WIPO- World IP Day 2021 and IP Initiatives of
The theme "IP & SMEs: Taking Your Ideas to Market" for World Intellectual Property Day- 2021 has been declared by
In order to take this derive further s
PATENTS
IPAB directs grant of patent for compound claims1
The order was passed by Intellectual Property Appellate Board ('IPAB') in favour of the Appellant,
The claims of the application were amended twice while the prosecution stages (responding to the Frist Office Action and with written hearing submission) to overcome the objections raised by the Respondent.
The refusal order stated that amendment in claims from "composition of matter" to "compound" is not allowed under Section 59 of the Patents Act, 1970 as it is beyond the scope of the present invention. While responding to the objection related to Clarity and Conciseness, the Appellant amended the claims to read the claim as:
Amended Claim 1 | Before Amendment (Previous claim 11) |
A compound comprising a peptide, wherein the peptide comprises Glycine-Arginine-Glycine-Cysteic(Acid)-Threonine-Proline. | A composition of matter comprising an RGCysteic Acid Peptide comprising Glycine-Arginine-Glycine-Cysteic(Acid)-Threonine-Proline. |
The IPAB observed that the amended claims based on "compound" were within the scope, as the description of the invention clearly supports the "compound claims". Therefore, the objection related to amendment raised by the Respondent was without reason. The IPBA also observed that claim set is also claiming "composition" in addition to "compound claim", however both the terms cannot be used interchangeably in the present invention.
The IPAB advised amended claims set 1 to 2, within the scope of the invention however no new matter has been incorporated in the claims. The Respondent was directed to grant the claims set within 3 weeks from the date for filing by the Appellant.
IPAB issues directions for virtual hearing of pre-grant opposition2
The Intellectual Property Appellate Board ('IPAB') while emphasising on the issue of 'Benami' oppositions, issued directions in order to prevent the deliberate attempt of pre-grant opponents to drag the litigation indefinitely to delay the final outcome in the patent application. Accordingly, the division bench issued the following directions -
-
The controller shall fix the hearings in such a way that he hears at least one party every day and finishes all pre-grant oppositions within 15 days;
- If the controller has heard all the opposing parties and has subsequently reserved the order, he shall go ahead with the pronouncement of order even if new pre-grant oppositions have been filed between the dates;
- For subsequent pre-grant oppositions, the controller shall make the opinion as whether any new grounds have been established and annotate whether the subsequent oppositions are maintainable or not;
- No pre-grant opposition shall be unduly accepted where the application for patent is not subsisting/ pending at the Indian Patent Office;
- Persons filing the pre-grant opposition shall submit their valid Aadhar Card/Voter Id Card/ Passport/Driving Licence to authenticate his identity.
Notably, the Assistant Controller of Patents was directed to comply with the abovementioned directions within 3 months from the issuance of the order.
The Draft Patent (Amendment) Rules 2021 notified3
The
As per the proposed amendments, the 'eligible educational institution' means which are established by a Central, Provincial or State Act and is owned or controlled by the Government and is wholly or substantially financed by the Government.
TRADEMARK
The Appellant contended that the mark shall be accorded the benefit of honest and concurrent use due to the mark's usage and cross border reputation. The IPAB noted that the Appellant has a long standing presence through its high impact advertisements and wide internet presence along with trademark registrations in over 8 other jurisdictions.
The Appellant had further submitted voluminous documents compelling the amendment application to be allowed and the benefit under Section 12 of the Trademarks Act, 1999 to be accorded to the Appellant.
Accordingly, the impugned mark with amended user was directed to be accepted by the Registrar of Trademarks.
No monopoly over the mark "CORONIL"6
While setting aside the restraining order issued by the single bench of the
Previously, the grant of injunction had been issued under Section 29 of the Trademarks Act 1999 on the ground that rights conferred by registration are exclusive to the proprietor only. However, the Appellants,
The Court noted that as per Section 17 of the Trademarks Act, 1999, the registered marks are composite marks containing of additional alpha numerals which are absent in the case of the unregistered mark "CORONIL" of the Appellant. Hence, since the marks of Defendant were registered with a disclaimer to the alpha numerals, namely "92 B" and "213 SPL" no monopoly could be claimed over the words 'CORONIL' by the Respondent. Thus the injunction and costs passed by the single bench of the Court against the Appellants were stood to be set aside.
COPYRIGHT
IPAB grants copyright protection to Architectural Drawing7
AAP KA AWAS LLP ('Appellant') had filed a copyright application for an artistic work of a blue print of low cost housing tilted "AAP KI AAWAZ AFORDABLE HOMES" with a description of a two bedroom unit set. The Registrar of Copyrights had previously refused the application on the ground that copyright protection only subsists on original work which is artistic in nature and possess artistic skill or craftsmanship. Resultantly, the Appellant filed an appeal before the Intellectual Property Appellate Board ('IPAB').
Relying upon the Practice and Procedure Manual, 2018, the Appellant claimed that architectural drawing, as a drawn expression of the architect's original thoughts, expressed using technical signs, symbols and graphical representations together form an instruction to build a structure as a result, architectural drawings or plans are copyrightable subject matter. Citing Section 2 (c) of the Copyright Act, 1957, the Appellant further contended that that building plans are covered under 'artistic work', and such a work is not required to possess 'artistic quality'. Additionally, it was also brought to the attention of the IPAB that in the past the Copyright Office has issued 11 such registrations to similar artistic work. In view of the above submissions, the IPAB held that a mere layout apartment/home which is devoid of any artistic skill or craftsmanship is entitled for protection as an artistic work under the Copyright Act.
More importantly, the IPAB observed that concept of 'modicum of creativity' requires that there should be de minimis creativity and that the drawing in form of a diagram is capable of artistic qualities even if it may not look so to a layman. Therefore, the IPAB held that the Appellant's blue print shall be given copyright protection so long as the applicants, in such cases, submit the affidavit stating that they are the original authors of the work and such dimensions are not available prior in the industry.
GENERAL
In a plea to extend the tenure of the Intellectual Property Appellate Board ('IPAB') Chairperson Retd. Justice
The
Accordingly, the
Footnotes
1.
2.
3. Patents (Amendment) Rules, 2021
4.
5.
6.
7. AAP KA AWAS LLP v. The Registrar of Copyrights
8.
The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.
P-24, Green
110016
Tel: 114747 1414
Fax: 114747 1414
E-mail: mondaq@singhania.net
URL: singhania.in
© Mondaq Ltd, 2021 - Tel. +44 (0)20 8544 8300 - http://www.mondaq.com, source