviews the application for patentability. If the application fulfils all the criteria of patentability, the USPTO issues a notice of allowance and notice for the payment of issuance fee. After payment of issuance fee, the USPTO issues the patent.

If the application does not fulfill the patentability criteria and examiner has raised any objection, the First Office Action (FOA) or notice of non-final rejection is issued. The applicant has to file a response of FOA within three months from the date of mailing of the FOA. After examining the response, and if found satisfactory, a notice of allowance is issued. If the objections remain as such or if new objections arise due to amendments, the final rejection is issued. After final rejection, the applicant has two options: a) He may file response of final rejection, or b) He may file notice of appeal to PTAB.

After examining the response, the patent is issued or the examiner may issue the advisory action. The applicant needs to submit the response of advisory action within three months from the notice of final rejection. The applicant may accept examiner's decision or may file a Request of Continued Examination (RCE), or he may file a notice of appeal.

After the issuance of patent in the US, the maintenance fee needs to be paid at three and a half, seven-and- a-half and eleven-and- a-half years to maintain a patent enforce.

More details regarding the patent process at the USPTO may be found at the following links:

http://www.uspto.gov/patent

http://www.uspto.gov/patent/laws-and-regulations/leahy-smith-america-invents-act-implementation

http://www.uspto.gov/web/offices/com/iip/pdf/brochure_05.pdf

http://www.uspto.gov/sites/default/files/inventors/Checklist_for_Filing_a_Nonprovisional_Utility.pdf

Patent Cooperation Treaty (PCT) is an international patent law treaty, concluded in 1970 with more than 145 contracting states or countries. PCT provides a unified procedure for filing patent applications for an invention simultaneously in a large number of countries by filing a single "international" patent application instead of filing several separate national or regional patent applications. The granting of patents remains under control of the national or regional patent offices in what is called the "national phase".

PCT filing procedure: One can file an application under the PCT directly or within the 12-month period provided from the filing date of first application, valid in all contracting states of the PCT and therefore, simpler, easier and more cost-effective than both, direct or Parisroute filings.

Stages of PCT filing procedure:

Filing: One can file an international application with a national or regional patent office or WIPO, complying with the PCT formality requirements.

International search: International Searching Authority (ISA) (one of the world's major patent offices) identifies the published patent documents and technical literature ("prior art") which may have an influence on whether the invention is patentable, and establishes a written opinion on invention's potential patentability.

International publication: As soon as possible after the expiration of 18 months from the earliest filing date, the content of the international application is disclosed to the world.

Supplementary international search (optional): On request, a second ISA identifies published documents which may not have been found by the first ISA which carried out the main search because of the diversity of prior art in different languages and different technical fields.

International preliminary examination (optional): On request, one of the ISAs carries out an additional patentability analysis, usually on an amended version of your application.

National phase: After the end of the PCT procedure, usually at 30 or 31 months from the earliest filing date of initial application, from which the priority is claimed, one can start to pursue the grant of your patents directly before the national (or regional) patent offices of the countries in which one chooses to obtain the patent right.

Other than assisting applicants in seeking patent protection internationally for their inventions, PCT helps patent offices with their patent granting decisions, and facilitates public access to a wealth of technical information relating to those inventions.

Introduction

"Designs" or more commonly known as "industrial designs" refers to the ornamental or formal appearance of a product resulting from a creative activity and design right refers to a novel or original design that is accorded to the owner of a valid registered design. Industrial designs is a type of intellectual property that has gained importance in the recent years. India has introduced a national legislation to provide for the minimal standards, in agreement with the TRIPS agreement for protection of industrial designs. The main objective of the design law is to protect design elements and promote innovation in industrial designs. The currently-followed regulations on industrial designs in India is based on the New Designs Act introduced in 2000 and is in line with the international trends in design regulation.

More details of the New Designs Act can be found at:
http://ipindia.nic.in/ipr/design/design_act.PDF

Details of the Design Rules can be found at:
http://ipindia.nic.in/ipr/design/des_rule.PDF

The Amendments of the Rules can be found at:
http://dipp.nic.in/English/acts_rules/Rules/design_Amendment_Rules_2014_01January2015.pdf

A list of forms which can be used for filing designs in India can be downloaded at:
http://ipindia.nic.in/ipr/design/designform.htm

A PDF brochure explaining the steps involved in design registration can be downloaded at:
http://ipindia.nic.in/ipr/design/tstep_design.PDF

While the Indian patent law clearly states that plants and animals in whole or any part thereof cannot be patented, however there is a provision for registering plant varieties generated by farmers through traditional and conventional farming practices. It was in compliance to "Trade-Related Aspects of Intellectual Property Rights" (TRIPS) Agreement that India established in 2001. The Protection of Plant Varieties and Farmers Rights (PPV&FR) Authority, under the Protection of Plant Varieties and Farmers Rights Act, 2001 became operational since 11th November, 2005 with the main goal dedicated to the establishment of an effective system for:

  • Protection of plant varieties
  • Protection of the rights of farmers and plant breeders
  • Encourage the development of new varieties of plants and
  • Recognising as well as providing protection of the rights of farmers in respect to their contribution in conserving, improving and making the available plant genetic resources for the development of new plant varieties.

It has been helpful in accelerating the agricultural development in the country by stimulating investment for research and development, both in public and private sector. It also has facilitated the growth of seed industry to ensure the availability of quality seeds and planting material to the farmers.

Any of the following person can make an application to the PPV & FRA for the registration of a variety: -

  • Any person claiming to be a breeder of a variety.
  • Any person being the assignee of the breeder of a variety.
  • Any farmer or group of farmers or community of farmers claiming to be the breeder of a variety.
  • Any University or publicly funded agricultural institution claiming to be breeder of a variety.

PPV & FR Authority maintains a National Register of Plant Varieties. The certificate of Registration once issued for trees & vines is valid for 9 years and 6 years in case of other crops. The total validity period of variety for trees & vines should not exceed 18 years and 15 years for extant varieties notified under Seeds Act and for other crops.

NIF- India helps the grassroots farmers who have developed or bred a new variety for registration variety under PPV & FR Authority 2001 so that these farmers shall be deemed to be entitled to save, use, sow, re-sow, exchange, share or sell their farm produce including seed of a variety protected under this Act. During this process NIF-India guides and helps the farmers in the filing and registration process by collecting the data required according to DUS guideline and filing other related documents.

The achievements of NIF in terms of securing appropriate IP protection for innovators and knowledgeholders would not have been possible without support from various agencies. Several of the premier intellectual property law firms located in India have been providing pro-bono services to NIF in filing patents, designs and trademarks and also handling other official deliberations at the Patent Office on behalf of the innovators scouted by NIF team.

Some of the reputed IP firms offering their services to our innovators include:

Anand and Anand (http://www.anandandanand.com/)

Khurana and Khurana (http://www.khuranaandkhurana.com/)

Chadha and Chadha (http://www.iprattorneys.com/)

SSRana& Co (http://www.ssrana.in/)

RNA IP Attorneys (http://rnaip.com/)

Legasolv

Closer2Patents (now merged with Khurana and Khurana)

SiebenIP (http://www.siebenip.com/)

Y J Trivedi (http://www.yjtrivedi.com/)

LallLahiri and Salhotra (http://www.lls.in/)

Surana and Surana (http://www.lawindia.com/)

Altacit Global (http://www.altacit.com/)

In the past the following IP firms have offered their professional services on nominal professional charges:

DP Ahuja & Co (http://www.dpahuja.com/Welcome.aspx)

Subramaniam and Nataraj Associates (http://www.sna-ip.com/)

LS Davar& Co (http://lsdavar.org.in/)

NIF has also been able to file several patent applications in United States of America with the help of SRISTI through the law firm K&L Gates, Boston (formerly THT Boston)
(http://www.klgates.com/).

The members from these IP firms have also help disseminate information regarding several innovation-related programs of NIF. They have also actively supported our cause by demonstrating their presence during Festival of Innovation (FOIN) and IGNITE Award events organised by NIF. We sincerely hope that more firms will come forward to support the cause of recognising grassroots innovators and traditional knowledgeholders and help NIF in protecting the innovations on behalf of innovators by providing their IP services on a pro bono basis.

Patenting Procedure in India
www.ipindia.nic.in
http://www.ipindia.nic.in/ipr/patent/patents.htm
 

Design registration in India
http://ipindia.nic.in/ipr/design/designs.htm


Trademark registration in India
http://ipindia.nic.in/tmr_new/default.htm


PCT procedure
www.wipo.int
http://www.wipo.int/portal/en/index.html
http://www.wipo.int/pct/en/
http://www.wipo.int/pct/en/appguide/
http://www.wipo.int/pct/en/calculator/pct-calculator.html
http://www.wipo.int/pct/en/pct_contracting_states.html

US patenting procedure
http://www.uspto.gov/patent
http://www.uspto.gov/patent/laws-and-regulations/leahy-smith-america-invents-act-implementation
http://www.uspto.gov/web/offices/com/iip/pdf/brochure_05.pdf
http://www.uspto.gov/sites/default/files/inventors/Checklist_for_Filing_a_Nonprovisional_Utility.pdf

International trademark system
http://www.wipo.int/trademarks/en/
http://www.wipo.int/madrid/en/


International Design registration
http://www.wipo.int/hague/en/

Protection of Plant Varities and Farmers Rights Authority, India
http://plantauthority.gov.in/

A pdf copy of general FAQS related to PPV-FRA
http://plantauthority.gov.in/pdf/FAQ_New.pdf

List of important contacts at PPV-FRA Office
http://plantauthority.gov.in/pdf/FAQ_New.pdfplantauthority.gov.in/contact-us.htm

National Biodiversity Authority, website
http://nbaindia.org/

 

Frequently Asked Questions on Intellectual Property Rights and contribution of NIF towards the protection of IP of grassroots innovators
1. What is intellectual property?

The term intellectual property refers to creations or products of mind or intellect and it includes inventions, literary and artistic works, plant varieties, symbols, names, images, designs, trade secrets etc. The rights conferred on such intellectual property are known as intellectual property rights.

2. What all types of intellectual property rights are protected in India?

In India Patents, Copyright, Trade Marks, Industrial designs, Geographical Indications, Topographical designs of integrated circuits, Trade Secrets and Plant Varieties and Farmers Rights are protected

3. What is a patent?

A Patent is an intellectual property right relating to inventions. It is the grant of an exclusive right to the Patentee by the Government, for a limited time period, in exchange of the disclosure of his invention, for excluding others from making, using, selling, importing the patented product or process producing that product for those purposes.

4. What is prior art search?

'Prior art' comprises all matters available to the public before the date of an innovation, through written or oral description or by use or by any other method. Any search done for identifying such prior art is known as prior art search.

5. As an innovator, do I need to do a prior art search?

Definitely yes. A prior search can help you prevent reinventing the wheel. A good prior art search will help you identify the real state of technology in the area of your innovation and you will be able to divert your attention to unattended areas or areas that require further refinement. It will also act as a navigator to identify the real scope of value addition, product development, protection of intellectual property rights, business development, diffusion through commercial or non-commercial channels of that innovation.

6. If I am granted a patent for my innovation in India, will I be able to get protection in other countries also?

No. Patent rights are territorial in nature. A patent granted in India will protect that innovation only in the territory of India.Similarly a US patent will protect the innovation only in US. If we want our innovation to get protected in US, we have to apply for US patent separately

7. Can I patent an idea?

Sorry! Ideas are not patentable. Once the idea of the nature of your innovation turns to a definite shape, you can file a provisional patent application.

8. What is a trade mark?

A trade mark is a visual symbol, which may be a word, signature, name, device, label, numerals or combination of colours on goods or services or other articles of commerce, which can help in distinguishing goods or services originating from one source from that of other sources.

9. What is copyright?

Copyright is a bundle of rights granted to the creators of literary, dramatic, musical and artistic works and producers of cinematograph films and sound recordings and these rights include, rights of reproduction, communication to the public, adaptation and translation of the work.

10. Can I protect a plant variety developed by me?

Yes. India has recently enacted Protection of Plant Varieties and Farmers Rights Act to afford protection to plant varieties and also to farmer's rights.

11. What all plant varieties are protected in India at present?

The 12 crop species notified by the PPVFR authority so far are Black gram, Bread wheat, Chickpea, Field pea, Green gram, Kidney bean, Lentil, Maize, Pearl millet, Pigeon pea, Rice, Sorghum

12. Can I protect a unique design developed by me?

Yes, designs are protected under the Designs Act 2000. 'Design' according to this legislation includes features of shape, configuration, pattern or ornamentation or composition of lines or colour or combination thereof, applied to any article, whether 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 please note that it does not include any mode or principle or construction or anything which is in essence a mere mechanical device. It also does not include any trade mark

13. What are Geographical Indications?

A geographical indication is a sign to be used on goods having a specific geographical origin and whose qualities or reputation is attributable to its place of origin. For example, there are many agricultural products having unique qualities deriving from their place of production, under the influence of specific local factors like weather, soil etc. Some of the good examples in this regard are Darjeeling tea, Patola silk, Kanjeepuram silk, etc.

14. Is there any protection available for lay out designs of integrated circuits?

Semiconductor Integrated Circuits Layout Designs Act 2000 is intended to afford protection for the lay out designs of integrated circuits in India.

15. What are trade secrets? Is that mode of protection suitable for me as an innovator?

The term 'trade secret' refers to any information developed by spending time and resources, which is unknown to competitors and the possession of which gives an advantage over such competition. One of the often quoted examples is the formula for the manufacture of Coca-Cola. The main advantage of trade secrets protection is that you don't have to reveal the technical information to the public. But the same act as the major limitation for this type of protection, as this form of protection is suitable only for those innovations wherein you can hide the technical details.

16. What can NIF do for protecting my intellectual property?

NIF is committed to the protection of the valuable intellectual property of grassroots innovators. Through the Prior Informed Consent (PIC) Form sent to you, we seek your view on the protection of intellectual property rights over your invention. If you express your interest in having an intellectual property protection over your innovation, our IP management team will assist you in filing the application. The expenses for filing the application will be borne by NIF and the application will be in your name.

17. Who all are eligible for getting help from NIF in the matter of protection of their intellectual property?

All grassroots innovators who have sent entries to our award competitions are entitled to seek intellectual property protection for their inventions. However, the final decision to go ahead with intellectual property protection is taken by NIF and the same is determined on the basis of analysis of the novelty of the invention and also the commercial as well as social potential of the invention.

18. In whose name NIF files patent applications? In my name or in the name of NIF?

NIF files the patent applications in your name. We are just the facilitators in this process.

19. Do I need to pay money to NIF for filing application in my name?

Absolutely NOT. As an organisation established with the primary objective of promoting and scaling up of grassroots innovations, NIF files the patent application for the grassroots innovators free of charge.

20. What is PIC Form and where can I get the PIC Form from?

The term 'PIC' stands for Prior Informed Consent. This form, evolved through years, is more or less like a questionnaire through which you express your decisions on many matters like Value Addition, IPR protection and Commercialisation of your innovation. Our team will help you in understanding the implications of every clause in PIC form.

21. Will NIF go for protecting my intellectual property, without getting a signed PIC from me? No. NIF will proceed for IPR protection only after receiving your consent through Prior Informed Consent Form. 22. Do I need to send an entry for the NIF award competitions to be eligible for getting intellectual property protection through NIF?

Yes you have to.

23. What all things should I disclose to NIF for becoming eligible for getting intellectual property protection through NIF?

The first and foremost thing is complete disclosure of your educational and professional qualifications, for the purpose of determining whether you belong to grassroots category. Second and equally important thing is to disclose all the technical information relating to your innovation.

24. Is it safe to give a lawyer Power of Attorney, as I saw on Indian patent website that if one has to file a patent through a lawyer, one has to give him POA for filling? What if my lawyers misuse that and sell my invention without intimating me?

As per the Patents Act, you are required to provide a power of attorney (PoA) to your lawyer, if you want him to represent you. The PoA format for this purpose is given as Form 26 (under patents Act 1970 and patent rules 2003) and it merely authorise him to act on your behalf during the patent prosecution process, before the patent office. So its ambit is limited. Hence there is nothing to worry in giving PoA for filing your application. Moreover, if the lawyer indulges in any unlawful act with respect to your PoA, you can always approach the Bar Council of India for redressal.

Referance links for more FAQs

  1. http://www.wipo.int/patents/en/faq_patents.html
  2. http://ipindia.nic.in/ipr/design/faq_design.htm
  3. http://pfc.org.in/faq.htm