Intellectual Property Rights

Intellectual Property Rights

S&A Intellectual Property Practice Group assist clients in all types of registrations, enforcement, commercialization, licensing/assignments, maintenance and evaluations of intellectual property rights in India. Firm’s proprietary ‘knowledge management system’ with ERP and well-defined processes are utilized to accurately manage due dates and actions in IP prosecution and litigation cases of its clients. With respect to its robust file-keeping system and specialized processes, the Firm has been accredited as ISO 9001:2015 certified firm.

We cover complete spectrum of intellectual property services in the fields of patents, trademarks, designs, copyrights, domain names, and geographical indications. Services offered are searches, watch service, registration of applications, investigations, litigation, interferences, alternative dispute resolution, negotiations, settlements, licensing, assignments, portfolio management, corporate transactions, registered user agreements, transfer agreements and IP due diligences.

Our IPR professionals also assist clients in issues arising out of franchising, advertising, internet and e-commerce, and outsourcing including managed services by third parties. The firm also looks after the litigation matters arising out of these issues.

We provide the IP litigation or alternate dispute resolution services conducive to enforce our client’s rights against violations by devising practical and swift legal recourses against infringements and/or passing off attempts by the third parties. The IP and litigation teams is well versed in negotiating, settlements and assignments/licenses/arrangements between the parties. Our IP professionals have spoken at various fora and have published articles, white-papers, news-updates, etc. The Firm is often involved in conducting and participating in awareness programs organized to sensitize the public on importance of Intellectual Property Rights in today’s time and age.

Transparent Billing: Time spent by attorneys and paralegals are logged into respective matters created in our ERP for each case, and all the bills are prepared based on the timesheet entries. Once drafted, the bills are processed for review by a Supervisor (concerned Partner) and the Accounts department for final authorization/generation of the invoices. Our transparent billing structure and support access as required by many of our Corporate / In-House counsels has resulted in the Firm’s phenomenal growth.

Patents

Turnkey solutions: Being a full-service firm, we provide turnkey solutions to our clients. We have been able:

  • to assist our client in creating IP awareness and initiating an aggressive patent portfolio rights;
  • advise on the best protection strategy for an invention which often includes secure licensing and assignments and then manage its implementation;
  • help in designing internal systems for the most efficient and effective management of the IP and innovation processes;
  • provide corporate training programs to ensure that the client is capitalizing the maximum IP returns from its R&D investments and efforts;
  • conducting regular patentability and Freedom To Operate searches and keeping Watch on Competitors as well as the Technology Sector activities to help strategize on relevant technologies to invest the energy and time.

Drafting: Our drafting experts comprising of engineers, biotech professionals, and pharmacists with industry experience help clients to define a strong patent to maximise the invention’s potential, increase its value and keep it safe. Our experts deliver robust and comprehensive protection.

Prosecution: Our prosecution services right from drafting, filing of an application for patent to maintenance of patent at the Patent Office and the strategic advice on patent portfolio management help our clients manage and maximize their use of patents.

In addition to standard prosecution of patents as per timelines an requisite formalities, we advise on issues such as:

amendments, validity, infringement of clients’ and third party patents;
licensing and assignment of rights in specific or absolute;
initiate or defend actions of opposition to the grant of patent over an application;
initiate or defend in revocation of patents;
advise on exceptions to exclusivity of patents and compulsory licencing provision;
contest inventorship or the entitlement to grant;

Technology Sectors: We work across below listed industry sectors and more:

Aeronautical engineering
Agriculture
Automotive
Biotechnology
Chemical
Cleantech
Construction
Electronics
Food
IT/Software
Materials
Manufacturing
Mechanical/Engineering
Medical devices
Nanotechnology
Oil & Gas
Optical technologies
Pharmaceutical
Semiconductors
Telecommunications

Trademarks

Our trademark services include watch service, registration of trademarks, oppositions, investigation, litigation, trademark licensing and assignments, and due-diligences.

Client-“Wise” Consultancy: We advise clients ranging from a start-up to large multinationals, across all industries, regarding strategically protecting their brands and enforcing their rights in the fierce Indian market. Working across a broad spectrum of industries and at different levels of the brand building, our trademark attorneys are able to offer tailored advice to the specific needs of each client.

Systematic Approach: The Indian markets are growing every day. Trademark protection is becoming more and more complex as the Indian producers even a minor manufacturer or trader now understands the value of a “brand” and hence tries to capitalize the most out of a susceptible brand. From trademarks registration to brand building and protection to anti-counterfeiting services, our trademarks experts assist our clients in obtaining and maintaining the best legal protection.

Prosecution Services: The experienced Trade Marks Attorneys in the IP Team cover the entire array of tasks required before the Registrar of Trade Marks with respect to registration of a trademark or a registered trademark. The TM services start from the search and evaluate the brand report for the client, checking on chances of registration, preparing and filing of TM application with well-defined classes, attending to the office actions with appropriate responses and documentation for allowance of registration, and maintain the registered mark before the Registry. We also assist our clients in licensing, acquiring or assignment of the trademarks.

In addition to standard prosecution and brand enforcement services, we advise on issues such as:

  • advise on validity and the infringement of clients’ and third party trademarks;
  • active trademarks watch-service to alert clients about similar trademarks filed for registration;
  • review the possibility of amending marks to avoid overlaps with third party rights;
  • initiate or defend actions for the revocation of trade mark registrations;
  • initiate or defend actions for cancellation of a trademark;
  • assist in transfer of rights or the acquisition of third party rights;
  • licencing and assignment of trademarks and assistance in negotiations with third parties;
  • valuation and/or monetization of trademarks.

Domain Names

We also provide services regarding various internet related IPR issues like registration and protection of domain names- including actions before the Arbitration & Mediation Centre of the World Intellectual Property Organization in matters pertaining to domain name disputes.

Copyrights

Our services under copyright law include applications for registration of copyright and dispute resolution relating to copyrights. In India, Copyright subsists in following classes of work:

original literary, dramatic, musical and artistic works;
cinematograph films; and
sound recordings

Originality of the work is the prime test for the grant of Copyright. Also for the above classes copyright subsists only:

if in the case of published work, the work is published in India or where the work is published outside India the author was at the date of publication citizen of India;
in case of unpublished work, the author at the date of making the work is citizen of India or domiciled in India;
in case of work of architecture the work is located in India

Copyright also subsists in translations, abridgements or compilations of such works, provided the permission of the Copyright holder is obtained. Computer programmes are considered as literary works and are protected under the Copyright Act. There is no copyright of an idea

Geographical Indications

In compliance with the agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPS), India implemented the law on geographical indications, or appellations of origin as called in some jurisdictions, in 2003. The Indian Geographical Indications of Goods Act, 1999 lays down simple requirements for preferring an application to register a geographical indication.

Designs

A design refers to the features of shape, configurations, patterns, ornamentation and composition of lines or colours applied to an article, in two or three dimensional (or both) forms. In India the design registration & protection is governed by the Designs Act, 2000 and the Designs Rules, 2001. To prepare and file a Design Application in India, the following information/documents are required:

  • Application duly filed in on the prescribed form along with the prescribed fees, stating name in full, address, nationality, name of the article, class number, address for service in India. The application shall also be signed either by the applicant or by his authorized agent.
  • Representations of the article. Drawings/sketches showing the features of the design from different views and state the view (e.g. front or side).
  • A statement of novelty and disclaimer (if any) in respect of mechanical action, trademark, word, letter, numerals should be endorsed on each representation sheet which should be duly signed and dated.
  • Power of attorney.
  • Priority documents (if any) in case of convention application claimed under Section 44 of the Designs Act, 2000.

Support services

We provide complete range of services for management of intellectual property including but not limited to:

Drafting of all agreement/contracts/deeds relating to assignment, conveyance, licensing of IP rights.
IP Rights assessment and opinion.
We actively advice on IP Portfolio management.
Assisting in technology transfer.