INDIA: A NEW HOTSPOT FOR IP PROTECTION

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Indian Offices: Noida (Delhi-NCR) | Indore | Mumbai | Pune | Bangalore | Hyderabad

W: www.iiprd.com | www.khuranaandkhurana.com
E: iiprd@iiprd.com | info@khuranaandkhurana.com
 INDIAN BUSINESS DEMOGRAPHICS &
GLOBAL RANKINGS

● INDIAN GDP IN FY 2022 : 3.05 Trillion USD

● NUMBER OF REGISTERED COMPANIES: 1.43 million (as of January 2022)

● STARTUPS ECOSYSTEM 2022: 3rd largest after US and China (Unicorn status)

● IP FILING ACTIVITY: 8th for Trademarks and 10th for Patents

● GLOBAL INNOVATION INDEX: 46 (JUMPED FROM 81 IN 2015)

● EASE OF DOING BUSINESS: 63rd (total number of countries 190)

● SIGNIFICANT MANUFACTURING INDUSTRY MOVING TO INDIA FROM COMPETING ASIAN COUNTERPARTS OWING TO STRONGER AND
EFFICIENT BUSINESS PRACTICES WITH CORE FOCUS ON TRANSPARENCY, CLARITY, ACCOUNTABILITY OF RESPECTIVE DEPARTMENTS,
AND PROMPT FACILIATATION COMPLIANCE PROCEDURES, AND DIGITALIZATION.

(Source: Economic Survey 2021-22 and World Bank Report 2020.)

 BENEFITS OF IP FILING IN INDIA
● Easy to Incorporate an Entity in 1-2 weeks in India or even file/prosecute as a Foreign Entity
● Balanced view given to all applicants during and post prosecution
BUSINESS ● Quick to obtain injunctions (including ex-parte) in case of prima-facie cases
FRIENDLY ● Special preference for Start-ups in terms of expediting examination of Patents as well as Trade Marks
● Expedited allowance of applications and reduced pendency
1 ● Madrid filing allows quicker allowance of Trade Mark applications
● DSIR recognition enables significant tax rebates and promotes R&D culture
● Easy to enforce contracts and pay taxes

● Expedited proceedings and reduced pendency

LITIGATION ● Quick and Efficient Injunctions (Temporary and Ex-parte ad-interim injunctions)
2 CLIMATE ● Awarding increased and exemplary damages to Plaintiffs in recent times
● Specialized Intellectual Property Divisions (IPDs) in High Courts
● Mandatory mediation proceedings for prompt resolution of disputes

● Efficiency & Transparency in Public Service Delivery

COST & TIME ● Strict adherence to prescribed timelines
3 EFFICIENT ● Fast, secure, hassle-free adding and receiving of Priority Documents
● Expedited Examination facility extended to 8 more categories including the applications filed under
PPH (Patent Prosecution Highway)

● Focused schemes for IP protection

GOVERNMEN- ● Initiatives by Ministry of Commerce & Industry to create systematic programs for specific needs of
TAL AID IPs like National IPR Policy, Startup IP Protection (SIPP), WIPO DAS, WIPO CASE
4 ● Timely amendments in laws considering the global scenario
● Aggressive focus on training of various public service departments to increase efficiencies and
promptness.
● Prompt disbursement of refunds and fees paid towards protection of IPs
 COST & TIME EFFICIENT

PATENTS TRADEMARKS DESIGNS

● Average cost of complete Patent Application ● Average cost of complete TM Application ● Average straightforward application cost
prosecution (from filing till decision) usually does will not exceed USD 400
prosecution (from filing till decision) usually
not exceed USD 2000. ● Enhanced commercial value owing to
does not exceed USD 400-500 for quicker enforcement and validity
● No requirement of translation in case of national
straightforward applications analysis
phase filings
● Official fees lower for individual applicants ● Product differentiation in domestic
● Incorporation/provision of mechanisms such as
markets
DAS Code/PPH allows more convenience for ● Provision of request for expedited
● E-services now available to record
Applicants examination service
● Average time till grant of patent reduced to 1-1.5 ● No translation required ● Rebates upto 50% for registration by
years (from the request of examination) from 4-5 natural person, startups and small
● Average time till grant of registration reduced
years companies
to 6 months from 1.5-2 years as compared to ● Online prosecution and no opposition
● Provisions available for requesting for
earlier. Online hearing over VC during procedure allows quicker decision
expedited/express examination
/grant of applications
● Appeals directly to the High Court for expedited prosecution
adjudication
● High priority given by courts to IP Disputes
relative to other legal cases.
 LITIGATION CLIMATE

Awarding increased and exemplary Specialized Intellectual

Expedited proceedings and Quick and Efficient
damages to Plaintiffs Property Divisions (IPDs)
reduced pendency Injunctions

● Commercial Courts Act enables quicker and

efficient adjudication without complex
● Trend towards higher ● Injunctions in form of ● High Courts are forming
procedural compliances
damages in IP litigation either Perpetual or Ad- IPDs exclusively to deal
● In case of prima-facie infringement matters,
● Koninlijke Philips N.V. and interim granted promptly with IP related matters to
ex-parte injunctions granted on the first
Ors vs. Amazestore and on establishing a Prima- ensure quick disposal of
hearing date itself.
Ors. (2019 SCC OnLine facie case such cases
● John Doe order and injunction orders
against multiple defendants regularly issued
Del. 8198) Delhi High ● Easier for well-known ● Delhi High Court’s IPD is
Court awarded damages marks to get injunction first of its kind
by different courts across the country along
with clear directions to
worth USD 450,000 ● Courts inclined towards ● Judges with technical
● Kinds of damages available protecting and granting expertise likely to form
intermediaries/facilitators to ensure
-Compensatory, IPs part of such divisions
compliances.
● Post order on interim/temporary injunction,
Aggravated, Partial, ● Favourable decision ● Efficient and consistent IP
Exemplary etc. through Ex-parte redressal is ensured along
issues are immediately framed and case
● Guidelines for assessment injunctions granted with mediation between
management hearing is undertaken to define
of damages laid down by smoothly parties
the specific schedule of the trial.
● Evidence is regularly led through a local
courts. ● Adjournments
discouraged considering
commissioner (LC) instead of Court
fixed timelines
registrar/District Court Judge to enable fast
completion of the cross-examination.
● Video Conferencing (VC) for hearings
introduced, which is specially helpful for
outstation hearings.

PATENTS
● Patent law in India is governed by
The Patents Act, 1970
● Recently Patent (Amendment)
Rules, 2021 were introduced by
Department for Promotion of
Industry and Internal Trade
● Horizon of the term ‘applicant’
widened through this amendment
● Special rebates and concessions for
educational institutions provided
● Extension of expedited
examination system covering 8
more categories
LAWS IN FORCE
TRADEMARKS DESIGNS
● Trademark Act, 1999 is the law in ● The law which governs designs in
force apropos trademarks India is The Design Act, 2000
● Immediately after the legislation
● Trademark Rules, 2017 governs
Ministry of Commerce and
the procedure related to filing till
Industry introduced Design Rules,
registration of a mark
2001, further amended in 2008,
● Categorises applicants into two-
2014 & 2021
Individual/startup/small
● Recognition to Startups
enterprises and Others
● Revised and reduced fees
● Reduction in number of forms
● Adoption of Locarno
● Upto 50% discount for applicants
Classification
under Individual/Startup/Small
● Reduction in number of forms
Entity category
● E-service of documents
introduced
IP FILING STATISTICS
 DIFFERENCE IN
NUMBER OF FILINGS

PATENT FILINGS TOTAL FILINGS

Findings 11.07%

5608

● Fastest Patent granted in just 41 days after

filing request for expedited examination in
5.86%
2021 2805
● Increase of 11.07% in filing in 2019-20 56267

5.3%
● 24,936 Patents were granted in 2020 50659
2410
● Grant of patent applications increased by
63.16% in 2020 -3.1%
47854
● Total revenue of Rs. 981.35 Crore
-1460
generated by Patents Department in 2020
45444

2017 2018 2019 2020

 DIFFERENCE IN
NUMBER OF FILINGS

DESIGN FILINGS TOTAL FILINGS

Findings
● 13.5% increase in 2020 from previous year
● 14,290 applications were filed in 2020 13.5%

● Registration application increased by 29.2% in 1705

2020 15.9%
● Disposal rate shows 28.8% increase implying 1624
reduction in pendency
6.3%
● Speedy process of registration expected after 748
11837 14290
implementation of Locarno Classification
domestically -8.05%

● The process of protecting one’s design is -895 12585

streamlined after the adoption of Locarno 10213

Classification 2017 2018 2019 2020

 DIFFERENCE IN
NUMBER OF FILINGS

COPYRIGHT FILINGS TOTAL FILINGS

Findings
● 21,905 applications were filed in 2020
20.02%
● Registration of copyrights increased by
9.6% in 2020 13.5%
3655

● Total application examination rate 7.3%

increased by 30.94% in 2020 1224

● Number of copyright applications
increasing rapidly after Pandemic due to 4.3%
769
the growth of OTT and digital content 17841
21905

● Majority of copyrights granted for

literary/dramatic works 18250

2018 2019 2020

 TREND OF PCT NATIONAL PHASE FILING

Findings:

● Majority of International patent

applications are filed through PCT
national phase route
● Modest increase of 7% shown in 2020
as compared to previous year
● Top filing country is USA with 8718
applications in 2020
GOVERNMENTAL AID FOR IP
FACILITATION

2016
Startup Intellectual
Property Protection
(SIPP)
To encourage and facilitate
IPR by Startups for filing and
processing of their
applications
GOVERNMENT SCHEMES
2016
National IPR Policy
An initiative by Ministry of
DPIIT to create systematic
programs for specific needs of
IPs.
Linking with initiatives like
‘Make in India’, ‘Digital India’
‘Startup India’
2018 2018
WIPO Digital Access WIPO Centralised Access to
Service (WIPO DAS) Search and Examination
System (WIPO CASE)
Centralised and secured Originally a system developed
channel for deposition and by International Bureau to
addition of Priority enhance the operation for
Documents. exchange of documents
between examiners.
 EXPEDITED ISSUANCE OF IP

Improvements made in IT- Increased IP awareness

enabled IP process
● Technology augmented
departments
● Upscaling of manpower
● Simplified filing process
● Clearing the backlog
● Bilateral agreements with
numerous countries
● Creating IP friendly environment
● Governmental outreach programs
● Capacity building seminars in
association with WIPO, IPO
 Contact Us
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