Who can apply for registration of these intellectual property rights and, briefly, what is the procedure for registration?
Intellectual Property (2nd edition)
Intellectual property rights can be filed by any natural person or a legal person such as a civil or commercial company, with or without a representative.
i. Patents, trademarks, semiconductors and design
Regarding national trademarks (Article L.712-14 of the IPC), patents (Article L.612-23 of the IPC), semiconductors (Article L.622-4 of the IPC) and designs (Article L.512-1 of the IPC), 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.
ii. Geographical indications
For geographical indications (Article L721-3 of the IPC), 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”).
iii. Plant varieties
For plant varieties certifications (Article L.412-1 of the IPC), 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”).
Except in cases described below, any natural or legal person can apply for registration of these intellectual rights: first owner, successor in title or an third person whose right is based on other legal grounds, e.g. assignment of rights.
For registering a patent, the applicant must file a patent application including a patent claim defining the invention, technical drawings, an abstract and the technical documents. The IPI first examines whether the formal requirements have been met. In case there are any deficiencies, the applicant will be granted a deadline to correct them in order for the procedure to continue. Otherwise, the application will be rejected. The patent application is published 18 months after the application or where appropriate after the priority date. Around three years after the application (or earlier in case of an accelerated examination procedure), the IPI will conduct a substantive examination, during which patent experts examine the technical content of the application and notify the owner of any potential deficiencies. If there are no deficiencies or if they have been rectified within a given deadline, the patent will be granted.
For trademarks and designs, the applicant must file an application containing basic information such as the reproduction of the sign, the designated goods and/or services, the name of the owner, etc. Upon payment by the applicant of the registration fee, the IPI examines the formal requirements and - for trademarks - the potential absolute grounds for refusal. If the IPI considers that the requirements are fulfilled, the trademark/design is registered. If there are deficiencies in the application, it will grant the applicant a deadline to correct them. If the applicant does not correct them, the IPI will reject the application.
Collective marks can only be registered by an association of manufacturing, trading or service undertakings, to the exclusion of natural persons.
PGI/POA can only be registered by a representative group of producers. The application is filed with the IPI for non-agricultural products, and with the Federal Office for Agriculture for agricultural products, and must include amongst others a product specification defining the product and its method of production.
Supplementary protection certificates can only be filed for a patented and authorised product. The application must be filed within 6 months of either the first authorisation to place the product on the market in Switzerland as a medicinal product, or of the grant of the patent if this was granted later than the first authorisation.
The registration of topographies only require the applicant to submit an application form containing the necessary details along with documentation identifying the topography, and pay the registration fee. The examination itself is a mere formality.
Natural and legal persons may apply for registration for most of these registered rights. For designations of origin, geographical indications and traditional specialities, these can be obtained by groups of producers or processors of particular products.
Polish national patents, SPCs, utility models, trade marks, designs, and semiconductor topographies are registered before the Polish Patent Office. In general, applying for each of these rights requires filing a dedicated form and paying the relevant fees.
It is also possible to obtain patent protection in Poland under the European patent system at the European Patent Office (EPO) after subsequently validating such patent in Poland within six months after the publication of the decision on the grant of the European patent. Poland is also a party to the Patent Cooperation Treaty and thus Poland can be a designated country in the PCT patent application filed through the World Intellectual Property Organisation (WIPO).
Trade marks and designs may also be registered before the European Intellectual Property Office (EUIPO), granting them EU-wide protection.
Poland is also a party to the Madrid Association and the Hague Convention, thus international trade mark and design applications designating Poland are acceptable as well.
Polish national plant varieties are registered by filing an application before the Central Research Centre for Cultivar Testing (COBORU). Plant varieties may be also registered before the Community Plant Variety Office (CPVO) for EU-wide protection.
Individuals or legal entities can register intellectual property rights. All applications and requests, with the exception of what is provided for by international conventions and agreements, are to be filed at the Italian Patent and Trademark Office ("IPTO"), the Chambers of Commerce, Industry and Crafts, and at the other relevant public offices or entities.
Once filed, the IPTO checks the formal requirements of the application and carries out its examination.
For plant varieties the examination of the requirements of validity as well as the compliance with the provisions laid down in the Italian Industrial Property code ("IPC") is carried out by the Ministry of Agricultural and Forestry Policies.
The IPTO, for the purpose of evaluating the patentability of biotechnological inventions, may request an opinion from the National Committee for Biosafety and Biotechnologies
With regards to copyright, a general public register of works shall be established in the Office of the President of the Council of Ministers. The SIAE (Italian Copyright Collecting Agency) shall keep a special public register for cinematographic works as well as a special public register for computer programs. The authors and producers of works and products protected by the ICL, or their successors in title, shall deposit with the Office of the President of the Council of Ministers one specimen or copy of the work or product. In the case of dramatic-musical or symphonic works of which the orchestral scores have not been printed, it shall be sufficient to deposit one copy or specimen of the version for voice and piano or for piano only. Deposit shall be optional for computer programs and subject to payment of a fee. Photographs shall not be subject to the requirement of deposit.
The inventor or his successor in title or the joint inventors – where applicable – are entitled to apply for patents. Foreigners and nationals of Cyprus can apply for and obtain patents to the same extent.
To register a national patent, the applicant or a lawyer licensed to practise law in Cyprus on behalf of the applicant must file an application to the Registrar of Companies and Official Receiver (hereinafter the Registrar). The application must be written in Greek using a specific form and must be accompanied with an Authorization form as well as the patent text in English and Greek which must have a specific format and include a request for the patent to be granted, the details of applicant, inventor and representative and the title, description, claims, drawings and abstract of the invention.
Following the filing of the application, the applicant is notified that the application complies with all formal requirements and then a search report must be issued by the relevant Authority which is the European Patent Office (EPO). The decision to grant the patent is made and if the grant fee and the publication fee are paid within three months from the notification of the decision, the patent is granted.
To register a European patent designating Cyprus, an application is made to EPO.
Supplementary protection certificates
The owner of the basic patent or his legal successor or assignee can apply for a supplementary protection certificate. The possibility of extension applies both to national patents and to European patents valid in Cyprus.
To obtain a supplementary protection certificate, an application must be filed with the Registrar of Cyprus within six months from the date on which the first marketing authorization as a pharmaceutical product in Cyprus is granted. In case that this authorization is granted before the grant of the basic patent, the certificate must be applied for within six months from the date on which the patent is granted.
Any person, either individual or legal entity, who claims to be the owner of a mark may apply for its registration.
Applications for registration of trade mark are filed with the Registrar. The application must be accompanied with the representation of the trade mark and with an Authorization form in case the application it is filed by a lawyer licensed to practise law in Cyprus on behalf of the applicant. If the formal requirements are met, the trade mark is published on the Official Gazette of the Republic of Cyprus for two months and if no opposition is filed within this period, the registration is completed.
To register a community trade mark, a European application to the European Union Intellectual Property Office (EUIPO) must be filed.
An application for the registration of an industrial design may be filed by:
- Cypriots or citizens of the European Union or persons with customary residence in Cyprus or in a Member State of the European Union
- Companies or other legal entities with a real industrial or commercial establishment in Cyprus or in a Member State of the European Union and
- Persons or companies form outside the European Union with customary residence or a real industrial or commercial establishment in Cyprus or in a Member State of the European Union.
Applications for the registration of designs are filed with the Registrar. The representation by a lawyer is not required for the registration of a design. The Registrar examines if the formal requirements are complied with and issues the certificate of registration.
To register a community design, an application must be filed before the European Union Intellectual Property Office (EUIPO).
.CY domain names can be registered only to companies registered in Cyprus and to permanent residents of Cyprus. Thus, foreigners can register a .CY domain names only by authorizing a local representative. An application in a specific form must be send to University of Cyprus with any supporting document and the fees must be paid.
Any inventor or owner of an invention may file a patent application. The procedure for registration requires filing an application and paying the subsequent fees. Israel is a Paris Convention country; thus, an applicant can enjoy the right of priority from an earlier application filed in a Convention country within the prior 12 months. Alternatively, the application may be filed as a National Phase from a PCT Application.
One who has a new and original design must submit an application form and drawings describing the protected design, a fee receipt, and a letter stating that the application is a new application for the sample. The examination is a substantive examination.
Any type of legal entity can register a trademark in Israel, including individuals.
Once filed, a trademark application is examined within approximately 15 to 18 months. Under certain conditions, and provided an affidavit is submitted and the official fee is paid, the examination may be accelerated. Once an office action is issued, the response must be filed within three months. This deadline may be extended by up to eight months, while the examination of the application must be finalized within two years of the first office action. Both absolute and relative grounds apply in the examination of trademarks. Once accepted, the mark is published in the Trademarks Gazette for a period of three months. If no oppositions are filed, the mark is registered shortly thereafter.
Any person can request the registration of a trademark. This is done through a trademark application before the Chilean Trademark Office, which will make a formal examination and the corresponding observations.
Once the formal observations of the authority have been resolved, the publication of the trademark in the Official Gazette will be ordered, which opens a period of 30 days for third parties to oppose the application. Once this period has expired, the authority will conduct a substantive examination of the application, which may bring forth new objections for these motives.
If no oppositions have been filed by third parties and no substantive comments have been issued, the application will be accepted for registration. Otherwise, the applicant is granted a period of 30 days to respond, after which the authority will decide to accept or refuse to register the trademark.
- Patents of invention / utility models / industrial drawings and designs / layout designs (topographies) of integrated circuitslayout designs (topographies) of integrated circuits:
Any person can request the registration of these rights as long as he is the original creator, has a concession of the natural persons who participated in its creation / invention, or is the institution that owns the invention of service. This is done through a request to the Chilean Patent Office, which will make a formal examination and make the corresponding observations.
Once the formal observations of the authority have been made, the publication of the respective application in the Official Gazette will be ordered, and a specific period is opened for any interested party to file an opposition against the aforementioned request.
Depending on the existence of oppositions, the procedure will be contentious or not. In case it is contentious, the applicant may submit a document answering the respective opposition, after which a probationary period will be opened so that both parties can present the documents they deem appropriate. As of this moment, there are not so many differences between the contentious and non-contentious procedures inasmuch as the expert fee must be paid, after which an expert will be appointed to review the application.
Once the expert has been appointed, office actions will be notified. The office actions can be answered by the applicant to try to overcome the objections raised - and by the opponent, in case the procedure is contentious.
Once the office actions finalizes, the authority will decide to accept or reject the respective application.
Although the right protects the intellectual creations from the moment of its creation, there is a registry in charge of the Department of Intellectual Rights, which grants a presumption of authorship issued by an administrative authority, which can only be contested through a judicial process.
The registration process consists of the presentation of an application along with the copy of the work - and the respective transfer or authorization of the original author, if applicable. This is achieved through a request to the Department of Intellectual Rights, which will make a formal examination and make the corresponding observations. If the formal observations of the authority are complied with, a certificate of registration will be granted without the need for a substantive examination.
Any natural person or legal entity 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.
- Patents: There is no substantive examination of patent applications in Greece. Applications are examined as to formalities and any deficiencies must be remedied within 4 months from the application. The Examiner then carries out a search and issues, at the applicant’s choice, either a Simple Search Report or a Search Report with Examiner’s detailed opinion. The applicant has the right to submit comments within a 3-month term. The Examiner then issues a Final Search Report. The patent is granted upon payment of the grant fee and irrespective of the contents of the search report. The patent, together with the Search Report is published 18 months as from the application, or earlier, if the grant fee is paid before the expiry of the 18-month period.
- Utility models: Applications are examined only as to formalities and, in case of deficiencies, these must be remedied within 4 months from the application. After such time, the utility model is granted.
- Semi-conductor topographies: The application undergoes a formalities check and, in case of deficiencies, these must be remedied within 4 months as from the application. After such time, the certificate is granted.
- Registered designs: Applications are examined as to 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: It is provided that the plant variety certificate is granted by the Minister of Agriculture (now of Rural Development), following a review and assent of an expert committee. 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
- Trademarks: An Examiner checks the application with respect to both absolute and relative grounds of refusal. If there are no grounds for refusal, the application is accepted. The decision accepting the application is advertised on the website of the Greek Trademark Office's web site. The term for filing opposition is three months from the date of said publication. If no opposition is filed, the trade mark proceeds to registration.
- Copyright: Under Greek law, no registration procedure for copyright exists.
Who may apply?
- The first owner in the relevant invention or design, or their successor in title, can apply to register a patent or design.
- The proprietor(s) of a patent can apply for an SPC (it is not required that the marketing authorisation also be in the patent proprietor's name).
- For registered trade marks, the applicant should be the individual or legal entity seeking registration of the mark.
- For plant variety rights, the person entitled to the grant of plant breeders’ rights in respect of a variety is the person who breeds it, or discovers and develops it, or his successor in title.
In each case, the application may be filed by an appropriately qualified representative. It is possible for an applicant for a trade mark to file their own trade mark application, without the involvement of an IP professional. However, it is usually advisable to use an IP professional to undertake searches and give advice as to whether the mark is likely to be registrable, and to liaise with the examiner to address any objections or concerns that are raised.
Where is the application filed?
For a UK patent, an SPC covering the UK, a UK registered trade mark, or a UK registered design, the application may filed with the UK Intellectual Property Office (UKIPO). Alternatively, a UK patent or a UK registered trade mark may be sought pursuant to the relevant international system, by filing an application at the World Intellectual Property Office (WIPO) or with a competent national or regional office.
For a European patent designating the UK (effectively this is a UK patent, which was originally filed as a European application), an application is made to the European Patent Office. Alternatively, as mentioned above, a European patent designating the UK may be sought pursuant to the international system (governed by the Patent Cooperation Treaty) by filing an application at WIPO or with a competent national or regional office.
For an EU registered trade mark or EU (Community) registered design, the application is filed at the EU Intellectual Property Office (EUIPO). An EU registered trade mark may also be sought by filing an application at WIPO pursuant to the Madrid International Trademark System or the Hague International Design system.
For a UK plant variety right, the application is made to the UK Plant Variety Rights Office. For a Community Plant Variety Right, the application is made to the Community Plant Variety Office.
Details of the procedures for registration differ between the rights, with applications for a patent generally given the most substantive scrutiny.
Any person claiming to be the owner of the respective right can apply for the registration intellectual property rights.
In Patents, once an application is filed, it is examined in seriatim. Examination is based on substantial and formal matters and multiple examination reports may be issued. If all the objections are met to the satisfaction of the Controller application is accepted though there is no fixed time frame for acceptance of an application. In case if no opposition is filed against the application within four months of publication, sealing fee is to be paid. Upon payment of sealing fee Letters Patent Document (grant letter) is issued.
General procedure for trade mark registration is filing an application on the prescribed form along with a notarized Power of Attorney. After filing of the application, it takes about a year for examination of an application. Upon examination, if no objection is raised against the Trade Mark, it is ordered to be advertised and proceeds to advertisement in the Trade Marks Journal. In case, there is any objection, the Registry issues examination report to which the applicant is required to file reply. Thereafter, if it is found satisfactory, the mark is ordered to be advertised. If it is not or any further clarification/explanation is required, which is usually the case, the application is fixed for hearing before a Tribunal. In case of satisfactory arguments during the hearing order for advertisement of the mark is issued. The purpose of advertisement is for inviting opposition by third parties within the statutory period of two months (which is extendable for a further period of two months by filing request on prescribed form). In case the mark is opposed, the application will remain pending until the decision of the opposition. In case, no opposition is filed, the Registry will issue Demand Note for payment of registration fees and after the payment of fees, the mark proceeds to the registration.
In Designs, once an application is filed, it is examined in seriatim. Examination is based on substantial and formal matters and multiple examination reports may be issued. If all the objections are met to the satisfaction of the Registrar, application is registered.
Application for registration of copyright is made on prescribed form. For Registration of an artistic work an advertisement is published in any national Urdu or English language daily newspaper. If no objection to such registration is received by the Registrar within thirty days of the receipt of the application by him, he shall 'if satisfied about the correctness of the particulars given in the application, enter such particulars in the Register.
An application for the registration of a layout-design is filed only if a layout-design has not been commercially exploited or has been commercially exploited for not more than two years. The Controller shall, where the application complies with all the requirements, after such enquiry as he thinks fit, register the layout-design in the Register of Layout-Designs. The registration of a layout-design is then published in the official Gazette.
The registration of the intellectual property rights may be requested by the right holder with the signature of a lawyer or by the judicial attorney or attorney-in-fact of the owner.
In the case of designation of origin or country brand, the request for registration is made by the interested party.
The registration process is generally the following:
- Request before the competent authority (SENADI- National Secretariat of Intellectual Rights)
- Formal examination: Analysis of the documentation presented in the application according to the legal requirements (15 days)
- Publication of the application in the official document
- Submission of oppositions by third parties within 30 days (brands and designs) 60 days (patents) extendable from publication
- If opposition is presented, the applicant will be notified in 30 days (marks and designs) 60 days (patents) in order to assert their arguments and present evidence
- In the case of patents, within 60 days of the publication, an examination of the invention will be requested. If the national office finds that it is not patentable, it will notify the applicant in order to present the necessary modifications. The patentability examination may be carried out two or more times at the request of the interested party
- Once of this term has expired or the opposition is not presented, the background or registrability examination will be developed.
- Resolution of concession
The inventor(s) or their legal representative, or a person or entity to whom the inventor has assigned or is under an obligation to assign the invention, may apply for a patent, with certain exceptions.
An entity that is using the mark in interstate or international commerce, or has a bona fide intent to do so, may apply for registration of a mark in the U.S. Under certain international agreements, owners of a foreign trademark application, a foreign trademark registration, including international applications and registrations, may seek registration for the same mark in the U.S.
The author or the author’s heirs or assignees can seek registration of a copyright, and otherwise own the rights provided for by common law to a work of authorship.
Any person either alone or jointly with another person.
Procedure: File application – Date of Filing Issued – Preliminary Examination – Acceptance + Application laid open for public examination – Request for substantive or modified substantive examination – Substantive examination – Certificate of grant issued – Gazetted
The proprietor of the trade mark which is used or proposed to be used by him.
Procedure: File application – Amendment in the event of non-compliance – Formality checking to see compliance with statutory requirement (plus amendments if necessary) – Search for prior marks & examination on the registrability – Gazetted for opposition upon acceptance – Certificate of registration issued upon no opposition
A person who is carrying on an activity as a producer in the geographical area specified in the application with respect to the goods specified in the application.
Procedure: File application – Formality examination to see compliance with statutory requirement – Amendment in the event of non-compliance – Advertised for opposition – Registration
The original owner of an industrial design.
Procedure: File application – Formality & examination to see if definition and requirements are fulfilled – Amendment and file submission to amend if requirements not fulfilled – Novelty search – Certificate of registration issued – Gazetted
The inventor or the assignee may file for a patent to protect his work. The procedure for registration involves the filing of the application, accordance of the filing date, formality examination, classification and search, publication of the application, substantive examination, grant of the patent, publication of said grant, and issuance of the certificate.
As regards utility models, industrial designs, and layouts of integrated circuits, the procedure involves the filing of the application, accordance of the filing date, formality examination, classification, grant of the registration, and publication of said registration. The designer/creator or the assignee may file the application for registration of the foregoing intellectual property rights.
The applicant for a trademark may be a natural or juridical person. The procedure involves the filing of an application, search and examination, issuance of registrability report, response, recommendation for allowance, publication of such allowance, issuance of the certificate of registration.
While copyright subsists and is protected from the moment of creation, the author or creator of the work, his heirs, or assignees, may also apply for a certificate of copyright registration and deposit. The application may be filed directly with the National Library of the Philippines (“National Library”) or with the Philippine Intellectual Property Office (“IPO”) as the receiving office, the latter being deputized by the National Library as such. In applying for copyright registration and deposit, the applicant or his local authorized agent (if the applicant is non-resident foreigner) must submit the following:
a) Duly accomplished application form. The application form must be notarized and accomplished in duplicate;
b) Two (2) copies of the work as deposit;
c) Technical description of the design, if the work applied for registration is an original ornamental design;
d) Two (2) printed copies with copyright notice printed in front or at the back of the title page if it is a book and on any clear space thereof if non-book material, if the work applied for registration is published work;
e) Two (2) manuscript and/or photocopies of the work without the copyright notice shall accompany the application, if the work applied for registration is unpublished work;
f) A special power of attorney in favor of the local agent appointing the latter to complete the copyright application on behalf of the applicant, if the applicant is a non-resident foreigner;
g) A document supporting the claim such as a deed of assignment or a waiver of copyright ownership, if the claimant is not the author; and
h) A photocopy of the certificate of business name, if the applicant is a proprietor or a corporation.
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 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.
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
Who can apply for registration?
What is the procedure for registration?
Inventor(s) or assignee(s)
Application’s filing; formal examination; first publication; in-depth examination; granting or rejection; final publication.
Who can apply for registration?
What is the procedure for registration?
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).
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.
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.
Copyright and other rights
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.
Inventor or assignee(s)
Application’s filing; formal and in-depth examination, granting or rejection.
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
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 trademark 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 a 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 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.
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 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 line drawings are usually not allowed. However, there are some cases where the controllers have allowed them.
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.
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.
The inventor, or the person(s) to whom the inventor’s rights have succeeded is/are entitled to apply for a patent registration. Legal entities may not be inventors but can indeed apply for patent regarding an invention to which it has acquired the rights. In accordance with the Patent Decree (SFS 1967:838), Swedish patent applications shall be filed at the PRO. International patent applications designating Sweden shall be filed with the public authority or international organisation authorised as a receiving office according to the Patent Cooperation Treaty and its regulations. Application forms are provided electronically at the PRO’s website. An application shall be made in writing and may be submitted electronically or physically. The application shall include information about the applicant(s), the inventor(s), a factual designation of the invention applied for etc.
Where an application is complete and there are no obstacles to grant a patent, the patent authority shall notify the applicant that a patent can be granted. Within two months of the date of notification, the applicant shall pay a fixed grant fee and, if the patent claims are written in English, shall submit a Swedish translation of the patent claims. In the event this does not occur, the application shall be dismissed. When the applicant has fulfilled its duties in accordance herewith, and there is still no obstacle to the patent, the patent authority shall grant the application. The decision shall be published and the patent is granted. A granted patent shall be recorded in the patent register maintained by the patent authority and patent letters shall be issued. Once the patent has been granted, the claims may not be amended so as to expand the scope of the patent protection.
(b) Right to Trademarks
Both natural and legal persons may apply for a registration of a Trademark. The applicant shall further provide a list showing the class(es) to which the goods and/or services belong. This classification provides the basis for and defines the scope of an exclusive right. The applicant shall also, where deemed necessary by the PRO, describe the mark in writing and state its distinguishing characteristics. Further, where an application for registration refers to the form or design of a product or its packaging, the applicant shall, when deemed necessary by the PRO, submit a sample of the product or packaging for storage at the PRO’s office.
The application shall contain: information regarding the applicant’s name or company name and address; information regarding any representative’s name and address; a clear reproduction of the trademark; and a list of the goods or services to which the trademark pertains and the classes to which they belong. An application for registration of a collective mark, confirmation mark, or certification mark shall also contain information regarding the prerequisites which apply to permissible use of the trademark.
Application forms are provided electronically at the PRO’s website.
(c) Right to Trade Names
The Trade Name is registered in connection with registration of the company at the SCRO. The application, which needs submitted in original to the SCRO shall be signed by a company representative authorised to sign on behalf of the company. Subject to an additional fee of approximately SEK 1,400 the applicant may have the proposed Trade Name(s) preliminary reviewed by the SCRO.
Application forms are provided electronically at the SCRO’s website.
(d) Design Protection
The Designer or the Designer’s successor may apply for a registered Design. The application shall be made in writing and submitted at the PRO. The application shall contain information regarding who created the design and about the product or products to which the design is intended to be applied or in which it is intended to be incorporated, and pictorial material showing the design. If registration is sought by a person other than the designer, the applicant shall prove his or her right to the design. If the application documents are complete and the PRO has not found any obstacle to the registration after examination the Design protection shall be granted and a notice to that effect be published.
Application forms are provided electronically at the PRO’s website.
(e) Plant Variety Rights
Any person or representative for a person who has produced or discovered a plant variety or that person’s successor may acquire an exclusive right to the variety through registration of the plant variety at the Swedish Board of Agriculture (the ‘SBAC’). Approval of the registration means that the variety should be admitted to the Swedish list of varieties or admitted to the EC common catalogues of varieties of agricultural plants or vegetable plants or fruit plants. For a variety to be approved and admitted to the Swedish national list of varieties, it must be technically examined for at least two years in cultivation, evaluating the variety’s distinctness, uniformity and stability (the ‘DUS-test’). A variety of an agricultural species then has its value for cultivation and use tested for at least 2 years in the cultivation and use test (VCU test) executed by the Swedish College for Agriculture. The uniqueness of a denomination or name for the variety is checked in the Swedish Community Plant Variety Office’s database of variety denominations.
Application forms are provided electronically at the SBAC’s website.
Plant variety rights must be registered with the State Plant Protection Service. All other intellectual property rights must be applied for with the Latvian Patent Office.
Patents – There is no substantive examination in respect of novelty and inventive step of patent applications in Latvia. Applications are examined in respect of formalities within 3 months after filing. Any deficiencies explained in the notification of the Latvian Patent Office must be remedied within 3 months from the notification date. The applications are published after 18 months from the priority date. Upon request of the applicant the early publication of the application is possible. The substantive examination is carried out in respect of possible unprotectability of the object of invention, industrial applicability and unity of the invention. Any deficiencies explained in the notification of the Latvian Patent Office must be remedied within 3 months from the notification date. If the patent application conforms to the requirements the grant decision is taken. The granting fee should be paid within 3 months. Annual fees should be paid only after the patent is granted.
Trade marks - Any natural or legal person can apply for registration of their trade marks by filing a respective application. The Latvian Patent Office conducts only examination on absolute grounds and issues a decision to register the mark. The registration fee is payable within 3 months since date of the decision. Upon publication and registration of the mark any interested third party is given a period of 3 months to file an opposition against the published mark.
Registered designs - Applications are examined in respect of formalities within 3 months after filing. Any deficiencies explained in the notification of the Latvian Patent Office must be remedied within 3 months from the notification date. If the patent application conforms to the requirements the grant decision is taken. The granting fee should be paid within 3 months.
Semiconductor topography rights - Applications are examined in respect of formalities within 3 months after filing. Any deficiencies explained in the notification of the Latvian Patent Office must be remedied within 3 months from the notification date. If the application conforms to the requirements the grant decision is taken. The publication fee should be paid.
For patents and layout designs, who is entitled to register is individual (author) who have created them by his/her own labour at his/her own expense. Where these creations (subject matters) are generated with other individual or organization’s funds or material facilities, whether in the form of commissioning or job assignment, the aforesaid individual or organization becomes entitled applicant.
For common trademark: who is the producer or service supplier is entitled to register his/her trademark used for his/her product or service. Who is neither manufacturer nor service supplier service trades in or puts on the market any product manufactured by others has the right to register trademark if the manufacturer neither use nor oppose that registration or use of that trademark. For special trademarks like certification mark, collective mark and geographical indication: lawfully established collective organizations of organizations and/or individuals those who are doing business in that location have the right to register.
Procedure: filing application - formality examination within 01 month (15 days for plant variety) – application publication for potential opposition purpose (only 3 months for plant variety whilst others started from publication up prior to the NOIP’s or New Plant Variety Protection Office under the Ministry of Agricultural and Rural Development (PVP Vietnam) issuance of notices of allowance) - substantive examination (not required for layout design) – notice of allowance – grant of patent or certificate of layout design (registered design of semi-conducting closed circuits).
Trademarks and Geographical indications: filing application - formality examination – application publication for potential opposition purpose - substantive examination – notice of allowance – grant of certificates.
All of these intellectual property rights, except for plant variety rights, are to be applied for at the German Patents and Trademarks Office. The plant variety rights must be applied for at the German Federal Plant Variety Office.
a) Patents, utility models, semiconductor topography rights
The German Patents and Trademarks Office does not examine whether the applicant holds the material (monetary) rights to the invention and therefore generally anyone who can provide the necessary information and documents can apply for a patent, utility model or semiconductor topography right.
In order to avoid the substantive examination of the patent/utility model application being delayed due to the need to establish the identity of the inventor, the applicant shall be deemed, in the proceedings before the German Patents and Trademarks Office, to be entitled to request the grant of the patent, Section 7 Patent Act, Section 13(3) Utility Model Act.
b) Trademarks and registered designs
In general it is the same for trade marks and designs. However, collective trademarks can only be applied for by incorporated associations.
c) Plant variety rights
The German Federal Plant Variety Office also does not examine whether the applicant is entitled to apply for the plant variety.
e) Procedure for registration
By filing the application documents and paying the application fee the applicant secures the date relevant for the priority of the application. The German Patents and Trademarks Office / the German Federal Plant Variety Office then examine the application to a different extent depending on the respective IP right. If the application complies with the legal requirements and if there is no obstacle to registration, the German Patents and Trademarks Office / the German Federal Plant Variety Office enter the IP right in the respective register. The registration is published in the respective journal. The owner receives a certificate of registration.
Any person (individual or legal person) can apply for the registration of these IPRs. The procedure for registration will always involve the filling of an application which must be in line with the basic legal requirements and accompanied with the payment of the prescribed fee. Trade mark and design right applications must include the relevant classifications for the goods and services covered. Since Malta is a member of the Paris Convention, priority filings may be made or claimed in Malta – until date of writing, there are no additional costs related to the claiming of priority when filing applications.
All applications are filed in the English language.
With regard to trade marks, the IPRD presently carries out examinations based on both the absolute and relative grounds of refusal. We are informed by the IPRD that this is due to change following the transposition of the EU Trade Marks Directive which will see the introduction of an oppositions process before the IPRD and the phasing out of the relative grounds searches carried out by the IPRD’s trade mark examiners.
In the case of patent applications, the IPRD does not carry out a substantial examination of the application.
Applications for registration of an IPR may be filed in paper format or online, with more and more applications being filed online. Different application fees, depending on the IPR being filed, are due accordingly.