Intellectual Property

We have significant experience in providing prior art patent searches, patent drafting, patent prosecution, infringement searches/analyses, trademark searches, trademark filing, trademark prosecution, and preparation of trademark appeals with the United Stated Patent and Trademark Office (U.S. PTO), the Indian patent office (IPO), and other patent offices. We can also provide copyright filings with the U.S. Copyright Office. You may request for a sample of the work that we have performed.

Patent Search
Unicita conducts patentability searches or novelty searches to find prior art patents/patent applications that are material or relevant to the inventive concept claimed by the inventor, and also to find patents/patent applications as comprehensive as the patents/patent applications that a patent examiner will find when he/she conducts a patent search. The prior art patent searches typically comprise a Boolean keyword search and a search of the US classes/subclasses and international classes based on the International Patent Classification (IPC) and the Cooperative Patent Classification (CPC) in the patent databases. Unicita uses internationally accepted databases to conduct these patent searches including the Thomson Innovation patent search database of Thomson Reuters that contains patents filed in the top 71 industrialized countries including all European countries, Russia, China and Japan and patents filed with the European Patent Office (EPO), the United States Patent and Trademark Office (U.S. PTO), the World Intellectual Property Organization (WIPO) and the International Patent Document Center (INPADOC), the U.S. PTO database, and other publicly available patent search engines.

Patent Drafting and Filing

At Unicita Consulting, we draft and file provisional, non-provisional (utility and design), and PCT patent applications within a reasonable period of time. We draft patent applications for complex inventions in various domains, for example, electronics and communications, telecommunications, electrical engineering, computer science, software, mechanical engineering, chemical engineering, business methods, wireless domains, etc. To draft a patent application, we require the following information in the inventor’s disclosure of invention: - a process flow diagram/flowchart of all the steps of the invention; a description of each step of the invention; a description of the variations of each step of the invention, and identification of one or more steps or components of the invention that are novel. With regard to the systems involved, Unicita Consulting will require block diagram of all the components of the system of the invention; a description of each component and how it relates to the other components in the invention; a description of all the possible variations of each component in the invention, and an identification of one or more of the components of the invention that are novel. Any available literature related to the invention such as design documents, product specifications, web links, technical papers, marketing brochures, etc., should also be provided, if available.

Patent and Trademark Office Actions:
Unicita offers IP support services by drafting responses to patent and trademark office actions, trademark appeals, and searches. Given the time consuming nature of responding to office actions, patent firms typically do not consider responding to office actions as a “profit center” for their business. Unicita’s flat fee pricing allows a profitable offering on such responses. Office actions are time consuming, and often a large number of prior arts need to be analyzed with regard to patent office actions. They are rarely filed within the three month timeframe. With a timely service delivery, payment of extension fees can be avoided. Unicita directly or indirectly corresponds with the inventor or end client. Unless the patent firm desires otherwise, our point of contact is a patent attorney in the law firm requesting our service. The outsourcing of patent prosecution reduces the time taken to prepare a response to an office action by about 90%. Unicita further provides well researched and detailed responses to office actions received from the patent and trademark office in support of registration of trademarks. We also prepare responses to trademark office actions relating to:

• likelihood of confusion rejections
• descriptive mark rejections
• generic mark rejections
• Geographically descriptive mark rejections, etc.

Trademark Searches
Unicita Consulting conducts analytical and comprehensive registrability trademark searches for registered trademarks and pending trademarks on trademark database, Indian Patent Office database, Madrid Express and Romarin database, etc. Trademark search reports are provided in a span of 1 working day, subject to receiving required information from the client. The search is conducted for marks that that sound alike, are similar or confusingly similar to registered marks etc. Unicita chooses the International Class(es) under which the mark may be filed according to the description of goods and services provided to us. The mark is further evaluated, to determine whether there is a likelihood of confusion with the use of client’s/applicant’s trademark of a product placed in interstate commerce and an opinion on the registrability of the trademark or service mark will be provided.

Trademark Filing
A trade mark (popularly known as brand name) in laymans language is a visual symbol which may be a word signature, name, device, label, numerals or combination of colours used by one undertaking on goods or services or other articles of commerce to distinguish it from other similar goods or services originating from a different undertaking. Unicita Consulting provides the service of trademark filing in India, United States and internationally under the Madrid Protocol.

The legal requirements to register a trade mark are:
• The selected mark should be capable of being represented graphically (that is in the paper form).
• It should be capable of distinguishing the goods and or services of one undertaking from those of others.
• It should be used or proposed to be used mark in relation to goods and or services for the purpose of indicating or so as to indicate a connection in the course of trade between the goods or services and some person have the right to use the mark with or without identity of that person.

Selection of a Trademark
• If it is a word it should be easy to speak, spell and remember.
• The best trademarks are invented words or coined words.
• Please avoid selection of a geographical name. No one can have monopoly right on it.
• Avoid adopting laudatory word or words that describe the quality of goods (such as best, perfect, super etc).
• It is advisable to conduct a market survey to ascertain if same/similar mark is used in market.

Apply for a Trademark
Any person claiming to be the proprietor of a trade mark used or proposed to be used by him may apply in writing in prescribed manner for registration. The application should contain the trade mark, the goods/services, name and address of applicant and agent (if any) with power of attorney, period of use of the mark and signature. It should be filed at the appropriate trademark office.

Trademark Prosecution
Unicita offers IP support services by drafting responses to trademark office actions, and trademark appeals. Unicita’s flat fee pricing allows a profitable offering on such responses.

a) Trademark Office Actions:
Services related to trademark office actions, Unicita provides well researched and detailed responses to office actions received from trademark office in support of registration of trademarks. We also prepare responses to trademark office actions relating to:
• likelihood of confusion rejections
• descriptive mark rejections
• generic mark rejections
• Geographically descriptive mark rejections, etc.

b) Trademark Appeal Briefs:
Unicita Consulting also prepares Trademark Appeal Briefs. When a final office action is issued during the prosecution of a trademark application, the applicant can either respond to the final office action or appeal the decision of the Examining Attorney to the Trademark Appellate Board. Unicita Consulting prepares appeal briefs with arguments dependent upon the nature of the Examining Attorney’s rejection.

Copyright Registration
Copyright is a right given by the law to creators of literary, dramatic, musical and artistic works and producers of cinematograph films and sound recordings. In fact, it is a bundle of rights including, inter alia, rights of reproduction, communication to the public, adaptation and translation of the work. There could be slight variations in the composition of the rights depending on the work.

Acquisition of copyright is automatic and it does not require any formality. Copyright comes into existence as soon as a work is created and no formality is required to be completed for acquiring copyright. However, certificate of registration of copyright and the entries made therein serve as prima facie evidence in a court of law with reference to dispute relating to ownership of copyright.

The procedure for registration is as follows:
• Application for registration is to be made on Form IV ( Including Statement of Particulars and Statement of Further Particulars) as prescribed in the first schedule to the Rules ;
• Separate applications should be made for registration of each work;
• Each application should be accompanied by the requisite fee prescribed in the second schedule to the Rules; and
• The applications should be signed by the applicant or the advocate in whose favor a Vakalatnama or Power of Attorney has been executed. The Power of Attorney signed by the party and accepted by the advocate should also be enclosed.

Each and every column of the Statement of Particulars and Statement of Further Particulars should be replied specifically. Both published and unpublished works can be registered. Copyright in works published before 21st January, 1958, i.e., before the Copyright Act, 1957 came in force, can also be registered, provided the works still enjoy copyright. Three copies of published work may be sent along with the application. If the work to be registered is unpublished, a copy of the manuscript has to be sent along with the application for affixing the stamp of the Copyright Office in proof of the work having been registered. In case two copies of the manuscript are sent, one copy of the same duly stamped will be returned, while the other will be retained, as far as possible, in the Copyright Office for record and will be kept confidential. It would also be open to the applicant to send only extracts from the unpublished work instead of the whole manuscript and ask for the return of the extracts after being stamped with the seal of the Copyright Office.

When a work has been registered as unpublished and subsequently it is published, the applicant may apply for changes in particulars entered in the Register of Copyright in Form V with prescribed fee.

The process of registration and fee for registration of copyright is same.
Computer Software or programme can be registered as a ‘literary work’. As per Section 2 (o) of the Copyright Act, 1957 “literary work” includes computer programmes, tables and compilations, including computer databases. ‘Source Code’ has also to be supplied along with the application for registration of copyright for software products.

After you file your application and receive diary number you have to wait for a mandatory period of 30 days so that no objection is filed in the Copyright office against your claim that particular work is created by you. If such objection is filed it may take another one month time to decide as to whether the work could be registered by the Registrar of Copyrights after giving an opportunity of hearing the matter from both the parties.

If no objection is filed the application goes for scrutiny from the examiners. If any discrepancy is found the applicant is given 30 days time to remove the same. Therefore, it may take 2 to 3 month’s time for registration of any work in the normal course. The cooperation of the applicant in providing necessary information is the key for speedy disposal the matter.

Open Source Software License Services
Open Source Software (OSS) by its nature has many practical and legal challenges, as it is licensed and not free as the phrase “open source” suggests. Licensed open source software may require a modified software code to be distributed under the same terms and conditions as the original software code. Those who violate open source software license agreements may be pursued for copyright infringement, possible patent infringement, and unfair competition. A software developer’s copyrights to open source software are fully enforceable. The violators may face stiff penalties, seizure of all offending software, loss of license, monetary damages, injunction and, possibly, criminal liability. We at Unicita Consulting Pvt. Ltd. offer Open Source Software (OSS) License Review and Risk Study services to companies that are engaged in software development.

Services offered by Unicita Consulting Pvt. Ltd.
1. Open Source Software License Review and Open Source Software Risk Study Open source licenses are licenses that act in accordance with the Open Source definition, i.e., open source allow software to be freely used, modified, and shared. Often companies do not understand the minute details that are mentioned in the license agreement and they happen to develop a software using the open source code and claim that to be novel and new. However, they do not realise that their software as well becomes an open source.

Our aim in open source license review and risk analysis is to make sure licenses and software characterized as "open source" be conventional to existing source norms and expectations. We at Unicita perform the following tasks when a client approaches us:

• Help clients with a thorough study of an open source software license and suggest changes to a client’s approach in their software development, resulting in reducing the risk and burden hidden under the license.
• We conduct infringement studies and advise clients whether they are free to operate prior to the development or sale of their software.
• Assist clients in reviewing open source software licenses and advise them on the practical issues involved in the licenses. We provide a timely review on the license obligations regarding each open source software code that a developer intends to use in software development. We guide the developer whether a particular code is acceptable or not in software development and if not, we provide the best workaround possible.
• Assist clients in understanding open sources licenses and review a client’s objective in developing or using software code. We explain to clients the terms of use of software code and assist them in choosing the right open source software license that is the best for the client.
• Help clients in identifying areas that can be patent protected based on software processes or functions implemented by their software codes during the review.

2. Preparation of Software License Agreements
Software license agreement is the contract between the licensor and purchaser, creating the purchaser's right to use the software. The license may define ways under which the copy can be used. There are number of issues and clauses in a software license. Under the purview of a law firm, we at Unicita help clients in preparing software license agreements.

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