StartUp and IPR

Start-Up & IPR

Intellectual Property (IP) is a category of property that includes intangible creations of the human intellect. They usually give the creator an exclusive right over the use of his/her creation for a certain period of time. Every startup has IP Rights, which it needs to understand and protect for excelling in its business. Every startup uses trade name, brand, logo, advertisements, inventions, designs, products, or a website, in which it possesses valuable IP Rights. While starting any venture, the startup also needs to confirm that it is not in violation of the IP Rights of any other person to save itself from unwarranted litigation or legal action which can thwart its business activities. Further, startup ventures should be proactive in developing and protecting their intellectual property for many reasons like improving the valuation of its business, to generate better goodwill, to protect its competitive advantage, to use intellectual property as a marketing edge and to use the IP Rights as a potential revenue stream through licensing.

The scope of IP Rights is very wide, but the prime areas of intellectual property which are of utmost importance for any startup venture are as follows:

TRADEMARKS

PATENTS

COPYRIGHTS

INDUSTRIAL DESIGNS

TRADE SECRETS

AGREEMENTS RELATED TO IPR

TRADE MARKS

Trademark means a mark capable of being represented graphically and which is capable of distinguishing the goods or services of one person from those of others. It is a popularly known as brand or a logo that one person uses to distinguish his products from those of his competitors.

Different types of Trade Marks

• Any name including personal or surname of the applicant or predecessor in business or the signature of the person.
• Invented or coined word or any arbitrary dictionary word.
• Letters or numerals or any combination thereof.
• Devices or symbols.
• Monograms or lable.
• Combination of colors or even a single color in combination with a word or device.
• Shape of goods.
• Packaging or combination of colors or any combination thereof.
• Marks constituting a 3- dimensional image including shape or packaging of goods.
• Sound marks \u2013 reproduction of the same has to be submitted in the MP3 format not exceeding thirty seconds\u2019 length recorded along with a graphical representation of its notations.

How to select a unique trademark?

• If the mark is a word mark, it should be easy to speak, spell and remember.
• The best trademarks are invented words or coined words or unique geometrical designs.
• Avoid trademarks that are devoid of any distinctive character, that is to say, not capable of distinguishing the goods or services of one person from those of another.
• Avoid trademarks which show the kind, quality, quantity, intended purpose, values, geographical origin or the time of production of the goods.

Stages in Trade Mark Registration Application

• For safer side, a trademark search (identical search or similarity search) may be conducted.
• Filing of the Trade Mark Application \u2013 TM-A.
• Application formally examined by the Registrar/Sr. Examiner of Trade Marks and the Examination Report issued. The mark is examined basically on three grounds i.e. distinctiveness, descriptiveness and similarity to the prior marks. To qualify for registration, mark should be distinctive, non-descriptive, and there shouldn\u2019t be any similar prior marks.
• If an objection is raised, an official examination report will be issued.
• Proper Para wise reply (strictly in accordance with Trademarks Act) to the Examination Report to be filed. Failure to respond to examination report within the statutory time period of 30 days can lead to abandonment of application.
• If the Examiner is satisfied that the application for registration of the trademark complies with all the necessary provisions under the act, the mark is advertised before acceptance. The Registry may also call the applicant / attorney for the applicant for personal hearing regarding the acceptability of the mark.
• Once the mark is advertised in trademark journal, it is open for a period of 4 months for third parties to oppose. If no opposition is received during the specified period, the application / the trademark is deemed to be registered.

Forms & official Fee for applications

The official fee for filing a Trade mark application for one class is Rs. 4500/- for an individual/startup/MSME and Rs. 9000/- for any other case.

Time for Registration

Normally, it takes about 7 to 12 months for a trade mark to be registered if there shall be no objection / opposition from the Registrar or from any third party.

PATENT

Patent, in general parlance means, a monopoly given to the inventor on his invention to commercial use and exploit that invention in the market, to the exclusion of other, for a limited period of time (Twenty Years) and is only territorial right. As per Section 2(1) (j) of the Patents Act, 1970, \u201cinvention\u201d includes any new and useful; art, process, method or manner of manufacture; machine, apparatus or other article; substance produced by manufacture, and includes any new and useful improvement of any of them. The definition of the word \u201cInvention\u201d in the Patents Act, 1970 includes the new product as well as new process. Therefore, a patent can be applied for the \u201cProduct\u201d as well as \u201cProcess\u201d which is new, involving inventive step and capable of industrial application.

Basic criteria of patent-ability:

The 3 basic criteria which any invention must meet in order to deserve a patent are:

• Novelty
• Non-obviousness &
• Industrial application.

The invention will not be considered new if it has been disclosed to the public in India or anywhere else in the world by a written or oral description or by use or in any other way before the filing date of the patent application. The information appearing in magazines, technical journals, books etc, will also constitute the prior knowledge. If the invention is already a part of the state of the art, a patent cannot be granted.

Patentability Search

To qualify for patent protection, an idea must pass novelty, non-obviousness and industrial application test. Patentability Search is conducted to assess whether an idea qualifies the technical and statutory requirements to get a patent protection in target jurisdiction. We have a well defined process for searching patents, patent applications, non-patent literature and any publicly available information. Our reports can provide in-depth analysis of existing art with respect to the proposed invention and allows decision makers to make an informed decision before investing much on an idea.

Patent Drafting and Filing

We aspire to covert ideas into valuable assets. Our team of Patent Agents, Patent Attorneys, and subject matter experts has extensive experience in patent drafting and prosecuting patent applications across various jurisdictions.  When drafting patent applications, we include broadest possible claims and detailed descriptions with several embodiments, which serve as reference point for someone using the invention in future.

Freedom to Operate (FTO) Search

We provide a transparent insight on existing patents owned by a second party to rule out any hurdle arising after the product launch. We generally advise our clients to conduct FTO search early in the product life cycle, possibly when product features are being finalized. FTO search helps determine whether marketing a product or process infringes a valid patent. A targeted search to discover active patents is performed for given market(s)/ jurisdiction(s) to identify potentially risks/opportunity. Our FTO reports can help minimize risk of patent-litigation, maximize competitive strength, meet investor expectations prior to funding, or identify potential product/patent acquisition target.

Enforcement Studies

To maximize return on R&D investment and maintain competitive advantage, companies may want to keep evaluating if someone else is making, using, or selling product using their protected invention. Infringement analysis is conducted in order to determine whether a product or a process infringes upon an existing patent claim. We scope coverage of a given claim after going through the detail description and analyzing prosecution history, and then identify potential infringing product/services. We analyze product features from literal infringement and as well as from infringement under Doctrine of Equivalence standpoint. Our report present list of potential infringing products, and high level product features to claim elements mapping. We can also provide detailed claim charts illustrating one to one mapping of claim elements to product features.

Enforcement of Patent Rights

It is pertinent to note that the patent infringement proceedings can only be initiated after grant of patent in India but may include a claim retrospectively from the date of publication of the application for grant of the patent. Infringement of a patent consists of the unauthorized making, importing, using, offering for sale or selling any patented invention within the India.

COPYRIGHT

Copyright is a right given by the law to creators of literary, dramatic, musical and artistic works and producers of cinematography films and sound recordings. In fact, it is a bundle of rights including, inter Alia, rights of reproduction, communication to the public, adaptation and translation of the work. There could be slight variations in the composition of the rights depending on the work. Copyright also protects images, visuals, or any other type of literary works that are created from the app. It also protects computer code under Copyright law.

Duration of a Copyright

The general rule is that copyright lasts for 60 years. In the case of original literary, dramatic, musical and artistic works the 60-year period is counted from the year following the death of the author. In the case of cinematography films, sound recordings, photographs, posthumous publications, anonymous and pseudonymous publications, works of government and works of international organizations, the 60-year period is counted from the date of publication.

Time for Registration

Usually, a time period of 8 to 12 months is required for obtaining a Certificate of Copyright, if the application sails smoothly. The protection or the validity of the copyright shall lasts for a period of 60 years.

We will help you to protect your software program by filing a copyright application and by also replying to various office actions. We will also help you to protect your software program\u2019s look and feel so that nobody else can create exact copy of your software Program. We are always there to help you if your subject matter is being copied by any other.

INDUSTRIAL DESIGN

A Design refers to the features of shape, configuration, pattern, ornamentation or composition of lines or colours applied to any article, whether in two or three dimensional (or both) forms. This may be applied by any industrial process or means (manual, mechanical or chemical) separately or by a combined process, which in the finished article appeals to and judged solely by the eye.

Benefits of a Design Registration

The registration of a design confers upon the registered proprietor the exclusive right to apply a design to the article in the class in which the design has been registered. A registered proprietor of the design is entitled to a better protection of his intellectual property. He can sue for infringement, if his right is infringed by any person. He can license or sell his design as legal property for a consideration or royalty.

Duration of a Design Registration

Term of registration of a design is ten years from the date of registration. It is renewable for a further period of five years. If the fee for extension is not paid for the further period of registration within the period of initial registration, this right will cease. There is provision for the restoration of a lapsed design if the application for restoration is filed within one year from the date of cessation in the prescribed manner.

Essentials of a Design

A design should

• Be new or original requirements for registration.
• Not be disclosed to the public anywhere by publication in tangible from or by use or in any other way prior to the filling date.
• Be significantly distinguishable from known designs or combination of known designs.
• Not comprise or contain scandalous or obscene matter.
• Not be a mere mechanical contrivance.
• Be applied to an article and should appeal to the eye.
• Not be contrary to public order or morality.

Time for Registration

Usually, a time period of 12 to 18 months is required for obtaining a Design Registration Certificate.

TRADE SECRETS

Trade secrets include any confidential business information which provides an enterprise a competitive edge over others. Trade secrets encompass manufacturing or industrial secrets and commercial secrets, formula, practice, process, design, instrument, pattern, commercial method, or compilation of information which is not generally known or reasonably ascertainable by other. The unauthorized use of such information by persons other than the holder is regarded as an unfair practice and a violation of the trade secret. There are no specific statutes under the Indian law for the protection of trade secrets and the same are protectable under the common law rights.

AGREEMENTS RELATED TO INTELLECTUAL PROPERTY

It is pertinent to note that having proper documentation in the form of agreements like non-disclosure agreements, agreements with employees or independent contractors, can make all the difference between the success and failure of startups. Usually, intellectual property is created either by the founders or some key employee or a third party. The intellectual property so created, must be protected through a proper agreement between the founder or key employee or a third party, as the case may be and the startup. If the agreement, with founders or employees or a third party, under which a novel idea was/is created, is overlooked, it could create bottlenecks later after such idea becomes successful. Accordingly, the startups need to ensure that anything created on behalf of the startup, belongs to the startup and not the Employee or a third party. Further, it is advisable to enter into elaborate assignments, licensing or user agreements, and care should be taken to make provisions for all post termination IP Right issues.

IN BRIEF

Young entrepreneurs and Investors across the globe definitely have a once in a lifetime opportunity to develop their ideas into a commercial form with the \u201cAATAMNIRBHAR BHARAT\u201d policy pushed by the Modi Government. However, the immediate need of hour requires awareness amongst entrepreneurs regarding the extreme importance of IPR and need of adopting a proactive approach towards protecting their IPR. This is undeniable that there might be a cost involved to protect these rights but the cost is rather an investment as IPR is an asset, which will economically reap numerous benefits for the entrepreneur, if protected from the very inception.

Our experienced team of Lawyers, Patent Agents, Chartered Accountants, Company Secretaries and industry specific professionals are committed to providing you with creative and result-oriented end result. This ethos permeates everything we do in the pursuit of innovative, sustainable results. Each team member is instilled with our core values of integrity, tenacity and commitment, not only to maintain the impeccable reputation that the Firm holds/possesses but also to ceaselessly strive to maintain an exceptionally high standard to which we hold ourselves.

Authored By Abhishek

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