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India: To Apply Or Not To Apply for a Patent of Addition?

The scope of improvement is infinite, precisely because perfection is unattainable”.

Often, after filing a patent for an invention, additional modifications and improvement of the invention surface. The improvements or modifications may take place as a result of further experimentation to improve the invention, or as a result of feedback received from the industry.  

In such a scenario, where the invention is already protected by a patent, the improvement or modification over the original patented product or process may be protected by a “Patent of Addition” in India.

“Patent of Addition” falls under Sections 54, 55 and 56 of the Patents Act, 1970. A patent of addition facilitates the addition of new subject matter in the form of modifications and improvements to an existing disclosure of the parent application, while retaining the priority date for claims based on the original disclosure by the patentee.

Filing a new patent application is another option, but the priority date of the new patent will be different from that of the previously filed application (or parent application). The claims of the patent of addition inherit the priority date of the parent application. As a result, claims in the patent of addition can have a priority date that is before the filing of the patent of addition.

However, the applicant must be the same for the parent patent application and the patent of addition. If the improvement or modification involves an additional applicant, a patent of addition may not be pursued.

A patent of addition effectively enables an applicant to make incremental improvements and add embodiments that might not justify their own patent applications without needing to file parallel applications. More specifically, the applicant need not pay a renewal fee for a patent of addition, thereby saving costs.

A patent of addition is a suitable and attractive option for applicants to add additional features onto previously filed patent applications, it may not always be the right tool for the job, it has its own disadvantages.

In contrast to the perception that the patent of addition inherits the priority date of a parent application, certain claims may have their own priority dates. Only the claims fully supported by the disclosure of the parent patent application are entitled to the priority date of the parent patent application.

A term of a patent is 20 years from the date of filing of patent application and the term of patent of addition is limited to its parent application’s term. For example, a patent of addition filed in 2017 that claims priority to a parent application filed in 2013 will expire in 2033, as opposed to 2037 if a new patent application was filed instead of patent of addition application. This reduced patent tenure might result in loss of significant revenue from products or methods that pertains to the new patent claims supported by the patent of addition.

Further, introduction of new claims in the patent of addition may leave the door open for an opponent to assert the invalidity of parent application if the disclosure in the parent application do not justify the additional claims. In situations where support for the new subject matter of the patent of addition is not clearly set out in the parent application, it may be advantageous to file a separate application to utilise the distinctiveness of the new claims, and to obtain the benefit of a full patent term.

Accordingly, a patent applicant must look at all the pros and cons before making a decision to apply for  a patent of addition.

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Patent Searching RESEARCH by Genius Geeks

Patent Search: Determine how prior art is similar or different?

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Patent filing requires “money”. Patents have filing fees, professional fees and maintenance fees over the life of the patent and a large amount of money is required for the defence of the patent. A Patent search is carried out inorder to ascertain that the patent generates enough financial gains to justify the cost associated with its filing and the time and expense of moving forward with a patent application is a worthwhile.

For inventors, searching prior-art in the form of patents filed and granted should be the first step in the patent application process. Patent search gives an opportunity to discover which aspects of your invention can be claimed and high quality patent searches can help inventors anticipate about the scope of any patent claim. Without a patent search an inventor will describe the various  aspects of an invention as if they are equally important which won’t be the case.  

A patent is lot more than just a document. Careful assessment of patents found in the search report is tedious but the inventors who really take the time to read the key patents found in the search know its importance in contributing to the decision about whether to move forward with the patent application and then ultimately to meaningfully contribute to the preparation of a patent application.

Unfortunately, a lot of inventors only give a hasty and not thorough review of the patents found, thereby missing a great opportunity to use the prior art found to figure out what is most likely unique and patentable. Inventors perhaps look at the titles, the pictures, maybe read the Abstract and get overwhelmed.

For this reason inventors frequently choose to hire a patent professional or patent attorney for carrying out patent search. The inventor has the detailed knowledge of the invention, and is in the best position to identify the similarity and differences of the invention with respect to the prior art and the patent professional is in the best position to determine whether those differences will likely contribute to patentability through a collaborative approach.

A detailed compiled disclosure of the invention forms the foundation of a strong patent application. Determining how the prior art is similar and how it is different is essential to being able to gather great detail of information that can be put together while writing a patent application and invariably leads to a far more detailed written description of the invention.

Many a times inventors carry out a patent search themselves before filing a patent application and during the patent examination an exact invention already patented is found. But this is why you do the search!!!!

Thus, It is better to spend a modest amount of money on patent search before filing a patent application to learn about the prior patents instead of spending a lot of money on patent application only to learn later that no patent could be obtained.

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Patent Information Professional Certification
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International Patent Research Workshop for Intrigued Genius Minds

International Patent Research Workshop for Intrigued Genius Minds

Take your intelligence to next level. Welcome to the world of understanding innovations happening in cutting edge technologies across the globe. Learn more about current technology trends that will shape up economic disruptions across the globe. Learn more about innovations happening in the field of Artificial Intelligence, Cognitive Computing, understand use of chatbots, virtual agents, virtual assistants, wearables – augmented and virtual reality, IoT, Blockchain and other state of the art technology.

Albert Einstein, Thomas Alva Edison and Wolfgang Amadeus Mozart all were genius people in their lifetime.

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Now what set these people apart from the rest and made them achieve what they did?

It’s pretty simple really: they all simplified the existence of existing laws and the way of seeing life in different way.

 

Every human is eligible to attain that height of being genius. CHOICE is YOUR whether to BELIEVE in YOUR IDEAS and #makeithappen

Imperfection is beauty, madness is genius and it’s better to be absolutely ridiculous than absolutely boring. – Marilyn Monroe

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International Patent Research Workshop 

Venue: Aerocity, New Delhi

 

 

Demystifying Patent Research Basics

The patent research workshop will cover holistic view of the legal viewpoint

As to how to perform patentability search?

How to perform state of the art searches?

How to perform validity patent searches?

How to perform Infringement searches and freedom to operate searches?

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As a company it is important to understand the type of research which needs to be performed to identify the OPPORTUNITIES to create your own niche in the competitive market. For example, patentability search can be performed if any person or any innovator of a company has an idea or is doing a research.

WHEN to perform patentability search before filing a patent or after filing provisional patent application?

The company would like to know What is the SWOT analysis or in simple terms, identifying what are the different innovations or research which has already happened across the globe.

As a business owner knowing what happens in 2-3 years from now is a strategic move

When to protect intellectual property?

It’s very tough question to answer and it is not very easy to protect every creation of mind. Yes, there are some ways in which you can actually add some pointers and then file a patent application. Ideas are creation of mind and it might happen at one point of time the same idea is bouncing in multiple minds at neutron level across the globe.

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First very important factor for an innovation to be PATENT WORTHY is that an idea should be new. New means that idea should be new concept all over the world not only in India. So the idea actually qualify for even being patent worthy is performing patentability research. Many patent databases are very helpful to perform the patentability. One example is WIPO which stands for world intellectual property organisation.

The WIPO database is worldwide patent database. Other important databases are espacenet, and USPTO.

Many times we get patent queries regarding what kind of patent databases are you using for performing your any kind of patentability or any kind of patent research?

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Our BELIEVE is SIMPLE we use our intellect and use non paid patent tools.

Obviously, when you are using a paid database it is expensive. However, you are not using your intellect as a patent attorney or as a patent researcher to come up with ways and means to do your research in a manner which suffice the purpose of that particular invention or idea so that is very very important.

Over the years we have been able to find out better results by defining the kind of scope of work which we plan when we get a patent research query.

There is no STEP WISE MANTRA that would be applicable in all the patent searches. What is important is to analyse CRUX of the invention or the innovative features of the invention use your intellect as a patent researcher, and make the key strings.

What kind of strings will work better and if you have less time how to go about doing state of the art searches?

State of art search is basically talks about what kind of innovation already has happened in a particular sector. For example it can be a solar sector where by solar energy is being used to light up the lamp or it can be a LED sector where the technology relates to packaging of the LED to reduce the heat sink capacity.

However, what is important to understand what kind of approach or parameters are you going to take into considerations as a patent researcher.

KEY LEARNINGS FROM THE WORKSHOP

We will be discussing a lot on different kind of technologies. It is exciting to know that YOU don’t have to be an expert in a particular technology to do a patent research. Obviously, if you are a scientist or Phd in particular area it will take less time to understand the technology but at the same time as a patent researcher or as a patent attorney one should understand your job is to identify the innovative features.

Imbibing the acumen of a researcher and techno legal domain will is helpful when you are responding to office section response. The office action response is issued by the patent examiner and the patent examiner performs the search on a particular invention and will come up with objections so as a patent expert or patent attorney you need to respond to those objections. How to respond to office action response will be part of different workshop which we would be doing in the coming months.

How different kind of strategies can be applied as there is no one strategy which will be applicable to all patent searches but of course that key take away from the workshop would be that you would be able to understand what are the parameters you should actually look when you are doing the research.

Multinationals are coming in India so there is lot of job opportunities which are going to be there in near future and if you are already in the league of understanding how to perform patent research and can STRATEGISE a BUSINESS PLAN for the startup you get yourself a high package job.

You will be in a position to help the companies with their day to day activities whereby a lot of research is being performed by the scientists and many a times they have no clue whatsoever.

What kind of research is of prime importance?

What kind of research should be finished first?

What kind of research is being done by competitors?

For any questions we are reachable at legal@lawtcis.com or fill in the form https://goo.gl/forms/O9nHbSGDQo8P85WZ2

How much does it cost to get a patent pending?
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Difference between Patent pending and Patent granted

Difference between Patent pending and Patent granted

Patent-pending sounds great, doesn’t it? But it does differ from a regular patent. Not every patent application results in a granted patent.

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“Patent pending” (sometimes abbreviated by “pat. pend.” or “pat. pending”) or “patent applied for” are legal designations or expressions that simply means that you have applied for, but have not yet been granted, a patent.  

The words “patent pending” carry no formal legal significance but it communicates that you are “pursuing a patent” and have filed a provisional patent or a patent application. The patent applicants usually mark their articles with such words after filing an application because Patent-pending status protects your innovation while you are working through the patent process by keeping competitors from scooping your idea and marketing it as their own.

A strong patent portfolio help in fuelling investments for emerging tech companies. Investors often look to see whether a budding company has protected its intellectual property when determining whether to invest or not. It is more likely that you will be taken seriously if you come to the table with excellent technical knowledge and a patent-pending for your idea that’s been well-researched and profits projected, even if you don’t have all the connections with the big players. Holding a patent pending status also allows you to begin marketing for your product even before the patent is granted providing some control over the use of your product while warning others against attempting to file patents for substantially similar products.

However, the use of patent pending status by the patent applicant does not prohibit the third party to plead as innocent unless the patent number is indicated as the infringement action can be initiated only after the patent is granted.

Patent-pending status is temporary and only offers protection for a brief period of time, with protections similar to a regular patent. “Patent pending” (sometimes abbreviated by “pat. pend.” or “pat. pending”) or “patent applied for” are legal designations or expressions that can be used in relation to a product or process once a patent application for the product or process has been filed, but prior to the patent being issued or the application abandoned.

Not every patent application results in a granted patent. A patent can be licensed only after it is granted. Licensing a patent simply means that the patent owner grants permission to another individual/organization to make, use, sell etc. his/her patented invention according to agreed terms and conditions.

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What is a provisional patent application? What are the different types of patents?
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India: Divide And Patent. How to file a Divisional Patent in India?

India: Divide And Patent

How to file a Divisional Patent in India?

The basis of filing a divisional patent application is the existence of a plurality of inventive concepts in the parent patent application.

If in one parent patent application, the patent claims do not relate to a single invention and discloses two or more inventions, the patent law provides the inventor with the opportunity to protect multiple inventions disclosed in one patent to file a further patent application as a divisional patent application.

Applicable Indian Patent Law in context of Filing Divisional Patent Application Filing before Indian Patent Office:

Under Section 16, of the Indian Patent Act,1970 the Patent Controller has the power to make orders in respect of division of parent /main patent application which relates to a plurality of inventions. Section 16 (1) states that:

“A person who has made an application for a patent under this Act may, at any time before the grant of the patent, if he so desires, or with a view to remedy the objection raised by the Controller on the ground that the claims of the complete specification relate to more than one invention, file a further application in respect of an invention disclosed in the provisional or complete specification already filed in respect of the first mentioned application”.

Thus, in order to comply with the Controller’s objection on the ground that the patent claims of the complete patent specification relate to more than one invention, the patent applicant can file for a further patent application in respect of an invention disclosed in the provisional or complete specification already filed at any time before the grant of the patent.

However, the divisional patent application filed should not contain any new matter which was not part of the first patent application filed before the Indian Patent Office.

The divisional patent application claims the priority date of the parent patent application, contains generally the same specification as the parent patent application but has a different set of claims.

The divisional patent application shall be processed and examined when the request for examination is filed within the prescribed period.

The Divisional Patent Application is treated as a substantive Patent application with a separate application number. A divisional application shall be examined vis-à-vis the first mentioned parent patent application so as to avoid patent claim overlap resulting in double patenting.

A divisional patent application is treated as a substantial patent application in the following ways:

a) Patent fee(s) is required to be paid;

b) Separate request for examination requires to be made;

c) Patent will be prosecuted separately;

d) Treated as an independent patent

Our Indian law firm provides intellectual property law support services to domestic and foreign clients. We offer cost-effective IP consulting services in all areas of intellectual property law ( patents, trademarks, utility model or design) in India. The law firm works 365/24/7 and offers customized full services to wide array of clients from fortune 500 companies to mid size foreign intellectual property law firms. Over the years, we take pride in creating value for the customer.

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Replying to office actions is like writing on stone. Statements once made can't be retracted. A short sighted response aiming merely to overcome the objection
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Filing Response to Office Action for a Patent Application

 

Processing of a patent application is a multi-step process. After the patent application has been documented and filed, the Patent examiners examine the Patent application. For this, a request for examination must be recorded in the prescribed manner with the Indian patent office.

A request for examination of Patent application is filed within six months from the date of publication of Patent application.

(For fees related to request of examination of application of patent refer- http://www.ipindia.nic.in/writereaddata/Portal/IPOFormUpload/1_11_1/Fees.pdf)

No application for a patent shall be examined unless the applicant or a patent attorney makes a request in the prescribed manner for such examination within the prescribed period.

When a request for examination of a patent application has been made by an applicant or a patent attorney, the application and specification and other documents related thereto shall be referred at the earliest by the Controller to an examiner for making a report.

The Examiner at the patent office checks for its qualification and formal clothing according to the law of every locale. After which a preparatory judgment is passed which is called “FER or First Examination Report” which might be looking for any sort of correction or alteration, or specifically giving out dismissals if the application esteems to be not fit and qualified.

An examination report is issued by the Indian patent office. The examination report is likewise called as first examination report (FER). The examination report contains a rundown of complaints raised by an inspector of the Indian patent office. The complaints are both specialized and formal.

The candidate needs to record a response to the examination report within a year of issuance of the principal examination report.

An application for a patent shall be deemed to have been abandoned, if the applicant is unable to compile with all the requirements imposed on him by the patent examiner.

After which the patent lawyer or operators might set up a response containing contentions, clarifications that might be opposite or obliging the analyst’s needs according to the cases required which is additionally called “Office Action Response”.

If necessary, the inspector of the Indian Patent office frequently calls a candidate or his approved operator for hearing of the case. Once the inspector is happy with the response documented and the sum total of what conventions have been agreed by a candidate, the application is placed arranged by giving. In the event that the inspector is not happy with the response documented and need to meet a candidate or his approved specialist (if an operator is named) to clear up specific issues, he may call a candidate/operator for a hearing.

At long last, after various office actions and replies, the analyst will go to a judgment over the patent application. Same occasions occur amid pre and post allow restriction of a patent yet the office actions are directed by 3 substances, the candidate, the inspector and the resistance filing party.

RESPONSE TO OFFICE ACTION IN RESPECT OF INDIAN PATENT OFFICE

As per “The Patent Rules, 2003 as amended by Patent (Amendment) Rules, 2016” and opportunity to put the application altogether for allowing under “Section 21” has been lessened from a year to a half year.

The ideal opportunity for putting an application all together to allow under Section 21 of Patents Act, 1970 in situations where the principal proclamation of protests has been issued by the Office on or after 16 May 2016, might be a half year (six months) from the date on which the said first explanation of complaints is issued to the candidate to follow every one of the necessities forced under the Act and Rules made there under as per Rule 24B (5) of the Patents (Amendment) Rules, 2016.

The ideal opportunity for putting an application all together for allow under section 21 as recommended under sub-rule (5) might be additionally stretched out for a time of three months on a demand in Form-4 for expansion of time alongside endorsed charge, made to the Controller before the expiry of the period determined under sub-rule (5).

Response to the objections: General Principles The response to the examination report must be complete. The response must demonstrate that the objections raised by the analyst are not legitimate. Besides, the response must contain sufficient and successful contentions with regards to the patentability of the invention

FILING RESPONSE TO OFFICE ACTION WITH RESPECT TO USPTO

In the United States, an Office action is a report composed by an analyst in a patent examination system and sent to the patent applicant. The expression is used in numerous jurisdictions. As a rule, the candidate must respond to an Office action within 6 months from the date the Office action is issued or the USPTO will desert the application, the application charge won’t be discounted, and stamp won’t register.

Types of office action:

·NON-FINAL OFFICE ACTION: Non-Final Office Actions are always the first office actions issued for a patent application. In non-final office actions, the patent examiner states his conclusion on the patentability of the claims. After a survey of the non-final office action, the application has the choice of no less than one of the accompanying.       

Contending the examiner is mistaken, and

Revising the claims to beat the inspector’s rejections. While responding to the Non-Final Office Action, the patent attorney should state in the response that the response to the office is “An Amendment/Reply to an Office Action under 37 CFR 1.111.

FINAL OFFICE ACTION: Final Office actions are commonly second office actions that are sent by the examiner in the wake of checking on the candidate’s response to the first non-final office action. The Final Office Action may incorporate:

 The same rejections as the first non-final office action or

New rejections- When responding to final office actions, the candidate has managed the same opportunities as responding to a non-final office action, with the exception of government fees must be paid if the candidate is revising the claims. On the off chance that the candidate is not revising the claims, the patent attorney should state in the response to the Final Office Action that the response to the office action is “A Reply to an Office Action under 37 CFR 1.116.”

Further

 When a final office action is issued a survey of the claims on the merits of the claims is “closed.” Therefore, to correct the claims after a non-final office action a Request for Continued Examination (RCE) is required.

Essentially, a Request for Continued Examination reopens prosecution, enabling the patent attorney to change the claims. On the off chance that the patent attorney’s amendments and arguments defeat the present rejections when filing an amendment with an RCE (amendment under 37 CFR 1.114) the following office action issued will be a non-final office action or a notice of recompense.

Be that as it may, if the amendments and arguments are not persuasive, the following office action issued will be a final office action. Because of the extra fees to alter the claims, when filing an amendment under 37 CFR 1.114 it is urgent to have a meeting with the examiner to discuss the merits of amendments.

Inventors and start-ups should understand that an average patent prosecution process includes no less than 1-2 Requests for Continued Examinations are required.

There are fees associated with filing data disclosure statements. Data disclosure statements are letters from the candidate to the patent office stating that the candidate has discovered new references that may influence the patentability of their development.

Applicants can bid an Examiner’s decision if the claims have been dismissed twice. Accordingly, if the claims were not corrected inside a response to a non-final office action, the claims are opportune to be bid. In spite of the fact that I don’t suggest filing an interest after a first final office action has been issued for start-ups, for real corporations this a strategy that they can take. Amid bid (takes 2-3 years) or Pre-Appeal Conference Request (6 months – 1 year), a board will audit the claims, referred to craftsmanship, and analyst’s rejections to decide whether the inspector’s rejections have justified.

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Services

 

Our Indian law firm provides intellectual property law support services to domestic and foreign clients. We offer cost-effective IP consulting services in all areas of intellectual property law ( patents, trademarks, utility model or design) in India. The law firm works 365/24/7 and offers customized full services to wide array of clients from fortune 500 companies to mid size foreign intellectual property law firms. Over the years, we take pride in creating value for the customer.

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Patent Drafting| Protection of Inventive Concepts:

Preparation of Utility Patent Applications:

We at Tech Corp International Strategist provide drafting of patent applications (provisional/ non-provisional) specifically in life-sciences, food technology, automotive, image processing, communications technology, aerospace, computer-implemented inventions and software,  mechanical, electrical, electronics, wireless communication, and pharmaceutical sector.

Patent Drawings/Illustrations : 

  • Developing patent drawings/figures using state of the art systems.
  • Patent Search : Patent searches by expert patent researchers
  • Patentability Search
  • Validation/Invalidation Patent Search
  • Freedom to Operate Search| FTO Patent Search
  • Infringement Analysis/Equivalent Search including Claim Mapping Chart
  • Patent Information Search
  • Patent Searches for the state of the art
  • Competitor’s Patent Search
  • Patent Compliance Services: 

Our team of technical patent experts review the patent application to create and protect infringement-free patent specification for protecting the client’s innovation.

Competitors Patent Review Services : 

  • On-going competitor patent review and analyzing scope of the patent claims.
  • Preparing Patent Office Actions Responses: 
  • Handling all Office actions, hearing before the patent examiner and PTO correspondences.

Patent proofreading : 

Proofreading of Patent specifications to draft flawless patent application.

Patent Analysis & Portfolio Management:

Our team of expert patent lawyers understand the technology in question and then categorize a patent portfolio of a company according to the needs of the client. We conduct a market analysis in terms of identifying active companies, their areas of technical expertise, and find the family of the patents filed in different jurisdictions. We find the main players in the field of a patent on the basis of commercial viability, infringement aspects, strengths and weaknesses, find the key parameters for future research and analyze licensing terms for a particular patent.

Filing & Prosecuting of Patent Applications :

  • Regular patent application, ordinary patent filing before the Indian Patent Office
  • PCT Applications filing before the Indian Patent Office
  • PCT National Phase Applications filing before the Indian Patent Office
  • Convention Applications filing before the Indian Patent Office
  • Handling Office Actions from various jurisdictions including USPTO, EPO and other Asian countries

For more details please contact us at legal_desk@patentbusinessidea.com

Intellectual Property Contract Drafting & Review Services

  • IP Contractual matters
  • Intellectual PropertyLicensing agreements
  • Intellectual Property due diligence analyzes
  • For more details please contact us at legal_desk@patentbusinessidea.com

Trade Mark| Brand Protection Service in India

  • Brand Opinion Services
  • Trade mark  Clearance Searches
  • Filing of trademark applications, registration procedure
  • Trade mark Renewal
  • Trade mark opposition
  • Trade mark rectification
  • Action of infringement and passing off
  • Assignment, licenses and transmission, drafting deed form
  • Registration of trademark assignment
  • For more details please contact us at legal_desk@patentbusinessidea.com

Copyright Services in India

  • Copyright Registration
  • Copyright Assignment in India
  • Infringement of a copyright
  • Software programs copyright;
  • Drafting deeds for transfer of copyright and royalty

For more details please contact us at legal_desk@patentbusinessidea.com

 Industrial Design Services in India

  • Preparing, filing, and prosecuting design patent applications;
  • Design Renewal, Design opposition, infringement procedures in India.

For more details please contact us at legal_desk@patentbusinessidea.com