According to Section 39 of the Indian Patents Act, an inventor resident in India cannot file a patent application abroad (including a PCT application filed at the Indian Patent Office as the Receiving Office), or cause such an application to be filed outside India by his assignee without obtaining a Foreign Filing License or without first filing the application in India and then waiting for 6 weeks for any secrecy direction, before filing an application abroad.

Kindly note that the key criteria is residentship of inventors and not citizenship.

In a recent case, wherein Dell Products L.P., filed a writ petition before the Delhi High Court, the High Court determined that obtaining prior permission under Section 39 (Foreign Filing License) is mandatory for a resident in India before filing a PCT application with the Indian Patent Office as the Receiving Office.

(Under Sections 8(1) & 8(2) of the Act)

Non-compliance of Section 8(1) or 8(2) alone may be fatal during prosecution, or in an opposition or cancellation proceeding. The requirements under Section 8(1) and Section 8(2) must be complied with until grant of a patent on the Indian application.

According to Section 8(1) of the Act, only data particulars (Country, Filing Date, Application Number, Publication Number, Patent Number, Date of Grant) pertaining to all corresponding foreign applications (including divisional applications, patent of additions, continuation applications, continuation-in-part applications), and their updated/current status (e.g. Published, Under Examination, Granted, Opposed, Revoked, Refused, Withdrawn, Appealed, etc.), are required to be submitted at the Indian Patent Office within 6 months from the Indian filing date or within 6 months from the respective filing date of those foreign applications filed subsequent to the Indian filing.

Compliance of Section 8(2)

The Indian Patent Office now interprets the statutory requirement under Section 8(2) of the Act in a manner which is different from the way it used to prior to certain High Court and Intellectual Property Appellate Board (IPAB) decisions. Thus, even though the Act and the Rules with respect to Section 8 have not changed, interpretation and requirements to comply with such provisions have changed drastically.

Based on the recent decisions of the High Court and the IPAB, in order to comply with the statutory requirement of Section 8(2), we suggest the following, that requires the applicant to submit the minimal documentation to meet this statutory requirement thereby minimizing translation cost:

Granted Patents

• Submit copies of granted U.S. and European patents.
• In case of Non-English jurisdictions, if a patent has been granted, the English translation of the granted claims along with the bibliographic details indicating prior art references cited during the prosecution may be submitted. Prosecution documents and related correspondence are not required.

Pending Applications

Compliance with Section 8(2) requires the applicant to keep the Indian Patent Office informed about all the prior art references cited during prosecution of counterpart foreign patent applications and about claim amendments made to restrict the scope of the claims to overcome the objection against lack of novelty and/or inventive step in view of prior art documents. Hence such claim amendments and related correspondence may only be provided.

Not relevant

Any Search Report/Office Action/Examination Report where prior art documents have been cited which are not relevant for questioning, the novelty and/or inventive merit of the claimed subject matter and the claims have not been restricted in view of such prior art documents, such Search Report/Office Action/Examination Report and response and amendments filed thereto need not be submitted at the Indian Patent Office.

If one or more of the prosecution documents pertaining to corresponding foreign application(s) is/are submitted at the Patent Office before expiry of six months from the issuance of the FER, no petition will be required. However, if the Section 8(2) documents are submitted after expiry of six months from the date of issuance of the FER, a petition will be required to be submitted along with the prescribed official fee to condone the delay.

In the past, as a strategic measure, voluntary divisional applications were filed with claims which were identical to the claims pending for the parent application to gain time for obtaining a patent on the claimed subject matter.

However, according to the recent stand of the Indian Patent Office and in view of the recent decisions by the Intellectual Property Appellate Board (IPAB) on this issue, no a divisional application cannot be filed voluntarily with claims identical to, or not patentably distinct from, those of the parent application in order to maintain patent rights. A divisional application can be filed only if there is a situation of lack of unity of invention in the parent application with claims which relate to a different inventive concept to those being pursued in the parent case. If there is plurality of inventions in the parent application, the applicant may either voluntarily file a divisional application with claims which are patentably distinct from the parent application but disclosed in the original disclosure, or may file a divisional application to meet the objection raised by the Examiner/Controller of the Patent Office on the ground of lack of unity of invention. Under no other circumstances may an applicant may file a divisional application, and the Indian Patent Office is now refusing to admit/allow divisional applications which have been filed with claims identical to the parent application maintain patent rights.

A divisional application cannot be filed after grant of a patent on the parent application. One or more divisional application(s) proposed to be filed to meet the objection on the ground of non-unity of invention OR voluntary divisional applications with the claims relating to distinct inventions (and if divisional applications have been filed in parallel jurisdictions with the said set of distinct claims) must be filed when the parent application is pending. Hence, it is advisable to file divisional applications before filing a response to the First Examination Report (FER). If a hearing has been fixed in any application, it is recommended to file one or more divisional application(s) soon after discussions with the Controller at the hearing or before filing written note of arguments subsequent to attending the hearing.

It is usual practice of the Indian Patent Office to schedule formal Hearings after the expiry of the final last date for putting an application in order for grant, wherein numerous technical/substantive and formal objections are again raised/maintained.

The final last date expires after 6 months from the date of issuance of the First Examination Report (FER), or 9 months if extension is taken, on the application and during this prosecution period, the Patent Office may issue more than one Examination Report. However, in the recent past, it has been observed that instead of issuing a second or a third Examination Report, the Patent Office is issuing Hearing Notices for most of the applications after the expiry of the last date, or sometimes even before the expiry of the last date, but after filing response to the First Examination Report.

Filing an annual Statement of Working for all granted patents is not a new requirement and has always been a part of the Indian Patents Act 1970 (since 1975). Our office has been filing such statements on behalf of patentees since 1976.

The above provision of the Indian Patents Act is a peculiar and perhaps a unique controversial requirement.

We clarify below this provision and its implications:

• According to Section 146(2) read with Rule 131 of the existing Patents Act and Rules, a Statement of Working of the patented invention on a commercial scale in India has to be filed by 31 March each year for the preceding calendar year (January to December). A Working Report has to be filed for all granted Patents, even if the patent has been granted in the last six months. The onus of filing a Working Report lies with the Patentee.
• A Working Report is required to be filed only after a Patent is granted.
• Filing of a Working Report is a statutory requirement.
• A Working Report has to be filed even if there has been no commercial exploitation of the patent.
• Non-filing of the Working Report does not result in revocation of the Patent. However, non-filing of Working Statements under Section 146(2) can result in imposition of fine under Section 122(1)(b) which may extend to Rupees One million (USD 15,800). If any person submits false information then it may result in the imposition of fine as well as imprisonment, which may extend to 6 months under Section 122(2). The imposition of fine under Section 122(2) is not strictly enforced. However, in some situations competitors and rivals have used this route to harass patentees, and even to block enforcement of the patent on this ground.

“Design” means only the features of shape, configuration, pattern, ornament or composition of lines or colours applied to any article whether in two dimensional or three dimensional or in both forms, by any industrial process or means, whether manual, mechanical or chemical, separate or combined, which in the finished article appeal to, and are judged solely by the eye, but does not include any mode or principle of construction or anything which is in substance a mere mechanical device, and does not include any trade mark as defined in clause (v) of sub-section (1) of section 2 of the Trade and Merchandise Marks Act, 1958 or property mark as defined in section 479 of the Indian Penal Code or any artistic work as defined in clause (c) of section 2 of the Copyright Act, 1957.

“Article” means any article of manufacture and any substance, artificial, or partly artificial and partly natural; and includes any part of an article capable of being made and sold separately.

Stamps, labels, tokens and cards are not considered articles for the purpose of registration of a design because once the alleged design, i.e. ornamentation is removed, only a piece of paper, metal or like material remains and the article referred to ceases to exist. The article must have its existence independent of the designs applied to it. However, novel shapes of labels, tokens, card, etc., can be registered as designs.

Novelty in respect of designs is absolute. In order to meet novelty requirements the article should not have been published in India or in any other country. Novelty in India in respect of designs is lost if the product is published, sold or used within India or in any other country prior to the filing date, or where applicable the priority date, of the application for registration.

Any person claiming to be proprietor of a new or original design not previously published in any country, and which is not contrary to public order or morality, may apply for registration of such design to the Head Office of the Patent Office in Calcutta and in the Branch Offices of Indian Patent Office in Mumbai, Delhi and Chennai. However, design applications are examined, prosecuted and registered only in Calcutta (Kolkata) Head Office. In case of an application claiming priority, the application should be made by a person who made the application in the United Kingdom or any of the other convention countries or groups of countries that are members of inter-governmental organisations, or by his or her legal representative or assignee, within six months from the date of the convention application. [Convention countries include members of the Paris Convention and the World Trade Organisation].

In India, there is no provision to file a multiple design application. Separate applications have to be filed for designs which are similar but not same. Protection can be obtained for a design applied to an article in a particular configuration/state/position. Separate applications have to be filed for designs illustrating the article in different configurations/states.

In India divisional applications cannot be filed for designs. It is recommended to file the important variations in the first instance.

Application for registration of a design (Convention and non-Convention) under the new Designs Act, 2000, shall be filed on the prescribed form (Form 1 under the Designs Rules, 2001) accompanied by the prescribed fee.

A design may be registered in more than one class by making separate applications, and in respect of any or all of the articles in a prescribed class of articles.

Requirements for filing a design application remain as follows unless notified otherwise:

Four copies of drawings, photographs, tracings or specimens suitable for record, duly prepared or pasted on durable paper of A4 size should be filed in the Calcutta Patent Office, or Branch Offices of the Indian Patent Office in Mumbai, Chennai and Delhi, accompanied by the prescribed fee.

Secondly, the design should be shown as applied to the article and if one view of the article is not sufficient to properly show the design, different views such as side elevation, top view, bottom view, front view, rear view, or perspective views should also be filed. In case of textile designs with repeated surface pattern, each specimen should be of sufficient portion of the repeat in length and width and shall not be less than 5 inches by 4 inches or 13 centimetres by 10 centimetres, so as to clearly show at least one full repetition of the design.

Thirdly, the name, address and nationality of the applicant must be provided. A power of authority can be filed any time within six months of filing the application (no legalization is necessary). One general power of authority is sufficient for all applications by a particular applicant.

India became a member of the Paris Convention with effect from 07 December, 1998. Priority can be claimed by anyone who first filed applications in the United Kingdom or any of the other convention countries or groups of countries which are members of inter-governmental organisations. The list of convention countries including members of the Paris Convention and the World Trade Organisation will be notified separately. Priority cannot be claimed from an EPO/PCT application even if it designates one of the convention countries. Certified copy of the design first filed in a convention country is required for a priority application. It is preferable that a brief statement of novelty claimed for the design be endorsed on each copy of the design.

Where a design has been registered in respect of an article contained in a class, the application of the proprietor of the design to register it in respect of other article (s) in that class shall not be refused, nor the earlier registration invalidated, either on the ground of novelty, or on the ground of publication, by reason only that it was previously registered, provided that such subsequent registration shall not extend the period of copyright in the design beyond that arising from the previous registration.

Further, if any person applies to register in respect of an article, a design not substantially different from a design previously registered by another person in respect of the same or some other article, and if at any time while the application is pending the applicant becomes the registered proprietor of the previously registered design, then the applicant shall be treated as the registered proprietor of the previously registered design from the time of making the application.

The Designs Rules, 2000, has notified the adoption of the International Classification for Goods.

1. Following an application for registration of a design, the application is numbered, dated and examined and defects (objections), if any, are communicated to the applicant.
2. The applicant should meet the official objections and put the application for the design in order for acceptance within six months from the date of application. The said period of six months may be extended for maximum three months under Rule 18 of the Designs Rules, 2001, as amended in 2008, with the prescribed fee before the expiry of the six months. When an application for registration of a design is in order, it will be accepted; on acceptance, a certificate of registration is issued to the applicant and the registration is recorded in the Register of Designs.
3. The Designs Rules, 2000, provides for the applicant or his agent to be “heard” by the Controller before the Controller takes the final decision for grant or refusal of a design. Appeal from the Controller’s decision will lie before the High Court.
4. The Controller has been empowered to make orders regarding substitution of applications at any time before a design has been registered on satisfactory submission, in the prescribed manner, of claims of joint applicants or rights of surviving applicant(s) by common consent or by operation of law.
5. On acceptance of the design in respect of an application, the Controller has also been empowered to cause publication of the particulars and registration of the design, and as notified in the Designs Rules, 2000, one or more view(s) of the design will be selected by the Controller for its publication in the Gazette, which in his opinion would best depict the design.

1. The Register of Designs is maintained by the Calcutta Patent Office as a statutory requirement. It contains the design number, the class number, date of filing (in India) and reciprocity date (if any), the name and address of the proprietor, and such other matters as would affect the validity or proprietorship of the design.
2. The Register of Designs is open to public inspection on payment of the prescribed fees, soon after the design is registered.
3. The registration of a design confers upon the registered proprietor copyright in the design for the period of registration. “Copyright” means the exclusive right to apply a design to any article belonging to the class in which it is registered.

The duration of registration of a design is initially ten years from the date of registration. The initial period of registration may be extended for a final period/term of five years on an application to the Controller before the expiry of the copyright, accompanied by the prescribed fee. Where a design has ceased to have effect by reason of failure to pay the prescribed fee for extension of copyright, the proprietor of the design or his legal representative or one or more of joint holders without joining the others, may, with the leave of the Controller, make an application for restoration of the design in the prescribed manner with the prescribed fee, within one year from the date on which the design ceased to have effect.

The registration of a design may be canceled on any of the following grounds:

1. that the design has been previously registered in India; or
2. that it has been published in India or in any other country prior to the date of registration; or
3. that the design is not a new or original design; or
4. that the design is not registrable under this Act; or
5. it is not a design as defined under clause (d) of section 2
   According to clause (d) of section 2
6. “design” means only the features of shape, configuration, pattern, ornament or composition of lines or colours applied to any article whether in two dimensional or three dimensional or in both forms, by any industrial process or means, whether manual, mechanical or chemical, separate or combined, which in the finished article appeal to and are judged solely by the eye; but does not include any mode or principle of construction or anything which is in substance a mere mechanical device, and does not include any trade mark as defined in clause (v) of sub-section (1) of section 2 of the Trade and Merchandise Marks Act, 1958 or property mark as defined in section 479 of the Indian Penal Code or any artistic work as defined in clause (c) of section 2 of the Copyright Act, 1957.

The application of a design or its fraudulent or obvious imitation to any article belonging to the particular class of goods in which the design has been registered for the purpose of sale or importation of such articles without the consent of the registered proprietor constitutes infringement of the design. Publishing such articles or exposing terms for sale with knowledge of the unauthorized application of the design also amounts to infringement of the design.  Under Section 22 of the Designs Act, 2000, during the existence of copyright in any design it shall not be lawful for any person:  If any person acts in contravention of this section, he or she shall be liable:  Suit for infringement of registered design cannot be instituted in any court lower than that of a District Judge, and, in the event of defence being taken by the defendant or alleged infringer on the grounds available for cancellation of registration of the concerned design, the proceedings shall be transferred to the High Court for decision.

It is not compulsory that an article to which a registered design has been applied be marked by the registered proprietor. However, it is advantageous to the registered proprietor to mark the articles so as to indicate the registered design number (except in the case of textile designs and in respect of articles made of charcoal dust which are brittle). Otherwise, as is the case with patents, a registered proprietor would not be entitled to claim damages from any infringer unless it can be shown that all proper steps to ensure the marking of the article were taken, or unless it can be shown that the infringement took place after the infringer knew or had received notice of the existence of the copyright in the design. An infringer who has proceeded on the basis of a report from the Patent Office that no registration subsists in respect of a particular design and is later held as infringing copyright for the said design can plead as an innocent infringer and get relief from damages.

Anyone contravening the copyright in a design is liable to pay for every offence a sum not exceeding Rs.25,000/- to the registered proprietor, subject to a maximum of Rs.50,000/- in respect of any one design. The registered proprietor may bring a suit for the recovery of the damages for any such contravention and for an injunction against repetition of the same.

1. The design has been previously registered in India;
2. The design has been published in India or in any other country prior to the date of registration;
3. The design is not a new or original design; or
4. The design is not registrable under the provisions of the Designs Act, 2000;
5. No suit or other proceedings can be commenced in respect of piracy of a registered design, if committed between the date on which the registration of the design ceased to have effect and the date of restoration of the design.