Frankly, I didn’t quite believe it myself. But last month when I received a patent certificate for a patent application that I filed in April last year, my cynical approach and skepticism of the patent office and its functioning, beat a humble retreat.
Consider this, I filed a non-conventional patent application in the last week of April 2005. My client was in a mad rush to launch his product in the market and desperately required the patent grant, so as to reassure his investors and justify future expenditure on the project.
I therefore filed a request for early publication as provided by section 11 (2) of the Patents (Amendment) Act 2005 at the time of filing the application. This application was published in the official journal in the second week of August 2005. Thus, a request for early publication resulted in the application being published in 3 and a half months instead of the ‘at least’ eighteen months as is required by section 11(1), Rule 24. It should be remembered that the Patent (Amendment) Rules 2005 were in force at the time. The requirement that an application be published ordinarily within one month from the date of filing a request for early publication was introduced by the Patent (Amendment) Rules 2006, which came into effect from May 5 2006.
Following the publication, I filed a request for substantive examination in the third week of August 2005, i.e. within a week of the journal publication. A first examination report was issued in the fourth week of October 2005, that is, in approximately two months from the date of request. The examination report, in view of the Patent (Amendment) Rules 2005, then in force, stated that the application must be placed in order for grant within a period of 6 months. Accordingly, the application was to be placed in order by the last week of April 2006. This ironically happens to be exactly one year from the date of filing the application.
Again, it is pertinent to mention that the Patent (Amendment) Rules 2005 did not require that the examination report be issued ordinarily within 6 months from the date of request or publication, whichever is later. Thus the issuance of an examination report in a period of two months from the date of request indicates the Indian patent office is geared to accommodate the changes in time periods that have now been introduced by the Patent (Amendment) Rules 2006.
I filed a response to the examination report in the first week of November complying with the objections raised by the examiner and also followed it up by a telephonic discussion and finally a visit to the Patent Office in the third week of November, to iron out the pending objections. Thus the patent application was in order for grant in the last week of November 2005, a total period of seven months from the date of filing the application.
However, in view of existing procedures the application was technically placed in order for grant on the expiry of the period provided i.e. in the last week of April 2006. The application was then granted in the third week of June 2006 and the grant was recorded in the Register of Patents in the second week of September. The Patent Certificate was received by me in the last week of September 2006. As a result, the patent was granted in a period of 14 months from filing the application and a patent certificate was received in 17 months from the filing date.
From an era, not so long ago, where the time period between filing an application to grant of a patent took anywhere between 4 to 7 years and often longer, to have a patent granted within 14 months is a sign that the Indian patent office has truly evolved into a world class institution.
Having said that, it should be remembered that with the introduction of the Patent (Amendment) Rules 2006, the time period for placing the application in order for grant has been increased to twelve months from the date of issuance of the first examination report. Consequently, a patent should now realistically be granted in a period of 24 to 36 months, if one decides to be on the fast track.
Now here’s what I learnt from this experience:
1. Enclose a soft copy of your application and the drawings on a floppy or CD so as to assist the publication department of the Patent Office to publish the application early. They may or may not accept it, but the Mumbai and Delhi patent offices are warming to the idea.
2.Keep following up. Sometimes all it takes is a call every single day of the week to have your application published in time.
3.Don’t wait for the last month to respond to the FER or discuss the case with the examiner. If possible try and respond to the FER within three weeks of receiving it.
Ensure that all amended documents reach the examiner while the file is still with him.
Copyright Essenese Obhan
Sunday, October 29, 2006
Monday, October 02, 2006
Copyright v. Copyright- Indian Designs Act and Copyrights Act
In an interesting decision by the Delhi High Court several issues pertaining to the overlap between Copyright Law and Design laws were laid to rest in the matter between Microfibres Inc Vs. Girdhar and Co. and Ors. CS (OS) No. 1480/2002 Decided On 13.01.2006 {also 128(2006)DLT238, 2006(32)PTC157(Del)}
In this case the plaintiff, a US based company involved in the manufacturing, marketing, selling and exporting of upholstery fabrics, claimed that the defendants have violated its copyright in the artistic works applied to upholstery fabrics and alleged that the defendant attempted to pass off the goods of the defendant as that of the plaintiff.
The plaintiff stated that its upholstery fabrics are printed, unique and original artistic works which are conceptualized and drawn/printed by either its employees or other persons who have assigned the copyright in the works to the plaintiff. Thus the plaintiff claimed that this artistic work constitutes original artistic work as defined within the meaning of Section 2(c) of the Copyright Act. and protect able under the Berne Convention, Universal Copyright Convention read with Indian International Copyright Order, 1999.
The plaintiff claimed that in May 2002, the plaintiff discovered that defendant was manufacturing, marketing and distributing upholstery fabric. The upholstery fabric manufactured and sold by the defendant was stated to bear the artistic works which are identical copies or colourable imitations of the artistic work in which the plaintiff has a copyright and all the distinctive features of the plaintiff's artistic work was alleged to have been copied.
The primary defense raised by the defendants is that the plaintiff is not entitled to protection under the Copyright Act as the artistic works are actually designs relating to textile products and came within the scope of the Designs Act, 2000. The plaintiff had failed to apply for registration of designs in India under the provisions of the said Act or the predecessor Act being the Designs Act, 1911 (hereinafter referred to as the Designs Act, 1911) The plaintiff having failed to complete the requisite formalities under either of the two designs Acts, is alleged to be now seeking to claim protection under the Copyright Act, which is not permissible.
Defendant further claimed that in textile trade, the designs in use are built around permutations and combinations of a limited number of motifs/imitations drawn from various sources and requiring very little by way of distinguishing variations to claim originality. Thus the three fold submission of the defendants were:
i) The plaintiff was itself conscious of the fact that registration was required under the Designs Act and had applied for designs to be registered in U.K. under the local Designs Act;
ii) The certificate relied upon and issued by the United States Copyright Office refers to the subject as fabric designs and not artistic works;
iii) The Indian Patent and Designs Office has confirmed vide its letter-dated 19.07.2002 that the subject designs being textile designs are registrable under the Designs Act, 2000.
The defendants also alleged that the plaintiff is guilty of suppressio veri and suggestio falsi i.e. the plaintiff failed to disclose the prior litigation including criminal proceedings where investigation officer had submitted a report to the court clearly stating that no case under the copyright law had been made out.
In the conspectus of the aforesaid position, the eight issues were framed. We will restrict ourselves only to the relevant ones, which are -
1. Whether there is any Copyright in the stated artistic work of the plaintiff.
2. Whether any Copyright subsists in favour of the plaintiff in view of the provisions of Section 15 of the Copyright Act.
The plaintiff placed reliance upon the Berne Convention for protection of literary and artistic works. The plaintiff state that as per Article 16(a) of the Convention protection exists automatically and there is no registration required in India in view of India being a signatory to Berne Convention, the Universal Copyright Convention, 1971 and the International Copyright Order 1999 being promulgated.
The defendants emphasized that the crucial question to be considered would be whether the subject work in question is an 'artistic work' protected under the provisions of the Copyright Act or a 'design' under the Designs Act, 2000 (or the Designs Act, 1911). The defendants contended that the subject work in dispute is floral designs, which are applied upon fabrics used for upholstery through an industrial process. This is the reason why in United Kingdom the plaintiff has registered the subject work as a design. A practical proof of this is stated to be the letter dated 19.07.2002 issued by the Patent Office to the effect that 'textile design fabrics' are registrable under the Designs Act, 2000.
The defendants contended that the legislative intent behind the repealed Designs Act, 1911 and coming into force of the new Designs Act, 2000 remained the same and the exclusion of 'artistic work' in the definition in the new Designs Act, 2000 is only clarificatory and was intended to exclude only artistic work pure and simple such as paintings, sculptures and works of art.
The court held that in order for the work of the plaintiff to qualify as 'artistic work', it must fall within the definition of Sub-section (c) of Section 2 of the Copyright Act. A reading of the said provision would show that attempt of the plaintiff can only be to bring it within the concept of 'painting'.
The court observed that “there is no doubt that labour has been put and there is some innovativeness applied to put a particular configuration in place. Such configuration is of the motifs and designs which by themselves would not be original. The originality is being claimed on the basis of the arrangement made. What cannot be lost sight of is the very object with which such arrangements or works had been made. The object is to put them to industrial use. An industrial process has to be done to apply the work or configuration to the textile. It is not something which has to be framed and put on the wall or would have any utility by itself. The two important aspects are the object with which it is made (which is industrial) and its inability to stand by itself as a piece of art. In fact, it has no independent existence of itself.”
The court further held that In India there are special legislations governing the protection of different nature of rights. For instance the industrial designs the protection is provided under the Designs Act, 2000 and the now repealed Designs Act, 1911.
The court observed “An important and relevant aspect is that both under the old Act and the new Act, fabric designs on textile goods have been classified as proper subject matter of design protection by inclusion as a specific class in the Rules framed under the Acts. In the Designs Act of 1911, class 13 and 14 of the Fourth Schedule of the Rules dealt with printed or woven designs of textile goods other than checks and stripes and checks and stripes respectively. Such protection is now provided under Class 05 of the new Design Rules of 2001. Furthermore, the legislative intent is also to be kept in mind which is to provide protection for a certain period of time for commercial exploitation.”
Therefore nature of protection is quite different for an artistic work under the Copyright Act which is for the lifetime of the author / creator + 60 years. This is not so in the case of commercial exploitation as under the Designs Act and the Patent Act the period is much lesser. In the present case, the configuration was made only with the object of putting it to industrial / commercial use.
The exclusion of an 'artistic work' as defined in Section 2(c) of the Copyright Act from the definition of 'design' under Section 2(d) of the Designs Act, 2000 is only meant to exclude the nature of artistic works like painting of M.F. Hussain. It is, thus, the paintings, sculptors and such works of art which are sought to be specifically excluded from the new Act.
Thus, the intention of the legislature has been expressed as one to protect any artistic work which has to be commercially exploited by the owner of the copyright by not providing the protection under the Copyright Act, but under the earlier the Designs Act, 1911.
“To this extent, I see no difference between the intent under the old Act and the new Act. A perusal of the Statement of Objects and Reasons for introduction of the new Act, the handouts issued by the Design Office and the registrations made of textile fabrics both under the old Act and the new Act leave little manner of doubt that the protection for such configurations, designs or works (by whichever name it may be called) is provided under the Designs Act. It is, thus, apparently clear that in the context of the Indian Law, it is the Design Act of 1911 or 2000, which would give protection to the plaintiff and not the Copyright Act.
The application of mind and skill is not being denied nor the fact that the defendants have copied the same, but that would still not amount to the works in question being labeled as 'artistic work' within the definition of Section 2(c) of the Copyright Act and, thus, the protection is not available under the Copyright Act. Issue No. 1 is answered accordingly.”
As regards the second issue arising from the provisions of Section 15 of the Copyright Act. The Section provides that copyright subsists under the Copyright Act in any design, which is registered under the Designs Act, 1911 and in case a design is capable of being registered under the Designs Act, 1911, the copyright shall cease as long as any article to which the design has been applied has been reproduced more than 50 times by an industrial process by the owner of the copyright or his licensee.
The court held that the patterns and designs of the plaintiff were capable of registration both under the old Designs Act and the new Designs Act and the plaintiff failed to do so with the result that the protection is not available to the plaintiff, which would have arisen if they had been so registered.
The suit was accordingly dismissed in favour of the defendants.
In this case the plaintiff, a US based company involved in the manufacturing, marketing, selling and exporting of upholstery fabrics, claimed that the defendants have violated its copyright in the artistic works applied to upholstery fabrics and alleged that the defendant attempted to pass off the goods of the defendant as that of the plaintiff.
The plaintiff stated that its upholstery fabrics are printed, unique and original artistic works which are conceptualized and drawn/printed by either its employees or other persons who have assigned the copyright in the works to the plaintiff. Thus the plaintiff claimed that this artistic work constitutes original artistic work as defined within the meaning of Section 2(c) of the Copyright Act. and protect able under the Berne Convention, Universal Copyright Convention read with Indian International Copyright Order, 1999.
The plaintiff claimed that in May 2002, the plaintiff discovered that defendant was manufacturing, marketing and distributing upholstery fabric. The upholstery fabric manufactured and sold by the defendant was stated to bear the artistic works which are identical copies or colourable imitations of the artistic work in which the plaintiff has a copyright and all the distinctive features of the plaintiff's artistic work was alleged to have been copied.
The primary defense raised by the defendants is that the plaintiff is not entitled to protection under the Copyright Act as the artistic works are actually designs relating to textile products and came within the scope of the Designs Act, 2000. The plaintiff had failed to apply for registration of designs in India under the provisions of the said Act or the predecessor Act being the Designs Act, 1911 (hereinafter referred to as the Designs Act, 1911) The plaintiff having failed to complete the requisite formalities under either of the two designs Acts, is alleged to be now seeking to claim protection under the Copyright Act, which is not permissible.
Defendant further claimed that in textile trade, the designs in use are built around permutations and combinations of a limited number of motifs/imitations drawn from various sources and requiring very little by way of distinguishing variations to claim originality. Thus the three fold submission of the defendants were:
i) The plaintiff was itself conscious of the fact that registration was required under the Designs Act and had applied for designs to be registered in U.K. under the local Designs Act;
ii) The certificate relied upon and issued by the United States Copyright Office refers to the subject as fabric designs and not artistic works;
iii) The Indian Patent and Designs Office has confirmed vide its letter-dated 19.07.2002 that the subject designs being textile designs are registrable under the Designs Act, 2000.
The defendants also alleged that the plaintiff is guilty of suppressio veri and suggestio falsi i.e. the plaintiff failed to disclose the prior litigation including criminal proceedings where investigation officer had submitted a report to the court clearly stating that no case under the copyright law had been made out.
In the conspectus of the aforesaid position, the eight issues were framed. We will restrict ourselves only to the relevant ones, which are -
1. Whether there is any Copyright in the stated artistic work of the plaintiff.
2. Whether any Copyright subsists in favour of the plaintiff in view of the provisions of Section 15 of the Copyright Act.
The plaintiff placed reliance upon the Berne Convention for protection of literary and artistic works. The plaintiff state that as per Article 16(a) of the Convention protection exists automatically and there is no registration required in India in view of India being a signatory to Berne Convention, the Universal Copyright Convention, 1971 and the International Copyright Order 1999 being promulgated.
The defendants emphasized that the crucial question to be considered would be whether the subject work in question is an 'artistic work' protected under the provisions of the Copyright Act or a 'design' under the Designs Act, 2000 (or the Designs Act, 1911). The defendants contended that the subject work in dispute is floral designs, which are applied upon fabrics used for upholstery through an industrial process. This is the reason why in United Kingdom the plaintiff has registered the subject work as a design. A practical proof of this is stated to be the letter dated 19.07.2002 issued by the Patent Office to the effect that 'textile design fabrics' are registrable under the Designs Act, 2000.
The defendants contended that the legislative intent behind the repealed Designs Act, 1911 and coming into force of the new Designs Act, 2000 remained the same and the exclusion of 'artistic work' in the definition in the new Designs Act, 2000 is only clarificatory and was intended to exclude only artistic work pure and simple such as paintings, sculptures and works of art.
The court held that in order for the work of the plaintiff to qualify as 'artistic work', it must fall within the definition of Sub-section (c) of Section 2 of the Copyright Act. A reading of the said provision would show that attempt of the plaintiff can only be to bring it within the concept of 'painting'.
The court observed that “there is no doubt that labour has been put and there is some innovativeness applied to put a particular configuration in place. Such configuration is of the motifs and designs which by themselves would not be original. The originality is being claimed on the basis of the arrangement made. What cannot be lost sight of is the very object with which such arrangements or works had been made. The object is to put them to industrial use. An industrial process has to be done to apply the work or configuration to the textile. It is not something which has to be framed and put on the wall or would have any utility by itself. The two important aspects are the object with which it is made (which is industrial) and its inability to stand by itself as a piece of art. In fact, it has no independent existence of itself.”
The court further held that In India there are special legislations governing the protection of different nature of rights. For instance the industrial designs the protection is provided under the Designs Act, 2000 and the now repealed Designs Act, 1911.
The court observed “An important and relevant aspect is that both under the old Act and the new Act, fabric designs on textile goods have been classified as proper subject matter of design protection by inclusion as a specific class in the Rules framed under the Acts. In the Designs Act of 1911, class 13 and 14 of the Fourth Schedule of the Rules dealt with printed or woven designs of textile goods other than checks and stripes and checks and stripes respectively. Such protection is now provided under Class 05 of the new Design Rules of 2001. Furthermore, the legislative intent is also to be kept in mind which is to provide protection for a certain period of time for commercial exploitation.”
Therefore nature of protection is quite different for an artistic work under the Copyright Act which is for the lifetime of the author / creator + 60 years. This is not so in the case of commercial exploitation as under the Designs Act and the Patent Act the period is much lesser. In the present case, the configuration was made only with the object of putting it to industrial / commercial use.
The exclusion of an 'artistic work' as defined in Section 2(c) of the Copyright Act from the definition of 'design' under Section 2(d) of the Designs Act, 2000 is only meant to exclude the nature of artistic works like painting of M.F. Hussain. It is, thus, the paintings, sculptors and such works of art which are sought to be specifically excluded from the new Act.
Thus, the intention of the legislature has been expressed as one to protect any artistic work which has to be commercially exploited by the owner of the copyright by not providing the protection under the Copyright Act, but under the earlier the Designs Act, 1911.
“To this extent, I see no difference between the intent under the old Act and the new Act. A perusal of the Statement of Objects and Reasons for introduction of the new Act, the handouts issued by the Design Office and the registrations made of textile fabrics both under the old Act and the new Act leave little manner of doubt that the protection for such configurations, designs or works (by whichever name it may be called) is provided under the Designs Act. It is, thus, apparently clear that in the context of the Indian Law, it is the Design Act of 1911 or 2000, which would give protection to the plaintiff and not the Copyright Act.
The application of mind and skill is not being denied nor the fact that the defendants have copied the same, but that would still not amount to the works in question being labeled as 'artistic work' within the definition of Section 2(c) of the Copyright Act and, thus, the protection is not available under the Copyright Act. Issue No. 1 is answered accordingly.”
As regards the second issue arising from the provisions of Section 15 of the Copyright Act. The Section provides that copyright subsists under the Copyright Act in any design, which is registered under the Designs Act, 1911 and in case a design is capable of being registered under the Designs Act, 1911, the copyright shall cease as long as any article to which the design has been applied has been reproduced more than 50 times by an industrial process by the owner of the copyright or his licensee.
The court held that the patterns and designs of the plaintiff were capable of registration both under the old Designs Act and the new Designs Act and the plaintiff failed to do so with the result that the protection is not available to the plaintiff, which would have arisen if they had been so registered.
The suit was accordingly dismissed in favour of the defendants.
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