India Support Office

Overview of information on intellectual property rights in India

 

It is well known that India, a member of the BRICS group, has experienced remarkable economic growth in recent years, but the number of international applications filed in India continues to increase year by year, partly due to the country's accession to the PCT in 1998. Masu.

Our firm has been involved in representation services such as procedures related to intellectual property rights between Japan and India, but we are currently working on the application and protection of intellectual property rights between Japan and India, which is expected to further develop. , we have recently opened the "India Support Office" in order to provide even stronger support to our customers. The purpose of the India Support Office is to respond to the diverse needs of customers in India and Japan and provide higher quality services.

If you have any questions or concerns regarding intellectual property rights in India or Japan, please feel free to contact our India Support Office. All the staff at the India Support Office are looking forward to your visit.

India Support Office Head Eiichiro Fuchioka

India overview

(1) area 3,287,263 square kilometers (approximately 8.8 times Japan)
(2) population 1,378.6 million people (2019 IMF)
(3) capital

Delhi 16.75 million people (2011 *Census) *Census is announced every 10 years

(4) Official terminology Hindi (federal official language), English (semi-official language), Urdu, Bengali
(XNUMX) Religious Hinduism (79.8%), Islam (14.2%), Christianity (2.3%), etc. (2011*Census)
(XNUMX) real GDP growth rate 8.7% [2021] Base year: 2011
(XNUMX) Total nominal GDP 1,977,919 million dollars [2021]
(XNUMX) GDP/person (nominal) $2,283 [2021]
(XNUMX) Export amount 421,894 million dollars [2021]
(XNUMX) Export amount to Japan 6,177 million dollars [2021]
(XNUMX) Import amount 612,618 million dollars [2021]
(XNUMX) Import amount to Japan 14.4 billion dollars [2021]
(XNUMX) Major industries Agriculture, industry, mining, IT industry, pharmaceuticals, biotechnology, etc.
(XNUMX) Major trading partners Export: UAE, USA, China, Hong Kong, Singapore, Netherlands
Import: China, UAE, Saudi Arabia, USA, Switzerland, Australia

 

Advantages of applying in India

The following advantages can be cited for filing applications related to intellectual property rights in India.

(1) India is one of the BRICs and is attracting attention as a market that is expected to continue to grow rapidly.

(2) In India, procedures can be carried out in English, so applications can be filed using English-language documents prepared in Europe and the United States, thereby saving on translation costs.

(3) Since it is a member of the Paris Convention, it is possible to claim priority based on the application filed in Japan.

(4) The country is a member of the PCT and can transfer from a PCT application.

 

Patent

3-1. statistics

年度 2015 2016 2017 2018 2019
Number of applications Domestic application 13066 13219 15550 17005 20843
Domestic application (overseas residents) 1915 2084 2290 2777 3156
Paris Convention application 3675 3649 3610 3911 3588
PCT national transition 28428 26492 26404 26966 28680
Total 46904 45444 47854 50659 56267
Number of reviews 16851 28967 60330 85426 80080
Number of granted patents 6326 9847 13045 15283 24936
Number of dispositions* 21987 30271 47695 50884 55945

*Including grant of patent, decision of refusal, abandonment, and withdrawal.

・The trend from 2015 to 2019 is that the proportion of domestic phase applications in India has decreased from XNUMX% to around XNUMX%, while the number of domestic applications in India has increased.

・The number of examination cases and the number of patent decisions are increasing each year. The decrease in the number of examinations in FY2019 was due to the impact of Covid-19.

 

3-2. Duration

It has been 20 years since the application was filed (Article 53 of the Patent Act). However, unlike Japan, there is no system in place to extend the duration of pharmaceutical inventions.

 

3-3. Protection target

・In the Indian Patent Act, Article 3 provides specific examples of "things that are not inventions."

- In India, substance patents are recognized, but "mere discovery of a new use of a known substance" is not recognized (Section 3(d) of the Patents Act). Furthermore, derivatives such as salts of known substances are considered to be the same substance unless they are substantially different in terms of their efficacy-related properties (Article 3(d) of the Patent Law).

・Software itself cannot be patented, but software combined with some kind of hardware can be granted.

- Inventions related to agricultural methods, game methods, integrated circuit layouts, and nuclear power are not permitted.

- The revised law that came into effect on January 2005, XNUMX protects inventions related to pharmaceuticals, inventions related to microorganisms, chemicals, agricultural chemicals, and beverages, and inventions related to computer programs with industrial applicability. Ta.

・India does not have a utility model system.

 

3-4. About application

 Figure 1 shows a flow diagram from application to registration. Each stage will be briefly explained below.

 

 application

・Since Japan is a member of the Paris Convention, it is possible to claim priority based on Japanese patent applications.

- Since India is a member of the PCT, India can be designated in PCT applications.

- Information regarding the foreign application must be submitted within six months of filing (Article 8(1) of the Patent Act, Patent Regulation 12(1A)). In addition, until the grant or refusal of grant of a patent, the applicant must, if requested by the Controller, submit the prescribed particulars regarding the processing of the application in a foreign country (Article 8(2) of the Patents Act, Patent Regulations 12(2)). 3)).

・There are four patent offices in India (New Delhi, Chennai, Kolkata, and Mumbai). For foreign applicants, the patent office is determined by the agent's place of residence. The speed of examination varies depending on each branch office. It is generally said that New Delhi is the fastest in examining patent applications, followed by Chiang Mai, Mumbai, and Kolkata.

・As a general rule, inventions made within India must be filed within India. If the invention is to be filed in a first country outside India, permission is required.

・There are two types of specifications: provisional specifications and complete specifications. The provisional specification is a document that broadly describes the invention and may include drawings, flowcharts, and chemical formulas. Although the provisional specification does not include claims, it must describe all aspects of the invention that the inventor wishes to protect. Filing a provisional specification provides a priority date for the invention.

・Requirements for a provisional specification are not as strict as for a complete specification, and it is sufficient to explain the invention in detail and without restrictions, and to cover possible improvements and modifications.

- When a patent application is filed with a provisional specification, a complete specification must be filed within 12 months to maintain the priority date. Once a complete specification has been filed, no new content may be added.

・There is a form called a cognate application. Multiple provisional applications may be filed together in one complete specification in certain cases, such as when one of them corresponds to another variant invention.

- There is a system unique to India called the patent of addition system (Articles 54, 55, 56, Patent Rules 13(3)). By filing a patent application for an improvement or modification of the invention (main invention) described or disclosed in the complete specification and claiming it as a patent of addition, the patent for the improvement or modification can be made into a patent of addition. However, the term of the patent of addition is the same as the term of the patent of the main invention, and when the patent of the main invention expires, the patent of addition also expires.

- Regarding employee inventions, the Indian Patent Act does not have any explicit provision regarding the relationship between an employer and an employee. According to previous UK case law, there must be an express or implied contractual obligation.

 

 PCT application

・The national phase deadline is 31 months from the priority date, and the period for requesting examination is 48 months from the priority date, same as Paris route applications.

 

 spontaneous correction

- At the time of national entry, the following voluntary amendments (i) and (ii) are allowed.
   (i) Amendments reflecting the amendments to Article 19 and Article 34 in the international phase.
     Such amendment is not bound by the provisions of Article 59 of the Patent Act.
   (ii) Deletion of claims

・Voluntary amendments after entering the national phase must satisfy the provisions of Article 59 of the Patent Law.

 

 Information disclosure obligation

・Before granting a patent, it is necessary to notify the country name, filing date, application number, application status, application publication number, and patent issue date of the corresponding foreign application (Article 8 (1) of the Patent Law).

・Before a patent is granted, it is necessary to submit a search report, examination results, and claims for which a patent has been granted for the corresponding foreign application (Article 8 (2) of the Patent Law).

 

 About writing complaints

・If unity of invention is satisfied, multiple categories can be claimed in one application.

・Multiple dependent claims and multiple dependent claims that are dependent on multiple dependent claims are permitted.

- Two-part format is preferred, but not mandatory.

・Reference numbers may be included in the claims and the claims are not limited thereby.

 

 Application publication

- The application shall be published after 18 months from the filing date or the priority date of the application, whichever comes first (Patent Rule 24). If you wish to acquire rights early, you need to use the early publication system (Article 11 (2) of the Patent Act).

 

 Request for examination

- A request for examination must be filed within 48 months from the priority date of the application or the filing date, whichever comes first (Patent Rule 24B). If a request for examination is not filed within the said period, the application will be virtually withdrawn (Article 11(B) of the Patent Law).

 

 Examination

・If reasons for refusal are found during the examination, a First Examination Report will be issued. If you respond, the review will be conducted again. If no reason for refusal is found, the application will be granted registration.

・In India, an application is deemed to have been abandoned if it is not made ready for granting a patent within six months (acceptance period) from the date on which the first notice of reasons for refusal is sent (Article 21(1) of the Patent Act) , Patent Rule 24B(5)).

- The above acceptance period may be extended once by up to three months upon application (Patent Rule 24B(6)).

- If a decision of refusal is made, a request for reexamination (Article 77(f) of the Patent Act) can be filed.

 

◆Measures that the applicant can take at the time of examination

(a) Amendment

Amendments can be made if permission is obtained from the Commissioner (Article 57 of the Patent Act). However, if the amended specification claims or describes matters that are not substantially disclosed or indicated in the pre-amendment specification, or the claims of the amended specification are different from the pre-amendment specification. If it is no longer completely within the scope of the claims in the specification, it will not be allowed (Article 59 of the Patent Law).

 

(b) Hearing

- If the applicant is dissatisfied with the examiner's report, he or she may request a hearing (Article 14). Requests for hearings must be made no later than 10 days after the first examiner's report and before the last day of the acceptance period.

・The hearing will be scheduled at least 129 days after the notification of the hearing (Article XNUMX of the Rules). The hearing will normally be set XNUMX days after the date of notice.

・A request for an extension of the hearing deadline can be made up to three days before the hearing date. Requests for extension of the deadline are allowed up to two times, and each extension period is 129 days (Article XNUMXA of the Regulations).

- After the hearing, the period for submitting a written opinion is 15 days.

 

(c) Divisional application

・It is possible to file a divisional application at any time before the patent is granted (Article 16 of the Patent Law).

・The period for requesting examination of a divisional application must be filed within 48 months from the priority date or 6 months from the divisional application, whichever is later.

・If the parent application has been granted a patent, it is possible to file a divisional application from a divisional application (IPAB trial decision of March 25, 2015).

 

 Pre-grant opposition

- If a patent application has not been granted after it has been published, any person may file an objection to the granting of the patent with the Commissioner (Article 25(1) of the Patent Act). In other words, a request for opposition does not require that there be a conflict of interest.

 

 Referee

- An appeal can be filed against a refusal of a patent application, a decision by the Director (division, amendment), a cancellation order based on a post-grant opposition, etc. (Article 117A).

 

 

3-5. About after registration

・At any time after the grant of a patent and before the expiry of one year from the date of publication of the grant, any interested person may file an objection with the Commissioner (Article 25(2) of the Patent Act).

・In addition to the post-grant opposition, a petition for patent revocation can be filed (Article 64 of the Patent Law).

- Patent owners must report information on the implementation status (Woeking Statement) every year (Article 146 of the Patent Act, Patent Regulations 131(2)).

・After the expiration of three years from the date of patent grant, the patented invention will be subject to compulsory license grant because the patented invention has not been practiced within the territory of India (Article 84 of the Patent Act).

- Even after two years from the date of the first compulsory license grant order, if the patented invention is not worked within the territory of India, the patent may be revoked (Article 85 of the Patents Act).

 

Regarding the revision of Office fees based on the revised Patent Law Regulations 2014

The Government of India announced the revised Patent Act Rules 2014 on February 2, 28, and it came into force on the same day.

According to this, patent applications are classified into three categories: natural persons, small business entities, and entities other than small business entities, and separate office fees are set for each. The main agency costs are as follows (unit: Indian rupee ≒ 1.90 yen).

 

Item Natural person other than a natural person
small business entity Entities other than small entities
Patent application 1600 4000 8000
Request for examination 4000 10000 20000
Request for accelerated examination 5600 14000 28000
pension
3rd to 6th year
800 2000 4000
7th to 10th year 2400 6000 12000
11th to 15th year 4800 12000 24000
16th to 20th year 8000 20000 40000

*The above fees are for procedures carried out by e-filing; in the case of physical filing, the above fees will be increased by 10%.

In addition, the fees for each fee before the revised Patent Law Regulations 2014 have increased by about XNUMX times for natural persons and twice for entities other than small entities (other than natural persons before the amendment). The entity is subject to the pre-amendment rates for non-natural persons.

The definition of a small business entity is stipulated in the Small, Medium, and Micro Enterprise Development Act of 2006, and three categories are considered to be small businesses: micro enterprises, small enterprises, and medium enterprises.

In addition, in order to prove that the entity falls under the category of a small business entity, it is necessary to submit Form 28.

 

About patent infringement lawsuits

- Infringement lawsuits are filed to suppress acts that infringe on the rights of patent holders (Article 48). The patentee (and the person holding the rights related to the patent) may choose to file a lawsuit in either the district court or the high court that has jurisdiction over the location of the infringer or the place where the infringing act occurred. The procedure for filing and hearing a lawsuit is set out in Sections 26 to 35B of the Civil Procedure Act, 1908.

・The remedies that a patentee, etc. can request against an infringer in a patent infringement lawsuit are (a) injunction (provisional or final), (b) compensation for damages or return of unjust enrichment, (c) seizure, confiscation or destruction, (d) legal costs, etc.

- The act of importing a product related to a patented invention from a person authorized by law to manufacture, transfer, or sell the product does not constitute infringement (exhaustion).

・Article 111 of the Patent Act of 1970 stipulates that a patentee is exempt from liability for damages or return of unjust enrichment, provided that the patent right existed in good faith.

 

Figure 1 Flow diagram from application to registration

Flow diagram from application to registration

 

design

5-1. Duration

- The period is 10 years from the date of registration, and can be extended once for 5 years (Article 11 of the Design Law). However, when a design is registered, it is deemed to have been registered as of the date of the application for registration (Article 5 (6) of the Design Act).

 

5-2. Protection target

・Article 2(d) of the Design Act states: ``A ``design'' is limited to features of line or color shape, outline, pattern, decoration, or composition that are applied to an article by industrial methods or means.'' It is defined as.

・Article 2(a) of the Design Act states: ``The term ``article'' means any product or substance that is man-made or partially artificial and partially natural; includes any parts of an article that can be sold separately. ” is defined. Note that "partial designs" that cannot be sold individually are not protected.

 

5-3. About application

・Since it is a member of the Paris Convention, it is possible to claim priority based on the application filed in Japan.

・No request for examination is required (Article 5 of the Design Act).

- If the examination results in a decision of refusal, an appeal can be filed to a high court (Article 5 (4) of the Design Act).

・There are four Design Offices in India. For foreign applicants, the patent office is determined by the agent's place of residence.

 

5-4. About after registration

- Interested parties may file a petition for cancellation of design rights (Article 19 of the Design Act).

 

2014-XNUMX. Regarding the revision of Office fees based on the revised Design Regulations XNUMX

The Government of India notified the amended Design Rules 2014 on December 12, 30 and it was published by the Commissioner of Patents, Designs and Trademarks on January 2014, 2015.

According to this, design registration applications are classified into natural persons, small business entities, and other business entities, and separate office fees are set for each entity. The main agency costs are as follows (unit: Indian rupee ≒ 1.90 yen).

Item Natural person other than a natural person
small business entity Entities other than small entities
One design registration application in one category 1000 2000 4000
Extension of duration 2000 4000 8000
Application for extension of monthly period 200 400 800
Request for information to the Agency when a registration number is attached 500 1000 2000
Request for information from the Agency when a registration number is not assigned 1000 2000 4000
Viewing the register 500 1000 2000
Application for certified copy 500 1000 2000

The definition of a small business entity is stipulated in the Small and Medium Enterprise Development Act of 2006, and depending on the scale of the company's capital investment, it is defined in Chapter 7 1) (a) (i) of the same law for the manufacturing industry, and for the service industry. This is stipulated in Chapter 7, 1)(b)(i) of the Act.

 

  small business small business medium company
Manufacturing industry 250 million rupees or less 250 million to 5000 million rupees 5000 million to 1 million rupees
Service industry 100 million rupees or less 100 million to 2000 million rupees 2000 million to 5000 million rupees

*Form 24 must be submitted to prove that it falls under the category of a small business entity (submission to the agency is free)

 

商標

6-1. Duration

- 10 years from the filing date, which can be extended by renewal (Article 25 (1) of the Trademark Law).

 

6-2. Protection target

・In addition to product trademarks, service trademarks are also protected (Article 2 (1) (zb))

・There is also a collective trademark system (Article 61)

- Three-dimensional shapes and color combinations are also protected (Article 2 (1) (m)).

 

6-3. About application

・Since it is a member of the Paris Convention, it is possible to claim priority based on the application filed in Japan.

・Similar to Japan, a one-application, one-trademark system is adopted, but multiple categories can be specified in one application (Article 18).

- A request for accelerated examination can be made by paying an additional fee (Trademark Rule 38(1)).

- If the examination results in a decision of refusal, a request for appeal may be filed (Article 91 of the Trademark Law).

 

*About trademark registration requirements

  Message clause Reference*1
Absolute reason for refusal Trademarks lacking distinctiveness 9(1)(a) 3(1) each
descriptive trademark 9(1)(b) 3(1)③
common trademark 9(1)(c) 3(1)②
Trademarks that mislead or confuse the public 9(2)(a) 4(1)⑯
Trademarks that may offend religious sentiments 9(2)(b) 4(1)⑦
Defamatory and obscene trademarks 9(2)(c) 4(1)⑦
Coats of arms and names whose use is prohibited 9(2)(d) 4(1)① etc.
Shape derived from product content 9(3)(a) 3(1)③
Shape for technical effect 9(3)(b) 4(1)⑱
A shape that adds real value to a product 9(3)(c) 4(1)⑱
relative reason for rejection Possibility of confusion because the trademarks are the same and the goods/services are similar 11(1)(a) 4(1)⑪
The trademarks are similar and the trademarks/services are the same or similar and there is a possibility of confusion. 11(1)(b) 4(1)⑪*2
Misuse of reputation due to similarities with well-known trademarks and dissimilarity of products/services 11 (2) 4(1)⑲
Trademarks protected by passing off 11(3)(a) 4(1)⑮
Trademarks protected by copyright law 11(3)(b)  

*1. For reference, the corresponding reasons for refusal under Japanese law
"Trademark protected by copyright law" is not a reason for refusal, and the exercise of rights is subject to restrictions under Article 29.

*2. In India, trademark similarity is defined as ``a case where a trademark is similar to another trademark and is likely to cause misunderstanding or confusion'' (Article XNUMX(XNUMX)(h) of the Trademark Act). ). Specifically, appearance, concept, appellation, structure, celebrity, and relationship with products or services are considered and comprehensively judged. Among these, the emphasis on similarity of names has an affinity with Japan's judgment of similarity. Furthermore, although overall observation is the basic principle, separate observation may be performed for combined trademarks.

 

・We have adopted a pre-grant opposition system, and any person can file an opposition within three months from the date of public announcement (Article 21 of the Trademark Law).

・There are five trademark offices in India. For foreign applicants, the patent office is determined by the agent's place of residence.

 

6-4. About after registration

・During the examination at the time of renewal, it is not examined whether the trademark is actually used.

- Interested parties may request an invalidation trial (Article 57 of the Trademark Law).

・If the period of non-use reaches 5 years and March, it will be subject to a trial for cancellation of non-use (Article 47 of the Trademark Law).

・If an agent or representative of the owner of a registered trademark registers the mark in his or her own name without being authorized to do so, the owner may file an objection to the registration that has been filed ( Trademark Law Article 146). However, this must be done within three years after learning of the act.

 

6-5. [Trademark] Madrid Protocol/Individual Fees

The amounts that can be confirmed as of April 2024 are as follows (in Swiss francs).

At the time of application: 110/1 classification
At the time of update: 110/1 classification

 

 

7. Common subject matter

Indian Patent Office URL http://www.ipindia.nic.in/

 

[Reference materials]

(1) “Research report on the intellectual property protection system and its operation status in India”, March 19, Japan International Intellectual Property Protection Association, AIPPI・JAPAN

(2) “Impact of Indian Patent Law Amendments”, Patent, 2008, Vol61 No.2 P42-48

(3) International Third Committee, Points to note when obtaining patents in Asia and Oceania countries (revised edition), Document No. 332 (May 2006)

(4) “India Patent Law and Practice”, March XNUMX, XNUMX


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