Monday, February 24, 2014

Boehmert & Boehmert's Annual IPR Training Course

Boehmeret & Boehmert annual IPR Training Course:Obtaining, Enforcing and Evaluating
Intellectual Property Rights in Europe at Munich,Germany from 26 June-5 July 2014. Detailed program can be downloaded from:

This course has been shaped to introduce important aspects of obtaining, enforcing and evaluating, particularly licensing Intellectual Property Rights in Europe, providing both an overview on the fundamental strategies of patent and trademark protection as well as insights into the practice of Intellectual
Property Professionals. The first week of the seminar deals with the use of trademarks, copyright and the unfair competition law for protecting industrial property, whereas the second week is dedicated to the protection of technology and innovations by patents, utility models and designs. This course addresses in-house lawyers, corporate patent and trademark managers as well as other intellectual property professionals.

This program has acclaimed faculty comprising Patent attorneys from major European IPR firms, EPO experts, Patent judges etc.

Scores of IPR practitioners from India have benefited from this program and so can you. If you have any further queries, please write

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Thursday, August 9, 2012

Intepat launches IPLogBook, a comprehensive web-based real-time IP Portfolio Management Solution

Bangalore: Intepat IP Services Pvt Ltd (“Intepat”) today announced the launch of IPLogBook as a value-added service for its clients in India. This web-based Intellectual Property (IP) Portfolio Management Solution would empower users by providing them with real-time systemic information on their portfolio status and also alert them of critical deadlines. The cloud-based solution has been created with state-of-the-art technology, to ensure data security.

In today’s global marketplace, the existence of dynamic interplay between businesses, legal and technical issues cannot be undermined. The protection of Intellectual Property (patents, trademarks, copyrights) has thus become an important cornerstone, which determines an organization’s go-to-market strategy and business growth prospects.

Safeguarding of intellectual property is a time-critical process that involves filing of applications, patent examination, payment for annuity fees, renewals, compliances and several other procedural intricacies.

Indian enterprises have made their mark in key sectors such as IT, electronics, telecommunications, and energy sources. These companies carry out a wide range of research and development projects on a regular basis. Unfortunately, often their efforts come to naught as overseas companies challenge innovations and new developments on the grounds of patent and copyright laws.

The primary reason being, Indian enterprises are not well versed with the patent / copyright laws and there is an absence of a comprehensive intellectual property management solution.

IPLogBook enables users to check current status of their IP Portfolio, provides them with a complete file history with relevant dates and serves as a comprehensive document management system.

The solution incorporates comprehensive features to enable registration - all filing details, uploading documents, email notifications for change in status, tracking application status, notification on renewal notice, alerts based on the various timeline set, systematic reminders based on various alerts timeline, forum for question & answer, support on various IP matters through ticketing and generation of reports amongst others.

Intepat’s IPLogBook solution would be immediately available to the Company’s existing clients as a value-added service. However the Company has plans to offer the solution to other Indian enterprises as well in the near future.

“As we are always innovating the way we provide our services, IPLogbook is a unique and effective solution that would enable our clients to ensure/comply with legal issues related to their intellectual property. Our customized approach has enabled our clients to transform their ideas and innovations, into business opportunities.”

About Intepat IP Services Pvt Ltd
Intepat IP Services Pvt Ltd (“Intepat”) is a niche Intellectual Property (IP) services Company that provides a broad range of customized services in Intellectual Property matters, that includes patents, trademarks and design. Our clients, from Fortune 500 to SME’s to Individual Inventors, are active in a broad variety of technical and scientific areas such as mechanical engineering, electrical engineering, physics, electronics, communication, computer science and material science. For more details, please visit

Intepat’s Services

  • ·       Patent Search Services (Patentability Search, Infringement / Freedom to Operate Search, Validity / Invalidity Search, Technology Landscape Studies, Patent Watch Search)
  • ·       Patent Preparation Services (Patent Drafting, Patent Filing & Prosecution, PCT Application in India, Patent Illustration)
  • ·       Patent Support Outsourcing (Patent Searches, Patent Drafting and Prosecution, Patent Analytics, Patent, Litigation Support)
  • ·       Trademark Services (Trademark Search, Trademark Filing & Registration, Trademark Renewal, Trademark Watch)
  • ·       Industrial Design Services
  • ·       Copyrights Services

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Saturday, April 7, 2012

USPTO and NIST Launch Online Intellectual Property Awareness Assessment Tool

Intellectual property (IP) is the creation of the human mind. It can include unique technological innovations, works of art, brand and concept names, symbols, logos, design and other ideas made real and tangible by creative individuals. Yet many businesses and individuals may not realize that they regularly create and use valuable IP assets in their workplace—assets which they need to protect and keep from being exploited or appropriated by competitors. To better serve the independent inventor and small business communities, the United States Patent and Trademark Office (USPTO) and the National Institute of Standards and Technology (NIST) have released a free online tool that will allow creators of intellectual property to recognize when they have an asset that can give them a competitive edge in the marketplace and when they should seek IP protection.  

The USPTO and NIST developed the IP Awareness Assessment Tool as a way to educate innovators about these rights and encourage growth in the marketplace. 

Check your IP awareness at      

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Thursday, December 8, 2011

Rustling Section 3(d) in the Novartis (Glivec) case

A lot has been in the news about the Novartis case. This article briefly deals with the case in relation to Section 3(d), the contending section on which the case primarily pivots.

A Brief Background:

The Novartis patent application principally concentrates on formulating the beta-crystalline form of imatinib mesylate. It is to be noted that the renowned anti-cancer drug, Glivec /Gleevec was formulated from the beta-crystalline form of imatinib mesylate and the invention is already patented in nearly 40 countries.

So, why is Novartis facing difficulty in patenting the same invention in India? The short answer to that is Section 3(d) of the Indian Patent Act, 1970 which was inserted by way of an amendment in 2005 of the Act. The section reads-

“(d) the mere discovery of a new form of a known substance which does not result in the enhancement of the known efficacy of that substance or the mere discovery of any new property or new use for a known substance or of the mere use of a known process, machine or apparatus unless such known process results in a new product or employs at least one new reactant.

Explanation.-For the purposes of this clause, salts, esters, ethers, polymorphs, metabolites, pure form, particle size, isomers, mixtures of isomers, complexes, combinations and other derivatives of known substance shall be considered to be the same substance, unless they differ significantly in properties with regard to efficacy

The object of inserting Section 3(d) was to prevent the “ever-greening” of patents since there were cases wherein applicants tried patenting trivial modifications to current patented inventions to extend its monopoly regime. This section sought to prevent ever-greening by disallowing the patenting of a known substance unless it results in an ‘enhancement of the known efficacy of that substance’.

The case has appeared before the Madras High Court, the IPAB and now, before the Supreme Court, wherein the main point of objection is that the invention is a “mere discovery of a new form of a known substance which does not result in the enhancement of the known efficacy of that substance”.

After being rejected by the Indian Patent Office (Chennai) under Section 3(d), Novartis moved the Madras High Court in 2006 challenging the decision. It challenged the grounds on which the IPO rejected the application as well as Section 3(d) arguing that the Section contravenes TRIPS as well as Article 14 of the Indian Constitution (equality before the law).

The High Court, in 2007, decided to split the two challenges, deciding to continue to deal with the validity of the Indian law but referred the appeal challenging the grounds on which the Indian Patent Office (IPO) rejected the patent application to the Intellectual Property Appellate Board (IPAB).

Before the High Court:

On the matter of constitutional validity, Novartis stated that Section 3(d) violates Article 14 of the Constitution as the terms such as “enhancement of known efficacy” and “differ significantly in properties with regard to efficacy” are not accompanied by guidelines to define its scope, hence rendering the section vague and arbitrary, and as a result, conferring unfettered power to IPAB which violates the concept of equality enshrined in Article 14 of the Constitution.

The High Court, deciding on the validity of Section 3(d) held that Section 3(d) is constitutionally valid. It correctly noted

The argument that the amended section must be held to be bad in Law since for want of guidelines it gives scope to the Statutory Authority to exercise its power arbitrarily, has to be necessarily rejected since, we find that there are in-built materials in the amended section and the Explanation itself, which would control / guide the discretion to be exercised by the Statutory Authority. In other words, the Statutory Authority would be definitely guided by the materials to be placed before it for arriving at a decision.”
(Para 16)

However, the challenge of it being compliant with TRIPS was held not maintainable since the proper authority to settle this matter would be the WTO dispute settlement panel.

Additionally, as obiter dicta, the Court tried to define the scope of the term “efficacy” and took the aid of a medical dictionary to conclude that “efficacy” would mean “therapeutic efficacy”. This scope of “efficacy” was unclear as to whether bio-availabilty would count as therapeutic efficacy, since bio-availability might mean that a dosage of a certain medicine with side effects is reduced to a smaller dosage with no side-effects, thus making it therapeutically effective. The question was to whether bio-availabity would make the beta-crystalline form therapeutically efficacious was to be decided by the IPAB.

Before the IPAB:

In 2009, when the appeal challenging the grounds on which IPO rejected the application was heard before IPAB, IPAB held that though the claim covering the beta crystalline version of Imatinib Mesylate is both novel and inventive, it failed the test under section 3(d), which requires a demonstration of "significantly enhanced efficacy".

To this, Novartis showed that the beta-crystalline form of imatinib mesylate showed enhancement due to its 30% bio-availabity; however, this evidence was rejected by the IPAB which iterated that the evidence did not conclude the enhancement sought under Section 3(d). It stated that section 3(d) is a heightened inventive step standard and that the only kind of efficacy that would satisfy section 3(d) is therapeutic efficacy. It said that Novartis's beta-crystalline version may possess improved bioavailability, thermodynamic stability, improved flow properties and lower hygroscopicity, but this does not amount to an increase in "therapeutic efficacy". The IPAB did not provide detailed reasons as to why it thought the beta-crystalline form lacked efficacy.

Appeal to Supreme Court: Novartis, in 2009, appealed to the Supreme Court against this decision of IPAB. The case is still being heard before the Supreme Court, the next date of hearing being 28 February 2012.

The case is being closely watched as it is speculated that the Court would define the true scope of Section 3(d) amidst other matters.

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Thursday, November 24, 2011

Design Patent in India

"Design" may be obtained to the features of shape, configuration, pattern, ornament, or composition of lines or colours applied to any article. It can be in two or three dimensional, or in both forms by any industrial means or process. It can be manual or mechanical or chemical; separate or combined; but the finished article appeal must be judged solely by the eye, for example- Jewellery, Computer icon, etc. Design does not include any mode or principle of construction. To qualify for a design patent, the subject must be new in the sense that no single, identical design exists in the prior art. It must satisfy the ornamental standards, and it must be original to the inventor/inventors seeking protection. It must not be on the basis of any previously existing design or combination of designs when viewed through the eyes of a designer skilled in the art. It must be issued for an article comprised in the prescribed classes of articles under design law. When your product design gives you a commercial advantage, you should protect your design by filing of design patent.

Salient features of design patent in India are as follows:
  1. When a design is registered, the registered proprietor of the registered design has copyright in the design for duration of ten years from the date of registration. It can be extended for another five years from the expiration of the original period of ten years in a prescribed manner
  2. Piracy of registered design is illegal by any person during the existence of copyright, only license or written consent of the registered proprietor allows doing anything with the registered design.
  3. A registered proprietor can sue to bring a suit for the recovery of damages for any contravention of imitation of a registered design.
  4. A registered proprietor can do assignments and transmissions of a registered design and the details of the same is entered in the book of register of design for record.
  5. Where a person becomes entitled by assignments, transmission or other operation of law to the copyright in a registered design, he may make application in the prescribed form to the Controller of Design to register his title,
  6. The exhibition of a design, or of any article to which a design is applied, does not prevent the design from being registered or invalidate the registration, provided, the exhibitor give previous notice to the controller of design in a prescribed manner. Such application for registration is made within six months from the date of first exhibiting the design or article or publishing a description of the design.
  7. The provisions of the Patents Act, 1970 with regard to certificates of the validity of a patent, and to the remedy applies in the same manner in case of a registered design as in the case of patents.

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Wednesday, November 9, 2011

How to file a patent in Indian Patent Office

(In this article, we discuss the steps of filing a patent in the Indian Patent Office. The entire patent procedure is not covered in this article and only the steps necessary for filing a patent is covered.)

The decision to grant patent protection in a particular country ultimately rests on the Patent Office of that country. Patentee’s rights include the exclusive rights to prevent others from using his patented invention.

Who can file: Patent Application can be filed by an inventor, alone or jointly with others, or his/their assignee or legal representative of any deceased inventor or his assignee.

Where to file: Application is required to be filed according to the territorial limits where the applicant or the first mentioned applicant in case of joint applicants, for a patent normally resides or has domicile or has a place of business or the place from where the invention actually originated.

If the applicant for the patent or party in a proceeding having no business place or domicile in India, the appropriate office will be according to the address for service in India given by the applicant or party in a proceeding. For example, patents can be filed at the Chennai Patent Office where the address for service would be Intepat IP, Bangalore.

The appropriate office once decided in respect of any proceedings under the Act shall not ordinarily be changed.

Types of Patent Application: Different types of Patent Application can be filed. These are-

a) Ordinary Application

b) Application for Patent of Addition (granted for Improvement or Modification of the already patented invention, for an unexpired term of the main patent).

c) Divisional Application (in case of plurality of inventions disclosed in the main application).

d) Convention application , claiming priority date on the basis of filing in Convention Countries.

e) National Phase Application under PCT.

Documents required while filing:

1) Application form in duplicate (Form 1).

2) Provisional or complete specification in duplicate. If the provisional specification is filed, it must be followed by the complete specification within 12 months.(Form 2).

3) Drawing in duplicate (if necessary).

4) Abstract of the invention in duplicate.

5) Information & undertaking listing the number, filing date & current status of each foreign patent application in duplicate (Form 3).

6) Priority document (if priority date is claimed) in convention application,when directed by the Controller.

7) Declaration of inventor-ship where provisional specification is followed by complete specification or in case of convention/PCT national phase application (Form 5).

8) Power of attorney (if filed through Patent Agent).

9) Fees (to be paid in cash/by cheque/by demand draft)

These are the important points to be noted while filing an application at the IPO.

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Thursday, November 3, 2011

Cost of Obtaining a Patent in India

It is understood that patenting is an expensive and extensive process. Usually while filing a patent, only the statutory filing fees and the professional fees are disclosed. However, after the filing, there are certain other fees that are to be paid to the Indian Patent Office (IPO). Therefore, it is imperative that one should understand the patent procedure and realize the fee break-up while applying for a patent.

While approaching a patent attorney, a bundled fee consisting of the statutory fees and the professional fees would be disclosed. The professional fees vary from attorney to attorney. Herein, only the statutory fee is disclosed.

Filing- Firstly, while filing a patent application, the status of the applicant- whether a natural person or other than natural person - is considered. ‘Other than natural person’ may include a legal entity; it may also include a legal entity and a natural person jointly. Whereas a natural person’s fee for filing an application is marked at Rs. 1000/-, fees for others is marked at Rs.4000/-.

Specification and Claims- The IPO levies no fees for a specification up to 30 pages and up to 10 claims. However, if the specification exceeds 30 pages, then a fee of Rs. 100/- per page for natural person (Rs.400/- per page in case of ‘other than natural person’) is levied. Similarly, no fee is charged for a maximum of 10 claims. However, if there are more than 10 claims, then a fee of Rs 200/- for natural person (Rs. 800/- in case of ‘other than natural person’) is charged per extra claim.

Early Publication- All patent applications filed are published in the Patent Office Journal after 18 months from date of filing of the application. However, if the publication needs to be hastened, then there is an option of early publication by filing Form-9 and making appropriate payments. The fee for early publication is Rs.2500/- for natural person and Rs. 10,000/- for others. If early publication is opted, the application will be published within one month from the date of request.

Request for Examination- Applications are examined only when the examination fees are paid by the Application; otherwise, the applications are deemed to be abandoned. Fee for examination needs to be paid within a period of 48 months from the date of priority or date of filing of the application. It is to be kept in mind that earlier payment of fees entitles earlier examination, thus hastening the patent procedure. The prescribed fees for examination are Rs. 2,500/- for natural person and Rs. 10,000/- for others.

These are the statutory fees that are most important to keep in mind while filing a patent application. Besides these, there are opposition fees, fees for requesting an extension of time as well as renewal fees.

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Monday, October 24, 2011

Online Certificate Course On Intellectual Property Rights (IPRs)

Federation of Indian Chambers of Commerce and Industry (FICCI) has started an Online Certificate Course on Intellectual Property Rights (IPR). The objective of the Course is to increase awareness about IPR in the Society for the benefit of the Nation at large.

Online Course coverage

Patents and International Filing System, Trademark, Copyright, Design, Geographical Indication, Biodiversity, International Arrangements and IPR Enforcement: Infringement and Remedies.

The study material is all inclusive covering the aspects like overview, prosecution, enforcement, appeals, remedies, best strategies and practices, case studies, Intellectual Property as a collateral, International conventions/treaties/agreements on concerned Intellectual Property etc.

Key Differentiators / Key Features of the Course

  • The Study Material has been prepared by well known experts in the area, who are from esteemed organizations/Educational Institutes like Amarchand and Mangaldas, Anand and Anand, Entete Legale, Inttl Advocare and University of Delhi.
  • Industry oriented module.
  • FORUM to enable participants to raise queries to IP Expert and also to interact with other participants.
  • Weekly updates on IPR to registrants.
  • One day of Interactive Session for participants with IP Experts for addressing their specific doubts/issues (Not mandatory to attend) at FICCI, New Delhi. Recording of the Interactive Session to be made available online, to all participants.
  • Best performers, amongst the Students, in Online Examination will be provided with an opportunity to do internship with FICCI IPR Division.
  • Participants from Industry will be provided an opportunity to participate in FICCI-IPR division events.

Who Can Pursue

Students from Law, science and other disciplines, Lawyers, Patent Agents, Professionals from Industry fields like Electrical / Computer / Chemical / Mechanical / Research and Development and other scientific domains, enforcement personnel, etc.

Schedule of conduct of Online Course on IPR

Online Certificate Course on IPR would be conducted twice a year in the months of January – March and July – September.

The registration for the January- March course in 2012 would start in November 2011. The interested applicants may get their seats confirmed by submitting the details.

To know more about the course, please visit at

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Friday, October 21, 2011

Patent searches and their importance

In the grant of a patent, a lot of time, sweat and money are involved. The arena of patents is developing at a fast pace. In 2009-2010, around 40,000 patent applications were filed in India against the 17,500 applications filed in 2004-2005, a leap of 250% in the past five years. However, one should understand that not all patent applications filed are prosecuted successfully. The primary reasons for rejection of an application are either (a) the invention is not novel (b) or it is obvious such that a similar patent already exists.

The Government fees for a patent filing can be anywhere from Rs.14,000 - Rs.20,000. Besides the Government fees, fees to the attorney or agent needs to be considered. On the whole, it is without doubt that patenting is an expensive process and therefore, requires an inventor/assignee to tread carefully in order to successfully prosecute patent applications.

A patent search or a patentability search is a search conducted in patent databases as well as in the literature available to check whether any invention similar to your invention already exists. In other words, it evaluates your chances of getting a patent grant. Therefore, instead of going forth with the filing, if one conducts the patentability search, one can get a clear idea about the patentability of the invention; whether the application should be filed and the strengths and weakness of his invention.

Since patenting is an expensive procedure, it is prudent to conduct a patentability search before filing an application. Besides financial reasons, there are several other compelling reasons for conducting a search before filing an application.

  • A patent search would make one realize the patentability or the extent of patentability of an invention. Many a times, inventors are not well-versed with the scope of patentability that law covers. For example, computer programmes, per se, is non-patentable but computer programmes that are manifested in a useful way can be patented. A patentability assessment can help you understand whether your invention is patentable and if so, how far can it be protected.

  • It is important that your patent agent/attorney knows the prior art available in order to draft the patent claims. A patentability search gives an idea of what can be sought patent protection and what falls in the prior art domain. Thus, one can understand from the search report the area of strength of the invention and accordingly draft claims that do not infringe other patents or fall in the prior art.

  • Sometimes, the invention might not be novel and the patentability search might reveal patents/ inventions similar to the invention. In such cases, from reading the prior art literature, one can come up with newer ideas and refine the invention such as to make it patentable.

  • By knowing the literature present in the field of one’s invention, one can understand the strength or weakness of the present invention. This, in turn, helps in drafting a stronger patent application and making it less vulnerable to rejections by the Patent Office. On the other hand, it would also help to decide whether one should proceed with the filing of the application or forsake it.

  • The patent search can also reveal certain companies who are keen on obtaining patents in the field of technology relating to your invention. In such cases, it gives you the lead on which companies to contact for licensing of your invention.

  • Many-a-times, we see existing patents already available in the database, yet they have not been commercialized. Analyzing the patent search may reveal why commercialization was not viable, thereby, helping you decide whether you should proceed with filing the patent application if commercialization is on your mind.

  • One should note that while applying for a patent, the applicant needs to describe his entire invention. Even if his patent gets rejected, his application would be considered prior art, open for all to see. This can very often lead to a scenario where his competitors get access to his hard work. To avoid such a situation, a patent assessment would prove helpful. Even if in the eyes of the patent law, your invention is not patentable, yet you can use it as a trade secret and license it to others and gain revenue. A patentability assessment would help the investors realize whether applying for patent would justify the expenses borne.

It is a well-known fact that free patent databases are available over the Internet and anyone can access these databases. However, it is pertinent that a person skilled in conducting searches be given the task. The reason being, patent searches involves tedious, repeated searching through various patent and non-patent literature. An unskilled person would not be able to do justice to the vast amount of literature to be searched. Furthermore, a skilled person understands the importance of the claims of a patent. The claims of a patent are of utmost importance when a similar patent to your invention exists; in such a case, one needs to analyze the patent claims to determine the degree of similarity between the two. Furthermore, a skilled person would be able to counsel on the strength of your patent or on refining your patent so that it does not infringe other existing art. A non-skilled person may not understand these concepts.

Professionals at Intepat understand the realms of patent searches and conduct comprehensive searches in patent and non-patent literature and also provide counseling on management of patents.

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Monday, September 12, 2011

Take part in the Lafarge Invention Awards 2011!

Are you an Indian entrepreneur or new company, engineering consultant, architect, researcher or academic? Do you have an innovative project related to Lafarge building materials (aggregates, cement, concrete and gypsum) and that contributes to sustainable construction? If so, Lafarge can help you make it a reality!

Submit your project

The Lafarge Invention Awards aim to encourage and reward innovative projects related to building materials and contributing to sustainable construction, this year in India. The fast pace of Indian economic and demographic growth is indeed generating immense needs for new infrastructure and housing, which must be met through new, innovative approaches to construction that take into account social, economic and environmental imperatives.

Projects submitted should be based on an invention less than 5 years old. They should involve a new product, industrial process, construction method or service and should have reached at least the prototype phase, ideally demonstrated in a real construction project.

The Awards

  • 1st prize: 1,000,000 INR
  • 2nd prize: 500,000 INR
  • 3rd prize: 250,000 INR

Winners will also be invited on an all-expenses paid visit to the Lafarge Research Center, the world’s leading research facility in building materials.

Key dates

  • September 1st – November 30th 2011: Submission of projects via the on-line entry form below
  • January 2012: Pre-selection of 10 finalists by a panel of Lafarge experts
  • March 2012: Presentation by finalists to a Jury of Lafarge executives and renowned experts and selection of the three winning projects

Projects will be judged on:

  • their innovative nature,
  • their viability and economic impact,
  • their technical feasibility (with an existing prototype),
  • and their contribution to sustainable construction.

To submit your project, please visit the website

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