Who can apply for registration of these intellectual property rights and, briefly, what is the procedure for registration?
Registered designs – The legal owner of the rights in the design can file the application with the Registry. If formalities requirements for the application are met, the design should be simultaneously published in the Journal and registered in due course.
Patents – The legal owner of the rights in the invention can file the application. If formalities requirements are met, there will be substantive examination of the application once this has been requested for by the applicant after the publication of the application. Grant of the patent will take place in due course once all requirements have been met.
Plant varieties – The breeder of the plant variety can file the application. If the requirements for the application have been met, the application will be published in the Journal and will be registered in due course unless there are any objections raised by third parties.
Trade marks – The bona fide user or legal owner of the mark can file the application. If formalities requirements of the application are met, substantive examination of the application will take place. Once the application has been approved for registration, it will be published in the Journal and will be registered in due course unless there are any objections raised by third parties.
Registered IPR may be filed by individuals or legal entities, with or without a representative.
Concerning national trademarks (IPC art. L.712-14), patents (IPC art. L.612-23), semiconductors (IPC art. L.622-4) and designs (IPC art. L.512-1), the application for registration is made before the French Office by filling a paper or an online form.
If the protection is also required outside France, the applicant may file an application:
- before the Word Intellectual Property Organization (WIPO) to obtain registered rights on an international basis;
- before the EUIPO or the European Patent Office, to obtain registered rights throughout Europe.
For geographical indications (IPC art. L721-3), the applicant must file a paper application form and send it to the National Institute of Origin and Quality (Institut de National de l’Origine et de la Qualité “INAO”).
For plant varieties certifications (IPC art. L.412-1), the applicant must file a paper application form and send it to the French institution for plant varieties certifications (Instance Nationale des Obtentions Végétales “INOV”).
R: Both individuals and companies may apply for registration of IP rights. The procedure of registration is not exactly the same for all IP rights but there are some “common” steps: i) submission of the application; ii) publication in the IP Bulletin; iii) possible oppositions phase; iv) studies phase; v) decision.
As per Indian patent law, the following persons are entitled to apply for patent:
- Any person claiming to be the true and first inventor of the invention;
- Any person claiming to be the assignee of the person claiming to be the true and first inventor in respect of the right to make such an application
- The legal representative of any deceased person who immediately before his death was entitled to make such an application
The Applicant may file a provisional application followed by a complete specification, filed within a period of one year from the date of filing of the provisional application; or the Applicant may file the application with the complete specification before the Indian Patent Office along with other relevant documents and prescribed fee.
In case of Convention or National phase applications, only complete specification is filed along with other relevant documents and prescribed fee.
An application is automatically published after expiry of 18 months from the filing date.
Examination on an application only commences once a formal request for the same is filed. The Applicant is given a time period of 48 months from the priority date to request for examination which is a non-extendible deadline.
Once the request for examination is filed, the application is examined by the Patent Office and thereafter an examination report is issued. The Applicant is required to meet all the objections raised in the report within 6 months from the date of issuance of the report (extendable upto three months). The Patent Office then examines the response and issues a hearing notice if any objections remain outstanding or else grant the patent in favour of the Applicant.
If a hearing is issued, an applicant is required to appear before the Controller on the said date or he can seek an adjournment in the matter 3 days before the date of hearing. Maximum 2 adjournment can be sought in a matter and one adjournment extends the hearing date by one month.
At the hearing various objections raised in the hearing notice are addressed and a time period of 15 days is given to file a reply to hearing notice.
Once a reply is filed to the hearing notice, the application proceeds for grant or is refused as per the discretion of the Controller.
Any person claiming to be the proprietor of the trade mark can apply for registration, on the basis of prior use, or on a proposed to be used basis.
For getting a mark registered with the Trade Marks Registry in India, the first step is to search the Registry database for any identical or similar mark. However, it is not mandatory procedure for filing of the trademark application.
If it appears that no identical or similar mark is present in the Register, one can apply for registration of the trade mark
Within 6-9 months of filing an application for registration of trade mark, an examination report is issued by the Trade Marks Registry pointing out the objections raised to the registration of trade mark.
A reply to these objections need to filed within 1 month from the receipt of the examination report.
After considering the application if the Registrar is satisfied that the trade mark can be registered, he publishes the trade mark in the Journal. Alternatively, a hearing is fixed in the matter and if the mark is allowed at the hearing, it is published in the Journal. Such hearings (oral proceedings) are very common in the IPO practice.
The trade mark proceeds for registration if no opposition is filed within 4 months from the date when journal was made available to public.
An application for registration can be filed by the author, or rights owner or assignee or legal heir. An author as defined by the Indian Copyright Act means:
- in relation to a literary or dramatic work, the author of the work;
- in relation to a musical work, the composer;
- in relation to an artistic work other that a photograph, the artist;
- in relation to a photograph, the person taking the photograph;
- in relation to a cinematograph or sound sound recording, the producer; and,
- in relation to any literary, dramatic, musical or artistic work which is computer generated, the person who causes the work to be created.
- The application with complete details and copies of the work is to be filed.
- The application is examined and objections, if any, are raised, or any extra documents required are requested.
- A response has to be filed within 30 days; if the response is not filed within the stipulated time, the application is deemed to be abandoned.
- Then the application is re-examined by the Registry; where it is either accepted or rejected.
- Thereafter, on acceptance, a certificate is issued by the copyright office after the objections, if any, are removed to the satisfaction of the Copyright Registry.
Any person claiming to be the proprietor of any new or original design may apply for registration. A proprietor may be from India or from a Convention country.
A proprietor may be:
- An author of design
- A person who has acquired the design
- A person for whom the design has been developed by the author
- A person on whom the design has devolved
An Application with different views of an article such as FRONT, BACK, TOP, BOTTOM, LEFT, RIGHT and PERSPECTIVE is filed at the Designs registry along with an appropriate class.
India is not a signatory to the Locarno Agreement though its classification system is modelled on the Locarno Classification system.
Multiple embodiments of a design or multiple designs in a single application are not allowed. Separate applications for each distinct embodiment or design should be filed simultaneously or, in any event, before expiry of the priority deadline. Figures can be submitted in the form of line drawings, computer graphics or photographs, and should contain no descriptive matter, reference numerals/letters or trademarks. Dotted or discrete lines or any shading in the linedrawings is usually not allowed.
The examination process is substantive. Within 1-2 months of filing an application for registration of design, an examination report is issued by the Designs Registry pointing out the objections raised to the registration of Design.
A design application must be placed in order for acceptance within six months of the filing date. Thus, if the applicant is unable to reply to the examination report within this period, it can file a formal request for an extension (of up to three months) at the Designs Office, along with the prescribed official fees.
Registration and publication:
Once the objections are complied with the design will be registered and a copy of the design will be published in the Patent Office Journal.
Geographical indications (GI):
An association of persons or producers or any organization or authority that represent the interest of producers of the concerned goods, and are expected to file an affidavit indicating how the applicant claims to represent their interest.
The application for registration of GI should contain a statement as to how the GI serves to designate the goods as originating from the concerned territory, in respect of specific quality, reputation or other characteristics of which are due exclusively or essentially to the geographical environment, with its inherent natural and human factors, and the production, processing or preparation of which takes place in such territory, region or locality. It should also include the class of goods to which the geographical indication shall apply, the geographical map of the territory in which the goods originate or are being manufactured, the particulars regarding the appearance of the geographical indication (as to whether it is comprised of words or figurative elements or both) and any statement containing particulars of the producers of the concerned goods.
After the application has been filed, the examiner reviews the application and the accompanying statement of case. Thereafter, the Registrar issues an examination report. Depending on the merits of the application and of any evidence of use, the Registrar may accept or reject the application either absolutely or subject to certain modifications. The Applicant is required to respond to the rejection or objections within two months of the receipt of the examination report failing which the application will be dismissed. After the acceptance of the application by the Registrar, either absolutely or subject to certain conditions and with or without a hearing being conducted, the application will be published.
Any person may, within three months of the publication of the application to register a geographical indication, file an opposition.
The Registrar of Geographical Indications may register the geographical indication after the application has been accepted and not opposed or if opposed the opposition has been decided in favor of the Applicant. Thereafter the Registrar will issue the Registration Certificate in the prescribed format.
Any natural or legal person may file for registration of the IP rights in section A; such person will be the creator, assignee or beneficiary of the right. The registration procedure varies depending on the type of right. In brief:
- Patents: There is no substantive examination of patents application in Greece. An Examiner reviews the application only on formalities and, in case of deficiencies, these must be remedied within 4 months as from the application. As a next stage, the Examiner issues, at the applicant’s choice, either a Search Report or a Reasoned Search Report, which the applicant may comment within 3 months. After such time, or if the applicant waives its right to comment, the patent is granted. The patent, together with the Search Report is published 18 months as from the application.
- Utility models: An Examiner reviews the application only on formalities and, in case of deficiencies, these must be remedied within 4 months as from the application. After such time, the utility model is granted.
- Semi-conductor topographies: An Examiner reviews the application only on formalities and, in case of deficiencies, these must be remedied within 4 months as from the application. After such time, the title is granted.
- Registered designs: An Examiner reviews the application only on formalities and, in case of deficiencies, these must be remedied within 4 months as from the application. After such time, the registered design is granted.
- Plant varieties: An expert committee reviews the application and delivers an opinion to the Minister of Agriculture, who grants the title. However, as already noted, in the absence of the implementing Decree prescribed by the Greek plant varieties law, no national plant varieties grants are available.
- Trade marks: An Examiner reviews the application for absolute and relative grounds of refusal. If the application is accepted, it is advertised on the Greek TM Office's web site, triggering a 3-month opposition deadline. If no opposition is filed or after the final rejection of such opposition, the trade mark is registered.
- Copyright: There is no registration procedure for copyright.