Our Frequently Asked Questions section offers quick answers to the most common questions received from Helpdesk users. Questions are related to different IP topics, with a special focus on trademark and patent registration in India. We will continuously update this FAQs section. However, should you do not find the answer you are looking for, please do not hesitate to contact with our free helpline service.
About the India IP SME Helpdesk
The India IP SME Helpdesk is an initiative funded by the European Union to support European SMEs in protecting their intellectual property rights in India.
The India IP SME Helpdesk provides the following services free-of-charge:
- Helpline service, answering all IP-related enquiries within 3 working days.
- Training service, training sessions on matters of IP protection in India organised online and on-sight throughout Europe.
- IP Resources, a library of material providing practical information related to IP protection in India.
IP Rights in General
All applications for the registration of IPRs in India must be filed either in English or in Hindi.
The Office of Controller General of Patents, Designs, and Trade Marks (CGPDTM), India’s IP Office, is the government agency administrating the issuance and management of all IP rights in India. It is located in Mumbai and oversees the work of all its branches, each specialised in a specific IP right, which are located across different cities in India.
Applications for the registration of IP Rights such as patents, trade marks or design rights can be filed by the applicant directly. It is however always recommended to go through a specialised IP agent to ensure the greatest probability of success of the application.
Note however that applicants which do not have an address or place of business in India must be represented by a local agent.
India protects copyright, trade marks, patents, industrial designs, geographical indications and semiconductor integrated circuits layout designs.
Indian law recognises three categories of IPR applicants: individuals, start-ups and small entities, and large entities.
Start-ups and small entities can benefit not only from reduced official fees, but can also avail the option of accelerated application procedures, reducing the time necessary to obtain their IPR registrations. The applicants who declare themselves as start-ups or small entities are required to provide evidence that they meet the related criteria in regard to size, turnover, period of incorporation or registration, which is also applicable for foreign applicants.
No. As per the EU definition, an SME is an organisation which employs less than 250 persons and which has an annual turnover not exceeding EUR 50 million, and/or an annual balance sheet total not exceeding EUR 43 million.
A small entity in India is defined as an entity which manufactures and produces goods or provides services whilst investment in machinery/ equipment does not exceeds 100,000,000 INR (approximately EUR 1,14 million) and its turnover does not exceed 5,00,000,000 INR (approximately EUR 5,7 million).
Trade Marks in India
India participates in the Madrid System, an international trade mark applications can therefore be applied for in regards to India.
Trade marks are valid and enforceable in India for 10 years from the date of filing of the application. Trade mark rights can be renewed every 10 years.
The cost for the trade mark registration is 4,500 INR (approximately 51 EUR) for Individual / Start-up/ Small Enterprise, and 9,000 INR (approximately 102 EUR) for the other applicants per each class and each mark. Renewal fees are 9,000 INR (approximately 102 EUR) per each class and each mark.
Patents in India
An application for a patent can be filed at the Office of the Controller General of Patents, Designs and Trade Marks, generally known as the Indian Patent Office (IPO), either in hard copy or through their online filing system. The applicant for a patent must submit a complete or provisional specification which is legal document describing invention in English, along with requested forms and fees.
The IPO automatically publishes your patent application in the Official Patent Journal within 18 months from the date of filing or at a priority date i.e. date of filing the first application in your home country, whichever is earlier. You can also request for early publication by submitting the prescribed form with prescribed fees thereby your application will be published in the Official Patent Journal within one month from receiving such request.
Before publication, IPO will maintain the content of the application confidential.
Patents grated in India are valid and enforceable for 20 years from the date of filing of the application.
No, India does not have a utility model protection system.
If you are an EU applicant who wishes to file an application for an Indian patent and who does not reside or have their place of business in India, you are required to engage a registered patent agent. You will have to provide your patent agent with a power of attorney which must be submitted within three months from the date of filing the patent application to the IPO.
The IPO will examine your patent application only after you file the request for examination along with proof of payment of the prescribed fees. The request for examination must be filed within 48 months either from the priority date or the date of filing of Indian patent application, whichever is earlier. If you are an SME or start-up you can also apply for expediated examination by submitting the required form and fees. If you do so, your application will be examined within three months from filing such request.
Upon examination of your patent application the IPO issues the First Examination Report (FER) which is electronically delivered to your patent agent. Your patent agent will have to prepare a document called “Response to the FER” addressing all formal and substantial objections which were raised by the Examiner and Controller. The “Response to the FER” must be submitted along with all necessary amendments in the patent specification, forms and required documents within six months of issuance of the FER. Subsequently, the patent examiner evaluates whether all formal and substantial objections raised by the FER have been complied with and if so, the Controller grants the patent.
If the response to the FER does not sufficiently address formal and substantial objections raised, the Controller issues a hearing notice to your patent agent to attend an oral hearing. The objections cited in the hearing notice are usually in regard to more complex issues such as scope of the claims, novelty and inventive step or patentability of subject matter. After your application is discussed at the hearing, the patent agent will file ‘Hearing Submissions’. If the Controller is satisfied with the amendments in the patent specifications or the arguments outlined in the hearing submissions, the Controller grants the patent. If the hearing submissions fail to address objections raised by the Controller, the application is rejected.
According to the latest statistics, the IPO takes on average 48 months to give a final decision in regard to a patent application. If you avail the option of expediated examination, your Indian patent can be granted within twelve to 18 months.
The status of the application along with the complete “file wrapper” which contains the complete specification, forms, power of attorney, translations, etc., can be accessed via the system inPASS.
The Indian law recognises four categories of patent applicants: 1)natural person, 2) start-up,3) small entity,and 4) large entity. For a small entity, start-up and natural person, the official application fee is 1600 INR (approximately 18 EUR) for a single priority (the earliest patent application filed for the same invention) for every additional claimed priority the application fee gets multiplied. For example, if your Indian application claims priority from two foreign patent applications then the official application fee for a start-up would be 3200 INR (approximately 36 EUR).
The official application fee for a large entity is 8000 INR (approximately 90 EUR) for a single priority. Similarly, for every additional priority application fee for the the large entity is multiplied accordingly.
After filing a patent application in your home country, you have to file the corresponding patent application in India within 12 months from the date of filing of the earliest application, otherwise, it might get rejected. Alternatively, if you file a patent application under the Patent Cooperation Treaty (PCT) route you can select India as one of the designated states. The application must enter the Indian national phase within 31 months from the date of the earliest application.
Unfortunately, you can only stop any infringer and enforce your IP right once your patent is granted by the Indian Patent Office (IPO). You can however claim damages for infringing actions which have taken place after the date of publication of your patent application.
Generally speaking, any public disclosure of an inventions before the filing of the patent application results in a loss of novelty which can lead to the patent application being rejected. Indian patent law however provides a grace period of 12 months prior to the filing of the application during which certain disclosures of the invention will not be taken into account. This applied to disclosures during exhibitions organised by the Government and notified to the IPO. However, it is always advisable to file a patent application first before any public disclosure of the invention.
If the invention was made in India you are required to file your first patent application for this invention with the Indian Patent Office (IPO). Only 6 weeks later can you proceed with any foreign filing or the filing of a PCT application. If you want to file a patent application in a foreign country or as an international PCT application without prior Indian filing, you must request the IPO to issue a so-called Foreign Filing License (FFL). The FFL is usually issued within 21 days from filing of the FFL request.
Yes. The Indian patent law mandates that every patent holder and every licensee, whether exclusive or otherwise, is required to submit annually a document called “Statement of Working” indicating whether the invention disclosed in the patent has been commercially exploited. Not complying with this requirement might be considered a punishable offence under Indian Patent Act. A patent attorney or patent agent can guide you on how to fill in Statement of Working and file it on your behalf at the IPO.
Software per se (the code of your software) is not considered patentable under Indian Patent Law. However, if the invention uses software in combination with hardware element(s), provides technical effect and fulfils patentability criteria, in that case the invention might be eligible for a patent protection. The source code of your software can be protected by copyright.
No, it would not. Since a patent is a territorial right, it is only valid in the country in which it is registered. Hence, it is essential to also file a patent application for your product or technology in India. If not, you cannot enforce your rights or stop infringement.
Industrial Designs in India
No, India does not participate in the Hague system for the international registration of design rights. Therefore, applications must be filed directly with the India IP Office to protect industrial designs in this territory.
Industrial design rights are valid and enforceable for 10 years from the date of filing of the application. Protection can be renewed once for an additional period of 5 years.
Application fees for a design registration are 1,000 INR (approximately 11 EUR) for natural person, start-up and/or small entity and 4,000 INR (approximately 45 EUR) for others. In addition, the renewal fees for a design are 2,000 INR (approximately 23 EUR) for a natural person start-up and small entity, and 8,000 INR (approximately 90 EUR) for others.
No, industrial design rights are only enforceable in India if it has been registered with the Indian IP Office. In certain cases, copyright protection may also be available until registration of the design.
The Indian Design Act provides protection for a shape, configuration, surface pattern, colour, or line (or a combination of these), which can be applied to a two-dimensional or a three-dimensional functional article which is manufactured by industrial process. Industrial design only protects aesthetics and looks of the article, not its functional elements.
A design application can be filed with the Indian Design Office either in hard copy or through an online filing system along with necessary forms and fees. After submission, the examiner reviews your application and issues an Examination Report. You or your appointed patent agent will have to respond to the Examination Report within 6 months after its issuance. If all objections raised by the Examiner are resolved, the application will proceed for registration. Alternatively, the Examiner will appoint a hearing to discuss the objection(s) and consequently the application is either registered or rejected by the Design Office.
If you are an EU applicant who wishes to file an application for an industrial design and who does not reside or have their place of business in India, you are required to engage an Indian registered patent agent. Patent agents can deal with both patent and industrial design applications. You will have to provide your patent agent with a power of attorney to act on your behalf.
Like the EU and all its member states, India is a signatory to the Locarno Agreement. Therefore the Indian Design Classification System has been harmonised with international norms and you do not have to reclassify your design applications which you might have filed in your home country.
After filing a design application in your home country (or elsewhere), you must file a corresponding application for the same design in India within 6 months from the date of filing of the earliest application. If you fail to do so, the Indian application might get rejected for lack of novelty and the inability to claim priority based on your earlier application once these 6 months have passed.
You can protect a product or technology by both an industrial design and a patent, as an industrial design protects their looks and a patent protects its functional features which are new and inventive.
However, in the case of artistic work (which can include elements protectable as designs), copyright protection automatically arises from the moment of its creation. If you register an industrial design for such work, then the copyright protection ceases to exist as the dual protection is not allowable.
Moreover, in the absence of design registration, copyright protection will also come to an end whenever any article to which the work is applied, has been reproduced by an industrial process more than 50 times.
Copyright in India
Copyright over a work in India exists from the moment the work protected has been created.
However, a copyright is only enforceable and can be used to bring proceedings against alleged infringers if it has been registered beforehand.
The duration of the copyright protection varies according to the nature of works. In the case of musical, artistic and literary works, copyright subsists for the lifetime of the author plus 60 years after his/her death. Films, photographs, and software are protected for 60 years from the year of their public disclosure. The rights over broadcasts last for 25 years from the year of broadcast and performers rights last for 50 years from the year the performance was made.