Module 1 - Part 5 of 6

IPR Administration in India

Understand the institutional framework for IP administration including CGPDTM, Patent Office structure, Trademark Registry, Copyright Office, the transition from IPAB to Commercial Courts, and modern online filing systems.

Duration: 60-90 minutes
6 Key Topics
10 Quiz Questions
Topic 1

Controller General of Patents, Designs and Trade Marks (CGPDTM)

The Controller General of Patents, Designs and Trade Marks (CGPDTM) is the apex authority for the administration of patents, designs, trademarks, and geographical indications in India. This office operates under the Department for Promotion of Industry and Internal Trade (DPIIT), Ministry of Commerce and Industry.

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Office of CGPDTM

Established: Under the Patents Act, 1970 (Controller of Patents) and Trade Marks Act, 1999

Location: Mumbai (Head Office)

Authority: Supreme administrative authority for Patents, Designs, Trade Marks, and Geographical Indications

Key Functions of CGPDTM

Administrative Supervision
Overall superintendence and direction of the Patent Office, Trade Marks Registry, Design Office, and GI Registry. Ensures uniform practices across all branches.
Policy Advisory
Advises the government on matters relating to IP laws, rules, and international obligations. Participates in WIPO and WTO negotiations.
Quasi-Judicial Functions
Hears appeals from decisions of subordinate controllers and examiners in certain matters. Issues practice guidelines and examination manuals.
International Coordination
Coordinates with WIPO for PCT applications, Madrid Protocol filings, and other international IP matters.
Key Concept: Organizational Hierarchy
  • CGPDTM: Apex authority - Controller General of Patents, Designs and Trade Marks
  • Controller of Patents: Head of Patent Office, exercises powers under the Patents Act
  • Registrar of Trade Marks: Head of Trade Marks Registry, exercises powers under the Trade Marks Act
  • Registrar of GI: Head of GI Registry at Chennai
  • Deputy/Assistant Controllers: Examine applications and conduct hearings
  • Examiners: Conduct substantive examination of applications
Section 73 Patents Act - Controller General

The Central Government may appoint a person to be the Controller General of Patents, Designs and Trade Marks. The Controller General shall have supervisory powers over the patent offices and discharge functions as may be prescribed. The Controller General may also exercise the powers of the Controller for any purpose.

Topic 2

Patent Office Structure and Branches

The Indian Patent Office (IPO) is responsible for the grant of patents and registration of designs in India. It functions under the CGPDTM and administers the Patents Act, 1970 and Designs Act, 2000.

Patent Office Branches

Kolkata
Head Office
Mumbai
Branch Office
Delhi
Branch Office
Chennai
Branch Office

Territorial Jurisdiction (Rule 4, Patents Rules)

The appropriate Patent Office is determined based on the applicant's address:

  • Kolkata: States of Bihar, Jharkhand, Odisha, West Bengal, and territories of northeastern states
  • Mumbai: States of Maharashtra, Gujarat, Madhya Pradesh, Chhattisgarh, Goa, and union territories of Dadra & Nagar Haveli and Daman & Diu
  • Delhi: States of Haryana, Himachal Pradesh, Jammu & Kashmir, Punjab, Rajasthan, Uttar Pradesh, Uttarakhand, and NCT of Delhi
  • Chennai: States of Andhra Pradesh, Telangana, Karnataka, Kerala, Tamil Nadu, and union territories of Puducherry, Lakshadweep, and Andaman & Nicobar

Functions of the Patent Office

Receiving and Processing Applications
Filing of patent applications (ordinary, convention, PCT national phase), divisional applications, and patent of addition applications.
Examination
Conducting prior art search and substantive examination to determine patentability (novelty, inventive step, industrial applicability).
Grant and Publication
Granting patents that meet all requirements and publishing in the Patent Journal. Maintaining the Patent Register.
Post-Grant Proceedings
Opposition proceedings, revocation petitions, compulsory licensing applications, and working statement filings.
Patent Application Processing Timeline
1
Filing
Application filed with complete specification or provisional specification (followed by complete within 12 months)
2
Publication (18 months from priority/filing)
Application published in Patent Journal. Early publication available on request with fee.
3
Request for Examination (within 48 months)
Applicant must file request for examination. Expedited examination available for startups, SMEs, etc.
4
First Examination Report (FER)
Examiner issues FER with objections. Applicant must respond within 6 months (extendable by 3 months).
5
Grant/Refusal
If objections overcome, patent granted and published. If not, application refused after hearing.
Topic 3

Trademark Registry

The Trade Marks Registry administers the Trade Marks Act, 1999 and the Trade Marks Rules, 2017. It handles registration, renewal, and opposition proceedings for trademarks in India.

Registry Locations

Mumbai
Head Office
Delhi
Branch Office
Kolkata
Branch Office
Chennai
Branch Office
Ahmedabad
Branch Office

Territorial Jurisdiction (Rule 5, Trade Marks Rules)

Jurisdiction is based on the applicant's principal place of business or domicile:

  • Mumbai: Maharashtra, Goa, Gujarat, Madhya Pradesh, Chhattisgarh
  • Delhi: J&K, Punjab, Haryana, HP, Rajasthan, UP, Uttarakhand, NCT Delhi
  • Kolkata: West Bengal, Odisha, Bihar, Jharkhand, Assam, NE states, A&N Islands
  • Chennai: Tamil Nadu, Andhra Pradesh, Telangana, Kerala, Puducherry, Lakshadweep
  • Ahmedabad: Dadra & Nagar Haveli, Daman & Diu (and overflow from Mumbai)

Key Functions

Application Processing
Receiving applications for trademark registration in various classes (Nice Classification). Examining applications for registrability and relative grounds.
Opposition Proceedings
Processing notice of opposition filed against published applications. Conducting hearings and deciding opposition matters.
Registration and Renewal
Issuing registration certificates. Processing renewal applications (every 10 years). Restoration of removed marks.
Rectification and Cancellation
Processing applications for rectification of the register and cancellation of registrations.
Key Timelines in Trademark Prosecution
  • Examination: Within 30-45 days of filing (current practice)
  • Reply to Examination Report: Within 30 days (extendable)
  • Opposition Period: 4 months from publication date
  • Counter-Statement: Within 2 months of receiving notice of opposition
  • Evidence Filing: 2 months for each party
  • Registration Valid: 10 years from filing date, renewable indefinitely
Key Concept: Madrid Protocol Filing

India joined the Madrid Protocol on April 8, 2013. Indian applicants can now file international trademark applications through the TMR:

  • File application with TMR designating foreign countries
  • TMR certifies and forwards to WIPO International Bureau
  • WIPO notifies designated countries
  • Single application, single fee, multiple country protection

Similarly, foreign applicants can designate India in their international applications.

Topic 4

The Copyright Office, headed by the Registrar of Copyrights, administers the Copyright Act, 1957. Unlike patents and trademarks, copyright exists automatically upon creation - registration is voluntary but provides evidentiary advantages.

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Copyright Office

Location: New Delhi (Boudhik Sampada Bhawan, Dwarka)

Under: Ministry of Education (formerly HRD)

Head: Registrar of Copyrights

Online Portal: copyright.gov.in

Functions of the Copyright Office

Registration
Registering copyrights in works (literary, dramatic, musical, artistic, cinematograph films, sound recordings). Issuing registration certificates.
Register of Copyrights
Maintaining the Register of Copyrights containing particulars of registered works. Public can inspect and obtain extracts.
Assignment and License Registration
Recording assignments and licenses of copyright as required under Section 19.
Copyright Societies
Registering and regulating copyright societies (like IPRS, PPL) under Section 33.

Copyright Registration Process

1
Application Filing
File Form XIV online at copyright.gov.in with copies of the work, fee, and NOC from author (if different from applicant)
2
Diary Number and Waiting Period
Application receives diary number. 30-day mandatory waiting period for objections.
3
Examination
Examiner reviews application. May raise queries requiring response within 30 days.
4
Registration
If no objections and requirements met, entry made in Register of Copyrights. Certificate issued.
Key Concept: Why Register Copyright?

While copyright exists automatically, registration provides:

  • Prima Facie Evidence: Certificate is prima facie evidence of particulars entered (Section 48)
  • Notice to Public: Public record of ownership claims
  • Enforcement: Required for seeking statutory damages in some jurisdictions (not India)
  • Assignment Recording: Proper documentation of rights transfers
  • Due Diligence: Essential for IP valuation, M&A, and funding
Section 45 - Register of Copyrights

There shall be kept at the Copyright Office a register in the prescribed form to be called the Register of Copyrights in which may be entered the names or titles of works and the names and addresses of authors, publishers and owners of copyright and such other particulars as may be prescribed.

Topic 5

IP Appellate Board (Historical) and Commercial Courts

The landscape of IP dispute resolution in India has evolved significantly, particularly with the abolition of the Intellectual Property Appellate Board (IPAB) in 2021 and the enhanced role of Commercial Courts in IP matters.

IPAB: Historical Overview (2003-2021)

The Rise and Fall of IPAB

Establishment: IPAB was established on September 15, 2003 under the Trade Marks Act, 1999 (Section 83). Located in Chennai.

Jurisdiction Extended: In 2007, IPAB was given jurisdiction over patent appeals (under Patents Act amendments).

Functions:

  • Appeals from decisions of Registrar of Trademarks
  • Applications for rectification/removal of trademarks from Register
  • Appeals from decisions of Controller of Patents
  • Revocation of patents
  • Applications for compulsory licenses

Abolition: IPAB was abolished on April 4, 2021 by the Tribunals Reforms (Rationalisation and Conditions of Service) Ordinance, 2021 (later replaced by Act).

Current Appellate Structure (Post-IPAB)

Patent Appeals
Appeals from Controller's decisions now lie to the High Court having jurisdiction over the Patent Office where the application was filed or order was passed.
Trademark Appeals
Appeals from Registrar's decisions lie to the High Court having jurisdiction. Rectification petitions also transferred to High Courts.
Copyright Matters
Copyright Board functions transferred. Appeals lie to Commercial Court or High Court depending on value.

Commercial Courts

The Commercial Courts Act, 2015 (as amended in 2018) established specialized commercial courts to expedite resolution of commercial disputes, including IP matters.

Commercial Courts Act, 2015 - Key Features
  • Commercial Courts: Established at district level for disputes of Specified Value (Rs. 3 lakhs and above)
  • Commercial Divisions: In High Courts with ordinary original civil jurisdiction
  • Commercial Appellate Divisions: In High Courts for appeals
  • IP Disputes: Expressly included in "commercial disputes" definition
  • Time-bound disposal: Aim to dispose cases within 1 year
  • Case Management: Mandatory case management hearings
Key Concept: IP Division in High Courts

Several High Courts have established dedicated IP divisions for specialized handling of IP disputes:

  • Delhi High Court: IPD (Intellectual Property Division) handles all IP matters
  • Bombay High Court: Designated benches for commercial and IP matters
  • Madras High Court: IP-focused benches

These specialized benches have developed expertise in IP law, leading to more consistent and informed decisions.

Topic 6

Online Filing Systems (ipindia.gov.in)

India has made significant strides in digitizing IP administration. The ipindia.gov.in portal serves as the unified online platform for patent, trademark, design, and GI filings and searches.

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ipindia.gov.in Portal

The official portal of the Office of CGPDTM providing comprehensive online services for patents, trademarks, designs, and geographical indications.

Services Available Online

Patent Services
Online filing of applications, request for examination, responses to FER, renewal fees, working statements. Access to patent documents and Journal.
Trademark Services
Application filing (TM-A), opposition filing (TM-O), renewal (TM-R), assignment recording. Public search of trademark database.
Design Services
Design registration applications, renewals, and searches through the Design Wing portal.
GI Services
GI application filing, renewal, and search through the GI Registry portal.

Key Online Features

  • E-Filing: Submit applications and documents electronically 24/7
  • E-Payment: Pay fees online through integrated payment gateway
  • Status Tracking: Real-time tracking of application status
  • Document Viewing: Access filed documents and office actions
  • E-Register: View and download certified copies from electronic register
  • Public Search: Free search facilities for patents, trademarks, designs
  • Journal Access: Download Patent Journal, Trade Marks Journal, Design Journal
Digital Signature Requirement

Online filings require Digital Signature Certificates (DSC) for authentication:

  • Class 2 DSC: Minimum requirement for individuals
  • Class 3 DSC: Recommended for agents and attorneys
  • Organization DSC: For company filings

DSCs must be obtained from licensed Certifying Authorities (CAs) like eMudhra, Sify, NIC, etc.

Other Official Portals

copyright.gov.in
Copyright Office portal for copyright registration, renewal, and related services. Separate from ipindia.gov.in as Copyright Office is under Ministry of Education.
startupindia.gov.in
Portal for startup-specific IP benefits including SIPP scheme for facilitated patent/trademark filing with fee rebates and expedited examination.
WIPO IP Portal
WIPO's ePCT system for international patent applications and Madrid e-Filing for international trademark applications.
Key Concept: Mandatory E-Filing

E-filing has become increasingly mandatory:

  • Most patent forms must be filed online (with exceptions for provisional specifications by individual applicants)
  • Trademark applications are predominantly filed online (paper filing still permitted with additional fee)
  • Over 90% of IP applications are now filed electronically
  • Fee discounts available for e-filing in some categories
Test Your Knowledge

Part 5 Quiz

Answer the following 10 questions to test your understanding of IPR Administration in India.

Question 1 of 10
The headquarters of the Indian Patent Office is located at:
  • A) New Delhi
  • B) Kolkata
  • C) Mumbai
  • D) Chennai
Explanation:
The Indian Patent Office is headquartered in Kolkata with branch offices in Mumbai, Delhi, and Chennai. The Trade Marks Registry is headquartered in Mumbai, while the GI Registry is in Chennai.
Question 2 of 10
The Copyright Office in India functions under which Ministry?
  • A) Ministry of Commerce and Industry
  • B) Ministry of Law and Justice
  • C) Ministry of Education
  • D) Ministry of Culture
Explanation:
The Copyright Office functions under the Ministry of Education (formerly Ministry of Human Resource Development). This is different from patents, trademarks, and designs which are under DPIIT, Ministry of Commerce and Industry.
Question 3 of 10
IPAB (Intellectual Property Appellate Board) was abolished in:
  • A) 2021
  • B) 2019
  • C) 2020
  • D) 2022
Explanation:
IPAB was abolished on April 4, 2021 by the Tribunals Reforms (Rationalisation and Conditions of Service) Ordinance, 2021. Its functions were transferred to High Courts and Commercial Courts.
Question 4 of 10
The Trade Marks Registry has how many branches across India?
  • A) 3
  • B) 4
  • C) 6
  • D) 5
Explanation:
The Trade Marks Registry has 5 offices: Mumbai (headquarters), Delhi, Kolkata, Chennai, and Ahmedabad. The Patent Office has 4 offices: Kolkata (headquarters), Mumbai, Delhi, and Chennai.
Question 5 of 10
Under the Patents Rules, the request for examination must be filed within:
  • A) 36 months from filing/priority date
  • B) 48 months from filing/priority date
  • C) 18 months from filing/priority date
  • D) 60 months from filing/priority date
Explanation:
Under Rule 24B of the Patents Rules, 2003, the request for examination must be filed within 48 months from the priority date or filing date, whichever is earlier. Failure to file results in the application being treated as withdrawn.
Question 6 of 10
India joined the Madrid Protocol for international trademark registration in:
  • A) 2003
  • B) 2010
  • C) 2013
  • D) 2017
Explanation:
India joined the Madrid Protocol on April 8, 2013. This enables Indian applicants to file international trademark applications through the Indian Trade Marks Registry and allows foreign applicants to designate India in their international applications.
Question 7 of 10
Post-IPAB abolition, appeals from Patent Office decisions now lie to:
  • A) High Court having jurisdiction
  • B) Supreme Court directly
  • C) District Court
  • D) CGPDTM
Explanation:
Following the abolition of IPAB in 2021, appeals from decisions of the Controller of Patents lie to the High Court having jurisdiction over the Patent Office where the application was filed or order was passed.
Question 8 of 10
The Geographical Indications Registry is located at:
  • A) New Delhi
  • B) Mumbai
  • C) Kolkata
  • D) Chennai
Explanation:
The Geographical Indications Registry is located in Chennai and functions under the CGPDTM. It handles registration and protection of geographical indications under the Geographical Indications of Goods (Registration and Protection) Act, 1999.
Question 9 of 10
The specified value for commercial disputes under the Commercial Courts Act, 2015 (as amended) is:
  • A) Rs. 1 lakh and above
  • B) Rs. 3 lakhs and above
  • C) Rs. 1 crore and above
  • D) Rs. 10 lakhs and above
Explanation:
The Commercial Courts (Amendment) Act, 2018 reduced the specified value from Rs. 1 crore to Rs. 3 lakhs, enabling more commercial disputes including IP matters to be heard by Commercial Courts at the district level.
Question 10 of 10
Which of the following is NOT a function of the Copyright Office?
  • A) Registering copyrights
  • B) Maintaining Register of Copyrights
  • C) Granting compulsory licenses for patents
  • D) Registering copyright societies
Explanation:
Granting compulsory licenses for patents is a function of the Controller of Patents under the Patents Act, not the Copyright Office. The Copyright Office handles copyright registration, maintaining the register, recording assignments, and registering copyright societies.