Who can apply for registration of these intellectual property rights and, briefly, what is the procedure for registration?

Intellectual Property (2nd edition)

Japan Small Flag Japan

Patents/Utility model rights/Design rights: The first owner to obtain the rights (see Question 4 above) or the assignees of such rights may apply for registration by submitting a written application to the Japan Patent Office.

Trademark rights: Anyone who uses or intends to use the mark in connection with the designated goods or services may apply for registration.

UAE Small Flag UAE

Right

Who

Process

Trade Marks

UAE or foreign nationals or UAE or foreign companies, who carry on business, and public legal persons. However trade marks can be refused where it is owned by "natural or legal persons with whom it is forbidden to deal".

PoA required at time of filing. Application will be examined for inherent and relative grounds within 6 months of filing. If accepted, it will be published for opposition purposes in 2 newspapers and the official gazette; if no oppositions are filed the trade mark will be registered.

Patents (UAE national filing)

The inventor or his successor in title

Supporting documents can be filed within 90 days of the application being filed. The application will be examined, usually within 1-2 years of filing. If no objections are raised, it will be processed through to publication and grant. Annuity fees must be paid each year to maintain the application/granted patent.

Patents (GCC patent filing)

The inventor or his successor in title           

Supporting documents can be filed within 90 days of the application being filed. The application will be examined, usually within 18-24 months of filing. If no objections are raised, it will be processed through to publication and grant. Annuity fees must be paid each year to maintain the application/granted patent.

Utility certificates

Designs

The inventor or his successor in title

Supporting documents can be filed within 90 days of the application being lodged. The application will not undergo a substantive examination, but it will still take around 5 years from filing. It will be processed through to publication and grant. Annuity fees must be paid each year to maintain the application/granted utility model.

Copyright & neighbouring rights

The author or his successor in title

The recordal of copyright is relatively straightforward taking up to a month to complete. The difficulties usually relate to the ability to put in place the required supporting documents for the recordal

Mexico Small Flag Mexico

Inventions

IP right

Who can apply for registration?

What is the procedure for registration?

Patents

Inventor(s) or assignee(s)

Application’s filing; formal examination; first publication; in-depth examination; granting or rejection; final publication.

 

Brands

IP right

Who can apply for registration?

What is the procedure for registration?

Trademarks

Any natural person or corporation

Application’s filing; first publication; opposition (if any); second publication (only if an opposition was filed); response to the opposition (if any); formal examination; substantive examination; granting or rejection; final publication (if granted).

Trade names

Slogans

Appellations of Origin

(i) The Mexican Patent and Trademark Office; (ii) any company or people associated with the extraction, production and manufacture of the product intended to be protected; (iii) the national chambers or associations of manufacturers related with the subject product; (iv) the Mexican Federal Government and associated entities.

  I.  Application.

  II.  Revision by the Mexican Patent and Trademark Office.

  III.  Publication in the National Official Gazette for opposition purposes.

  IV.  Opposition deadline: Two months as from the publication date.

  V.  Final decision.

  VI.  Publication in the National Official Gazette, if granted.

Geographical Indications

 

Copyright and other rights

IP right

Who can apply for registration?

What is the procedure for registration?

Reservation of rights

Any natural person or corporation

Application’s filing; formal and substantive examination; granting or rejection.

Plant varieties

Inventor or assignee(s)

Application’s filing; formal and in-depth examination, granting or rejection.

India Small Flag India

Patents:
As per Indian patent law, the following persons are entitled to apply for patent:

(a) Any person claiming to be the true and first inventor of the invention;

(b) 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

(c) The legal representative of any deceased person who immediately before his death was entitled to make such an application

  • FILING:
    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.

  • PUBLICATION:
    An application is automatically published after expiry of 18 months from the filing date.
  • EXAMINATION:
    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.

  • HEARING:
    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.

  • GRANT:
    Once a reply is filed to the hearing notice, the application proceeds for grant or is refused as per the discretion of the Controller.

Trade marks:
Any person claiming to be the proprietor of the trademark can apply for registration, on the basis of prior use, or on a proposed to be used basis.

Registration Procedure:

  • Search:
    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 a mandatory procedure for filing of the trademark application.
  • Application:
    If it appears that no identical or similar mark is present in the Register, one can apply for registration of the trade mark.
  • Examination:
    Within 2-3 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.

  • Publication:
    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.
  • Registration:
    The trade mark proceeds for registration if no opposition is filed within 4 months from the date when journal was made available to public.

Copyright:
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:

  1. in relation to a literary or dramatic work, the author of the work;
  2. in relation to a musical work, the composer;
  3. in relation to an artistic work other that a photograph, the artist;
  4. in relation to a photograph, the person taking the photograph;
  5. in relation to a cinematograph or sound recording, the producer; and,
  6. in relation to any literary, dramatic, musical or artistic work which is computer generated, the person who causes the work to be created.

Registration Procedure:

  • 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.

Designs:
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:

  1. An author of design
  2. A person who has acquired the design
  3. A person for whom the design has been developed by the author
  4. A person on whom the design has devolved
  • FILING:
    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 line drawings are usually not allowed. However, there are some cases where the controllers have allowed them.

  • Examination:
    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, by filing a formal response to the objections raised in the First Examination Report. The response may be accepted or rejected by the controller. If it is rejected, an opportunity of hearing is provided to the applicant.

    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 & Publication:
    Once the objections are complied with, the design application is accepted and the controller issues a certificate of registration and the same is 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.

Registration Procedure:
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.

Updated: June 15, 2018