Overall View of Indian IPR System

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The Controller General of Patents, Designs and Trade Marks (CGPDTM) administers the Patents Act, 1970, the Designs Act 2000, the Trade Marks Act 1999 and the Geographical Indications of Goods (Registration and Protection) Act, 1999. The Office of Controller General of Patents, Designs and Trade Marks is located at Mumbai. The CGPDTM also advises the Government on matters relating to Intellectual Property Rights. The Patent Information System and the Rajiv Gandhi National Institute of Intellectual Property Management (NIIPM), both located at Nagpur come under the purview of the CGPDTM. The CGPDTM supervises the functioning of:

  • The Patent Offices (including the Designs Wing) at Chennai, Delhi, Kolkata and Mumbai
  • The Patent Information System (PIS) and Rajiv Gandhi National Institute of Intellectual Property Management (NIIPM) at Nagpur.
  • The Trade Mark Registry at Ahmedabad, Chennai, Delhi, Kolkata and Mumbai
  • The Geographical Indications Registry (GIR) at Chennai.

The official website of the CGPDTM, namely www.ipindia.nic.in contains information that includes all IP-laws and rules administered by the Offices, reports, official e-journals, public search facility of IP records, dynamic utilities for public, public notices and news.

Patent Office

The Patent Office performs statutory functions relating to the grant of patents for inventions, renewal of patents, restoration of lapsed patents, grant of compulsory licenses, registration of patent agents, etc. under the Patents Act 1970. The Head Office of the Patent Office is at Kolkata with branch offices at Chennai, Delhi and Mumbai. The Offices deal with the application for patents originating within their respective territorial jurisdictions.

WIPO

The World Intellectual Property Organization (WIPO), a United Nations agency specialized in the field of Intellectual Property Rights, in its General Assembly meeting held in September-October 2007 at Geneva recognized the Indian Patent Office as an International Searching Authority (ISA) and an International Preliminary Examining Authority (IPEA) under the Patent Cooperation Treaty. This puts India in an elite group of 17 Patent Office recognized as ISAs and IPEAs. Patent Office has started functioning as ISA/IPEA with effect from 15th October 2013.


Intellectual Property Appellate Board (IPAB)

Intellectual Property Appellate Board (IPAB), a quasi judicial body was set up as statutory Board by the Government of India vide Gazette Notification No: S.O 1049 (E) Dated 15.09.2003. It has been established to hear appeal against the decisions of the Registrar and to hear applications for rectification of entries in the Registrar of Trade Marks under the Trade Marks Act, 1999 the Geographical Indication of Goods (Registration and Protection) Act, 1999, and Patents Act, 1970. IPAB has its headquarters at Chennai and besides Chennai, it holds the Circuit Bench Sitting at New Delhi, Mumbai Kolkata and Ahmedabad.

Filing Requirements

  • 1. Full Name, Address, Nationality of each Applicant and Inventor.
  • A copy of the Complete Specification, Claims, Abstract and Drawings (if any), in English Language.
  • Certified English translation of the Priority Document in case the priority document is in a language other than English. The same is required to be filed within 3 months from the date of first communication from the Patent Office.
  • A Power of Attorney duly executed by an Applicant or through an Authorized Signatory of the Applicant Company. The same can be filed preferably within 3 months from the date of Indian filing.
  • Proof of Right is a document evidencing transfer of Rights from the Inventor(s) to Applicant (the document can be Application Form 1 duly executed by all the Inventors or a Notarized Assignment Deed, or a Certified Copy of U.S. Assignment having Worldwide Rights). The same can be filed within six months from the date of Indian filing or subsequently with a Petition.
  • The duly Completed Prescribed Forms required for Indian patent Filing shall be provided upon receipt of the Complete particulars of the Applicant and the Inventors.
  • The list of Particulars of Corresponding Applications (filed outside India) is required to be filed at the Indian Patent Office (such as Name of the Countries, Application Date, Application Number, Status of Application etc.) in accordance with Section 8 (1) of the Indian Patent Act. It can be Form 3 and the deadline for filing the such details are as follows :
    1. For Corresponding applications filed prior to the date of Indian filing, the details are to be filed at the time of filing the Indian application or later with a petition.
    2. For corresponding applications filed subsequent to the date of Indian filing, the details are to be filed within 6 months from the date of filing of every corresponding application or later with a petition.
  • Section 8 (2), requires to give details of the processing of the applications in other countries (Office Actions, amendments etc.). It must be filed within 6 months from the date of 1st office Action or anytime before the Grant of the Patent but with a Petition condoning the delay. Alternatively, the same can also be filed voluntarily.

Important Deadlines

  • A Request for Examination is required to be filed within 48 months of the Priority date or Filing Date, whichever is earlier.
  • Upon Grant of Patent, the accumulated Annuities are to be paid within 3 months of the date of recordal and then a single annuity every year on or before the filing date till the full term of 20 years.
  • The Statement of Commercial Working is mandatory to file (Form – 27) for all Granted Patents every year. In this connection, an applicant is required to keep the Patent Office informed if the Patent has been worked in India or not. If worked in India, the quantum of import of the patented products including the name(s) of the importing countries are to be provided. In case of manufacture of the patented product in India, the quantum is to be indicated.
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