Gargi Ranade (Company Secretary) 09 March 2011

IPR- Memorandum of Understanding

Dear all,

Kindly help me to solve my below mentioned query.

I am working in engeeniring unit , this Co. is 100 % subsidiary of the Japanese Company . We are using technology of parent company.

Now , my Company wants to develop one product for specific client , client want to patent the design of the product . As design will be developed by both Client & my Co. we want to make joint application for the patent of design.

Is it possible to make joint application for single Design ?

Where I can get the detail procedure for getting design pattented?

What kind of agreement we should entered in to with our client for specifying rights? can somebody provide me format of such agreement?

What additional Steps we will require to follow in this case as we are manufacturing products by using technology of parent Company ???

Thanks & regards,

Gargi

Reply Follow

2 Replies

VDPASTAY (vdpastay@yahoo.com) 09 March 2011

madam,

1.filing of joint application is permissible under law viz Design Act.

2.Kindly note Patent and Design law are totally different in their legal requirement, scope and implications. It all depends on the facts of a case as to which of the two or both have to be chosen.

3.In so for as understanding between both the partners , the same can be reflected through a agreement containing clauses as to what happens if one of the party is unwilling in respect of suggestion/request of other during the time of exploitation/use of such patent or design.

4.The entire process starts with understanidng which law is applicable Patent and Design law. Then u need to explain to the business implication of both. kindly note patent process takes much longer time ie 3-4 years than design 1-2 years.

Nagaraja B S (Corporate Commercial & IP Lawyer) 09 March 2011

Dear User,

It is really very interesting.

It is possible to do joint application for design / patent registration. Before that you can make a joint IP agreement.

Design registration has to be completed in the manufacturing country, as well as importing countries. All design registration will not fall under patents. It can be just a design registration.

To comment on this issue, we need more details. Since your company is a 100% subsidiary company, before you go ahead with current proposal approval from the parent company would be mandatory.There should not be any conflict of interest.

For more details Contact

Nagaraj

Trademark Attorney & IP Lawyer

IP Lex Global Services

Email: nagaraja_bs@iplexglobal.in

Mob: 9902007635