News, Information, Help, & Insight Into The Pekama Community

AuthorDan Woodford

Pekama Insight – Yan Gong Talks IP in China

P

In the 6th of our Pekama Supplier Interviews we talk to Yan Gong of China Pat

Hi Yan, how many IP professionals work in your firm?
We have now 219 employees, 109 patent attorneys, 13 trademark attorneys and 9 attorneys-at-law. We are not the biggest firm in China, but we are relatively big.

How long have you been practicing IP?
13 years, I have worked as an IP lawyer since 2004.

What is the focus of your practice?
We have a large team for patent prosecution and a comparatively small team for trademark and then the litigation team. We do both prosecution and enforcement work in Greater China.

Tell us a bit more about yourself. What do you like to do in your spare time?
Body building. I go to the gym three times a week. I have very strong muscles.

What do you see as the biggest challenges to the IP industry?
I think the whole structure will change gradually owing to the uneven development of regional economies in different areas in the world. For example, I see more and more Chinese companies seek opportunities to expand business in other countries, which was not true in the past because Chinese companies used to focus on Mainland China in view of the large population and consumption power. They have already made very good profits in Mainland China. We have been working prominently for clients from Europe, the US and other Asian countries. Now that Chinese companies start operating abroad, we have been requested to help them get appropriate assistance in other countries. I see the trend of changing.

Plus, today foreign companies are increasingly interested in IP enforcement in China, which means they are no longer satisfied with merely prosecution. With the IP rights already granted in China, foreign clients are curious about the enforceability of IP rights in China. As a matter of fact, along with the prosperity, China’s legal system has been significantly improved during the last few years, new laws implemented and judge’s attitude changed. This is equally a challenge and an opportunity for us. In order to better our services in regard to enforcement, we formed our litigation team to handle contentious IP matters.

If you don’t mind sharing what’s your firms most competitive advantage?
Long story short, our firm was established in 2003 and has been growing rapidly. We do not rely on relationships with authorities, which means our fast growth was achieved through our continuous efforts in satisfying our clients with professional services on the basis of our knowledge and experience. Compare with those who make use of relationships with authorities, we tend to challenge the authorities within legal limits.

Further, unlike most other firms who only do translation instead of drafting, we draft patent documents on our own, for both Chinese clients and overseas clients.

What are the biggest changes you have seen within the IP Industry?
In China a remarkable change is attitude of the Courts. Three IP Courts were established in Beijing, Shanghai and Shenzhen since the end of 2014. The well trained judges in these IP Courts are equipped with adequate technological knowledge and experience. This will undoubtedly result in fair trial and reasonable judgement in future.

How do you see yourself making a difference to the IP Industry?
Compared with many western firms, Chinese local firms are much younger. The average level of the quality of services provided by local firms are to be improved. I worked with international firms for years and learnt from all aspects how to better the professional services. I now ask all my colleagues in China PAT, a local firm, to follow the same high standard at work. In other words, I make it possible for clients to receive higher quality work but with competitive charges.

Turning to your services now, we want to assemble some useful information for our community members and make them more aware of the different ways IP is handled in different jurisdictions, so I would like to ask you some questions about IP protection in one of the jurisdictions where you practice. What is the jurisdiction that you would like to talk about?
China

Starting with patents – Is China member of the Paris convention and PCT?
Yes

What is the typical time from filing to grant in your jurisdiction?
2.5 Years

Is China a member of any PPH agreements?
Yes. Detailed information is available on SIPO’s website.

Is there a green track for environmentally-friendly inventions?
Yes

Are there other acceleration processes?
No

Can you elaborate on opposition processes – how do they work, what do they typical cost and how long do they take?
There is opposition proceeding for trademark, but not for patent in China. For patent, instead of opposition, there is invalidation proceeding. A third party may file a request to invalidate a patent before the Patent Reexamination Board. There is an official fee of RMB 3,000 for filing an invalidation action of an invention patent, while RMB 1,500 for a utility model or a design patent. Our charges are calculated on the basis of the complexity of the matter and the actual time spent. It usually takes the Patent Reexamination Board 6-8 months to process an invalidation action.

Are there any waivers from examinations and if yes, in which terms?
No

What’s the approach of your jurisdiction to software / business method patents?
This is a complex question. Briefly, a patent can be granted to software/business method as long as technical features are included in the solutions. And, as of 1st April 2017, storage medium claims are acceptable in China.

Are there limitations to protection of healthcare-related inventions?
Yes, excluding methods for diagnosis or treatments of diseases.

Do you have utility models / innovation patents?
Yes, we have utility model patents in China.

If yes – is there substantive examination?
Yes, there is substantive examination, but the requirements on novelty and inventiveness of a utility model patent are quite low. It is much easier to obtain a utility model patent. Please note that the subject matter of a utility model cannot be any method.

How do you see your future involvement in the Pekama community?
I’ve reviewed Pekama web site and trust that we will benefit from this platform in the future.

What can Pekama do to help you and your business grow?
Pekama provides the opportunity for IP right holders to get connected with us when they need assistance in China. And we can also reach out to business partners in other territories through Pekama.

What are the leading economic sectors which you service in your country?
Electronics and telecommunications. We represent ZTE and TENCENT, which occupy a certain proportion of our business. Of course we also have very strong mechanical and pharmaceutical teams.

Please follow and like us:

Pekama Insight – Geetha Kandiah Talks IP From Malaysia

P

In the 5th of our Pekama Supplier Interviews we talk to Geetha Kandiah of KASS International Sdn Bhd, Malaysia

KASS can be found on their website, Facebook, Twitter, and YouTube. Geetha is also on LinkedIn.

Hi Geetha, how many IP professionals work in your firm?
Our entire group has 40 staff, 6 of which are Patent Executives and 7 Trademark Executives.

How long have you been practicing IP?
12 years, from 2005 

What is the focus of your practice?
Trademarks, Designs and Copyright – extensive experience in handling all aspects of trademarks, designs, copyright, including agreements related to licensing, co-existence agreements, franchising and so on.

Tell us a bit more about yourself?
I am chatty, friendly, and love to work hard and play hard. I am passionate about helping people grow their businesses and love being surrounded by dynamic and ambitious individuals.

I have 3 small children who keep me very busy! I studied law at Bristol University, UK and did the Bar Vocational Course in UWE, Bristol. In 2007, I was given the opportunity to work in a French IP Firm for a month. It was an interesting experience and I learned a lot about the culture of a European IP firm and how advisory work related to Trademarks, Designs and Copyright are delivered to their local and foreign clients.

What do you like to do in your spare time?
Everything and anything adventurous and outdoors; hiking, trekking, camping and running. I have completed 6 half marathons so far. The full marathons scares me but it is on my bucket list.

What do you see as the biggest challenges to the IP industry?
Globally, it will be commoditization of patent and trademark searches and prosecution. In South East Asia, it is lack of awareness among local businesses.

If you don’t mind sharing, what is your firm’s most competitive advantage?
We are a well-established firm with substantial reputation and goodwill. In Malaysia, it is rare for a Firm to have a large Patent Team, as the team needs to be trained for a few years before they can deliver good quality search reports and patent drafts. However, we invest a lot of time, effort and resources in training our Patent Team and that makes us stand out. We are known for our knack of providing strategic IP advice, from the business perspective.

So much so that we have received a number of third party accolades about our services, some of which are shown below:
“One of the leading Intellectual Property (IP) firms in Malaysia” – based on surveys conducted by Managing Intellectual Property magazine, a Euromoney Publication, UK
“One of the jurisdiction’s few genuine patent drafters… progressive in terms of management” – Managing IP handbook, 2009
“One of Asia’s top IP advisors” – as acknowledged by Asialaw Leading Lawyers survey
“One of the top IP firms in Malaysia” – Chambers & Partners, UK

What are the biggest changes you have seen within the IP Industry, since you started?
Awareness has improved over the years in the South East Asian countries, and most South East Asian countries have amended their IP Laws to be more harmonized with the rest of the world’s IP Laws.

How do you see yourself making a difference to the IP Industry?
Taking part in policy making through committee efforts. In fact, INTA introduced a new Committee in 2016 – Brands & Innovation Committee. This Committee explores how brands and innovation influence / impact each other. The findings have been interesting and the committee has published articles on this issue. If anyone is interested they can email me or find me on Linked In to find out. I also see myself being a role model to younger IP practitioners, and exploring new ventures in IP (such as conducting Training to Local Companies on “How to Be Innovative” etc).

How do you see your future involvement in the Pekama Community?
Being collaborative, actively receiving and giving back work through the PEKAMA’s portal and supplying updated information/guidance on the IP scene in South East Asia to PEKAMA’s members.

 Turning to your services now, we want to assemble some useful information for our community members and make them more aware of the different ways IP is handled in different jurisdictions, so I would like to ask you some questions about IP protection in one of the jurisdictions where you practice. What is the jurisdiction that you would like to talk about?
Malaysia

Is your jurisdiction a member of the Paris convention and PCT?
Yes, Malaysia is a member of the Paris Convention and PCT.

What is the typical time from filing to grant in your jurisdiction?
Usually, it will take three to five years to a patent application to be granted.

Is your jurisdiction a member of any PPH agreements?
Yes, the Japan Patent Office (JPO) and the Intellectual Property Corporation of Malaysia (MyIPO) initiated the PPH pilot program on 1 October 2014. The PPH allows for accelerated examination of the patent   application in Malaysia through the submission of documents that were issued by JPO for corresponding patent in Japan. The PPH pilot program will run for three (3) years. The program may be extended after a joint MyIPO-JPO review and assessment.

Is there a green track for environmentally-friendly inventions?
There is no green track for environmentally-friendly inventions but examinations of inventions of such nature meet the requirements for expedited examination (see below).

Are there other acceleration processes?
Yes, there four ways/approaches to accelerate the process:

Patent Expedited Examination

An applicant who requests or has requested for substantive examination of his application, may request for expedited examination once his application has been made available for public inspection.

In order to be eligible for the expedited examination, the applicant must justify its grounds for requesting the expedited examination, and such grounds include:

The invention is of national or public interest

There are infringement proceedings taking place or there are evidence showing potential infringement with regards to the said patent.

The applicant has commercialized or plan to commercialize the invention within two years from the date of filing for the expedited examination request.

The applicant requires a grant of the patent in order to receive monetary benefits from the government or registered institutions with the Registrar.

The invention relates to green technology that will benefit the environment or conserve energy resources.

Modified Substantive Examination

A request for Modified Substantive Examination can be filed if there any corresponding patent granted in any one of the prescribed countries such as United States, the United Kingdom, Australia, Japan, South Korea or the European Patent Office. This process will expedited the examination process.

PPH

Under Patent Prosecution Highway (PPH), an applicants can request accelerated examination by a prescribed procedure including submission of relevant documents on an application which is filed with the MyIPO and satisfies the requirements under the MyIPO-JPO Patent PPH program based on JPO application.

ASEAN Patent Examination Co-operation (ASPEC)

The ASEAN Patent Examination Co-operation (ASPEC) is the first regional patent cooperation project. It is a programme for IP Offices from participating ASEAN member states (“AMS”) to utilise the search and examination (“S&E”) results from another participating AMS IP Office as reference in its own S&E work. There are 9 participating AMS IP Offices and they are from Brunei Darussalam, Cambodia, Indonesia, Lao PDR, Malaysia, the Philippines, Singapore, Thailand and Viet Nam.

Can you elaborate on opposition processes – how do they work, what do they typically cost and how long do they take?
Patent applications in Malaysia do not include an opposition period, but an aggrieved person who is affected by the presence of a patent may initiate proceedings to have the patent invalidated after the patent has been granted.

Are there any waivers from examinations and if yes, in which terms?
Under section 30(7) of the Malaysian Patents Act, the Registrar may waive the requirements for substantive examination, but must notify in the patent Gazette the intention to waive the requirement for substantive examination and allow any person who may be aggrieved by such decision to be heard.

What’s the approach of your jurisdiction to software / business method patents?
While business methods are excluded from patentability in Malaysia, software-related inventions can be patentable so long as the claimed subject matter contributes to prior art, produces a technical effect and is novel, inventive, and industrially applicable.

Are there limitations to protection of healthcare-related inventions?
Methods of treatment are excluded from patentability. However, products or compositions used in these methods are not excluded from patentability, and so are methods, use, products and other healthcare-related inventions.

Do you have utility models / innovation patents?
Yes, in Malaysia they are known as Utility Innovations.

If yes – is there substantive examination?
Yes-there is substantive examination to assess if the application fulfils novelty and industrial applicability requirements.

Is your jurisdiction a member of the Madrid protocol?
No, currently Malaysia is not a member of the Madrid Protocol. Malaysia is scheduled to accede to the Madrid Protocol in near future. However, the relevant authorities have yet to set a concrete date on this matter.

Are there multi-class applications in your jurisdiction?
No, multiple class applications are not accepted in Malaysia.

What are the minimum filing requirements?
It is required for the applicant to provide the Registry with the representation of the trademark(s), list of goods or services and a notarized Statutory Declaration. If the application claims priority of a foreign application, then a certified Priority Document (and its English translation) is required as well.

Is a certified priority document required?
Yes, Malaysian Trademark Registry requires the certified copy of the Priority documents as filed at the Convention country. Please note that priority claims can only be made within 6 months from the date of filing the application in the Convention country.

What is the opposition period?
The opposition period in Malaysia is two (2) months from the publication date, if no opposition is filed by a third party against your mark the mark would proceed to registration.

What is the use requirement and when do marks become vulnerable for cancellation?
It is not a compulsory requirement to prove use in order to obtain registration for a trademark in Malaysia. However, if the trademark has not been used for 3 years, it will be vulnerable to cancellation.

For how long are trademarks valid in your jurisdiction?
Registration is valid for 10 years from the date of application and the application is renewable for additional periods of 10 years.

What is the approach to 3D trademarks?
Please note that 3-dimensional marks are considered as “unconventional marks” in Malaysia, and to date, are not accepted in Malaysia. However, some of our clients register the mark as a two-dimensional representation of a 3-dimensional mark. Please however note that this will only offer protection to the mark in such a representation, and not the 3-dimensional version per se. Alternatively, the applicant may consider registering the 3-dimensional marks as industrial designs. Please note that in order for a design to be registrable in Malaysia, the design need only be novel or new in Malaysia. However, in the event of infringement, please note that the registration may be found invalid, if the infringer can find evidence of sale or advertisement of the product on internet prior to the application date (which destroys novelty as any product displayed on internet is in the public domain and accessible to Malaysians).

Do you know other foreign associates that would like to brand themselves as an expert in their jurisdiction?
Marcia Silva from MdME (Macau)
Scott Moran From Duncan Cotterill (New Zealand)

Please follow and like us:

Pekama Insight – Valeria Carron Talks IP From Paraguay

P

In the 4th of our Pekama Supplier Interviews we talk to Valeria Carron of Berkemeyer, Paraguay

Hi Valeria, how many IP professionals work in your firm?
Berkemeyer Attorneys and Counselors has a staff of approximately 150 people. There are 3 partners and around 50 attorneys, the rest of the team is mostly composed by paralegals and administrative staff.

How long have you been practicing IP?
I have been practicing for 9 years and I’ve been in the firm for almost 10 years.

What is the focus of your practice?
It’s a general practice law firm, mostly focused on IP and on Corporate law.

Tell us a bit more about yourself. What do you like to do in your spare time?

I really enjoy spending time with my family, and when I am at home I find home décor and painting very relaxing.

What do you see as the biggest challenges to the IP industry?
In Paraguay, I would say that the main challenge is the fight against counterfeiting. We are at the tri-border area with Brazil and Argentina and many counterfeit goods go through Customs in said area.

Also, I think that another challenge for IP attorneys nowadays could be seeking for the proper protection of the brands through social media.

What are the biggest changes you have seen within the IP Industry?
In Paraguay, a big step if that the Trademark Office now has a public database.

How do you see yourself making a difference to the IP Industry?

I think that my main role as an attorney is to give good advice to my clients, but not only good legal advice but also “business advice”, since, in my opinion, the IP world has a mixture of law and business (commercial) aspects.

Turning to your services now, we want to assemble some useful information for our community members and make them more aware of the different ways IP is handled in different jurisdictions, so I would like to ask you some questions about IP protection in one of the jurisdictions where you practice. What is the jurisdiction that you would like to talk about?
Paraguay

Starting with patents – Is Paraguay a member of the Paris convention and PCT?
Our country is member of the Paris Convention only.

What is the typical time from filing to grant in your jurisdiction?
In our jurisdiction, the time from filing to grant takes approximately 5 to 6 years.

Is Paraguay a member of any PPH agreements?
Ye,s it is.

Is there a green track for environmentally-friendly inventions?
No.

Are there other acceleration processes?
No.

Can you elaborate on opposition processes – how do they work, what do they typical cost and how long do they take?
Our law does not contemplate opposition procedures, instead, we have the Third party observations to the application: Any interested party may submit to the Industrial Property Office, prior to the availability examination, such founded observations, including information and documents that may be useful to determine the patentability of the invention that is the object of the application. The applicant, once notified thereof, may file objections and comments or documents that may be deemed convenient in regard to the observations. The submission of observations shall not suspend the proceedings and the application terms. Whoever makes them, shall not become a part in the proceedings. The examiners work on the third party observations during substantial examination. We could prepare a tailor made quotation depending on the case. The time of the process varies depending on the complexity of the case.

Are there any waivers from examinations and if yes, in which terms?
No.

What’s the approach of your jurisdiction to software / business method patents?
Software / business method patents are not patentable in our country, however, software can be protected by the Copyright Law and process.

Are there limitations to protection of healthcare-related inventions?
Yes, please note that our patent law on the Article 4th., subsection e, states the following:
Article 4. Matters excluded as inventions. Among others, the following shall not be considered inventions:

  1. e) diagnostic, therapeutic, surgical methods for the treatment of persons or animals;

Do you have utility models / innovation patents?
Yes, we have utility models law and process. On the opposite, innovation patents are not applicable on our country.

If yes – is there substantive examination?
Yes, there are substantive examinations for utility models.

Moving to trademarks –

Is Paraguay a member of the Madrid protocol?
No.

Are there multi-class applications in Paraguay?
No, only single class system

What are the minimum filing requirements?
Name of the mark and device (if any), class (or product/services of interest) and name and address of the applicant. For service classes, description of the services to be protected.

A Power of Attorney will also be necessary.

Is a certified priority document required?
Yes, a certified priority document is necessary for claiming priority of a foreign application.

What is the opposition period?
60 working days counted from the final publication date.

What is the use requirement and when do marks become vulnerable for cancellation?
Use of the mark is not mandatory however advisable to avoid cancellation actions for non use.
Possible cancellation actions for non use could be filed if a) a trademark has not been used within a five years term counted from the registration date, b) if use has been interrupted for more than five consecutive years; or, if c) use of the mark have been made with substantial alterations.

For how long are trademarks valid?
For 10 years, counted from the granting date.

What is the approach to 3D trademarks?
3D marks can be registered in our country. The TMO requests views from all the sides.

What can Pekama do to help you and your business grow?
I think Pekama is a great idea. I take this opportunity to congratulate you for this development. I think that it’s a very original idea. It’s an easier way to find providers or to become a supplier. It’s global.

What are the leading economic sectors which you service in your country?
Our country´s main activities are agriculture and cattle breeding.

Please follow and like us:

Pekama Insight – Helen Xin Talk IP and China

P

In the 3rd of our Pekama Supplier Interviews we talk to Helen Xin of Anli Partners, China.

Hi Helen, how many IP professionals work in your firm?
7 lawyers (2 partners)

How long have you been practicing IP?
9 Years

What is the focus of your practice?
Trademark, Copyright, Anti-unfair competition

Tell us a bit more about yourself. What do you like to do in your spare time?
I started my IP career as early as 2008, and has accumulated rich experiences in IP prosecution, litigation, licensing, franchising and enforcement. Preparing dish, playing with kid, Reading, Running, and swimming.

What do you see as the biggest challenges to the IP industry?
In China, I think the biggest challenges to the IP industry is the financing of IPR.

What are the biggest changes you have seen within the IP Industry?
Both the Chinese government and IPR owners are becoming more respectful to the IPR protection.

How do you see yourself making a difference to the IP Industry?
I started my IP career as trademark agent only practicing in trademark filing and prosecution, and now, I am a commercial lawyer and have enlarged my IP business to IP litigation, licensing, franchising and financing of IPR for both domestic and international clients. 

Turning to your services now, we want to assemble some useful information for our community members and make them more aware of the different ways IP is handled in different jurisdictions, so I would like to ask you some questions about IP protection in one of the jurisdictions where you practice. What is the jurisdiction that you would like to talk about?
China

Moving to trademarks –

Is China a member of the Madrid protocol?
Yes

Are there multi-class applications in China?
Yes

What are the minimum filing requirements?
1, A scanned copy of POA; 2, a copy of trademark design( JPG format); 3. Applicant’s name, address and nationality.

Is a certified priority document required?
No , however, a hard copy of the priority documents is needed.

What is the opposition period?
3 months

What is the use requirement and when do marks become vulnerable for cancellation?
The mark in commercial use must be the same as registered. The mark will become vulnerable for cancellation if it has not been used for three consecutive years.

For how long are trademarks valid?
10 years

What is the approach to 3D trademarks?
3D trademarks can registered as a common trademark in China

How do you see your future involvement in the Pekama community?
I think I will be an active Chinese IP expert.

Please follow and like us:

Two Cambridge companies change the face of IP and Funding – Event Report

T

Last week Pekama co-hosted an event titled ‘Cambridge Reinvents the Business of Innovation‘ with investment startup SyndicateRoom. SyndicateRoom were Pekama’s neighbours in Cambridge but recently moved to new offices in the Pitt building. This was the site for the introductory talks by James Sore, SyndicateRoom’s Chief Investment officer and Zeev Fisher, Pekama’s CEO and founder.

The intention was to bring together young start up firms (looking for funding and advice about Intellectual Property), IP professionals, and investors; allowing all parties to discuss their needs, ask advice, and offer their help.

The opening talk from SyndicateRoom’s Chief Investment Officer James Sore, was a great overview of what investors and startups should be thinking about when working together to get funding, to get their business off the ground. He covered some of the basics needed to attract investors as well as advice and lessons learned from his substantial experience in the financial and startup sectors.

As is not unusual with Zeev Fisher, the next presentation was both a light-hearted overview Pekama and how we work alongside some opinionated thoughts and ideas of how the IP legal process currently works.

Using the theme of The Good, The Bad, and The Ugly, Zeev talked animatedly about how Pekama is breaking the traditional (Bad) ‘black box’ of IP legal practice and developing a platform for a more open and transparent way of working; allowing IP owners better access to their cases and legal documents for the benefit of both IP owners and IP attorneys.

As a successful SyndicateRoom portfolio company CEO, Zeev was able to talk about Pekama’s experience of working with SyndicateRoom and James could offer his thoughts on Pekama and how IP matters when making investment decisions.


When the Q&A session finished, we walked over to the Varsity Hotel’s rooftop bar for networking, drinks, and canapes. With a spectacular view over the roofs, trees, colleges, and spires of Cambridge, the scene was set for perfect evening of intense discussion amongst attendees.

In the picture – Zeev (left) and Goncalo (right) sharing last minute thoughts

Please follow and like us:

Pekama Insight – Yasuhiro Suzuki Talks IP From Japan

P

In the 2nd of our Pekama Supplier Interviews we talk to Yasuhiro Suzuki of Yasuhiro Patent Firm, Japan.

Hi Suzuki-San, how many IP professionals work in your firm?
Just 2

How long have you been practicing IP?
12 years

What is the focus of your practice?
Responsiveness and quality

Tell us a bit more about yourself. What do you like to do in your spare time?
Reading

What do you see as the biggest challenges to the IP industry?
Employing AI

If you don’t mind sharing what’s your firms most competitive advantage?
Thorough contribution to clients.

What are the biggest changes you have seen within the IP Industry?
Patent troll infestation

How do you see yourself making a difference to the IP Industry?
IP management consulting.

Turning to your services now, we want to assemble some useful information for our community members and make them more aware of the different ways IP is handled in different jurisdictions, so I would like to ask you some questions about IP protection in one of the jurisdictions where you practice. What is the jurisdiction that you would like to talk about?

Starting with patents – Is Japan member of the Paris convention and PCT?
Yes

What is the typical time from filing to grant in your jurisdiction?
1 to 1.5 year from filing the examination request

Is Japan a member of any PPH agreements?
Yes

Is there a green track for environmentally-friendly inventions?
Yes

Are there other acceleration processes?
Yes

Can you elaborate on opposition processes – how do they work, what do they typical cost and how long do they take?
Japan has post grant oppositions which can be filed by any persons (dummy) from the date of publication of grant within 6 months by claim. The time taken varies from case to case, typically 50% would complete within 12 months. The rate of cancellation would be less than 10% of total oppositions, but more than 60% of maintains were amended.

Are there any waivers from examinations and if yes, in which terms?
No

What’s the approach of your jurisdiction to software / business method patents?
Software patents are acceptable but business method patents themselves are not. If Business method is based on software or system patents, it should be acceptable.

Are there limitations to protection of healthcare-related inventions?
Yes. Method of diagnosis, cure and operation is not allowed.

Do you have utility models / innovation patents?
Yes. 

If yes – is there substantive examination?
No

Moving to trademarks –

Is Japan a member of the Madrid protocol?
Yes

Are there multi-class applications in Japan?
Yes

What are the minimum filing requirements?
Mark, international class, goods/services, applicant name

Is a certified priority document required?
Yes

What is the opposition period?
2 months from publication

What is the use requirement and when do marks become vulnerable for cancellation?
Use of registered trademark for registered goods/services. 3 years.

For how long are trademarks valid?
5 years or 10 years (applicant can select)

What is the approach to 3D trademarks?
3D trademark is not allowed if it consists of only three-dimensional shapes spontaneously arising from the trademark.

How do you see your future involvement in the Pekama community?
Contributor as a major player

What can Pekama do to help you and your business grow?
Pekama is a good networking tool which connects with attorneys worldwide and builds trust among them.

What can I do for you already that can help your firm?
Quality of members in Pekama is very important.

What are the leading economic sectors which you service in your country?
Information Technology, Mechanical, Electrical/Electronics, Control Engineering

Please follow and like us:

Pekama Insight – Dr. Sudhir Ravindran Talks IP From India

P

In the 1st of our Pekama Insight member interviews we talk to Dr. Sudhir Ravindran of Altacit Global, India.

Hi Sudhir, how many IP professionals work in your firm?
20

How long have you been practicing IP?
18 Years

What is the focus of your practice?
Corporate & Intellectual Property

Tell us a bit more about yourself. What do you like to do in your spare time?
I am the founder of Altacit Global, a leading Indian Law Firm. I am the author of the Book Intellectual Property Risk Management, published by LexisNexis. A Engineer & Lawyer, with Master Degrees in both streams from the University of Warwick. I have also been awarded a Doctorate (Phd) in Law from Nalsar University, India. I enjoy reading and watching movies in my spare time.

What do you see as the biggest challenges to the IP industry?
Prosecution and Judicial Delays are the biggest challenges to the IP Industry.

If you don’t mind sharing what’s your firms most competitive advantage?
A boutique firm with strong regional presence in India with offices in Chennai, Bangalore, Cochin, Hyderabad and Coimbatore

What are the biggest changes you have seen within the IP Industry?
Less investment by Indian companies even to protect their core IP.

How do you see yourself making a difference to the IP Industry?
Providing a sound strategy and 360 degree planning

Turning to your services now, we want to assemble some useful information for our community members and make them more aware of the different ways IP is handled in different jurisdictions, so I would like to ask you some questions about IP protection in one of the jurisdictions where you practice. What is the jurisdiction that you would like to talk about?

Starting with patents –   Is India member of the Paris convention and PCT?
Yes

What is the typical time from filing to grant in your jurisdiction?
3 to 4 years

Is India a member of any PPH agreements?
No

Is there a green track for environmentally-friendly inventions?
No

Are there other acceleration processes?
For Startup Companies there exists an acceleration process

Can you elaborate on opposition processes – how do they work, what do they typical cost and how long do they take?
India has both pre-grant and post grant oppositions. Pre-grant oppositions can be filed from the date of publication to the date of grant. Post grant application can be filed from the date of publication of grant within 12 months. The time taken is anywhere between 12 to 36 months

Are there any waivers from examinations and if yes, in which terms?
No waivers from examination are available

What’s the approach of your jurisdiction to software / business method patents?
Under Section 3(k) of the Indian Patent Act “a mathematical or business method or a computer programe per se or algorithms” are not patentable in India.

Are there limitations to protection of healthcare-related inventions?
There are no limitations to protection of healthcare related inventions. However, under Section 3(i) of the Indian Patent Act “any process for the medicinal, surgical, curative, prophylactic [diagnostic, therapeutic] or other treatment of human beings or any process for a similar treatment of animals to render them free of disease or to increase their economic value or that of their product” are not patentable in India

Do you have utility models / innovation patents?
No

If yes – is there substantive examination?

Moving to trademarks –

Is India a member of the Madrid protocol?
Yes

Are there multi-class applications in Japan?
Yes

What are the minimum filing requirements?
User Affidavits are basic requirement

Is a certified priority document required?
Yes

What is the opposition period?
Oppositions have to be filed within a period of 4 months from publication

What is the use requirement and when do marks become vulnerable for cancellation?
Non use for a continuous period of 5 years

For how long are trademarks valid?
10 years on a renewable basis

What is the approach to 3D trademarks?
India permits the registration of 3D trademarks.

How do you see your future involvement in the Pekama community?
Strong Partner and Contributor.

What can Pekama do to help you and your business grow?
Pekama helps in both outward and inward referrals which helps get in new work.

What can I do for you already that can help your firm?
Pekama is not merely a tool or platform, it helps connects in real time law firms and attorneys around the world. IP prosecution is time sensitive and the insistence on timely response helps us address our respective client needs.

What are the leading economic sectors which you service in your country?
Pharma, Information Technology, Automotive, Consumer Goods.

Please follow and like us:
News, Information, Help, & Insight Into The Pekama Community

What we’re saying on Twitter

@PekamaLegal

- October 18, 2017

RT @StJohnsCentre: SJIC Tenants! #Business #meetup is back w/ #IP specialists @PekamaLegal !Join us 4 freshly brewed #coffee cakes & inform…
h J R
@PekamaLegal

- September 19, 2017

We're looking for recommendations for consultant UK-based patent attorneys with specialisms in software, physics, and other areas. TVM.
h J R
@PekamaLegal

- August 3, 2017

The next in our series of Pekama Customer Insights - Helen Xin of Chinese firm Anli talks China and Trademark https://t.co/v88k6fEj2S
h J R

Recent Posts

Recent Comments

Archives

Categories

Meta

Dan Woodford

Get in touch

Quickly communicate covalent niche markets for maintainable sources. Collaboratively harness resource sucking experiences whereas cost effective meta-services.

Social media & sharing icons powered by UltimatelySocial