Monthly Archives: July 2013

Khurana & Khurana opens another Branch Office in Bangalore

Khurana & Khurana, Advocates and IP Attorneys (K&K) along with its sister concern, an IP Consulting Firm IIPRD announce that they are opening up a second branch Office in Bangalore w.e.f  29th July 2013, in wake of the rising client requirements and towards their goal of expanding their operations across India.

K&K is a leading full service IP Law Firm in India and represents Indian and International clients ranging from small start-ups to Fortune 200 companies across a broad range of varying complexity IP Issues, giving each client the same experience across the board. K&K is known and recognized for its response time and accuracy in legal advise, which is driving the young and dynamic firm strongly ahead.

K&K has been consecutively ranked and recommended by premier magazines and organisations namely Managing IP, IAM, Legal 500, Asia IP, Corp-INTL, Acquisition INTL, among others. K&K has also recently won an award for the “IP Law Firm of the Year Patents” by Corporate INTL magazine and “IP Valuation Firm of the Year 2013” by Acquisition INTL. K&K is a member of APAA (Asian Patent Attorneys Association), International Trademark Association (INTA), AIPPI (International Association for the Protection of Intellectual Property), and LES (Licensing Executives Society), among others.

IIPRD, on the other hand, has emerged as a premier Intellectual Property Consulting and Commercialization/Licensing Firm with a diversified business practice providing services in the domain of Patent and IP Support to numerous Global Law Firms, Licensing Firms, and Corporates, apart from having a strong focus on Commercialization, Valuation, Licensing, and Transfer of Technology Matters of Intellectual Property Assets.

Bangalore Branch Office Address:

A001, Nitesh Central Park,

Off. Bellary Road,

Bangalore- 560067, India

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The Madrid System for the International Registration of Marks (Madrid System)

The “Madrid System” is a centrally administered system of obtaining a bundle of trademark registrations in different jurisdictions. It is governed by two treaties, the Madrid Agreement and the Madrid Protocol, and is administered by the International Bureau of WIPO in Geneva, Switzerland.  Madrid System permits the filing, registration and maintenance of trade mark rights in more than one jurisdiction provided that the target jurisdiction is a party to the system. It is a primary international system for facilitating the registration of trademarks in multiple jurisdictions around the world. However the scope of Madrid system is different viz a viz  “European Community Trade Mark System” so far as creating an international registration is concerned because it provides a mechanism for obtaining trademark protection in many countries around the world rather than seeking protection separately in each individual country. It creates a bundle of national rights capable being administered centrally as opposed to the “European Community Trade Mark System” which creates International Registration.

More on WIPO: http://wipo.int/portal/index.html.en

INDIA as a Member:

Under the WIPO-administered Madrid system, a trademark owner may protect a mark in up to 88 territories known as Contracting Parties plus the European Union with its Community Trade Mark (CTM) by filing one application, in one language (English, French or Spanish), with one set of fees, in one currency (Swiss Francs).  India also became a signatory to Madrid Protocol on April 8th, 2013 and subsequently acceded on July 8th, 2013, bringing the total number of members to 90.

For list of Members of Madrid System:

http://www.wipo.int/export/sites/www/treaties/en/documents/pdf/madrid_marks.pdf

India as a member of Madrid System:

http://www.wipo.int/pressroom/en/articles/2013/article_0008.html

Working of the Madrid System:

The Madrid System has a mechanism under which a trademark owner having made an application for registration or having an existing registration in a member jurisdiction, which is called as ‘Basic Application / Registration’, may obtain “International Registration” for their trademark through World Intellectual Property Organisation (WIPO). Thereafter the owner of the mark may opt for securing the protection in any one or more member jurisdictions by virtue of the “International Registration”, which process is called as ‘Designation’. Further by virtue of Madrid protocol, it has become possible for a trademark owner to obtain ‘International Registration’ at the time of making an application for registration in any member jurisdiction, concurrently. A trademark owner can obtain trademark protection in any or all member states by filing one application in one jurisdiction with one set of fees and make any alterations in information (Name, Address etc.) and renew registration across all applicable jurisdictions through a single administrative process.

However as a corollary, the natural flipside of the aforementioned characteristic of Madrid System / Protocol is that in case a ‘Basic Registration / Application’ is refused / cancelled or withdrawn, the International registration would also get refused / cancelled or withdrawn to the same extent. For instance an application for registration of a mark for herbal products like soaps, face wash and shampoo is pending but the ‘Basic Application’ for shampoo is cancelled then the ‘International Registration’ of the same mark for shampoo will also get cancelled. Similarly if ‘Basic Application’ is refused the ‘International Registration’ will also get refused. This system whereby a ‘Basic Application’ is attacked for registerability is called ‘Central Attack’. In order to mitigate the effects a successful central attack, an ‘International Registration’ is transformed into a series of applications in each jurisdiction, a process known as ‘Transformation’, though this process is an expensive proposition but makes good sense apparently not only because of this advantage but also because the resulting applications will receive registration date of international registration as their filing date.

For Reference: http://www.wipo.int/madrid/en

FAQs

1. What is Madrid System?

Madrid System is a centrally administered system of obtaining a bundle of trademark registrations in different jurisdictions managed by the International Bureau of World Intellectual Property Organisation (WIPO) in Geneva, Switzerland. Under the WIPO-administered Madrid system, a trademark owner may protect a mark in over 80 countries plus the European Union with its Community Trade Mark (CTM) by filing one application, in one language.

2. What are the advantages of Madrid System / Protocol?

The Madrid Protocol is useful to obtain an international registration on a pending TM application, so that the owner can apply for the International Registration’ concurrently or immediately after filing an application in a member jurisdiction. In addition, it provides to the applicant, the following advantages:

  • One application in one place going through national Trade Mark Office to WIPO
  • One set of documents in one language, English, French or Spanish
  • One fee in one currency
  • One registration number, one renewal date covering more than one country
  • No need for legalisation of documents
  • Cost Effective
  • Only one request for change of name or address of the holder of the registration

3. When did Madrid System become effective in India?

India became a signatory to Madrid Protocol on April 8th, 2013 and subsequently acceded on July 8th, 2013, bringing the total number of members to 90.  With effect from 8th July 2013, registered and pending trade mark proprietors in India have become eligible to apply for International Registration of their mark in the designated member territories. Similarly, as of that date, foreign trademark owners can seek extension of protection of an international registration of a mark to India.

4. Who can file application under Madrid Protocol from India?

Any trademark who is a national of, has a domicile in, or has a real and effective industrial or commercial establishment in India can submit an international application under Madrid Protocol from India. Applicants wishing to use the Madrid system must either hold registration or pending application for trademark protection in Indian trademark registry before seeking international protection.

5. Can India be designated as a Contracting Party in International Registrations existing prior to India acceding to Madrid Protocol?

No. Protection of a mark under International registration, can only be extended to India in cases where an application for International Registration under Madrid Protocol is made after India acceding to Madrid Protocol i.e. 08th July 2013.

6. What is the duration of an international registration?

An international registration lasts for ten years from the date of registration and may be renewed for additional 10-year periods by paying a renewal fee to the International Bureau.

7. What is the cost for filing an international application under Madrid Protocol from India?

An international applicant must pay an amount of Rs.2000/- as Handling Fee to Indian TM Registry. This fee is charged for certifying international applications and transmitting them to the International Bureau. The basic fee for international registration is Swiss Francs(SFR) 653 for non color marks for upto 3 classes payable in Swiss Francs.  A supplementary fee of SFR 100 is payable for each extra class. In addition to the basic application fee, an additional supplementary fee of approximately SFR 100 for each designated country is charged. Though in certain cases the fee may vary as some of the member countries like Japan and India have fixed individual Fee.  There is also a provision of expanding the geographical scope of protection of your mark by adding more countries at later stages.

8. After the mark in an international application registers, can the holder of the international registration request an extension of protection in additional countries?

Yes. The holder of an international registration may designate additional Contracting Parties in a subsequent designation. A subsequent designation is a request by the holder of an international registration for an extension of protection of its international registration to additional Contracting Parties.

9. In what way is Community Trade Mark Registration different from International Registration under Madrid System?

CTM: A single registration creates a single unified right throughout the European Union. The trademark that is the subject of a CTM application must be registrable in all EU Member States; if a ground for rejection applies in just one of the EU Member States, the mark cannot be registered as a CTM, although conversion to national applications is possible in some cases.

MP: Under the Protocol, an application creates rights in those member countries that grant protection through registration. Even if the IR application is refused protection in some designated countries, the application can proceed to registration in the remaining designated countries.

CTM: CTM applications are only examined on absolute grounds. For example, likelihood of confusion due to a prior-filed registration is not a ground for refusal of CTM applications.

MP: An application can be refused registration in the examination process by any of the designated countries under their national laws. Grounds for refusal in member countries may be more extensive than for a CTM application and may include, among other things, refusal based on likelihood of confusion.

CTM: A CTM registration is issued by the Office for Harmonization in the Internal Market (OHIM).

MP: The World Intellectual Property Organization (WIPO) maintains the International Register of marks and administers the Madrid Protocol System.

CTM: There are no restrictions on applicants that can apply for a CTM.  A CTM applicant is not required to have a commercial establishment in the EU.

MP: An applicant for an IR must be a national of, or domiciled in, one of the member countries of the Protocol or have an industrial or commercial establishment in one of the member countries (its “home country”).

CTM: The filing fee for a CTM application covers all 27 countries; no choice of countries is allowed.

MP: Fees for an application filed under the Madrid Protocol are dependent on the number of countries designated by the applicant.

CTM: The initial CTM registration period is ten years from the date of filing the application and is independent of any other application or registration.

MP: The initial IR period is ten years from filing; however, it is dependent upon a valid home application or registration for the first five years.

CTM: A CTM applicant is free to file for whatever goods and services it wishes. Priority under the Paris Convention based on a previously filed application may be claimed, but additional goods and services may also be covered (without priority).

MP: In an application filed under the Madrid Protocol, the description of goods and services must be no broader than those in the home application regardless of whether priority is claimed.

CTM: It is possible to obtain an injunction against infringement that covers the entire EU.

MP: Action for infringement is taken through the courts of the country concerned and generally any injunction extends to that country only.

About the Author: Mr. Sharad Saini, Trade Mark Attorney at Khurana & Khurana and can be reached at: sharad@khuranaandkhurana.com

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Now Responses to Examination Reports can be filed online too!

As per the notification of 07th July 2013 at the Indian Patent Office, the responses to Examination Reports can now be also filed online.

The online database of Indian Patent Office has been significantly automated over the last couple of months causing much convenience to the Applicants and Agents as well as speeding processes at the Patent Office. Now, every form from Form 1 to 27 including Petitions and every request including application for post-dating, alteration in patent register, entry of additional address of service, correction of clerical errors etc., can be filed online.

Online Filing of responses to Examination Reports will considerably reduce the time and increase the efficiency resulting in speedy disposal of applications.

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Monsanto’s Patent on Method of Producing Transgenic Plants refused by IPAB

Monsanto’s Indian patent application 2407/DEL/NP/2006 on transgenic plants with heat/salt/draught tolerant plants is rejected by IPAB.  The subject patent application is directed to a method of producing a draught/stress/heat/salt/drug tolerant transgenic plants by inserting a recombinant DNA molecule that expresses a cold shock protein CspA or CspB. The subject patent application was rejected by the Controller of Patents on lack of inventive step under 2(1)(ja) in view of three prior art references and under section 3d.

The final set of amended claims contain four claims, the independent claim is as follows:

1.  A method of producing a transgenic plant comprising the steps of:

 (a) inserting into the genome of plant cells a recombinant DNA molecule comprising a DNA encoding a cold shock protein, wherein said DNA encoding said cold shock protein is operably linked to a promoter and operably linked to a 3′ transcription termination DNA polynucleotide;

(b) obtaining transformed plant cell containing said recombinant DNA;

(c) regenerating plants from said plant cells; and

(d) selecting a plant for increased heat tolerance, salt tolerance, or drought tolerance.

In the IPAB decision, it was held that the cited prior art discloses structure and function of cold shock protein CspA and CspB and thus would be obvious to a person skilled in the art to make transgenic plants using the same. Further, under section 3(d), it was held that the subject patent’s invention is just a new application of the already known cold shock protein in producing stress/draught/heat/salt tolerant transgenic plant.

It was held that it was already known in the prior art  to use cold shock protein for expression in E.coli, yeast cell, vertebrate cells, human cell Hela, Rat cell BLAB/c 3T3,NIH 3T3 and Rat embryo fiberblasts. It is also further disclosed in prior art: “additional vectors and sources ………….including …….yeast cloning vectors , plant vectors …………[page 23 and 24 ]”

It was thus held that there is sufficient suggestion in cited prior art documents that the method would work for plants with reasonable success, hence rendering the subject patent obvious.

When the structure and function of cold shock protein was already known in cited prior art and it is obvious to person skilled in plant to make transgenic plant which is heat or drought tolerance by inserting the recombinant DNA molecule in its genome.”

Similarly under section 3d objection, it was held that: “Mere use of admittedly known substance is not permitted under section 3(d).The argument of surprising result will not change the position as it will be still be a new use of known even if it produces better results.” It was already known to use CspA, CspB protein of the ‘cold shock domain’ for expression of cold shock protein in E.coli, yeast cell, vertebrate cells, human cell Hela, Rat cell BLAB/c 3T3,NIH 3T3 and Rat embryo fiberblasts. But it was not previously used to achieve that specific results in plants. The selection of specific proteins from ‘cold shock domain’ to achieve better result in plants contributes merely to a new use of such substance.

It was thus finally concluded that the subject patent claim is a new use of known cold shock protein for expression in plants to produce heat/salt/drought tolerant plants and is merely a discovery of new property of known substance and not an invention.

Implications

The refusal of grant of this Monsanto’s patent will definitely by applauded by farmers community throughout India as they will be free to develop and reproduce such draught/salt/heat tolerant plants without infringement of any third party’s patent on the same. Had this patent been granted, Monsanto would have controlled the production and sale of their patented climate resilient plants/seeds and kept the much higher prices causing much plight to the farmers in India. In calamities like the recent Uttarakhand floods, such salt tolerant crop varieties are needed in large amounts by the farmers of such areas who otherwise cannot produce crops because of sea salt deposition on their farms in such conditions. If this patent would have been granted, the farmers would have to buy such plants/seeds from Monsanto or undergo licensing agreements to use the patented method, which now they will be able to use and produce themselves freely.

Also, after this decision came out, Navdanya** publishes as below:

We applaud the decision of the Patent Office and Appellate Board and will disseminate it world wide the so other countries can use it to protect farmers, biodiversity and seed sovereignty. We will also be ready to intervene in case Monsanto brings the case to the Supreme Court.”

On another hand, such decision will be condemned by such seed and plant innovators like Monsanto in the developed markets like US and EP, especially when this patent has been successfully granted in US and EP. According to them, refusal of patent protections diminishes motivation for further innovation and that the rewards for innovation should be paid so that more innovative products and processes keep arriving in the markets. For pharmaceutical inventions too India is already on the priority watch list of US for refusing/ revoking patents u/s 3d which have been successfully granted in other countries.

** Navdanya is a network of seed keepers and organic producers spread across 16 states in India. It has its 54 seed banks across the country and organic farm spread over an area of 20 acres in Uttranchal, north India.

About the Author: Ms. Meenakshi Khurana, Patent Attorney at Khurana & Khurana and can be reached at: Meenakshi@khuranaandkhurana.com

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