Start up applications for Patent, Designs and Trade Marks – Guidelines

CA Satbir Singh — Mon, 13 Jun 2016 06:26:06 +0000

Government of India
Office of The Controller General
Patents, Designs & Trade Marks
Boudhik Sampada Bhavan
S.M. Rood, Antop Hill
Mumbai-400037 (India)

CG/F/Start-up/Guidelines/2016/79

Dated 8-6-2016

Public Notice

Guidelines for Facilitators and Start-ups for filing and processing applications for Patent, Designs and Trade Marks

In respect to the Scheme for Facilitating Startups Intellectual Property (SIPP) announced by the Government of India and the list of facilitators published for the purpose, references have been received regarding the procedure to be adopted for filing/ processing of startups’ applications for Patents , Designs and Trademarks and fees to be paid to the facilitators in respect thereof.

Accordingly„ it is clarified as follows:

1. Patents:

i. A start- up willing to file a patent application for his invention shall select a facilitator from the list of facilitators published on the official website of CGPDTM i.e. www.ipindia.nic.in and contact him directly for preparation of application. If the startup is unable to select a facilitator, it should contact the Head of Office of the respective Patent office as per jurisdiction, who shall provide 3 names of facilitator and the startup shall finalise the name of Facilitator.

ii. The facilitator after assessing the patentability of the invention and other aspects as per Patents Act and Rules and being satisfied that the application for patent can be filed, shall draft the patent specification in consultation with the start up.

iii. Thereafter, the Facilitator shall file a complete Patent specification at the appropriate Patent Office on behalf of the start- up as per jurisdiction by following the prescribed procedure under the Patent Act and Rules.

iv. Fee for filing patent application and other statutory fees, as per First Schedule, shall be borne by the start up.

v. After a patent application is received by the Patent Office the facilitator shall submit the claim for fees as per the fee schedule given in SIPP Scheme. A letter addressed to the Head of Office of the respective Patent Office, giving details of claimed fee for drafting of application and his ID proof as a Registered Patent Agent, shall be submitted along with the invoice .

vi. The Head of Office shall verify the ID of the facilitator and ascertain the suitability of payment and arrange for the payment of fee to the facilitator after receiving such claim from the facilitator.

vii. Simultaneously with making the payment to the facilitator, the Head of Office shall forward to the Office of the CGPDTM the details of the application and payment made to the facilitator.

viii. The facilitator shall monitor and perform further steps of proceedings of startup’s patent application, prepare the reply to any query from Patent Office, attend the hearings, etc. and shall file the relevant documents in the Patent Office by following the time line , as and when required, on behalf of the startup and may submit the claim for payment of the fee as per the fee schedule of SIPP Scheme as per the procedure elaborated above.

ix. Designs :

For filing and processing applications for designs, the list of Facilitators for Patents will be applicable and the procedure for claiming the fees by the Facilitator, after he files the design application for a startup as per the designs Act and Rules, shall be as elaborated above.

x. Trade Marks:

For filing and processing applications for trademarks, the list of Facilitators for Trademarks will be applicable and, after filing a trademark application for a startup as per the Trade Marks Act and Rules, the Facilitator shall submit the claim for payment of fees to the respective Head of Office of the Trade Marks Registry who shall follow the procedure as elaborated under para vi and vii.

For any query regarding filing of applications, payment of fees and procedural issues, a facilitator/startup may contact Dr.W.M.Dhumane, Office of Controller General of Patents, Designs and Trademarks on e-mail: wm.dhumane @nic.in or phone (+91 22 24112244).

(O. P. Gupta)
CGPDTM

Abandonment orders passed by the Registrar of Trade Marks after 20/03/2016 are being kept in abeyance

CA Satbir Singh — Sun, 17 Apr 2016 05:11:56 +0000

GOVERNMENT OF INDIA
Ministry of Commerce & Industries
Office of the Controller General Patents, Designs and Trademarks
Boudhik Sampada Bhawan,
S. M. Road, Antop Hill, Mumbai 400037

CG/Public Notice-/2016-17/ Date: 11/04/2016
Public Notice

Trade Marks Registry has treated many applications as abandoned under Rule 38 (5) of the Trade Marks Rules 2002, in cases where no response to examination reports containing office objections, (issued under rule 38 (4) and section 18 (4) of Trade Marks Act, 1999), were received in spite of examination reports containing office objections having been dispatched to applicants or their agents individually. Subsequently some complaints were received claiming that applications had been treated as abandoned even though the reply on behalf of the applicants were submitted but the same were not considered by the office; some complaints were also received to the effect that the examination reports containing office objections were not received by the applicants or their authorized agents in time due to which the response could not be filed and the applications have been wrongfully treated as abandoned.

Taking note of such complaints the Registrar issued a Public Notice on 04/04/2016 and requested all the applicants or their authorised agents concerned to submit representations with relevant details along with sufficient documentary evidence substantiating their case upto 30/04/2016.

Meanwhile Writ Petitions WP (C) 3043/2016 & 3067/2016 were filed before the Hon’ble High Court, Delhi and the Hon’ble Court vide their order dated 05/04/2016, has stayed the orders of abandonment passed by the Registrar on or after 20/03/201 6.

In view of the above, it is notified to the public that abandonment orders passed by the Registrar of Trade Marks after 20/03/2016 are being kept in abeyance and the applicants or their authorised agents concerned can file the reply to examination reports containing office objections either through comprehensive E-filing services of trademarks available at the official website or through email at parm.tmr@)nic.in and abhishek.p@)nic.in. In case, the reply has already been filed and the office has erroneously treated applications as abandoned, information to this effect may also be sent through email at abhishek.p@)nic.in along with copy of the reply already filed. Further action in this regard will be taken in accordance with the law and the directions/orders of the Hon’ble court in ongoing writ petitions.

Sd/-
Om Prakash Gupta
(Registrar of Trademarks)

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Start up applications for Patent, Designs and Trade Marks – Guidelines

Abandonment orders passed by the Registrar of Trade Marks after 20/03/2016 are being kept in abeyance