ISLAMIC REPUBLIC OF IRAN OFFERS MADRID E-FILING SERVICE.
Patent Invalidation & Invalidity Search.
CGPDTM’s notice in furtherance of Supreme Court’s order on Limitation.
India: President Promulgates Ordinance to Abolish IPAB.
The Ministry of Law and Justice on April 04, 2021 has issued an Ordinance namely, The Tribunals Reforms (Rationalisation and Conditions Of Service) Ordinance, 2021 to further amend the Cinematograph Act, 1952, the Customs Act, 1962, the Airports Authority of India Act, 1994, the Trade Marks Act, 1999 and the Protection of Plant Varieties and Farmers’ Rights Act, 2001 and certain other Acts[1]. The Ordinance has come into effect from April 04, 2021 itself.
Tribunal Reforms (Rationalisation and Conditions of Service) Bill, 2021
In the context of aforesaid Ordinance, it would be relevant to mention that on February 13, 2021 the Tribunal Reforms (Rationalisation and Conditions of Service) Bill, 2021, providing for the abolition of Appellate Tribunals under certain Statutes including the abolition of the IPAB (Intellectual Property Appellate Board) was introduced in the Lok Sabha[2].
The present Ordinance mentions that the said Bill could not be taken up for consideration and passing in the Lok Sabha as the Parliament was not in session. However, the President of India is now satisfied that circumstances exist and is of the view that immediate action shall be taken with respect to the Bill and hence has promulgated the present Ordinance.
Tribunals Abolished!!
- Appellate Tribunal under Cinematograph Act, 1952 (37 of 1952).
- Authority for Advance Rulings under Income-tax Act, 1961 (43 of 1961).
- Airport Appellate Tribunal under Airports Authority of India Act, 1994 (Act 55 of 1994).
- Intellectual Property Appellate Board under Trade Marks Act, 1999 (47 of 1999).
- Plant Varieties Protection Appellate Tribunal under Protection of Plant Varieties and Farmers’ Rights Act, 2001 (53 of 2001).
Section 15 of the Ordinance enumerating the Transitional Provisions, states that any person appointed as the Chairperson or Chairman or President or Presiding Officer or Vice-Chairperson or Vice-Chairman or Vice President or Member of the Tribunal, Appellate Tribunal, or, Authorities (as aforesaid) shall cease to hold Office from the notified date.
Fate of Proceedings and Appeals pending with the mentioned Tribunals including IPAB
With respect to any appeal, application or proceeding pending before the Tribunal, Appellate Tribunal or other Authorities as specified in the Schedule, the Ordinance provides that they shall stand transferred to the Court before which it would have been filed had this Ordinance been in force on the date of filing of such appeal or application and that the Court may proceed to deal with such cases from the stage at which it stood before such transfer, or from any earlier stage, or de novo, as the Court may deem fit.
Abolition of IPAB under the IP Acts
The amendments brought about by the Ordinance in the IP Acts are as under:
| IP ACT | AMENDMENT |
| PATENT ACT, 1970 | · Definition of “Appellate Board” under Section 2(1)(a) has been omitted.
· Definition under Section 2 clause (u), sub-clause (B) shall be omitted · Sections 52, 58, 59, 64, 76 and 113- Omits the words “Appellate Board” · Sections 71 – for the words “Appellate Board” and “Board”, words “High Court” shall be substituted
· Sections 116 and 117 shall be omitted
· Section 117A and 117E- for the words “Appellate Board”, wherever they occur, the words “High Court” shall be substituted.
· Sections 117B, 117C and 117D shall be omitted
· Sections 117F, 117G and 117H shall be omitted
· Section 151(1)- for the words “Appellate Board” wherever they occur shall be omitted
· Section 115(B)(3)- for the words “the Appellate Board or the courts, as the case may be”, the words “the courts” shall be substituted
· Section 159, in sub-section (2), clauses (xiia), (xiib) and (xiic) shall be omitted. |
| TRADE MARKS
ACT, 1999 |
· Definition- Under Section 2 clauses (a), (d), (f), (k), (n), (ze) and (zf)
· shall be omitted-
· Definition amended under Section 2(s)- “prescribed” means,— · in relation to proceedings before a High Court, prescribed by rules made by the High Court; and · in other cases, prescribed by rules made under this Act;’;
· Section 10- for the word “tribunal”, the words “Registrar or the High Court, as the case may be,” shall be substituted
· Section 26- for the word “tribunal”, the words “Registrar or the High Court, as the case may be,” shall be substituted
· Section 46, in sub-section (3), for the word “tribunal”, the words “Registrar or the High Court, as the case may be,” shall be substituted
· Section 47- for the words “Appellate Board”, at both the places where it occurs, the words “High Court” shall be substituted and in Section 47(ii)- for the word “tribunal”, wherever it occurs, the words “Registrar or the High Court, as the case may be,” shall be substituted;
· Section 55- in sub-section (1), for the word “tribunal”, the words “Registrar or the High Court, as the case may be,” shall be substituted;
· Section 57- For the words “Appellate Board”, wherever it occurs, the words “High Court” shall be substituted
· Section 71, in sub-section (3), for the word “tribunal”, the words “Registrar or the High Court, as the case may be,” shall be substituted;
· Chapter heading “APPEALS” shall be substituted and Sections 83, 84, 85, 86, 87, 88, 89, 89A and 90 shall be omitted;
· Section 91- for the words “Appellate Board”, wherever they occur, the words “High Court” shall be substituted
· Sections 92 and 93 shall be omitted
· In place of Section 94, the following section shall be substituted, namely: –– On ceasing to hold the office, the erstwhile Chairperson, Vice-Chairperson or other Members, shall not appear before the Registrar.”;
· Sections 95 and 96 shall be omitted;
· Sections 97 and 98- for the words “Appellate Board”, wherever they occur, the words “High Court” shall be substituted;
· Sections 99 and 100 shall be omitted;
· Section 113- for the words “Appellate Board”, at both the places where they occur, the words “High Court” shall be substituted
· Section 123, the words “and every Member of the Appellate Board” shall be omitted;
· Sections 124 and 125- for the words “Appellate Board”, wherever they occur, the words “High Court” shall be substituted
· Section 130, the words “the Appellate Board or” shall be omitted;
· Section 141- for the words “Appellate Board”, at both the places where they occur, the words “High Court” shall be substituted · Section 157, in sub-section (2),–– (i) clauses (xxxi) and (xxxii) shall be omitted;
· Section 157(2) (xxxiii)- for the words “Appellate Board”, the words “High Court” shall be substituted. |
| COPYRIGHT ACT, 1957 | · Section 2(i) clause (aa) shall be omitted; (ii) clause (fa) shall be re-lettered as clause (faa) and before the clause (faa) the following clause shall be inserted, namely: ––
· Insertion of Clause (fa) under Section 2 providing definition of “Commercial Court” as- for the purposes of any State, means a Commercial Court constituted under section 3, or the Commercial Division of a High Court constituted under section 4, of the Commercial Courts Act, 2015;
· (iii) for clause (u), the following clause shall be substituted, namely: –– · ‘(u) “prescribed” means, — · in relation to proceedings before a High Court, prescribed by rules made by the High Court; and · in other cases, prescribed by rules made under this Act;’;
· Section 6- for the words “Appellate Board”, wherever they occur, the words “Commercial Court” shall be substituted
· Under Chapter II, the Chapter heading, the words “AND APPELLATE BOARD” shall be omitted;
· Sections 11 and 12 shall be omitted;
· Sections 19A, 23, 31, 31A, 31B, 31C, 31D, 32, 32A and 33A- for the words “Appellate Board”, wherever they occur, the words “Commercial Court” shall be substituted;
· Section 50- for the words “Appellate Board”, wherever they occur, the words “High Court” shall be substituted;
· Section 53A- · for the words “Appellate Board”, wherever they occur, the words “Commercial Court” shall be substituted; · in sub-section (2), the words “and the decision of the Appellate Board in this behalf shall be final” shall be omitted; · (h) in section 54, for the words “Appellate Board”, the words “Commercial Court” shall be substituted;
· Amended Section 72- provides that any person aggrieved by any final · decision or order of the Registrar of Copyrights may, within three months from the date of the order or decision, appeal to the High Court.
· Sections 74 and 75- the words “and the Appellate Board”, shall be omitted
· Section 77, the words “and every member of the Appellate Board” shall be omitted;
· Section 78 clauses (cA) and (ccB) shall be omitted and in sub-section (2) (ii) (f)- the words “and the Appellate Board” shall be omitted. |
| PLANT VARIETIES AND FARMERS’ RIGHTS
ACT, 2001 |
· Under Section 2(i) clauses (d), (n) and (o) shall be omitted;
· (ii) for clause (q), the following clause shall be · substituted, namely:–– · ‘(q) “prescribed” means,— · in relation to proceedings before a High Court, prescribed by rules made by the High Court; and · in other cases, prescribed by rules made under this Act;’: · (iii) clauses (y) and (z) shall be omitted;
· Under Section 44, the words “or the Tribunal” shall be omitted; · (c) in Chapter VIII, for the Chapter heading, the Chapter heading “APPEALS” shall be substituted;
· Sections 54 and 55 shall be omitted;
· Section 56,–– o for the word “Tribunal”, wherever they occur, the words “High Court” shall be substituted; o sub-section (3) shall be omitted;
· Under Section 57,– (i) for the word “Tribunal”, wherever it occurs, the · words “High Court” shall be substituted;
· Sections 58 and 59 shall be omitted;
· Under Section 89, the words “or the Tribunal” shall be omitted. |
| GI Act | · Under Section 2, in sub-section (1), clauses (a)
· and (p) shall be omitted;
· Under Section 19 (b) for the word “Tribunal”, the words “Registrar or the High Court, as the case may be,” shall be substituted;
· Under Section 23, for the words “and before the Appellate Board before which”, the words “before whom” shall be substituted;
· Under Section 27, ––
for the words “Appellate Board”, wherever they occur, the words “High Court” shall be substituted; for the word “tribunal”, wherever it occurs, the words “Registrar or the High Court, as the case may be,” shall be substituted;
· Under Chapter VII, for the Chapter heading, the APPEALS” shall be substituted;
· Under Section 31 for the words “Appellate Board”, wherever they occur, the words “High Court” shall be substituted and sub-section (3) shall be omitted;
· Sections 32 and 33 shall be omitted;
· For the words “Appellate Board” in Section 34 wherever they occur, the words “High Court” shall be substituted;
· Section 36 shall be omitted;
· Under Sections 48,–– · for the words “Appellate Board”, at both the places where it occurs, the words “High Court” shall be substituted; · for the word “tribunal”, the words “Registrar or the High Court, as the case may be,” shall be substituted;
· Under Sections 57 and 58, for the words “Appellate Board”, wherever they occur, the words “High Court” shall be substituted;
· Under Section 63, the words “the Appellate Board or” shall be omitted;
· Under Section 72, for the words “Appellate Board”, wherever they occur, the words “High Court” shall be substituted;
· Under Section 75, for the word “tribunal”, the words “Registrar or the High Court, as the case may be,” shall be substituted;
· Under Section 87, in sub-section (2), clause (n) shall be omitted. |
Conclusion
The Ordinance brings about a dramatic transition in the IP landscape of India by abolishing the IPAB. The functions of the IPAB have majorly been transferred to the High Courts and the Commercial Courts have been given powers under the Copyright Act, 1957.
The Tribunal Reforms (Rationalisation and Conditions of Service) Bill, 2021 notified in February, 2021 had struck a cacophonous debate in the IP fraternity while highlighting the various the pros and cons of the abolition of IPAB. Undeniably the abolition of IPAB will have repercussions far and wide, however, time will only decide the consequences and impact of the same on the Indian IP regime.
[1] http://egazette.nic.in/WriteReadData/2021/226364.pdf
[2] http://164.100.47.4/BillsTexts/LSBillTexts/Asintroduced/19_2021_LS_Eng.pdf
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ISLAMIC REPUBLIC OF IRAN OFFERS MADRID E-FILING SERVICE.
Since March 15, 2021, the Iranian Intellectual Property Center has given access to the Madrid E-filing service to the trademark applicants via its website. The Islamic Republic of Iran becomes the first country in Asia and the Middle East to offer the Madrid e-Filing service to trademark users. The Islamic Republic of Iran had joined the Madrid Protocol with effect from December 25, 2003.
Madrid E-filing Services in Iran
With the adoption of the Madrid E-filing system by Iran on March 15, 2021, followed by Spain on March 16, 2021, the number of users of the E-filing system in the world has increased to 13 including the Benelux, Australia, Georgia, Austria, Lithuania, Estonia, Canada, the Republic of Moldova, Bulgaria, Iceland and Norway.
Madrid e-Filing service is Madrid System’s online interface for international applications which includes two distinct modules: an Applicant filing module (replacing the MM2 Form) and a customizable ‘Office of origin’ module for IP offices. This introduction of the Madrid e-filing service will enable brand owners in Iran, even in the most remote parts of the vast country of Iran and to millions of Persian speakers around the world, to access the easy and cost-effective Madrid’s E-filing service. The brand owners can file international applications, and the users will have direct access to the Madrid Goods & Services Manager to check the classification of the terms in their list of goods and services. Furthermore, the users will also be able to use the Madrid Goods & Services Manager tool in Persian, alongside the 24 other languages which are already available.
Another advantage of the e-filing system is that now the brand owners/applicants in Iran can receive and respond to the irregularities issued by WIPO electronically, thereby saving a significant amount of time in the processing of the irregularities by WIPO. Other key benefits of the Madrid e-filing system is that there are lesser application irregularities associated with manual data input since the Iranian IP Office’s database fills in the key information, it offers synchronized filing with the WIPO, further, users can check live application status displayed in the e-filing dashboard. The Madrid e-filing system is a simplified and user-friendly single service covering the whole registration process.
Steps for Madrid e-filing services
- The brand owners are required to log in the website of the Iranian Intellectual Property Center and select “Create an application for international registration”.
- The User is then required to enter the basic mark/application reference and check the fields prepopulated with data available from records of the Iranian Intellectual Property Center.
- Thereafter, the User is required to select the designated Contracting Parties and goods and services for which protection is sought.
- The next step is to update mark, holder, representative and language correspondence details.
- The user/applicant is required to pay the fees using a Current Account at WIPO, credit card or by bank transfer.
- Upon certification by the Iranian Intellectual Property Center and the confirmation of payment, the system sends the application directly to WIPO for registration.
- Once an application is received by WIPO, the Applicant responds to irregularity letters when necessary and thereafter, receives the international registration number.
Source: https://www.wipo.int/madrid/en/news/2021/news_0009.html
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Patent Invalidation & Invalidity Search
By Lucy Rana and Abin T. Sam
Globalization of the technologies has transformed the business setups into a fiercely competitive eco-system. Survival of the companies and organizations in this eco-system is dependent upon the constant technological developments to keep themselves in the marathon of providing the best technological solutions to users at the cheapest rates with maximum profits.
However, these constant technological developments are accompanied by the huge capital investment and returns on this huge investment is often not sure. The big companies can afford to bear such mammoth expenses due to their financial immunity.
Companies and Organizations with financial limitations are left behind in this eco-system and their chance of survival are often slim to none if they fail to deliver the better product at cheaper price with greater profits. Their weak financial status is majorly the biggest hurdle in developing superior product or service.
This is where an invalidity search comes to the rescue. Patent invalidation is a tool that can be used by any company, organization and individual to diminish the technological dominance of their competitor by invalidating their patents. Invalidity search along with Patent watch service are two tools that not only keeps an eye on the competitor’s technological developments but also, assist in diminishing their patents that have potential to harm your technological dominance and subsequent revenue generating potential. In this article we will discuss in depth about the significance of invalidity search and patent watch service, and their benefits.
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What exactly is an invalidity search?
Patent invalidation searches or opposition searches are conducted to identify the patent and non-patent literature(s) that can hamper the claims of an invention rendering them non-novel and obvious, thus killing the patent[1]. Invalidity search is an extensive search of relevant prior arts after the patent has been granted[2]. The main objective of the invalidity search is to identify the relevant prior arts that were overlooked by the examiner and has potential to invalidate the patent.
Invalidity search can also be used to validate the claims of a patent. The negative results of an invalidity search dictates that the patent has claims that holds novelty, has inventive steps, and does not fall under the statutory exception of patents. It also depicts the strength of the patent and establishes its solidity. A strong patent portfolio brings in the potential for revenue generation through licensing and it is also helpful at the time of company acquisition[3].
Patent invalidation search is different from the prior art search which is conducted at the earlier stages of patenting. Patent invalidity search focuses on the language of the claim rather than the overall concept and idea of the invention.
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Who should choose the invalidity search and when?
Establishing the market dominance in the field of technology is an expensive affair since, cost of developing the new technology along with the cost of patenting is gigantic. Prima facie the only option to achieve the monopolistic power in the business is by developing the new technologies. This is often not possible if the company or the individual is financially challenged. So, the next best option to the achieve the market dominance or monopoly in business is by killing or invalidating the patents of the competitor.
The invalidity search can be proved to be an effective tool in case of infringement suit, patent portfolio assessment and killing the competition in business.
- Patent Infringement Suit[4]:
Under the allegation of patent infringement, the alleged party (who is accused of infringement) can use the invalidity search in an attempt to invalidate or cancel the patent in question, thus rendering the allegation of infringement baseless. Invalidity search can help in invalidating the claims of the patents either by proving that claims are not novel or obvious in nature or falls under the statutory exceptions, by providing sufficient evidences of prior arts and subsequently the patent in question will be revoked.
In the other scenario, under the allegation of patent infringement, the alleged party can use the invalidity search to establish the fact that their invention is novel and non-obvious in nature thus it is not infringing the said patent.
The results of invalidity search holds great significance in the patent infringement suits, as not only it can be used to kill the patent in question but also it can also be used to save oneself from allegation of infringement.
- Patent Portfolio Assessment:
Invalidity or validity search can also be used to establish the strength of the patents. Invalidity search report stating the claims of a patent novel, non-obvious and the fact that they do not fall under any statutory exception of patents, establishes the strength of the patent and this makes the patent more valuable.
A patent grant certificate along with an invalidity search report stating the claims of the patent novel and non-obvious, are the strongest evidence of strength of a patent. A patent is likely to bring more value through licensing, if it is immune to any infringement suits and possess greater degree of novelty and inventive step (non-obvious in nature) and is less likely to be objected on the grounds that it falls under the statutory exceptions after it is granted[5].
Invalidity search can be used as a voluntary step by any company, organization or individual to assess the strength of its patents.
- Clearing the Competitive Field:
Patent invalidation search is an effective weapon when it comes to diminishing the patents of competitors. Invalidity search not only dictates whether the claims of a granted patent are non-novel and obvious in nature, but also whether it falls under the ambit of statutory exceptions for grant of patents such as, invention was already in use or available for sale or exhibited to public more than twelve months prior to filing the patent application, or the patent was obtained wrongfully or fraudulently[6].
The main aim here is to unearth the prior arts and facts that were overlooked by the patent office during the prosecution of said patent, which has potential to kill the granted patents of the competitors thus clearing the competitive business field.
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What is a Patent Watch Service?
A patent watch service or patent monitoring service relates to the process of monitoring and checking the newly filed patent applications and granted patents that have potential to harm our patent. Identifying the newly filed patent application or newly granted patents that are in similar technical field and delivers the same or better results as our invention by using similar or identical method or process is usually the aim of patent watching[7].
However, Patent watch service can be tailored to meet the specific demands of the clients. A client (Company, organization or individual who is owner or assignee of patent) can provide the specific requirements based on which the patents and pending application will be monitored. For example, a client might want to monitor the patents that provide better results at cheaper price or uses the identical technology in a different way to achieve efficient results.
In patent watching, the official data bases of patent offices of various countries and journals are referred. In the today’s fiercely competitive business eco-system, irrespective of the industry in which a company operates, it is an absolute necessity that a company keeps a close watch on its competitors’ IP activity. A patent watch services reveals the IP activity of the competitors, allows you to have a bird’s eye view of competitors’ Patent litigation, R&D strategies, Technology development, Patent transfers, Acquisitions and licenses and Current patenting activities.
The patent watch service can be classified in to two major categories, which are as follows:
- Technology Based Patent Watch Service: This type of patent invalidation search is limited to latest patent applications published and latest patents granted in the specific field of technology[8]. After the identification of the relevant patents, the results are compiled in a comprehensive report. Technology based patent watch service has wider ambit and covers greater number of published and granted patents.
- Competitor Based Patent Watch Services: In this the patent watching is further limited to the patents applications published and patents granted to business competitors only. Competitor based patent watch service will be focused on the technological progress of competitors. The other aim of this patent watch service is to identify the abandoned, expired, or rejected patents of business competitors that can be further be used without infringing any patent[9]
Conclusion
Patent invalidation search and patent watch service are the modern weapons to safeguard the patent and subsequent revenue generating potential. Invalidity search not only aid in diminishing the competitor’s patent but it can also strengthen your patent by establishing its novelty and no-obviousness. This subsequently adds value to the patent portfolio. Patent watch service on the other hand keeps a close look on the recent published and granted patents in same technical field. This helps is strategy making in order to gain the maximum financial benefits from the patent for as long as possible. Any company, organization or individual who wishes to stay alive and flourish in this fiercely technological domain must use invalidity search and patent watch service as their primary weapon.
[1] https://www.wipo.int/export/sites/www/tisc/en/ppt/Philippines/validity_search.pdf (Refer page 3)
[2] https://www.inquartik.com/blog/basic-patent-invalidity-search/ (Refer para 2)
[3] https://www.wipo.int/export/sites/www/tisc/en/ppt/Philippines/validity_search.pdf (Refer page 3, para 2)
[4] priorartsearchers.com/invalidity-validity-searches/ (Refer Last Para)
[5] https://www.priorartsearchers.com/invalidity-validity-searches/ (Refer Last Para)
[6] https://www.wipo.int/export/sites/www/meetings/en/2006/scp_of_ge_06/presentations/scp_of_ge_06_holzer.pdf (Refer Page 9 , Para 2, Page 10 Para 1, 2 & Page 11)
[7] https://thepatentwatchcompany.com/patent-watching-monitoring-services/ (Refer Para 1)
[8] https://thepatentwatchcompany.com/patent-watching-monitoring-services/ (Refer 2nd Para)
[9] https://thepatentwatchcompany.com/patent-watching-monitoring-services/ (Refer 3rd Para)
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CGPDTM’s notice in furtherance of Supreme Court’s order on Limitation.
The Office of the Controller General of Patents, Designs and Trademarks (CGPDTM) has issued a public notice dated March 24, 2021 in furtherance of Supreme Court’s order dated March 8 , 2021 in the case of extension of limitation period[1].
The Apex Court in its order of March 8 had held that the period from March 15, 2020 to March 14, 2021 shall be excluded from computing limitation period.
Read End of extension of limitation period during COVID-19
The Hon’ble Supreme Court inter alia held that –
“2. We have considered the suggestions of the learned Attorney General for India regarding the future course of action. We deem it appropriate to issue the following directions: –
- In computing the period of limitation for any suit, appeal, application or proceeding, the period from 15.03.2020 till 14.03.2021 shall stand excluded. Consequently, the balance period of limitation remaining as on 15.03.2020, if any, shall become available with effect from 15.03.2021.
- In cases where the limitation would have expired during the period between 15.03.2020 till 14.03.2021, notwithstanding the actual balance period of limitation remaining, all persons shall have a limitation period of 90 days from 15.03.2021. In the event the actual balance period of limitation remaining, with effect from 15.03.2021, is greater than 90 days, that longer period shall apply.
- The period from 15.03.2020 till 14.03.2021 shall also stand excluded in computing the periods prescribed under Sections 23 (4) and 29A of the Arbitration and Conciliation Act, 1996, Section 12A of the Commercial Courts Act, 2015 and provisos (b) and (c) of Section 138 of the Negotiable Instruments Act, 1881 and any other laws, which prescribe period(s) of limitation for instituting proceedings, outer limits (within which the court or tribunal can condone delay) and termination of proceedings.”
In view of the aforesaid holding of Supreme Court, the Office of the CGPDTM has now notified that period of limitation shall be computed in accordance with the afore-cited Order dated March 008, 2021 as passed by the Hon’ble Supreme Court of India.
Related articles:
SC Order extending limitation period does not enlarge period upto which delay can be condoned
[1] https://ipindia.gov.in/writereaddata/Portal/News/721_1_24.03.2021_Public_Notice.pdf
https://ssrana.in/articles/end-of-extension-of-limitation-period-during-covid-19-supreme-court/