What is patentable in India...

Any new product or process involving an inventive step and capable of industrial application, including method of testing during a process of manufacture or for control of manufacture and method of treating a plant, is patentable.

Inventions where only methods or processes of manufacture are patentable.

Inventions claiming substances intended for use, or capable of being used as food or as medicine or drug.

Inventions relating to substances prepared or produced by chemical processes (including alloys, optical glass, semi-conductors and inter-metallic compounds).

... and what is not

An invention that is frivolous or which claims anything obviously contrary to well-established natural laws.

An invention, the primary or intended use or commercial exploitation of which could be contrary to public order or morality or which causes serious prejudice to human, animal or plant life or health or to the environment.

The mere discovery of a scientific principle or the formulation of or discovery of any living thing or non-living substance occurring in nature.

The mere discovery of any new property or new use for a known substance or 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;

A substance obtained by a mere admixture, resulting only in the aggregation of the properties of the components thereof or a process for producing such substance.

The mere arrangement or re-arrangement or duplication of known devices, each functioning independently of one another in a known way;

Any process for the medicinal, surgical curative, prophylactic, diagnostic, therapeutic or other treatment of human beings or any process for a similar treatment of animals to render them free of disease or to increase their economic value or that of their products.

A method of agriculture or horticulture.

Plants and animals in whole or any part thereof other than micro-organisms but including seeds, varieties and species and essentially biological processes for production or propagations of plants and animals;

A mathematical or business method or a computer program per se or algorithms;

A literary, dramatic, musical or artistic work or any other aesthetic creation whatsoever, including cinematographic works and television productions;

A mere scheme of rule or method of performing a mental act or method of playing game;

Presentation of information;

Topography of integrated circuits;

An invention which, in effect, is traditional knowledge or which is an aggregation or duplication of known properties of traditionally known component or components; and Inventions relating to atomic energy.

Getting a patent

The Indian Patent Office has been speeding up the issuance process with a modernisation programme and increasing the number of patent examiners.

Normally, it takes about three years from the date of filing the application for the grant of a patent in India.

The term of every patent granted according to the Patents Act 1970, as amended in 2002, is 20 years for all categories of inventions in consonance with Article 33 of the TRIPS Agreement.

Trademark law

The Trade Marks Act, 1999 replaces the Trade and Merchandise Marks Act, 1958. The Act is a consolidated effort to bring the law at par with international practices. These changes were envisaged by India well before it signed the General Agreement on Trade and Tariff (GATT) and the Trade Related Intellectual Property Rights (TRIPS).

For the first time the new Act will protect service marks, and the scope of other terms has been expanded in tune with international practices. A brief analysis of the expanded terms is mentioned herein. The service sector, including information technology, BPO services, hotels, hospitals, airlines and advertisement agencies, can now protect their marks as service marks.

Well-known trademarks without registration or use are now protected in India. India recently made certain changes to its trademarks law to harmonise it with the requirements of TRIPS. To fulfil its obligations under TRIPS, India enacted a new trademarks law — the Trade Marks Act, 1999, which differentiates between well-known trademarks and trademarks generally. Special treatment and rights are envisaged for well-known trademarks under the 1999 Act.

An important feature of the 1999 Act is the recognition and protection of well-known trademarks. The 1999 Act deals elaborately with facts to be considered and methods to be adopted by the Registrar of Trade Marks (Registrar) in protecting a well-known trademark against copying of such marks by others, whether the proprietor is an Indian or a foreign company, and at the same time protecting the interests of bona fide proprietors.

The provisions of the 1999 Act are not to be seen as totally new as similar results are achieved under existing law — the Trade and Merchandise Marks Act, 1958, and the practice followed by Indian courts in various decided cases. The determination of a well-known trademark should be based on the knowledge or recognition of that trademark in the relevant section of the public, including knowledge in India obtained as a result of promotion of the trademark.

The question of whether a trademark is known to or recognised by the relevant section of the public is to be determined after taking into consideration the following facts:

Where a trademark is determined to be well-known in at least one relevant section of the public in India by any court or Registrar, the Registrar would consider that trademark as a well-known trademark for registration under the 1999 Act.

The above list is not exhaustive and any other relevant fact in determining whether the trademark in question has become well-known is to be taken into account.

It will also be seen that it is not a single factor but the totality of the circumstances that establish and determine whether or not a particular trademark is well-known.

There are new provisions of additional remedy against criminal offence, which has now been made a cognisable offence.

An Intellectual Property Appellate Board has now been constituted to hear appeals on the decisions of the Registrar.

The authority to register a certification trademark now vests with the Registrar under the new Act and the validity of Registration has been increased from seven years to 10 years. The concept of collective trademark has been introduced. Collective trademark means trademark distinguishing the goods or services of members of an association of persons (not being a partnership) as proprietorship from those of others. The scope of infringement has been widened.

Intellectual property is probably an entity's most valuable asset and it is important to clearly identify it. It may be a name on your front door, a graphic design, or invention.

Failure to protect it, or to do so early enough, may put your business at risk. Identify and value your IP assets and ensure they are itemised in your business plan.

(The author is an intellectual property lawyer and a partner with Kochhar & Co, advocates and legal consultants, Chennai. He can be reached at ramasarma@kochhar.chennai.com)

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