Person Skilled in the Art
A fictitious person who has knowledge of all prior art and who has ordinary skill in the art to
which the invention pertains.
Petition (patents)
The formal request for obtaining a patent. It should contain an indication of the request for
grant of a patent, the names and complete addresses of the applicant and all inventors, a
title for the invention, a request for "small entity" status (if applicable), as well as the figure
number of the drawing that the applicant wishes to accompany the abstract when the
patent application is open to public inspection. The applicant may also indicate in the
petition or in a separate document the name of the registered patent agent or
representatives (as applicable), and requests for priority (if any).
Petition
A request that the Commissioner of Patents and Trademarks review and supervise the work
of an employee of the Office.
Petition
A written communication to a higher authority within a patent office seeking review of a
decision of an Examiner concerning other than the rejection of a claim.
Petition for Extension of Time
A petition requesting an extension of the time period for response to an Office action.
Payment of a fee is sometimes required.
Petition to Revive
A petition that a patent application be revived from either unintentional or unavoidable
abandonment.
Petition for Certiorari
A petition to the U.S. Supreme Court to review the decision of a lower court.
Pioneer Invention
An invention that breaks new ground in a technological art or that creates a new art.
Pioneer Patent
A patent on an invention that breaks new ground in a technological art or that creates a
new art.
PIPERS (ALL):
A specialist Patent Attorney firm with Offices in NZ, AU, SG, MY,CH, GB and strong
relationships with selected associates in just about every country in the world. PIPERS is one
of the few Patent Firms to offer a 24-hour/7-day a week service.
PIPERS Translations(ALL):
PIPERS translations are technical and patent translation specialists. Pipers Translations
provide professional translation and related services between English and all major
European and Asian languages.
Pith and Marrow (UK):
The essential features of an invention.
Place of origin
A word or depiction that designates the origin of a product or service and therefore may not
be registered as a trade-mark.
Plant Breeders' Rights Act
The Canadian Plant Breeders' Rights Act gives you exclusive rights to new varieties of some
plant species. To be protected, the varieties must be new (that is, not previously sold,
327
different from all other varieties), uniform (that is, all plants in the variety must be the
same), and stable (that is each generation must be the same as the rest).
Plant Breeders' Rights Office (PBRO)
The Plant Breeders' Rights Office (PBRO) is part of the Canadian Food Inspection Agency
(CFIA). The Office functions to secure the rights of plant breeders by granting protection for
their new varieties. The Office examines applications to determine whether applicants are
entitled to receive a grant of rights. It publishes and distributes plant breeders' rights
information via the Plant Varieties Journal (see Plant Varieties Journal), records details of
incoming applications and assists the public in obtaining documentation pertaining to a right
that has been published.
Plant breeders' rights
The exclusive right to the use and exploitation of the variety.
Plant Patent
A U.S. patent that claims an asexually propagated plant.
Plant Varieties Journal
The Plant Breeders' Rights Office (PBRO) publishes the Plant Varieties Journal containing
information concerning plant breeders' rights. The Journal is distributed on a quarterly
basis. The Journal provides an opportunity for all interested persons to review the
information concerning a variety and to object to the particulars of the published
applications/descriptions if they feel the requirements for distinctiveness; uniformity and
stability or other requirements of the Act have not been met.
Preamble of Claim
The part of the claim that precedes the transitional phrase. Often the preamble states the
purpose of the invention, as in "A device for transporting cars . . . ."
Precedent (ALL):
Earlier legal rulings. One of the basic principles of law is stare decisis (that which has been
decided stands). Once a principle has been determined in a case, all other cases must follow
the same principle. In fact such decisions can change, but rarely and with due consideration.
In fact such decisions can be changed, either by being overruled by a higher court or by a
change in the relevant statute. Precedent tends to be given more weight in common law
countries, eg UK, US, Australia, New Zealand, than in civil law countries, eg most European
countries (A well known UK example is Brown v. Board of Education (1954) which overruled
Plessy v. Furgesson (1896)).
Precedent
A legal decision that serves as an example or rule upon which a subsequent decision can be
based.
Pre-characterising clause (EP):
The part of a German or European style claim, which recites the features of the invention
that are already known. The novel aspect of the invention is introduced by the words
"Characterised by" or "Characterised in that". See Jepson Claim.
Precious Metals Marking Act
The Precious Metals Marking Act prohibits the use of false, misleading or incorrect marks in
relation to precious metal articles. The trademarks Office cooperates with the Precious
Metals Marking Section of the Consumer Products Branch of Industry Canada in attempting
to reduce the chances of marks being registered which might be misconstrued by the trade
as representing quality marks. Canada's Precious Metals Marking Act states that you must
328
file a trade-mark application for the trade-mark used on the wares, if you wish to stamp a
quality mark (e.g. 10K gold) on your product. The quality mark itself is not mandatory.
Precious Metals
Precious metals means gold, silver, platinum or any of the platinum group of metals.
Preliminary Amendment
An amendment to a patent application filed simultaneously with the filing of the patent
application or an amendment to a patent application filed before the Examiner mails the
first action on the merits of the application.
Preliminary Examination Report
A report notifying an applicant of the results of an International Preliminary Examination.
Preliminary Examination
The examination of an international patent application that is conducted by an International
Preliminary Examination Authority.
Preliminary Statement
In an interference proceeding, a statement made under oath that sets out who made an
invention and where and when it was made.
Presumption of validity (UK):
The rebuttable legal presumption that a granted patent is valid. The burden of proof of
invalidity falls on a challenger to prove invalidity by clear and convincing evidence.
Presumption of Validity
An presumption that a patent issued by a patent office is valid.
Prima facie
Latin for "on its face." Sufficient evidence to raise a presumption of fact, unless rebutted.
Prima facie
Sufficient to establish a fact or to raise a presumption of fact unless rebutted: prima facie
evidence.
Printed Matter
A publication.
Prior Art (ALL):
(1) In a broad sense, technology that is relevant to an invention and was publicly available
(e.g. described in a publication or offered for sale) before the relevant priority date,
(2) in a narrow sense, any such technology which would invalidate a patent or limit its
scope. The process of prosecuting a patent or interpreting its claims largely consists of
identifying relevant prior art and distinguishing the claimed invention from that of prior art.
Prior art (industrial designs)
The body of existing designs, either registered or published throughout the world.
Prior art (patents)
The body of existing patents or patent applications, or any other publication throughout the
world, relevant to an application or a patent.
Prior Art Reference
A citation of prior art. See Prior Art.
Prior Art
Technology that was available prior to either the date of invention or the filing date of the
application, depending on the patent office rule under consideration. Availability can be
based on such factors as public use, secret sale, publication, public knowledge, etc.
depending on the patent law of the jurisdiction in which the patent is being sought.
329
Prior claiming (UK):
The claiming of essentially the same invention in an earlier application that was not
published at the priority date.
Prior Public Use
Display of an unpatented invention under circumstances in which the invention enters the
public domain.
Prior use (UK):
The use of an invention before the priority date of an application claiming it.
Priority date (ALL):
The date on which an invention was first disclosed to a Patent Office in the application in
question or in an earlier application from which it validly claims priority.
Priority Date
The filing date of the first patent application disclosing an invention, which filing date has
occurred no more than 12 months before the filing date of a later-filed patent application
claiming the priority date of the first application.
Priority document (ALL):
The patent application from which subsequent applications claim priority. The Paris
Convention enables an inventor to file in a first country and Claim priority for a period up to
12 months for Patents and up to six months for Trademarks and Designs for filing an
application in other countries.
Priority Document
A certified copy of a patent application filed no more than 12 months before the filing date
of the later-filed application claiming the priority date of the earlier-filed application.
Priority
The quality or state of being prior. Precedence in completing an invention.
Pro se Applicant
An applicant for patent (inventor) who is representing himself/herself.
Process
A method of making something, a process of operating something or a process of using
something. Under U.S. law, one of the statutory classes of inventions.
Product
A machine, an article of manufacture or a composition of matter. See Machine, Article of
Manufacture, Composition of Matter.
Product by process claim (ALL):
A claim to a product when made by a specified process. Goes to novelty.
Product By Process Claim
A patent claim that describes a product invention by describing the process that is used to
make it.
Product developer (ALL):
Someone who develops a product usually including visualizing what that product should be
and assembling the resources needed to design and develop the product in contrast to an
entrepreneur. A product developer may be an inventor.
Product of Nature
A thing occurring in nature that is substantially unaltered by Man. An essentially pure
culture of a microorganism does not occur in nature and is not, therefore, a product of
nature. Neither is a genetically-engineered organism a product of nature.
Product per se claim (ALL):
330
A claim to a product irrespective of how it is made.
Prolix Claim
A claim that contains long recitations or unimportant details that render the claim
indefinite.
Prolixity (ALL):
Overly worded claims. Repetitious claims.
Property
An object of ownership whereby the owner can exclude others from its enjoyment.
Proprietary Information
Information that is not generally known and that has competitive value, e.g., trade secrets
and business information not generally known.
Prose (UK):
To pursue a case without being represented by a lawyer. A risky and dangerous tactic, less
expensive than being represented by a lawyer.
Prosecution (ALL):
The process in which an inventor or his lawyer engage with the patent office to obtain a
patent and determine the scope of its claims.
Prosecution History
The history of the prosecution of a patent application. See Prosecution.
Estoppel
See File Wrapper Estoppel.
Prosecution
The process of fact finding and negotiation of patent claim language that occurs during the
time that a patent application is pending and under examination at a patent office.
Protest
A communication by a member of the public to a patent office arguing and providing
evidence that the granting of a patent would be improper.
Provincial incorporation
Incorporation of a business at the provincial or territorial level according to the legislation of
the province or territory concerned.
Provincial registration
A company that intends to conduct business in Canadian provinces or territories, whether it
is incorporated under the federal or provincial system, must also register with the province
or territory concerned.
Provisional Application
A type of U.S. utility patent application that is used to establish priority of invention. It need
not contain a claim and cannot issue as a patent.
Provisional specification (US/UK/AU/NZ/SG):
Formerly, a brief description of the invention filed with an application, to be followed by a
complete specification.
PTO (Patent and Trademark Office):
In the US, the USPTO is the office of the Department of Commerce that is responsible for
examining and issuing patents.
Public Sale
A sale or offer to sell an invention to a member of the public. A sale need not be public to
bar a patent under U.S. law.
Public Use (US):
331
A prior public or commercial use of an invention before Filing. In the US, public use is
allowed up to 12 months before filing a Patent Application. See Grace Period above.
Public Use
Utilization of a completed invention in a nonexperimental manner in public, i.e., under
conditions permitting a party who is not under an obligation of secrecy to observe the
invention.
Publication
Any document that is available to the public anywhere in the world.
Published Application
A patent application that has been published by a patent office during its prosecution
(before issue).
Published Patent Application
See Published Application.
Publishing of the application (trade-marks)
The publishing of an application in the weekly Trade-marks Journal. This provides an
opportunity for the public to formally object to our intention to register such trade-marks.
Purposive construction (UK):
Catnic Components Ltd V Hill & Smith Ltd as per Lord Diplock at 243 "A patent specification
should be given a purposive construction rather than a purely literal one.... The question in
each case is: whether persons with the practical knowledge and experience of the kind of
work in which the invention was intended to be used, would understand that strict
compliance with a particular descriptive word or phrase appearing in a claim was intended
by the patentee to be an essential requirement of the invention so that any variant would
fall outside the monopoly claimed, even though it could have no material effect upon the
way the invention worked."
Q
Quayle Action
An action requiring correction of informalities after an application is otherwise in condition
of allowance.
R
Ratio decidendi (UK, NZ)
The legal reason(s) for the decision reached. These reason(s) form the precedent of the case
and are binding..
Rationale for Patentability
The reasoning behind a decision that a claimed invention is patentable.
Reads On (ALL):
A claim reads on something, if every element of that claim is present in the document with
which it is being compared i.e. reads on. If a claim reads on prior art, then the claim is
invalid. A claim must read on an accused device for infringement to occur.
Reads On
A claim includes within its scope certain subject matter.
Record (ALL):
That evidence which is before the court or patent office on which a decision can be made. In
a patent prosecution that consists of such things as the inventors’ oath, the patent
application, any affidavits submitted, and any prior art.
332
Reduction to practice (US):
Completion of the inventive act by carrying out the invention and finding a use for it.
Reduction to Practice (US):
There are two limbs to this term. Actual and Constructive. Actual reduction to practice
refers to the physical manifestation of the Invention. It refers to the actual making of the
apparatus, article, compound or composition. In the case of a process or method it is to the
actual carrying out of the method or process steps. Constructive reduction to practice is
usually completed by the filing of a Patent Application that provides sufficient information
for an ordinary skilled but otherwise unimaginative worker to make and use the invention
without undue research or experimentation.
Reduction to Practice, Actual
Building a physical embodiment of an invention and testing it under conditions that would
indicate to a person skilled in the art that the invention was useful.
Reduction to Practice, Constructive
Filing a patent application that explains how to make and how to use an invention in
sufficient detail that a person skilled in the art could practice the invention.
Re-examination (US/CA/EP):
A new procedure whereby the patentee or a third party can ask the patent office to review
a granted patent in the light of new prior art.
Reexamination
Examination of the patentability of an invention claimed in an issued U.S. patent at the
request of the USPTO, the patent owner or a third party.
Reference
A document that discloses subject matter that is material to a determination of the
patentability of a claimed invention.
Reference Character
A numeral or letter used to identify an element on a patent drawing.
Refiling (US):
Abandonment of a first filed application and filing a new application with essentially the
same specification.
Registered patent agent
A registered patent agent is a person whose name is entered on CIPO's list of patent agents
and who is therefore entitled to practice before the Patent Office.
Registered trade-mark agent
A registered trade-mark agent is a person whose name is entered on CIPO's list of trade-
mark agents and who is therefore entitled to practice before the Trade-marks Office.
Registration (UK/HK):
Obtaining patent protection in certain territories on the basis of a granted British patent.
Registration
The granting of formal recognition of a trade-mark, copyright, industrial design, or
integrated circuit topography by the Trade-marks, Copyrights, Industrial Designs and
Integrated Circuit Topographies Office respectively.
Regulatory Review Exception (NZ, CA):
Section 68B of the NZ Patents Act reads: "It is not an infringement of a patent for a person
to make, use, exercise, or vend the invention concerned solely for uses reasonably related
to the development and submission of information required under New Zealand law or the
law of any other country that regulates the manufacture, instruction, use, or sale of any
333
product ." The thinking behind this addition to the Act is to make it easier for both entry into
the New Zealand market of generic products, particularly generic pharmaceuticals,
veterinary and agricultural products, and to assist New Zealand manufacturers of generic
products to gain access to both New Zealand and export markets.
The amendment is similar to the Canadian situation and will allow manufacturers of generic
products to circumvent patent infringement liability if they make, sell, conduct field trials or
experiments in respect of a patented product, regardless of the extent of those activities as
long as they can prove that the use was to obtain regulatory approval for the product. The
wording of the section allows any manufacturer of a generic product to produce in NZ any
patented product that requires regulatory approval anywhere in the world.
Reinstatement
Restoration of the enforceability of a patent.
Reinstatement
An abandoned application may be reactivated under certain conditions.
Reissue (US):
A procedure by which defects in a granted US patent may be corrected on application by
the patentee. An application for a patent to take the place of an unexpired patent that is
defective in one or more particulars, items, or details.
Reissue Application
A U.S. patent application that is refilled after a patent issues in order to correct one or more
errors in the patent that occurred without deceptive intent.
Reissue Patent
A corrected U.S. patent that issues from an allowed reissue application
Reissue
The issue of a patent that was issued previously in order to correct an error in the patent.
Rejected
If the applicant fails to satisfy the requirements set out by the Canadian Patent Act, the
application is refused.
Rejection (US):
An adverse ruling by an Examiner in an Office Action.
Rejection
The refusal of a patent Examiner to allow a claim based on specific legal grounds.
Rejection, Final
A rejection of a claim that occurs on the second or any subsequent examination of its
patentability. After the final rejection of a claim occurs, the only recourses of an applicant
are to argue that the final rejection was premature, to appeal the rejection or to amend the
claim in accordance with any suggestion of the Examiner. The Examiner may allow the
applicant to place the claim in better form for appeal. One interview with the Examiner will
be allowed, if in the judgment of the Examiner, circumstances warrant the interview.
Renewal fee (ALL):
A fee payable at designated intervals to maintain a granted patent, Registered Trademark or
Registered Design in force. If Renewals fees are not paid, the Right is said have lapsed.
Renewal Fee
The periodic fee charge by a patent office for maintaining a patent in force.
Request for Information (UK/NZ):
334
A request to a Patent Office to be informed when some future event (e.g. the grant of a
patent on another’s application) occurs. A.k.a. caveat above.
Request for Reconsideration
A written communication to a patent office asking that a decision be reconsidered.
Request for Re-examination (US):
A request to the Board of Appeals to reverse its own adverse decision.
Request to Reinstate (US):
If an application is abandoned due to a USPTO Office error, an applicant may file a request
to reinstate the application, instead of a petition to revive. There is no fee for a request for
reinstatement. You must file a request for reinstatement within two months of the issue
date of the notice of abandonment. You must include a true copy of the document that was
timely submitted, and a copy of an acceptable form of proof of receipt in the USPTO.
Restoration (UK/NZ):
Proceedings to revive a patent, which has lapsed by non-payment of renewal fees.
Restriction
A requirement by an Examiner that an applicant choose which of multiple claimed, distinct
inventions disclosed in a patent application that he/she wishes to be examined.
Restriction requirement (US):
A demand by the examiner that the applicant limit his application because of non-unity. If
two or more independent and distinct inventions are claimed in a single application, the
examiner may require the applicant to elect (designate) a single invention to which the
claims will be restricted (limited to). This requirement is known as a requirement for
restriction (also known as a requirement for division). Can be made at any time before final
Action (final rejection). (-- see 37 CFR § 1.141 and § 1.142)
Reversal of onus (UK):
The principle that when a patent claims a process for making a new compound, the
compound will be presumed to be made by the patented process unless proved otherwise.
Reverse Engineering
The process of analyzing existing products or processes in order to redesign or reproduce
them.
Revival of Abandoned Application
To reinstate a patent application that has been abandoned (relinquished), either by express
abandonment or by inaction. Abandonment by inaction typically involves failure to take a
required action (e.g., filing a incomplete response or not paying a fee) during the statutory
period for taking the action. A U.S. patent application that was unavoidably or
unintentionally abandoned can be revived by petition.
Revocation proceedings (UK/NZ):
Proceedings before a Patent Office or a court to have a patent declared invalid.
Revocation
Withdrawing the protections associated with a patent grant.
Right of Prior use (UK):
The principle that a patent cannot be used to stop someone from continuing what he was
doing before the priority date of the patent.
Right of Priority
The right to priority of invention established by filing the first patent application in an
appropriate patent office.
Routineer
335
A person having ordinary skill in an art. See Person Skilled in the Art.
Royalties
A sum paid to intellectual property owners in exchange for doing acts that are otherwise
considered infringement.
Royalty (ALL):
A payment made for the use of an Intellectual Property Right, such as a Patent, Trademark,
Design, Franchise or Copyrighted work. The amount paid is usually a percentage of any
revenue obtained through its use.
S
Search engine
An automated tool that provides a method of searching vast amounts of information.
Search Report
A report containing a list of citations of prior art references that, in the opinion of the
searcher, are material to the patentability of a claimed invention. A search report often
presents an opinion of patentability.
Second pharmaceutical use claim (UK/EP):
Similar concept to a "Swiss-type" Claim: a claim that attempts to protect the invention that
a compound already known as a pharmaceutical has a new unrelated pharmaceutical use.
Secondary Considerations
Objective evidence of non-obviousness.
Secret use (UK):
The former ground of invalidity that the invention had been used (although not in public)
before the priority date.
Section 15 Declaration Of Incontestability (US):
A sworn statement, filed by the owner of a mark registered on the Principal Register,
claiming "incontestable" rights in the mark for the goods/services specified. An
"incontestable" registration is conclusive evidence of the validity of the registered mark, of
the registration of the mark, of the owner’s ownership of the mark and of the owner’s
exclusive right to use the mark with the goods/services. The claim of incontestability is
subject to certain limited exceptions set forth in §§15 and 33(b) of the Trademark Act, 15
U.S.C. §§1065 and 1115(b). 15 U.S.C. §1065.
Filing a Section 15 Declaration is optional. However, there are certain rules governing when
one may be filed. A §15 Affidavit may not be filed until the mark has been in continuous use
in commerce for at least five consecutive years subsequent to the date of registration for
marks registered under the Act of 1946 (and subsequent to the date of publication under
§12(c) of the Trademark Act, 15 U.S.C. §1062(c), for marks registered under the Acts of 1905
and 1881 for which the benefits of the Act of 1946 have been claimed). The §15 Affidavit
must be executed and filed within one year following a 5-year period of continuous use of
the mark in commerce.
Section 8 Declaration of Incontestability (US):
A Trademark term. A sworn statement, filed by the owner of a registration that the mark is
in use in commerce. Section 8 of the Trademark Act, 15 U.S.C. §1058. It must be filed by the
current owner of the registration and the USPTO must receive it during the following time
periods:
336
(1) At the end of the 6th year after the date of registration (or the date of publication under
15 U.S.C. §1062(c) for registrations issued under the Acts of 1905 or 1881 that have claimed
the benefits of the Act of 1946), AND
(2) At the end of each successive 10-year period after the date of registration. There is a six-
month grace period. If these rules and deadlines are not met, the USPTO will cancel the
registration.
Section 9 Renewal Application (US):
A Trademark term. A sworn document, filed by the owner of a registration, to avoid the
expiration of a registration. Federal trademark registrations issued on or after November 16,
1989, remain in force for 10 years, and may be renewed for 10-year periods. Trademark
registrations issued or renewed prior to November 16, 1989 remain in force for 20 years,
and may be renewed for 10-year periods. Trademark owners have a total of 18 months to
file a §9 Renewal Application.
The §9 Renewal Application may be filed one year prior to the registration expiration date
or during the 6-month grace period immediately after the date of expiration. If the §9
Renewal Application is not filed or is filed after the grace period ends, the registration will
expire. Because the due date of the 10-year §8 Declaration coincides with the due date of
the §9 Renewal Application, the USPTO created a form entitled "Combined Declaration of
Use in Commerce and Application for Renewal of Registration of a Mark Under Sections 8 &
9".
Selection invention (UK):
An invention, which selects a group of individually novel members from a previously known
class, on the basis of superior qualities. The new Patent must be directed to some
unexpected advantage.
Senior party (US):
The party in an interference who has the earlier US filing date.
Sequence Rules
Rules promulgated by a patent office that concern the form of disclosures of inventions
that contain nucleotide sequence data and/or amino acid sequence data.
Serial number (US):
A six-figure number allocated to an application on filing.
Serial Number
An identifying number given to each patent application by the USPTO as of the day it is
received or made complete.
Service Mark (US):
A Trademark term relating to a word, name, symbol or device that is to indicate the source
of the services and to distinguish them from the services of others. A service mark is the
same as a trademark except that it identifies and distinguishes the source of a service rather
than a product. The terms "trademark" and "mark" are often used to refer to both
trademarks and service marks. Universal Type of Trademark also called a Certification Mark.
An Example is the Trademark "Registered Master Builders".
Service Mark
A word, name, symbol or device, or any combination thereof, used to identify and
distinguish the services performed by a particular entity form those performed by its
competitors.
337
Shop right (US):
The right of an employer to a free licence under a patent belonging to an employee, if the
invention was made using the employer’s facilities.
Showing (US):
Evidence of unexpected superiority filed to overcome an objection of obviousness over prior
art.
SIR
See Statutory Invention Registration.
Small entity (US, CA):
The patent statutes distinguish two type of applicants, small entities and large entities for
the determination of fees. Small entities often pay about half of what a large entity would
for the same service. A small entity includes companies with less than 500 (employees, non-
profit, and academic institutions). Often the term is used informally to distinguish the
smaller, new and more entrepreneurial inventor entities from the older, larger established
ones. A Canadian small entity has 50 or fewer employees.
Small Entity
An independent inventor, a small business or a non-profit organization. The USPTO reduces
the amount of certain fees that it charges small entities by 50 percent.
SME (Small and medium-sized enterprise)
In general, a firm employing fewer that 500 people may be considered a SME.
Sole licence (ALL):
A licence exclusive except that the patentee retains the right to use the invention.
Special Status
A status granted U.S. patent applications that have certain characteristics upon successful
petition to the USPTO. Applications granted special status are given a higher priority for
examination.
Species claim (US):
A claim to a single chemical compound, a member of a claimed genus.
Specification (ALL):
The description of the invention filed with the patent application. The specification must
describe the invention in sufficient detail so that someone knowledgeable in the art could
practice it.
Specification
The description, drawings and claims of a patent application.
Specimen (US):
A Trademark term: A factual example showing how a trademark is actually being used.
Labels, tags, or containers for goods are considered to be acceptable specimens of use for a
trademark.
For a service mark, specimens may be advertising such as magazine advertisements or
brochures. Actual specimens, rather than facsimiles, are preferred. However, if the actual
specimens are bulky, or larger than 8½" x 11", then the applicant must submit facsimiles,
(e.g., photographs or good photocopies) of the specimens. Facsimiles may not exceed 8½" x
11". One specimen is required for each class of goods or services specified in the trademark
application.
State of the art (ALL):
The total information in the relevant field known to the hypothetical man skilled in the art.
338
Statement of invention (EP/UK/PCT):
The part of the specification corresponding to the main claim, summarising the broadest
aspect of the invention.
Statement of opposition (trade-marks)
A statement whereby the public may object to the trade-mark registration if they have valid
grounds for doing so.
Statement of Use (US): SOU.
A Trademark term. A sworn statement signed by the applicant or a person authorized to
sign on behalf of the applicant attesting to use of the mark in commerce. With a statement
of use, the owner must submit:
(1) a filing fee of $100 per class of goods/services; and
(2) one specimen showing use of the mark in commerce for each class of goods/services.
Statements of use must be filed within 6 months from the date the USPTO issues a notice of
allowance. Failure to submit the statement of use in a timely manner results in
abandonment of the application. The Amendment to Allege Use and the Statement of Use
include the same information, and differ only as to the time when it is filed.
Status
The legal standing of a patent application or patent.
Statute of monopolies (UK, NZ):
The early English law banning monopolies except those for new inventions.
Statutory Bar
A bar to patentability established by law.
Statutory Declaration (UK, NZ):
A commonly used alternative to an affidavit in which the deponent affirms rather than
swears.
Statutory Disclaimer (US):
Under 35 USC § 253 (paragraph 1) and 37 CFR 1.321(a), the owner (in part or in entirety) of
a patent may relinquish all rights to a complete claim or claims of the owner's patent.
Statutory Invention Registration (SIR)
Registration of an invention with the USPTO to place an invention in the public domain. The
disclosure of an application for a Statutory Invention Registration is equivalent to the
specification and drawings of a patent application.
Statutory Invention Registration (US): SIR.
A published statutory invention registration contains the specification and drawings of a
regularly filed non-provisional application for a patent without examination if the applicant:
(1) meets the requirements of section 112 of this title;
(2) has complied with the requirements for printing, as set forth in regulations of the
Commissioner;
(3) waives the right to receive a patent on the invention within such period as may be
prescribed by the Commissioner; and (4) pays application, publication, and other processing
fees established by the Commissioner.
339
A request for a statutory invention registration (SIR) may be filed at the time of filing a non-
provisional application for patent, or may be filed later during pendency of the non-
provisional application.
Statutory Period
The period within which a response be filed with the USPTO if abandonment of the
application is to be avoided.
Statutory Subject Matter
Patentable subject matter.
Strategies
It is Industry Canada's business information Web site that provides detailed Canadian
industry, business, and consumer information.
Stylised Mark (US):
One type of depiction of the mark sought to be registered. Another name for this type of
mark is "special form" trademark. If the mark includes a particular style of lettering, or a
design or logo, the mark is considered to be stylised or in special form. Therefore, applicants
must select the "stylised or special form" mark format when applying for these types of
marks. The representation of the mark's page should show a black and white image of the
mark, no larger than 3.5 inches by 3.5 inches (8 cm by 8 cm). The mark in special form must
be a substantially exact representation of the mark as it appears on the specimen or on the
foreign registration, as appropriate.
Sub-claim (ALL):
See dependent claim.
Substantive examination (EP):
Examination for patentability, as distinct from formal matters.
Substantive Examination
The examination of a patent application by a patent office to determine whether a patent
should be granted on the claimed invention.
Substantive Reasons for Refusal (US):
A Trademark term. There are several substantive reasons for refusing registration of a
mark. The reasons for refusal include:
(1) likelihood of confusion; the mark is descriptive of the goods or services; primarily
geographically descriptive or primarily geographically deceptively;
(2) poor description of the goods or services;
(3) the marks is a surname; or
(4) mere ornamentation.
Substitute Patent Application (US):
An application which is in essence a duplicate of a prior (earlier filed) application by the
same applicant abandoned before the filing of the substitute (later filed) application; a
substitute application does not obtain the benefit of the filing date of the prior application.
Substitute Patent Application
A patent application that is a duplicate of an earlier application by the same applicant
abandoned before the filing of the later application.
Substitute Specification
340
A rewritten specification of a patent application filed after the filing date of the application
that corrects some error but that does not introduce new matter.
Suggestive Mark (US):
A Trademark term. A mark that, when applied to the goods or services at issue, requires
imagination, thought or perception to reach a conclusion as to the nature of those goods or
services.
Sui generis (UK):
Sui generis is a Latin phrase meaning "of its own kind". A sui generis system, for example, is
a system specifically designed to address the needs and concerns of a particular issue, such
as Traditional Knowledge.
Summary Judgement (UK):
This civil remedy is used when an action cannot be settled by agreement. In certain
circumstances it is possible to apply to the court for summary judgement. To obtain such a
judgement a plaintiff must satisfy the court that there is no defence to the action and that
he is entitled to get immediate judgement. This type of application can be made at any time
after the writ and statement of claim have been served on the defendant and the defendant
has indicated it will defend the action.
With this procedure a plaintiff can obtain prompt relief and avoid delaying tactics, which
may be used by the defendant to prolong the action.
Supplementary Protection Certificate (EP):
A Supplementary Protection Certificate extends the duration of a Patent. It is Granted solely
for medicines or plant patents. The maximum extension allowed is 5 years.
Surrender of Patent
An act that occurs concurrently with the filing of a reissue patent application in the USPTO.
Swearing back (US):
Presenting evidence of an invention date in the US earlier than the publication date of the
cited reference.
Swearing Back of Reference
Removing a reference (e.g., publication) from the prior art by providing evidence to the
USPTO that either (1) conception of the invention occurred prior to the effective date of the
reference and the inventor was diligent in reducing the invention to practice from just
before the effective date of the reference until reduction to practice occurs or (2)
completion of the invention (reduction to practice) occurred before the effective date.
Swiss type Claim (EP):
A Swiss type claim is of the form "Use of [a known compound X] in the manufacture of a
medicament for treating [a particular medical condition Y]". Swiss type claims are used
when a new use for a known pharmaceutical has been discovered.
Synergism (ALL):
What happens when two plus two makes five, that is, greater than the sum of its parts.
Generally referred to in Pharmaceutical Inventions where the interaction of two or more
compounds gives a super-additive effect.
T
Tangible Asset (ALL):
341
Physical entities, such as cash, equipment, and real estate. For accounting purposes,
accounts receivable are also usually considered tangible assets. The opposite of intangible
assets.
Teaching Away
The situation in which a prior art reference suggests that a claimed invention is not possible,
e.g., would not work.
Technical Field
The field of art to which the invention pertains.
Technology Manager
The person in a public sector or private sector organization who is responsible for managing
the intellectual property of the organization. Various titles are used for the position,
including Technology-Transfer Officer, Licensing Associate, etc. The Association of University
Technology Managers (AUTM) has over 1,200 members. Another such organization, the
Licensing Executives Society (LES), has over 6,000 members worldwide.
TechSource
TechSource is an electronic patent system which holds the scanned images of over 1.5
million patent documents dating back to 1920 and the text version of the documents from
1978.
Term of Patent
The period during which a patent can be enforced.
Terminal Disclaimer
A document filed with the USPTO by an applicant, assignee or patent attorney or agent
wherein a terminal portion of the normal term of the patent is given up.
Therapy (EP/UK):
Therapy is defined as covering any treatment, which is designed to cure, alleviate, remove
or lessen, the symptoms of, or prevent or reduce the possibility of contracting any disorder
or malfunction of the human or animal body. See http://legal.european-patent-
office.org/dg3/pdf/t910024ex1.pdf.
Thornhill claim (UK):
A claim with exactly the same scope as a specific priority document.
Threats action (UK):
A suit brought by a person threatened with an infringement action.
Tie-in clause (UK):
A clause in a licence agreement requiring the licensee to buy unpatented materials from the
licensor. Illegal.
Tie-out clause (UK):
A clause in a licence agreement requiring the licensee not to buy unpatented materials from
competitors. Illegal.
Title of Invention
A brief but technically accurate name for the invention.
Tort (UK/US):
A legal wrong, separate from breach of contract or breach of trust, for which remedies may
be obtained by suit in the civil courts.
Trade Name
A name used to identify a business entity.
Trade Secret
342
Information kept secret by an organization for the purpose of maintaining a competitive
advantage.
Trade secrets
Trade secrets are usually formulas, patterns, compilations, devices, processes, codes, data
that are specific to its owner, give him or her a business advantage over a competitor and
are kept secret or confidential.
Trade union
A trade union is an organization of employees formed for the purpose of maintaining or
improving their rights, privileges and interests for work related issues.
Trademark (ALL):
A Trademark is a distinctive sign or word, or combination of signs that identifies (marks)
certain goods and services as coming from or being made by a particular person or
proprietor. Once Registered, Trademarks may be renewed indefinitely.
Trademark
A word, name, symbol, or device, or any combination thereof, used by a manufacturer or by
a vendor in connection with a product.
Trade-mark agent
A trade-mark agent is a person who advises a client on trade-mark matters (see also
Registered Trade-mark Agent).
Trade-mark document
A document showing the wares and services identified by a certain trade-mark along with
other information from a trade-mark file with the Trade-marks Office.
Trade-mark law
The law relating to trade-marks.
Trade-mark right
The exclusive right an owner of a trade-mark has to control its use in association with the
product or service it identifies.
Trade-mark search
A thorough search of various trade-mark databases, business directories, telephone
directories and the like, to verify that your trade-mark will not be mistaken for another. It is
a form of research that assists in determining whether your mark fulfils the criteria of the
Trade-marks Act. A trade-mark search also helps you to determine whether your application
has a chance for success and provides peace of mind in order for you to avoid infringing
other people's trade-marks.
Trade-mark
A word, symbol or design (or combination of these), used to distinguish the wares or
services of one person or organization from those of others in the marketplace.
Trade-marks Act
Federal legislation governing trade-mark registration in Canada.
Trade-marks Journal
A publication of the Trade-marks Office issued weekly and containing all approved
applications and office rulings.
Traditional Knowledge:
Refers to tradition-based literary, artistic or scientific works; performances; inventions;
scientific discoveries; designs; marks, names and symbols; undisclosed information; and all
other tradition-based innovations and creations resulting from intellectual activity in the
industrial, scientific, literary or artistic fields. See http://www.wipo.int/tk/en/glossary/.
343
Trailer Clause (UK):
A clause in a contract of employment giving the employer rights to inventions made by the
employee for a limited time after he leaves his job.
Traverse
To dispute the decision of an Examiner. In proceedings before the USPTO, failing to traverse
an Examiner's reliance on alleged "common knowledge" or information that is alleged to be
"well known" in the art can result in the allegation becoming an admission, and, hence,
"fact" even though it is no true.
TRIPS (ALL):
Trade Related Aspects of Intellectual Property Matters. Part of GATT - General Agreement
on Tariffs and Trade.
U
Undue Experimentation
An amount of experimentation required to practice a disclosed invention that would be
unreasonable.
Unenforceable
A determination by a court that a patent cannot be enforced against a party that would
otherwise be infringing its claims, because the patent is defective.
United States Code
The laws of the U.S.
United States Patent and Trademark Office (USPTO)
The agency of the U.S. Federal Government responsible for administering the country's
patent system.
United States Patent and Trademark Office Code of Federal Regulations (CFR)
The regulations promulgated by the USPTO.
Unity statement (US):
The part of the specification that states what the invention is useful for.
Unobvious
The state of a claimed invention's not being obvious to a person having ordinary skill in the
art to which the invention pertains. Also called non-obvious. See Obviousness.
Unreasonable Experimentation
See Undue Experimentation.
Untapped market
Market demand that has not been met by an existing product or brand. An untapped
market can also include using an existing product in a new way.
Useful
Having some practical utility; fit for some desirable practical or commercial purpose. One of
the three requirements for patentability under U.S. law.
USPTO (US):
United States Patent and Trade Mark Office. See http://www.uspto.gov/.
Utility (patents)
Your invention must work or have a useful function otherwise it will fail the utility test.
Utility Model (JP/EP/AU):
Sometimes called a petty Patent. This type of protection has lower patentability
requirements than for a Full Patent. The period of Protection is less than for a Full Patent.
Well used in Japan and Germany.
344
Utility Model
A type of patent available in some countries that requires less inventiveness than necessary
to obtain a patent.
Utility Patent
A patent that covers a technology.
Utility
See Useful.
V
Valid (ALL):
A valid patent is an issued patent that is not invalid for one of several reasons, the most
common of which is that one or more of its claims read on prior art that was not considered
by the patent office during patent prosecution. While only a court can hold a patent is
invalid, many patents are informally referred to as being invalid to indicate that a court
would likely rule them so.
Valid
Sound and justified; meeting the test of patentability.
Validity
The issue of whether a patent is valid. See Valid.
Valuation of the intellectual property assets
The process of arriving at a dollar value of the intangible assets owned by a business, and
their estimated future benefit(s).
Verified Statement/Showing
A verified statement is one made with the stated knowledge that false statements and the
like are punishable by fine or imprisonment, or both, and may jeopardize the validity of the
application or any patent that issues from it. A showing is evidence that the statement is
true.
W
Whole contents approach (UK):
The principle that the whole contents (not just the claims) of an unpublished application
may destroy the novelty of a later application.
WIPO (ALL):
World Intellectual Property Organization based in Geneva, Switzerland. Administers and
Examines PCT applications. By filing one international patent application under the PCT an
inventor can simultaneously seek protection for an invention in over 120 Countries and
Regions throughout the world. See http://www.wipo.int/pct/en/.
WIPO
World Intellectual Property Organization, an agency of the United Nations, that acts as a
coordinating body for patent systems and procedures, as well as for trademark and
copyright matters.
Withdrawal
The permanent abandonment of a PCT patent application either before or after publication.
Priority claims as well as elections of States and the Demand may also be withdrawn.
Worked or Working
345
The condition of having met a country's requirement that an invention be put to use in
some way. Most countries require "working" of a patent within a specified time after grant.
Conditions for "working" requirements vary widely, from publication of availability of
licenses to actual manufacture or sale of a product that embodies the claimed invention.
Working requirements (UK):
Provisions that a patent will be subjected to compulsory licensing or lapse unless the
invention is operated commercially in the country in question.
World Intellectual Property Organization (WIPO)
An international organization dedicated to promoting the use and protection of works of the
human spirit. These works – intellectual property – are expanding the bounds of science and
technology and enriching the world of the arts. Through its work, WIPO plays an important
role in enhancing the quality and enjoyment of life, as well as creating real wealth for
nations.
Written Description
A description (disclosure) of an invention that is written in a patent application. A
requirement that a patent application clearly convey what the inventor(s) considered
his/her/their invention to be to a person skilled in the art.
346
Web Resources / Research Tools for Obtaining Intellectual Property Information
PATENTS
Indian Patents - http://ipindiaservices.gov.in/patentsearch/search/index.aspx
U.S. Patents - www.uspto.gov
International patent information - http://ipdl.wipo.int/
European Patent Office - http://www.european-patent-
office.org/espacenet/info/access.htm
Many specialized IP websites and blogs have appeared, including:
The National Agricultural Library - www.nal.usda.gov
The Life Science Web - www.sciweb.com/features/patents.cfm
Patent café - http://www.ipbookstore.com/index.asp
Bust patents - http://www.bustpatents.com
Paid commercial databases:
Dialog - www.dialog.com
Faxpat/Optipat - www.faxpat.com
Reedfax - www.reedfax.com
Lexis/Nexis - www.lexis.com
Westlaw - www.westlaw.com
Delphion - www.delphion.com
TRADEMARKS
Indian Trademarks -
http://ipindiaservices.gov.in/eregister/eregister.aspx
http://ipindiaservices.gov.in/tmrpublicsearch/frmmain.aspx
U.S. Trademarks [TESS] - www.uspto.gov
International trademarks - http://ecommerce.wipo.int/databases/trademark/output.html
347
COPYRIGHT
U.S. Copyrights - http://www.loc.gov/copyright/search
GEOGRAPHICAL INDICATIONS
Indian GI - http://ipindiaservices.gov.in/GirPublic/Default.aspx
DESIGN
Indian Designs - http://ipindiaservices.gov.in/designapplicationstatus/designstatus.aspx
Indian IPO Contacts Contact
IPO Address
Phone: 022-24123311, Fax: 022-24172288
Office of the Controller General of E-mail: [email protected]
Patents, Designs & Trade Marks
Bhoudhik Sampada Bhavan, Antop Hill,
S. M. Road, Mumbai - 400 037
Patent & Design Trade Marks & GI
Intellectual Property Office Phone: 022- Phone: 022-24137701,
Boudhik Sampada Bhawan, Antop Hill, 24153651, Fax: 022- Fax: 022-24140808
S. M. Road, MumbaiI - 400 037. 24130387 E-mail:
Phone: 24101144, 24148165 E-mail: mumbai- [email protected]
[email protected]
Intellectual Property Office Phone: 011- Phone: 011-28032382
Intellectual Property Office Building, 28034317 Fax: 011-28032381
Plot No. 32, Sector 14, Dwarka, New Fax:011-28034315 E-mail: [email protected]
Delhi-110075 E-mail:delhi-
[email protected]
Intellectual Property Office Phone: 044- Phone: 044-22502044
Intellectual Property Office Building,
G.S.T. Road, Guindy, Chennai-600032 22502080 Fax: 044-22502046
Phone: 044-22502081-84
Fax: 044-2502066
E-mail: chennai- E-mail:
[email protected] [email protected]
Intellectual Property Office Phone: 033- Phone: 033-23675103
Intellectual Property Office Building,
CP-2 Sector V, Salt Lake City, 23671987 Fax: 033-23677311
Kolkata-700091
Phone: 033-23679101 Fax: 033-23671988 E-mail:
Trade Marks Registry, Ahmedabad E-mail: kolkata- [email protected]
15/27, National Chambers, 1st floor,
Ashram Road, Ahmedabad 380009 [email protected]
Phone: 079-26587193
Phone: 079-26580567
Geographical Indications Registry
Intellectual Property Office Building, ---------------------------- Fax:079-26586763
G.S.T. Road, Guindy,Chennai-600032
Phone: 044-22502092 ------------------------ E-mail:
[email protected]
Phone: 044-22502091,
---------------------------- Fax: 044-22502090,
------------------------
E-mail: [email protected]
348
List of Acts / Rules / Treaties
The Trade Marks Act, 1999
The Trade Marks Rules, 2002
The Trade Marks (Applications and Appeals to the Intellectual Property Appellate Board)
Rules, 2003
The Intellectual Property Appellate Board (Procedure) Rules, 2003
The Trade Marks (Removal of Difficulties) Order, 2004
The Patents Act, 1970
The Patents Rules, 2003
The Copyright Act, 1957
The Copyright Rules, 1958
International Copyright Order, 1999
The Designs Act, 2000
The Designs Rules, 2001
The Geographical Indications of Goods (Registration and Protection) Act, 1999
The Geographical Indications of Goods (Registration and Protection) Rules, 2002
The Protection of Plant Varieties and Farmers Rights Act, 2001
The Protection of Plant Varieties and Farmers Rights Rules, 2003
The Protection of Plant Varieties and Farmers Rights Regulations, 2006
The Semiconductor Integrated Circuits Layout-Design Act, 2000
The Semiconductor Integrated Circuits Layout-Design Rules, 2001
The Biological Diversity Act, 2002
The Biological Diversity Rules, 2004
TRIPS Agreement
Strasbourg Agreement
Patent Cooperation Treaty (PCT)
Regulations under PCT
Budapest Treaty
Regulations under Budapest Treaty
List of Countries ratified PCT
Paris Convention
Nice Agreement
Madrid Agreement
Protocol relating to the Madrid Agreement
Trade Marks Law Treaty
Nice Classification
Uniform Domain Name Dispute Resolution Policy, 1999
Rules for Uniform Domain Name Dispute Resolution Policy, 1999
WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy, 1999
TEMPLATES
Template 1
DEED OF ASSIGNMENT OF COPYRIGHT
349
This DEED OF ASSIGNEMENT OF COPYRIGHT is made on this day of February
2002 between:
_________________ Pvt. Limited, a Company incorporated under the Indian
Companies Act, having its registered office ____________________________________
(hereinafter referred to as “the party of the first part/Party to the First Part”)
and
____________________________Pvt. Limited, a Company incorporated under the
Indian Companies Act, having its registered office at ____________________________
(which expression shall be deemed to mean and include its nominees and successors -
in-interest, business and title) of the One Part, (hereinafter referred to as “the party of
the second part/Party to the Second Part”)
WHEREAS, the Party of the First Part did in the year 1987 adopt and commence the use
of the Trademark ______________ (hereinafter referred to as “the Trademark”).
WHEREAS, in pursuance of its business thereof, the Party of the First Part did cause, in
the year 1983 under a contract of service in return for adequate consideration, the
visualization and the creation of the art work _____________________ (hereinafter
referred to as “the work”).
WHEREAS, the said works consist of original works under the following description
Artistic works
WHEREAS the said work comprises an original work entitled to be protected under the
Provisions of the Indian Copyright Act, 1957 as also under common law principles.
WHEREAS the Party of the First Part warrants that it is duly authorized to assign the
copyrights.
WHEREAS, for reasons of better management thereof the Party of the Second Part is
desirous of acquiring the Rights in the Copyrights in the work.
THIS DEED NOW WITNESSES AS FOLLOWS:
COPYRIGHT ASSIGNMENT:
That in consideration of the mutual understanding between the parties and a
consideration of better management of the said Intellectual Property as well as
_____________________paid by the Party of the Second Part to the Party of the First
Parts, of which the Party of the First Parts acknowledge full and final receipt, the Party
of the First Parts hereby assign onto the Party of the Second Part all rights, interests
and titles in the said work.
350
The assignment shall be absolute and valid until the entire tenure of copyright as
comprised in the work.
The assignment shall be valid for India and also for the rest of the world.
It is further agreed between the parties that not withstanding the provisions of
Sections 19 (4) of the Copyright Act, 1957, the Assignment shall not lapse or the right
transferred therein revert to the Party of the First Part, even if the Party of the Second
Part does not exercise the rights under assignment within a period of one year from
the date of this assignment.
The Party of the Second Part shall be entitled to file an application before the Registrar
of Copyrights to seek registration/recordal of existing registration of copyright
comprised in the work in its own name, and the Party of the First Part shall render all
possible assistance to the Party of the Second Part in seeking such recordals, inclusive
of executing all assistance as may be deemed necessary by such procedure.
If the Party to the second part deems it fit, the party to the first part shall ca use the
withdrawal/relinquishment of its pending/registered works as subsisting on the
register.
This assignment shall be binding on all legal heirs, successors and assigns of the Party
of the First Parts or the Party of the Second Part.
THAT WHEREAS, the parties named above have laid their hands on this deed of
assignment on the date, month and year mentioned above.
PARTY OF THE FIRST PART:
__________________________
________________Pvt. Limited.
Through
Mr. __________________
Managing Director
PARTY OF THE SECOND PART:
__________________________
________________Pvt. Limited.
Through
Mr. __________________
Managing Director
Witnesses:
1.
351
2.
Template 2
DEED OF ASSIGNMENT OF COPYRIGHT
This DEED OF ASSIGNEMENT OF COPYRIGHT is made on this day
______________________ between:
M/s ____________________________, New Delhi
(hereinafter referred to as “the party of the first part/Assignor”)
and
M/s ____________________ having its registered office at
_______________________________ New Delhi (hereinafter referred to as “the party of
the second part/Assignee”)
WHEREAS in pursuance of a business arrangement, the party to the second part did cause,
in May 2000, under a contract for services, in exchange for valuable consideration, the
receipt of which is acknowledged by the assignor, the creation of the art work for the
trademark_______________, (hereinafter referred to as “the work”)
WHEREAS the said work comprises an original literary work entitled to be protected under
the Provisions of the Indian Copyright Act, 1957 as also under common law principles
WHEREAS as the assignment of all right to the said work were not due an inadvertence,
transferred to the assignee, in order to finalize and regularize the ownership of the said
work and in pursuance to the understandings between the parties in respect thereof, it has
been decided to execute this deed of assignment. The said agreement shall be deemed to
have effect from _____________________.
THIS DEED NOW WITNESSES AS FOLLOWS:
That in consideration of the mutual understanding between the parties and a consideration
of Rupees _______ paid by the Assignee to the Assignors, of which the Assignors
acknowledge full and final receipt, the Assignors agrees to assign onto the Assignee all
rights, interests and titles in the said work.
The assignment shall be absolute and valid until the entire tenure of copyright as comprised
in the work.
The assignment shall be valid for India and also for the rest of the world.
352
No royalty shall be payable by the Assignee to the Assignor during the currency of the
Assignment.
It is further agreed between the parties that not withstanding the provisions of Sections 19
(4) of the Copyright Act, 1957, the Assignment shall not lapse or the right transferred
therein revert to the assignor, even if the Assignee does not exercise the rights under
assignment within a period of one year from the date of this assignment.
The Assignee shall be entitled to file an application before the Registrar of Copyrights to
seek registration of copyright comprised in the work in its own name, and the Assignors
shall render all possible assistance to the Assignee in seeking such recordals.
This assignment shall be binding on all legal heirs, successors and assigns of the Assignors or
the Assignee.
The terms of this assignment agreement shall be deemed to take effect from May 2000.
That whereas the parties named above have laid their hands on this deed of assignment on
the date, month and year mentioned above.
ASSIGNORS:
Through:
Mr.
(Authorized signatory)
ASSIGNEE: M/s
Through:
Mr.
(Authorized signatory)
Witnesses:
1.
2.
Template 3
DEED OF ASSIGNMENT day of between
THIS ASSIGNMENT is made this
353
(hereinafter called the “the Assignor”) of the one part AND
(hereinafter called “the Assignee”) of the other part
WHEREAS
The Assignor is the owner of the trademark registration in ______________ particulars of
which appear in the Schedule attached hereto.
The Assignor has agreed with the assignee of the sale of the aforesaid trademark to the
Assignee without the goodwill of the business as is hereinafter mentioned.
The consideration for the sale and purchase of the said trademark (s) is the sum of
_______________ which has been paid as the assignor hereby acknowledges.
NOW THIS DEED OF ASSIGNMENT WITNESSETH that for the consideration as stated above,
the Assignors hereby assign the said trademarks to the Assignees without the goodwill of
the business concerned in the goods for which the said trademark is registered.
IN WITNESS whereof the Assignor and the Assignee have executed this document in
accordance with their respective constitutions the day and the year above written.
(Corporate Seal) By____________________________
Assignor (Title)
(Corporate Seal) By____________________________
Assignee (Title)
SCHEDULE OF TRADEMARKS
TRADEMARK NUMBER:
TRADEMARK:
CLASS:
GOODS:
354
TEMPLATE 4
NON-DISCLOSURE & NON-COMPETE AGREEMENT
This NON-DISCLOSURE & NON-COMPETE AGREEMENT has been entered into this day
of…….. 2002 by and between
________________________________, an Indian firm having its registered offices at
(hereinafter called “COMPANY” which expression unless repugnant to the context shall
mean and include its subsidiaries, and its successors and assigns) and,
_____________________________, residing at ______________, (hereinafter referred to as
“Party” which expression unless repugnant to the context shall include all beneficiaries of the
said Party)
1. DEFINITIONS:
Intellectual Property: Includes existing and future Intellectual Property in the nature of
unregistered or registered rights to any and all patents, copyrights, trademarks and other
confidential and/ or proprietary information limited to that forming part of the subject
matter of the agreement, and inclusive of all intellectual property that is the subject of
ownership by Company and / or its subsidiaries, venture partners and predecessors in
interest, business and/ or title, arising out of the performance of this agreement and / or
other business arrangements, inclusive of but not limited to any oral arrangement which
Company may have entered into with the Party or other party.
Confidential Information: means, trade secrets, know-how, patents, utility models,
formulations, processes / methods of preparation, test data, conducted in-house or by /
through collaborative / venture efforts, inclusive of any and all improvements/
modifications, alterations substantial or otherwise etc that may have been effected to the
said confidential information by Company. Also as used in this agreement, the term
"Confidential Information" means (i) the terms and conditions of this Agreement inclusive of
but not limited to any other prior confidentiality agreement whether explicit or implied by
terms and relationship of Party with the company and his stated or present functions, that is
subsisting on the date of this agreement; (ii) Company’s, business plans, strategies, methods
and/or practices; (iii) any information relating to Company or its business that is not
generally known to the public, including but not limited to information about Company’s
personnel, products, customers, marketing strategies, services or future business plans, and
(iv) Process Information defined as data/test data/reports/studies in-house or contracted/
details/ quantified steps/ process details whether affixed on paper or transferred by way of
oral and / or practical instruction with reference to any product which company may own or
be associated with such as manufacturing information, procurement specifications, quality
control specifications, inspection and test protocols inclusive of other data that Company
has ownership off/ retains and is available and being used by Company with reference to its
business/ products/ R&D efforts and general and specific information not limited to
processes, machines, manufactures, composition of matter, know how, methods,
techniques, systems, software (whether in object, source or executable code)
documentation, data (irrespective of whether human or machine-readable) pertaining to
355
the company’s products, manufacture and sale of products envisaged by company’s know-
how or any other improved know-how.
Party: In relation to this agreement, means any individual under a contract of services or
contract for services, who was or is an employee of Company, whose status is permanent or
contractual in nature on the date of commencement of this agreement or the company’s
venture partners or its subsidiaries or beneficiaries or by any other entity or person either
retained by company or associated with the company.
Compete: in relation to this agreement means the indulging in of any activity, by Party,
commercial in nature or otherwise, that may result in a diversion / drop in sales, market
share, direct or indirect, with the business of the Company.
Whereas,
Party during his/ her normal course of business has access to the confidential information in
either its disembodied form or in the form of the final preparation/ process/ method etc
that company treats as being in the nature of confidential information.
The unauthorised disclosure by Party, of the said confidential information could expose the
Company to irreparable harm in monetary terms as well as in terms of reputation and
goodwill.
Company thus wishes to safe guard against the wrongful or inadvertent disclosure of its
confidential Information.
2. ACKNOWLEDGEMENT OF CONFIDENTIALITY:
Party hereby acknowledges that the confidential information disclosed to or accessed by the
Party is in the nature of confidential and proprietary information.
3. AGREEMENT NOT TO DISCLOSE OR ASSIGN/LICENSE:
Party hereby agrees that he/she shall hold in confidence and hereby agrees that he/ she
shall not assign, license, sell, use, commercialize or disclose except under terms of
employment or association with the Company, any confidential Information, Intellectual
property of the company, to any person or entity, or else under provision governed by this
memorandum except as Company may approve in writing.
Party undertakes to use at least the same degree of care in safeguarding the Confidential
Information/ Intellectual Property as he / she uses or would use in safeguarding his / her
own confidential information, and shall take all steps necessary to protect the Confidential
information from unauthorized or inadvertent disclosure.
4. REMEDIES FOR BREACH OF CONFIDENTIALITY.
Party agrees and acknowledges that any disclosure of any Confidential Information
prohibited herein or any breach of the provisions herein may result in irreparable injury and
damage to Company which will not be adequately compensable in monetary damages, that
Company will have no adequate remedy at law therefor, and that Company may, in addition
to all other remedies available to it at law or in equity, obtain such preliminary, temporary
or permanent mandatory or restraining injunctions, orders or decrees as may be necessary
356
to protect Company against, or on account of, any breach by the Party, employee/ex-
employee of the provisions contained herein.
Party agrees to reimburse the reasonable legal fees and other costs incurred by Company in
enforcing the provisions of the proposed transaction
NON-COMPETE:
Party inclusive of his/ her direct beneficiaries in business, interest and title in recognition of
the vesting of exclusive rights to the confidential and proprietary information of the
Company hereby agrees not to directly or indirectly compete with the business of the
Company and its successors and assigns during the term of the agreement.
Subsequent to the termination or expiration of terms of employment/ association with the
Company, the party undertakes and agrees not to compete with the Company for a period
of five years.
Following the expiration or termination of this contract and notwithstanding the cause or
reason for termination, the Party undertakes and agrees not to compete with the business
of the company using the company’s confidential information in its embodied or
disembodied form.
JURISDICTION:
Any action arising out of or pertaining to this agreement shall be initiated and maintained in
a court of competent jurisdiction at the High Court of Delhi at New Delhi.
7. GENERAL PROVISION.
This document constitutes the entire agreement between the parties with respect to the
subject matter hereof and supersedes all other communications, whether written or oral.
This Agreement is expressly limited to its terms and may be modified or amended only by
writing signed by both parties.
Neither this Agreement nor any rights or obligations inherent in Company’s confidential
information, know-how, trade secrets and other property and/ or intellectual property
hereunder may be transferred or assigned without Company written consent respectively.
Any attempt to the contrary shall be void.
8. TERM:
This agreement shall extend for the full and total period of the employment/ association of
the Party with the company and its successors in business, interest and title. The said
agreement in relation shall, after the period of employment/ association comes to an end,
extend for a period of Five years from date of end of such relationship.
In relation to the preservation of confidential information and Intellectual Property owned
by the company, this agreement shall extend in perpetuity.
357
9. SEVERABILITY:
The provisions of this agreement shall be deemed severable, and the unenforceability of any
one or more of its provisions shall not affect the enforceability of any of the other
provisions. If any provision is declared to be unenforceable, the parties shall substitute an
enforceable provision that, to the maximum extent possible in accordance with applicable
law, preserves the original intentions and economic positions of the parties. Waiver of any
provision hereof in one instance shall not preclude enforcement thereof on future
occasions.
The parties hereto consider the restrictions contained to be reasonable as to protect
Company’s interests and rights.
10. FORCE MAJEURE
Neither party will be responsible for any failure to perform its obligations under this
agreement due to causes beyond its control, including but not limited to acts of God, war,
riot, embargoes, acts of civil or military authorities, fire, floods or accidents.
NOTICE
All notices and communications required or permitted under this agreement shall be in
writing and any communication or delivery shall be deemed to have been duly made if
actually delivered, or after three (3) days after mailing, if mailed by registered post
addressed
IN WITNESS WHEREOF, the parties hereto have caused this Agreement to be
executed as of the date first written above their duly authorised representatives.
Company
___________________
Address:____________
Dated
Party
___________________
Address:____________
Dated
Witness:
1.
2.
358
TEMPLATE 5
Employee Innovation and Proprietary Information Agreement
TO :
In consideration of my employment by ________________________ [“the Company”)
and of the salary or wages paid to me, I agree:
(a) to disclose and assign to the Company as its exclusive property, free from any
obligations to me, all copyrightable works, inventions and technical or business innovations
developed or conceived by me solely or jointly with others during the period of my
employment, (1) that are along the lines of the businesses, work or investigations of the
Company or its affiliates to which my employment relates or as to which I may receive
information due to my employment, or (2) that result from or are suggested by any work
which I may do for the Company or (3) that are otherwise made through the use of Company
time, facilities or materials;
(b) to execute all necessary papers and otherwise provide proper assistance (at the
Company's expense), during and subsequent to my employment, to enable the Company to
obtain for itself or its nominees, patents, copyrights, or other legal protection for such
copyrightable works, inventions or innovations in any and all countries;
(c) to make and maintain for the Company adequate and current written records of all
such copyrightable works, inventions or innovations, in addition to this, to set forth below a
complete listing of all inventions, if any, which I made prior to or since my employment by
the Company and which I wish to exclude from the scope of this Agreement, subject to
acceptance in writing by the Company;
(d) at the Company's request, or upon any termination of my employment to deliver
to the Company promptly all items which belong to the Company or which by their nature are
for the use of Company employees only, including, without limitation, all written and other
materials which are of a secret* or confidential* nature relating to the business of the
Company or its affiliates;
(e) not to use, publish or otherwise disclose (except as my Company duties may
require), either during or subsequent to my employment, any secret or confidential
information or data of the Company or any information or data of others which the Company
is obligated to maintain in confidence; and
(f) not to disclose or utilize in my work with the Company any secret or confidential
information of others (including any prior employers), or any inventions or innovations of my
own which are not included within the scope of this agreement.
This agreement supersedes and replaces any existing agreement between the
Company and me relating generally to the same subject matter. It may not be modified or
359
terminated, in whole or part, except in writing signed by an authorized representative of the
Company. Discharge of my undertakings in this agreement shall be an obligation of my
executors, administrators, or other legal representatives or assigns. If any provision contained
in this Agreement is held to be invalid or unenforceable, the remaining provisions of this
Agreement shall be construed as if such provision did not exist, and the un enforceability or
invalidity of such provision shall not be held to render any other provision of this Agreement
unenforceable or invalid.
I represent that, except as stated below, I have no agreements with or obligations to
others in conflict with the foregoing.
Full Name
Component
Permanent Account No./Passport No.
Location
(Signed) _____
Witness (The Employee’s immediate manager or (Employee's signature-to include
other appropriate representative of the Company) employee’s first name in full)
Countersigned - Authorized Company Representative
(Required only when this Agreement supersedes prior Agreement)
The following are the only agreements to which I am a party, which may be in conflict with
the obligations undertaken above:
360
TEMPLATE 6
ASSIGNMENT OF INTELLECTUAL PROPERTY RIGHTS
This Assignment of Intellectual Property Rights (this “Assignment”) is made as
------------------- among [Assignor 1], Assignor 2], (collectively the “Assignors”) and [Name of
Party Receiving Rights], an [State] corporation (the “Company”).
CLAUSES
1. Assignment of Exclusive Rights. Through this instrument, the Assignors sell, grant,
convey and assign to the Company, exclusively for the United States market, in and for all
languages (including but not limited to computer and human languages whether now
existing or subsequently developed) all of the Assignors’ rights, titles and interests in or
under the Agreement, including all rights of the Assignors under all United States, Federal,
State or other “Governmental Authority” (as defined in Section 3 below), copyright,
trademark, trade secret, trade name, service mark, service name, patent, and all other
intellectual property or industrial property laws or rights of any type or nature concerning
the Agreement or the products identified in the Agreement. The foregoing assignment of
rights by the Assignors to the Company is all inclusive and is without reservation of any
right, title, interest or use in the United States market, whether now existing or
subsequently arising. The parties specifically agree that the Assignors have retained all
rights under the Agreement to market any and all of the products identified in the
Agreement in any market existing throughout the world other than the United States.
2. Further Instruments. The parties shall execute, acknowledge and deliver to the
Company, within five (5) days of the Company’s request for the same, such further
instruments and documents as the Company may request from time to time to facilitate
registration of any filings or record the transfers made in this Agreement in any public office,
or otherwise to give notice or evidence of the Company’s exclusive rights to exploit the
products identified in the Agreement, to exercise all the rights arising under the Agreement
anywhere in the United States and Canada.
3. Governmental Authority Definitions. For purposes of this Agreement, the following
terms shall have the following meanings: (i) the term “United States” shall mean the United
States of America, and all geographical territories and subdivisions of the United States of
America; (ii) the term “Other Nations” shall mean each country, principality or other
independent territory and each subdivision thereof, which is not a part of the United States;
(iii) the term “Supra-National Authority” shall mean the European Union, the United
Nations, the World Court, the Commonwealth, the North Atlantic Treaty Organization, the
General Agreement or Tariffs and Trade, the North American Free Trade Agreement and all
other multi-national authorities or treaties which have or may have from time to time
jurisdiction over any of the parties to or any performance under this Assignment; and (iv)
the term “Governmental Authority” shall mean any subdivision, agency, branch, court,
361
administrative body, legislative body, judicial body, alternative dispute resolution authority
or other governmental institution of (A) the United States, (B) any state, municipality,
county, parish, subdivision or territory of the United States, (C) all other Nations, (D) any
state, territory, county, province, municipality, parish or other subdivision of any Other
Nations, and (E) all Supra-National Authorities.
4. No Assignment. The Company may not assign any of its rights, duties or obligations
under this Assignment or the Agreement without obtaining the prior, written consent of the
Assignors, which consent the Assignors may give or withhold in their sole discretion.
5. Binding Effect. This Assignment is binding upon and shall inure to the benefit of the
Company, its successors and assigns and the Assignors and their successors and assigns.
This Assignment supersedes any prior understandings, written agreements or oral
arrangements between the parties which concerns the subject matter of this Assignment.
This Assignment constitutes the complete understanding among the parties, and no
alteration or modification of any this Assignment’s provisions will be valid unless made in a
written instrument which all the parties sign.
6. Applicable Law. The laws of the State of [State] (other than those pertaining to
conflicts of law) shall govern all aspects of this Assignment, irrespective of the fact that one
or more of the parties now is or may become a resident of a different state.
________________________ [Name of Party Receiving Rights],
[Assignor 1] an [State] Corporation
_________________________ By:______________________
[Assignor 2] Its:________________________
362
The words you are searching are inside this book. To get more targeted content, please make full-text search by clicking here.
IP_Module 15
Discover the best professional documents and content resources in AnyFlip Document Base.
Search