International Reports - More Updates

LexOrbis

13 Sep 2017
Employing border security measures to protect intellectual property in India

The main motive behind registering IP rights with the customs authorities is not only to ensure that rights holders incur no losses from the import of infringing goods, but also to guarantee that India as a country does not strengthen the counterfeiting industry. Full text

06 Sep 2017
Directions on systematic issuance of certified copy of trademark records

Under trademark law, certified copies are particularly significant, as such documents are admissible as evidence in court. However, the proper use of this machinery cannot be performed by either party unless a robust system of proper record maintenance is in place. Full text

30 Aug 2017
Revised CRI guidelines and patentability of algorithms

The Delhi High Court, the Intellectual Property Appellate Board and the Indian Patent Office have drafted various additional requirements for the exclusions under Section 3(k) of the computer-related invention guidelines. Full text

02 Aug 2017
Latest guidelines for examination of computer-related inventions

Examiners and controllers are obliged to abide by new guidelines while examining patent applications involving computer-related inventions. Their approach when issuing examination reports or granting or rejecting patents to computer-related inventions will be determinative. Full text

26 Jul 2017
An Indian perspective on the valuation of intellectual property

The term 'valuation' refers to the assessment of technology in regard to market requirements for a business. In India, as elsewhere around the world, this issue cannot be underestimated in relation to intellectual property, where valuation plays a crucial role in determining the genuine need for technology and how likely the customer is to adopt it. Full text

19 Jul 2017
Role of central and state police in IP rights enforcement

Intellectual property can be protected efficiently with the help of law enforcement authorities. In India, various steps have recently been taken to strengthen IP enforcement: anti-counterfeiting and anti-piracy activities have been carried out vigorously by various law enforcement agencies, including the central and state police forces across the country. Full text

12 Jul 2017
The concept of inventive step in India

The assessment of inventive step plays a critical role in deciding the fate of a patent application. The various tests for assessing obviousness take into account the nature of the invention, the current state of the art and whether the invention would be obvious to a person skilled in the art. Full text

05 Jul 2017
Clerical error fixed in time not fatal

The likelihood of a clerical error in patent application follow-up proceedings is higher when the applicant or agent is dealing with many applications at the same time. A recent Delhi High Court judgment provides some relief to applicants in such cases. Full text

21 Jun 2017
Fair use of trademarks on parts, accessories and ancillary products

The fair use of brands by third-party manufacturers of genuine parts which are intended to be ancillary or used as an accessory to the core goods of another party is a much-debated topic. It has both legal implications and high-stakes commercial ramifications in the manufacturing sector. Full text

07 Jun 2017
Taking the divisional route – a trademark perspective

The past few years have witnessed a remarkable upsurge in trademark filings. However, when an individual or entity files a trademark application, a common dilemma is whether to file a multi-class application or single-class applications for the different classes of goods or services. Full text

31 May 2017
IPO rules no time extension for lapse on part of former agent

A recent Indian Patent Office order rejected a petition for condonation of delay filed under Rule 137 of the Patent Act 1970 by a patent agent on behalf of the applicant. The petition was filed based on a lack of knowledge of the issuance of the first examination report and the non-receipt of communications from the previous patent agent about the issuance of that report. Full text

17 May 2017
Cipla v Novartis: import qualifies as working of patent

The Indian pharmaceutical industry is a major manufacturer of cost-effective generic drugs and is set to become the leading exporter of generic pharmaceutical products. However, recently the Indian pharmaceutical industry has seen several landmark judgments which will have a far-reaching effect on Indian pharma players, as well as international pharma giants.    Full text

10 May 2017
Combating counterfeiting

Parallel to the growth in innovation across many industries, counterfeiting has also increased and now affects all spheres of work, from literary to musical, and all types of goods, from agricultural to industrial. To combat this surge in counterfeiting, various remedies are available to rights holders under Indian law. Full text

03 May 2017
Examining the credibility of an invention

At present, most patent applications are examined based on their specification, without asserting the limitations of the claims. This raises issues for the credibility of the applicant's rights.  Full text

26 Apr 2017
Uncertainty remains over scope of value added products and biological resources

In recognition of India's rich biodiversity, the Biological Diversity Act 2002 is designed to help promote the sustainable use of its components, as well as fair and equitable sharing of the benefits arising from the use of biological resources and knowledge. Full text

19 Apr 2017
Britannia v ITC: the battle for blue

The Delhi High Court Division Bench recently shed some light on the enforcement of colour marks in a trade dress passing-off case. The case is groundbreaking not only because of the well-reasoned and lucid judgment, but also because the division bench upheld the appeal when the appellate court would normally not be justified in interfering with the order of a single judge. Full text

12 Apr 2017
Continuing uncertainty over divisional patent system

At present, there is divergence between the letter and spirit of national and international legislation pertaining to divisional applications on the one hand, and the majority of adjudications carried out by the Indian Patent Office and the IP Appellate Board on the other. Full text

05 Apr 2017
Decrypting the legislative intent behind the software patents ban

Section 3(k) of the Patents Act proscribes the patentability of computer programs per se. This report decrypts the legislative intent behind this by examining the pages of history, particularly parliamentary debates and related events. Full text

15 Mar 2017
Section 3(d) of the Patents Act: interpretation continues to remain subjective

The government has recently taken several measures to strengthen the procedure of the IP offices and make them more transparent, including by amending the Patents Rules 2003 through the Patents (Amendment) Rules 2016, which set out the foundations for expediting, streamlining and strengthening patent protection in India to bring it into line with its global counterparts. Full text

08 Mar 2017
Compulsory licensing: law, challenges and strategies

The compulsory licensing provision is one of the most widely debated provisions of the Patents Act 1970 as it concerns the grant of a compulsory (manufacturing) licence for a patented drug based on its lack of availability or affordability to the general public. Full text

22 Feb 2017
De-coding the law: nature of claim amendments allowed in India

Most patent applications in India are granted after making amendments to the patent claims; there are few cases in which patent applications are allowed with no claim amendments. However, due care must be taken while amending claims so as to avoid violating Section 59(1) of the Patents Act. Full text

15 Feb 2017
Reducing excess claims during PCT national phase entry in India

Amendments to the Patent Rules allow applicants to delete claims at the time of PCT national phase entry in India without having to pay additional fees. However, there are questions over whether this will sidestep the need for a request for voluntary amendments given that many deletions involve claim mergers. Full text

08 Feb 2017
Expedited examination of patent applications

Due to its huge backlog, the Indian Patent Office is now examining patent applications filed at least four years ago. Until 2016 there was no straightforward way of expediting the examination of patent applications in India, but the patent rules have now been amended to allow this. Full text

01 Feb 2017
Software patent application drafting practices post-CRI examination guidelines

Drafting a patent application, including the claims and specification, is generally considered to be an art rather than a skill because no set guidelines govern the process. This report outlines preferred practices for drafting software patent applications in view of a guideline for examining patent applications related to computer-related inventions published by the Indian Patent Office. Full text

18 Jan 2017
Patenting an idea: importance of a prior art search

It is generally advisable to carry out a prior art search before beginning the patenting process. Based on the findings of the prior art search, the novel and inventive features of the invention can be identified clearly, and a decision can be made regarding the jurisdictions in which to file. Full text

11 Jan 2017
Impact of revised guidelines for examination of computer-related inventions

The patenting of computer-related inventions (CRIs) has long been a hotly debated subject, and in response last year the Indian Patent Office issued new guidelines for the examination of CRIs. But what impact have the new guidelines had on the grant rate of CRI-related patent applications? Full text

21 Dec 2016
New developments in divisional patents

In general, if the parent application does not have multiple independent claims but a divisional application has been filed based on subject matter disclosed in the specification, the controller will not allow a divisional application. However, there has been a new positive development in this direction. Full text

14 Dec 2016
On-shelf versus in-use claims

Two types of patent claim exist: on-shelf claims and in-use claims. As there are many ongoing suits against manufacturers, it is imperative to determine whether the claims therein are on-shelf or in-use claims. Full text

07 Dec 2016
Implications of post-dating provisional patent applications

If a patent applicant needs more than the prescribed period to file a complete specification, an applicant may post-date a patent application, accompanied by a provisional specification. However, an applicant must carefully consider the consequences before requesting a shift in the priority date. Full text

30 Nov 2016
The real meaning of 'efficacy'

Although efficacy was introduced into Section 3(d) of the Patents Act as a powerful testing tool for patentability to prevent evergreening, its definition has presented many challenges to applicants where therapeutic efficacy is expected for inventions or products unrelated to drugs. Full text

23 Nov 2016
Cost-cutting measures in commercial exploitation of patents in India

Commercial exploitation of patents is crucial for companies and research institutes, as significant costs can be incurred in prosecuting, maintaining and litigating patent portfolios. However, several provisions are available to reduce expenses when commercially exploiting patents in India. Full text

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Issue 85