Intellectual Property Rights in India: Laws and Procedures for Registration

The initial step for any company looking to expand into India is to protect and manage its intellectual property rights (IPR). This must be done as part of a strategy to increase the value of the company’s assets.

Having a unique intellectual property can give companies an edge over their competitors and can become a crucial component of its marketing strategy. Businesses can also generate revenue by selling or granting licenses on intellectual property.

In India, there are different types of intellectual property, which are protected under different laws. In order to register intellectual property, one must navigate complex

legal requirements and compliances. Our experts at Dezan Shira and Associates can guide your company in devising its IPR strategy. For assistance, contact our professional advisors at india@dezshira.com.

In this article, we provide a brief overview of the IPR system in India and enumerate its component laws and basic procedures for registration.

IP trends in India

IP Filing Trends in India

IPR Category

FY 2018

FY 2019

FY 2020

FY 2021

FY 2022

Patent

Design

Trade mark

Geographical Indication

Copyrights

Semiconductor Integrated Layout Designs (SCILD)

Total

350546

405324

427309

528471

568049

Trends of IPRs Granted and Disposed

IPR Category

FY 2018

FY 2019

FY 2020

FY 2021

FY 2022

Patents

Designs

Trade Marks

Geographical Indications

Semiconductor Integrated Layout Design

Copyrights

Patents

• Law: Patents Act, 1970; Patents (Amendment) Act, 2005; Patents Rules, 2003; Patent (Amendment) Rules, 2020
• Relevant Ministry: Office of the Controller General of Patents, Designs and Trade Marks (Indian Patent Office), Department for Promotion of Industry and Internal Trade (DPIIT), Ministry of Commerce and industry

A patent is a legal right that confers monopoly to a person for their invention.

According to the Patents Act, 1970, an ‘invention’ must fulfill three criteria:

• It must be a new product or a process that did not previously exist
• It must offer a new technical improvement as simple changes to a previously known technique cannot be patented
• The proposed invention must be useful

Once a product or process is patented, it cannot be commercially produced, distributed, used, or sold without the consent of the patent owner.

India grants patent rights on a first-to-apply basis. The application for a patent can be made by either:

• The inventor
• The assignee
• The legal representative of the inventor

Patent application may also be made jointly by two or more corporations as assignees. A foreign national resident can also apply and obtain a patent in India.

Patent registration procedure

• Patentability search: The patentability search is the first step in the patent registration process. The uniqueness, ingenuity, industrial applicability, and enablement of the invention are evaluated through a patentable search.
• Drafting the patent application: If an invention is found to be patentable following a search, the applicant must write a patent application that details the invention. The first step after drafting a patent application is to file the patent application.
• Filing a patent application: The next step is filing the patent application. Applications must include the invention’s specifications as well as any other necessary or pertinent information. To obtain a patent registration for their innovation, an applicant may submit both a provisional and a full application.

• Publication of application: The Indian patent Office (IPO) publishes the application in the official patent journal, making it available in the public domain after 18 months from the date of filing or priority. An early publication request is possible.
• Examination of application: After publication, the patent office examines the application. Unlike publication, examination doesn’t occur automatically upon filing.
• Objection by the Examiner: The Examiner scrutinizes the application and issues a report stating all objections related to the application, based on the information mentioned in the application.
• Office action response: The applicant must respond to the Examiner’s objections to receive a patent grant. They have a maximum of six months from the first examination report’s issuing date to respond. The duration can be extended by three months with a request to the IPO.
• Grant of patent registration: Once the application addresses all the objections raised by the Examiner, the patent office grants the patent registration and publishes it in the patent gazette.

Essential ingredients of complete specification under patent registration

• Title and preamble
• Prior art
• Loopholes in the prior art
• Solution to drawbacks
• Summary of the invention
• Statement of invention
• Particulars of invention
• Particulars regarding drawings
• Examples
• Claims

Documents required for patent registration in India

For Patent registration, the below-mentioned forms and documents are required:

Form 1: Application for grant of patent

• Identity proof of the inventor and assignee
• Address proof of the inventor and assignee
• Contact details
• Information corresponding to prior patent applications relating to the current invention, which the applicant or any authorized entity has filed
• Some declarations, among other information

Form 2: Provisional/complete specification

Form 2 is used to furnish the applicant’s patent specification. It may be provisional or a complete patent specification, depending on the type of patent application being filed.

Form 3: Statement and undertaking under Section 8

• Particulars of assignments
• Details of foreign filing

Form 5: Declaration as to inventorship

This application is used to declare the inventor(s) of the current patent application.

Technical information

• Background of the invention
• Disclosure of need of invention
• Summary of the invention
• Description of how the invention works

Form 18

Request for Examination

Form 19

Request for Early Publication

Form 26

Disclosure of Power of Authority (If assigned to the Patent Agent)

Form 9

Request for Publication. This is optional if the express publication is required.

Trademarks

• Law: Trademark Act, 1999; The Trade Marks (Amendment) Act, 2010; Trade Marks Rules, 2003; Trade Marks Rules, 2017

• Relevant Ministry: DPIIT, Ministry of Commerce and Industry

For a business, its trademark is among its most valuable assets. The company’s trademark protects its distinctive sign or indicator. This may be a symbol, logo, word, phrase, name, sound, design or an image that symbolizes the brand value or goodwill associated with the business or its product and services.

In India, trademarks are registered under the federal registration system with the support of five regional offices: Ahmedabad, Chennai, Delhi, Kolkata, and Mumbai. The Trade Mark Act of 1999 provides trademark rules for the registration, regulation, and protection of trademarks in India. DIPP recently revamped old trademark rules for registering trademarks in India.

Trademark registration procedure

• Conduct the trademark search
• Filing trademark application: The first and foremost step is to file the prescribed application at the Trademark Registry India. The applicant can also file the application online. After filing the said application, an acknowledgement receipt is generated by the official portal for future reference.
• Verification of application and documents: After filing an application with India’s Trademark Registry, the scrutiny process begins and is conducted by a designated official known as an Examiner. The verification process can take around 12-18 months. After inspection, the Examiner may accept the mark unconditionally, conditionally, or object to it.
• If the mark is accepted unconditionally, it will be published in the Trademark Journal.
• If it is not accepted unconditionally, the Examiner will stipulate conditions to be met or objections that must be addressed. The applicant will be given one month to meet the conditions or respond to the objections. If the Examiner finds the applicant’s response satisfactory, the trademark in question will be published in the Trademark Journal.
• If the response is not accepted, the applicant will have the chance to represent their case in a hearing. Upon receiving a satisfactory response from the applicant, the Examiner may render their approval and publish the concerned mark in the Trademark Journal.
• Publication of trademark in trademark journal: The publication of the mark in the trademark journal enables the authority to invite objections from third parties if no objections are raised within the specified time frame. The authority can provide approval for the next step. On the contrary, if the mark somehow attracts some objections, the authority would conduct a fair hearing.
• Grant of trademark registration by registrar: The applicant is subsequently presented with a registration certificate by the registrar, which has a ten-year validity period. The trademark office seal must be included by the registrar on the certificate.

The whole process takes about 15 to 18 months. The trademark is valid for 10 years starting from the date of issuance of the certificate. It can be renewed for another 10 years on the payment of the prescribed fees.

Documents required for trademark registration in India

• Applicant’s identity proof
• PAN
• Aadhar card
• Passport
• Certificate of Incorporation (COI), in case of companies registered under Company Act, 2013
• Logo if it is applicable and available
• Address proof

Copyrights

• Law: Copyrights Act 1957; The Copyright (Amendment) Act, 2012; Copyright (Amendment) Rules, 2021

• Relevant Ministry: Copyright Office, Ministry of Human Resource Development

India has a very strong and comprehensive copyright law based on the Indian Copyright Act of 1957. The copyright law is fully compatible with international norms like the Berne Convention, Trade Related Aspects of Intellectual Property Rights (TRIPS) Agreement, and the World Intellectual Property Organization (WIPO) Copyright Treaty (WCT).

A copyright grants the exclusive right to the creator to control reproduction or adaptation of their work for a certain period of time. Unlike trademarks and patents, a copyright protects the unique expression of ideas and not the idea itself. Further, copyright registration cannot be obtained for titles or names, short word combinations, slogans, short phrases – as these can only be trademarked.

Types of works eligible for copyright registration

• Artistic works
• Producers of cinematograph films
• Music voice recordings
• Literary works
• Musical works, including any accompanying words
• Dramatic works, including any accompanying music
• Pantomimes (drama) and choreographic works
• Pictorial, graphic, and sculptural works
• Motion pictures and other audio-visual works
• Sound recordings

Registration procedure for filing the copyright registration

• Create a user ID and password at the official site, copyright.gov.in.
• File application form: An applicant can apply either manually in the copyright office or through an e-filing facility available on the official website. Here, the applicant can be the author of the work, the owner of an exclusive right to the work, or an authorized agent.
• Examination of application: After the application is filed, the next step is the examination of the copyright application. A minimum waiting period of 30 days is provided for the copyright Examiner to review the application once the diary number is issued. The copyright registration process is then divided into two segments:
  • Objections raised: If an objection is raised by someone against the applicant, a letter is sent to both parties, and they are called for a hearing by the registrar. If the objection is rejected upon hearing, the applicant can ask for scrutiny, and the discrepancy procedure is followed.
  • No objections raised: If no objections are raised, the Examiner reviews and scrutinizes the application for any disparities. If no discrepancies arise and all necessary documents are provided, the applicant can proceed to the next step. However, if inconsistencies are found, a letter of discrepancy is sent to the applicant. The applicant must reply, and a hearing is conducted by the registrar. Once the difference is resolved, the applicant can move on to the next step. If the difference cannot be resolved, the application is rejected, and a rejection letter is sent to the applicant.
  • Issuance of registration certificate: The certificate of copyright registration is issued at the final stage. The Registrar could ask for more details or documents at this point. The information regarding the copyright application will be recorded in the register of copyrights, and a certificate of registration will be granted, if the Registrar is fully satisfied with the application made by the applicant.

  Documents required for copyright registration in India

  • Particulars of the applicant (ID and Address proof of the applicant along with the nationality).
  • Name, address, and nationality of the author of the work.
  • Disclosure of the applicant’s interest in the copyright – whether they are the author of the work or the representative of the author.
  • Copies of the original work.
  • In case for business purpose – incorporation certificate is required.
  • Details of the nature of the work.
  • Class, title and description of the work.
  • Language of the work.
  • Date of publication – Publication in internal magazines or a research paper submitted to a professor does not count as publication.
  • Two copies of the work.
  • Demand draft of INR (as applicable) according to artistic work.
  • Author’s No Objection Certificate (NOC) if the applicant is different from the author.
  • Publisher’s NOC if the work published and publisher is different from the applicant.
  • Search certificate from Trade Mark Office in TM-60 if the work is being used on goods or items capable of being used on the goods.
  • NOC from the individual whose photograph appears on the work.
  • When filing an application by an attorney, an original copy of a “Power of Attorney” signed by the applicant and also accepted by the attorney.
  • Two copies of the work.
  • Demand draft of INR (as applicable) according to cinematographic work.
  • NOC from different copyright holders or copy of the agreement (deed of assignment).
  • NOC from the publisher if the work published and publisher is different from the applicant.
  • When filing an application through an attorney, an original copy of a “Power of Attorney” signed by the applicant & also accepted by the attorney.
  • Two copies of the work (graphical notes).
  • Demand draft of INR (as applicable) according to work.
  • NOC from the publisher if the work published and publisher is different from the applicant.
  • Author’s NOC if the applicant is other than the author.
  • When filing an application by an attorney, an original copy of a “Power of Attorney” duly signed by the applicant & also accepted by the attorney.
  • Two copies of the work (graphical notes).
  • Demand draft of INR (as applicable) according to work.
  • NOC from the publisher if the work published and publisher is different from the applicant.
  • Author’s NOC if the applicant is other than the author.
  • When filing an application through an attorney, an original copy of a “Power of Attorney” signed by the applicant & also accepted by the attorney.
  • The source code and the object code of the work for due verification.

  Industrial designs

  • Law: Designs Act, 2000; Designs Rules, 2001; The Designs (Amendment), Rules, 2021
  • Relevant Ministry: DPIIT, Ministry of Commerce and industry

  A design refers to the distinctive visual characteristics of an article, such as its shape, figure, blueprints, decorations, or arrangement of lines and colors, or a combination of these, created through any manufacturing method, whether manual, mechanical, automated, chemical, or a combination thereof, in either two-dimensional or three-dimensional form. The purpose of obtaining design registration under the Designs Act is to protect a unique or innovative design that is intended to be applied to a particular article during the manufacturing process using an industrial process or method.

  Industrial design registration procedure

  The industrial design registration procedure involves the following steps:

  • Examination: The Controller of Designs refers the application to an Examiner of Designs who checks if the application and documents meet formal requirements and if the design is registrable under the Designs Act and Rules.
  • Formality check: The Examiner ensures that the application is in the prescribed format, fee is paid, applicant’s details are provided, and declaration of proprietorship is given. The representation sheet is checked to ensure it complies with Rule 14, and a power of authority is filed if applicable.
  • Substantive examination: The Examiner checks if the design is new, original, and not prejudicial to public order, morality, or security of India.
  • Consideration of Examiner’s report: If the design is eligible for registration, the Controller registers it and issues a certificate. If objections arise, the applicant is informed, and a statement of objections is communicated. The applicant must comply with the objections or apply for a hearing within three months. If the applicant fails to comply, the application is deemed withdrawn.
  • Design registration and publication: Registered designs are published in the Patent Office Journal within one month of registration, and the registration number is the same as the application number.
  • Register of Designs: All registered designs are entered in the Register of Designs maintained at the Patent Office in Kolkata, which is available for public inspection. An e-register is also available on the IPO official portal.

  Once the application is accepted, it is notified in the patent office journal and is valid for a period of 10 years from the date of registration. The period may be extended by five years by filing an application for renewal along with the prescribed fee.

  Documents required for design registration in India

  To file a design application, certain documents and forms need to be prepared and submitted as per the Design Rules. These include:

  • Form 1, which should be filled out in the prescribed format as mentioned in Schedule II of the Designs Rules.
  • Representations must be prepared in accordance with Rules 12, 13, and 14 of the Design Rules and submitted in duplicate.
  • If the application is filed through a patent agent or an advocate, Form 21, the Power of Authority/General Power of Authority (GPA), should be submitted in the original. This form is also mentioned in Schedule II.
  • If a copy of the GPA is filed, it should be endorsed with the design application number with which the original GPA was filed.
  • Form 24 in the prescribed format should be submitted if the applicant is claiming small entity status, as mentioned in Schedule-II of the Designs Rules. If the applicant is an Indian entity, evidence of registration under the MSME Act, 2006, should also be provided. In the case of foreign entities, an affidavit should be deposed by the applicant or an authorized signatory as per Rule 42 of the Designs Rules.
  • The original Priority document should be submitted under Rule 15 of the Designs Rules.
  • An authenticated English-translated copy of the priority document should be submitted if the original priority document is in a language other than English.
  • If the applicant for the priority application in the convention country is different from the Indian applicant, an assignment in the original format should be submitted.

  Geographical indications (GI)

  • Law: The Geographical Indications of Goods (Registration and protection) Act, 1999; The Geographical Indications of Goods (Registration and Protection) (Amendment) Rules, 2020
  • Relevant Ministry: DPIIT, Ministry of Commerce and industry

  A geographical indication (GI) is a tag used on products based on their geographical uniqueness. The uniqueness of a product is defined either by its origin, process, or availability. GI tags usually help businesses enhance their marketability.

  Requirements for registering GI in India: Essential qualifications and prerequisites

  • To be eligible for the registration of a geographical indication in India, certain prerequisites and qualifications must be fulfilled, which include:
  • The product should originate from a specific geographical location.
  • The product should have distinctive qualities, characteristics, or a reputation that are primarily associated with its geographical origin.
  • The product should not fall under any prohibited categories, such as generic names or indications that are against public order or morality.
  • The applicant must be either an association of persons, producers, or any organization that represents the interests of the producers.
  • The applicant should have direct involvement in the production, marketing, or sale of the product.

  GI registration procedure in India

  To register a geographical indication in India, the following steps need to be taken:

  • Conduct a search to confirm that the proposed geographical indication is not already registered or pending registration.
  • Prepare the application for registration of the geographical indication in the prescribed form, along with the required documents.
  • File the application with the Geographical Indications Registry, along with the prescribed fee.
  • The Geographical Indications Registry examines the application to ensure that it meets the eligibility criteria and prerequisites for registration.
  • If the application is accepted, the geographical indication is published in the Geographical Indications Journal.
  • Any individual may oppose the registration of the geographical indication within three months of its publication in the Geographical Indications Journal.
  • If there is no opposition or the opposition is dismissed, the geographical indication is registered, and the registered proprietor has the right to use the registered GI tag on the product.

  The registration of a geographical indication is valid for a period of 10 years. It can be renewed for another 10 years at any time.

  Documents required for GI registration in India

  The following documents are required for the registration of a geographical indication in India:

  • Application for registration in the prescribed form.
  • Statement of case.
  • Details of the product, including its unique features, method of production, and the link between the product and its geographical origin.
  • Evidence to establish the link between the product and its geographical origin, such as maps, photographs, and historical records.
  • Authorization letter, if the application is filed by an agent.
  • Power of attorney, if the application is filed by a legal representative.
  • If applicable, a certified copy of the priority document.

  This article was originally published May, 2017. It was last updated March 23, 2023.

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