Law of Industrial Patent Designs in India- Procedure & Remidies by Vijay Pal Dalmia, IP Lawyer

1. Intellectual Property & Information Technology Laws Division
By
Vijay Pal Dalmia, Advocate
Head Intellectual Property & Information Technology Laws Division

3.  The Design Act, 2000
 The Design Rules, 2001

4.  Industrial designs is one of the categories of IPR
where the design system focuses on the aesthetic
feature of an article derived from its visual
appearance.
 Relevant aspects are the shape, configuration,
surface pattern, the colour or line or a combination
thereof as applied to an article which produces an
aesthetic impression on the sense of sight.

5.  Features of shape, configuration, pattern,
ornament, composition of colour or line or a
combination thereof
 Applied to any article
 Whether 2D or 3D or in both forms
 By any industrial process or means
 Appeal to and are judged solely by the eye.

7.  New or Original
 Relate to features of shape, configuration, pattern or
ornamentation
 Applied to articles by any industrial process.
 Appeal to and solely judged by the eye.
 It should not include any Trademark or Property mark
or
 It should not include artistic works as defined under
the Copyright Act
 It should not be mere mechanical Device

8.  Has not been disclosed to the public anywhere in
any tangible form or by use or in any other way
prior to the date of filing/priority date;
 Is significantly distinguishable from known designs
or combinations thereof;
 Does not comprise or contain scandalous or
obscene matter

9.  Any person whether a citizen of India or not
◦ Person includes
 Individual
 Legal entity
◦ Claiming to be the Proprietor
 His Legal representative
 His Assignee
 Application can be made either jointly or separately

10.  Date of registration is the actual date of filing of
the application.
 In case of registration of design with priority, the
date of registration is the date of making an
application in the reciprocal country.
 The period for making such an application in the
reciprocal country is 6 months.

11.  (i) Application form 1 with requisite fee of Rs. 1,000/-,
should contain full name, nationality, address, class no,
articles name and address for service in India.
 (ii) Four sets of Representation sheets in durable paper of
A4 size, pasted with the photographs/drawings of the
article from different angles.
 (iii) Power of attorney (if required)
 (iv) Priority document (for convention application).

12.  A4 size white durable paper
 Sheet Number to be mentioned in each sheet
 Photographs/line diagrams/computer graphics of
the article
 Name of the views
 Statement of novelty
 Disclaimer
 Signature of the applicant/agent
 Date

14.  An Application for
◦ Registration of Designs
◦ Request for Extension of Copyrights
◦ Petition for Cancellation of Designs
◦ Rectification of Register of Designs
 Can be filed at
◦ Head Office at Kolkata;
◦ Branch Offices at Delhi, Mumbai & Chennai.
Branch Offices will transmit the documents to Head Office for
Processing and Prosecuting the same

15.  Exclusive right to apply a Design to the article in
the class in which the design has been registered.
 Proprietor of Design can sue for infringement.
 Right to assign or license his Design for a
consideration or Royalty.

16.  10 Years from the date of registration
 Extendable for another 5 years on payment of
renewal fee of Rs. 2000/-

17.  Previously registered in India
 Published in India or other Countries prior to the
date of registration
 Not a new or original Design
 Not a Registerable Design under this Act
 Not a Design under Section 2(d) of this Act

18. Concept of Partial Design and InfringementConcept of Partial Design and Infringement
InfringementInfringement
No InfringementNo Infringement

19.  Registration of design will lapse on non-payment
of extension fee for further term of 5 years if the
same is not paid before the expiry of 10 years.
 Design may be restored on:
◦ Application for restoration in prescribed form with a fee of
Rs. 1000/- within 1 year from the date of lapse.
◦ If the application is allowed, an additional fee of Rs.1000/
is charged.

20. Year Indians Foreigners Total
1993-94 1453 202 1655
1994-95 1570 280 1850
1995-96 1783 241 2024
1996-97 1922 435 2357
1997-98 2056 539 2595
1998-99 2381 695 3076

21. 28743207
3840
3124
2257
4017
2067
3207
3840
3124
3228
4017
1382
2430
2426
2364
2547
3718
0 2000 4000 6000 8000 10000 12000 14000
1999-2000
2000-2001
2001-2002
2002-2003
2003-2004
2004-2005
Filed
Examined
Registered

22. Share of Designs by Selected Countries
Korea
16%
Japan
21%
Other
21%
UK
5%
Germany
5% USA
8%
Australia
2%
France
4%
Austria
3%
India
2%
China
13%

23. No. of
entry
On What possible Form
No.
Fee
(Rs.)
1 On application for registration of Design
under Section 5 & 44
1 1000.0
0
2 On claim under Section 8(1 ) to proceed as
an applicant or joint applicant
2 500.00
3 On application for extension of copyright
under Section 11(2)
3 2000.0
0
4 On Application for Restoration of lapsed
design under Section 12(2)
4 1000.0
0
5 Additional fee for Restoration --- 1000.0
0
6 Inspection of Registered design under
Section 17(1)
5 500.00
7 On request for information of design when
registration No. is given under Section 18.
6 500.00
8 On request for information of design when
registration No. not given .
7 1000.0
0
FEESFEES
Contd …

24. No. of
entry
On What possible Form
No.
Fee
(Rs.)
9 On application for cancellation of design under
Section 19
8 1500.00
10 Notice of intended exhibition or publication of
an unregistered design under Section 21
9 500.00
11 Application for registration of a document in
Register of Designs under Section 30(3):
(i) In respect of one Design;
(ii) For each additional Design
10
500.00
200.00
12 One application for entry of name of proprietor
or part proprietor in Register of Designs under
Section 30:
(i) In respect of one Design;
(ii) For each additional Design
11
500.00
200.00
13 On application for entry of mortgage or license
in Register of designs under Section 30:
(i) In respect of one Design;
(ii) For each additional Design
12
500.00
200.00
FEESFEES

25. No. of
entry
On What possible Form
No.
Fee
(Rs.)
14 Application for entry of notification of a
document in the Register of designs under
Section 30 and Rule 37:
(i) In respect of one Design;
(ii) For each additional Design
13
500.00
200.00
15 On request for correction of clerical error under
Section 29 14 500.00
16 On request for certificate under Section 26
and Rule 42
15 500.00
17 On application for certified copy of
Registered design Under Section 17(2)
16 500.00
18 On application for rectification of Register of
design Under Section 31
17 500.00
19 On application for extension of time for filing
priority Document under Rule 15.
18 200.00
(per
month)
20 On Notice of opposition under Rule 40 19 100.00
FEESFEES

26. No. of
entry
On What possible Form
No.
Fee
(Rs.)
21 Notice of intention to attend hearing under
Rule 29 and 40
20 500.00
22 Form for authorization of agent or other
person.
21 ----
23 On request to alter name or address or
address for Service in the Register of design
under Rule 31.
22 200.00
24 On request for entries of two addresses in
the Register of Design.
23 200.00
25 On petition under Rule 46 for amendment of
any document
--- 500.00
26 On petition under Rule 47 for amendment of
any document
--- 500.00
27 Inspection of Register of Design under Rule
38 (in respect of each design).
--- 250.00
FEESFEES

27. THANK YOU FOR YOUR VALUABLE TIME &THANK YOU FOR YOUR VALUABLE TIME &
LISTENINGLISTENING
Flat No 903, Indra Prakash, 21, Barakhamba Road,
New Delhi 110001 (India)
Phone: +91 11 42492532 (Direct)
Phone: +91 11 42492525 Ext 532
Mobile :- 9810081079
Fax: +91 11 23320484
email:- vpdalmia@vaishlaw.com
Intellectual Property & Information Technology Laws Division
Vijay Pal Dalmia, Advocate
Head Intellectual Property & Information Technology Laws Division