With newly amended Design rules, will India keep up the pace with other global countries?

The Indian Design Act 2001 with some significant changes incorporated in the Amendment Rules, 2008 is serving its purpose well to keep pace with the rapid changes in the technology and international developments.  In view of the globalization of the economy, India is becoming a major hub in the field of industrial designs and Indian Design Law and its administration is suitably aligned with the changed technical and commercial scenario and conforms to international trends in design administration.

The Design Wing of the Indian Patent Office has taken some bold steps and corrective measures to streamline the procedure in the Design Wing and to make the system more transparent and efficient. As per Controller General of Patents, Designs & Trade Marks, complete automation of the Designs Wing is in progress and the entire process will be made fully e-enabled shortly, which will result in provision of online availability of the status of application, Register of Designs and file documents. E-filing of Design Applications and further documents will be introduced soon.

The Design Wing has also come out with a Manual to provide detailed information to the public and users of Design Registration System on the practice and procedures followed by Designs Wing of the Indian Patent Office, for processing of Design Applications and other related procedures.  It is pointed out by the Design Wing that 90% of the applications are objected to at the time of examination based on formality issues only. Very few applications are objected on substantive grounds such as novelty and originality.  The Wing has observed that in majority of cases the delay in registration of design is mainly due to faulty filing which can be avoided by adhering to proper filing procedures. The Designs Wing expects to register a properly filed Design Application within a period of three months from the date of filing.

Though the prosecution of a Design Application is done only at Patent Office, Kolkata, The Designs Act and Rules provide for filing of a Design Application in any of the four Patent Offices i.e. Patent Office Delhi, Mumbai, Chennai or Kolkata.

Following are some pointers that need to be kept in mind to avoid formality rejections:

  1. Instead of naming the views as “Front Elevation View”, the Design Office requires the naming to be simple and convention such as “Front View”. Similarly, instead of using “Bottom Plan View”, “Bottom View” should be written.
  1. Below the signature of the Agent, the Applicant/Agent must write the name of the signatory.
  1. No exploded views should be illustrated in any of the designs. Only the article as a single constructional piece should be included.

Views such as below therefore would not be accepted by the Design Office.

  1. No extraneous matter should be added into any of the design representation and all the views should only represent the article under consideration. Views such as below would therefore not be accepted at the Design Office as the view includes extraneous matters/articles which are not under the subject of design protection.

  1. Name of the article should be very simple and self-explanatory. For instance instead of naming the article as “Multi-Roll Retractable Mast System”, the name should be put across simply such as “Equipment for Target Acquisition”.
  1. Both the Disclaimer paragraphs namely “No claim is made by virtue of this registration in respect of any mechanical…” and “No claim is made by virtue of this registration to any right to the exclusive”, should be written in separate paragraphs.
  1. In case objections are received relating to clarity of title, while responding to the Office Action with simple and revised titles, we should also write the structural functionality of the article in the response to Office Action for clarity of the end of examiner as to the purpose of the article.
  1. Finally, the best way to respond to Office Actions is to discuss the objections with the concerned examiners at the Design Office and understand their expectations from the Objections so that an appropriate response can be prepared. Fortunately, the present Design Examiners are doing a great job in clarifying concerns and queries regarding the Office Action and adhering to the strict Six-Month deadline for deciding the fate of the Application.
  1. Examiners can also be very conveniently reached through emails at controllerdesign.ipo@nic.in, which are responded back very promptly.
  1.  Following is a snapshot of the specimen sheet for a granted Design Application:

We hope the above discussed guidelines would help the Applicants in filing Applications which do not receive formality or minor subject matter clarity rejections and this step would help bring down the overall Office Action percentage considerably from 90%. We would be happy to have more of such practices for the readers so that a stakeholder guideline can be prepared as a checklist for all future applications.

About the Author: Mr. Mohinder Vig, Senior Trademark Attorney in Institute of Intellectual Property Research & Development (IIPRD) and can be reached: iiprd@iiprd.com.

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