How to register a Patent as per Intellectual Property Law

THIS ARTICLE WAS WRITTEN BY DEVANSH SHARMA, A STUDENT OF RAJIV GANDHI NATIONAL UNIVERSITY OF LAW

Intellectual Property, from its literal construction, can be derived to denote a property of the intellect. This form of property accords protection to the creations of the inventors, creators or authors, provided the fact that an application of the intellect was involved and the creation fulfilled certain other stipulated conditions.

The domain of Intellectual Property is wide in its ambit, incorporating creations from every category under the sun, from a simple utilitarian object to an avant-garde technical invention. Intellectual Property incorporates several concepts under it, such as Trademarks, Copyrights, Patents, Designs etc. The scope of Intellectual Property is ever increasing in the present scenario due to several contemporary developments, such as modernization, commercialization and industrialization around the world.[1]

While Patents are governed under the Patents Act 1970, Designs Act 2000 lays down guidelines for registration of designs in India.

Section 53 of the Patents Act 1970 states that a standard patent can be protected for a period of 20 years beginning from the date of judgment.

Registration of a Design under Designs Act 2000 subsequently allows the owner to exercise rights over the design for a period of 1 year, subject to three terms of renewal, each for a period of 5 years from the date of registration, thus the maximum duration for protection of design is 15 years.

Grounds for Patentability of Designs

There exist several grounds over which a patent for a design may or may not be granted.The Designs Act 2000 simply states that the proposed design should be able to be made applicable to an article and must be tangible to the eye. It must also pass the test of originality on the date of registration. However, in common parlance, several grounds for patentability of designs have been laid down.

The most commonly used grounds for patentability of designs are-

1. The design should be newly manufactured.

The design sought to be protected should not be in existence either commercially or privately before the application is made. The design should not be a subject of “discovery” or common sense, and should not be in common use, despite the non-patentability of the same.

2. The design should be a novel invention.

The design must be novel and clearly distinguishable from other designs. The type of use may also be taken into consideration.

3. The design should have a distinguishable appearance with regards to shape/configuration/pattern/texture etc.

Design Regime is defined as the distinguishability of a design with regards to its shape, pattern, or appearance.

Generally, the core of the litigations are regarding the design of the product rather than its utilitarian value or functional aspect. The Designs Act 2000 generally protects the appearance of an article, though several questions have been raised about the protection of the functional aspect of the designed article as well.

4. The design intended to be protected may or may not have a distinct function.

A distinct function is not a necessity under Designs Act, as the act primarily intends to protect the appearance or design of the prospective product in question.

5. The design should be kept confidential before registration process is concluded.

The design should not have been used for commercial purposes, trade, etc. However, there are certain exceptions wherein the design can be used before registration, such as for the purposes of experimentation, etc.

6. The design should not be contrary to order and morality and should not be offensive towards any race/sex/religion or community.

There has been a rise in litigation with regards to designs over aspects such as invoking xenophobic/racist/sexist content. These measures must be strictly complied with.

The fulfilment of the abovementioned aspects led to the successful application for patentability of design with respect to Designs Act 2000.[2]

Process of Registration of Patents

Registration of a patent helps to protect the invention from several external factors. A registration effectively invokes 4 sets of rights for the inventor, namely positive rights, negative rights, time-bound rights and intangible rights. The process for registration of Patents in India is a systematic and uniform process, which involves several steps.

1. Approaching The Patents Office-India is home to 4 such Offices, located at Mumbai, Chennai, New Delhi and Kolkata. The applicant may choose his or her preferred location based on several factors such as residence or domicile, place of business, or the place wherein the invention actually conceptualized.
2. Preparation of Documents-The documents should help explain the design, diagrams, illustrations or any evidence which helps ascertain the workability of the invention.
3. Payment of Fees- The structure for payment can be accessed on the government website of patents. The fee differs for a natural person and non natural person.
4. Application- Form 1 provides for the details which have to be included in application. A form generally entails that the applicant fills basic information such as relevant name(s) and addresses pertaining to the applicant(s).
5. Publication of Application- Contingent on the completion of the first 4 steps, an application is generally published one and half years after the first filing is completed. A request for earlier publication may be made as well which can be granted on the payment of a fee.
6. Request for Examination- If a person fails to request for examination, within 4 years from the date on which application was filed, the application is considered withdrawn.
7. Examination- Examination includes formal as well as substantive examination which also depends upon the subject matter of the patent.
8. Objections and Reply to Objections-While a prospective inventor may create a list of clarifications at the Examination stage itself, the applicant is bound to reply to objections raised against the invention(s).
9. Grant of Patent- The journal which notifies all successful patents notifies the acceptance of the patent, wherein a serial number is also allotted to the applicant as well as a certificate of patent along with other procedural formalities.[3]

Recent Judicial Pronouncements

A recent landmark judgment, Star Athletica LLC v Varsity Brands INC[4], laid down principles regarding under what circumstances aesthetic aspects of utilizable articles can be restricted by copyright law. In this case, the court evolved a two-pronged “separability test” based on the twin conditions of distinct identification & independent existence were laid down.

In Sports Dimensions. Inc v The Coleman Company[5], the U.S. Court of Appeals for the Federal Circuit held that a design patent incorporating functional elements must be construed to include ornamental aspects of those elements.  It rejected a lower court’s construction of the design patent because the construction eliminated the functional elements.

“By eliminating structural elements from the claim, the district court improperly converted the claim scope from one that covers the overall ornamentation to one that covers individual elements.”

In Automative Body Parts Association v Ford Global Technologies[6], the Federal Circuit explored the differences between design patents and utility patents.  While design patents protect “new, original and ornamental design for an article of manufacture,” utility patents rely on their functionality to be patentable.

The Federal Circuit soundly rejected arguments that the aesthetic appeal of a design shows that a design patent is improperly directed to functional – rather than ornamental – aspects of an article, and hence invalid.

Suggestions

1. Functional Use of the Product should be covered along with the Ornamental/Appearance of the Product

Although courts have held that ornamental aspect and functionality are separate concepts, the CCPA has joined the two concepts together. There is, however, confusion concerning the standard to be applied in determining functionality.Although the Federal Circuit has articulated the primarily functional standard in several recent design patent cases without elaboration, it has relied simultaneously on CCPA decisions which adopt a solely functional standard.

There is a need for a standard that evaluates the effect of the design on competition in the functional features of the product. Both must be synchronized for an uniform analysis.

2. The definition of “Design” must be expanded to include new variants

Nowadays the domain of “design” is ever expanding and cannot be restricted to the appearance of the design. An example of contemporary developments in design is Liva Fluid Fashion, which is a pioneering concept by Aditya Birla Group.

Sustainable Fashion and designing have also led to the emergence of materials and textures which cannot be included in the traditional concept of Design Patent. Several designs now appeal to all the senses, including the sense of smell and taste, which cannot be reduced to the mere “illustrative” aspect.

3. The restrictions on grounds of “order and morality” must be revised.

The grounds must be implemented strictly so as to ensure compliance.

There has been a rise in litigation with regards to designs over aspects such as invoking xenophobic/racist/sexist content. These measures must be strictly complied with.

In a recent controversy, the Jenner sisters had to pull away a range of t-shirts being sold on their website. The said t-shirts depicted the sisters’ faces superimposed over several famous musicians, including Tupac, B.I.G., and The Doors. The Doors’ allegedly threatened to sue over the claim that one of the t-shirts in the range which depicts a picture of Kendall Jenner over The Doors’ logo tarnishes the trademark of the Doors’.

 In another major controversy involving H&M, H&M released a batch of sweatshirts in January 2018, which had the phrase “Coolest Monkey in the Jungle” printed on it. The child who modeled for it was black, and it sparked a debate on whether or not the caption on the T-shirt is racist in nature.  The brand apologized for the lapse and removed the item from its US website.

The use of certain words to publicize or propagate a certain product might lead to consequences, as it happened in the case where Walmart advertised a cap stating its color to be “N-Brown”. Ultimately, Walmart had to remove this item.[7]

[1] Rodney D. Ryder, Intellectual Property-Law and Management, Bloomsbury Publication (2019), New Delhi-110070.

[2] Ibid

[3]Supra Note 1

[4] 137 SCT 1002

[5]No. 2:14-cv-00438-BRO- MRW

[6]No. 2:15-cv-10137-LJM- RSW

[7]https://www.brandstock.com/intellectual-property-in-the-fashion-industry