1 dr.k.s.kardam assistant controller of patents and designs indian patent office, new delhi india...
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Dr.K.S.KardamAssistant Controller of Patents and Designs Indian Patent Office, New Delhi
INDIA
Research Report Presentation
A STUDY UNDER WIPO LONG TERM RESEARCH CUM FELLOWSHIP PROGRAM
UTILITY MODEL –A TOOL FOR ECONOMIC & TECHNOLOGICAL DEVLOPMENT
A CASE STUDY OF JAPAN
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OUTLINES
Introductory background Research study Summary and Conclusions Proposals and
Recommendations
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Background-1
India's economy is growing with rapid pace
India also has more than 10 millions SMEs
SMEs responsible for about 45% of export
Contributing to 40%of gross industrial value
SMEs Second largest in providing
employment
IP Activities are very low
Some indicators
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Background-2Comparative IP Statistics
India
28,9840
5,372
103,419
N.A
Japan
427,078
39,254
135,766
113,86
China
210,490
201,322
664,017
161,366
South Korea157,114
46,318
154,937
36,945
Patents
Designs
Trade Marks
Utility Models
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Background-3IP activities
0
5,000
10,000
15,000
20,000
25,000
30,000
1999-00 2000-01 2001-02 2002-03 2003-04 2004-05 2005-06 2006-07
Trend of applications for Patents & Designs
Patents Designs
79,746
10,490
88,190
5,930
76,801
15,450
63,906
15,090
73,308
12,361
0
10,000
20,000
30,000
40,000
50,000
60,000
70,000
80,000
90,000
100,000
2001-02 2002-03 2003-04 2004-05 2005-06
Trend of Trademarks applications by domestic applicants
Indian Foreign
Trend of Patent applications filed by Indian and Foreigners
2,179 2,371 2693 3218 3630 4521 5314
63248221 8773 9395
13836
19984
23626
0
5,000
10,000
15,000
20,000
25,000
30,000
35,000
2000-01 2001-02 2002-03 2003-04 2004-05 2005-06 2005-07
Series1 Series2
Trend of Design applications by Domestic Applicants
2558 2766 2589 26193093
3407 3584
649584
535 738
924
1542
1937
0
1000
2000
3000
4000
5000
6000
2000-01 2001-02 2002-03 2003-04 2004-05 2005-06 2005-07
Designs Foreign
Designs Indian
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Lack of awarenessAbout IP Protection
?
Low R & DActivities?
Current IP Laws sufficient
?
Low R&D Expenditure ?
What factors responsible?
Background-4
Need for Another law?
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R&D Expenditure in India
R&D ExpenditureOnly 0.8% to 0.9% of GDP
Lack of investment in R&D By Private Sector
Central Govt.- 62.0%State Govt.- 8.5%Public Sector- 4.5%Higher Education Sector- 4.7%
Private Sector- 20.3%
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Research Study
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Research Theme-Objectives
Alternative system for the promotion and protection of IPRs
UTILITY MODEL SYSTEM
Economical and faster system for protecting small innovations
More options for encouraging andprotecting IP Creativity specially for SMEs More Useful for promoting and protecting Small inventions in developing countries
Valuable tool for the economic and technological development
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Is it an another tool for economic and technological developmentWould it be useful for domestic innovators in encouraging more IP activities in IndiaWould it Stimulate Small innovators and SMMEs in India`
UTILITY MODEL SYSTEM
INVESTIGATE
AND FIND OUTINVESTIGATE
AND FIND OUT
Hypothesis
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Review of documents ,Law & Regulations
Visits and Personal Interviews with
Companies, IP FirmsAnd JPO
Dispatching questionnaireto Companies, IP Firms
And JPO in Japan And to IP Firms in India
Methodology
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Research StudyChapter-I IntroductionChapter-II Industrialization and evolution of IP system in Japan Chapter-III Current Utility Model Law in JapanChapter-IV UM in Developed Countries
Germany, Australia and proposals by EC
Chapter-V UM in Developing CountriesRepublic of China, South Korea, Brazil and some Asian countries including Taiwan China
Chapter-VI Existing IP Laws in IndiaChapter-VII Research methodology-AnalysisChapter-VIII Summary and Recommendations
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Research analysis
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Trend of IP applications in Japan
Trend of IP aaplications
0
50000
100000
150000
200000
250000
300000
350000
400000
450000
500000
Patent
UM
Design
Diffusion and adaptation of technologies by minor modifications
Technology up-gradation
High Technological advancements More by patents so decline in the UM
applications and lost the relevance
Utility model and Industrialization
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Utility model system in JapanUtility model system, in the past, has played very important role in economic and technological development Encouraged domestic innovatorsJapanese Corporation's R&D activities are now more focused on patents than Utility ModelsJapan now Technology exporter than importerCurrently, although not many applications as compared to patents are filed but IP fraternity not in favour of the abolition of the lawOne of the most important features of the law is the convertibility of the UM application to patent or vice versaOne of the weakest features is the lack of legal authority in the enforcement of the rights
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Reasons for loss of Interest
Amendment in the lawNon substantive examination and reduction of term
Lack of legal authority in execution of the rightsPatent and industrial design are more stronger rightsHigher level of research out put and therefore opt for patentsLimited scope of protection under UMBacklog in the examination
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Utility model system in other Countries
Very successful in Germany, Republic of China, South Korea and Even Taiwan ChinaReasonably successful in AustraliaDoes not appear to be very successful in BrazilProposals for Community Utility model proposed by EC withdrawn, not because it is not important and relevant but because of legislative process due to difference among the member countries, although most of them already have the system in their national except UK, Sweden and Luxembourg.
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Sl. No.
Issues Japan Germany Australia EC China South Korea
Brazil
1. Subject matter
Devices relating to shape or
Constructions
Novelty, inventive step and industrial
application
Novelty, inventive step and industrial
application, and manner of
manufacture.
Novelty, inventive step and industrial
application
New technical
solution to shape,
structure fit for practical
use
Devices relating to shape or
Constructions
New shape, arrangement involving inventive act, industrial application and practical use
2. Novelty Relative Relative Global Global Relative Relative Global
3. Inventive step
Yes but lower
Yes but lower
Yes but lower Yes but lower Yes but lower
Yes but lower
Yes but lower
4. Exclusions Specific Similar to patents
Specific Similar to patents
Similar to patents
Specific Like patent
5. Protection Term
10 Years 3+3+2+2=10 Yrs
8 years 6+2+2 years 10 Years 10 Years 15 Years
6. Grace period
6 months 6 months 12 Months No provision 6 months 6 months 12 MONTHS
7. Examination
formal formal formal formal formal formal substantive
8. Conversion Yes from patent or
Ind. Design
NO conversion
but dual filing
NO No NO No No
9. Priority One year 12 months Domestic andDivisional
12months 12 months 12 months 12 MONTHS
10. Dual protection
No Yes No Dual app. but No dual protection
No Dual app. but no dual
protection
No
11. Opposition NO but invalidation
NO but cancellation
Post grant NO Invalidation trial
Yes NO but nullity provisions
12. Technical /search report
Post registrationTechnical opinion
Post registrationSearch
Commissioner may reexamine
Yes Yes Yes No
13. Publication Post- registration
Post- registration
Post- registration
Post- registration
After registration
Post- registratio
n
18 months from filing
14. Amendments
During registration
and invalidation
Before the decision to
grant
Under certain conditions
No provision but similar to
patent
Yes but not beyond scope
Yes Yes
Comparison table-Utility model Provisions
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Utility Model System
in Some Asian Countries* Countries Mongolia Viet Nam Thailand Indonesia Philippine
sMalaysia Taiwan
China
Utility model Utility model
Utility Solutions
Petty Patent
Simple patent
Utility model
utility innovatio
n
Utility model
SubstantiveExamination
No Yes No No, but there
is a provision
Yes Yes No
Converted into
invention
Yes Yes Yes No Yes yes Yes
Inventive step
No No No No No No No
Term of Protection
7 10 6 +2+2 10 7 years 10 10
*The information is based on the discussion with IP practitioners IPR/JPO Trainees
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Conclusion UM is also good and valuable alternative tool
for economic and technological development It is supplementary to other IP Laws Economical, Simple, flexible and faster
system Encourage and protect specially domestic
innovators Useful for developing countries
particularly SMEs and individual innovators useful for India to promote and enhance IP
activities
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Policy options for India
Amendments in existing Patent law.Amendments in the Design lawAn independent sui-generis system
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Proposals and Recommendations-If so
considered Legislative proposals Subject matter Exclusions Novelty and inventiveness Examination Conversion of application but no dual protection No pre-registration opposition Post registration technical evaluation or search report Invalidation or cancellation, Grace period and priority
rights Compulsory licenses
Other proposals R&D Expenditure to be increased IP Policy and Strategy Enhanced IP awareness
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