COMPUTER SOFTWARE & BUSINESS METHOD PATENTS IN INDIA

India like European Union does not allow patents for inventions related to mathematical or business method or computer programme "per se" or algorithms. The relevant provision under the Indian Patents Act reads as under:

CHAPTER II
INVENTIONS NOT PATENTABLE
3. What are not inventions.- the following are not inventions within the meaning of this act,--

(k) a mathematical or business method or computer programme per se or algorithms;

The Section makes it amply clear that algorithms are not patentable in India. Though as per the Indian Patent Act, mathematical method, business method or computer programme per se are not allowed. The draft patent manual defines how inventions pertaining to above should be handled by the Indian Examiners and lays down parameters under which such inventions shall be patentable in India.

The proposed patent manual defines computer implemented invention as any invention the performance of which involves the use of computer, computer network or other programmable apparatus, or an invention one or more features which are realized wholly or partially by means of a computer programme/ programmes. Further, patent manual defines Computer programmes as a set of instructions for controlling a sequence of operations of a data processing system which closely resembles a mathematical method. Computer programme may be expressed in various forms e.g., a series of verbal statements, a flowchart, an algorithm, or other coded form and maybe presented in a form suitable for direct entry into a particular computer, or may require transcription into a different format (computer language). It may merely be written on paper or recorded on some machine readable medium such as magnetic tape or disc or optically scanned record, or it maybe permanently recorded in a control store forming part of a computer.

Though proposed patent manual emphasises on disclosure of mode of operation for inventions involving apparatus and necessary sequence of steps for process related invention, yet it lays down categorically that a hardware implementation performing a novel function is not patentable if that particular hardware system is known or is obvious irrespective of the function performed. It manifests that for such kind of invention insertion of method steps in apparatus or some dependency shall be required to make them non-obvious.

The patent manual has also broadly categorised inventions related to computer/ computer programmes as below:

(a) Method/process;
(b) Apparatus/system; and
(c) Computer program product

METHOD/PROCESS:

Further to make the invention patentable in India, the method claim should clearly define the steps involved in carrying out the invention and should have a technical character. In other words, it should solve a technical problem. The claims should incorporate the details regarding the mode of the implementation of the invention via. hardware or software, for better clarity. The claim orienting towards a "process/method" should contain a hardware or machine limitation. Technical applicability of the software claimed as a process or method claim, is required to be defined in relation with the particular hardware components. Thus, the "software per se" is differentiated from the software having its technical application in the industry. Therefore, as per the patent manual, a claim directed to a technical process which process is carried out under the control of a programme (whether by means of hardware or software), cannot be regarded as relating to a computer programme as such.

An example is also cited in the proposed patent manual on what kind of claims shall be allowable.

"a method for processing seismic data, comprising the steps of collecting the time varying seismic detector output signals for a plurality of seismic sensors placed in a cable."

"Here the signals are collected from a definite recited structure and hence allowable."

What is significant here is that patent office is not emphasising on embedment of hardware components in the method claims, as the only condition for patentability of method claims, but requires it as a machine/hardware limitation. Therefore the essential of method claims are:

a) It should solve a technical problem;
b) It should incorporate the details regarding the mode of the implementation of the invention via. hardware or software, for better clarity; and
c) It should contain a hardware or machine limitation.

APPARATUS/SYSTEM:

As per the proposed patent manual the apparatus claim should clearly define the inventive constructional hardware features. This could act as a limitation, as ordinarily hardware or machine don't involve novel or inventive constructional feature but are programmed to perform in a novel or inventive way. Further, it suggests that the claim for an apparatus should incorporate a "process limitation" for an apparatus, where "limitation" means defining the specific application and not the general application. As a general rule, a novel solution to a problem relating to the internal operations of a computer, although comprising a program or subroutine, will necessarily involve technological features of the computer hardware or the manner in which it operates and hence may be patentable.

An example is also cited as to what manner process limitation shall be inserted in the claim. For example, in a computer comprising means for storing signal data and a first resistor for storing data, the clause starting with "for" describes the function or process carried out by the apparatus, and form the part of "process limitation" here.

Therefore the essential of apparatus/system claims are:
a) It should clearly define the inventive constructional hardware features; and
b) It should incorporate a "process limitation" for an apparatus, where "limitation" means defining the specific application and not the general application.

COMPUTER PROGRAM PRODUCT:

A careful interpretation and analysis of the provision makes it clear that it is computer programme per se that are not allowed as they are subject matter of copyright in India. The reason for not considering the software as patentable subject matter was to avoid duality of protection available to software. But subject matter of copyright can be only their literal presentation of software which includes coding decoding or algorithm form and more precisely it is their algorithms form that the Indian Patents Act does not consider the patentable subject matter.

The proposed patent manual considers the claims relating to software programme product as nothing but computer programme per se simply expressed on a computer readable storage medium and as such are not allowable. Therefore requires something tangible to bring them out of provisions of Section 3 (K) of the Indian Patents Act i.e. embedding of hardware components.

For example, if the new feature comprises a set of instructions (programme) designed to control a known computer to cause it to perform desired operations, without special adoption or modification of its hardware or organization, then no matter whether claimed as "a computer arranged to operate etc" or as "a method of operating a computer", etc., is not patentable and hence excluded from patentability.

It creates an ambiguity as whether a patent shall be allowed where all criteria for method or process claims as required by patent office are met. The only distinction from the previous categories could be that in present category "mode of implementation of the invention" is not mentioned in the claim, which in any case should not change the very character of the invention.

Patent manual further clarifies that the claim might stipulate that the instructions were encoded in a particular way on a particular known medium but this would not affect the issue. e.g., A program to evaluate the value of PI or to find the square root of a number are held not allowable. However, an invention consisting of hardware along with software or computer program in order to perform the function of the hardware may be considered patentable. e.g., embedded systems.

Therefore, claims must have few hardware components as an essential part of the invention and some form of interdependence should be shown between the software and hardware components. Hence, claims relating to methods utilising computer programs for its operation are patentable, as long as they do not claim computer programs itself.

Therefore the essential of computer program product claims are:

a) Must involve hardware components;
b) Computer programmes should perform function of the hardware; and
c) There should be interdependence between the software and hardware components

BUSINESS METHOD:

In history of inventions relating to business methods filed in India, major reasons for negating the invention was lack of industrial application, which is one of the major condition to qualify as an invention and consideration whether same in non-patentable being business method may be considered only if the subject is first found to be invention.

Invention is defined under Section 2(1)(j) of the Indian Patents Act, 1970 and reads as follow:-

"Invention" means a new product or process involving an inventive step and capable of industrial application."

In Melia's Application (BL O/153/92), where an application relating to a scheme for exchanging all or part of a prison sentence for corporal punishment was held to lack industrial applicability and also to be a method for doing business.

In John Lahiri Khan's Application (BL O/356/06) a method for effecting introductions with a view to making friends was held not to be industrially applicable, even though it could be carried out by a commercial enterprise. It was also found to be non-patentable as a method of doing business.

"Capable of industrial application" is defined under Section 2(1)(ac) of the Indian Patents Act, 1970 and reads as follow:-

"Capable of industrial application", in relation to an invention, means that the invention is capable of being made or used in an industry.

In re: Bernard Bilski, US Federal Court of appeal in its judgement dated October 30, 2008 upheld that business methods cannot be patented. The court observed that the sole analysis for determining whether an invention is patentable should be the "machine-or- transformation test" i.e. requiring involvement of a machine (like in case of computer program product) or transforming an article (for details refer to case law).

Though there are no specific, guidelines in proposed draft manual as to how to treat inventions pertaining to business methods, the requirements for patentability as in case of computer programmes or mathematical methods becomes of great significance and could be relied.

Therefore the business method per se may not be patentable, but its technical implication can be a subject matter of patentable invention.

MATHEMATICAL METHOD:

A mathematical method is one which is carried out on numbers and provides a result in numerical form (the mathematical method or algorithm therefore being merely an abstract concept prescribing how to operate on the numbers) and not patentable. However, its application may be patentable if performed function is technical process and claim is directed to such technical process not the mathematical method.

Reference has been made to Vicom/Computer-related invention [1987] 1 OJEPO 14 (T208/84) wherein the invention concerned a mathematical method for manipulating data representing an image, leading to an enhanced digital image. Claims to a method of digitally filtering data performed on a conventional general purpose computer were rejected, since those claims were held to define an abstract concept not distinguished from a mathematical method. However, claims to a method of image processing which used the mathematical method to operate on numbers representing an image can be allowed. The reasoning was that the image processing performed was a technical (i.e. non- excluded) process which related to technical quality of the image and that a claim directed to a technical process in which the method used does not seek protection for the mathematical method as such. Therefore the allowable claims as such went beyond a mathematical method.

Therefore anyone interested in protecting an invention in India or for any part of the world has to more careful at the time of filing basic application (priority application). The specification as well as claims should be modified in pretext of above before filing of patent application or else the description must have sufficient support for modification of the claims to include hardware components. One of the safest criteria deployed by the Examiner to find whether any hardware features are involved in the invention is to require inclusion of reference numerals for hardware components in the description as well as claims.

Trade dress refers to characteristics of the visual or sensual appearance of a product that may also include its packaging which may be registered and protected from being used by competitors in relation to their business and services. The characteristic includes their shape (3 dimensional), packaging, colour, graphic design or even the smell of the product.

The concept of trade dress was first brought in under the Trademarks Act, 1999 under the definition of ‘mark' which replaced the previous Trade and Merchandise Marks Act, 1958.

The Trademarks Act, 1999 came into force in India on September 15, 2003. Under the Trademarks Act, 1999, the definition of the ‘mark' was revised. The definition of the mark is as follows:

Section 2. Definition and interpretation.-
..
..
(m) "mark" includes a device, brand, heading, label, ticket, name, signature, word, letter, numeral, shape of goods, packaging or combination of colours or any combination thereof;
...
(q) "package" includes any case, box, container, covering, folder, receptacle, vessel, casket, bottle, wrapper, label, band, ticket, reel, frame, capsule, cap, lid, stopper an cork;

In case of shape of goods registration of the trademark besides other criteria is still subjected to provision of Subsection (3) of Section 9 of the Trademarks Act, 1999, which reads as follows:

(3) A mark shall not be registered as a trademark if it consists exclusively of -
(a) the shape of goods which results from the nature of the goods themselves; or
(b) the shape of goods which results from the nature of the goods themselves; or
(c) the shape of goods which gives substantial value to the goods.

Indian Courts have been repeatedly recognizing the concept of the trade dress even prior to 1999 or 2003 by under common law remedies. Few of the prominent cases are as follows:

Recently in one matter Delhi High Court has restrained Ajanta India Ltd. from using the trade dress of a red and white packaging for its toothpowder on a complaint of Colgate-Palmolive. Earlier Ajanta was using a red can for marketing its toothpowder and later it switched to a red and white can which was virtual mirror image of Colgate-Palmolive. The Ajanta was allowed two months to exhaust its stocks of injuncted cans.

Similarly in another matter, Kangaro Industries Limited, a renowned name in the office equipment and stationary goods approached Delhi High Court against "Evershine STY" on the ground that it is copying their unique get-up Lay-out and colour combination of blue and warm grey and selling their product under the Trademark "Frog". The High Court ex parte restrained the "Evershine STY" and its agents etc. from using the impugned label, cartoon, packaging material as may be deceptively similar to the "Kangaro's"

In Cadbury India Limited and Ors. Vs. Neeraj Food Products, the Delhi High Court held the trademark "JAMES BOND" to be physically and phonetically similar to the registered trademark "GEMS" of the Cadbury. The High Court further held the packaging of Neeraj food product to be similar to that of Cadbury and eventfully Neeraj Foods was restrained from using said trademarks as well as the packaging similar to that of Cadbury.

Therefore the concept of the tradedress is well recognized and settled in India and its importance with relation to trade has been repeatedly upheld by the Courts in India.

SAMSUNG CHALLENGES CONSTITUTIONALITY OF INDIA'S CUSTOMS REGULATIONS GOVERNING IMPORT OF IP GOODS

The brief history of the matter is as follows:

March 03, 2003 PCT application filed in WIPO PCT/IN03/00044

January 4, 2004 Amended claims filed on WIPO, 11 claims replaced by 19 claims, first time plurality of headphone/earphone jacks or plugs are disclosed.

March 4, 2004 Amended claimed published on WIPO

January 5, 2006 Revised ISR published on WIPO

January 23, 2006 Amended Claims filed before WIPO, claims increased to 17 from 11

February 11, 2008 Patent Granted being Patent No. 214388

January 27, 2009 Office of Commissioner of customs, intellectual property rights cell at Chennai communicated vide letter no. F No.SIIB/IPR/1/08-ACC to Defendant no. 1 that his application has been registered and has been allotted UPRNo. A01671NMAA4PR.

Further mobile instruments under no circumstances can be said to be perishable goods that will get perish if not cleared within a time frame by custom authorities warranting exercise of extraordinary jurisdiction.

As per the recent information; the Samsung has withdrawn the writ petition and Ramkumar has got a stay again Samsung and many others dual SIM importer mobile companies apart from Micromax which has filed a declaration suit under Section 105 of the Indian Patent Act that their instrument does not violate Ramkumar's Patent and has got a stay order from the Gurgaon District Court. This order was appealed in Punjab and Haryana High Court and the High Court directed the court to decide on the interim application within a stipulated time frame and the trail court has accordingly passed the order in favour of Micromax holding that their mobile set does not infringe patent grant of Ramkumar.

PATENTS-INTERPRETATION OF OBVIOUSNESS

Definition:
Obviousness is a noun, derived from word obvious meaning easily seen, recognised or understood. The word obvious has originated from the Latin word “obvius” meaning “in the way”.

To interpret the doctrine of obviousness it is necessary to first understand the objective of grant of Patent.

Object of grant of patent is to encourage scientific research, new technology and industrial progress and for that object exclusive privilege is granted. At the same time before awarding patent for any invention it has to be considered that the invention must be novel, must involve an inventive step and must have industrial application. These requirements are to be strictly followed before a patent could be granted for any invention in any country all over the world.


INDIA

A. Obviousness under 1970 Act

Only a ground under opposition that too after grant and Revocation of Patents

The invention was defined under Section 2(1) (j) the Indian Patents Act, 1970;

(j) “invention” means any new and useful-art, process, method or manner of manufacture; machine, apparatus and other article; substance produced by manufacture, and includes any new and useful improvement of any of them, and an alleged invention.


As inventive step was not defined in an invention, there was no such provision during examination.


Only after advertisement of acceptance of complete specification within 4+1 months, under Section 25(1) (e) not having the inventive step is a ground for opposition.


(e) that the invention so far as claimed in any claim of the complete specification is obvious and clearly does not involve any inventive step, having regard to the matter published as mentioned in clause (b) or having regard to what was used in India before the priority date of the applicant’s claim;

Absence of inventive steps is also a ground for revocation under Section 64 (1) (f) of the Patents Act:-


(f) that the invention so far as claimed in any claim of the complete specification is obvious and clearly does not involve any inventive step, having regard to what was publicly known or publicly used in India or what was published in India or elsewhere before the priority date of the claim;


Therefore under the 1970 Act onus that the invention does not involve any inventive step was on the person interested.


B. Under the Patent Amendment Act in 2003 (that came into effect on 20.05.2003)

No change in the definition of invention till 2003

Definition of invention changed (Section 2(1) (j) now the “invention” means a new product and process involving an inventive step and capable of industrial application.

After which the inventive step was also considered during the examination.

And the Inventive step was defined under Section 2 (1)(ja) of the Patents Act

“inventive step” means a feature that makes the invention not obvious to a person skilled in the art”.


C. Further under the Patent Amendment Act, 2005 (which came into effect retrospectively 01.01.2005)


The Definition of Inventive step was further revised.

Now under Section 2(1)(ja) the “inventive step” means a feature of an invention that involve technical advance as compared to the existing knowledge or having economic significance or both and that makes the invention not obvious to a person skilled in the art.


Even the official manual of the Indian Patent practice acknowledges that “definition of inventive step has been enlarges to include economic significance of the invention apart from already existing criteria for determining inventive step”.


But the expression “or” denotes that economic significance has to be given similar importance as to technical advancement and both have to interpreted in terms of knowledge and skill of the person skilled in art. Further it is apparent from the intention of the legislature that either the economic significance or technical advancement has to be present for qualifying the invention under the inventive step.


D. Approach of Indian Patent Office

1. Considers novelty and inventive step as one or the same thing.
The Indian Patent Office considered the novelty and inventive step on the same lines which reflects in the examination report issued by them.

3. Requires characterization in the claims-

It has become the practice of the Indian Patent Office to require characterization clause in the main claim for determination of the inventive step. Wherein claims contains two portion one pre characterization one post characterization, the post characterization portion in considered to involve inventive step over pre characterization portion and thereon the dependent claims also relate to only post characterization portion.

Has to be non-obvious when compared with the state of art,

INTERPRETATION OF OBVIOUSNESS IN FOREIGN COUNTRIES:

The expression “inventive step” is predominantly used for instance in European Union while the expression “non- obviousness” is predominantly used in United States of America. The assessment of the inventive step and non-obviousness varies from one country to another while the underlying basic principal remains the same. Therefore the practice of the different patent office differs from each other.

European Patent Office

Under Article 52(1) in conjunction with Article 56 of the European Patent Convention, European patents shall be granted for inventions which inter alia involve an inventive step, that is, the invention, having regard to the state of the art, must not be obvious to a person skilled in the art. For assessment of the inventive step the European Patents Office follows the “Problem solution approach”.

Problem-solution approach:

In order to assess whether an invention involves an inventive step the Examining Divisions, the Opposition Divisions, and even the Boards of Appeal of the European Patents office apply the "problem-solution approach". The various steps included in this approach are:-

Identifying the closest prior art, i.e., the most relevant prior art;

Determining the objective technical problem, i.e., determining, in view of the closest prior art, the technical problem which the claimed invention addresses and successfully solves; and

Examining whether or not the claimed solution to the objective technical problem is obvious for the skilled person in view of the state of the art in general.

This step is conducted according to the "could-would approach". Under this approach, “the question to address” in order to assess whether the invention involves an inventive step is as follows:

A set of rules regarding the approach taken by the United Kingdom courts was laid out by the Court of Appeal in Windsurfing International Inc. v Tabur Marine (GB) Ltd. [1985] RPC 59, in determining the requirements for inventive step:

Identifying the inventive concept embodied in the patent;
Imputing to a normally skilled but unimaginative addressee what was common general knowledge in the art at the priority date;
Identifying the differences if any between the matter cited and the alleged invention; and

Deciding whether those differences, viewed without any knowledge of the alleged invention, constituted steps which would have been obvious to the skilled man or whether they required any degree of invention.


UNITED STATES OF AMERICA

"Non-obviousness" is the term for “inventive step” used in US patent law and codified under 35 U.S.C. §103. Thereby implying that a "person having ordinary skill in the art" would not know how to solve the problem at which the invention is directed by using exactly the same mechanism.

Flash of genius

GRAHAM FACTORS

• the scope and content of the prior art;
• the level of ordinary skill in the art;
• the differences between the claimed invention and the prior art; and
• objective evidence of nonobviousness.

• commercial success;
• long-felt but unsolved needs; and
• failure of others.

Teaching-suggestion-motivation (TSM) test:

• Combining prior art elements according to known methods to yield predictable results;
• Simple substitution of one known element for another to obtain predictable results;
• Use of known technique to improve similar devices (methods or products) in the same way;
• Applying a known technique to a known device (method or product) ready for improvement to yield predictable results;
• “Obvious to try” – choosing from a finite number of identified, predictable solutions, with a reasonable expectation of success;
• Known work in one field of endeavour may prompt variations of it for use in either the same field or a different one based on design incentives or other market forces if variations would have been predictable to one of the ordinary skill in the art;
• Some teaching, suggestion or motivation in the prior art would have led one of the ordinary skill to modify the prior art reference or to combine prior art reference teachings to arrive at the claimed invention.

NON ENGLISH SPEAKING COUNTRIES:

KOREA:

whether there is some motivation to reach the claimed invention in the prior art for a person ordinary skilled in the art;

whether the difference between the claimed invention and the prior art belongs to ordinary creative ability of a person skilled in the art; and

whether the claimed invention has any advantageous effect compared to the prior art.

JAPAN

Apart from the universal general approach followed all over the world, in Japan there is also a specific approach for formulating reasoning that includes steps of:

ENGLISH SPEAKING COUNTRIES:

AUSTRALIA:

(i) Long Felt Need

(ii) Copying of the Invention

Conclusion:

Broadly the interpretation of obviousness or lack on inventive step is similar, the only difference in approach of the particular Patent office. In India lack of any judgment by the Supreme Court of India on the subject matter leaves the interpretation of obviousness to practice of Indian patent office. In absence of authorities the interpretation varies from Examiner to Examiner and involves use of discretionary power.

1. Declaration as to inventorship within 1 month of filing application or along with complete specification where completed specification is filed after filing a provisional specification.
2. Proof of right in favour of applicant from inventor in writing (assignment deed, employment agreement or any other arrangement) preferably notarised within six months from filing of application.
3. Details of all corresponding foreign application within 6 months of filing of application and/or within 6 months of filing of Patent application in any country outside India.
4. Power of authority in favour of Indian Patent Attorney/ agent, to be stamped in India, notarisation not necessary.

                                     PCT FILING IN INDIA

National Phase Entry of PCT Application:

All PCT Applications designating India are considered as Indian Patent Applications filed on the date of the International Application. The period for entering into national phase is 31 months from the priority date.

Following are the basic requirements for entry into National Phase in India and are to be complied within 31 months from date of priority date:
(i) Application setting out the title of the invention, names, addresses and Nationality of the inventors; applicants.
(ii) Complete specification as filed before the International office with claims, drawings and abstract.
(iii) English translation of the International Application if filed and published in language other than English.
(iv) Certified copy of the priority document/s or Form PCT/IB/304
(v) English translation of the priority documents, if filed and published in language other than English
(vi) Prescribed Fees in cash/by local cheque /by demand draft.

Once the national processing has started, the following documents have to be furnished either along with the Application or within the stipulated time frame:
(i) Assignment deed where the applicant is not the inventor,
(ii) Declaration of inventorship by the Applicant,
(iii) Statement and undertaking regarding status of corresponding Applications in other countries,

In respect of following documents there is no-time frame but should be filed before putting the application in order of Grant or when demanded by the Controller or Examiner:
(i) Power of Attorney (duly stamped),
(ii) International Search Report
(iii) International Preliminary Examination Report, if any.

At the time of national phase entry, amendments to the International Application can be made, but such amendments cannot go beyond the disclosure made in the original Application. No extraneous or new matter is to be added.

It is possible to file a complete specification in respect of two or more provisional specifications if the invention disclosed in them is cognate or development of each other. However there would not be any relaxation in payment of fees.

In case of PCT application request for Examination has to be filed within 48 months from the date of priority.

After a request for examination is filed and the Application has been published in the Patent Journal, the Controller ordinarily assigns the Application to an Examiner within one month of request. The Examiner will examine the Application and issue an Official Report to the Controller ordinarily within one month but not exceeding three months. The Controller shall then communicate the report to the Applicant ordinarily within one month. An application is examined for the following matters:

(i) Novelty,
(ii) Obviousness,
(iii) Utility,
(iv) Patentability under the Patents Act, 1970 and as amended, and
(v) Anticipation.

The Applicant is provided 12 months' time to respond to the issues raised in the Examination report, without any extension whatsoever. Once objections are satisfied, the application is accepted by the Controller and, thereafter, an intimation for acceptance is issued by the Patent Office and after disposal of any pre grant opposition and passing of six months from date of publication.

After expiration of six months from the date of publication and disposal of any pre grant opposition, Grant of the Patent will be published in the Patent Journal and a Letter Patent Document shall be issued.

Grant of Patent is valid for 20 years from its date of International filings. It must be renewed every year by paying prescribed fee starting from the third year from the year of filing of International Patent Application within three months of such intimation. After a Patent has been granted, articles manufactured under the patented invention may be represented as "Patented.'' The number of the Patent must be indicated on the product.

Recently the Lok Sabha (Lower House of Indian Parliament) passed the Trademark (Amendment) Bill-2009. Same shall be now presented before the Rajya Sabha (the Upper House of Indian Parliament) and once it would be passed there and receives assent of President of India same shall be become an Act. The statement of objects and reasons as this bill sought to achieve are:

1. "At present, a person desirous of obtaining registration of his trade mark in other countries has to make separate applications in different languages and pay different fees in the respective countries. There is no provision under the Trade Marks Act, 1999 (hereinafter referred to as the Trade Marks Act) to facilitate Indian nationals as well as foreign nationals to secure simultaneous protection of trade marks in other countries.

2. The Madrid Protocol, administered by the International Bureau of the World Intellectual Property Organisation, a specialised agency of the United Nations, was adopted in 1989. The Madrid Protocol is a simple, facilitative and cost-effective system for international registration of trade marks. It enables the nationals of the Member countries of the Protocol to obtain protection of trade marks within the prescribed period of 18 months by filing a single application with one fee and in one language in their country of origin, which in turn is transmitted to the other designated countries through the International Bureau.

3. Accession to the Madrid Protocol entails amendments to the Trade Marks Act. For this purpose, it is proposed to suitably amend the Trade Marks Act and to incorporate therein a new Chapter IVA containing special provisions relating to protection of international registration of trade marks under the Madrid Protocol. It is sought to empower the Registrar of Trade Marks to deal with international applications originating from India as well as those received from the International Bureau and maintain record of international registrations. Definitions of new terms are being given. It is further proposed to provide for the effect of international registration, duration and its renewal.

4. It is also proposed to remove the discretion of the Registrar to extend the time for filing notice of opposition of published applications and provide for a uniform time limit of four months in all cases. Further, with a view to simplify the law relating to transfer of ownership of trade marks by assignment or transmission and to bring the law generally in tune with international practice and modern business needs, section 45 is proposed to be modified. It is also proposed to omit Chapter X of the Trade Marks Act dealing with special provisions for textile goods, as it has now become redundant."

But it would be some months before the bill become an Act and few more months till Indian Trademark Rules are amended to prescribe procedure in respect of International application filed though India or designating India.

TRADEMARK LAW INDIA

Indian Trademark Law has been codified in conformity with the International Trademark Law and is about to undergo an amendment to be at par International Trademark Law.

Recently India has signed Madrid Protocol that will allow Foreign Applicants to file an International Application designating India like many countries around the globe e.g China. Though unlike China and many other countries Multi class filing is allowed in India.

Statue:
The various statues dealing with Intellectual property laws in India are as follows:

1. Trademarks Act, 1999
2. Copyright Act, 1957
3. Patents Act, 1970 as amended by Patents (Amendments) Act, 2005
4. Designs Act, 2000
5. Code of Civil Procedures, 1908
6. Indian Penal Code, 1860
7. Geographical Indication of Goods (Registration & Protection) Act, 1999
8. Semiconductor, Integrated Circuit Layout Design Act, 2000
9. Plants Varieties Protection and Farmers’ Rights Act, 2001
10. Information Technology Act, 2000

Requirement:
A ‘Trademark’ means a mark capable of being represented graphically and which is capable of distinguishing the goods or services of one person from those of others.

A ‘Mark’ includes a device, brand, heading, label, ticket, name (including abbreviations), signature, word, letter, numerals, shape of goods, packaging or combination of colors and any combination thereof.
The two main requirements of a trademark are that it must be distinctive (adapted to distinguish the goods/services of the applicant from that of others) and not deceptive. Therefore while selecting a trademark, words that are directly descriptive of the goods, common surnames or geographical names should be avoided as these confer weaker protection to the proprietor even if registered.

Now the concept of “well known mark” has been introduced after the last amendment and Section 2 (zg) defines a well known mark as:

“Well-known trademark, in relation to any goods or services, means a mark which has become so to the substantial segment of the public which uses such goods or receives such services that the use of such mark in relation to other goods or services would likely to be taken as indicating a connection in the course of trade or rendering of services between those goods or services and a person using the mark in relation to the first mentioned goods or services.”

While determining whether the mark is well-known mark, the registrar will take in to consideration while determining that the mark is a well known mark.

(a) the knowledge or recognition of the alleged well known mark in the relevant section of the public including knowledge obtained as a result of promotion of the trademark.
(b) the duration, extent and geographical area of any use for that trademark.
(c) The duration, extent and geographical area for any promotion of the trademark including advertising or publicity and presentation at fairs or exhibition of the goods or services
in which the trademark appears.
(d) The duration and geographical area of any registration of any publication for registration of that trademark under this Act to the extent that they reflect the use or recognition of that
trademark.
(e) The record of successful enforcements of the rights in that trademark, in particular the extent to which the trademark has been recognized as a well known trademark by any Court or Registrar under that record.

Whereas a trademark has been determined to be well known in at least one relevant section of the public in India by any court or Registrar, the Registrar shall consider that trademark as a well known trademark for registration under this Act.

“Relevant section of Public” may be actual or potential consumers of, persons involved in channels of distribution of or business circles dealing with the type of goods or services to which the mark is applied.

The Registrar is not required to consider the following facts while determining a well known trademark.
a) The Trademark has been used in India
b) The Trademark has been registered
c) The application for registration of the Trademark has been filed in India.
d) The trademark is well known in or has been registered in, or in respect of which an application for registration has been filed in any jurisdiction other than India or
e) The trademark is well known to the public at large in India.

Priority:
For claiming a priority from an application filed in United States a corresponding application should be filed in India within 6 months of date of filing of original application.

Various Grounds for refusal:

Absolute grounds:
Section 9 of the Trademarks Act, 1999 sets out the absolute grounds for refusal of trademarks, which can be grouped under following heads:
a) Trademark is devoid of distinctive character;
b) Trademarks that are descriptive;
c) Trademarks likely to deceive of cause confusion;
d) Trademarks or signs that are customary in current language and in the bonafide and established and customary practice of the trade;
e) Trademarks comprising scandalous or obscene matter or likely to hurt religious susceptibilities in India;
f) Trademarks consisting of shape which are purely functional or are necessary to obtain a technical result or give substantial value to the goods; or
g) Trademarks whose use is prohibited under Emblems and Names (Prevention of Improper Use) Act, 1950.

Prohibition:
Section 13 of the Trademarks Act, 1999 prohibits registration of any word as trademark which is:
a) Commonly used and accepted name of any chemical element or any chemical compound (as distinguished from mixtures) in respect of a chemical substance or preparation; or
b) Declared by the World Health Organization and notified as such by the Registrar, as an International non-proprietary names.

Relative grounds of refusal:
Section 11 of the Trademarks Act, 1999 sets out the relative grounds for refusal of trademarks, which can be grouped under following heads:
a) identical or similar to a previous mark with and/or without similar or identical goods;
b) Prohibition of use of the trademark under passing off or law of copyright;

Statutory defense available under the Act:

For registration:
a) Honest concurrent use;
b) Acquiescence; or
c) Prior user

Against Injunction suit or criminal matters
a) Use in accordance with honest practices in Industrial or commercial matters;
b) Parallel Imports;
c) Fair use in description of the goods or services; or
d) Generic ness.

Special Considerations in case of well known mark:
As per Section 11 of the Trademarks Act, while considering an application for registration of a trademark and opposition filed in respect thereof the Registrar shall
a) protect a well known trademark against the identical or similar trademark.
b) take into consideration the bad faith involved either of the applicant or the opponent affecting the rights relating to the trade mark.

However this provision shall not effect the trademark if it trademark has been registered in good faith disclosing the material information to the Registrar or where right to a trademark has been acquired through use in good faith before the commencement of this Act.

Enforcement of Trademarks Rights:

Opposition (before the Registrar) and Cancellation (before the Registrar as well as Appellate Board)

Opposition can only be done after publication of the trademark and within 3 months of date of availability of Journal. One month extension is available if sought before the expiry of 3
months time.

Cancellation on the ground of non-use for a period of 5 years and 3 months and proof of intention on part of the registered proprietor not to use the trademark at the filing date and nonuse till the cancellation petition.

Before the Courts: Ex-parte Injunction, Permanent Injunction, Anton Pillar Order, and /or Arrest and Seizure of goods (irrespective of registration).

Assignment/ license:
Trademarks are now recognized as a “movable property” under the Indian law and can be therefore assigned/ licensed. A trademark can be assigned with or without the goodwill
attached to it.

Renewal:
The trademarks can be renewed perpetually, are renewable for a period of 10 years on payment of prescribed fees.

Express processing:
Under Indian trademark law now it is possible to expedite the various proceeding e.g. search, examination etc. by filing a request with prescribed fees. Indian Trademarks law are at par with the International laws and has stringent procedures for safeguarding and protecting interest of the proprietor of mark.

INTERPRETATION OF OBVIOUSNESS IN EUROPE

The expression "inventive step" is predominantly used for instance in European Union while the expression "non- obviousness" is predominantly used in United States of America. The assessment of the inventive step and non-obviousness varies from one country to another while the underlying basic principal remains the same. Therefore the practice of the different patent office differs from each other.

Under Article 52(1) in conjunction with Article 56 of the European Patent Convention, European patents shall be granted for inventions which inter alia involve an inventive step, that is, the invention, having regard to the state of the art, must not be obvious to a person skilled in the art. For assessment of the inventive step the European Patents Office follows the "Problem solution approach".

Problem-solution approach:

In order to assess whether an invention involves an inventive step the Examining Divisions, the Opposition Divisions, and even the Boards of Appeal of the European Patents office apply the "problem-solution approach". The various steps included in this approach are:-

Identifying the closest prior art, i.e., the most relevant prior art;

Determining the objective technical problem, i.e., determining, in view of the closest prior art, the technical problem which the claimed invention addresses and successfully solves; and

Examining whether or not the claimed solution to the objective technical problem is obvious for the skilled person in view of the state of the art in general.

This step is conducted according to the "could-would approach". Under this approach, "the question to address" in order to assess whether the invention involves an inventive step is as follows:

Is there any teaching in the prior art, as a whole, that would (not simply could) have prompted the skilled person, faced with the objective technical problem formulated when considering the technical features not disclosed by the closest prior art, to modify or adapt said closest prior art while taking account of that teaching [the teaching of the prior art, not just the teaching of the closest prior art], thereby arriving at something falling within the terms of the claims, and thus achieving what the invention achieves?

If the skilled person would have been prompted to modify the closest prior art in such a way as to arrive at something falling within the terms of the claims, then the invention does not involve an inventive step.

The point is not whether the skilled person could have arrived at the invention by adapting or modifying the closest prior art, but whether he would have done so because the prior art incited him to do so in the hope of solving the objective technical problem or in expectation of some improvement or advantage. This must have been the case for the skilled person before the filing or priority date valid for the claim under examination.

A set of rules regarding the approach taken by the United Kingdom courts was laid out by the Court of Appeal in Windsurfing International Inc. v Tabur Marine (GB) Ltd. [1985] RPC 59, in determining the requirements for inventive step:

Identifying the inventive concept embodied in the patent;
Imputing to a normally skilled but unimaginative addressee what was common general knowledge in the art at the priority date;
Identifying the differences if any between the matter cited and the alleged invention; and

Deciding whether those differences, viewed without any knowledge of the alleged invention, constituted steps which would have been obvious to the skilled man or whether they required any degree of invention.

Microorganisms patenting per se being considered to be a product patent the period of protection was 5 years from the date of grant or 7 years from the date of filing of application for patent. Now grant of patents for microbiological inventions is for a period of 20 years from the date of filing.

The most vital and important distinction between the legal practices of the India and developed countries is that India (developing countries) do not allow patenting of microorganisms that already exist in nature as the same is considered to be a discovery as per the provisions of the section 3(d) and therefore not patentable. But genetically modified versions of the same microorganisms that result in enhancement of its known efficacies are patentable.

The grants of Patent in respect of microorganisms depend upon the regulations concerning the requirements for the deposition of microorganisms under the Budapest Treaty of which India has become a member and accessibility of that microorganism from the depositories. As per proviso (ii) to section 10(d) the Microorganism if not being described fully and particularly and is not available to public the said Microorganism is to be deposited before the International Depositary Authority under the Budapest Treaty with 3 months of making application in India. All details, available characteristics of the microorganisms and details of depositary institutions shall be mentioned in specification for correctly identifying the same. Further access to the same is required to be made available only after date of Application in India or date of priority. For the purpose of microorganisms and other Biological materials Microbial Type Culture Collection and Gene Bank (MTCC) is an internationally recognised depository institution.

It is therefore advisable before proceeding to file a patent application in respect of microorganisms and other biological material to ensure that the same is not hit by the provisions of the section 3(d) of the Indian Patent Act and the invention is not a mere discovery of what already exist in nature and in case of genetically modified variant of microorganism or other biological material the invention results in enhancing the efficacy of already existing strain of the microorganism or other biological material.