An enforceable Patent is the key to effective Commercialization/Out-Licensing of any technology. No matter how good a technology is, if the description of the technical subject matter is not enabling or fails to disclose all necessary embodiments, and in case the claims are narrowly drafted and do not gain support from the specification, the worth of the technology is insignificant.
Patent Prosecution is not merely a process of interaction between an Applicant and/or his Legal Representative and a Patent Office with respect to patentability of a patent, but, for the Applicant, is also a test of legal and technical competence that it believes the Legal Representative posseses. Patent prosecution is highly individualized and reflects the underlying skill set of each Attorney as the prosecution process itself involves high level of technical negotiation and interpretation of specific terminologies with the patent office, which in the end has high-impact value for the client.
Office Action Technical Analysis
An "Office Action" is a letter from a patent office in which a patent examiner or other official of the patent office makes an official communication to the patent applicant about the status of the patent application. Most Office Actions are written by a patent examiner after examining a patent application,
Patent filing and docketing
Patent docketing is a method or system for managing the patent application process. Docketing is a particularly crucial tool for patent law firms,
Trademark Prosecution support
Trade Mark is a prerequisite to Brand Building and the journey from Trade Mark to Brand and Brand Equity is tedious and needs proper blending of resources. Mere advertisement doesn't help!! Therefore, corporates need to be very cautious while going through the journey from Trade Mark to Brand Equity,
Trade Mark Support Services
For corporations with extensive portfolios that require additional trademark management support, IIPRD provides a customized solution that compliments the corporations' existing agent network. Through our team of experienced trademark professionals, we offer specialized trademark administrative support from pre-filing activity through to post registration management.
Update On Pune Office: Change of Address
Kind Attention..! This is to update our Patrons that in the wake of our growing client demand, we have changed our Pune office address to a new one which is more centrally located in the heart of city facilitating our patrons, existing and future ones in Pune, Maharashtra and surrounding region to reach us easily and in a hassle free manner.
Post Prosecution Pilot Program (P3): A Commendable Decision by USPTO
On Monday 11 July, USPTO announced a new pilot program (P3), intended to boost the prosecution efficiency. Under the P3 program, an applicant can file a request for consideration after final rejection, statement that he is willing and available to participate in the event, along with copy of response to a final rejection, and optionally proposed non-broadening amendment to the one or more claims.
Patent Cooperation Treaty National Phase Entry in India: 31 months Period: Effect of Patent (Amendment) Rules, 2016
Under Patent Cooperation Treaty (PCT), applicant gets varying period of 30-34 months to enter different states with National Phase applications. In the case of India, this period is 31 months. Decisions have been given by Hon’ble High Courts of India regarding extendible or non-extendible nature of this period of 31 months.
Choosing India as International Search Authority (ISA) and International Preliminary Examining Authority (IPEA): Who Can and Who Cannot
It is long since October 15th, 2013, that India started to work as International Search Authority (ISA) and International Preliminary Examining Authority (IPEA). Agreement between the Indian Patent Office (IPO) and the International Bureau (IB) of the World Intellectual Property Organization (WIPO) in respect of the same can be accessed here.
Federal Circuit Rules 180-Day Post-Licensure Notice is Mandatory in Biosimilar Litigation
In Amgen v. Apotex (No. 2016-1308), the US Court of Appeals for the Federal Circuit on July 5, 2016 affirmed a district court’s ruling that a biosimilar applicant must provide a reference product sponsor with 180 days’ post-licensure notice before commercial marketing of a biosimilar product begins, regardless of whether the applicant provided the § 262(l)(2)(A) notice of USFDA review.
Trademark/ Copyright and Patents Suits/ Civil Proceedings: Why Non-uniformity in Jurisdictions Available to Plaintiffs?
Section 62 of the Copyright Act, 1957, Section 134 of the Trademark Act, 1999, Section 104 of the Patents Act, 1970 and section 20 of Code of Civil Procedure (CPC), 1908 govern the applicable jurisdiction to file suits/ civil proceedings in case of Copyright, Trademark and Patent disputes.
Analyzing the Applicable Jurisdiction for Trademark and Copyright Disputes
Years 2015 and 2016 have been very important in terms of what they have offered to bring clarity on the jurisdiction where suits/ civil proceedings related to Trademark and Copyright can be instituted. IIPRD has written one article discussing some of these cases.
Submission on SEPs and Their Availability Under FRAND Terms
This submission is with respect to the discussion paper published by DIPP on Standard Essential Patents (SEPs) and their availability under FRAND terms. As one of the prime objects of IP laws is to promote/establish a fair balance between
Employee VS Employer: Country Wise Ownership Rights on IP
The renewed focus on R&D especially under ‘Make in India’ to boost the manufacturing sector, needs the internationalization of Intellectual Property (IP) Rights policies. The confusion over the rights of employees and employer over the ownership of inventions needs special attention. The judgment of High Court (HC) of Bombay in Darius Rutton Kavasmaneck v Gharda Chemicals Ltd & ors (2014) SCC Online Bom 1851,
Era of Start-Ups in India-ease in Intellectual Property Registration to be Decisive Factor
There have been many developments recently that have streamlined the process of registration of Intellectual Properties (IPs) of Start-Ups. This article discusses the chronological events and the latest position on the IP registration of Start-Ups.
Patent (Amendment) Rules, 2016 Takes Effect from May 16, 2016
Patent (Amendment) rules, 2016 making amendments to the Patents Rules, 2003 (Principal Rules) of the Patents Act, 1970 have taken effect from May 16, 2016. Public notice from CGPDTM regarding the same can be accessed here.
Deciphering the Intricacies Related to Protection of Graphical User Interface in India
Mahima Sharma, an intern at Khurana & Khurana looks into the intricacies involved in the process of protection of Graphical User Interface in India which seems to be in limelight wherein there exists some uncertainty over the same.
Combating Opioid Misuse – COMBAT (Curb Opioid Misuse By Advancing Technology Act of 2016)
The Congress recently introduced a bill on the COMBAT Act (Curb Opioid Misuse By Advancing Technology Act of 2016) to incentivize the development of abuse-deterrent opioids by amending the Federal Food, Drug, and Cosmetic Act to extend the exclusivity period for certain drug products developed or labeled so as to reduce drug abuse, and for other purposes.
Notification Related to Abeyance of Mass Abandonment Orders: A Sigh of Relief to Trademark Applicants
Reportedly, the Trade Mark registry has abandoned huge number of trademark application since 28th March 2016. The Intellectual Property Attorneys Association, an organization based in Delhi, filed writ petition at Delhi High court alleging that the trademark registry has cancelled an unusually huge number of trademark applications without issuing notices to the applicants or their agents.
Snapshot of the Latest Examination Guidelines for Computer-Related Inventions (CRIs) in India – Feb 2016
Indian Patent Office (IPO) has come up with another set of revised guidelines indicating how CRIs would be examined in India.
IP Workshop held at ITS Engineering College, Greater Noida
IIPRD in association with Khurana and Khurana, Advocates and IP attorneys has recently conducted an IP Workshop on 12th of March, 2016 at “ITS Engineering College”, Greater Noida.
IP Workshop held at Our Corporate Office – Greater Noida
IIPRD in association with Khurana and Khurana, Advocates and IP attorneys has recently conducted an IP Workshop on 15th of January, 2016 at Our Corporate Office, Greater Noida.
IP Workshop held at Hotel Hilton – Jaipur
IIPRD in association with Khurana and Khurana, Advocates and IP attorneys has recently conducted an IP Workshop on 8th of February, 2016 at “Hotel Hilton”, Jaipur.
IP Workshop held at Courtyard By Marriott, Bhopal
IIPRD in association with Khurana and Khurana, Advocates and IP attorneys has recently conducted an IP Workshop on 30th of November, 2015 at “Courtyard By Marriott”, Bhopal.
Khurana & Khurana Publication – Compendium of Trademark Case Summaries – 2015
The Indian trademark jurisprudence in its expeditiously evolving journey saw 2015 attaching many feathers to its hat. With increasing number of litigations, consequently fostering enhanced enforcement and settlements has stimulated players in the ecosystem in being more sensitized and mindful towards the IP lifecycle in India – from filing to injunctions.
Who Owns the Invention – the Employee and Employer Conundrum
As India’s participation in global trade, including with countries with strict patent regimes, increases, the need of aligning patent policies and practices in India with global standards is being felt.
Medecins Sans Frontieres (msf) Challenges Pfizer’s Patent Application on Pneumonia Vaccine in India
Médecins Sans Frontières (MSF) also known as Doctors Without Borders, an international humanitarian-aid non-governmental organization, has filed a pre-grant opposition in India to prevent US pharmaceutical company “Pfizer” from getting a patent on the pneumococcal conjugate vaccine (PCV13, marketed as Prevenar 13®).
Exclusions and Inclusions in latest Guidelines given by Indian Patent Office (IPO) for Examination of Computer Related Inventions (CRIs)
The Indian Patent office (IPO) after considering inputs/suggestions/comments from different stakeholders on previously issued Guidelines for Examination of CRIs (click here for IPO guidelines) has reissued the final guideline on 19th Feb 2016.
Requirements to be Fulfilled If Invention Uses Biological Material
You might find this article useful if you have questions like what is Budapest treaty, is India also member to the treaty, if my invention uses biological material, what obligations I have to fulfil under this treaty, what are the timelines to comply with those.
Interpretation of the Term “Aggrieved Person” Under Section 47 of Trade Mark Act, 1999
The Hon’ble High Court of Delhi in the case Adidas AG v Union of India and Anr vide W.P.(C) 3125/2013 set aside the impugned ex parte order by IPAB dated 28th December 2012 and remanded the matter to IPAB for fresh consideration.
Jurisdiction of Courts Under Section 62 of the Copyright Act and Section 134 of the Trademarks Act
The Hon’ble Supreme Court of India in “INDIAN PERFORMING RIGHTS SOCIETY LTD. Versus. SANJAY DALIA AND ORS”: (2015) 10 SCC 161 and the Hon’ble Division Bench of Delhi High court in ULTRA HOMES CONSTRUCTION PVT. LTD Versus PURUSHOTTAM KUMAR CHAUBEY & ORS FAO (OS) 494/2015 & CM 17816/2015 has interpreted Section 62 of the Copyright right, 1957 and Section 134of the Trademark Act, 1999 read with Section 20 of the CPC with respect to the Jurisdiction of the Court.
Make the Most of Dynamic Patent Utilities from Indian Patent Office (IPO)
This article discusses at length the importance of each dynamic patent utility from IPO so that each reader can make most out of it. Order in which they are discussed do not signify anything and have been discussed in random order.
Make the Most of Dynamic Trademark Utilities from Trademark Registry (TMR) India
This article discusses at length the importance of each dynamic trademark utility from TMR so that each reader can make most out of it. Order in which they are discussed do not signify anything and have been discussed in random order.
Indian Patent Office Rejected Compulsory License Application (C.L.A. No.1 of 2015) for “Saxagliptin” Filed by Lee Pharma Ltd.
In an order dated 19th January 2016, the Controller of Patents rejected the compulsory license application of Hyderabad based drug maker Lee Pharma Ltd. to manufacture generic version of AstraZeneca’s anti-diabetic drug Saxagliptin.
Plant Varieties and Farmers‟ Rights Act, 2001
Ministry of Agriculture & IPAB failure in invoking the transitional provision as provided under Section 59 of The Protection of Plant Varieties and Farmers‟ Rights Act, 2001 for setting up a tribunal.
Online Copyright infringement and its liability upon Intermediary
1. Copyright is a bundle of rights which is meant to encourage creativity. In ancient days creative persons worked for fame and recognition rather than to earn a living, thus, the question of copyright never arose. In the last four decades modern and advanced means of communication like broadcasting, litho-photography. Television, websites contents etc have made the Copyright Act an important act to deal with possible problems of ownership and infringement on such rights.
Intersection between Intellectual Property (IP) and Competition Law
With a growing buzz around how IP and Competition law interface with each other, instances when they can be coupled by Defendants to raise concerns/defense arguments, as to how and when investigations can be initiated through the Competition Commission of India (CCI), are becoming critical and hence need clarity at all ends. This piece is a small step towards the same.
Term of Patent in India: What’s with date 20th May 2003?
Section 53 of the Patents Act, 1970 deals with the determination of term of patent in India. Subsection 1 of section 53 provides that the term of every patent granted, after 20th May 2003, and the term of every patent which is not expired and is not ceased to have effect, on 20th May 2003, under this Act, shall be twenty years from the date of filing of the application for the patent.
Germany’s Boehringer Repudiated Patent on HIV Drug- Nevirapine
The Indian Patent Office has repudiated Germany’s Boehringer Ingelheim patent on its key HIV drug- Nevirapine, Patent Application Number: 4724/DELNP/2009 entitled “Extended release formulation of Nevirapine”, for a version sold as Viramune XR (extended release), once again forestalling attempts by Big Pharma for “exclusivity” extension on their patented drugs to reportedly block entry of reasonably priced generics.
Extension of Time to submit the objections or suggestions to the Proposed Draft of Amendment of Trade Marks Rules, 2002
This post comes as an update to the previous one in context of the Proposed Draft Trade Mark Rules by the Central Government, which has been dealt few days back. The proposed draft rules were published on 17th November 2015 for information of all persons likely to be affected, inviting objections or suggestions, if any, with an indication that the said draft rules shall be taken into consideration after the expiry of a period of thirty days from the date of publication.
Proposed Trademark Amendment Rules 2015
Recently, Ministry of Commerce and Industry (Department of Industrial Policy and Promotion (DIPP)) issued out Draft of proposed Rules for Trade Marks. The proposed draft rules are open as of now to receive objections and comments from the concerned person, which shall be taken into Consideration by the Central Government. The draft rules proposed significant changes in the Government Filing fees and the Format of Forms for Trade Mark Prosecution.
Delhi High Court Upholds Roche’s Patent Claims on Lung Cancer Drug (Tarceva) Against Cipla
A division bench of Delhi High Court on 27th Nov 2015 held that the Indian drug manufacturer Cipla infringed Swiss pharmaceutical company Roche’s patent on Erlotinib hydrochloride, marketed under the name of “Tarceva”.
Establishment of Commercial Courts Division at Delhi High Court
Pursuant to the Promulgation of the Commercial Courts, Commercial Division and Commercial Appellate Division of High Courts Ordinance, 2015 the Hon’ble the Chief Justice vide orders dated 15.11.2015 has declared the constitution of Commercial Division at Delhi High Court with Six Benches, consisting of a Single Judge each, under Section 4(1) of The Commercial Courts, Commercial Division and Commercial Appellate Division of High Courts Ordinance, 2015, with effect from 16.11.2015.
VPATAPP – An Android Based Free Mobile App
We at IIPRD are glad to associate with a team of IP Enthusiasts who have developed an android-based mobile application called “VPATAPP”, and are happy to give a brief introduction of the same to our readers.
Commercial Courts, Commercial Division and Commercial Appellate Division of High Courts Ordinance Promulgated in India
The President of India on October 23, 2015 promulgated the Commercial Courts, Commercial Division and Commercial Appellate Division of High Courts Ordinance, 2015, No. 8 of 2015.
A Simplified Account of Patenting Procedure in India
Well, this is something for which we have been getting queries on regular basis from individual inventors, universities and companies in India as well as outside India. This article comprehensively addresses all the procedural issues which normally applicant faces while patenting invention in India.
Draft Patents (Amendment) Rules 2015
Indian Patent Office (IPO) has recently published Draft Patents (Amendment) Rules 2015 and has invited comments (objections or suggestions) from public within 30 days from the publication of the notification (26th October 2015).
The Coarse Course of the Trademark Agent Examination and the Viva Voce marks
A long wait of 5 years finally dawns upon the announcement of the Indian trade marks agent exam 2015 reigniting ageing dreams of aspirants. Notwithstanding the sigh of relief the announcement brought with itself, the onset of the trademark agent 2015 procedure and preparations however are not left untouched by certain rhetorics and concerns.
The Game of Fame and Name
One of the famous quotes of Shakespeare is ‘what’s in a name’. As well acclaimed and with due respect to his views “a rose would smell like a rose even if it were called by another name” has lost its relevance in present day scenario.
Research Exemption in Indian Patent Law
The research or experimental use exemption permits researchers and product manufacturers to make certain use of a patented invention. The general idea behind this exemption is that it sets boundaries to patent holder rights such that the patent holder cannot prevent third parties from undertaking certain activities with respect to the patented invention.
Patentability of Genes, Gene Sequencing & DNA based Primers
Patents have been granted in various biotechnology fields such as genetically engineered plants, human genetic sequencing, recombinant DNA molecule, diagnostic kits, stem cells, isolated nucleic acid encoding a gene and DNA related inventions such as preparing vectors, primers etc, but it was not the same before genetically engineered microorganism was granted a patent first.
Interpretation of Section 31 of Indian Patents Act, 1970
While the focus of the article is specifically on the interpretation of section 31, mentioning other relevant sections of the act and trying to understand the purpose of section 31 will help us interpret the section 31 correctly.
SUCCESSFUL CONCLUSION OF NATIONAL PATENT DRAFTING COMPETITION (NPDC) 2015 !
IIPRD, this year, with the support from Khurana & Khurana, Advocates and IP Attorneys (K&K), and Sughrue Mion PLLC, has launched a one of its kinds competition in India on Patent Drafting called as “National Patent Drafting Competition” or NPDC to promote development of Patent Drafting as a Skill Set and encourage more and more technical people to take up Patent Drafting as a Professional Competency, along with identifying and encouraging Top Patent Drafters in Country.
The Curtain Raiser Formal Guidelines for Examination clarifying Patent Examination Position on Computer Related Inventions in India
The much debated and iterated ‘Guidelines for Examination of Computer Related Inventions’ formally released by the Office of Controller of Patents finally dawns the light upon the much elusive position on Software and Business Method Patents in India.