Complete reference on Well known trademark and provisional patent


Once you register your private limited company, its important to secure your brand by Trademark registration. "Well known trade mark", 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 receive such services that the use of such mark in relation to other goods or services would be 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.

1)A mark known to large section of public.

2)Must be registered.

3)Enjoy higher degree of reputation than well known marks.

4) The number of persons involved in the channels of distribution of goods or services;

5) The number of actual or potential consumers of the goods or services;

6) The duration, extend and geographical area of any use of such trade mark:

7)The duration, extent or geographical area in which the trade mark is promoted with respect to the goods and services to which it applies.

8)Knowledge about the mark in relevant section of the public.

9)Registration or application for registration of the trade mark to the extend they reflect the use or recognition of the trade mark.

10)The records of successful enforcement of the rights in that trade mark including the record Stating that the trademark has been recognised as a well known by any court or registrar.

Well known trademark always result in trademark objection and also lead to complete cancellation of application. Another critical Intellectual property to secure your innovation if any is getting a provisional patent.


What is a provisional Patent Application ?

A Patent is an exclusive legal right of an inventor which grants him a legal authority to prohibit others from making use of his inventions. During the process of patent registration in India. A provisional patent application is a brief application specifying the nature of the invention taking place. When the invention is at a stage such that final claims can be made for securing a patent the inventor can develop a prototype and file a complete specification.

A provisional patent application defines the field of the invention and also mentions the scope of the invention to a certain extent without making final claims. Post filing a provisional patent application , a firm enjoys the liberty of time to research and experiment with the inventions before making full and final claims. Although an inventor should file a complete specification within 12 months of submitting a provisional patent application. This protects the inventor from any potential infringement from outsiders.

The benefits of filing a provisional Patent Application

1) Establishes priority rights- Filing a provisional patent enables the applicant to secure a priority date for his patent and thus refraining any other individual from copying or filing such a similar patent.

2) Gauge the worth of the invention-Filing a provisional application is simpler and affordable step for initial patent protection. The inventor gets 12 months before filing the complete specification which is referred as permanent patent in the common parlance . This period gives the applicant enough time to contemplate on whether invention has enough potential to be patented and gauge its feasibility .Changing the decision within these 12 months does not attract any charges/penalties and the applicant can cautiously decide if the investment is worth it.

3) Buys time to make required changes -

A provisional patent gives the inventor time to work on the invention and brush up on its utility, novelty and the inventive factor till it is finalized as per the established standards. A period of 12 months is given to file the final patent draft called as a complete specification.

4) Monetary Returns- The patent is a great asset and has a potential to extract way bigger monetary benefits than any other intellectual property, if managed intelligently. Many pharmaceutical companies have made great profits through their patented chemical formulas by ways of licensing, assigning, etc.

5) You can say "Patent Pending"- Although provisional patent is not actually a patent and it will not be converted to complete patent application unless you take further steps... You legally can write "Patent Pending" for your invention. (product prototype) up on filing provisional patent you have secured the priority date as its filing date, so you need not worry about confidentiality when marketing or disclosing your invention (product prototypes).

6) Time to let the invention evolve- filing a provisional patent application allows a firm to research and evolve their inventions with the over the liberty of the time period of 12 months. This benefits the firm by make a strong invention before filing a complete specification.

7) Time to test commercial potential - A provisional patent application allows a firm the much needed time to test the invention and gather inputs about -

a) Potential of the invention to be patented to acquire licenses from other business entities.

b) Commercial worth of the invention.

c) Time to evolve the invention.

d) Time to conduct a vigorous market research and develop a strategy accordingly.

8) Abandon the provisional patent application- A Provisional Patent Application can be abandoned by the inventor if the inventor feels like it is not worth going ahead with the invention for reasons like -

a) The invention will not turn out to be financially worthy.

b) No firm of business entities may be willing to acquire the license.

9) Eventually becomes a granted patent- A provisional patent application eventually becomes a patent after 12 months of submitting the provisional patent application.

Rules for filing provisional patent application -

1) A provisional application is not a rough draft of your idea or invention. In fact it defines the scope of your invention. So every part (element) of your invention which is outside the scope of the provisional application and you happened to develop in the 12 months time (that is at the time of filing complete patent application) will fail to have the earlier priority date (filing date of provisional application). Which means the part of invention you developed after filing provisional which is outside the scope which is set by provisional application will not have the advantage of priority date of provisional application.

2) Description

The description used in a provisional patent application should avoid limiting words. The words used must be specific in order to explain the real essence of the inventions.