Aswal Associates | IP Law Firm New Delhi — Patents, Trademarks & Copyright Since 2005

India Patent Services

Comprehensive Guide to Patent Filing & Protection in India

Everything you need to know about filing, prosecuting, and protecting patents in India — from initial application to post-grant maintenance.

⚖️ What are Patents?

Patents are statutory monopolistic rights granted to protect inventions. Patent rights act as economic incentives to patentees and encourage research and development by providing exclusive rights to commercially make use of inventions.

Patents are granted to encourage disclosure of information to the public by the applicant so that the same could be used for further scientific and technological research and development. As Patents are statutory rights, they are enforceable within the territorial jurisdiction of the country by which they are granted.

📖 What is an Invention?

Invention means a new product or process involving an inventive step and capable of industrial application.

The inventive step involved in the invention must involve a technical advance as compared to the existing knowledge, or have economic significance, and must not be obvious to a person skilled in the art. The invention must be capable of being made or used in an industry.

✅ What Can Be Patented?

New products or processes
Inventions involving an inventive step
Inventions capable of industrial application
Improvements to existing inventions
Biotechnological inventions (subject to conditions)

❌ What Cannot Be Patented? (Section 3)

Frivolous inventions or contrary to natural laws
Inventions contrary to public order or morality
Mere discovery of scientific principle or abstract theory
Mere discovery of new form of known substance
Mathematical methods, mental acts, business methods
Computer programs per se (Section 3k)
Literary, dramatic, musical or artistic works
Methods of agriculture or horticulture
Methods of treatment of human/animal body
Plants and animals (other than micro-organisms)
Traditional knowledge
Atomic energy inventions (Section 4)

🏛️ Types of Patent Applications in India

Ordinary Application

Filed directly at Indian Patent Office without claiming priority from any earlier application

Convention Application

Filed within 12 months from the date of first filing in a convention country, claiming priority

PCT National Phase

Filed within 31 months from the date of priority via the PCT route under WIPO

Provisional Application

Filed to establish a priority date; complete specification must follow within 12 months

Divisional Application

Filed when the parent application contains more than one invention

Patent of Addition

Filed for improvement or modification of an invention already applied for or patented

📋 Basic Filing Requirements

Mandatory Requirements for Ordinary Patent Application:

Name, address, status, nationality, gender and age of applicant/s

Provisional or complete specification with description, claims, abstract, drawings

Name, address, nationality, gender and age of inventor/s

Sequence listing (if any)

Additional Requirements for Ordinary Patent Filing

Power of Authority

In favour of Indian Patent Attorney/agent, to be stamped in India. Notarisation not necessary.

Proof of Right

From inventor in writing, preferably notarised within six months of filing.

Declaration of Inventorship

Within 1 month of filing application or along with complete specification.

Foreign Application Details

Details of all corresponding foreign applications to be filed within 6 months.

Convention Patent Filing

Additional requirements in addition to ordinary patent filing:

DAS Code or Certified Copy of Priority Document

Within 3 months of filing in India

English Translation of Priority Document

With certificate of translation, within 3 months

PCT National Phase Filing

Additional requirements in addition to ordinary patent filing:

English Translation of PCT Application

If in language other than English

Priority Documents

Within 31 months from date of priority

⚠️ Important Publication Requirements

As per recent internal procedures, patent applications shall only be published if the Power of Attorney is filed within 3 months of requisitions. Abstract should be as per Indian Patent Law and specification should be in Hindi or English only. Publication is important as rights accrue from the date of publication in India.

🔄 Patent Prosecution Stages

Filing of Patent Application

Initial submission with required documents

Publication of Patent Application

On request or after 18 months from filing/priority date

Request for Examination

Within 31 months from filing or priority date

First Examination Report (FER)

Compliance required within 6 months (extendable by 3 months)

Response and Compliance

Addressing examination objections raised in FER

Hearing (if required)

With Controller of Patents if objections are contested

Grant of Patent

Issuance of Letter Patent Document

Publication Details

Patent applications are ordinarily published after 18 months from date of filing or priority, whichever is earlier.

Important: From the date of publication the applicant has the same right as a patentee but the right can be exercised only after grant of patent. The right can be exercised retrospectively from date of publication.

⚡ Expedited Examination

Available for:

Startup applicants
Small entity applicants
Female natural person applicants
Government departments
PCT applications with India as ISA
Government institutions

👥 Pre-Grant Opposition

From the date of publication of the patent application in the Indian Patent Journal till the patent is granted, any person by way of representation can file an opposition to the Patent Application, provided a request for examination has been filed. The patent shall not be granted until the opposition is set aside.

📅 Duration of Patent

Years of Protection

20 years from date of filing in India for ordinary and conventional patent applications, and 20 years from date of filing of International PCT application for PCT national phase applications.

🔁 Renewal Requirements

After grant, renewal fee must be paid from the 3rd year onwards till the 20th year and must be paid before the expiration of the respective years.

💰 Advance Payment Discount

If annual fee is paid in advance of more than 4 years, a discount of 10% shall be applicable.

⚖️ Post-Grant Opposition

The patent grant can be opposed by any interested person within 12 months from the date of publication of the Grant of patent in the Patent Office Journal by a notice of opposition.

📊 Statement as to Working of Patent

Mandatory Requirement

Every 3 years from the date of Grant of Patent, a statement in respect of working of Patented invention in India for preceding 3 calendar years is to be filed by September 30.

⚠️ Warning

Non-filing of such statement can result in penalty by the Indian Patent Office.

💚 80% Discount on Official Fee

Available for:

Natural persons
Startups
Small entity
Educational institution

Requirements for Discount

Evidence in support of status along with Form 28 to claim discounted fees. If patent is assigned to a non-natural person, the entire discounted fee must be paid at assignment registration.

🤝 Licensing and Assignment of Patents

Patents are like moveable property and the patentee has the right to use, sell, transfer, license, mortgage and pledge the patent.

Legal Requirements:

Agreement must be in writing

Signed by all owners

Properly stamped

Registered within 6 months

⚖️ Compulsory Licensing for Patents

Timeline and Grounds

After 3 years from Grant of Patent, compulsory licensing can be granted by the Controller of Patents to any interested person on the following grounds:

The reasonable requirements of the public have not been satisfied
The patented invention is not available to the public at a reasonable price
The invention is not worked commercially to the fullest extent in the territory of India

🌐 Patent Infringement

Acts Constituting Infringement

Making, using, offering for sale, selling or importing a patented invention without authorisation
Using a patented process or product made by a patented process

Remedies Available

Injunction (temporary or permanent)
Damages or account of profits
Seizure and forfeiture of infringing goods
Criminal action in case of wilful infringement

India Trademark Services

Comprehensive Guide to Trademark Registration & Protection in India

Everything you need to know about filing, registering, and protecting trademarks in India — from initial search to post-registration enforcement.

™️ What are Trademarks?

A 'Trademark' means a mark capable of being represented graphically and which is capable of distinguishing the goods or services of one person from those of others.

It also denotes the origin of goods and carries goodwill of the business in respect of which it is used.

📋 What Marks Can Be Registered in India?

Besides goods, India now allows registration in respect of service marks, shape of goods, packaging or combination of colors.

A 'Mark' includes:

Device, brand, heading, label, ticket

Shape of goods, packaging

Name (including abbreviations)

Combination of colors

Signature, word, letter, numerals

Any combination thereof

Multi-class Applications

A single multiclass application can be filed in India in respect of all the international classes.

✅ Main Requirements of Trademarks

1. Distinctive

Must be adapted to distinguish the goods/services of the applicant from that of others

2. Not Deceptive

Must not mislead consumers about the nature, quality, or origin of goods/services

Selection Guidelines

While selecting a trademark, words that are directly descriptive of the goods, common surnames or geographical names should be avoided as these confer weaker protection.

Note: A word having direct reference to character or quality of goods is not registrable, however it is registrable if it has acquired distinctiveness through long and continuous use.

Use vs Registration: Under Indian Trademarks law more significance has been given to "use" of the mark than "registration".

🌐 Trademark Law in India

Indian Trademark Law has been codified in conformity with the International Trademark Law and is about to undergo an amendment to be at par with International Trademark Law.

Madrid Protocol

India has signed the Madrid Protocol, allowing Foreign Applicants to file an International Application designating India (once notification is issued in this regard).

🏛️ Trademark Offices in India

Five Trademark Registries

New Delhi

Ahmedabad

Mumbai

Chennai

Kolkata

Filing Jurisdiction

Applications must be filed based on the territorial jurisdiction where the Applicant is located. For foreign applicants, applications must be filed before the trademark registry within whose territorial jurisdiction the agent/attorney is located.

📄 Trademark Applications in India

Trademark Applications in India can be classified under two categories:

1. Ordinary Trademark Application

Without any priority claim

2. Conventional Trademark Application

Must be filed within 6 months from date of filing of conventional application

Conventional Application Requirements

In case of conventional trademark application, certified copy of the priority document has to be filed within 2 months from the date of filing of application in India.

Additional Trademark Types: Besides above trademark applications, there are also certification trademarks and collective trademarks that are registrable in India.

📋 Trademark Filing Requirements

Specimen of the Trademark for Agent

Black and White:
• 6 copies if in print form
• Single copy if provided via email

Color:
• 12 copies if in print form
• Single copy if provided via email

Shape of Goods: 3–5 different views (top, bottom, left side, right side and front view)

Basic Requirements for Filing:

1. Applicant Details

Name, address, nationality and particulars

5. User Date

In India or proposed to be used

2. Trademark Specimen

Including different views for shape marks

6. Priority Details

If any, with application number and date

3. International Class

Appropriate classification

7. Translation

In English if mark is not in Indian language

4. Description

Of goods or services

8. Evidence of Use

On notarised affidavit if used

Power of Attorney

Power of authority has to be stamped as per Indian Stamps Act and can be filed later (before or along responding to official letter). Notarisation is not mandatory.

🔍 Trademark Search

To avoid objections and/or oppositions, it is desirable to conduct a Trademark search to ascertain existence of any prior registrations of identical or similar marks.

Word Mark Search

Results available within 1–2 working days

Device/Logo Search

Results available within 1–3 working days

🛡️ Defenses Against Previous Registration

The following defenses are available against any previous registration of any identical or similar trademark:

Honest Concurrent Use

Both parties using the mark independently

Acquiescence

Previous owner's acceptance of use

Prior User

Earlier use before registration

🔄 Trademark Registration Process

Following stages are ordinarily encountered while registering a trademark in India:

Filing of Trademark Application

Application filed and fee receipt with application number issued

Official Letter with Objections

If any objections are raised by the examiner

Reply to Official Letter

Response required within 1 month

Hearing (if required)

Before the Registrar if necessary

Provisional Acceptance

Application provisionally accepted

Publication in Journal

Published in Indian Trademark Journal

Opposition Period

4 months from publication date for opposition

Registration of Trademark

If no opposition or opposition is set aside

Registration Certificate

Final certificate issued

⚡ Express Examination of Application

Indian Trademarks law allows express examination of the trademark application on filing of additional official fee along with a declaration stating the reason for such request.

Publication Details

After the trademark application has been provisionally accepted by the Registrar, the application shall be published in the Indian Trademarks Journal inviting opposition from public.

Opposition

After publication, the trademark remains open to opposition by public for a period of 4 months.

On filing of notice of opposition, the application shall not proceed towards registration until the opposition is set aside.

✅ Registration

If there is no opposition or the opposition proceedings have been decided in favour of the Applicant, the Trade Marks Registry shall accept the trademark and issue a registration certificate.

🔁 Term & Renewal

Duration: 10 years from date of filing
Renewable: Every 10 years thereafter

⭐ Well Known Mark

The concept of "well known mark" has been introduced in India and amended Section 2(zg) defines a well-known mark as:

"Well-known trademark, in relation to any goods or services, means a mark which has become so to the substantial segment of the public which uses such goods or receives such services that the use of such mark in relation to other goods or services would likely to be taken as indicating a connection in the course of trade or rendering of services between those goods or services and a person using the mark in relation to the first mentioned goods or services."

Considerations for Determining a "Well Known Mark"

While determining whether the mark is well-known, the registrar will take into consideration:

(a) Knowledge or Recognition

Knowledge or recognition in the relevant section of the public including knowledge obtained through promotion

(d) Registration Records

Duration and geographical area of any registration or publication for registration

(b) Duration and Extent of Use

Duration, extent and geographical area of any use for that trademark

(e) Enforcement Records

Record of successful enforcements of rights, recognition by courts or registrar

Duration, extent and geographical area of promotion including advertising, publicity and presentations

Relevant Section of Public

"Relevant section of Public" may be:

Actual or potential consumers
Persons involved in channels of distribution
Business circles dealing with the type of goods or services to which the mark is applied

What Registrar is NOT Required to Consider

Not Required to Consider:

a) The Trademark has been used in India
b) The Trademark has been registered
c) The application for registration has been filed in India
d) The trademark is well known in or registered in any other jurisdiction
e) The trademark is well known to the public at large in India

Court or Registrar Recognition

Whereas a trademark has been determined to be well known in at least one relevant section of the public in India by any court or Registrar, the Registrar shall consider that trademark as a well-known trademark for registration under this Act.

📝 Licensing and Assignment

Trademark can be licensed as well as assigned like moveable property for a consideration.

Licensing

Trademarks can be licensed to third parties while retaining ownership, allowing controlled use under agreed terms.

Assignment

Trademarks carry goodwill and can be assigned with or without goodwill to transfer ownership.

Important Note on Goodwill

Trademarks carry goodwill and can be assigned with or without goodwill. The goodwill represents the reputation and customer recognition associated with the trademark.

⚖️ Legal Framework Summary

Key Principles

Use over Registration

Priority given to actual use

Distinctiveness

Must distinguish goods/services

Non-deceptive

Must not mislead consumers

Protection Mechanisms

Registration

10-year renewable protection

Opposition

Public challenge mechanism

Well-known Status

Enhanced protection across all classes

📖 Best Practices for Trademark Protection

Before Filing

Conduct thorough search
Choose distinctive marks
Avoid descriptive terms

During Process

Respond to objections timely
Monitor publication
Prepare for oppositions

After Registration

Renew timely
Monitor infringement
Maintain use records

India Copyright Services

Comprehensive Guide to Copyright Registration & Protection in India

Everything you need to know about copyright registration, licensing, assignment, and enforcement in India under the Copyright Act, 1957.

©️ What is Copyright?

Copyright is a combination of various rights that allows the owner of copyright the exclusive right to print, distribute, and copy the work and to prohibit others from doing the same without his consent.

Key Principles

Original expression of an idea is subject matter of copyright
Copyright is provided automatically to the author
No formal registration required
Extends to unpublished as well as published works

Automatic Protection

Copyright is provided automatically to the author of any original work covered by the law as soon as the work is created. The author does not have to formally register the work.

📖 Types of Works Protected by Copyright

Literary Works
Including computer programmes

Dramatic Works
Plays, screenplays, scripts

Musical Works
Compositions, songs, melodies

Artistic Works
Paintings, sculptures, drawings

Cinematographic Films
Movies, documentaries, videos

Sound Recordings
Audio recordings, albums

🏛️ Copyright Office in India

🏢

Single Copyright Office

The only Copyright office in India is located at New Delhi. All Indian and foreign applications have to be filed in the New Delhi office for copyright Registration.

📋 Copyright Filing Requirements in India

Following are the basic requirements for filing of a Copyright application in India:

1. Applicant Details

Name, address, nationality and particulars (individual, society, trust, partnership firms or company)

7. Publication Details

Details of publication including name, address, nationality of publishers (if published)

2. Work Classification

Class and description of work

8. Rights Ownership

Details of owners of various rights, extent of rights, assignment and license particulars

3. Title of Work

Clear identification of the copyrighted work

9. Authorized Persons

Name, address, nationality of persons authorized to assign or license

4. Specimen Copies

2 specimen copies of the work

10. Work Location

Location of work, person in possession (artistic work), completion year (architectural work)

5. Language of Work

Language in which the work is created

11. Design Act Information

Whether artistic work is registered or capable of being registered under Designs Act

6. Applicant's Interest

Nature of applicant's interest in copyrighting the work

12. Trademark NOC

Certificate (NOC) from Registrar of trademarks if artistic work is used in business

13. Power of Authority

Power of Authority from Applicant (separate for each work)

14. NOC Requirements

NOC from the Authors/Publisher

🔄 Copyright Registration Process

Following stages are ordinarily encountered while registering a copyright in India:

Electronic-Online Filing

Physical Filing

Physical filing of official copy of acknowledgement slip with required documents (2 copies of work, NOCs, Power of Attorney, Form XIV)

Official Letter with Objections

Issuance of official letter with objections, if any

Reply to Official Letter

Response to objections within 1 month

Hearing (if required)

Hearing before the Copyright Officer if necessary

Acceptance of Copyright

Application accepted for registration

Registration Certificate

Issuance of Registration Certificate

Required Documents for Physical Filing

Mandatory Documents

Official copy of acknowledgement slip
2 copies of the work
Signed Form XIV (generated online)

Additional Requirements

NOC from Author/Publisher
NOC from Trademark Registry (if applicable)
Power of Attorney

📅 Term of Copyright

1. Published Works (General)

Literary, dramatic, musical and artistic works (other than photographs) published during lifetime of author

60 years from first day of following year in which the author dies

6. Sound Recordings

60 years from first day of following year in which sound recording is first published

2. Anonymous / Pseudonymous Works

Published anonymously or pseudonymously
Note: If author's identity disclosed before expiry, duration as per category 1 applies

60 years from first day of following year in which work is first published

7. Government / Institutional Works

Where Government, public undertaking or international organisation is first applicant

60 years from first day of following year in which work is first published

3. Posthumous Works

Literary, dramatic, musical and artistic works published posthumous

60 years from first day of following year in which work is first published

8. Broadcasting

25 years from first day of following year in which broadcast is first made

4. Photographs

60 years from first day of following year in which photograph is first published

9. Performance

50 years from first day of following year in which performance is first made

5. Cinematographic Films

60 years from first day of following year in which film is first published

Foreign Works

In case of foreign works, the term shall not exceed the term for which the work is originally protected in the country of first publication.

🛡️ Exception to Infringement of Copyright

Fair Dealing

A fair dealing with literary, dramatic, musical and artistic works (not being a computer programme) is permitted for the following purposes:

Private Use & Research

Including research, criticism or review of the work

Judicial Proceedings

For purpose of judicial proceeding or reporting of judicial proceedings

News Reporting

For purpose of reporting in newspaper, magazine or similar periodical

Educational Purpose

For instruction, education or examination purposes

Broadcasting & Recording

By broadcast, sound recording or by photographs

📝 Licensing and Assignment

Owner of the Copyright can license as well as assign his work.

Assignment Requirements

Written Agreement

The assignment has to be in writing

Clear Identification

Must clearly identify the work

Duration & Territory

Must specify duration and territorial extent

Employment Works

In case of work under employment, the employer shall be the owner of the work in absence of any agreement to contrary.

⚖️ Compulsory Licensing

Compulsory Licensing Availability

Compulsory Licensing can be invoked under certain circumstances for both published as well as unpublished works.

Published Works

Compulsory licenses may be sought when copyright holder fails to make the work reasonably available to the public.

Translation Purposes

Compulsory licenses can be sought for the purposes of production and publication of the translation of works.

Application Process

Applications for compulsory licensing are reviewed by the Copyright Board, which considers factors such as public interest, availability of the work, and reasonable terms for licensing.

📊 Copyright Protection Summary

Automatic Protection

Protection from creation
No registration required
Includes unpublished works

Registration Benefits

Prima facie evidence
Legal presumption
Enforcement advantages

Duration

Generally 60 years
Broadcasting: 25 years
Performance: 50 years

India Design Services

Comprehensive Guide to Design Registration & Protection in India

Everything you need to know about registering and protecting industrial designs in India — from eligibility and filing to prosecution, term, and offices.

🎨 Meaning under the Designs Act, 2000

As per Indian Designs Act, 2000, "design" means only the features of shape, configuration, pattern, ornament or composition of lines or colours applied to any article whether in two dimensional or three dimensional or in both forms, by any industrial process or means, whether manual, mechanical or chemical, separate or combined, which in the finished article appeal to and are judged solely by the eye.

What is NOT included in Design:

Any mode or principal of construction
Anything which is in substance a mere mechanical device
Any trademark, property mark and copyright as defined under Indian laws

✅ What Designs are Registrable?

Requirements for Registration

Only those designs that are new or original are subject matter of registration in India.

Disclosure Restrictions

Designs which have been disclosed to the public anywhere in India or in any other country by publication in tangible form or by use or in any other way prior to the filing date, or where applicable, the priority date of the application for registration are not registrable.

Commercial Manufacturing Limit

No copyright in the design shall vest in Applicant if more than 50 copies of the design have been manufactured commercially.

Non-registrable Designs — A design is not registrable if:

It is not significantly distinguishable from known designs or combination of designs
It comprises scandalous or obscene matter

📄 Design Applications in India

Design applications in India can be classified under two categories:

1. Ordinary Design Application

Without any priority claim

2. Conventional Design Application

Must be filed within 6 months from date of filing of conventional application

📋 Design Filing Requirements in India

Following are the basic requirements for filing an ordinary design application in India:

1. Applicant Details

Name, address, nationality and particulars (natural person, small entity, start up or others)

5. Statement of Novelty

Statement as to novelty of the design

2. Classification

Class & Subclass according to Locarno classification

6. Originality Views

Representations illustrating the views of the article wherein the originality resides

3. Title of Design

Clear identification of the design

7. Power of Authority

Authorized representation document

4. Visual Representations

3 sets of Photographs/drawings/tracing with various views (front, rear, top, bottom, left side, right side and/or perspective views) — size preferably 13×10 cms

8. Entity Status

If start up or small entity status is claimed, duly executed Form 24 along with evidence needs to be filed

Power of Authority Requirements

Power of authority has to be stamped as per Indian Stamps Act and can be filed later (before or along responding to official letter). Notarisation is not mandatory.

Conventional Design Filing in India

Additional requirements in addition to what are applicable for ordinary design filings:

Priority Document

DAS code or certified copy of priority document

Translation

English translation of priority document along with certificate of translation in support, if priority document in language other than English

Filing Timeline

In case of conventional design application, DAS code or the certified copy of the priority document along with English translation (wherever applicable) should be provided with the Application.

An extension for up to 3 months is available on payment of monthly extension fee.

🔄 Design Prosecution in India

Design prosecution in India involves following stages:

Filing & Receipt

Filing of application & issuance of receipt of fee along with application number

Examination Report

Issuance of Examination report with objections, if any ordinarily within 1–4 months of filing of application

Response to Examination

Responding to Examination report within 6 months from date of filing of application in India

Can be extended further by 3 months on payment of additional fees and request before expiry of 6 months from date of filing

Hearing (if any)

Hearing before the Design Controller if required

Acceptance

Acceptance of application

Registration Certificate

Issuance of Registration certificate

Key Timelines

Examination Report

1–4

months from filing

Response Time

months from filing

Extension Available

additional months

📅 Term of Design Registration

Total Protection Period: The term of registration of copyright in Design is for 15 years in total.

Initial Registration

Years

Valid from date of registration

Renewal Period

Years

Additional extension available

🔁 Renewal of Designs

Renewal Process

A registration of design can be renewed for a further period of 5 years after expiry of initial registration of 10 years.

🕐

Renewal Timing

Before expiry of initial 10-year term

📄

Application Required

Formal renewal application must be filed

⚠️

One-time Renewal

Only one renewal period allowed

Important Note

The renewal is a one-time extension. After the total 15-year period (10 years initial + 5 years renewal), the design protection expires and cannot be further extended.

Design Protection Timeline

Initial Protection: 10 Years

Renewal: 5 Years

Total Maximum Protection: 15 Years

🏛️ Design Offices in India

Four Design Offices: There are four design offices in India and depending upon territorial jurisdiction where the Applicant is located, the application has to be filed.

Office Locations

New Delhi
Mumbai
Chennai
Kolkata

Filing Jurisdiction

Applications must be filed based on territorial jurisdiction where the Applicant is located.

For foreign applicants, applications must be filed before the design office within whose territorial jurisdiction the agent/attorney is located.

🌐 E-filing and Office Services

E-filing Available

E-filing of most of the design forms is now possible.

Branch Office Services (Physical Filing)

In case of physical filing, only the following services are available with branch offices:

1. New Applications

Filing of new design applications

3. Cancellation Petitions

Petition for cancellation of registration of design

2. Extension Applications

Application for extension of copyright (one time renewal)

4. Rectification Applications

Application for rectification of register of design

Post Filing Processing

Post filing, these applications/petitions are to be forwarded to Kolkata Head office.

Rest of the forms/documents are to be filed with Kolkata head office directly or through e-filing mode.

IP Licensing Services

Comprehensive Guide to IP Licensing & Technology Transfer in India

Everything you need to know about licensing intellectual property, technology transfer agreements, and related commercial transactions in India.

🤝 What is IP Licensing?

IP licensing is a contractual arrangement through which the owner of intellectual property (licensor) grants permission to another party (licensee) to use, manufacture, sell, or otherwise exploit the IP in exchange for consideration — typically royalties or a lump sum fee.

Unlike an assignment, licensing does not transfer ownership of the IP. The licensor retains title and can grant multiple licences to different parties. Licensing enables IP owners to commercialise their rights without losing control over the underlying intellectual property.

⚖️ Legal Framework

Patents

Sections 68–70 of the Patents Act, 1970 govern licensing and assignment of patents

Trademarks

Sections 48–56 of the Trade Marks Act, 1999 govern registered user and licensing arrangements

Sections 30–32B of the Copyright Act, 1957 govern licensing including compulsory licences

Designs

Sections 30–33 of the Designs Act, 2000 govern assignment and transmission of design rights

📊 Key Benefits of Licensing

Monetise IP without transferring ownership
Expand market reach through licensees
Earn royalties from existing IP portfolio
Retain rights for future exploitation
Share risk with licensee
Access new markets and territories
Leverage licensee's distribution networks

🏛️ Regulatory Considerations

FEMA & RBI Guidelines

Cross-border royalty payments require compliance with FEMA, 1999 and RBI guidelines. Royalty rates for technology transfer under automatic route are permissible subject to arm's length pricing.

Competition Law

IP licensing agreements must not contain anti-competitive clauses under the Competition Act, 2002. The Competition Commission of India (CCI) scrutinises excessive royalty demands and tie-in arrangements.

Stamp Duty

IP licensing agreements are chargeable instruments and must be duly stamped under the applicable State Stamp Act before execution or within 3 months of receipt in India.

Tax Implications

Royalties paid to non-residents are subject to withholding tax (TDS) under the Income Tax Act, 1961, subject to applicable Double Taxation Avoidance Agreements (DTAA).

📋 Types of Licences

Exclusive Licence

Only the licensee can exploit the IP within the agreed scope. Even the licensor cannot use the IP during the licence period. Commands highest royalty.

Non-Exclusive Licence

Licensor can grant the same rights to multiple licensees simultaneously. Most common form of licensing. Licensor also retains the right to use the IP.

Sole Licence

Only one licensee is appointed but the licensor also retains the right to use the IP. No other third party licensees may be appointed.

Compulsory Licence

Granted by government authority without consent of IP owner under specified circumstances — applicable to patents and copyrights in India.

Sub-licence

A licence granted by a licensee to a third party, permissible only if the original licence agreement expressly allows sub-licensing.

Cross-licence

Two or more parties license their respective IP to each other, often used in technology sectors to resolve blocking patent situations.

🌐 Territorial Scope

Domestic licence: Restricted to India or specific states
International licence: Rights granted across multiple jurisdictions
Field-of-use restrictions: Limited to specific applications or industries
Channel restrictions: Limited to specific distribution channels

💰 Royalty Structures

Running royalties: Percentage of sales/revenue — most common
Lump sum: One-time upfront payment
Milestone payments: Payable on achieving defined targets
Hybrid: Upfront fee + ongoing royalties
Minimum guarantee: Minimum royalty regardless of sales

📝 Key Clauses in IP Licensing Agreements

Scope of Licence

Clear definition of IP licensed, exclusivity, territory, permitted field of use, and sub-licensing rights

Royalty & Payment Terms

Rate, calculation basis, payment schedule, minimum guarantee, audit rights, and currency of payment

Term & Termination

Duration, renewal options, grounds for termination, notice period, and consequences of termination

Quality Control

Particularly important in trademark licences — licensor must retain quality control over licensed goods/services to avoid "naked licensing"

IP Ownership & Improvements

Ownership of improvements, enhancements or derivative works created by licensee during the licence term

Representations & Warranties

Licensor's warranties of ownership, non-infringement, validity of IP and right to grant the licence

Confidentiality

Non-disclosure obligations covering trade secrets, know-how and technical information shared under the licence

Dispute Resolution

Governing law, jurisdiction, arbitration or mediation clauses for resolving licensing disputes

⚠️ Registration of Licence Agreements

Patent Licences

Every licence in relation to a patent must be in writing. A licence deed should be registered with the Patent Office within 6 months from execution to be effective against third parties.

Trademark Registered User

A licensee of a registered trademark may apply to be registered as a Registered User with the Trade Marks Registry. Registration provides legal standing to sue for infringement independently.

🔬 Technology Transfer in India

Technology transfer refers to the process of transferring skills, knowledge, technologies, methods of manufacturing, and facilities to a recipient entity. It is often effected through a combination of IP licensing and know-how agreements.

Technical Know-How Agreement

Transfer of unpatented technical knowledge, trade secrets, manufacturing processes, and technical assistance from technology owner to recipient

Joint Venture IP Structuring

Structuring IP ownership, licensing, and contribution in joint ventures — including pre-existing IP, background IP, and jointly developed foreground IP

Franchise Agreements

Bundled IP licensing including trademarks, copyright, trade dress, and know-how for establishing franchise operations in India

R&D Collaboration Agreements

Agreements governing collaborative research, IP ownership of outputs, publication rights, and commercialisation of research results

🏦 FDI & FIPB Considerations

Technology transfer and IP licensing to Indian entities by foreign entities may be subject to Foreign Direct Investment (FDI) regulations under FEMA and guidelines issued by the Reserve Bank of India (RBI).

Royalty payments to foreign entities require compliance with RBI reporting requirements

Technology transfer agreements with foreign entities may require RBI approval if not under automatic route

Transfer pricing regulations apply to royalty transactions between related parties

TDS applicable on royalty payments to non-residents under Section 195 of Income Tax Act

⚖️ Compulsory Licensing for Patents

When Available

After 3 years from Grant of Patent, any interested person may apply to the Controller of Patents for a compulsory licence on the following grounds:

The reasonable requirements of the public with respect to the patented invention have not been satisfied
The patented invention is not available to the public at a reasonably affordable price
The patented invention is not worked in the territory of India to the fullest extent

Natco v. Bayer (2013): India's first compulsory licence was granted in the landmark Natco Pharma case, where Natco was granted a compulsory licence over Bayer's cancer drug Nexavar (sorafenib), citing unaffordable pricing and inadequate availability in India.

📖 Compulsory Licensing for Copyright

Under the Copyright Act, 1957, compulsory licences may be granted by the Copyright Board in the following circumstances:

Works withheld from the public by the copyright owner
Translation of works for educational or research purposes
Reproduction of works for certain educational institutions
Publication of unpublished works of deceased Indian authors

🛡️ Statutory Licences

The Copyright Act also provides for statutory licences (as distinct from compulsory licences):

Broadcasting: Any broadcaster may broadcast any sound recording on payment of prescribed royalty (Section 31D)
Cover versions: Sound recordings of literary/musical works may be made after 5 years of first publication on payment of royalties (Section 31C)

IP Litigation Services

Comprehensive Guide to IP Litigation & Enforcement in India

Everything you need to know about enforcing intellectual property rights through civil and criminal proceedings before Indian courts and quasi-judicial authorities.

⚔️ IP Enforcement in India

India has a robust IP enforcement framework with dedicated IP divisions in High Courts, specialised quasi-judicial authorities, and strong statutory remedies including Anton Piller orders, Mareva injunctions, and John Doe orders.

Indian courts have consistently taken a pro-enforcement stance on intellectual property rights, granting urgent ex-parte injunctions in deserving cases and awarding significant damages including punitive damages for flagrant infringement.

⚖️ Types of IP Infringement

Patent Infringement

Making, using, selling, offering for sale or importing a patented product or using a patented process without authorisation during the patent term

Trademark Infringement & Passing Off

Using a mark identical or deceptively similar to a registered trademark, or misrepresenting goods/services as those of another (passing off for unregistered marks)

Reproducing, distributing, performing, or making derivative works without authorisation from the copyright owner

Design Infringement

Applying a registered design to any article for sale without the owner's licence during the registration period

🎯 Enforcement Options

Civil suit for injunction and damages
Criminal complaint for cognizable offences
Customs recordal and border seizure
Opposition at IP Office stage
Cancellation/rectification proceedings
Arbitration/mediation for disputes
Domain name dispute resolution (UDRP/INDRP)
Online takedowns (ISP notices)

🏛️ Civil Remedies for IP Infringement

Civil remedies under Indian IP laws are comprehensive and allow IP owners to effectively stop infringement and recover losses.

Interlocutory Injunction

Urgent temporary injunction restraining the defendant from continuing infringement pending final disposal of the suit. Granted on satisfaction of prima facie case, balance of convenience, and irreparable harm.

Permanent Injunction

Final injunctive relief restraining the defendant permanently from infringing the plaintiff's IP rights, granted upon success at trial.

Damages / Account of Profits

Monetary compensation for losses suffered — plaintiff may elect between actual damages (plus consequential loss) or an account of defendant's profits from infringement.

Delivery Up & Destruction

Court may order delivery up of infringing goods, labels, articles and packaging, and their destruction or erasure of offending marks.

Anton Piller Order

Ex-parte search and seizure order allowing the plaintiff to enter defendant's premises and seize infringing goods and evidence. Essential for counterfeiting cases.

John Doe / Ashok Kumar Order

Orders against unknown defendants — widely used in India to direct ISPs to block infringing websites and platforms distributing pirated content.

🛃 Customs & Border Enforcement

IP owners can record their rights with Indian Customs under the Intellectual Property Rights (Imported Goods) Enforcement Rules, 2007 to prevent importation of infringing goods.

File application for recordal with Customs authorities

Customs may suo motu detain suspect consignments

IP owner notified and given opportunity to inspect

Infringing goods may be seized and forfeited

🚔 Criminal Remedies

Many IP offences in India are cognizable criminal offences carrying imprisonment and fines. Criminal proceedings are particularly effective in counterfeiting and piracy cases.

Trademark Offences (Section 103–104, Trade Marks Act)

Falsifying a trademark or applying a false trade description — imprisonment of 6 months to 3 years and fine of ₹50,000 to ₹2 lakhs. For repeat offences: imprisonment of 1–3 years and fine of ₹1–2 lakhs. Offence is cognizable and bailable.

Knowingly infringing or abetting infringement — imprisonment of 6 months to 3 years and fine of ₹50,000 to ₹2 lakhs. Repeat offence: 1–3 years imprisonment and fine of ₹1–2 lakhs. Offence is cognizable — arrest without warrant permissible.

Design Offences (Section 53, Designs Act)

Fraudulent imitation of registered design — liable to pay a sum not exceeding ₹25,000 to the registered proprietor subject to a maximum of ₹50,000 recoverable as a contract debt.

📋 Criminal Procedure

Filing Complaint / FIR

File a criminal complaint before a Magistrate or FIR at police station (for cognizable offences). Include evidence of infringement, ownership proofs, and seized samples.

Police Raid & Seizure

Police conduct raids at infringing premises, seize counterfeit goods, manufacturing equipment, and financial records. A court warrant or Magistrate order may be obtained in advance.

Arrest & Remand

Accused may be arrested. Application for custody or bail is made before the Magistrate. IP owner may oppose bail in serious cases.

Charge Sheet & Trial

Police file charge sheet before Magistrate. Trial proceeds with examination of witnesses and evidence. Expert testimony from IP owner's side is critical.

Conviction & Sentence

Upon conviction, court imposes imprisonment and/or fine. Courts may also order destruction of seized infringing goods and equipment.

🏛️ Courts & Forums for IP Disputes in India

Delhi High Court — IP Division

India's premier IP court. Has original jurisdiction over patent, trademark, copyright, and design disputes. Dedicated IP Division with specialist judges handles IP matters.

Other High Courts

Bombay, Calcutta, Madras and other High Courts have jurisdiction over IP matters depending on the cause of action and location of parties.

Commercial Courts

Under the Commercial Courts Act, 2015, IP suits above specified pecuniary limits are tried by Commercial Divisions of High Courts or Commercial Courts, with expedited timelines.

District Courts

For trademark and copyright suits below specified pecuniary limits, District Courts have jurisdiction. Plaintiff may sue in the court where they reside or carry on business.

Patent Office — CGPDTM

Patent Office handles pre-grant oppositions, post-grant oppositions, and revocation petitions. Appeals from Patent Office orders lie to the High Court.

Trade Marks Registry

Handles trademark oppositions, rectification applications, and registered user applications. Appeals lie to the Intellectual Property Appellate Board (IPAB) / High Court.

📋 IPAB — Intellectual Property Appellate Board

The IPAB hears appeals from decisions of the Patent Office, Trade Marks Registry, and Copyright Board. It also has original jurisdiction over revocation of patents and rectification of trademark registrations.

Note on IPAB

The IPAB was abolished in 2021. Its jurisdiction has been transferred back to the respective High Courts. All IP appeals and original petitions previously before IPAB are now filed before the relevant High Court.

🎯 IP Enforcement Strategy

An effective IP enforcement strategy requires careful planning, gathering of evidence, and selection of the most appropriate legal forum and remedies.

Pre-litigation Investigation

Engage investigation agencies to gather evidence of infringement — purchase test reports, surveillance, market surveys, and identification of infringers before filing suit

Cease & Desist Letters

Send formal legal notices demanding cessation of infringement, recall of infringing goods, and payment of damages — often resolves disputes without litigation

Forum Shopping

Select the most favourable forum — Delhi HC IP Division is preferred for patent suits; local District Court may be preferred for trademark matters to take advantage of plaintiff's home jurisdiction

Ex-Parte Relief

File for urgent ex-parte injunctions (without notice to defendant) in cases of continuing infringement where prior notice may result in destruction of evidence or dissipation of assets

Parallel Civil & Criminal Action

Pursue simultaneous civil and criminal proceedings — civil action for financial recovery; criminal action for deterrence and to facilitate seizure of infringing goods through police raids

Settlement & ADR

Consider mediation or arbitration for commercial IP disputes — faster resolution, confidentiality, and flexibility in crafting licensing-based settlements

📊 Key IP Litigation Timelines

Ex-Parte Injunction

1–3

days (urgent matters)

Interlocutory Hearing

2–6

months

Full Trial

2–5

years

🌐 Online & Domain Name Disputes

INDRP (.in domains)

India's .in Domain Name Dispute Resolution Policy — faster and cheaper than court proceedings. Decided by a sole arbitrator. Remedy is transfer or cancellation of domain name.

UDRP (gTLD domains)

ICANN's Uniform Domain Name Dispute Resolution Policy for .com, .net, .org domains. Filed before WIPO Arbitration Center or other ICANN-accredited providers.

Technical Domains

Areas of Expertise

Our multi-disciplinary team handles IP matters across a wide range of technology sectors and creative industries.

🧬

Biotechnology & Life Sciences

Specialist

💊

Pharmaceuticals & Drug Formulations

Specialist

💻

Software & AI / ML Technologies

Active

📡

Telecommunications & Electronics

Active

⚙️

Mechanical & Manufacturing

Active

🧪

Chemical & Materials Science

Active

🛍️

Consumer Products & FMCG

Active

🎬

Entertainment, Media & Publishing

Active

👗

Fashion, Luxury & Retail

Active

🌱

Agriculture & Agro-chemicals

Active

🔋

Energy & Clean Technology

Active

🏗️

Construction & Infrastructure

Active

Our Network

Global Reach

Filing and enforcement support across 50+ countries through our trusted network of associate firms and international partners.

🇮🇳

India — Primary Office

Full-service IP practice from our New Delhi office. Filing before all four Patent Offices, five Trademark Registries, Design Offices, and Copyright Office in New Delhi.

New Delhi · Mumbai · Chennai · Kolkata · Ahmedabad

🌏

South Asia

Direct associate relationships covering patent, trademark, and design filing and prosecution across all South Asian jurisdictions.

Bangladesh · Nepal · Sri Lanka · Pakistan · Bhutan · Maldives

🌐

Southeast & East Asia

Established associate network for IP filing, prosecution, and enforcement across major Southeast and East Asian markets.

Singapore · Malaysia · Thailand · Indonesia · Vietnam · China · Japan · South Korea

🇪🇺

Europe

European patent and trademark filing through the EPO and EUIPO, plus national filings in key European jurisdictions via our European associate network.

EPO · EUIPO · UK · Germany · France · Netherlands · Switzerland

🌍

Middle East & Africa

IP filing and prosecution support across GCC countries, North Africa, and Sub-Saharan Africa through regional associate firms.

UAE · Saudi Arabia · Egypt · Kenya · South Africa · Nigeria

🌎

Americas & Oceania

Filing, prosecution, and enforcement support across North America, Latin America, and Oceania through trusted associate counsel.

USA · Canada · Brazil · Mexico · Australia · New Zealand

50+Countries

6Continents

PCTNational Phase Filing

MadridTrademark Protocol

Our People

Meet the Team

Founder & Principal

Sudhir Kumar

IAM Strategy 300 recognised practitioner with over 20 years of experience in intellectual property law. Sudhir leads the firm's patent and trademark practice with expertise spanning prosecution, litigation, opposition, and IP strategy. He holds an LLB from the Campus Law Centre, Faculty of Law, Delhi University.

Patents Trademarks IP Litigation IAM 300

Senior Partner

Deepak Kunwar

Senior Partner at Aswal Associates with extensive experience in contentious and non-contentious IP matters. Deepak advises domestic and international clients on patent prosecution, infringement disputes, and portfolio management across India and abroad.

Patents IP Strategy Litigation

Advocate & Trademark Attorney

Madhuri Rawat

Specialises in trademark prosecution, opposition proceedings, and brand protection strategies for clients across India and international jurisdictions including Bangladesh, Nepal, and Sri Lanka. Trusted by clients for both contentious and non-contentious trademark matters.

Trademarks Brand Protection Opposition

Advocate & IP Attorney

Saurabh Panwar

Experienced IP attorney handling patent and trademark prosecution, design filings, and infringement actions. Saurabh manages matters before the Patent Office, Trademark Registry, and various courts including Delhi High Court.

Patents Designs Enforcement

Legal Associate

Gaytri Negi

Legal Associate with a diverse background in intellectual property and civil law. Prior to joining Aswal Associates, Gaytri gained experience at several law firms and legal consultancies. She handles trademark filings, legal research, and advisory work across IP matters.

Trademarks Legal Research Advisory

Head — Accounts & Marketing

Pooja Rawat

Heads the firm's accounts and marketing functions. Pooja holds a Bachelor's degree in Business & Commerce (General) from Delhi University and brings multi-sector experience from roles at the Indian Council for Cultural Relations (ICCR), Total Solutions Group, and a chartered accountant firm. She manages client outreach, firm operations, and financial oversight.

Accounts Marketing Operations

Advocate, Patent & Trademark Attorney

Sachin Parashar

Advocate and registered Patent & Trademark Attorney with an LL.B from the Faculty of Law, Delhi University. Sachin has prior experience at O.P. Sharma & Co. and handles patent prosecution, trademark filings, and advisory work across a range of technology and commercial sectors.

Patents Trademarks Prosecution

SUA

Business Development Manager

Sunil Aswal

Leads the firm's business development and client relations. Sunil holds a B.Sc (Hons) in Physics from Delhi University and an MBA from Hemwati Nandan Bahuguna Garhwal University, bringing a strong commercial and scientific perspective to the firm's growth strategy.

Business Development Client Relations Strategy

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Latest IP Updates

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