1b) Explain procedure for obtaining a patent for an invention.

Ans:Step 1: Write down the invention (idea or concept) with as much details as
possible
Collect all the information about your invention such as:

Area of invention

Description of the invention what it does

How does it work

Advantages of the invention

Ideally, if you have worked on the invention during research and development phase
you should have something call lab record duly signed with date by you and respective
authority.

Step 2: include drawings, diagrams or sketches explaining working of

invention
The drawings and diagrams should be designed so as to explain the working of the
invention in better way with visual illustrations. They play an important role in patent
application.

Step 3: check whether the invention is patentable subject matter

All inventions may not be patentable, as per Indian patent act there are certain
inventions that are not patentable explained in detail in (inventions not patentable)

Step 4: Patentability search

The next step would be finding out whether your invention meets all patentability criteria
as per Indian patent act? That is,

Novelty

Non-obviousness

Industrial application

Enabling

The detailed explanation for patentability criteria is given here (what are patentability
criterias)
The patentability opinion is provided by the patent professionals up on conducting
extensive search and forming patentability report.

Step 4: Decide whether to go ahead with patent

The patentability report and opinion helps you decide whether to go ahead with the
patent or not, chances are what you thought as novel might already been patented or
know to public in some form of information. Hence this reports saves lots of time, efforts
and cost of the inventor by helping him decide whether to go ahead with the patent
filing process or not.

Step 5: Draft (write) patent application

In case you are at very early stage in the research and development for your invention,
then you can go for provisional specification. It gives following benefits:

Secures filing date

12 months of time to file complete specification

Low cost

After filing provisional application, you secure the filing date which is very crucial in
patent world. You get 12 months of time to come up with the complete specification, up
on expiry of 12 months your patent application will be abandoned.
When you complete the required documents and your research work is at level where
you can have prototype and experimental results to prove your inventive step you can
file complete specification with patent application.
Filing the provisional specification is the optional step, if you are at the stage where
you have complete information about your invention then you can directly go for
complete specification.

Step 6: Publication of the application

Up on filing the complete specification along with application for patent, the application
is published after 18 months of first filing.
An early publication request can be made along with prescribed fees if you do not wish
to wait till the expiry of 18 months from the date of filing for publishing your patent
application.
Generally the patent application is published within a month form request form early
publication.

Step 7: Request for examination

The patent application is examined only after receiving request for examination that is
RFE. Up on receiving this request the controller gives your patent application to a
patent examiner who examinees the patent application with different patentability
criteria like:

Patentable subject matter

Novelty

Non-obviousness

Inventive step

Industrial application

Enabling

The examiner creates a first examination report of the patent application upon
reviewing it for above terms.
This is called patent prosecution. Everything happening to patent application before
grant of patent is generally called as patent prosecution.
The first examination report submitted to controller by examiner generally contains
prior arts (existing documents before the date of filing) which are similar to the claimed
invention, and same is reported to patent applicant.

Step 8: respond to objections

Majority of patent applicants will receive some type of objections based on examination
report. The best thing to do it analyze the examination report with patent professional
(patent agent) and creating a response to the objections raised in the examination
report.
This is a chance for an inventor to communicate his novelty over prior arts found in the
examination report. The inventor and patent agent create and send a response to the
examination that tries to prove to controller that his invention is indeed patentable and
satisfies all patentability criterias.

Step 9: clearing all objections

This communication between controller and patent applicant is to ensure that all
objections raised in the patent application are resolved. (if not the patent will not be
granted ) and the inventor has his fair chance to prove his point and establish novelty
and inventive step over existing prior arts.
Up on finding the patent application in order of grant, it is grant to the patent applicant
as early as possible.

Step 10: Grant of patent

The application would be placed in order for grant once it is found to be meeting all
patentability requirements. The grant of patent is notified in the patent journal which is
published time to time.
2b) Explain the concept of evergreening of patents.
Patent is a monopoly right given for a limited period to an inventor in return of his disclosure of
an invention that is new, useful and non-obvious product or process.
In India patents are granted for a maximum term of 20 years (provided it is maintained by
paying yearly fees). After the expiry the patent, the invention is free for use, manufacture, sell or
import.
However, there are patentees (mostly pharmaceutical companies) who attempt to extend this
monopoly right beyond the period of 20 years. When the term of patent is about to end these
companies make trivial /insignificant variations to the existing patented invention and files for new
patent, thus extending their monopoly. This is called evergreening of patent.

In many cases, generic products are available in the market once the patent expires. With these
generic products from different companies, a competition in the market sets in. This results in
lowering of price of the product.
Evergreening of patents do not allow the price of a product coming down due to extension of
monopoly of the patentee.
In India, section 3(d) of the Patent Act, 1970 do not allow
-mere discovery of a new form of a known substance (without enhanced efficacy) or
-mere discovery of any new property for a known substance or
-mere discovery of new use for a known substance or
-discovery of mere use of a known process, machine or apparatus.
This is a section incorporated in The Patent Act to initiate resistance to evergreening of patents.
Thus, evergreening of patents are not be easy in India (in contrast to many other countries).
This brings in a relief for poor patients who depend on life saving drugs. It also helps in keeping the
price of essential drugs within the reach of common people.

Radhika Shukla
Bangalore Institute of
Legal Studies

Trademark Infringement and Remedies

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A trademark is a symbol in the form of a word. It is a device or a label which is

applied to articles of commerce with a view to stipulate the customers that the particular article is a good
manufactured or otherwise dealt in by a particular person as distinguished from similar goods manufactured or dealt
by other persons. A trademark identifies the product of its origin and guarantees of its unchanged quality. A
trademark advertises the product and distinguishes it from others. A trademark is a word, phrase, symbol or design,
or combination of words, phrases, symbols or designs is used in the course of trade which identifies and

distinguishes the source of the goods or services of one enterprise from those of others. A trademark is different
from a copyright or a patent or geographical indication. A copyright protects an original artistic or literary work; a
patent protects an invention whereas a geographical indication is used to identify goods having special
characteristics
originating
from
a
definite
territory.
Almost all jurisdictions including India employ a classification system in which goods and services have been
grouped into classes for registration. Most countries follow the same classification system, namely the International
Classification of Goods and Services, which consists of 34 classes of goods and 8 classes of services. (The WIPO
recently revised the Nice Classification, adding three service classes (43, 44, and 45) and restructuring Class 42,
retaining certain services. This provision has not yet been implemented in India).For example, printed matter,
newspaper and periodicals are classified in Class 16 while services in the field of publication comes under Class
41.The registration of a trademark confers on the registered proprietor of the trademark the exclusive right to use
the trademark in relation to the goods or services in respect of which the trademark is registered. While registration
of a trademark is not compulsory it offers better legal protection for action for infringement. Any person can apply
for registration of a trademark to the Trademark Registry under whose jurisdiction the principal place of the
business of the applicant in India falls. In case of a company about to be formed, anyone may apply in his name for
subsequent assignment of the registration in the company's favor.Before making an application for registration it is
prudent to make an inspection of the already registered trademarks to ensure that registration may not be denied in
view of resemblance of the proposed mark to an existing one or prohibited one. An application for trademark may
be made on Form TM-1 with prescribed fee of Rs. 2500/- at one of the five office of the Trade Marks Registry
located at Mumbai, Delhi, Kolkata, Chennai and Ahmedabad depending on the place where the applicant resides or
has his principle place of business. The application is examined to ascertain whether it is distinctive and does not
conflict with existing registered or pending trademarks and examination report issued. If it is found be acceptable
then it is advertised in the Trade Marks Journal to allow others to oppose the registration. If there is no opposition or
if the opposition is decided in favor of the applicant then the mark is registered and a certificate of registration is
issued. If the applicant's response does not overcome all objections, the Registrar will issue a final refusal. The
applicant may then appeal to the Intellectual Property Appellate Board, an administrative tribunal. A common
ground for refusal is likelihood of confusion between the applicant's mark with registered mark or pending prior
mark. Marks, which are merely descriptive in relation to the applicant's goods or services, or a feature of the goods
or services, may also be refused registration. Marks consisting of geographic terms or surnames may also be
refused. Marks may be refused for other reasons as well. The term of a trademark registration is for a period of ten
years. The renewal is possible for further period of 10 years each. Unlike patents, copyrights or industrial design
trademark rights can last indefinitely if the owner continues to use the mark. However, if a registered trademark is
not
renewed,
it
is
liable
to
be
removed
from
the
register.
Anyone who claims rights in a mark can use the TM (trademark) or SM (service mark) designation with the mark to
alert the public of the claim. It is not necessary to have a registration, or even a pending application, to use these
designations. The claim may or may not be valid. The registration symbol, (R), may only be used when the mark is
registered.
Indias obligations under the TRIPS Agreement for protection of trademarks, inter alia, include protection to
distinguishing marks, recognition of service marks, indefinite periodical renewal of registration, abolition of
compulsory licensing of trademarks, etc. India, being a common law country, follows not only the codified law, but
also common law principles, and as such provides for infringement as well as passing off actions against violation
of trademarks. Section 135 of the Trade Marks Act recognizes both infringement as well as passing off actions.
Trademark Infringement And Remedies

Trademark infringement is a violation of the exclusive rights attaching to a registered trademark without the
authorization of the trademark owner or any licensees (provided that such authorization was within the scope of the
license). Infringement may occur when the infringer (i.e. the person doing the infringing act), uses a trademark

which is identical or confusingly similar to a registered trademark owned by another person, in relation to products
or services which are identical or similar to the products or services which the registration covers. The owner of
such
registered
trademark
may
commence
legal
proceedings
against
the
infringer.
A trademark which is not registered cannot be infringed as such, and the trademark owner cannot bring
infringement proceedings. Instead, the owner can commence proceedings under the common law for passing off or
misrepresentation, or under legislation which prohibits unfair business practices. In some jurisdictions, infringement
of trade dress may also be actionable. To establish infringement with regard to a registered trademark, it is
necessary only to establish that the infringing mark is identical or deceptively similar to the registered mark and no
further
proof
is
required.
Trademark infringement is an infringement of exclusive rights attaching to a trademark without the authorization of
the trademark owner or any licensee. Trademark infringement typically occurs when a person uses a trademark
which may be either a symbol or a design, with resembles to the products owned by the other party. The trademark
owner may begin an officially permitted proceeding against a party, which infringes its registration. There are two
types of remedies are available to the owner of a trademark for unauthorized use of its imitation by a third party.
These remedies are an action for passing off in the case of an unregistered trademark and an action for infringement
in case of a registered trademark. An infringement action and an action for passing off are quite different from each
other, an infringement action is a statutory remedy and an action for passing off is a common law remedy
In case of infringement / passing off trademark, a criminal complaint can also be filed. It may be noted that under
the Provisions of the Trade Marks Act, 1999, the offences under the Act are Cognizable, meaning there by that
police can register an FIR (First Information Report) and prosecute the offenders directly.
Civil remedies in Trademark:

#
Injunction/
stay
against
the
use
of
the
trademark
#
Damages
can
be
claimed
#
Accounts
and
handing
over
of
profits
# Appointment of local commissioner by the court for custody/ sealing of infringing material / accounts
# Application under order 39 rule 1 & 2 of the CPC for grant of temporary / ad interim ex-parte injunction
The Courts can grant injunction and direct the custom authorities to withhold the infringing material / its shipment
or prevent its disposal in any other manner, to protect the interest of the owners of intellectual property rights. This
legal proposition can be enforced with / without involving the concerned authorities as a party in the suit.
The relief which a court may usually grant in a suit for infringement or passing off includes permanent and interim
injunction, damages or account of profits, delivery of the infringing goods for destruction and cost of the legal
proceedings.
The order of interim injunction may be passed ex parte or after notice. The Interim relief's in the suit may also
include
order
for:
(a) Appointment of a local commissioner, which is akin to an Anton Pillar Order, for search, seizure and
preservation
of
infringing
goods,
account
books
and
preparation
of
inventory,
etc.
(b) Restraining the infringer from disposing of or dealing with the assets in a manner which may adversely affect
plaintiffs ability to recover damages, costs or other pecuniary remedies which may be finally awarded to the
plaintiff.