Category Archives: Intellectual Property

Revolutionizing Gesture Recognition Technologies: Project Soli

Google has been a pioneer of a number of leading inventions and projects that have not only changed the way we perceive science and technology but has also made out lives easier and leisurelier. From Google Cardboard to Driverless cars to Google glasses, Google has never disappointed us when it comes to show casing its talent in the world of technology and innovation.

Have you ever fantasied of lowering the volume of your system or changing the time on your phone by making just tiny movements with you hands in air without even touching the screen, like Minority Report and Iron Man movies? Yes? Then Google’s next project has come as an answer to all your fantasies. In June 2015, Google, during it annual developer conference announced the world’s first radar based key technology project, Project Soli that would change the way shoppers interact with wearable devices.

About the project

Soli is a creation of Google’s research and development lab, ATAP (Advanced Technology and Projects), headed by Dr. Ivan Poupyrev, an award-winning scientist, inventor and designer in the field of design and technologies who is famous in blending the realities of digital and physical world. Mr. Poupyrev was Principal Research Scientist at the Walt Disney Imagineering research division.

Soli is a new sensing technology that makes movements or detects touchless gesture with the help of miniature radar. The entire sensor and antenna array is incorporated into an ultra-compact 8mm x 10mm chip (size of a finger-nail). The Soli chip can be embedded in wearable, phones, computers, cars and IoT devices in our environment[1]. Soli has no moving parts; it gets attached onto a chip and consumes little energy. The chip does not get bothered by light conditions and works through most materials.

The radars emitted by the chip, keeps a track of movements with sub-millimeter accuracy, helping you control the volume of a speaker, or dialing number in mid-air. Google’s Soli radars are so accurate that they not only detect the exterior of an object, but also its internal structure and rear surface, helping you to know what the thing is.

How does Soli work?

The Soli Sensor:

Project Soli is based on the concept of touchless interactions, which can be achieved with radar system. The device used in the project is RadarCat (Radar Categorization for Input and Interaction) and functions like any normal radar system. It is a small, versatile radar-based system to identify material and object classifications that help you interact with digital devices.

Think that you are walking in dark and you use torch to see the objects. The light beam that travels out from the torch, reflects off objects in front of you, and bounces back into your eyes, which helps you see the objects lying near you. RadarCat also functions in a very similar manner. The base units fires electromagnetic waves at its target, some of which gets bounce back and return to the radar antenna helping in detecting the movement and gesture of the hands.

It is just not the bouncing back of the radar that helps Soli in analyzing the hand movements, size, shape, orientation, material, distance, and velocity of the object but properties such as energy, time delay, and frequency also help in analyzing the work.

So in short, the radar base emits a broad beam of electromagnets, which in turn gets reflected because of the hand gestures. The sensor then receives motion of signals as a series of reflections, which in turn is detected by the radar chip and are transformed into multiple representations. From these representations, engineers can extract features, such as “range doppler distance”. The features are then passed to machine learning algorithms, which interpret them and approximate hand motions based on the signals received.[2]A device that is capable of classifying and interpreting gestures, perceives all the motion signals. For example:-

  • A pinching motion can indicate the press of a button.
  • Rubbing a finger along the length of a thumb can indicate moving a slider, say for volume control.
  • Pulling your thumb across your pointer knuckle simulates dragging a screen.

The radar sensors used in Soli does not require large bandwidth and high spatial resolution like the traditional radars. Rather Soli’s evaluation board has juts two transmit antennas and four receive antennas. It’s spatial resolutions rely on motion resolution that can be perceived by subtle changes from signals that are received over time. It is because of this signal variation that Soli can distinguish complex finger movements and deforming hand shapes within its field.

Limitations of RadarCat

  • RadarCat does occasionally confuse objects with similar material properties (eg. Glass of mirror or a class of a mug),
  • It takes longer to detect a hollow object as compared to the solid objects with flat surfaces.
  • It also needs to be taught how exactly each object looks like before it can recognize it.

How is Project Soli helpful?

The project Soli is futuristic interface that will forever change the way we use all the technological devices, and not just wearable. A smart watch with a Soli chip wouldn’t need a digital crown as you could just wave your fingers in the air to get things done. The work forth going by ATAP is not marvelous but commendable too as to how they transformed a briefcase size radar system into a fingernail sized chip that fits any smart watch. Soli in no time, after its release, will be get updated and could be worked from meters away, which would mean that with a snap of a finger you could control your devices.

This comes as boon for that area of medical field that are under a constant threat of infections and contamination. The benefit of gesture recognition feature over the present multi touch inputs would be that we no longer would be requiring screens. Which would be all new accomplishment in the world of machine and electronics.

Gesture recognition inputs will be a revolutionary and groundbreaking feature in the field of VR devices and play station. This project can further help in improving operator safety at work place. If the operator’s hands aren’t near moving parts of the machine then there are great chances of reducing onsite accidents.

Conclusion

The pace at which developments in technology and digital world is moving is faster than expected. The Project Soli will forever change our perspective on how we interact with machines, specially the wireless ones. Soli was initiated not just with the aim to quantify and interpret human gestures, but it also aimed to refine it to that extent that they could make use of gestures without receiving any interference from the environment.

Project Soli would be seen having major impact on the virtual and augmented reality. Today, where while using VR headsets we have to hold the controller, with this revolutionary project, we can simply use gestures movement to define how a user roams a virtual world.

Google, later this year, would start shipping development kits worldwide for its project, confirmed the ATAP officials at the Game Developer Conference. It would be interesting to see where developments in interface of Soli will take us

ABOUT THE AUTHOR: Ms. Shireen Shukla, intern at Khurana and Khurana, Advocates and IP Attorneys and can be reached at  swapnils@khuranaandkhurana.com.

Disclaimer:

Views expressed in this article are solely of the intern and do not reflect the views of either of any of the employees or employers.

[1] ATAP: Google: Soli; What are the potential applications of Soli? <https://atap.google.com/soli/#how-it-works&gt;

[2] Kate Smith: The Tiny Radar Chip Revolutionizing Gesture Recognition: Google ATAP’s Project Soli; All about Circuit < https://www.allaboutcircuits.com/news/radar-chip-revolutionizing-gesture-recognition-google-atap-project-soli/&gt;

MYANMAR: NEW TRADEMARK LAW EXPECTED TO BE ENACTED IN 2017

For the past few years, the nation of Myanmar has been proactively working on the implementation of its first ever formal trademark law, keeping in mind that the new law will overhaul the nation’s legal framework to encourage and motivate the industries and businesses to come and invest and grow in the country [1].

The implementation of this new Trademark law has been projected for this year. Hopefully once this new trademark law becomes effective, the practices which are currently followed by the practitioners i.e. the registration of Declarations of Ownership at the Registrar of Deeds and Assurances, which is followed by the cautionary notices published in the newspaper, will then be replaced by the new modern Trademark system which will stick to International standards set by WIPO.

The new Trademark law will prove to be greatly beneficial to the brand owners and businesses as the new law will bring proper clarification to the whole trademark application process. Since the Myanmar market is on an economic rise, the new trademark law, once implemented, will be a welcome move for the businesses and their brands, thereby encouraging further growth and prosperity of their brands in Myanmar.

The New Trademark System

The new Trademark Law will be based on the first-to-file principle. The new law will have the following features:

  1. The new Trademark law will include following marks which can be protected [2]:
  • Smell and touch signs,
  • Visual marks, and
  • Perceivable sound.

The above mentioned marks are categorized further into service, trade, collective marks, and certification. Registration as a group/collection of marks will also be allowed.

  1. The new law will allow both domestic and global/foreign brand owners to apply for registration of trademarks in Myanmar. Having said that, the global/foreign applicants will have to appoint an authorized agent and this agent must be domiciled in Myanmar [2]. This agent will then represent these foreign mark owners at the Myanmar Intellectual Property Office on their behalf.

The new Trademark law will allow the trademark applications to claim priority from foreign applications/registrations.

  1. The registration process under the new trademark law will include [2]:
  • Filing of an application (where, the application must be either filed in either English or Burmese and must have a Declaration of Intention to Use)
  • Substantive examination and other formalities
  • Publication for opposition and
  • Issuance of certificate.
  1. The validity duration of the registered trademarks will be 10 years from the effective filing date and after each renewal will extend the validity by 10 years [2].
  2. The new Trademark law will also have a provision for submitting a request for a non-use cancellation against those registered trademark which are not in use for a period of 3 consecutive years [2].
  3. The new Myanmar Intellectual Property (IP) office will be created [1] to look after the operations in the new Trademark law. Additionally, new Intellectual Property Courts specialized in handling trademark litigations will be established.
  4. Enforcement:

The new Trademark law will have both civil as well as criminal liabilities for potential infringements in Myanmar.Such liabilities as far as Trademark infringement in Myanmar is concerned will have a criminal offence punishable by maximum up to 3 years of imprisonment or fines or both [3].

Another feature which is a welcome move is the possibility that a trademark owner can enforce its rights through customs. In other words, with enough reasons for alleged import, export or transit of infringing goods into, out of or via the country, the trademark mark owners will be allowed to apply to the Department of Customs for a detention or suspension order.

  1. Transition from the current to new trademark law

All those owners who have their trademarks registered under the current trademark law will be required to, within the period of three years, re-register under the new law [4].

About the Author: Shilpi Saxena, Jr. Patent Associate at Khurana & Khurana Advocates and IP Attorneys can be reached at shilpi@iiprd.com.

References

[1] http://www.wipo.int/edocs/mdocs/aspac/en/wipo_tm_tyo_2_16/wipo_tm_tyo_2_16_3_4.pdf

[2] http://dbav.org.vn/trademark-protection-in-myanmar-and-the-new-draft-trade-mark-law/

[3] www.wipo.int/ip-development/en/pdf/asean/myanmar.pdf

[4] Griffiths, AJ Park -Amanda. “New Trade Mark Laws for Myanmar Coming in 2017.”Lexology.Lexology, n.d.

 

INTELLECTUAL PROPERTY OFFICE OF THE PHILIPPINES (IPOPHL) LAUNCHED PATENT PROSECUTION HIGHWAY (PPH) PILOT PROGRAM WITH THE EUROPEAN PATENT OFFICE (EPO)

European Patent Office (hereinafter “EPO”) had launched the Patent Prosecution Highway (hereinafter “PPH”) program on July 1st, 2017 [1]. The PPH Pilot Program is part of the agreement made between Intellectual Property Office of the Philippines (hereinafter “IPOPHL”), Director General Atty. Josephine R. Santiago and EPO President, Benoit Battistelli on 5 October 2016 [2] at the sidelines of the World Intellectual Property Organization (WIPO) General Assembly. The EPO and the IPOPHL announced on 10 October 2016 [4] their intention to launch a comprehensive Patent Prosecution Highway pilot program.The PPH pilot program between the EPO and IPOPHL starting from 1st July 2017will run for three years ending on 30 June 2020 [4].

What is Patent Prosecution Highway Pilot Program?

Patent Prosecution Highway is a global work-sharing framework that allows patent applicants, whose applications have been considered allowable by a patent office, to request the preferential examination of the corresponding applications in another patent office based on the examination results issued by a PPH office [2]. Patent applicants follow a simple procedure when making the request. Another aspect of this program that eases the prosecution process of patent applications is that another Intellectual Property Office in conducting substantive examination in the corresponding applications can use work products from one Intellectual Property Office as reference. In other words, PPH leverages on the fast-track patent examination procedures alreadyavailable in the IP Offices to allow applicants to obtain corresponding patents faster and more efficiently.

Under the IPOPHL-EPO PPH Pilot Program, the patent applications, which are prosecuted under the PPH Program, shall be subject to certain guidelines present in IPOPHL MEMORANDUM CIRCULAR NO.17-007 [1]. The patent applicants and their agents who desire to make use of this program had to file the duly accomplished Request Form and Claim Correspondence Table present in the Annex B of the circular [1]. This is the minimum requirement for the processing of a PPH Request.

Under this program, patent applicants should file the claims which have been found patentable either by the IPOPHL or by EPO andmay ask for preferential examination of their corresponding patent applications at the former IP Office after following a simple procedure and with minimal documentary requirements. This PPH Program is available for national and PCT applications.

The PPH Program has 45 participating countries worldwide. The IPOPHL became a member of the PPH network on February 2012 when it signed its first PPH agreement with the Japan Patent Office (JPO).The IPOPHL now has bilateral PPH agreements with the JPO, USPTO, KIPO and EPO [3].

About the Author: Shilpi Saxena, Jr. Patent Associate at Khurana & Khurana Advocates and IP Attorneys can be reached at shilpi@iiprd.com.

References

 

[1] http://www.ipophil.gov.ph/images/Patents/MemoCircularNo_17-007.pdf

 

[2]http://info.ipophil.gov.ph/dev/releases/2014-09-22-06-26-21/609-ipophl-commences-patent-prosecution-highway-pph-pilot-program-with-the-european-patent-office-epo

 

[3] http://ipophil.gov.ph/services/patents/patent-prosecution-highway-pph

 

[4] https://www.epo.org/law-practice/legal-texts/official-journal/2017/06/a47.html

 

Intellectual Property Office Singapore (IPOS) wins Architecture Excellence Award in “Business Architecture”

On July 13, 2017 [1], the Intellectual Property Office of Singapore was declared the winner of the Architecture Excellence Award in the “Business Architecture” category at the Architecture Excellence Awards Night held at Sydney, Australia. The award was presented by iCMG International Award certificates and prizes were given to the winners during the dinner gathering on July 13th during Architecture World Summit 2017, Sydney Australia [2].

Evaluation process for these Awards:

There were multiple rounds for evaluating the winners for different categories. Through every round of competition, the Jury was assigned applications in the area of their individual interest and expertise, so that the applications always evaluated by people who appreciate and understand the type of architecture work that the applicants for the awards have done. The whole evaluation process has been described below [3]:

Round 1

In the first round of competition, submission was reviewed by the core committee. The applications which were qualified on the initial criteria were moved to the next round.

Round 2

In the second round of the competition the qualified applications from the first round were reviewed by the members of the Jury independently. Their scores given by the judges determined the finalists in each category.

Round 3

In this round of the competition, top three finalists in each category were identified based on the combined scores of the jury members.

Round 4

In this round of the completion a video interaction took place between the jury members and business leaders from the finalists. After all the rounds the combined scores of jury members determined the Winners in each category.

There were multiple categories in which awards were given in the Architecture Excellence Awards organized by ICMG International. ‘Business Architecture’ was the category of which IPOS was the winner [4]. As stated in the press release by IPOS [1], this award recognizes architects and enterprises whose work demonstrates a combination of talent, vision and workmanship in creating successful and enduring systems and enterprises. It also serves to highlight remarkable projects and best practices to the global audience. IPOS was recognized for its achievements in re-engineering its business services, information, timing cycle and stakeholders for achieving business goals. This attests to IPOS’ commitment to be an innovation agency that uses its IP expertise and networks to help local and foreign enterprises commercialize their ideas and intellectual property, from Singapore and through Singapore into the world. This award has become a global benchmark of excellence for leading companies from USA, Europe, Asia, Middle East, Africa and South America that have participated in this competition.

About the Author: Shilpi Saxena, Jr. Patent Associate at Khurana & Khurana Advocates and IP Attorneys can be reached at shilpi@iiprd.com.

References

[1] https://www.ipos.gov.sg/media-events/happenings/ViewDetails/ipos-wins-architecture-excellence-award-in-business-architecture/

[2] http://live.icmgworld.com/anz/architectureworld/2017/

[3] https://live.icmgworld.com/anz/architectureawards/2017/process/evaluation-process.html

[4] https://live.icmgworld.com/anz/architectureawards/2017/winners/2017#

 

SUMMARY JUDGMENT IN INTELLECTUAL PROPERTY DISPUTES UNDER ORDER XIII-A OF CIVIL PROCEDURE CODE

  1. Applicability of order XIII-A of CPC to Intellectual Property Dispute

With the objective of streamlining and expediting the disposal of disputes in litigation, the Commercial Courts, Commercial Division and Commercial Appellate Division of High Courts Act, 2015 (hereinafter referred to as the “Act”) came into effect on October 23, 2015.  The Act provides for the setting up of specially designated Commercial Courts at District level and Commercial Division of High Courts with ordinary original civil jurisdiction to adjudicate on commercial disputes of a certain specified value. “Commercial dispute” includes disputes arising out of intellectual property rights relating to registered and unregistered trademarks, copyright, patent, design, domain names, geographical indications and semi-conductor integrated circuits.[1] “Specified Value” has been defined[2] to mean the value of the subject-matter of the suit, determined in accordance to Section 12 of the Act, which shall not be less than one crore rupees or such higher value to be notified by the Central Government. The value of subject matter in an intellectual property right dispute would be determined by the market value of the said IP right, as estimated by the plaintiff[3].

  1. Amendment of the Code of Civil Procedure

The said Act has amended the Code of Civil Procedure, 1908 (hereinafter to be referred to as “CPC”) to incorporate stricter timelines and procedures. These amended provisions of the CPC are applicable[4] only in respect of commercial disputes of specified value (one crore rupees). One such salient feature of the Act is the inclusion of Order XIII-A in CPC which provides for the mechanism of Summary Judgment in respect of a claim without recording oral evidence. In light of two recent decisions of the Delhi High Court, this article aims to  analyse the said mechanism in respect of intellectual property disputes.

  1. Context of the mechanism under Order XIII-A

Order XIII-A delineates the procedure by which the Court shall, on application of a party, decide a claim without the recording of oral evidence. Previously, suits which had more or less a clear outcome based on merits would still have to go through the entire procedure enumerated under the CPC before the case could be disposed.

The technicalities led to inordinate delays for the parties concerned and the entire docket system was overburdened. To counter this event, the amendment envisages a process for a summary judgment which is on similar lines to summary suits provided in the CPC with the primary difference that application for summary judgment can be in respect of any relief in a commercial dispute while summary suits relate to such relief relating to liquidated demand or fixed sum of debt.

Application to be in respect of a claim or part thereof

Under order XIII-A, the “claim” in an application for summary judgment shall include (a) part of a claim, (b) a particular question on which the whole or part of the claim depends, and (c) counter-claim.[5] For example, in Trade Mark infringement suit, the question of prior user/first use may be a question on which the claim for damages depends either in whole or in part, and such question may be determined in an application for summary judgment.

When and on what considerations:

Under mechanism as provided under Order XIII-A, the application for summary judgment can be made by either party after the service of summons to the defendant and before the framing of issues.[6] Upon consideration and satisfaction of the Court, a summary judgment may be given that (a) the plaintiff/defendant has no real prospect of succeeding on the claim/defence, as the case may be; and (b) there is no other compelling reason as to why the claim should not be disposed of before the recording of oral evidence.[7]

The rationale being that the Court, after hearing both parties to an application for summary judgment, is of the view that there are no material propositions of fact or law on which further evidence needs to be led since the respective rights of the parties are well-established as per the merits of the dispute.

  1. Bright v. MJ Bizcraft

In the case of Bright Enterprises Private Ltd. v. MJ Bizcraft LLP[8], decided by a Division Bench of the Delhi High Court in appeal, a suit was originally instituted before a Single Judge to claim a permanent injunction, restraining trademark infringement and dilution of goodwill by the defendant. The Plaintiffs used ‘PRIVE’ in the hotel business while the Defendants used ‘PRIVEE’ in relation to a nightclub in the hotel Shangri-La Eros. The Single Judge, without issuing summons to the defendant, dismissed the said suit by suomoto invoking Order XIII-A and stating that a plaintiff’s suit with “no real chance of success” ought to be dismissed at whichever stage the Court finds it so. Subsequently, this was appealed by the plaintiffs.

  • No dismissal without issue of summons

On an appeal by the Plaintiffs on the dismissal of their case, the Division Bench held that the principle of audi alteram partem is embedded in the CPC and hence issue of summons is not optional at the instance of the Court when a particular suit has been duly instituted. It was further held that at the stage of admission of the suit, it is only to be seen whether the suit has been duly instituted. It observed that the case of a plaintiff may be weak but that is not a ground for dismissing a suit without granting the plaintiff an opportunity of proving and establishing his case.

  • Window for application and no suomoto invocation

The Division Bench further held that Order XIII-A cannot be suomoto invoked by the Single Judge on inquisition and that summary judgment may only be delivered upon appropriate application being made by either of the parties.[9] Moreover, it was stressed upon by the Court that the window for preferring an application for summary judgment is only after issuance of summons to the defendant and before the framing of issues, and since such proceedings are of an exceptional nature it was the prerogative of Courts to be scrupulous while observing the requirements of Order XIII-A.

  1. Ahuja Radios

In Ahuja Radios v. A. Karim[10], an application for summary judgment was made on the basis of admissions on part of the defendant. The plaintiff was a leading manufacturer and seller of audio equipment under the registered AHUJA mark since 1940. A suit was filed against the defendant for selling counterfeit products under its mark.

The court restrained the defendant from selling audio equipment using the mark AHUJA or other deceptively similar mark and ordered a local commissioner to inspect his premises. The inspection resulted in seizure of a number of products bearing the AHUJA mark, which the defendant admitted were not original. Subsequently in pleadings, the defendant made claims contrary to his initial admitted statements and claimed that such counterfeit products were placed in his premises by the plaintiff immediately before the inspection.

The Court noted that the defendant had no real prospect of resisting the decree of permanent injunction and that the defendant also had little prospect of succeeding in its defence that he was not dealing in the counterfeit products, thereby indicating that there was no compelling reason for the Court to not dispose of the claim for permanent injunction before the recording of oral evidence.

The court passed a decree for permanent injunction in summary disposal of the suit under Order XIII-A on the basis of the admissions of fact by the defendant. Therefore, it is pertinent to note that admission on fact is a relevant criterion for admitting an application for summary judgment.

Conclusion

It is pertinent to note that sometimes disputes in relation to intellectual property rights are pertaining to infringers who do not enter appearance in the proceedings to the suit. Instead of requiring the plaintiff to lead evidence ex-parte, summary judgment under Order XIII-A of the CPC is an efficacious mechanism of disposal of disputes in such cases. The Courts are already passing punitive damages in trademark infringement cases where the offence of infringement is gross and clearly made out and hence, it is submitted that Order XIII-A would find an appropriate application in such disputes.

About the Author: Pratik Das, Legal intern at Khurana and Khurana, Advocates and Attorneys and can be reached at abhijeet@khuranaandkhurana.com

References :

[1] Section 2(1)(c)(xvii) of the Act.

[2] Section 2(1)(i).

[3] Section 12(1)(d).

[4] Section 16(1) and 16(2).

[5] Order XIIIA, R. 1(2).

[6]Ibid, R. 2.

[7]Ibid, R. 3.

[8]2017(69)PTC596(Del).

[9] Order XIII-A Rule 4.

[10] IA No. 5202/2017 in CS(COMM) 35/2017 delivered on May 1, 2017.

Revised Guidelines for Examination of Computer-related Inventions (CRIs)

On 30th June 2017, the Office of the Controller General of Patents, Designs, and Trade Marks (CGPDTM) published Revised Guidelines for Examination of Computer-related Inventions (CRIs) that are applicable with immediate effect. The revised guidelines have replaced the Guidelines for Examination of CRIs, published on 19th February, 2016. The revised guidelines are short and precise as compared with the previous versions and have relaxed the criteria for patentability of the CRIs.

The heart of the 2016 guidelines was a three stage test to examine a CRI application, according to which the Examiners may:

  • Properly construe the claim and identify the actual contribution
  • If the contribution lies only in mathematical method, business method or algorithm, deny the claim
  • If the contribution lies in the field of computer programme, check whether it is claimed in conjunction with a novel hardware and proceed to other steps to determine patentability with respect to the invention. The computer programme in itself is never patentable. If the contribution lies solely in the computer programme, deny the claim. If the contribution lies in both the computer programme as well as hardware, proceed to other steps of patentability.

Therefore, the requirement of a novel hardware was apparent under the three step test laid in 2016 guideline. The revised guidelines have however done away with this test. The revised guidelines focus on substance over form and states:

If, in substance, claims in any form such as method/process, apparatus/system/device, computer program product/ computer readable medium belong to the said excluded categories, they would not be patentable. Even when the issue is related to hardware/software relation, the expression of the functionality as a method is to be judged on its substance. It is well-established that, in patentability cases, the focus should be on the underlying substance of the invention, not the particular form in which it is claimed. The Patents Act clearly excludes computer programmes per se and the exclusion should not be allowed to be avoided merely by camouflaging the substance of the claim by its wording.

The revised guidelines further discuss determination of excluded subject matter relating to CRIs. According to the revised guidelines, it is important to ascertain from the nature of the claimed CRI whether it is of a technical nature involving technical advancement as compared to the existing knowledge or having economic significance or both, and is not subject to exclusion under Section 3 of the Patents Act.

Further, the sub-section 3(k) excludes mathematical methods or business methods or computer programme per se or algorithms from patentability. Computer programmes are often claimed in the form of algorithms as method claims or system claims with some means indicating the functions of flow charts or process steps. It is well-established that, while establishing patentability, the focus should be on the underlying substance of the invention and not on the particular form in which it is claimed.

What is important is to judge the substance of claims taking whole of the claim together. If any claim in any form such as method/process, apparatus/system/device, computer program product/ computer readable medium falls under the said excluded categories, such a claim would not be patentable. However, if in substance, the claim, taken as whole, does not fall in any of the excluded categories, the patent should not be denied.           

Hence, along with determining the merit of invention as envisaged under Sections 2(1) (j), (ja) and (ac), the examiner should also determine whether or not they are patentable inventions under Section 3 of the Act.

Thus, it can be inferred that the revised guidelines focus on substance over form instead of novel hardware requirement. That is, while examining an application its substance is considered and a claim is taken as whole, if it does not fall in any of the excluded categories, the Examiner can proceed with other steps to determine patentability with respect to the invention.

Various stake holders associated with the software industry and Associated Chambers of Commerce & Industry of India (ASSOCHAM) have been lobbying for such a change. ASSOCHAM trough a communication to the Prime Minister’s Office, urged the Prime Minister to bring out appropriate amendments to the 2016 guidelines and simplify the criteria in pursuance of becoming a leading global player in areas of research and development (R&D) and software products.

In the view of the foregoing, it can be concluded that as the CGPDTM has done away with the requirement of novel hardware, the patentability criteria is eased out. This not only facilitates the patentability of CRIs but also attracts big software MNCs and startups to invest in the area of development of software technologies.

About the Author: Ms. Prigya Arora, Patent Associate at Khurana & Khurana, Advocates and IP Attorneys. Can be reached at prigya@iiprd.com

Registered Designs (Amendment) Bill of Singapore

Registered Design Act had originally been enacted in 2000 in Singapore. This act has gone through various amendments by formal and informal consolidations in 2001[1], 2005[2], 2012[3], and 2014[4]. Major change has been brought in act in 2001 and 2005 in which this act has been revised. This article includes the proposed reforms that have been tabled in the Parliament of Singapore for the Second reading on 8th May, 2017. The proposed changes aims to support modern business practices while continuing to balance the interests of design creators/owners and users and provide business certainty.

Key features of the Registered Design (Amendment) Bill

  1. Widened scope of registrable Design

The definition of “Design” in the proposed bill has updated to give expand the scope in granting of design right, which clearly aims to incentivize creativity and innovation. It is expected to include an important aspect i.e. colour under the umbrella of important component of design. However, the scope will not extend to colour per se but only to limited colours monopolizing that result in impeding design innovation.

Second important inclusion is of virtual designs of non-physical products that can be projected onto a surface and have useful functions. Those design need to fulfil two requirements (a) be capable of being represented clearly and without subjectivity; and (b) retain the same (or substantially similar) design features irrespective of the surface or medium they are projected on.

  1. Ownership of Rights

Under the current section 4 of the RDA the commissioning party is considered to be owner of rights by default, not the creator/designer. However, this bill gives creator/designer the actual right of ownership. According to proposed change ownership rights shall be vested with commissioning party, subjected to any agreement or liberty of contract between the parties concerned.

  • Extension of grace period for registration

If any designer had disclosed his/her design before registration and designer wish to register it that grace period of 6 month was granted for filing for registration. This grace period has been extended to 12 months as per the amendment under RDA.

  1. Allowance of multiple design of same classification under same application

Before, designer need to file one application for designs of same Locarno sub-classification.  However, each design has its separate application number and treated as individual application with separate fees for registration. The amendment will allow registration of multiple designs under the same broad category and through a single application, which in turn may reduce the costs involved with subsequent designs within the same application.

About the Author: Mohini Sharma, Legal Intern at Khurana & Khurana, Advocates and IP Attorneys. Can be reached at abhijeet@khuranaandkhurana.com

Sources

  1. Helika Jurgenson,”Upcoming Reform: Registered Designs Regime in Singapore”, available at http://www.youripinsider.eu/upcoming-reform-registered-designs-regime-singapore/
  2. IP newsletter, available at https://f.datasrvr.com/fr1/017/70864/2017Apr17_IP_Newsletter.pdf
  3. Ministry of Law, Singapore at https://www.mlaw.gov.sg/content/minlaw/en/news/press-releases/legislative-changes-introduced-to-update-singapores-registered-d.html
  4. https://www.gov.sg/~/sgpcmedia/media_releases/minlaw/speech/S-20170508-1/attachment/Registered%20Designs%20Amendment%20Bill%20-%202R%20Speech%2008052017.pdf

2016 – Trademark Act of Thailand – The amendments

The Government of Thailand has made several new amendments in their trademark act [1], which have become effective on July 28 2016. These amendments have brought significant changes in structural policy of Thailand. This includes Thailand’s ratification of the Madrid protocol, which allows an application for registration of sound marks. Other changes introduced via these amendments in the Trademark act, include the procedure and prosecution of trademark registration in Thailand, and, thus, the change in Intellectual Property (IP) strategy. Anticipatoryamendments to the registration and prosecution process are mention below.

  1. Multi-Dimensional Applications for Trademarks Allowed[2]

Previously, Thailand did not accepted multi-dimensional, multi-class filings using a single application, but multiple applications of single-dimensional, single-class filings were used instead. The changes via the amendments in the Trademark act of Thailand effective from July 2016, now allows multiple-dimensional, multi-class filings in a single Trademark application. This does not mean that the single class filing applications will not be accepted. They are still accepted.

There are both advantages and disadvantages of multiple-dimensional, multi-class filings [3]for the amended Trademark act. The main advantageis the ease inthe registration process for Trademark filing – same/single application can now be usedfor filing for protection in multiple-dimension, multiple-classes, which results in less paperwork, registration fees, and a more structured/streamlined process.

However, the majordrawback of the amendments is the possibility that complexitiesregarding one of the, multiple-dimensional, multiple-classes applied for could affect the approval process for the entire application as a whole. This is due to the factthat an application for multi-class, multi-dimensional filingsis treated as a single application, with each dimension being only a single component part of the application. This means that, at worst, an opposition or other objections in single class can delay the entire application to lapse altogether.

Because of the Pros and Cons of filing multiple-dimensional, multiple-classes trademark applications under the new Trademark act of Thailand; it has now become very important to devise a well-assessed IP strategy for selecting the type of Trademark application to be used. Some Trademarks can get the benefit of filing a single-class application when the main objective is the timeliness and the priority date of registration, or if the business plan is for short-time monetary gain and does not include future IP portfolio expansion. However, certain other trademarks with the potential for business as far as expanding IP portfolio is concerned would enjoy benefits of these amendments in the new Trademarks Act of Thailand. Therefore, a mixture of pros such as ease and timeliness of registration process and portfolio expansion may prompt IP owners to go for multi-dimensional, multi-class Trademark applications for potential business growth and portfolio expansion.

  1. No requirement of associated marks

In the previous Trademark Act of Thailand, i.e. the single-class filing process, the Intellectual Property department of Thailand used to ask IP owners to associate related/similar marks filed across various other classes. In other words, previously under Trademark Acts section 14 the Trademark registrar wasallowed to order the Trademark applicant of associating identical or similar trademarks [4] that relate to products or goods in same or different classes. This provision was required to avoid misunderstanding in pubic that different IP holders, which are similar or related as judged by the registrar, but, in fact, they belong to the same IP owner.The main drawback for IP holders due to this requirement was that the associated marks cannot be transferred or assigned separately, but must be assigned as a collection of registered “associated” marks, which required additional fees.

The amendments in the new Trademarks act of Thailand have removed the requirement of associated marks completely. After thesechanges have become effective, thetrademarkowners of associated marks are able to transfer and assign each mark single basis. [5]

Other amendments [6]

There has been a reduction in the period for filing amendments, appeals or opposition from previously 90 days to currently 60 days which is calculated from the day of receipt of related order from the Trademark Office.

Increase in time-period – from 30 to 60 days with respect to paying the registration fees.

Introduction of Grace Period for renewals– Renewal is possible within six months from the expiry date against a 20% surcharge.

About the Author: Shilpi Saxena, Patent Associate at Khurana & Khurana, Advocates and IP Attorneys. Can be reached at abhijeet@khuranaandkhurana.com

Footnotes 

[1] “Trademark Act Amendments Usher in Thailand’s Accession to the Madrid Protocol.” Trademark Act Amendments Usher in Thailand’s Accession to the Madrid Protocol | Tilleke&Gibbins. Tilleke&Gibbins, 3 June 2016.

[2] “Thailand Update: Trademark Amendment Act Brings Changes for Trademark Law.” Spruson&Ferguson.Spruson& Ferguson, 16 June 2016.

[3]1, 2016 August.”UPDATING NEW THAILAND TRADEMARK ACT.”IP NEWSLETTER (n.d.): n. pag. ILCT, 1 Aug. 2016.

[4] Mirandah. “Thailand – When Trade Marks Must Be Associated.” Mirandah Asia. Mirandah, 19 May 2017.

[5]”Hailand: Amendments to the Trademark Act Information Is Provided by Www.ip-coster.com.” Thailand: Amendments to the Trademark Act. IP Coster, 26 July 2016. Web

[6] European Patent Office: Comprehensive Amendment to the Trademark Act 

Singapore: The upcoming Intellectual Property centre of Asia

Today, the growth of global economy has become impossible without considering Intellectual Property.

 

In Asia, Singapore is witnessing a huge growth of its Intellectual Property segment and is slowly becoming the focus of Intellectual Property in Asia. Singapore is ranked fourth in the world and top in Asia for having the best IP protection in the World Economic Forum’s Global Competitiveness Report 2016-2017. Adding on to this, the government of Singapore has also come up with an IP Hub Master Plan [1] to develop the country as a worldwide IP hub. The Singapore government has taken few more steps such as launching an IP financial scheme and coming up with a Center of Excellence for IP valuation [2] to accelerate the growth of IP sector in the country.

 

Several data analytics experts have conducted various studies for visualizing the impact of the steps taken by the Government of Singapore. Few results from the case studies will provide an intellectual and a clear picture of how Singapore is progressing towards maintaining its top position as far as Asian IP sector is concerned. The results will also show that which entities (for example. Firms, local companies, global companies) are the major contributors in this progress.

 

Major contributors in Singapore IP

 

  • Almost 50% of patents filed in Singapore are invented in United States.
  • Almost 13% of the filed Patents in Singapore are invented in Japan [3].
  • Almost 95% of total patents filed in Singapore are filed by companies which are not originated in Singapore.

Thus more than 60% of filed patents in Singapore are invented in United States and Japan combined. The statistics in itself shows that global companies are very much interested in getting their IP protected in Singapore. This is possible mainly due to the steps taken by Singapore Government [1][2]. In addition to these steps the Government also provides monetary help for Research & Development and for filing patents to Singapore originated companies [4].Most patented technology areas in Singapore? [6]

Singapore: Granted Patents & Registered Trademarks

Data Analytics companies analyzed the trend of patents published at the patent office of Singapore to find out the number of applications granted. The analysis was done using the patent kind codes to consider various stages of patent applications. It was concluded that:

  • From the year 1999, the average number of granted patents by local and global entities at the Singapore patent office per year is more than 5,000. The rate of growth has been consistent over the past decades [5].
  • More than 21000 Trademark Applications have been filed in 2014, out of which around 19000 applications have been registered. [7]

About the Author :Shilpi Saxena, Patent Associate at Khurana & Khurana, Advocates and IP Attorneys. Can be reached at abhijeet@khuranaandkhurana.com

References:

[1] Lee, Shaun. “IP Hub Master Plan: To Develop Singapore as a Global IP Hub in Asia.” Singapore International Arbitration Blog. N.p., 03 Apr. 2013. Web.

[2] “IP Financing Scheme Launched.” Spruson & Ferguson. N.p., 10 Aug. 2014. Web.

[3] GreyB. “The Race of Singapore to Become The Next IP Hub of Asia.” GreyB. GreyB, 10 Apr. 2017. Web.

[4] “Funding and Assistance.” Funding and Assistance. IPOS, 21 Sept. 2016. Web.

[5] “PTMT Products and Services Brochure.” Patent Statistics, PTMT Brochure. N.p., n.d. Web.

[6] SOURCE-WIPO STATISTICS DATABASE; LAST UPDATED 05/2017

[7] https://www.ipos.gov.sg/AboutIP/IPResources/Statistics.aspx

 

 

Indonesia: Amendments in Geographical Indications law &Trademark law

Indonesia: Amendments in Geographical Indications Law &Trademark law

 

October 27, 2016 was the day when the Indonesia Government passed the new law related to both trademarks and Geographical Indications [1] which will replace the Old Trademark Law (Law No. 15 of 2001 on Trademarks) and expected to be enacted soon after the assent from the President. Lots of amendments related to registration, protection and enforcement have been incorporated into the new Geographical Indications and Trademarks law.

 

The amendments in the new Trademark Law can be categorised as [2]

 

  • Prosecution— Process
  • Prosecution—Substance
  • Enforcement (Litigation)

 

Few amendments are yet to become effective and will take a year or so for their effectiveness. Therefore, it is sure that more changes will be visible in future as far as the Trademark law is concerned.

 

The below detailed description provides you brief details about the changes in the new trademark law:

 

(a) Prosecution—Process [3]

 

  • It is now possible to electronically file trademark applications. In other words filing new trademark applications is no longer illegal.

 

  • There is no need to submit signed copy of Statement of Entitlement forms at the time of filing of trademark application. Upon submission of a trademark application form along with the depiction of the trademark with stipulated fee, the respective trademark will be granted a filing date. However, the previous practise of submitting the mentioned documents is still prevailing.

 

  • Another amendment in the procedural stage of the prosecution is that the opposition period will now take place before substantive examination. Therefore, once the trademark application has been filed, they will proceed immediately to publication for a two-month opposition period. Previously, the opposition period was three months.

 

While these amendments were incorporated to fast track the examination & prosecution process, it also enables in increasing number of bad faith applications that are published for opposition and/or registered. Bad faith applications are an ongoing problem in Indonesia and previously, at least some of them were weeded out during the examination stage. Now, with publication taking place first, i.e within 15 working days after the filing date which means that practically every application that is filed will be published. Hence, it is of utmost importance that the whole prosecution (procedural) stage of the trademark application is monitored closely.

 

(b) Prosecution—Substance [3]

 

  • According to the new trademark law the definition of what can be included in a trademark has been somewhat expanded. Now, 3-dimensional trademarks marks, sound trademarks and holograms can be accepted for registration and filing in Indonesia.

 

  • A new amendment has been made in the law i.e. two additional criteria for rejecting a trademark application has been included. These two rejection criteria are (i) misleading or (ii) deceptive elements. Additionally, the new amendment states that a trademark application can be rejected based on an earlier-filed pending application.

 

  • According to the new law registration of generic trademarks is allowed only if they are combined with some distinctive elements.

 

(c) Enforcement (Litigation) [4] [5]

 

  • According to the new trademark law in litigation process a trademark cancellation action can now be performed based on a conflict with a prior geographical indication (GI) and/or traditional knowledge (TK) element.

 

  • According to the amendment additional provisions have been provided on preliminary injunctions. The target behind for incorporating such provisions in the new law is to increase their use. However, it remains to be seen if this will occur given the requirement, among others, for the plaintiff to pay a bond to the Court equal to the value of the allegedly infringing goods, which would be forfeited if the petition is not successful.

 

  • The new amendment has nearly doubled the penalties (criminal) for all types of infringement.

 

 

  • The new amendment establishes protection for unregistered but famous trademarks by specifically stating that such marks can form the basis of a trademark infringement claim or can be used to cancel a registered mark.

Additionally, applications that originate in Indonesia can only be made once the applicant obtains a trademark registration in Indonesia as the basis of the international trademark registration.

About the Author :Shilpi Saxena, Patent Associate at Khurana & Khurana, Advocates and IP Attorneys. Can be reached at abhijeet@khuranaandkhurana.com

References

 

[1]http://www.wipo.int/edocs/mdocs/aspac/en/wipo_tm_tyo_2_16/wipo_tm_tyo_2_16_3_1.pdf

 

[2] “Indonesia: New Trademark Law.” Indonesia: New Trademark Law. IP Coster, 7 Nov. 2016. Web.

 

[3] “Indonesia’s New Trademark Law – An Overview of the Changes.” Indonesia’s New Trademark Law – An Overview of the Changes | Tilleke&Gibbins.N.p., 11 Jan. 2017. Web.

 

[4] Redfearn, Nick. “Indonesia’s New Trademark Amendments – a Summary.” Rouse – Indonesia’s New Trademark Amendments – a Summary. Rouse The Magazine, 3 Nov. 2016. Web.

 

[5] Lovita, Tania. “Indonesia’s New Law on Trade Marks and Geographical Indications.” Rouse – Indonesia’s New Law on Trade Marks and Geographical Indications. Rouse The Magazine, 31 Oct. 2016. Web.