PROTECTION OF

PATENTS AND
TRADEMARKS
 Intellectual Property Rights
Intellectual property rights are statutory rights that once granted
allows the owners of the IP to exclude others from exploiting the
same commercially for a given period of time.
The Uruguay round on TRIPs ( Trade related Intellectual
property rights) covers seven intellectual properties
 Copyright
 Trademark
 Geographical Indications
 Industrial designs
 Patents
 Layout designs
 Undisclosed information, including trade secrets.

Source: Managing Intellectual Property – The Strategic

Imperative- Vinod V. Sople
Patent
DEFINITION:
An official document giving the holder of the patent sole right
to make, use or sell an invention and preventing others from
imitating it.

CRITERIA :
Novel
Useful
Non-obvious
Source: Managing Intellectual Property – The Strategic Imperative-
Vinod V. Sople
 Filing of Patent Application

Provisional Specification
Complete Specification

Publication
Publication (18 months)
Complete Complete (18 months) Request For
Specification Not Specification Examination
Filed Filed

First Examination
Abandoned Report

Objections Raised Grant

Filing of Reply Publication of Grant

12 months
Re - examination
Opposition Proceedings

Rejected Hearing
Overruled Successful

Source: www.indiajuris.com Patent Valid Patent Revoked

 Development Of Patent Law In
India
Patents and Designs protection Act, 1872

Protection and Inventions Act, 1883

Invention and Designs Act, 1888

Indian Patents and Designs Act, 1911

Indian Patents Act, 1970

The Patent Amendment 2005 (Third Amendment)

Source: Business Environment – Francis Cherunilam

 HBR Article – Patent Sharks
Patent Sharks – Entities that opportunistically or intentionally
profit from payments by companies that inadvertently infringe
on the sharks IP rights simply because they never even knew
those rights existed.
Preliminary injunctions – RIM Vs NTP.
Damages- Boston Scientific Vs Dr. Bruce.
SUGGESTION TO OVERCOME:
Cooperating with the competitors early in the R&D process.
Creating more modular designs
Fostering interdepartmental and intercompany cooperation.
Insignificant inventions should be avoided.

Source: Harvard Business Review, June 2008 – “Patent Sharks”- Joachim

Henkel and Markus Reitzig
 Trade Marks

Any word, name, symbol, or device, or any combination used,

in commerce to identify and distinguish the goods of one
manufacturer or seller from goods manufactured or sold by
others.

TYPES:
Trademark and Servicemark
Collective mark
Certificate Trademark

Source: www.tm-india.com
Types Of Protectable Marks

Arbitary or Fanciful Marks – APPLE, XEROX

Suggestive Marks – Bubble Wrap

Descriptive Marks – ELECTRONIC DATA SYSTEMS

Generic Mark – Cellophane, Aspirin

Source: Managing Intellectual Property – The Strategic
Imperative- Vinod V. Sople
Trademarks Varieties
Levi Strauss – Animals
McDonald’s – Building
Metro-Goldwyn-Mayer- Sound
National Broadcasting Corporation – Music
Flora Fragrance – Smell
Owen Corning – Color
Coca-Cola - Shape

Source: Managing Intellectual Property – The Strategic

Imperative- Vinod V. Sople
 Trademark Registration In India

Trade and Merchandise Act, 1958 has been repealed.

The Trade Marks Act, 1999.

OBJECTIVE:
Better protection of trademarks for goods and services.

Prevention of the use of fraudulent marks.

Source: Business Environment – Francis Cherunilam

 Filing of Application

Examination of Report
1 month
Filing of Reply

Hearing
Accepted

6 months
Refused/ Abandoned
Publication in Journal

4 months
Reply of notice/
Wait for Opposition Hearing
2 months
Opposition Disallowed

Registration of Trademark
Source: www.indiajuris.com
Reference
Books:
 Managing Intellectual Property – The strategic Imperative – Vinod V.
Sople
 Business Environment – Francis Cherunilam
Journal:
 Harvard Business Review, June 2008 – “Patent Sharks”- Joachim
Henkel and Markus Reitzig
Websites:
 www.tm-india.com
 www.tmpsearchers.com
 www.ipindia.nic.in
 www.indiajuris.com
THANK YOU