Monthly Archives: January 2016

Detailed guide: Intellectual property insurance

Updated: Insurance list providers updated.

About Intellectual Property (IP) and insurance

How can I learn more about the IP I may own and how to protect it?

All businesses have IP and it may well be your most valuable asset. Like other business assets you can get insurance to protect against risks associated with your IP. Much of this insurance (but not all) is aimed at businesses who have already secured IP rights. However, you can also protect yourself against inadvertently infringing the rights of others.

To decide if your business could benefit from investing in IP insurance you firstly need to recognise, understand and if appropriate, protect your IP. The Intellectual Property Office (IPO) has a range of free online tools to help you understand more about trade marks, designs, patents and copyright.

‘Before the event’ or ‘BTE’ legal expenses insurance (LEI) policies can cover you against your own legal costs and/or the legal costs of someone you are in dispute with.

However, BTE LEI will only cover risk before a claim is made or before the possibility of a claim is known about or ought to be known about. In relation to IP, you can only get BTE cover if the (alleged) infringement has not yet occurred. A decision to take out BTE insurance is important and you should consider it as early as possible.

What types of IP Insurance products are available?

Insurance products can cover one or more rights and a variety of IP risks including:

  • opinion only: covers legal costs of you obtaining an opinion on the likelihood of successfully enforcing or defending an IP claim (see also IPO patent and proposed designs opinions)
  • enforcement and defence: covers legal costs of you taking action to stop others infringing IP rights and defending allegations of infringement. Can cover enforcement and defence either separately or together
  • damages: covers any damages payable if you lost an infringement action
  • validity: covers legal costs of defending challenges to validity of your rights

Other products which you might consider include:

  • lost revenue: covers revenue lost as a result of you losing IP rights
  • indemnity: covers liabilities arising under guarantees you give to third parties
  • cyber: covers losses from a variety of cyber incidents, including IPR breaches

Some of these products may be more relevant and appropriate to your industry or sector than others. A broker will provide you with advice on this.

Domestic cover will be cheapest followed by cover for Europe, Worldwide cover excluding USA, Worldwide cover including USA. The premiums you pay will reflect the geographical cover you need. Taking out domestic cover early and expanding the cover as your markets grow could be cheaper than taking initial cover for a large geographical area.

In numerous ways, IP legal expenses insurance works the same as other types of insurance. For instance, your premiums will be lower or higher depending on the perceived level of risk. If your business is in a sector where the technology is complicated or the market is highly competitive then the risks may be higher. In these sectors you should expect to pay more for a policy and some sectors may not be acceptable risks for insurers.

You should also expect there to be exclusions and excesses in IP insurance policies. The level of excess, the amount of any claim that you will have to pay before the insurer will begin paying, can sometimes be decided by you. You can use your excess to raise or lower the level of your premium. For the lower indemnity policies, excesses will typically start at £1000.

Another form of “excess” is co-insurance. This is a percentage of the costs of any claim, which you will have to pay. This means that you share the risk and costs. Insurers believe this can ensure that you more carefully consider your actions before making a claim and/or during a dispute. It is important that you carefully read and understand the policy terms and in particular the exclusion and excess clauses and that you discuss these and their implications with the broker.

Benefits and costs

Why might I purchase IP Insurance?

IP insurance may not be appropriate for every business: the price may be prohibitive because of the perceived risk. However, you may find that IP insurance has numerous potential benefits for helping protect your business assets:

  • it can protect cash-flow: IP insurance can ensure that your dispute and particularly litigation, does not tie up capital which you could use to grow the business
  • it can provide a deterrent: LEI can give you the power to take action to enforce your rights where your financial position might not otherwise allow it. If a potential infringer knows that your insurance will cover making a claim, then it may be less likely to infringe or more likely they will stop when challenged. Some insurers are happy for you to confirm in marketing literature or on websites that your IP is insured, alerting competitors that insurance is in place
  • it can improve your negotiating position: If this deterrent does not work then the knowledge that you can go to court (as a last resort) can encourage the alleged infringer to negotiate or mediate. Insurance can provide you with the means to take vital defensive action meaning there will be no need to settle on poor terms
  • it might allow your IP to be used as collateral and can add value: Insurance can reassure lenders and investors that the value will not be lost because you cannot fight infringers/invalidity challenges. Potential licensees will also know that you can take legal action if necessary and will be indemnified if required

Is IP insurance expensive?

There are certain criteria which the insurers will use to decide your level of premium.

For IP LEI these are:

  • the type and level of cover you need
  • the IP right(s) you want to insure
  • the sector in which you operate
  • the territorial scope of your protection.

The IP Enterprise Court (IPEC) is intended to provide a less costly and less complex alternative to intellectual property litigation in the general Chancery Division of the High Court, particularly for small and medium sized organisations. You can now buy policies which require lower levels of financial cover (‘indemnities’) as a result of the clearer costs in the IPEC. This means that premiums are lower for the levels of cover which these policies provide.

The insurer will indicate the actual premium once they have received your application. As a rough indication, £100,000 of cover can cost around £1,500 for patents (and less for other rights). Premiums can often be paid in instalments. You can buy these policies for sole use in the IPEC or you can get similar policies with slightly higher cover which will offer you greater flexibility.

Premiums will increase in line with the level of risks. Some types of cover for certain risks and technology sectors will need more careful consideration by insurers, particularly where they require higher levels of cover or wider geographical cover.

The on-cover and claims process

How do I get IP insurance cover?

As with other types of commercial insurance, you should consult a specialist broker who will advise you of the appropriate cover (see below). You may save time if you improve your understanding by looking at some of the policy summaries and case studies which are available on the internet.

A typical process could take you around 10 days and generally involves:

  • you completing an application form;
  • the broker assessing what cover is needed
  • the broker getting quotes from one or more insurance partners;
  • you discussing the quotes with the broker and what they mean to your business
  • deciding which policy is best suited to your business.

This will usually involve an assessment of the likelihood of you being involved in a dispute. This assessment will not usually be shared with you and could result in cover not being provided. It may not involve assessment of the validity or strength of your right(s) at this point. Remember, cover cannot be provided if you are aware of an ongoing infringement or if you know/believe an infringement is likely to occur.

How do I make a claim?

The first step you would take would be to discuss the alleged infringement or dispute with your own lawyer/IP attorney. It may be that the assessment could be for them to take initial action or even not to make a claim on the insurance cover at all.

Whether that is the case or not, you should make the insurer aware of the potential dispute and that you are considering the way forward. You will not be able to recover any costs you incur before alerting the insurer or without their express agreement. In deciding on your strategy for resolving that particular dispute, you should consider again the policy clauses particularly in relation to your legal representation.

Can I use my own lawyer/attorney to resolve the dispute?

You should check the policy wording before starting any legal action. Sometimes a certain solicitor/patent attorney or one chosen from a panel must be used at least initially. Even if the policy allows you to use your own representative, the insurer will want to know that they have the necessary skills and knowledge to represent you. They will, therefore, be subject to the insurer’s approval.

Some insurers may maintain a list of preferred law firms with whom they will have negotiated an advantageous hourly rate. Using a panel lawyer could mean that the limit of your cover might stretch further.

If you have any subsequent dispute around your representative with the insurer which cannot be resolved, then you can ask the Financial Ombudsman to settle the matter.

What is the ‘reasonable prospect of success test’?

Whether you are insured or not, you will want to understand your dispute, and to assess if it went to court what your likely chance of winning the case would be.

If your policy includes enforcing your rights, insurers will require you to submit a legal opinion from a qualified person, confirming that the chances of successfully enforcing the claim are over 50% or in some cases 60% (this is what insurers call the ‘reasonable prospect of success’ or ‘RPS’ test). This is on the basis that no sensible business would pursue a court case if it is more likely to lose than win. Understandably, insurers are unwilling to fund such legal actions. You might consider that if you were not insured, would you think legal action in such a situation, a sensible commercial course?

Your advisor will take into account the validity of your right during the assessment of your dispute. It may be that this is not what you expect but understanding it would be necessary for deciding your strategy whether you were insured or not.

Policy documents will indicate whether it will be yours or in some cases, the insurer’s responsibility to assess the prospects of success. If the insurers do the assessment and you disagree with it, you should be able to submit an independent view in response. In all situations, you may find that an IPO Patent Opinion, which costs only £200, could help towards understanding the dispute and contribute to the RPS test.

What else might I consider in the policy wording?

The broker will advise you on all aspects of the policy including: what costs are covered if a claim is made and; what the insurer will pay out if your case settles early. The costs you recover will also be subject to any excess and co-insurance and must be reasonably and properly incurred. Sometimes you will need to seek the insurer’s permission on certain costs before they are incurred. Your legal representative will be able to advise you of these.

Your policy document will set out not only the ‘reasonable prospect of success’ test but also the terms of settling your dispute. The insurer will expect you to make every effort to recover costs from the opponent. In some cases, this can have the potential to lead to differences of opinion between you and insurer.

Resolving IP disputes and next steps

Are there cheaper ways I can better understand and/or resolve my dispute?

An Opinion from the IPO can help you negotiate a settlement or decide whether to proceed with full legal proceedings.

An opinion is not binding on you or others involved. You can still proceed with full legal proceedings in the court or with the IPO if you want to. An IPO opinion is an independent assessment of the main issues in a dispute, prepared by a senior examiner. The IPO bases opinions on papers you and anyone else involved submits.

Mediation is a type of alternative dispute resolution (ADR), a way of resolving disputes without going to court. It is cheaper and quicker than litigation and the outcome is usually beneficial to all parties. Most types of IP dispute are appropriate for mediation.

A court will expect you and the other party in dispute to have attempted to resolve matters before starting legal proceedings. It will also expect you to have properly considered a form of ADR and can impose financial sanctions if you do not. It can direct you to do so after you have started legal proceedings. Mediation allows you and the opposing party to talk about the dispute with the help of an independent person, a mediator. The mediator’s role is not to make a decision on the dispute but to help you to find a solution that both parties can accept.

There are other advantages to mediation. It can:

  • involve discussion of a broader range of issues than those that are the subject of the litigation
  • result in a positive outcome for all parties involved e.g. through licensing or commercial agreements
  • help parties to maintain or even create business relationships

The IPO Mediation Service was set up to help businesses and individuals resolve IP disputes quickly, cheaply and effectively. It may be possible to arrange mediation over the telephone for some cases. The accredited mediators can help you to resolve disputes involving all rights.

Where do I go to find out more about IP Insurance?

Here you can find
insurance brokers
(PDF, 223KB, 6 pages)

who understand and will advise you on IP Insurance. Alternatively you can visit the British Insurance Brokers’ Association website (under commercial/intellectual property). Given your potential investment in IP rights, it is likely that your IP adviser/attorney will raise the existence of IP insurance with you. The Chartered Institute of Patent Attorneys (CIPA) and The Chartered Institute of Trade Mark Attorneys (CITMA) provides a list of companies that offer IP insurance products. Otherwise you might search ‘intellectual property insurance’ using a search engine or visit the BIBA website for more information.

Source: UK IPO News

Leadership in All USPTO Regional Offices

Blog by Under Secretary of Commerce for Intellectual Property and Director of the USPTO Michelle K. Lee

After much excitement in the last few months of 2015 with the opening of our final two regional offices—the West Coast Regional Office in Silicon Valley in October and our Texas Regional Office in Dallas in November—I’m happy to announce that Molly Kocialski will be the Director of the Rocky Mountain Regional United States Patent and Trademark Office in Denver, Colorado. With Molly’s addition, all four of our regional offices now have directors, making us well-positioned to fully advance the mission of the USPTO as America’s Innovation Agency.

As the new director, Molly will spearhead the Rocky Mountain Regional Office’s efforts to bring the USPTO’s resources directly to the local innovation community, helping to fuel economic growth and innovation in the region, as well as oversee the local team of patent examiners and PTAB judges.   Molly is an established IP leader in the Rocky Mountain region, having served as the Chair of the Intellectual Property Section of the Colorado Bar Association and currently on the Colorado Bar Association’s Board of Governors. Moreover, Molly brings to bear more than 20 years of experience in intellectual property. Most recently, she was the Senior Patent Counsel for Oracle America, Inc. in Denver, responsible for managing an active patent prosecution docket and all of the post-grant PTAB proceedings and patent investigations for Oracle and its subsidiaries. Prior to Oracle, she worked at Qwest Corporation and was in private practice both in New York and in Colorado focusing on intellectual property litigation for multiple high-tech companies while maintaining an active prosecution docket.  Her extensive experience and familiarity with the region’s unique ecosystem of industries and stakeholders will be an asset to the USPTO. 

Molly joins a group of exceptional office directors already in place, including Hope Shimabuku, Director of our Texas Regional Office in Dallas, whom I recently swore in on January 3, Christal Sheppard, Director of the Elijah J. McCoy Midwest Regional Office in Detroit, and John Cabeca, Director of the West Coast Regional Office in Silicon Valley.

The establishment of four USPTO regional offices fulfills a commitment dating to September 16, 2011, when President Obama signed the Leahy-Smith America Invents Act into law. These offices serve their region’s innovation and intellectual property communities and put tools into the hands of individuals who need assistance at every step of the business lifecycle. I am proud of the historic progress we have made over the last four years in establishing and growing these offices, and as we continue to bring resources to the doorsteps of innovators and serve entrepreneurs from coast to coast.

All of our offices will continue to hire talented and dedicated professionals to join their teams. For more information about openings, go to www.usajobs.gov, keyword: USPTO.

Source: USPTO

Business information and NDA, Why is it necessary?

NDA, Non-Compete

Quite often, individuals and business entities, especially startup companies would require to emit their unique ideas, inventions, and business models to other private entities. They tend to pitch their information before many audiences. Like, the privates investors, venture capitalists,  inside partners, outside partners, and employees etc. Pitching such information is very essential, in order  to take the concept into the next level of process and to a success. On such scenarios,  there are two kind of strategies normally followed with regard to the confidentiality of disclosures.

First, they disclose all the information to the receiving party, but neither having any binding nor any legal recourse in case of violation. And in the second approach, they might include a general NDA disclosure agreement, but which might have no relevance to the actual disclosure or any information exchange happen in-between them.

Yes, check your NDA, Fundamentally, there is no guarantee that the disclosed information is protected, or otherwise, there exists any tracking solutions, or a remedy to the violations of the NDA. But, so why?

Many legal experts emphasise that the NDA should have following elements as a basic structure. Such as 1) Definition of the Parties involved. 2) Confidentiality terms 3) Time duration of agreement 4) Protection of ideas until NDA validity. 5) Remedies

But, it has become a trend that, online NDA formats, examples are used as a common NDA document for all the businesses But, does they cover your rights, in cases of violation by the receiving party, theft of your idea.

However, at PGN & WISSEN, we recommend the parties, especially the disclosing parties to frame their own NDA clauses, according to the nature of the receiving party and purpose of the discussion or the actual exchange of information.

NDA Disclosure suggestion.

  • Try to include the person name, and company name in detail.
  • Add sentences, which explains about the type of business the parties involved in.
  • Mention the type of documents that would be shared, which are suppose to be protected.
  • If it is a specific project, mention the project name and description. (In case intellectual property, like patent matter, do not disclose, prior to the registration or before obtaining a patent priority date)
More importantly, The coverage of the NDA absolutely depends on the evidence information, which discloses that the information,which is suppose to be a confidential and proprietary was delivered to the party physically, or transferred by email to the receiving party, on so and so date.?
Well, another repeated question asked is whether, the NDA is a must, to be signed with a venture capitalist? Whether it is necessary for the NDA to be signed with a prospective employee?
In some situations, the disclosing party might underestimate that the information  discussed with certain audience of people would not be pilfered or misused. But, such kind of relaxed attitude is not advisable;  irrespective of the position of the receiving party, you make it as a mandatory process to sign up the document with the  person; before you begin to disclose any information. And, make sure that the delivery of such information is having a evidence that the receiving party has acknowledged the document has been received.
Happy Businesses are secured always!

Type of Patent Applications, applies to most jurisdictions

Patent right is only limited to a country’s jurisdiction, however conventions and treaties extend the provision of the patent rights as an international nature, provided that the patent applications is filed and registered in specific manner, with the concerned authority.

As far as the Indian Patent system is concerned, there are 5 types of patent applications. It is classified under the Chapter 3 of Indian Patent Office Practice & Procedure Manual for patent filings.

Type :-

  1. Ordinary Application – A Patent Application which has to be filed directly in the Indian Patent Office.
  2. Convention Application. – Convention application is similar patent application, which has been already been in another jurisdiction. The application must be made  within twelve months after the date on which the first/basic application was made. The priority date relies on the date of the basic application.
  3. PCT Application. – Patent Cooperation Treaty provisions for an international patent filing, in which applicant gets an international filing date in all designated countries. The time limit for PCT application is based on the similar/basic application, which is about 30/31 months. That is, the National Phase patent application in India can be filed within 31 months.
    Patent application procedure
  4. Divisional Application – Section 16 of Indian Patent Act, which can result from dividing the claims of a Patent Application. Because, a patent application might have too many inventions/claims within one application, in such case, which has to be separated and filed independently.
  5. Patent of Addition – As per Section 54 of the Indian Patents Act, which may be filed subsequent to the Filing of an Application for Patent, for an improvement or modification.

Detailed guide: Requests for opinions: 2016

Updated: New opinion 18/16 and 19/16 added.

Overview

The table below shows information about opinion requests we have received in 2016 and what stage each request has reached.

For example, you can see whether:

  • you can file observations on a request or whether the period for doing so has expired
  • we have issued an opinion
  • the person who filed the request has withdrawn it
  • we have refused a request for an opinion. Where we’ve issued a decision refusing the request, you can view this in our decisions database

Further information

If you would like more information about a particular request please contact us by:

  • telephone: +44 (0)16 3381 3813 or +44(0)16 3381 4617
  • fax: +44(0)16 3381 4491
  • email: opinions@ipo.gov.uk

2016 requests

Opinion number Patent/SPC number, title and owner Requester and request date Issue (Infringement and/or Validity) Observations deadline Outcome
19/16 GB2524311

Centraliser

Downhole Products Limited

Kilburn & Strode LLP

1 June 2016

Validity 5 July 2016
18/16 EP2164786

Cable tensioning apparatus and method for securing a sheet to a frame

Formetco, Inc.

Urban Storm Management Limited

1 June 2016

Infringement 5 July 2016
17/16 GB2423145

Lighting collar and other improved lighting units

Tim Jarvis

Ticknall Solar Ltd

23 May 2016

Infringement 23 June 2016
16/16 EP0877666

Industrial printer for use with at least one cartridge of consumable material

Markem-Imaje Holding

Domino UK Limited

13 May 2016

Validity 15 June 2016
15/16 GB2483109

Wheel clamp

Purple Line Limited

Maypole Limited

21 April 2016

Validity 23 May 2016
14/16 GB2435687

Heater and warmer for depilatory wax

Francis O’Hare

Francis O’Hare

14 April 2016

Infringement 13 May 2016
13/16 GB2504485

An internal corner cove former

Jack Stephen Alford

Patrick Alford

13 March 2016

Infringement 12 May 2016
12/16 EP2018153

Liquid oral compositions

Rosemont Pharmaceuticals Ltd

Gill Jennings & Every LLP

23 March 2016

Validity 27 April 2016
11/16 EP1358283

A printing ink

Sericol Limited

Urquhart-Dykes & Lord LLP

1 March 2016

Validity 8 April 2016 Opinion issued 27 May 2016


Opinion 11/16
(PDF, 277KB, 9 pages)

10/16 SPC/GB06/007
(based on EP0736030]

Tetrahydrofuran antifungals

Merck Sharp & Dohme Corp

Kilburn & Strode LLP

3 March 2016

Validity 7 April 2016 Opinion issued 31 May 2016


Opinion 09/16 and 10/16
(PDF, 447KB, 15 pages)

09/16 EP0736030

Tetrahydrofuran antifungals

Merck Sharp & Dohme Corp

Kilburn & Strode LLP

3 March 2016

Validity 7 April 2016 Opinion issued 31 May 2016


Opinion 09/16 and 10/16
(PDF, 447KB, 15 pages)

08/16 EP0989255

Cleaning apparatus for swimming-pool

3S SYSTEMTECHNIK AG

Williams Powell

24 February 2016

Validity 29 March 2016 Opinion issued 20 May 2016


Opinion 08/16
(PDF, 476KB, 15 pages)

07/16 EP1472164

Transport system

Dieter Klepser
Peter Weiss

Jenner & Block LLP

19 February 2016

Validity 24 March 2016 Opinion issued 18 May 2016


Opinion 07/16
(PDF, 738KB, 9 pages)

06/16 EP2184725

Emergency service warning system

Phyco Trading B.V.

Boult Wade Tennant

11 February 2016

Infringement 18 March 2016 Opinion issued 9 May 2016


Opinion 06/16
(PDF, 122KB, 5 pages)

05/16 GB2431336

Suspension harness with adjustable attachment point

The Heightec Group Limited

The Heightec Group Limited

08 February 2016

Infringement 09 March 2016 Opinion issued 6 May 2016


Opinion 05/16
(PDF, 698KB, 11 pages)

04/16 GB2439562

System for analysis of electrograms

Medilec Limited

Richard Saumarez

19 January 2016

Infringement 03 March 2016 Opinion issued 18 April 2016


Opinion 04/16
(PDF, 129KB, 7 pages)

03/16 GB2480275

Printed matter with antibacterial coating

Touch Guard Ltd

Sun Chemical Corporation

13 January 2016

Validity 17 February 2016 Opinion issued 22 April 2016


Opinion 03/16
(PDF, 517KB, 18 pages)

02/16 EP2160936

Agricultural implement

Shane Kelly

Juzyk

11 January 2016

Validity 17 February Opinion issued 23 February 2016


Opinion 02/16
(PDF, 102KB, 2 pages)

01/16 GB2477372

Handling hydrocarbon cargoes

Hamworthy Combustion Engineering Limited

Oilon Oy

31 December 2015

Validity 04 February 2016 Opinion issued 29 March 2016


Opinion 01/16
(PDF, 263KB, 11 pages)

Pre 2016 requests

Source: UK IPO News

Arbitrator, India to become a ADR hub!

India is under the transformation of developing its human resources, and to utilise its legal experts to shape the alternative dispute resolution mechanism in India. Particularly, the government is under the process of revamping it’s large and knowledge resources for creating the international arbitration landscape.  While, the smaller countries like the Singapore, Hong Kong, Dubai, have emerged as a successful landing hubs for resolving dispute resolution.

Ministry of Law and Justice, Legislative department has published the Gazette No 9 of 2015 “The Arbitration and Conciliation (Amendment) Ordinance, 2015, promulgated by the President Pranab Mukherjee. This ordinance amends the Arbitration and Conciliation Act 1996. The ordinance is largely delegates the exercising powers of the High Court and Civil Court.

 First, jurisdiction of Court substituted in such a manner that the arbitration other than international commercial arbitration, the jurisdiction is directs to principal Civil Court, includes High Court in exercise of its ordinary original civil jurisdiction.  by the

 1. A distinction has been made as regards to jurisdiction, in case of an arbitration other than international commercial arbitration, the principal Civil Court of original jurisdiction in a district, and includes the High Court in exercise of its ordinary  original civil jurisdiction, having jurisdiction to decide the questions forming the subject-matter of the arbitration if the same had been subject-matter of a suit, but does not include any civil court of a grade inferior to such principal Civil Court, or any Court ion small Causes;

 2. In the case of international commercial arbitration, the high court in exercise of its ordinary original civil jurisdiction, having jurisdiction to decide the questions forming the subject-matter of the arbitration if the same had been the subject-matter of a suit, and in other cases, a High Court having jurisdiction to hear appeals from decrees of courts subordinate to that high court.

Provided,  the sections 9, 27, and clause (a) of sub-section (1) and sub-section (3) of section 37 shall also apply to international commercial arbitration, even if the place of arbitration is outside India. and an arbitral card made or to be made in such place is enforceable and recognised under the provisions of Part II of this ordinance. i.e sections apply to international commercial arbitration even when the place of arbitration is not in India:

  • Section 9 (2) which deals with interim measures by the Court,
  • Section 27 that deals with Court assistance in taking evidence,
  • Section 37(1)(a) which states than an appeal shall lie on orders granting or refusing to grant measures under Section 9, and

3. In a case the arbitration agreement or certified copy thereof is not available to the party applying for reference for arbitration, such party can file an application praying the Court to call upon the other party to produce the same.

4. If the court passes any interim measure under Section 9, the arbitral proceedings must commence within 90 days of the court doing so.

5. No application for interim measure under Section 9 shall be entertained after the arbitral tribunal has been constituted unless the remedies under Section 17 have been rendered inefficacious.

6. The High Court may frame rules for the purpose of determination of fees of the arbitral tribunal and the manner of its payment to the arbitral tribunal. However, such rules shall not apply to international commercial arbitration and in arbitrations where parties have agreed for determination of fees as per the rules of an arbitral institution.

7. The provisions to ensure independence of arbitrators have been elaborated upon under Section 12. The Fifth Schedule has also been inserted enumerating certain grounds for the same. A potential arbitrator must disclose in writing circumstances such as the existence of direct or indirect, past or present relationship with any of the parties or in relation to the subject matter of the dispute which is likely to give doubts as to independence shall be disclosed. Further disclosures in writing with respect to circumstances which are likely to affect their ability to devote time towards the arbitration shall be made. The applicability of this sub-section can be waived by the parties in writing, subsequent to the dispute having arisen.

8. Interim measures ordered by the arbitral tribunal have been delineated as follows:

Appointment of a guardian for a minor or person of unsound mind

  • Measures protecting goods, or amount of money, or property which is subject matter of the dispute
  • Interim injunction or appointment of receiver
  • Such other measures for protection

9. A time limit of twelve months from the date of entry of the tribunal upon reference has been provided under Section 29A before which the award shall be made by the tribunal. Additional fees shall be provided to the tribunal if an award is made between six months. If the parties give consent to an extension, it shall be made for a further period up to six months.

10. Fast track procedure has been instituted under Section 29B wherein parties may agree in writing to have their dispute resolved by a fast track procedure. The award shall be made within six months.There shall be no oral hearing, and decisions shall be made on the basis of written pleadings, documents, and submissions filed by the parties, along with any further information called for from the tribunal. Oral hearings shall be made if all the parties agree and the tribunal finds it necessary. A new Section 31A has been added giving specific provisions for costs regime.

11. The ambit of setting aside an award for being in conflict with public policy under Section 34 has been broadened to include not only contravention with Section 75 or Section 81, but also if it is in contravention with the “fundamental policy of Indian law” or if it in conflict with the “most basic notions of morality or justice”.
The ordinance is largely in line with the recommendations put forth in the 246th Report of the Law Commission of India. The amendments would be a step forward in making arbitration an easier, faster and more cost effective method of dispute resolution, especially to attract foreign investors to invest in India, have a first instance of remedy from a forum of arbitrator.

Patent Numbering – New format to be followed with the Indian Patent Office

Effect from January 1, 2016, Indian Patent Office has streamlined the patent numbering system. The new numbering system would follow 12 digit length, consisting of only numeric characters. But, numbering system for examination requests would have an alphanumeric format.

There are three kind of styles applicable in numbering. 1) Fresh Application 2) Request of Examination (Normal) 3) Request for Examination (Express)

1) Fresh Application :  YYYYJTNNNNNN

a)  YYYY – Year of filing

b) J – Jurisdiction ( 1 for Delhi, 2 for Mumbai, 3 for Kolkata, 4 for Chennai)

c) T – Type of Application.
( 1 for Ordinary, 2 – Ordinary-Divisional, 3 – Ordinary-Patent of Addition, 4 -Convention, 5 Convention-Divisional, 6- Convention-Patent of Addition, 7- PCT NP, 8 – PCT NP- Divisional, 9 PCT NP-Patent of Addition

d) NNNNNN – 6 digit continuous running number applicable for all patent offices in India.

The date format in the application is to be entered as YYYY/MM/DD

2) Request for Examination – Normal – Under Rule 24 B (1) (i) (Normal)

RYYYYJNNNNNN

a) Where R – denotes request

b) YYYY – year of filing

c) J- Jurisdiction

d) NNNNNN – 6 digit common, continuous number applicable for all patent offices in India.

3) Request for Examination – Express – Under Rule 24 B (1) (i) (Express)

XYYYYJNNNNNN

a) Where X – denotes quick request

b) YYYY – year of filing

c) J- Jurisdiction

d) NNNNNN – 6 digit common, continuous number applicable for all patent offices in India.

Source : http://www.ipindia.nic.in/OfficeCircular/officeOrder_31December2015.pdf

Applicability of Rules of International Commercial Arbitration

Indian Council of Arbitration announced a compliance about the binding procedures for international entities. That is based on the Rules of International Commercial Arbitration of the Council has been effective from 1st January, 2014, which recommends a standard arbitration clause, as reproduced below, which may be included in any contract or agreement for resolution of any international commercial dispute/s without modification or modified as may be required or according to the parties’ preferences:

“Any dispute or difference whatsoever arising between the parties out of or relating to the construction, meaning, scope, operation or effect of this agreement or the validity or the breach thereof shall be settled by arbitration in accordance with the Rules of International Commercial Arbitration of the Indian Council of Arbitration and the award made in pursuance thereof shall be binding on the parties.”

However, as per Rule 2 (i) of the said Rules of International Commercial Arbitration, any arbitral reference having adopted the Council as a facilitating institution for arbitration of dispute/s, will be considered as “International Commercial Arbitration” where at least one of the parties is;

  1. An individual who is a national of, or habitually resident in any country other than India; or
  2. A body Corporate, which is incorporated in any country other than India; or
  3. A company or an association or a body of individuals or a partnership firm, whether incorporated or not, whose central management and control is exercised in any country other than India; or
  4. The Government of a foreign country.”The reference or references as such having fulfilled any of the criteria above will strictly be considered as international commercial arbitration and in that case, the Rules of International Commercial Arbitration of the Council, as effective from 1st January, 2014, will be applicable to such reference in supercession of Rule 4 of the Rules of Arbitration & Conciliation of the Council, effective from 8th May, 2012. This is for information and strict compliance

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