Designs

As per the provisions of The Designs Act, 2000, a design means:  

• feature of shape, configuration and pattern, ornamentation or composition of lines or colors applied to an article by industrial process, which in the finished form appeals to and is judged solely by the eye;
• may be in two or three dimensional or in both forms; or
• capable of being produced by industrial process.

However, a design does not include:  

• mode or principle of construction of the article on which design is applied; or
• trademark or property mark; or
• artistic work.

The following designs are not registrable in India:

• not new or original;
• already disclosed to the public;
• not significantly distinguishable from known designs or combination of know designs; and
• contain scandalous or obscene matter.

A design is considered to be new:

• when it has not been disclosed to the public anywhere in India or in any other country by publication or by use or in any other way, prior to the date of earliest priority or date of filing; and 
• when it is significantly distinguishable from known designs or combination of known designs.

Original in relation to a design means-

• originating from the author of design; and
• designs which are old in themselves are yet new in their application. For example, a car is for driving and commuting. A bag created in a design of a car, which is used for carrying stuff, can be considered as original and registrable as design in India. 

An application for registration of a design can be filed by any person claiming to be a proprietor of a new or original design applied on an article. The proprietor could be:

• an author of the design;
• an exclusive assignee of the design;
• original proprietor of the design jointly with another person to whom rights have been transferred.

The representations of the article should be in one format and these can be drawings, photographs or computer graphics. It is advisable to include a perspective view, front view, back view, right side view, left side view, top view and bottom view of the article on which the design is applied along with the application for design registration.

An application for registration of design can be filed at any branch of the Indian Patent Office (IPO). However, further processing and prosecution of the Design Application takes place at Kolkata Branch of IPO.

Ordinary Application

When an application for registration of a design is filed with the Indian Patent Office, without claiming any priority. Such applications are called as Ordinary Applications.  

Priority Application

When an application for design registration is filed with the Indian Patent Office, claiming priority from already filed design application(s) filed in a convention country or group of countries or inter-governmental organizations is called priority application.  

The priority design application is required to be filed within 6 months from the date of earliest priority application. The said time limit is not extendable.

In case of priority applications, it is mandatory for the applicant to furnish the original certified copy of the priority document along with the application or within extended time limit of 3 months from the date of filing of the application. A separate request is required to be filed for seeking extension of time limit.

Further, verified English translation of the priority document is required to be furnished if it is in language other than English.  

The applicant has no provision related to filing of request for examination. The design applications are directly taken for examination by the patent office.

Like other IP Rights, copyright in the design is territorial in nature i.e. enforceable in countries where design is registered. Therefore, an application is required to be filed in countries and have a design registration as per the national laws of those nations

Copyright in the design subsists for 10 years from the date of registration. This period can be extended by another 5 years upon a request for extension of copyright filed by the registered proprietor before the expiry of the original period of 10 years.

The process of design registration normally takes around 6 to 9 months. However, it may get extended under certain circumstances. It is pertinent to note that design registration is considered to be the quickest IP right a proprietor gets, among all other such rights.

Any person interested may file a petition for cancellation of a registered design on the prescribed Form. The petition for cancellation of registered design can be filed on the following grounds:

• design has been previously registered in India;
• it has been published in India or in any other country prior to the date of its registration;
• design is not new or original;
• design is not registrable under the Indian Designs Act; and
• it is not a design as defined under the Indian Designs Act. 

An application for restoration can be filed within 12 months from the date on which a registered design ceased to have effect due to non-payment of fees for extension of copyright (or renewal fee) with the Indian Patent Office.

Any person aggrieved on the following grounds may file a request for rectification of register of designs:

• non-insertion or omission of any entry;
• entry made without sufficient cause;
• entry wrongly remaining on the register; or
• error or defect in any entry.

As per the requirements of the Indian Designs Act, the proprietor has to mark REGISTRED, REGD., RD or Registration No. on the article for which design is registered before delivery on sale.

The Indian patent system has provisions of differential official fee for applicants belonging to different categories. The applicable official fee for the small entities and startups is substantially less than for other entities. The applicant has to provide necessary documents for claiming the official fee benefit.

An applicant for a patent can file a request for adjournment of hearing with reasonable cause. Such request is required to be filed at least 3 days before the date of hearing. The applicant can file 2 requests for adjournments with applicable official fee. However, it is discretionary power of the Controller to accept such requests.

The term of a patent is 20 years from the application filing date or date of entering the PCT International Phase, provided that the renewal/annuity fee is paid every year before the expiry of due date or within the extended period (maximum 6 months).

The patent will lapse or cease to exist in case patent renewal/annuity is not paid within the prescribed time limit or extended period.

If, a patent lapsed or ceased to have effect due to non-payment of renewal/annuity can be restored or reinstated by filing a request for restoration of patent within 18 months from the date on which patent is lapsed. The request for restoration is published in the official journal of the Patent Office, when the Controller is satisfied that failure to pay the renewal/annuity was unintentional. Any person interested, may file a notice of opposition to restoration of patent within 2 months from the date of such publication.

Yes, the applicant or patentee can assign rights or interests in the application or patent by way of executing assignment or agreement between the Assignor (applicant or patentee) and Assignee.

In order to enforce such agreements or assignments, it necessary for the Assignee to file a request for change in the proprietorship of the patent application or patent along with necessary documents in prescribed manner and official fee.

On the grant of a patent, it is mandatory for the Patentee and every Licensee (whether exclusive or otherwise) to furnish information related to working of the patented invention on commercial scale in India, with respect to every calendar year by 31st March of the following year or within prescribed time limit, if Controller directs to do so.

If patentee or licensee refuses or fails to provide information of working of the patented invention on commercial scale in India, he shall be punishable with fine which may extend to INR one million.

However, if patentee or licensee provides false information in this regard, he shall be punishable with imprisonment which may extend to 6 months, or with fine, or with both

Any person can file representation by way of Pre-Grant Opposition against grant of a patent, after publication of a patent application in the official journal of the Indian Patent Office. The permissible grounds of opposition are as follows:
a) wrongfully obtained;
b) prior publication / prior claim;
c) prior claim in India;
d) prior public knowledge or public use in India;
e) obviousness and lack of inventive step;
f) not an invention or the invention not patentable;
g) insufficient description of the invention;
h) failure to disclose information or furnishing false information relating to foreign filings;
i) convention application not filed within the prescribed time of 12 months;
j) incorrect mention of source/geographical origin of biological material; and
k) invention anticipated with regard to traditional knowledge of any community.

The Post-Grant Opposition can be filed any “person interested”, within 1 year from the date of publication of grant of a patent. The permissible grounds of opposition are as follows:
a) wrongfully obtained;
b) prior publication / prior claim;
c) prior claim in India;
d) prior public knowledge or public use in India;
e) obviousness and lack of inventive step;
f) not an invention or the invention not patentable;
g) insufficient description of the invention;
h) failure to disclose information or furnishing false information relating to foreign filing;
i) convention application not filed within the prescribed time of 12 months;
j) incorrect mention of source/geographical origin of biological material; and
k) invention anticipated with regard to traditional knowledge of any community

Foreign Filing License is a permission, which the applicant or inventor has to seek from the Indian Patent Office under the following circumstances:

• a person is residing in India during the development of an invention and wishes to file the patent application for the same invention first outside India; or
• applicant wishes to file a patent application for an invention outside India, before the expiry of 6 months from the date of filing of the patent application for the same invention in India.

In case the applicant fails to comply with the aforementioned mandates, he shall be punishable with imprisonment for a term which may extend to 2 years, or with fine, or with both.

Any person interested can file a request for compulsory license after expiry of 3 years from the date of grant of Patent in India. The grounds for compulsory license are as follows:
a) Reasonable requirements of public not met with respect to the invention;
b) Invention not available to the public at reasonably affordable price; and
c) Invention not worked in the territory of India.

The Indian patent system has provisions of differential official fee for applicants belonging to different categories. The applicable official fee for the small entities and startups is substantially less than for other entities. The applicant has to provide necessary documents for claiming the official fee benefit.