Q2.

Utility The requirement for utility is a requirement for a specific and real
world use. An invention must perform its intended purpose. It is not necessary
that the invention perform better than existing inventions, but it must be useful
in the present day. An increment step towards future invention or discovery will
probably not satisfy the requirement.

Take for example the case of the Juicy Whip “post-mix beverage dispenser” and the
alleged infringement on its patent by Orange Bang, Inc. A “post-mix beverage
dispenser,” apparently, is what is used to make fountain drinks at a bar. That is,
water and soda syrup are stored in separate tanks and mixed as they are dispensed.
“Pre-mix” beverage dispensers contain the final product already prepared in a single
tank, usually on display for the customer, thereby supposedly enticing purchasers.
Post-mix dispensers, however, can hold less soda and are prone to bacterial growth.

The patent at issue was for

“a post-mix beverage dispenser that is designed to look like a pre-mix beverage

dispenser [and] simulates the appearance of the dispensed beverage and is
resistant to bacterial growth.” -Juicy Whip, Inc. v. Orange Bang, Inc., 185 F.3d 1364,
1365 (Fed. Cir. 1999).

In defending the infringement suit, Orange Bang claimed that the patent held by
Juicy Whip was invalid, as the invention lacked utility. The lower court agreed that

“the invention lacked utility because its purpose was to increase sales by deception,
i.e., through imitation of another product.”
Juicy Whip at 1366. However, holding that the

“threshold of utility is not high,”

and that to lack utility “the claimed device must be totally incapable of achieving a
useful result,” the Federal Circuit Court found that the Juicy Whip invention met the
utility requirement. Juicy Whip at 1366 (citations omitted).

So, following Juicy Whip, as long as an invention actually does something, it satisfies
the utility requirement. The fact that the invention in Juicy Whip was meant to
deceive did not excessively trouble the court, as the deception was not itself illegal.

Novelty The requirement for Novelty means that nothing (just) like it
can be found in the prior art. The most damaging prior art often comes
from the inventors or owners themselves. This may occur unintentionally
as more and more proposals and presentations, believed to be to a
limited audience, are published online by various hosting
organizations. In the US there is a 1 year grace period after a public
disclosure by an inventor in which to file a patent. After 1 year, the
public disclosure may be used in a novelty or obviousness rejection,
despite that disclosure being made by the inventor. In most countries
 there is no grace period and a public disclosure becomes prior art as of
the date it becomes public.

EXAMPLE: Joe “invents” a cup holder for cars which can be held in place by a rolled-
up car window. Joe’s cup holder is identical to one already on the market. In this
case, it would be odd to say that Joe has “invented” anything at all; Joe’s cup holder
is nothing new.

Non-Obviousness
As you may deduce, defining a “novel” invention is not an overly daunting
task. Unless your invention is a carbon copy of something that already
exists, there is likely at least one difference that, thus, makes it “novel”.
However, the much more complex challenge (both for an inventor and a
patent practitioner) is creating and claiming an invention that is non-
obvious. Obviousness (or lack thereof) boils down to whether a person of
ordinary skill in a particular field would find it obvious to modify a piece
of prior art to arrive at your invention. Those potential modifications
often include introducing one or more “modifying” references that fill in
gaps that the primary piece of prior art lacks.

There are limits to this – impermissible hindsight by the patent examiner

is not allowed to reconstruct an invention – but the non-obviousness
requirement can be difficult to navigate. Put simply, your invention really
does need something truly creative and original about it to warrant
receiving a patent. Due, in part, to the subjectivity involved, non-
obviousness is the highest bar to clear to reach patentability. In order to
circumvent existing publications, patents, and the like, it often becomes
most expedient to introduce a structure that clearly differentiates it from
what has been done before, but is not so specific that a competitor could
make a tweak or two to get around your patent.

Q3.a Design registration is the process of legally protecting the appearance of a

product, including its shape, configuration, pattern, and ornamentation. The
following is an overview of the process of obtaining design registration.

1. Determine if your design is eligible for registration: Before you start the registration
process, it is important to ensure that your design is eligible for registration.
Typically, a design must be new and original, and not have been disclosed to the
public before the date of application.
2. Conduct a search: It is also important to conduct a search to ensure that your design
is not similar to any existing designs that have already been registered. This search
can be done online or by consulting a registered design attorney.
3. File an application: Once you have determined that your design is eligible for
registration, you will need to file an application with the appropriate intellectual
property office. The application will typically require you to provide details about the
design, such as its name, description, and images.
4. Examination: The application will be examined by the intellectual property office to
ensure that it meets the requirements for registration. This process may take several
weeks or months, depending on the workload of the office.
5. Publication: If the application is accepted, the design will be published in the official
journal or gazette of the intellectual property office.
6. Opposition: During a specific time period after the publication of the design, anyone
can file an opposition to the registration of the design if they believe it infringes their
existing design rights.
7. Registration: If no opposition is filed, the design will be registered, and the owner will
receive a certificate of registration. The registration will typically last for a set number
of years, after which it may be renewed.

Overall, obtaining design registration involves several steps and can take several
months to complete. It is important to consult with a registered design attorney to
ensure that your design meets the eligibility requirements and to assist you through
the registration process.

Q3b. Obtaining a trademark involves registering a word, symbol, or design that is

used to represent and identify goods or services offered by a business. Here is an
overview of the process of obtaining a trademark:

1. Conduct a search: Before applying for a trademark, it is important to conduct a

search to ensure that the desired trademark is not already in use or similar to an
existing trademark. This can be done by searching the trademark databases of the
relevant jurisdiction or by consulting a registered trademark attorney.
2. File an application: Once you have determined that your trademark is eligible for
registration, you can file an application with the relevant trademark office. The
application will typically require you to provide details about the trademark, such as
its name, description, and intended use.
3. Examination: The trademark office will examine the application to ensure that the
trademark meets the requirements for registration. This process may take several
months, during which the office may issue an office action to request additional
information or to address any issues with the application.
4. Publication: If the application is accepted, the trademark will be published in an
official gazette or journal to provide an opportunity for any interested parties to
oppose the registration of the trademark.
5. Opposition: During a specific time period after the publication of the trademark,
anyone can file an opposition to the registration of the trademark if they believe it
infringes their existing trademark rights.
6. Registration: If no opposition is filed or the opposition is unsuccessful, the trademark
will be registered, and the owner will receive a certificate of registration. The
registration will typically last for a set number of years, after which it may be
renewed.

Overall, obtaining a trademark involves several steps and can take several months to
complete. It is important to consult with a registered trademark attorney to ensure
that your trademark meets the eligibility requirements and to assist you through the
registration process.

Qno.4 A trademark is a symbol, word, phrase, design, or combination thereof that is

used by a business or individual to identify and distinguish their goods or services
from those of others in the marketplace. A trademark serves as a badge of origin and
helps consumers to identify and choose products or services they trust.

Trademarks can be registered with the government to provide legal protection and
prevent others from using a similar mark in connection with similar goods or services.
Trademark registration gives the owner exclusive rights to use the mark in
connection with the goods or services for which it is registered.

In order to be eligible for trademark registration, a mark must be distinctive and not
likely to be confused with existing trademarks. The registration process involves
submitting an application to the relevant government agency, such as the United
States Patent and Trademark Office (USPTO) or the European Union Intellectual
Property Office (EUIPO), and undergoing a review process to determine whether the
mark meets the requirements for registration.

A trademark is a legal concept that protects a word, phrase, symbol, or design that
identifies and distinguishes the source of a product or service in the marketplace. A
logo, on the other hand, is a graphical element that may be used to represent a
company or product, but may not necessarily function as a trademark.

In other words, a logo is one of the many ways that a trademark can be expressed. A
logo can be a visual representation of a trademark, but it is not necessarily the same
thing as a trademark. A trademark can exist without a logo, and a logo may not be
eligible for trademark protection if it is not distinctive enough to identify and
distinguish the source of the product or service.

For example, the Nike swoosh is a trademark that identifies and distinguishes Nike's
products from those of other companies. The swoosh is often used as a logo to
represent the company, but it is not the same thing as the trademark. The trademark
 protects the Nike brand and its reputation, while the logo is a visual representation
of the brand.

In summary, a trademark is a legal concept that protects a word, phrase, symbol, or

design that identifies and distinguishes the source of a product or service, while a
logo is a visual representation of a company or product that may or may not function
as a trademark.

Qno.5 PCT stands for the Patent Cooperation Treaty, which is an international treaty
that provides a unified procedure for filing patent applications in multiple countries.
PCT is a part of Intellectual Property Rights (IPR) and is administered by the World
Intellectual Property Organization (WIPO).

Under the PCT system, an applicant can file a single international patent application
that is recognized by all PCT member countries. This application is then examined by
an international search authority to determine if the invention is new and non-
obvious, and if it meets the requirements for patentability. The search report is then
sent to the applicant, who can use it to decide whether to continue with the patent
application process in specific countries.

The PCT system offers several benefits, including:

1. Simplified filing: Filing an international patent application through the PCT system
simplifies the process of filing patent applications in multiple countries.
2. Extended time period: The PCT system allows an applicant to defer the decision on
which countries to file in for up to 30 months from the priority date.
3. Reduced costs: Filing an international patent application through the PCT system can
be more cost-effective than filing separate applications in multiple countries.
4. Uniformity: The PCT system provides a unified procedure for filing patent
applications, which ensures that the application meets the requirements for
patentability in all PCT member countries.

The PCT has several implications for Intellectual Property Rights (IPR) in India,
including:

1. Simplified filing process: The PCT system simplifies the process of filing patent
applications in multiple countries by allowing an applicant to file a single
international patent application that is recognized by all PCT member countries.
2. Extended time period: The PCT system allows an applicant to defer the decision on
which countries to file in for up to 30 months from the priority date. This extended
time period can be beneficial for Indian inventors and companies seeking to secure
patent protection in multiple countries.
3. Uniformity: The PCT system provides a uniform procedure for filing patent
applications, which ensures that the application meets the requirements for
patentability in all PCT member countries. This can be beneficial for Indian inventors
and companies seeking to protect their intellectual property rights in multiple
countries.
4. International search and examination: The PCT system provides for an international
search and examination of the patent application, which can be beneficial for Indian
inventors and companies seeking to determine the patentability of their invention
before filing in multiple countries.

Qno.6 Transfer of technology refers to the process of transferring knowledge,

technology, and expertise from one party to another. There are several modes of
technology transfer, including:

1. Licensing: Licensing involves granting permission to another party to use a particular

technology or product. In this mode of transfer, the licensor retains ownership of the
technology and receives royalties or licensing fees from the licensee.
2. Joint ventures: A joint venture involves two or more parties coming together to
collaborate and share resources in the development and commercialization of a new
technology. This mode of transfer allows the parties to share risks and rewards
associated with the technology.
3. Technology acquisition: Technology acquisition involves acquiring a technology or
product from another party, either through purchase or acquisition of intellectual
property rights. This mode of transfer allows the acquiring party to gain ownership
and control over the technology.
4. Research and development partnerships: Research and development partnerships
involve collaboration between two or more parties to jointly develop and
commercialize a new technology or product. This mode of transfer allows the parties
to share expertise and resources in the development process.
5. Franchising: Franchising involves licensing a business model or brand to another
party, including its technology and know-how. This mode of transfer allows the
franchisor to expand its business while the franchisee gains access to established
technology and expertise.
6. Spin-offs: Spin-offs involve the creation of a new company or subsidiary to develop
and commercialize a technology that has been developed by a parent company. This
mode of transfer allows the new company to focus solely on the development and
commercialization of the technology.

An example of technology transfer is the licensing of technology by a company to

another company in a different country. For instance, a pharmaceutical company in
the United States may license a new drug formulation to a company in India for
manufacture and distribution in India and other countries.
 The licensing agreement would specify the terms and conditions of the transfer, such
as the scope of the license, the royalties or fees to be paid by the licensee, and the
duration of the agreement. The licensor would retain ownership of the technology
and receive payment from the licensee for the right to use the technology.

Qno.7 Criteria for obtiaing GI protection:

There are three broad requirements that a particular good should possess to qualify for GI
protection:

1. Identification of the good and its particular area of geographical origin.

2. It should possess a given quality, reputation or other characteristics, which
3. Is essentially attributable to its area of geographic origin.

Process of obtaining GI protection;

The association of persons or producers or any organization or authority should represent the interest
of producers of the concerned goods and should file an affidavit how the applicant claims to represent
their interest.

 Application must be made in triplicate.

 The application shall be signed by the applicant or his agent and must be accompanied by a
statement of case.
 Details of the special characteristics and how those standards are maintained.
 Three certified copies of the map of the region to which the GI relates.
 Details of the inspection structure if any to regulate the use of the GI in the territory to which it relates.
 Give details of all the applicant together with address. If there is a large number of producers a
collective reference to all the producers of the goods may be made in the application and the G.I., If
registered will be indicated accordingly in the register.
Please sent your application to the following address in India
Geographical Indications Registry
Intellectual Property Office Building
Industrial Estate, G.S.T Road
Guindy, Chennai – 600 032
Phone: 044 – 22502091-93 & 98
Fax: 044 – 22502090
E-mail:gir-ipo[at]nic[dot]in
Website: ipindia.gov.in
The applicant must have an address for service in India. Generally, application can be filed by (1) a
legal practitioner (2) a registered agent.

STEP 2 and 3: Preliminary scrutiny and

examination
 The Examiner will scrutinize the application for any deficiencies.
 The applicant should within one month of the communication in this regard, remedy the same.
 The content of statement of case is assessed by a consultative group of experts will versed on the
subject.
 The will ascertain the correctness of particulars furnished.
 Thereafter an Examination Report would be issued.
 STEP 4: Show cause notice
 If the Registrar has any objection to the application, he will communicate such objection.
 The applicant must respond within two months or apply for a hearing.
 The decision will be duly communicated. If the applicant wishes to appeal, he may within one month
make a request.
 The Registrar is also empowered to withdraw an application, if it is accepted in error, after giving on
opportunity of being heard.

STEP 5: Publication in the geographical

indications Journal
Every application, within three moths of acceptance shall be published in the Geographical Indications
Journal.

STEP 6: Opposition to Registration

 Any person can file a notice of opposition within three months (extendable by another month on
request which has to be filed before three months) opposing the GI application published in the
Journal.
 The registrar shall serve a copy of the notice on the applicant.
 Within two months the applicant shall sent a copy of the counter statement.
 If he does not do this be shall be deemed to have abandoned his application. Where the counter-
statement has been filed, the registrar shall serve a copy on the person giving the notice of
opposition.
 Thereafter, both sides will lead their respective evidences by way of affidavit and supporting
documents.
 A date for hearing of the case will be fixed thereafter.

STEP 7: Registration
 Where an application for a GI has been accepted, the registrar shall register the geographical
indication. If registered the date of filing of the application shall be deemed to be the date of
registration.
 The registrar shall issue to the applicant a certificate with the seal of the Geographical indications
registry.

STEP 8: Renewal
A registered GI shall be valid for 10 years and can be renewed on payment of renewal fee.

STEP 9: Additional protection to notified goods

Additional protection for notified goods is provided in the Act.

STEP 10: Appeal

Any person aggrieved by an order or decision may prefer an appeal to the intellectual property appellate
board (IPAB) within three months. The address of the IPAB is as follows:

Intellectual Property Appellate Board

Annexe 1, 2nd Floor, Guna Complex,
443, Anna Salai, Chennai – 600 018
 What Indications are not registrable ?
For registrability, the indications must fall within the scope of section 2(1)e of GI Act, 1999. Being so, it
has to also satisfy the provisions of section 9, which prohibits registration of a Geographical Indication

 the use of which would be likely to deceive or cause confusion; or

 the use of which would be contrary to any law for the time being in force; or
 which comprises or contains scandalous or obscene matter; or
 which comprises or contains any matter likely to hurt the time being in force; religious susceptibilities
of any class or section of the citizens of India; or
 which would otherwise be dismantled to protection in a court; or
 which are determined to be generic names or indications of goods and are, therefore, not or ceased
to be protected in their country of origin or which have fallen into disuse in that country; or
 which although literally true as to the territory region or locality in which the goods originate, but
falsely represent to the persons that the goods originate in another territory, region or locality as the
case may be.
Explanation 1 to section 9 says that for the purposes of this section, “generic names of indications” in
relation to goods which although relates to the place of the region where the goods was originally
produced or manufactured, has lost its original meaning and has become the common name of such
goods and serves as a designation for an indication of the kind, nature, type of other property or
characteristic of the goods.

Explanation 2 further says a that “in determining whether the name has become generic, account shall
be taken of all factors including the existing situation in the region or place in which the name originates
and the area of consumption of the goods.”

Affidavits
 The Affidavits required by the Act and the rules to be filed at the Geographical indications Registry or
furnished to the Registrar, unless otherwise provided in the matter or matters to which they relate,
paragraphs consecutively numbered, and each paragraph shall as far as practicable be confined to
one subject. Every affidavit shall state the description and the true place of abode of the person filing
it and shall state on whose behalf it is filed.
 Affidavits shall be taken
o In India-before any court or person having by law authority to receive evidence, or before any officer
empowered by such court as aforesaid to administer oaths or to take affidavit,
o in any country or place outside India before a diplomatic or consular Officers (Oaths and Fee) Act,
1948, or such country or place, or before a notary public or before a judge or magistrate of the country
or place.
 Where the deponent is illiterate blind or unacquainted with the language in which the affidavit is
written a certificate by the person taking the affidavit that the affidavit has read translated or explained
in his presence to the deponent made his signature or mark in his presence shall appear in the jurat.
 Every affidavit filed before the Registrar in connection with any of the proceedings under the Act or
the rules shall be duly stamped under the law for the time being in force.
Inspection of Documents by the Public
 The documents mentioned in sub-section (1) of section 78 shall be available for inspection at the
Head Office of the Geographical indications registry.
 A copy of the register and such of the other documents mentioned in section 78, as the Central
Government may by inspection at each branch office of the Geographical Indications Registry as and
when established.
 The inspection shall be on payment of the prescribed fee and at such times on all the days on which
the offices of the Geographical Indications Registry are not closed to the public as may be fixed by the
registrar.
 Distribution of copies of journal and other documents. The Central Government may direct the
Registrar to distribute the necessary to such places as may be fixed by the Central Government in
consultation with the State Government and notified form time to time in the Official Gazette.
 The Registration Process - FLOW CHART

1. GI protected item in Jharkhand- Palamau Handicrafts - It includes a variety of

handicraft products such as bamboo baskets, wooden toys, and terracotta pottery,
produced by artisans in the Palamau district of Jharkhand.

1. 2. GI protected item in Tamil Nadu - Kanchipuram Silk - Kanchipuram Silk is a

traditional silk sari made in the town of Kanchipuram in Tamil Nadu. It is known for
its intricate designs, vibrant colors, and durability.