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- Application Stages and Timelines
- Registration and Publication
- Information and Documents Required for Filing
- Fee Reductions
- Amendments and Alterations
- Requirements Before Delivery on Sales
- 1. What are the various stages and the timelines involved in the grant of an Indian design?
An Indian design application goes through the following stages, till grant:
- For convention design application: Within 6 months from date of earliest filing in the country (s) under Paris convention/WTO.
- First Examination Report (FER) by the Indian Design Office:
- A First Examination Report (FER) is issued for defects in the application (if any) within six months from the date of filing of the application.
- Reply to FER by the applicant:
- 6 months from date of filing: Extension of time upto 3 months is available upon payment of prescribed fee.
- As soon as possible, if no serious objections are pending. If objections are pending, a hearing may be offered.
- After the registration of the design, the period of the registration of the design is initially ten years from the date of registration.
- “Date of registration” refers to: date of filing of application in India in case of an ordinary application; and date of filing of application in convention country, in case of convention application.
- Once an application is registered, it is published in the Patent Office Journal ordinarily within one month.
- Extension of period of copyright:
- The initial period of registration may be extended by further period of five years, by filing a request for extension. This request must be filed before the expiry of the said initial period of ten years.
- 2. Can multiple designs/or multiple embodiments be filed in a single design application in India?
No, multiple designs/or multiple embodiments in a single design application are not allowable in India. A separate design application for each embodiment/ design of the article will have to be filed.
- 3. Is there any mandatory search required prior to filing a design application?
There is no mandatory search required for a design application, and any search is entirely voluntary. Do
note that the Intellectual Property Office in India does not as yet have an online facility for searching for design applications, and one has to manually search through the Gazettes for any similar or conflicting designs.
However, we have a proprietary database containing the bibliographic details of all design registrations in India, which makes the task of searching considerably easier. If requested, we can conduct an in-house search, for which costs would vary depending on the complexity of the search and the number of conflicting/similar applications found.
- 1. What is the date of registration of a design?
The date of registration of an ordinary application is the date of filing of the application in India.
In case of convention application, the date of registration is the date of filing of application in the Convention Country.
- 2. What is the term of registration of a design?
After the registration of a design, the period of the registration of the design is initially ten years from the date of registration.
The initial period of registration may be extended by further period of five years, by making an application. This application must be filed before the expiry of the said initial period of ten years.
- 3. Is it possible to re-register a design in respect of which Copyright has expired?
No, a registered design, the copyright of which has expired cannot be re-registered.
- 4. Is deferment of publication available in India?
No, there is no provision to defer the publication of a design in India. Once an application is registered, it will be published in the Patent Office Journal ordinarily within one month.
- 5. Will an abandoned/ refused application be published?
If an application for a design has been abandoned or refused, the related documents are not published and are not open to public inspection.
- 6. Are the registered designs open for public inspection?
Yes, the registered designs are open for public inspection. A request will be required to be filed along with the prescribed fee for inspection of the registered design.
- 1. Who can file a design application in India?
True and first inventor, Assignee of the inventor, or Legal representative
- 2. What are the minimum documents/information required for filing an ordinary/convention application in India?
The minimum documents and information which are required for filing an ordinary or a convention application have been summarized in the table below:
S. No. Document/ Information Stage of Submission Extensions 1 Name, nationality and address of the applicant Along with the application No 2 Drawing(s)/ photographs in various views Along with the application No 3 Power of Attorney Along with the application Yes; within a month from the date of filing. 4 Certified copy of the Priority application (only for convention application) Along with the application Yes; within a month from the date of filing.
- 1. Can an applicant claim a reduction in official fee?
Yes, the applicant can claim a reduction in official fee if at least one of the following conditions is satisfied:
- The applicant is one or more natural person
- The applicant is a small entity
- 2. Who can claim a small entity status?
A company/ firm which has:
- an investment of less than INR 100 million (approximately USD 1.6 million) in plant and machinery when engaged in manufacture of goods; or
- an investment of less than INR 50 million (approximately USD 0.8 million) in equipment when engaged in providing services.
- 3. What are the documents required for claiming a small entity status?
The Amended Rules require a small entity to submit a declaration in a prescribed form (Form 28) stating that the entity is a small entity. The form mentions the evidence that is required to be submitted and provides that an Indian applicant is required to submit evidence of registration under the MSMED Act. Where a foreign applicant is concerned, the form mentions “an Affidavit deposed by the applicant or an authorized signatory (on the basis of deponent’s own knowledge) in accordance with Rule 42 of the Designs Rules, 2001, clearly stating that the applicant is a small entity as defined under rule 2(g) of the Designs Rules, 2001”.
In view of the above, an Affidavit in the prescribed form is required to be submitted along with the design application at the Designs Office. The prescribed Affidavit should clearly state that the applicant is a small entity. It is also required that the Affidavit of such form should be duly stamped in India and shall be sworn by any of the following of that country or place:
- Before a diplomatic or consular office;
- Before a notary; or
- Before a judge or magistrate.
- 4. Does the evidence have to be original document? If the original document is not available, does a copy of the document have to be notarized?
The evidence can be an original document or a duplicate of the original document which is duly notarized/ apostillized in the country where it is issued.
- 5. Can the fee reduction be claimed even if the application is transferred from a natural person to a small entity or an entity other than small entity, or when an application is transferred from a small entity to an entity other than small entity respectively?
No, the fee shall be paid in accordance with the revised entity status.
Also, when application is transferred from a natural person to a small entity or an entity other than small entity, difference in official fee between that of an natural person and small entity/ other than small entity must be paid for all the official fee paid at the Indian Design Office till the date of transfer of application.
Similarly, when application is transferred from a small entity to an entity other than small entity, difference in official fee between that of the small entity and other than small entity must be paid for all the official fee paid at the Indian Design Office till the date of transfer of application.
- 1. What are the permissible amendments under Indian Design Act?
Document/ information which could be amended When Comments Name and address of Applicant address for service - Anytime during the pendency of application;
- after registration
Any document for the amendment of which no speical provision is made in the Act may be amended (including class design, drawings, novelty statement and disclaimers in the representation sheet) - Anytime during the pendency of application;
- after registration
The amendment of such document must not cause detriments to the interest of any person. Also, the Controller may direct terms as he thinks fit.
- 2. Is it mandatory to record a transfer of ownership of a design on account of assignment deed / mortgage / license at the Design Office?
It is mandatory to record any partial/ complete transfer in ownership of a design at the Design Office.
If said transfer is not recorded at the Design Office, the Design Office or the Court may not admit the same to be a proof of title to copyright at a later stage.
Towards this, an application for registration of title shall be filed within six months from the date of execution of the assignment deed/ mortgage/ license. This period is extendable by a maximum of six months.
- 1. Are dotted lines permissible in drawings?
The Design Office has been consistently taking a stand that dotted lines in the drawings are not permissible. In case the drawings are filed along with dotted lines, the Controller may require:
(i) removal of dotted lines;
(ii) conversion of dotted lines to solid lines.
- 2. Is it possible to conduct a telephonic hearing with the Controller?
Yes, it is possible to have a telephonic hearing with the Controller. However, it is subject to the discretion of the Controller.
- 3. Can a Controller’s decision refusing the registration of a design passed in respect of an application be appealed/ challenged?
Yes, it is possible to appeal/ challenge a Controller’s decision refusing registration of a design. An appeal lies to the High Court against an order passed by the Controller refusing registration of a design. Every appeal shall be made within three months of the date of the order of the Controller.
- 1. Is it possible to restore the design lapsed due to non-payment of extension fee within prescribed time?
A registration of design will cease to be effective on termination of 10 year period from date of registration if extension fee for further term of five years is not paid before the expiry of original period of 10 years.
However, lapsed designs may be restored provided the following conditions are satisfied:
(i) Application for restoration is filed with prescribed fees within one year from the date of lapse stating the ground for such non-payment of extension fee with sufficient reasons.
(ii) If the application for restoration is allowed the proprietor will be required to pay the extension fee and an additional fee prescribed by the Act.
- 1. Is it mandatory to mark the registration number of the design on the article before delivering the same for sale?
Before delivery on sale of any article with registered design, the registered proprietor shall mark such article with any of the following words:
C. RD, and
D. the registration number
It is not necessary to mark the articles as required above in:
A. textile goods in which the design is printed or woven, other than handkerchiefs; and
B. articles made of charcoal dust, which are brittle and which are not sold in single piece.
If the registered proprietor fails to mark an article, he may not be entitled to recover any penalty or damages in respect of any infringement of his copyright in the design, unless he proves that he took all proper steps to ensure the marking of the article, or unless he proves that the infringement took place after the alleged infringer knew or had already received a notice of the existence of copyright in the design.