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AUG 2012

VOL. 2 ISSUE 15

ORIGIIN NEWSLETTER
A monthly Newsletter on issues relating to Intellectual Property Rights

Labeling product as Patent Pending


Bindu Sharma (bindu@origiin.com) From the date of filing of patent application to the grant is a long procedure and often disappoints the inventor for the reason that grant of patent is going to take long time and securing patent of his interest becomes a great worry till then. However, when a patent application is filed (provisional or complete specification), patent office issues a receipt on which date of filing or priority date is stated. It is worth noting that from that date, the product for which patent has been applied for or product made by a process for which patent has been applied for can be marked as patent pending or "patent applied for" as a warning or a notice, meaning that patent has been applied for but not yet granted. The marking as an express notice serves to notify potential infringers, that they may be liable for damages, seizure, and injunction once a patent is issued. The patent law gives applicant all rights and privileges of a patent holder except that law suit cannot be initiated till patent is granted.

Inside this Newsletter


Marking your product as Patent pending Did you know? Patent news Origiin Launches 3 1

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Prime advantages of marking products as patent pending are that it not only helps to avoid innocent infringement but also encourages

IPBytes!

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AUG 2012

VOL. 2 ISSUE 15

patentees to give notice to the public that the article is patented and also aids the public to identify that the article

Interesting Fact!
The Rubik's Cube was invented by Erno Rubik in 1974 when the first working prototype came into being and a patent application was initially drafted. Rubik's invention was born out of his passionate interest in geometry, the study of 3D forms, and in exploring the hidden possibilities of combination of forms and materials.

is patented. Indian patent law (Section 111, Indian Patent Act of 1970) limits the award of damages in patent infringement cases when an infringer or the defendant is able to prove that he was unaware of the patent-in-suit. However, the Patent Act effectively reverses this allocation of the burden of proof in cases where an article is marked with the word patent and a patent number. In a suit for infringement of a patent, damages or an account of profits shall not be granted against the defendant who proves that at the date of the infringement he was not aware and had no reasonable grounds for believing that the patent existed. Therefore, marking the products as Patent pending serves

Contact us
Origiin IP Solutions LLP #51, MSHS, 15th Main, Sector 4, HSR layout Bangalore +9198456 93459 +9198802 13204

an important public notice that patent has been applied for and leaves little space for innocent infringement.

Patent pending marking is not restricted to the patent application but also for granted patents in which case the products need to be marked as patented. However, a person shall not be deemed to have been aware or to have had reasonable grounds for believing that a patent exists by reason only of the application to an article of the word

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www.origiin.com www.origiinipa.com

patent, patented or any word or words expressing or implying that a patent has been obtained for the article, unless the number of the patent accompanies the word or words in question. That means that mention of patent number is also important to be mentioned if the product in question is patented. For example, in Australia, the preferred marking is "Aust. Pat. App. No. yyyynnnnnn" where "yyyy" is the four-digit year of the application and "nnnnnn" is the six-digit number allocated by the Australian Patent Office.

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Editors
Bindu Sharma Santhoshi Basuthkar

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According to Section 120 of Indian Patents Act, 1970, use of marking, such as Patent pending or patent applied for, where no patent has been actually applied for is an offense and if any person

A fact is a simple statement that everyone believes. It is innocent, unless found guilty. A hypothesis is a novel suggestion that no one wants to believe. It is guilty, until found effective.
-Edward Teller

falsely represents that any article sold by him is patented in India or is the subject of an application for a patent in India, he shall be punishable with fine which may extend to one lakh rupees. The use of words patent, patented, patent applied for, patent pending or other words expressing or implying that an article is patented or that a patent has been applied for shall be deemed to refer to a patent in force in India, or to a pending application for a patent in India, unless there is an accompanying indication that the patent has been obtained or applied for in any country outside India". United States Patent No: US6843477 Inventor: Robert E. Simmons Jr Date of Patent: Jan 18, 2005 Abstract: A deck of rock, paper, scissors playing cards Even though marking products for which patent has been applied for, care should be taken while using the word "Patented as it should be used only after grant of the patent. Hence, before grant is accorded, it is advisable to mark products as "Patent Pending" or Patent applied for, to indicate that patent application has been filed but patent is not granted yet. and methods of play therewith are disclosed. The deck has fifty-two cards including four wild cards identified as sister cards and little brother cards and forty-right cards including fourteen paper cards, fourteen rock cards, fourteen scissor cards, two crumpled paper cards, two broken rock cards and two broken scissor cards. Each of the cards has a point value. The associated method includes playing the cards against each other wherein the hierarchy bases on the pictorial. The hierarchy determines the winner of each game. The cards having point values for determines the points awarded for each

Did you know?


The game Rock Paper Scissors is patented!

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card.

AUG 2012

VOL. 2 ISSUE 15

Patent News
Apple is in trouble again: This time for Talking!
Taiwan's National Cheng Kung University alleged in the lawsuit, filed in a U.S. district court that Apple's Siri feature infringes on two of the school's U.S. patents filed in 2002 and 2005 that deals with speech recognition technology. The university is demanding Apple pay a still undetermined amount in damages, and that the court order an injunction on Apple's use of Siri as a feature on its iPhones and iPads. The university is also considering filing further legal action against other foreign companies that have infringed its patents. It is also filing a lawsuit as a company in China has also targeted Apple's Siri for patent infringement with its own lawsuit in the country. Shanghai Zhi Zhen Internet Technology, is the developer of software called "Xiao i Robot" that communicates through voice, and can answer users' questions. In 2006, the company was granted a patent in China covering the technology.

Rox and Rolex: Whats the confusion?


Rox, a jewelry and watch maker initially filed its application to trademark its distinctive Rox name in the UK back in September 2004. The Application was intended to use the trademark on "jewelry, watches, clocks and horological instruments, key rings and parts and fittings for the aforesaid goods". At the time of filing, there were no objections by Rolex toward the use of the name "Rox". Later, Rox attempted to register a modified and updated version of its existing logo in 2010. The modified logo was intended for use with "horological and chronometric instruments, watches, clocks, parts and fittings thereof". Rox also attempted to register the trademark in relation to retail services in connection with the horological and chronometric watches and clocks. Rolex, the Swiss watch maker, objected to the second registration. Rolex claimed that consumers were likely to be confused because the trademarks of the two companies were too similar. However the UK Trademark Office decided in favor of Rox. After reviewing the case in its entirety, the Examiner determined that there was no likelihood of consumer confusion because the trademarks were not at all similar. After its

jewelry and other luxury goods!

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recent win, Rox is looking forward to opening its first store in Edinburgh, where it plans to display a new line of silver

AUG 2012

VOL. 2 ISSUE 15

Origiin IP Solutions LLP,

Bangalore launches Indias first IP sensitization

program IP Bytes! It is specially designed for software/IT industry, in order to help them understand critical IP issues such as securing and handling confidential information, data security, know-how and trade-secrets of the company.

Expert Speaks!
IPR as a topic is not given its due importance and is assessed only in terms of number of patent applications filed. Data security and Confidentiality are one of the prime concerns in outsourcing model. Every industry today is facing a tough challenge to protect confidential information, knowhow and trade secret - Sabapathy, COO, Cymfony "Sensitization for IP would fetch more confidence from the clients, ensure disclosure of ideas from employees, make them understand their liabilities and create a conducive environment for innovation."
-Dr S Rama Murthy, Professor & Head, Knowledge Management, Centre for Emerging

Technologies, Jain University, Bangalore and Scientific adviser Indian Patent Office

Who shall attend?


Technical team, Delivery managers, Account managers responsible for customer delivery, COE personnel responsible for propriety IP, legal team, tools group and risk officers.

Our Speakers

How to register?
OR Call us on 9880213204 or 9845693459

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To register please send the following details to ipbytes@origiin.com

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