ANNUITY & RENEWALS MANAGEMENT
Welcome to our Annuity and Renewals management practice.
Maintenance and periodical renewal of Intellectual Property can be a task especially when a portfolio is to be maintained. Every country has its own laws, rules and procedure for renewal and maintaining Patents, designs and trademarks. We at ADITYA & ASSOCIATES focus and specialize in Intellectual Property renewals, to begin with India, South Asia and Gulf /Middle East countries. Having experience in dealing with renewals / annuity payments, recordals and maintenance for over a decade it has become our core to serve the clients as per their specific needs in most cost effective manner.
Managing intellectual property (IP) renewals and annuities is a crucial aspect of protecting and maximizing the value of intellectual assets. Here are some best practices for managing IP renewals and annuities:
1. Create a Centralized Database:
- Maintain a centralized database to track all intellectual property assets, including their
renewal and annuity deadlines.
- Ensure that the database is regularly updated with the latest information on each IP set.
- Our proprietary software is specially designed for managing databases and calculating
renewal deadlines with periodical intimations is an USP of our practice.
2. Determine Renewal Requirements:
- Understand the specific renewal requirements for each type of intellectual property in different jurisdictions.
- Be aware of timelines, fees and documentation needed for renewals and annuity.
3. Monitor Renewal Deadlines:
- Implement a robust monitoring system to track renewal deadlines well in advance.
- Set up alerts and reminders to notify responsible individuals for their upcoming deadline.
4. Budgeting and Cost Management:
- Develop a budget for IP Renewals and annuities to ensure that necessary funds are allocated.
- Regularly review and assess the cost associated with with renewals to optimise expenditure.
5. Consider Outsourcing:
- Evaluate the option of outsourcing IP renewal and annuity management to specialized service providers.
- Outsourcing can save time, reduce administrative burdens and ensure compliance with local regulations.
6. Regular Audits:
- Understand the specific renewal requirements for each type of intellectual property in different jurisdictions.
- Be aware of timelines, fees and documentation needed for renewals and annuity.
7. Stay Informed on Regulatory Changes:
- Stay abreast of changes in intellectual property laws and regulations in different jurisdictions.
- Adjust renewal strategy based on any legal or regulatory developments.
8. Collaborate with legal experts:
- Work closely with legal experts or Intellectual Property attorneys to ensure accurate and
timely renewal submission.
- Seek legal advice when considering the abandonment or divestiture of certain IP Assets.
9. Document Management:
- Maintain proper documentation for all intellectual property assets, including registration certificates, correspondence and renewal confirmations.
10. Educate Stakeholders:
- Educate key stakeholders within the organisation about the importance of IP renewals and and annuities.
- Foster a culture that values and understands the significance of intellectual property.
By implementing these best practices, organizations can effectively manage their intellectual property renewals and annuities, mitigating risks and maximizing the long-term value of their intangible assets.
We at ADITYA & ASSOCIATES has gained significant experience and proficiency over renewals and recodals management maneuvering its complex official and procedural issues. We endeavor to combine the dynamics of customized technology with personalized commitment and focused expertise (backed by registered patent agents). Our philosophy is to ensure efficiency, transparency and value added services, a high degree of flexibility and cost effectiveness without losing focus and personalized attention.
WE MAKE IP RENEWALS AND MAINTAINANCE EASY, EFFICIENT AND COST EFFECTIVE. ………
FAQs
The term of a Patent is 20 years from the date of filing of Patent application. The due date is called Date of Patent.
Date of Patent is the actual date of filing (provisional or complete specification, as the case may be) or date of priority whichever is earlier.
In case of PCT- National Phase applications where India is designated, term of patent is 20 years from International Filing date under PCT.
No. In India, no annuity is payable to keep patent application is pending for grant. Payment of annuity becomes applicable only after grant of patent.
No annuity is payable for first 2 years of the term of Patent after its grant. Thereafter, annuity is payable annually to keep the Patent in force till the term of Patent is expired. Annuity is payable every year on or before its anniversary date for the next year. Non-payment of annuity will result into laps of the Patent and patent rights.
- A patentee has option to pay annuity for each successive year or for multiple years.
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Non-payment of annuity will result into laps of the Patent.
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If patentee miss to pay any annuity, a grace period of 6 (six) months are given after the due date to pay annuity along with additional fee.
If no annuity is paid with in the grace period, patent will be ceased to have any effect and no protection is conferred upon the patentee thereafter. However, one more chance is given for revival of patent if a request to restore the patent is filed stating any prima facie case / circumstances within a period of 18 (eighteen) months from the due date. If PTO is satisfied that the non-payment of annuity was unintentional, the application for restoration will be published giving an opportunity to others to file opposition against restoration. Procedure of opposition is specified in Sec 61 (2) of the Act. If no opposition is filed, PTO will ask to pay remaining annuity fees and additional (penalty) fees within a specified time. Upon payment patent will be restored.
Section 53 read with Rule 80 of the Patent Act, 1970 and Patents Rules, 2003 (as amended till date) are governing
provisions for renewal of patents.
Sec 60 and 61 govern provisions relating to restoration of lapsed patent.
A Patent is a Statutory privilege granted by the Government to inventors (or to other persons obtaining rights from the Original Inventors) for a fixed and limited period of years, to exclude other persons from manufacturing, selling or using any patented product or process or method.
Thus, the Patent is a monopoly right on an invention for a limited period of time.
In India, the law of Patent is governed by Patent Act, 1970 as amended till date and Rules there under. The Patent Act, 1970 was lastly amended by The Patent (Amendment) Act, 2004 became effective from January 1, 2005. The substantial amendment is effected by this last amendment.
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All the invention is patentable which is new and industrially useful barring few as described herein below.
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In nutshell, all the inventions including any art, process, method or Manner of Manufacture, Machine, Apparatus, Article or Substance produced by manufacture or process of manufacture and Improvement thereof.
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Invention which is frivolous and contrary to established natural laws.
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An invention which could be contrary to public order or morality or which causes serious prejudice to human, animal or plant life or health or to environment.
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Discovery of any living thing or non-living substance occurring in nature.
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The mere discovery of mere new use of a known process, substance, machine or apparatus unless such known process or machine results into a new product or employs at least one new reactant.
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A substance obtained merely by admixture resulting only in aggregation of properties of the components.
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Mere arrangement / rearrangement of known devices each functioning independently in known way.
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A method of agriculture or horticulture.
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A process of medical, surgical, diagnostic, therapeutic or other treatment of human beings.
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Plants & animals in whole or any part, other than micro-organisms, but including seeds, varieties and species and essentially biological processes for production or propagation of plants and animals.
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A mathematical or business methods or algorithms.
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Computer program per se other than technical application to industry or a combination with hardware.
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Aesthetic creation, literary, dramatic, musical or artistic work
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A mere scheme or rule or method of performing mental act or method of playing game.
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A presentation of information
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An invention, which in effect is traditional knowledge or which is an aggregation or duplication of known properties of traditionally known component(s).
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Name, Address and Nationality of the Inventor(s) or of the Assignee.
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Name, Address and Nationality of the Applicant (s)
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Title of the Invention (Brief & Precise).
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Details of the background of the Invention along with the brief information on the Existing Traditional Method (if any) relating to the invention;
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Description of the Invention;
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Manner or best mode of Use of the invention
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the Claims or uniqueness which an inventor proposes to claim.
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If the invention is capable of being illustrated with the help of Drawings, Figures or formulae, such drawings, figures or formulae should be provided on a thick, durable paper.
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In case priority is to be claimed, details about the date of filing of application, country of filing and number of application. A certified copy of the application has to be filed within 12 months of claiming of priority or before the date of filing of a request for Examination.
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Power of Attorney - no need to be legalized or Notarized.
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Any of the following may become the Applicant in an application:
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True and first inventor(s);
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Assignee of true and first inventor(s);
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Legal representative of any deceased person who before his death was entitled to apply for the patent.
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With effect from January 1, 2005, the procedure for Publication and Examination is amended substantially. Following is the brief idea of the procedure:
PUBLICATION:
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After an application for a patent is filed, the same shall not be available for inspection for a period of 18 months.
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Upon completion of 18 months, the application shall be published automatically in an Official Journal. The official Journal is published by the Patent office on a weekly basis.
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If the applicant intends to expedite the publication, he may make a specific request in a prescribed form with additional filing fees and the application will be published as soon as possible.
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Once the application is published till grant, the applicant shall have all the privileges and rights as if a patent for the invention has been granted. However, no suit for infringement can be filed till the patent is granted.
EXAMINATION:
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No application will be automatically examined unless the request for Examination is filed. The application will be examined only on the basis of filing of a special request for Examination of the Application in a prescribed form with fees.
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A request to file for Examination of the application is required to be filed within a period of 48 months from the date of priority or from the date of application in India, whichever is earlier.
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Once the request is filed, the application will be substantially examined by the Patent Examiner and an Examination Report will be sent stating the question of patentability of the invention citing any patent and non-patent literature published prior to the patent application in question and any other details for proper and sufficient description. The applicant has to comply with all requirements and put the application in order overcoming all the objections raised by the Examiner to his satisfaction within a period of 6 months. Examiner upon reply, will send the application to the Controller with his report for grant or rejection and the Controller shall notify the applicant about the same.
Representation of Opposition:
Once the application is published, any aggrieved person may in writing represent by way of an opposition to the Controller against the grant of patent on any of the following grounds:
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Wrongfully obtained invention.
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Prior Publication
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Prior Claiming
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Prior public knowledge or public use in India
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Obviousness and lack of inventive steps
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The invention is not properly described
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Lack of subject matter (invention is not patentable)
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Failure to disclose information relating to the applications filed in foreign countries for the same inventions.
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Non-disclosure or wrong disclosure of the source or geographical origin of biological material used for the invention; and
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Invention is known due to the prior knowledge, oral or other wise available within any local or indigenous community in India or elsewhere.
Upon receiving representation of opposition, the Controller shall give an opportunity to the applicant to defend his application. Once the applicant defends his application in the form of counter statement, the controller may set a hearing if he deems fit and both parties must inform him about their interest in attending the hearing by paying prescribed fees. The controller shall then hear arguments of both sides, consider, and dispose of the representation as he deems proper. Both parties have to support their grounds and claims with elaborate evidence.
Representation to Opposition has to be made after publication but before grant of the Patent rights.
Grant:
Once the application is found to be order with compliance of all the requirements including objections on patentability of the invention or disposed off by the Controller if represented for opposition, the patent is granted as soon as possible (but not before expiry of six months from the date of publication) and information of grant is published in an Official Journal.
OPPOSITION:
Once the patent is granted, the same can be opposed within a period of one (1) year from the date of grant upon following grounds:
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Wrongfully obtained invention.
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Prior Publication
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Prior Claiming
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Prior public knowledge or public use in India
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Obviousness and lack of inventive steps
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The invention is not properly described
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Lack of subject matter (invention is not patentable)
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Failure to disclose information relating to the applications filed in foreign countries for the same inventions.
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Non disclosure or wrong disclosure of the source or geographical origin of biological material used for the invention; and
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Invention is known due to the prior knowledge, oral or other wise available within any local or indigenous community in India or elsewhere.
Once the opposition is filed, the matter will be decided after taking into consideration all the written and oral evidences.
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After the Opposition period is expired or no opposition is filed or the opposition is won by the patentee, the grant of a patent is confirmed.
Then a civil suit will have to be instituted with the appropriate judicial forum.
The term of a Patent is 20 years from the date of filing of Patent.
No proceedings can be initiated for protection of the invention until grant. However, once the patent is granted, the applicant can claim protection retrospectively from the date of application.
There is no specific time within which an application would be accepted. However, approximately it would be about 1.5-5 years depending on the nature of applicant and the benefits of expedition of application it avails.
No fees are required to be paid for first 2 years of the term of Patent after its sealing. To keep the Patent in force, it is imperative to pay the Annuities till the term of Patent. Nonpayment of annuities will result into lapse of the Patent.
The patent will be lapsed. However, within a period of 12 months from the due date of payment of annuity i. e. date on which the Patent becomes lapsed, it may be restored within a period of 6 months upon payment of additional fees. It is to be noted here that no protection will be conferred upon the patentee within this period of nonpayment of annuity.
The following exclusive rights are conferred to a patentee:
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To make, use, sell or distribute the patented article and use or exercise the method or process if a patent is for process.
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To assign or grant license or deal with a patent for any consideration.
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Right to surrender a patent.
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During the period from date of advertisement and date of sealing of the patent, the applicant for the patent can exercise all the privileges and rights of a patentee EXCEPT filing of a suit for the infringement of a patent.
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Any person who is unauthorizedly making, using, selling, importing or distributing a Patented Article or
composition is considered as an infringement of a patent.
A registered patentee may take civil action against an infringer by:
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Suit for temporary or interlocutory injunction;
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Permanent injunction;
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Damages OR Account of Profit (at the option of the Plaintiff);
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The delivery of the infringing goods, labels and advt. materials for destruction;
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A defendant can be ordered to reveal the identity of any third persons involved
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Yes. A patent may be revoked anytime after grant during its validity upon any of the below mentioned grounds;
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lack of novelty.
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lack of utility.
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non obviousness.
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prior claiming.
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wrongful obtaining.
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lack of sufficient description of the invention.
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prior publication or use of the invention.
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FUNDAMENTALS OF INDUSTRIAL DESIGN