When it comes to infringement actions, two dates are of
particular importance: date of publication and date of grant. Where
a competitor files an application in respect of subject matter that
you are, or may be, already using, and there is a risk that you
will be infringing the patent if granted, you may seek to defeat,
or at least delay, the application. In either case, you will need
to pay close attention to these two dates.
Patent infringement lawsuits can only be filed after grant of
the patent in question. However, pursuant to Article 35bis of the
Patent Act, damages for infringement may, in certain circumstances,
be calculated from the date the application was published in the
Patent Gazette. Article 35bis provides that a patentee will be
entitled to damages in respect of an infringing act carried out
after the date of publication of the application, provided the
infringer was, at the time, aware of the application.
The current procedural framework that regulates patent
oppositions allows pre-grant opposition proceedings. Any third
party is allowed to file an opposition within a period of 90 days
after publication of the application. Several grounds, either alone
or combined, can be used as the basis of an opposition including
lack of novelty or inventive step, non-patentable subject matter,
or the applicant's entitlement to file the application and be
granted a patent in Thailand. Often, the 90 day period allowed for
filing an opposition, will already have expired before a decision
to oppose has been taken. In that case, although it is not possible
to file a formal opposition, it is possible to notify the Examiner,
informally, of any relevant prior art or any Office Actions that
have been taken in relation to the priority or corresponding
applications. Although the Examiner is not obliged to consider such
notifications, in practice, most Examiners will do so.
Normally it takes years for oppositions to be considered;
meanwhile, examination of the application and grant of the patent
Apart from delaying grant, successful opposition proceedings
will, of course, ensure that the application does not proceed to
grant, thus removing the risk of future infringement.
The content of this article is intended to provide a general
guide to the subject matter. Specialist advice should be sought
about your specific circumstances.
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The Indian Patents Law categorizes certain inventions as not inventions. Among these, the most discussed category is the Section 3(d), which prohibits patenting of ‘the mere discovery of a new form of a known substance which does not result in the enhancement of the known efficacy of that substance’.
The Intellectual Property Appellate Board (IPAB) has recently rejected the appeal of Jones Investment Co. Inc., A US Company, challenging the order of the Registrar of Trade Marks, dismissing the opposition filed by US Company against the registration of trade mark JONES label by Indian party trading as Vishnupriya Hosiery.
The term "well-known trade mark" has been defined in the Trade Marks Act, 1999 and refers to a mark which has become so to the substantial segment of the public which uses such goods or receives such services that the use of such mark in relation to other goods or services would be likely to be taken as indicating a connection in the course of trade or rendering of services between those goods or services and a person using the mark in relation to the first mentioned goods or services.
The Intellectual Property Appellate Board (IPAB) recently passed
an order for the removal of a trade mark (Tiger Brand label
registered under No. 1330146 in class 34) from the Register of
Trade Marks in a rectification petition being heard by it.
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