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Design Office Action in India
This guide is about understanding design examination process in India. The Designs Act, 2000 and the Design Rules, 2001, with amendments from 2008, regulate the examination and registration of designs in India. This framework specifically protects the aesthetic features of new and original designs applied to articles, excluding any functional or mechanical elements. India’s design examination process is efficient, with applications generally processed within one month if they meet all formal and substantive requirements, else a design office action is issued. The steps involved begin with the application submission, wherein applicants must complete Form-1, provide two copies of the design’s representation, and submit the necessary fees. Applications are accepted at the Patent Office branches in Kolkata, Delhi, Mumbai, and Chennai, but processing occurs centrally at Kolkata. Initial checks ensure compliance with formal requirements, such as correct documentation and fee payment. Almost 90% of applications face formal objections due to incomplete or incorrect submissions by way of issuance of design office actions. Applicants must rectify these within a specified time by filing the requisite response to design office actions containing detailed response for each of the objections.
Design Examination in India
As per the design law in India, the step of substantive examination of design application evaluates the novelty and originality of the design. During design examination process, the patent examiners assess whether the design adheres to the Act’s requirements, ensuring it hasn’t been previously published or disclosed. The design should not include trademarks or artistic works as defined by the Copyright Act, 1957. After clearing objections and meeting the substantive requirements, which results in conclusion of design examination process, the design is registered and published in the Patent Office Journal. A registration certificate is then issued that implies that the design applicant has successfully completed the design examination procedure as per the design law in India.
There are sets of compliances and procedure, that need to be followed for the Registration of Designs. So that application is accepted during Examination of the same.
Section 5(1) – The registration application of a design is recommended by the Controller to an Examiner of Designs; for evaluating whether the application and its supporting documents fulfil the legal requirements. Additionally he/she also evaluates, if the design applied for is capable of being registered;, under the Designs Act, 2000 and Designs Rules, 2001.
The Examiner evaluates the application’s format, fee, name, address, and nationality of the applicant, address of service, declaration of proprietorship, representation sheet under Rule 14, and the power of authority, if applicable.
Where there is a reciprocity application the examiner evaluates whether the application was filed within the prescribed time; and its priority document was filed at the time of filing. When the application is unsatisfactory in any respect the Examiner recounts the defect to the Controller; who conveys the objections to the applicant.
Such an application shall continue for examination only after adherence to the objections and the applicant has a period of 3 months to comply with the deficiencies or respond to the objections, failing which the application is deemed as withdrawn.
If the applicant wants to challenge the objections, they can reply to the objections specifying the reasons and are given a hearing date with the Controller. Where the decision is unfavorable to the applicant, the Controller shall publish a Speaking Order.
Section 2 (d), 2(g), 5(1), and 46 – Substantive examination is accomplished to identify whether the design in consideration is relevant under the Act, new and original, prejudicial to public order, or harmful to the security of India.
A design is deemed to be new when it has not been revealed to the people by publication, by practice, or in any other way, before the filing date or priority date. The design is regarded as new if it is considerably different from recognized designs or a variety of recognized designs.
If the disclosure of the design is done by the proprietor to any other individual before registration, in good faith, and that individual discloses the same then such disclosure does not invalidate the registration.
The acceptance of initial and confidential order, before registration, for articles carrying a new textile design aimed at registration does also does not invalidate the registration. Further, a design is not discouraged from registration if it has been displayed in an exhibition under Section 21 of the Act by the Central Government, if its description is disseminated, during or after the exhibition, or if any individual displays or circulates its description, during or after the exhibition, without the consent of the owner.
Nevertheless, to obtain the advantages of this provision, the owner must give notice through Form-9 to the Controller before displaying the design, and apply for registration within 6mos from the date of initial exhibition or publication.
Originality concerning a design, implies that it emanates from the creator of the design, and contains the cases that are new in their application. For example, the symbol of the Taj Mahal has been used for years but if an individual conceives the same idea by creating a flower vase in the shape of a Taj Mahal, it is considered as an original design.
The Examiner performs a novelty search in the accessible databases to verify the originality of the design. The search is executed based on the class and article to confirm if the applied design is considerably unique from the earlier designs. If the design is not original, the Examiner conveys the information to the Controller, along with the citations.
The term of the copyright of the design will be co-terminus with the period of the earlier registered design. In the examination, if it is established that the design is previously registered by another individual for another article, the design can be registered solely if the applicant is a registered owner of the registered design.
The Controller will assess the Examiner’s report and if the design is registrable, the same will be registered. The registration certificate is granted and transmitted to the applicant. If the Controller infers that the objections are unfavorable to the applicant; a statement of objection is conveyed to the applicant by the Controller.
If written submissions are documented, while the recourse of the hearing is not used by the applicant; no additional opportunity will be given and the matter will be determined based on the written submissions. However, If the applicant complies with all the prerequisites of the Act; and Rules, conveyed in the statement of objections, the application will be registered.
All the registered designs are documented in the Register of Designs in Kolkata. The register is accessible for inspection on the official website. It provides the names and addresses of the registered proprietor, its registration number, class, date of filing in India. It also provides the date of filing in Convention Country; and any other topic which would influence the fact proprietorship of the design.
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Advocate Rahul Dev is a Patent Attorney & International Business Lawyer practicing Technology, Intellectual Property & Corporate Laws. He is reachable at rd (at) patentbusinesslawyer (dot) com & @rdpatentlawyer on Twitter.
Quoted in and contributed to 50+ national & international publications (Bloomberg, FirstPost, SwissInfo, Outlook Money, Yahoo News, Times of India, Economic Times, Business Standard, Quartz, Global Legal Post, International Bar Association, LawAsia, BioSpectrum Asia, Digital News Asia, e27, Leaders Speak, Entrepreneur India, VCCircle, AutoTech).
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