What Any Decision Maker Needs to Know About Patent Protection

What Any Decision Maker Needs to Know about Patent Protection

Richard Neifeld, Ph.D., Patent Attorney and Robert Crockett, P.E., Patent Attorney

I. Introduction

This paper explains the basic information a decision maker needs to know regarding patents. There are certain concepts the understanding of which is a prerequisite for this topic. Those concepts are provided in section II. Section III relates patents to countries. Sections IV and V explain the legal requirements for getting patents and how long patents last. Section VI discusses patent treaties. Section VII provides ballpark cost estimates for acquiring patents.

II. Prerequisite Definitions

The term “property right,” also called “ownership of property,” means the right to exclude others from using the property. Property was historically classified as either land or personal, personal property encompassing all property other than land.

The term “intangibles” means rights that are not land or tangible personal property. Intangibles include contractual rights, good will, and intellectual property.

The term “intellectual property” means property rights in certain intangibles, such as patents, trademarks, and copyrights.

Assignment means transfer of ownership of property. (For basic information on invention ownership issues, see http://www.neifeld.com/introart3.html.)

A patent is a property right that has the attributes of personal property. Those attributes include the ability to be bought sold (assigned), and licensed. Like all property, its exclusive right can be enforced. Enforcement of any property right includes the right to sue in a court for (1) damages and (2) an injunction to stop unauthorized use of the property.

There are different kinds of patents, including utility patents, design patents, plant patents, utility models, architectural design rights, and circuit architecture rights. This paper will describe only the most commercially important, which are utility patents.

Utility patents provide a property right to things having an industrial utility, including products, and processes of making and using products. Under current U.S. law, products include computers programmed to perform a useful function, including, for example, a business accounting function, and methods of using include computers running such programs. European law currently does not allow patents on accounting functions, also referred to as business method patents. On the issue of business method patents, Japan’s law is currently somewhere in between that of the U.S. and Europe.

The exclusive right is defined by the claims and the disclosure of a patent. What the claims cover is called subject matter. That is, claims define or delimit “subject matter” to which the patentee has an exclusive right.

Unauthorized use of an intellectual property right is called infringement. Remedies for infringement typically include damages (money equivalent to the harm caused to the owner of the patent by the past infringement) and injunctions (a court order forcing the infringer to stop his infringing activity).

A specification is a written description, often including figures, of subject matter sought to be patented, such as an invention. I try to limit the use of the word “invention” in this paper because it is in many senses mis-descriptive of what a patent can protect.

A filing date is the date that a national or international patent office recognizes its receipt of an application filed in that office.

Prior art means knowledge generally known by other than the patent applicants prior to when the applicants made their discovery or invention. This is a generally applicable definition in the sense that there are several exceptions and fine points that vary from country to country. One major exception is that almost all countries other than the U.S. define the date of discovery or invention claimed in the patent application as the filing date of the application, not an earlier date when work leading to the discovery or invention was done.

III. Who Grants a Patent and Where is Each Patent Enforceable

Generally speaking, patent rights are granted by nations. Each patent is only enforceable in the nation in which it is granted. There are some international treaties that extend the one patent per nation concept. Europe, for example, has one agency, the European Patent Office, that grants European patents. There are a few other such regional patenting authorities, one for the states of the former Soviet Union, and one for certain states in Africa.

Currently, there is no international patent. That is, there is no single patent granted by any patenting authority that is legally enforceable everywhere. However, a world patent has been discussed for decades, and international organizations are making incremental progress towards such an international patenting system. Don’t hold your breath, though. Most people in the patent business expect no international patent in the near future. Also, see below regarding international treaties that ease the burden of obtaining a patent on one invention in many countries.

IV. How Long Are Patents Enforceable

Generally speaking, patent are enforceable for twenty years from when the application for the patent is filed. There are of course exceptions and variations from country to country and application to application.

V. What are the Core Conditions for Obtaining a Patent on Anything

A. The Substantive Requirements for Obtaining a Patent

The core requirements worldwide for obtaining a utility patent are (1) that the thing is useful and (2) that the thing is novel. There is a third requirement, which is referred to as either the “inventive step” or the “non-obviousness” requirement, which generally means that the thing being patented would not have been readily apparent or immediately obvious to someone working in that technology field. The U.S. applies the non-obviousness standard. Europe applies the “inventive step” standard. (The U.S. has imposed an additional requirement, called the “best mode” requirement, but that is a technicality not relevant to the purpose of this paper.)

B. The Procedural Requirements for Obtaining a Patent

The process of obtaining a patent includes the steps of preparing and filing an application for the thing to be patented, prosecuting the patent to issuance, and paying applicable government fees. While this sounds simple, it definitely is not. The preparation of a quality disclosure for a patent application is essential to the government eventually granting the patent and the resulting patent being legally enforceable and therefore accorded respect by potential business competitors.

Generally speaking, the specification must include a sufficient description to enable one of ordinary skill in the art to which it pertains to make and use the claimed subject matter in order for the application to result in a patent. This is generally true in all countries that issue utility patents. In addition, in the U.S., the specification must also disclose the best mode that the inventor had in mind for making and using the invention at the time of filing of the application.

Failing any of the substantive or procedural requirements can fatally flaw the attempt to obtain a patent.

VI. Treaties that Facilitate Obtaining Patents in More than One Country on the Same Thing

There are currently two mechanisms to facilitate extending patent protection on something to more than one country. They are the Paris Convention and the Patent Cooperation treaty.

A. The Paris Convention

The Paris Convention’s core feature is that it allows the filing of a patent application in a second country that is a member of the Convention to be accorded the filing date of an earlier filed application filed in a first country. That allows a patent applicant to file the application in one country, and then to have copies of the filed application sent to agents in other countries for filing there. The Paris Convention has a time limit of one year (for utility patents). That is, the subsequently filed applications in the other countries must be filed within 1 year of the first filed application in the first country, to be accorded the earlier filing date. This right is incredibly important because, in most countries, public disclosure of the subject matter of a patent application prior to filing the application is an absolute bar to obtaining a patent for that subject matter. The Paris Convention allows the applicant to file a single patent application in one country, and then publicly disclose and sell products and processes disclosed in the application without automatically losing the right to a similar patent in the other countries that are members of the Paris Convention. Almost all countries of industrial/commercial significance are members of the Paris Convention. The Paris Convention has been in existence since about 1900 CE.

B. The Patent Cooperation Treaty

The Patent Cooperation Treaty goes one step beyond the Paris Convention. The Patent Cooperation Treaty allows a patent applicant to legally effect filing in every country that is member to the PCT by filing a single application, a PCT application, in any country that is a member of the PCT. The PCT application, however, will not issue into an international patent. Instead, if the applicant decides to obtain a patent in a country from the PCT application, the applicant must still file and pay for the “national stage proceeding” of the PCT application in that country. The benefits of filing a PCT application instead of national stage applications are (1) the PCT application allows for a minimum of 30 months to file “national stage” application during which time the applicant has no substantial patent related costs, (2) the PCT application reduces the formalities and costs required in filing applications in multiple countries, and (3) the PCT application process can provide an initial indication (prior to the 30 month period just noted) regarding the likelihood that the subject matter of the application is patentable so that the applicant can make an informed financial decision regarding cost/benefit of paying for the national stage proceedings in any country. Almost all industrially significant countries are members of the PCT. There are still some exceptions, like Thailand. The PCT has been in existence since the 1970’s and it has been tremendously effective, with tens of thousands of PCT applications now filed annually.

The PCT incorporates the Paris Convention. What this means is that a PCT application can claim Paris Convention priority to an earlier patent application. Therefore, a patent applicant can, for example, first file an application for a U.S. patent. Then, the applicant can file a PCT application which legally has the U.S. patent application’s priority date because of the Paris Convention. Then, the applicant can enter the PCT national stage in selected countries, for example, selecting the United States, China, Japan, Europe, and Korea for PCT national stage proceedings, and not selecting (and thereby abandoning patent protection in) all other countries.

C. Other Treaties Facilitating Obtaining National Patents

Europe has the European Patent Convention. The former Soviet Union has the Eurasian Patent Convention. Some African national have the OAPI treaty.

The EPC allows a single application to issue into a single European patent. However, generally speaking, that European patent is currently not enforceable in any European country unless the granted patent has been translated and filed in the country’s national patent office within 3 months of the date of grant of the European patent. Hence, the substantial translation and national agent costs, and annuities costs, also exist for European countries. The other two treaties are currently of negligible importance.

VII. Costs and Cost/Benefit

No one can file a patent for an invention in all countries of the world. Anyone that thinks they can is fooling themself. Consider the following rough outline of costs. These costs estimates are ball park, and generally independent of country.

Initially, there is the cost of any determination whether to file a patent application (internal corporate patent committee review, patent prior art search and evaluation). Next, there is the cost of drafting a patent specification, claims, and figures. That currently ranges for typically patent applications from three to twenty thousand dollars, depending upon the importance of the invention, technological complication, budget, etc. Most of that cost is the cost of drafting the specification and claims, typical a few tens of hours of attorney time. There is the government cost of filing the application, which typically ranges between one and three thousand dollars. That is the cost to file a first application.

Consider now the cost to file Paris Convention or PCT national stage equivalents. This cost includes the foreign agent’s docketing and filing charges, typically one to two thousand dollars, and the foreign government’s filing fees, typically one to two thousand dollars. That is per country. If, however, the target country does not accept filings in the language in which the specification was originally drafted, then include the cost of a professional translator skilled in patent translations. That ranges from 0.20 to 0.40 cents per word. For a 50 page specification having 300 words per page at one and one half line spacing (15,000 words total), that will cost three to six thousand dollars. If you have a 100 page specification, double that value. If you have a 200 page specification, triple that value.

You have now considered the cost to get the application on file. Add to that the cost of complying with each government patent office’s formalities requirements, and responding to each government patent office’s examiner’s review and rejections or requirements, including both the foreign agent’s fees and the national agent’s fees.

Now add in each government’s charges for granting the application, the foreign agent’s charges for paying for the grant, typically about two thousand dollars, the costs for your national agent to handle those transactions, and then the foreign government annuities, the costs for the foreign agent to track and pay those fees, and the cost for your national agent to track report to you, and pass along your instructions. The foreign government annuities vary from country to country, the determination of the date on which they are due varies from country to country, and the fees typically increase from about one hundred dollars the first year to over a thousand dollars near the end of the 20 year patent term. The foreign agent’s fees depend upon the magnitude of the government fees but are never less than about one hundred dollars.

All of the foregoing assumes that no one challenges your patent application via an opposition proceeding or the like. Any proceeding involving more than just the patent application and the government will increase by tenfold the costs for that country, and impact the costs in the other countries as well.

Thus, to file for, obtain, and maintain a patent for something in all countries of the world would cost millions of dollars. Given those constraints, any patent applicant must make cost/benefit analyses to determine in whether and in which countries to seek patents. Moreover, the cost benefit analysis and timing of incurring costs in the patenting process are substantially influenced by the procedures (national, Paris, PCT, and EPC filings) used to obtain patent protection.

VIII. Further Information

This article has discussed some of the basics of patent law that every decision maker needs to know. Additional articles and resources on patent law and intellectual property can be found at www.neifeld.com.

“DIVORCE LAW of INDIA NEEDS URGENT AMENDMENT” – LAW MINISTER OF INDIA

DIVORCE LAW of INDIA –

AMENDMENT AS PER LAW COMMISSION’S RECOMMENDATION IN 2009 –

NOT YET DONE

 

Another case of: – JUSTICE DENAIED when JUSTICE DELAYED

 

Groom: Aged about 40yrs, Bride: 41 yrs, Son: Aged about 12yrs

 

PAST

 

On or about 1984, I, at the age of 15 years proposed to a 16-year girl – and the story began. I forgot that I lost my father at the age of 11 years, had a sister aged 6 years and my widow mother. I had lots of responsibilities to carry out as the only son of my beloved father. In a romantic mood, I forgot the difference in financial status of the two families. The story could have been entirely different if the girl would have refused me then and there, but she accepted me. But her family was “matured” and they opposed it in every possible way. I had my first big exam (10+) just at door. In spite of broken heart I tried my best and got 70% in the exam.

 

Thereafter I could realise the real state of affairs, as the girl became totally silent. But I wanted to meet the girl at least once and finally found her in July 1988, in her college, 15 km away from her home. In between, the girl never informed me about her whereabouts. Again on that day the girl agreed to “CARRY ON” the romance for the time being.

 

In  1994, myself got married after lots of inside drama from her family. Her father could never accept me “from heart” as an eligible husband of his daughter and he did a “FAVOUR” to us; by managing to get a job for her, in a school 65 km away from her in-law’s house, just a month before the said marriage. Meantime I managed to make a house with the proceeds received from LIC, obtained after my father’s death. At that time, I was looking after the “small” business left by my father. But her father could never rely on my financial condition and his daughter continued with the service by ferrying daily up and down 130 km. She used to stay very often at her father’s house (close to workplace). She conceived in 1995, but had a miscarriage, and she had two more miscarriages after that in two consecutive years. I lost the joy of being a FATHER and the doctors told specifically that all these miscarriages happened due to her daily strenuous journey. In between, I have decided to take up a job. And my wife finally decided to leave her job, her father also agreed (after some drama again) to the decision. And just after that she became the “proud mother” of our only son.  But she could never forgive me for that decision, although she made her own decision always.

 

I started feeling humiliated for the indirect responsibility for the cause of leaving her job. The misunderstanding began and it increased day after day. I concentrated on my job, and obtained recognition from my employer. I was earning enough to carry on my responsibilities. I built up another floor in the house, since my mother had a long desire for that. I performed my last pending duty by getting my sister married in 2006. I started realising slowly, that I am nothing but a moneymaking machine for my wife. Needless to say, in between, the marriage lost all its charm in all way. My wife became a “lady” by then and was reasonably satisfied with her monetary status, and I became a late 30’s gentleman and kept myself satisfied with my job with an understanding that for the sake of my son, we should stay together.

 

But from 2007, she started taunting me even in front of my son. I became mentally broke. My health was broken, started suffering from IBS, BP etc. (diseases from tension and mental unrest) and started thinking about separation and divorce. I had to take sedative regularly. At the same time I was worried about my son’s future. We were sleeping in different rooms from 2008. My wife stopped using Sindoor from 2006. I really wanted to forget all her past behaviours as bad dreams, but I couldn’t.  I love my job; it has given me my own identity and before the situation affects my job performance, I wanted to end it. I was in a dilemma till April 2009 (on the death anniversary of my father); when she humiliated me about my parents and myself with some nasty words (“you have some problem in your blood, that’s why I am worried about my son’s future staying with you”). I have finally decided for DIVORCE. Previously, she said many times that she would also prefer the mutual application for Divorce. But this time she disagreed and after discussing with her father, they demanded huge ransom money as “compensation”. She also told me that as divorce is inevitable, one of us should leave the house. I wanted to provide my son at least the same house after separation, which I felt necessary for my son’s upbringing. I shifted to a rented apartment near my place of work in July 2009. She was taking money (whatever needed) from me as usual and delaying the filing process for any separation, keeping the same humiliation process on. I agreed (also paid till date) to pay all necessary expenses for maintenance of my son and wife, including the maintenance for the house where they are still staying with my mother. After all this in 25 years, her father again failed to rely on me. Earlier, I had no money, so they hesitated to get myself married to her. But now, they do not know how much money to claim from me, to spoil me even after Divorce, and that is why they are hesitating to go for a mutual divorce. So I had no other alternative to file the divorce petition in September 2009. I know lots of odds will come from my mother and relatives, as divorce is still considered as a social taboo. Each marriage is between two individual – not between “Ideal Wife” and “Ideal Husband”. I am responsible for my job (doing it last 13 years) as well as my family. I belong to a social class and agree to pay any reasonable maintenance (the only sub clause was recommended as check measure for divorce for Irretrievable Break Down) as decided by the Honourable Court.

 

Contest divorce itself is a very tough decision. Even in my professional life, people are not taking it easily. Still I want to take my own black spots, my failure in the marriage – to the public, at least to the people who matters; cant play hide and seek game anymore. I stopped myself several times; thinking about my son, but he should also better see one parent than parents without love or respect for each other. Perhaps by staying apart both of us can maintain a healthy relation with him.

 

PRESENT

 

[ Lots of incidents happened in between: -

 

In October, I felt sad for my son (but nothing for my wife) and came to my old address. But the “drama” continued. I got seriously depressed after noticing my wife’s behavior. Actually she got much more “CRUEL”, and silently (sometime with abusive language in a very low voice) she started humiliating me.  Finally, I went to a psychiatrist. I was suffering from a tremendous depression and trauma for my wife’s behavior. After being checked up by 2 more doctors, I am taking anti-depressant drugs since then. Recently (January, 2009) I got a “fit certificate” from Doctor, but still having medicines. In between, she forced to bring all household goods from my rented apartment and stopped to me sell the same, although some items (like fridge) were duplicated. I really got spellbound noticing her attitude. She forced me to shift to 1st floor leaving my mother on ground floor. On 1st floor we were sleeping in different rooms .Now I am again residing at my rented apartment. ]

 

Now it’s already 5 months gone after my filing. The first date was in Dec 2009. On that day I just got another date. And on the next date also, I shall surely get just “another date.”

 

Is not this the right (if not delayed already) time to address the problem associated with Indian Divorce Act itself?  Please note, I am not the 1st to say this, the law commissions already felt this in 1971 and 2009 (reports enclosed). Both “seriously” recommended introducing THE IRRETRIEVABLE BREAK DOWN OF MARRIAGE as another ground for divorce. We have now a “Fault divorce” and mutual divorce. When my partner and me can’t agree on a less affecting thing like “mutual divorce” (which means to break the tie of marriage), how can we STAY TOGETHER in marriage thereafter? All of us know that, staying together (in any form) requires much more agreement between any two people than to stay apart. That means I have to request (or beg or buy) my wife to be free from marriage, just like a sentenced captive from the Jail. Judiciaries indirectly being used as a tool to bargain terms for divorce, in cases like this. Yes, when there is legal battle between couple, who are staying separate over a year, the only motto can be to get a “good bargain” or to harass one spouse by mere non-cooperation. My wife now more “ cruel” in behaviour. She is fighting legally with me – that means she don’t have any ‘emotional” dependence on me. When we talk about our “old tradition of marriage” we often forget that, no “traditional” wife will come to court to keep or leave her marriage.

 

I would like to mention another thing. My petition primarily based on “CRUELTY”, as the most suitable “available ground” for divorce. But one has to understand that fairer sex normally don’t act “cruel” by physical nature. Even in some cases “SILENCE” or “ABSENCE OF CORDIAL NATURE” between husband and wife can be cruelty of severe nature, which happened in my case. And when a person like me, who act as a Manager in a reputed company, files the divorce for wife’s cruelty, it can effect my professional reputation to a great extent. Actually it’s very much humiliating for me to file the petition and fight for that. It’s not explainable to anyone, but one who is in similar condition, can very well understand this. Broken marriage is not a crime and by the recommended amendment, divorce law can address that break with far less complexity. As we all know, nobody or nothing can compel a couple or any two people to live together. Present Divorce Law can delay (and make more bitter) the process of divorce, but can’t really change the direction in this scenario.

 

Can the Judiciary ask me to point out very private part of my life like marriage? Is not this hampering my basic fundamental right as a citizen? When there is no such law for a “father & son” or “mother & son” relation to be in that tie for ever (although maintenance clause is there), why would be such gross disparity in case of marriage? Are later the more “NOBLE” or “MUST ON” relations than the earlier? Is institution of marriage a serious “offense”, which if I have done once, can’t be freed till my death? Is wedlock means deadlock?

 

 

Now as an effect I have two options –

 

EITHER to stay in my marriage forgetting about my own negative feelings compromising with my health and peace of mind

 

OR

 

To badmouth my son’s mother in the court to prove her fault to get rid of her.

 

In both cases either my wife or I would be sufferer, not the Honurable Judiciary or the legislative body! Won’t the chances of any healthy relation would decrease or diminish just because of amount of tension created between us during the process, as more dates means more blames or more defense (which is also a part of attack mechanism)? Even the child would be indirectly sufferer for the bitterness between the parents as helpless witness of the whole event.  Breaking up is a hard decision for anyone, but while doing, why we (in the process itself for its duration & nature) need to be nasty instead of peaceful? If a marriage can be done in a one-month notice period, why the divorce would be delayed for YEARS?

 

I am referring to some very pertinent cases where Honourable Supreme Court of India understood the gravity of the circumstances and granted the decree of divorce by dissolving the marriage, sometimes even after the lower court’s verdict in an opposite direction. In most of the cases, petition filed against wife’s cruelty. Judiciary understood that delaying the process would only increase bitterness between the couple. Whenever we delay something, it affects. In this scenario its affecting unfortunate people like me.

 

 

(1) N. G . Dastane Vs S. N. Dastane

DATE OF JUDGMENT : 19/03/1975

BENCH: CHANDRACHUD, Y.V. GOSWAMI, P.K. UNTWALIA, N.L.

CITATION: 1975 AIR 1534    1975 SCR (3) 967, 1975 SCC(2)   326CITATOR INFO : RF 1988 SC 121 (7,10)

 

(2) SIRAJMOHMEDKHAN JANMOHAMADKHAN  HAFIZUNNISA YASINKHAN & ANR

DATE OF JUDGMENT14/09/1981

BENCH:FAZALALI, SYED MURTAZA

BENCH:FAZALALI, SYED MURTAZA

SEN, A.P. (J)

CITATION:

1981 AIR 1972 1982 SCR (1) 695

1981 SCC    (4) 250 1981 SCALE    (3)1400

 

(3) Shobha Rani Vs Madhukar Reddi

DATE OF JUDGMENT12/11/1987

BENCH:SHETTY, K.J. (J), RAY, B.C. (J)

CITATION: 1988 AIR 121    1988 SCR    (1)1010

1988 SCC    (1) 105 JT 1987 (4)    433

1987 SCALE    (2)1008

 

(4) V. Bhagat Vs D. Bhagat

DATE OF JUDGMENT 19/11/1993

BENCH: JEEVAN REDDY, B.P. (J), KULDIP SINGH (J)

CITATION: 1994 AIR 710, 1994 SCC    (1) 337

JT 1993 (6) 428    1993 SCALE    (4)488

 

(5) Romesh Chander Vs Savitri –

DATE OF JUDGMENT 13/01/1995

BENCH: SAHAI, R.M. (J), MAJMUDAR S.B. (J)

CITATION: 1995 AIR 851    1995 SCC (2)    7

JT 1995 (1) 362    1995 SCALE    (1)177

 

(6) SMT. KANCHAN DEVI Vs. PROMOD KUMAR MITTAL & ANR.

DATE OF JUDGMENT:    03/04/1996

BENCH:ANAND, A.S. (J)

BENCH:ANAND, A.S. (J)FAIZAN UDDIN (J)

CITATION:JT 1996 (5) 655    1996 SCALE    (3)293

 

(7) Ashok Hurra Vs Rupa Bipin Zaveri

DATE OF JUDGMENT: 10/03/1997

CIVIL APPEAL NO 1835 OF  1997

 

(8) G.V.N. KAMESWAR RAO Vs G. JABILLI

DATE OF JUDGMENT:    10/01/2002

CASE NO.:Appeal (civil) 140 of    2002

BENCH: D.P. Mohapatra & K.G. Balakrishnan

 

(9) Praveen Mehta Vs Inderjit Mehta

DATE OF JUDGMENT 11/07/2002

CASE NO.: Appeal (civil) 3930 of    2002

 

(10) A. Jayachandra Vs Aneel Kaur

DATE OF JUDGMENT: 02/12/2004

CASE NO.:Appeal (civil)    7763-7764 of 2004

BENCH: RUMA PAL, ARIJIT PASAYAT & C.K.THAKKER

 

(11) Durga Prasanna Tripathy Vs Arundhati Tripathy     DATE OF JUDGMENT : 23/08/2005

CASE NO.: Appeal (civil)    5184 of 2005

 

(12) Vineeta Saxena Vs Pankaj Pandit

DATE OF JUDGMENT: 21/03/2006

CASE NO.: Appeal (civil)    1687 of 2006

BENCH: Ruma Pal & Dr. AR. Lakshmanan

 

(13) K R MAHESH Vs MANJULA

DATE OF JUDGMENT: 11/07/2006

CASE NO.:Transfer Petition (civil)    947 of 2005

BENCH:ARIJIT PASAYAT & S.H. KAPADIA

 

(14) Kajol Ghosh Vs Sanghamitra Ghosh

DATE OF JUDGMENT: 20/11/2006

CASE NO.: Transfer Petition (civil)    228 of 2004

BENCH: G.P. MATHUR & DALVEER BHANDARI

 

(15) Rishikesh Sharma Vs Saroj Sharma

DATE OF JUDGMENT 21/11/2006

CASE NO.:Appeal (civil) 5129 of 2006

 

(16) Sujata Uday Patil Vs Uday Madhukar Patil

DATE OF JUDGMENT: 13/12/2006

CASE NO.: Appeal (civil)    5779 of 2006

BENCH: G.P. Mathur & A.K. Mathur

 

(17) Mayadevi Vs Jagdhish Prasad

DATE OF JUDGMENT: 21/02/2007

CASE NO.:Appeal (civil) 877 of 2007

BENCH: Dr. ARIJIT PASAYAT & DALVEER BHANDARI

 

(18) Samar Ghosh Vs Jaya Ghosh

DATE OF JUDGMENT: 26/03/2007

CASE NO.: Appeal (civil)    151 of 2004BENCH: B.N. Agrawal, P.P. Naolekar & Dalveer Bhandari

 

(19) Satish Sitole Vs Smt Ganga

DATE OF JUDGMENT : 10/07/2008

CIVIL  APPEAL  No. 7567  of  2004

 

(20) Suman Kapur Vs Sudhir Kapur

DATE OF JUDGMENT 07/11/2008

CIVIL APPEAL NO.6582 OF 2008

 

And Last but not the least, THE LANDMARK JUDGEMENT

 

(21) Naveen Kohli Vs Neelu Kohli

DATE OF JUDGMENT 21/03/2006

CASE NO.:Appeal (civil)    812 of 2004

 

Some Newspaper articles about our present Divorce Law: -

 

“Examining the irretrievable breakdown of marriage as a ground for divorce
Ankit Kejriwal, Prayank Nayak

Irretrievable breakdown of marriage can be defined as such failure in the matrimonial relationship or such circumstances adverse to that relationship that no reasonable probability remains of the spouses remaining together as husband and wife for mutual comfort and support. It is the situation that occurs in a marriage when one spouse refuses to live with the other and will not work towards reconciliation. When there is not an iota of hope that parties can be reconciled to continue their matrimonial life, the marriage can be considered as Irretrievable Breakdown of marriage.

 

This concept was first introduced in New Zealand. The Divorce and Matrimonial Causes Amendment Act, 1920 included for the first time the provision for separation agreement for three or more years was a ground for making petition to the court for divorce and the court was discretion whether to grant divorce or not. In England, the gate for this theory was opened up in the case of Masarati v. Masarati, where both the parties to the marriage had committed adultery.  The court of appeal, on wife’s petition for divorce, observed breakdown of marriage. The law commission of England in its report said, The objectives of good divorce law are two: one to buttress rather than to undermine the stability of marriage and two, when regrettably a marriage has broken down, to enable the empty shell to be destroyed with maximum fairness, and minimum bitterness, humiliation and distress. On the recommendation of the Law commission, Irretrievable Breakdown of Marriage was made the sole ground for divorce under section 1 of the Divorce Law reforms Act, 1973. The Matrimonial Causes Act, 1959 of the Commonwealth of Australia provided for divorce on the grounds of breakdown of marriage. In India, breakdown of marriage is still not ground divorce in spite of the recommendation of the Law Commission and various Supreme Court judgments to include breakdown of marriage as a ground for divorce. This paper examines the need to introduce irretrievable breakdown of marriage as a ground of divorce.

 

Theories of divorce

 

The provisions relating to divorce are contained in Sec 13 of Hindu Marriage Act, 1955. The Act recognizes two theories of Divorce: the fault theory and divorce by mutual consent. Under the fault theory, marriage can be dissolved only when either party to the marriage had committed a matrimonial offence. Under this theory it is necessary to have a guilty and an innocent party and only innocent party can seek the remedy of divorce. However the most striking feature and drawback is that if both parties have been at fault, there is no remedy available.

 

Another theory of divorce is that of mutual consent. The underlying rationale is that since two persons can marry by their free will, they should also be allowed to move out of their relationship of their own free will. However critics of this theory say that this approach will promote immorality as it will lead to hasty divorces and parties would dissolve their marriage even if there were slight incompatibility of temperament. Some of the grounds available under Hindu Marriage Act can be said to be under the theory of frustration by reason of specified circumstances. These include civil death, renouncement of the world etc. In this article we shall see that how these theories, owing to change in social circumstances and change in attitude towards the institution of marriage had failed to provide full justice in matrimonial cases.

 

Judicial opinions

 

 The Supreme Court has adopted a literal view and granted divorce under irretrievable breakdown of marriage. In Ashok Hurra v. Rupa Bipin Zaveri, the husband and wife filed a suit for divorce by mutual consent. But, subsequently wife withdrew her consent. So the petition was dismissed by trial court. The Supreme Court held that We are of the view that cumulative effect of various aspects involved in the case indisputably point out that marriage is dead both emotionally and practically, and there is no chance at all of the same being revived and continuation of such relationship is only for name-sake. The Honble Court used Article 142 and granted divorce. The Delhi High Court in its full judge bench decision in Ram Kali v. Gopal Das, took note of modern trend not to insist on maintenance of an union which was broken and said, ‘it would be practical and realist approach, indeed it would be unreasonable and inhumane, to compel the marriage to keep up the facade of marriage even though the rift between them is complete and there are no prospects of their living together as husband and wife’. In the case of Savitri Pandey v. Prem Chandra Pandey, the Supreme Court reiterated the need for the inclusion of irretrievable breakdown of marriage as a ground for divorce. The Supreme Court in Manjula v. K.R. Mahesh held, the marriage has irretrievably broken down and there would be no point in making an effort to bring about conciliation between the parties. In Neetu Kohli v. Naveen Kohli, husband alleged that the wife was quarrelsome and was found in compromising situation with one Biswas Rout. The wife counter alleged that husband had a concubine. This established that the marriage had broken down irreparably and hence granted divorce on grounds of an irretrievable breakdown. It also observed that it was high time that this be included as ground for divorce in the Hindu Marriage Act, 1955.

 

Seventy-first Law Commission Report

 

The 71st Law Commission of India submitted to the Government on 7th April 1978 dealt with the concept of irretrievable breakdown of marriage. This matter was taken by the Law Commission as a result of the reference made by the Government of India in the Ministry of Law, Justice and Company affairs. The Report points out the fact that the fault and the guilt theories of divorce are not sufficient and cause injustice in those cases where the situation is such that although none of the parties is at fault, or the fault is of such a nature that the parties to the marriage do not want to divulge it, yet there has arisen a situation in which the marriage cannot be worked. The marriage has all the outward manifestations of marriage but the real substance is gone, it’s just like an empty shell. The Report unequivocally asserts that in such circumstances it will be in the interest of justice to dissolve the marriage. It is also mentioned in the Report that in case the marriage has ceased to exist in substance and in reality, there is no reason for denying divorce; the parties alone can decide whether their mutual relationship provides the fulfillment, which they seek. Divorce should be seen as a solution and an escape route out of a difficult situation. Such divorce is unconcerned with the wrongs of the past, but is concerned with bringing the parties and the children to terms with the new situation and developments by working out the most satisfactory basis upon which they may regulate their relationship in the changed circumstances. The majority view, which is shared by most jurists, according to the Law Commission Report, is that human life has a short span and situations causing misery cannot be allowed to continue indefinitely. A halt has to be called at some stage. The law cannot turn a blind eye to such situations, nor can it decline to give adequate response to the necessities arising there from. By refusing to sever that tie the law in such cases do not serve the sanctity of marriage; on the contrary, it shows scant regard for the feelings and emotions of the parties.

 

Other jurisdictions 

 

In most developed nations, the irretrievable breakdown of marriage is recognised as a ground for divorce.

 

 

New Zealand

 

New Zealand was the first country to recognize it, through the  (New Zealand) Divorce and Matrimonial Causes Amendment Act, 1920 where a separation agreement for three years is a ground for making a divorce petition

  AUSTRALIA

 

The Matrimonial Causes Act, 1959 of the commonwealth of Australia provided for divorce on the grounds of breakdown of marriage.  The Family Law Act (Australia), 1975 considers irretrievable breakdown as sole ground for divorce If a marriage breaks down, it can legally be ended by the court granting a Divorce.There is only one ground for divorce in Australia – the fact that the marriage has irretrievably broken down. The legal test of irretrievable breakdown is that you have lived apart for at least twelve months and there is no prospect of reconciliation. As far as the court is concerned, this is all you have to establish. The judge won’t be interested in who left whom, or whether one of you is having an affair, or whose ‘fault’ it was that the relationship broke down.

 

Brazil

 

Presumably due to the influence of the Roman Catholic Church, divorce only became legal in Brazil in 1977. Since January 2007, Brazilian couples can request a divorce at a notary’s office when there is a consensus, the couple has been separated for more than a year and have no underage or special-needs children. The divorcees need only to present their national IDs, marriage certificate and pay a small fee to initiate the process, which is completed in two or three weeks.

 

Canada

 

Canada did not have a federal divorce law until 1968. Before that time, the process for getting a divorce varied from province to province. In Newfoundland and Quebec, it was necessary to get a private Act of Parliament in order to end a marriage. Most other provinces incorporated the English Matrimonial Causes Act of 1857 which allowed a husband to get a divorce on the grounds of his wife’s adultery and a wife to get one only if she established that her husband committed any of a list of particular sexual behaviours but not simply adultery. Some provinces had legislation allowing either spouse to get a divorce on the basis of adultery. .

 

 

Under the Divorce Act, 1967-68 it (IBM) is clearly recognised as a ground for divorce, apart from the normal fault grounds.

The federal Divorce Act of 1968 standardized the law of divorce across Canada and introduced the no-fault concept of permanent marriage breakdown as a ground for divorce as well as fault based grounds including adultery, cruelty and desertion.

In Canada, while civil and political rights are in the jurisdiction of the provinces, the Constitution of Canada specifically made marriage and divorce the realm of the federal government. Essentially this means that Canada’s divorce law is uniform throughout Canada, even in Quebec, which differs from the other provinces in its use of the civil law as codified in the Civil Code of Quebec as opposed to the common law that is in force in the other provinces and generally interpreted in similar ways throughout the Anglo-Canadian provinces.

The Canada Divorce Act recognizes divorce only on the ground of breakdown of the marriage. Breakdown can only be established if one of three grounds hold: adultery, cruelty, and being separated for one year.

 Most divorces proceed on the basis of the spouses being separated for one year, even if there has been cruelty or adultery. This is because proving cruelty or adultery is expensive and time consuming. The one-year period of separation starts from the time at least one spouse intends to live separate and apart from the other and acts on it. A couple does not need a court order to be separated, since there is no such thing as a “legal separation” in Canada. A couple can even be considered to be “separated” even if they are living in the same dwelling. Either spouse can apply for a divorce in the province in which either the husband or wife has lived for at least one year.

On September 13, 2004, the Ontario Court of Appeal declared a portion of the Divorce Act also unconstitutional for excluding same-sex marriages, which at the time of the decision were recognized in three provinces and one territory. It ordered same-sex marriages read into that act, permitting the plaintiffs, a lesbian couple, to divorce.

 

France

 

The French Civil code (modified on January 1, 2005), permits divorce for 4 different reasons; mutual consent (which comprises over 60% of all divorces); acceptance; separation of 2 years; and due to the ‘fault’ of one partner (accounting for most of the other 40%).

 

Sweden

 

To divorce in Sweden the couple can file for divorce together or one party can file alone. If they have children under 16 living at home or one party does not wish to get divorced there is a required contemplation period of 6 to 12 months. During this period they stay married and the request must be confirmed after the waiting period for the divorce to go through.

 

United Kingdom

England and Wales

In England, on the recommendation of the Law Commission, it was made the sole ground for divorce under section 1 of the Divorce Law reforms Act, 1969.

 

 

A divorce in England and Wales is only possible for marriages of more than one year and when the marriage has irretrievably broken down. Whilst it is possible to defend a divorce, the vast majority proceed on an undefended basis. A decree of divorce is initially granted ‘nisi’, i.e. (unless cause is later shown), before it is made ‘absolute’

From beginning to end, if everything goes smoothly and Court permitting, it takes around 6 months.

There is only one ‘ground’ for divorce under English law. That is that the marriage has irretrievably broken down.

There are however five ‘facts’ that may constitute this ground. They are:

Adultery

often now considered the ‘nice’ divorce.

respondents admitting to adultery will not be penalised financially or otherwise.

Unreasonable behaviour (most common ground for divorce today )

the petition must contain a series of allegations proving that the respondent has behaved in such a way that the petitioner cannot reasonably be expected to live with him/her.

the allegations may be of a serious nature (eg. abuse or excessive drinking) but may also be mild such as having no common interests or pursuing a separate social life ; the courts won’t insist on severe allegations as they adopt a realistic attitude: if one party feels so strongly that a behaviour is “unreasonable” as to issue a divorce petition, it is clear that the marriage has irretrievably broken down and it would be futile to try to prevent the divorce. [4]

Two years separation (if both parties consent)

both parties must consent

the parties must have lived separate lives for at least two years prior to the presentation of the petition

this can occur if the parties live in the same household, but the petitioner would need to make clear in the petition such matters as they ate separately, etc.

Two years desertion

Five years separation (if only one party consents)

 

Scotland

 

About one third of marriages in Scotland end in divorce, on average after about thirteen years. Actions for divorce in Scotland may be brought in either the Sheriff Court or the Court of Session. In practice, it is only actions in which unusually large sums of money are in dispute, or with an international element, that are raised in the Court of Session. If, as is usual, there are no contentious issues, it is not necessary to employ a lawyer. Divorce (Scotland) Act 1976.

It is likely that the two year separation period required for a no-fault divorce with consent will be reduced to one year.

 

United States

 

Marital Status in the U.S.

Divorce in the United States is a matter of state rather than federal law. In recent years, however, more federal legislation has been enacted affecting the rights and responsibilities of divorcing spouses. The laws of the state(s) of residence at the time of divorce govern; all states recognize divorces granted by any other state. All states impose a minimum time of residence. Typically, a county court’s family division judges petitions for dissolution of marriages.

Prior to the latter decades of the 20th century, a spouse seeking divorce had to show cause and even then might not be able to obtain a divorce. The no-fault divorce “revolution” began in 1969 in California, and was completed in 1985 (New York is the last holdout ). However, most states require some waiting period, typically a 1 to 2 year separation. Fault grounds, when available, are sometimes still sought. This may be done where it reduces the waiting period otherwise required, or possibly in hopes of affecting decisions related to a divorce, such as child custody, child support, or alimony.”

  Problems, suggestions

 

However the an attempt to introduce irretrievable breakdown of marriage as a ground for divorce has met with resistance by women organization on the grounds that husbands would desert their wives and then ask for divorce under breakdown of marriage. Also it has been stated by few that the concept of irretrievable breakdown of marriage is somewhat vague. In answer to first criticism it has to be stated in situation where wife has been deserted it indicates that husband wants to get rid of wife and any continuation of such relationship would not make sense to both the parties to the marriage. However a safety clause can be inserted which would empower the court to refuse divorce if it adversely affects the interests of the children. A provision for maintenance for child and wife should be made. As far as the second objection is concerned, it should be necessary for grant of decree of divorce under this theory that parties had lived separately for reasonably long time say for three years. Living separately can be considered as objective criteria for breakdown of marriage. 

 

The concept of marriage is moving from a sacrament to a contract. The spouse should be granted a right to move out of the wedlock if they cannot live together due to extreme situations. Justice Krishna Iyer in the case of Aboobacker v. Mam stated while the stream of life, lived in marital mutuality, may wash away smaller pebbles, what is to happen if intransigent incompatibility of minds break up the flow of stream. Since the social conditions prevailing in the country are peculiar, sufficient changes are needed to be made in the law made so that law is able to ameliorate the conditions of the people who, in absence of required law are craving for relief and hence would be able to make process of dissolution less excruciating. A question may be asked that when irretrievable breakdown of marriage has been recognized as a ground for divorce by judiciary why we need an amendment in legislation. This is so because amendment would lay down conditions and safe guards, which should be taken into consideration before the grant of any decree. 

It is high time that the Government recognizes the need of the time and save many couples from the disgrace and humiliation by introducing the irretrievable breakdown of marriage as ground for divorce under Section 13 of the Hindu Marriage Act, 1955.”

 

“Divorce law in our country belongs to an era that has long elapsed. But the laws have neither kept pace nor do they take into account the altered socio-economic realities of contemporary India. This is highlighted, once more, by the recent controversy surrounding grounds for divorce following Smriti Shinde’s petition to the apex court urging it to consider granting unilateral divorce when a marriage has irretrievably broken down. The Supreme Court itself is ambivalent about where it stands on the matter.

Under the Hindu Marriage Act or the Special Marriage Act, there are no provisions that recognise “irretrievable breakdown” or “irreconcilable differences” as grounds for granting divorce when it is not a mutually consensual decision. However, in 2006, the apex court granted divorce in the Naveen Kohli vs. Neelu Kohli case, precisely because of irretrievable breakdown of marriage. But, early this year, another SC bench refused to entertain this argument in the Vishnu Dutt Sharma vs. Manju Sharma case. It decided to stick to the letter of the law.

This is as good a time as any for the laws governing divorce to be updated. In doing so, the issue must not be looked at through a moral prism alone. As Indians interface with the world and are exposed to new ideas and opportunities, there is bound to be a social churn, which impacts on personal affairs like marriage and family relations. Add to this the fact that more women today are economically more independent and assertive of their rights and choices. Divorce must be seen as a social reality, unfortunate though it might be, and not as a social evil.

There are of course legitimate concerns that waiving the mutual consent clause to grant divorce in cases of irreparable marital breakdown would put women in a vulnerable position. But that cannot be used as an excuse to deny those who would genuinely benefit from easing the process of obtaining a divorce. As things stand, one has to go through a lengthy, convoluted and extremely stressful procedure to get a divorce. It’s time that changed.”

 

“Feelings of two human beings are involved in a couple’s

married life. This could not be patched up by enforcement of law by courts. It is up to the individuals to mend themselves. A horse can be taken to water but it is the horse that should drink it. However, the law should not deny divorce if the marriage has really broken down. By forcing unity with a hammer in the hand, the law does not serve the sanctity attached to the institution of marriage by religions. If the relationship of husband and wife wrecks beyond repair, what is wrong in recognizing that fact and allow them to live separately. How can one compel a wife or a husband to continue to live with spouse if they have fallen apart? If so compelled they would have to lead miserable life.”

 

Forget everything else, just imagine a scenario in a bedroom of a couple where a Judge is sitting and deciding about the “cruelty” performed or not among the couple. It must be sounding ridiculous and to avoid such embarrassment, Law Commission suggested the amendment in the divorce law itself through recent Report (Report no 217, November 2008): -

 

III.RECOMMENDATION

 

3.1          It is, therefore, suggested that immediate action be taken to introduce an amendment in the Hindu Marriage Act, 1955 and the Special Marriage Act, 1954 for inclusion of  ‘irretrievable breakdown of marriage’ as another ground for grant of divorce. 3.2            The     amendment     may     also     provide     that     the     court     before granting a decree for divorce on the ground that the marriage has irretrievably broken down should also examine whether adequate financial arrangements have been made for the parties and children

 

I like to highlight some facts in countries, where NO- FAULT (effectively faster & peaceful) divorce exists: -

 

 

A decline in the rates of domestic violence (which is obviously of a very high concern in India)

 

These laws empower a man or woman in an “abusive marriage” and make it easier to leave and live separate

 

Means less conflict during divorce, which means less emotional harm to children whose parents, are divorcing (very much valid in my case)

 

Shortens the length of time it takes to obtain a divorce, which, in turn, shortens the amount of time spent in a stressful situation causing physical and mental damage to involved party (as in my case, I am having anti depression drugs as prescribed)

 

Financial settlements are based on need, ability to pay and contribution to the family finances, rather than on fault (I am ready to accept any reasonable amount decided by judiciary)

 

Helps reduce the heavy caseloads of family courts (obviously valid for India)

Our legislation is hesitating to amend the law. Nobody wants to disturb the “STATUS CO”. Its human nature to resist any kind of change. A Surgery is done only when that is needed, to avoid some greater pain or loss. If we remember, we in India had customs like “SOTI DAHO PROTHA” (burning the widow with dead husband), which now we can’t even imagine. As we are getting exposed to

the world, we have to ratinolise our thought process and laws, by improvising any outdated system or rule. Staying apart for a

considerable period itself points towards the death of the marriage,

“Divorce” is just the legal nomenclature of that unfortunate incident. No divorce or even cause of any divorce will initiate because of the said amendment, but surely it will decrease the suffering of couple whose divorce already initiated. This amendment is only an addition to the grounds of divorce; no way it can hamper the relationship between a married couple. Mr Moily, honourable law minister of India stated recently :-

 ‘Moily said that the government may consider an amendment in

the law to make disposal of divorce and custody cases time-bound, as has been done for gram nyayalayas. He said that family courts will be given a target of winding up such cases — where mutual consent is absent — within a year of them being filed. He believes litigating couples should be freed quickly from a broken marriage in order to start life afresh.

“There is no need for divorce cases to drag on for years when the marriage has actually broken down. Similarly,children’s custody

cases must be decided in a time-bound manner so that there is no uncertainty over their future,” Moily said.’

I request and appeal to all, to raise voices in favour of the amendment of Divorce Law of India.

 

At the end we all must remember- LAW IS MADE BY THE PEOPLE

LAW IS MADE FOR THE PEOPLE.

 

 

 

 

 

Tax Attorney- Who needs one?

Tax Attorney- Who needs one?

In this vast changing world, no one would be ignorant enough of not knowing the cruelties of life. It is evident that problems seem to be inescapable most especially when we speak of financial issues. Every citizen, of legal age, is liable to pay their taxes. That is why some hire a legal Tax Attorney.

These tax attorneys specialize in working with taxpayers who are finding a hard time dealing with the Internal Revenue Services. Generally they focus on tax issues and relief. They help a taxpayer who is in trouble by making an audit, reducing high cost penalties, removing liens and navigating through the minefields of small business enterprises and self-employment tax issues. For some small business proprietors, they consider their tax attorney to be as vital as an accountant. This is because he/she can help head off potential tax problems before they even begin.

Tax law, besides from being labyrinthine in structure, changes nearly every year. Thus a good tax lawyer should keep up with the latest changes and can give good advice to clients accordingly.

When looking for a tax attorney, the person should never be in a rush. He/ she could look around and ask friends if they could recommend someone who is a good tax specialist. Not merely somebody who is just first in the phonebook. Additionally, a tax attorney should have advanced training in tax law.

Why need one? Tax attorneys are best in handling complex, technical and legal issues. Such as when you are starting a business and need legal counsel about the structure and tax treatment of your company, you are engaging in international business and need help with contracts, tax treatment, and other legal matters, and you own a taxable estate, need to create estate planning strategies, or need to file a tax return.

Everyone makes mistakes in life, but tax problems can lead to horrific conflicts with the Internal Revenue Services (IRS). When your local tax agency comes calling, you definitely need someone for representation. And that’s where a tax lawyer steps in the scene. A tax lawyer would protect your rights and give an objective view of the situation and options.

They would serve as the key in surviving the conflict. Though it would be emotional and nerve racking process. But with the help of tax attorneys/tax lawyers, clients would lessen their burden and thus give them relief which they longed for. But to get rid of tax issues, pay you taxes on time. It’s an obligation we can’t get away from.

What Every Trademark Owner Needs To Know About The Relationship Between Trademarks And Domain Names

We are often approached by trademark owners concerned that their competition has registered a domain name that is similar to their trademark and is using the same to divert customers away from their own businesses.  Here is what you need to know about the relationship between trademarks and domain names and what you can do to protect your trademarks from being used against you in competing domain names.

Registration of a Domain name is Not Trademark Use

As you are probably aware trademark rights generally attach to a trademark upon use of the mark in commerce.  Although there are other ways to reserve rights in a mark before it is in use, using the mark is generally a pre-requisite to securing rights therein.

Many people believe that the registration of a domain name in and of itself creates trademark rights.  Simply put, it does not.  Look at a domain name like a phone number.  It is merely an address on the world wide web where a web site may be located.  So the address by itself is just that – an address.  It is not a trademark.

Of note, this is not to say that domain name cannot become a trademark.  Amazon.com has one of the web’s most recognized trademarks.  But it is the name promoted on the pages of the web site Amazon.com which gives the owner trademark rights and not the URL amazon.com.

Cybersquatting

Although the registration of a domain name does not constitute trademark use per se, owning a valid trademark can preclude the subsequent registration of domain names that include or are similar to your trademarks.

There are two primary statutes or rules trademark holders can use to enforce their trademark rights against the subsequent registration of like domain names: (1) the Uniform Domain-Name Dispute-Resolution Policy (UDRP); and (2) the Anticybersquatting Consumer Protection Act (ACPA).

Both systems generally have the same requirements.  A complainant in a UDRP or ACPA proceeding generally must establish three elements to succeed:

1.  The domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights at the time the disputed domain name is registered;

2.  The registrant does not have any rights or legitimate interests in the domain name; and

3.  The registrant registered the domain name and is using it in “bad faith.”

In regard to bad faith, considerations of whether the domain name was registered in bad faith include, but are not limited to:

a.  the registrant’s intent to divert customers from the mark owner’s online location that could harm the goodwill represented by the mark, for commercial gain or with the intent to tarnish or disparage the mark;

b.  the registrant’s offer to transfer, sell, or otherwise assign the domain name to the mark owner or a third party for financial gain, without having used the mark in a legitimate site;

c.  the registrant’s providing misleading false contact information when applying for registration of the domain name; and

d.  the registrant’s registration or acquisition of multiple domain names that are identical or confusingly similar to marks of others.

The UDRP and Its Remedies

The Uniform Domain-Name Dispute-Resolution Policy (UDRP) is a process established by the Internet Corporation for Assigned Names and Numbers (ICANN) for the resolution of disputes regarding the registration of internet domain names. The UDRP applies to all .com, .biz, .info, .name, .net, and .org top-level domains (TLDs), and some country code top-level domains.

In short, if you register a domain name with one of these TLDs, you are subject to the policy.

Under the policy a registrant consents, in advance, to binding arbitration under the UDRP concerning disputes to the ownership of the domain name.  These disputes, which are handled by various authorized private arbitration companies throughout the world, allow for the quick and efficient resolution of UDRP claims.

Of note, the only remedy under a UDRP action for the prevailing party is to have the offending domain name transferred to their ownership.  There are no money damages.

One significant benefit to the system – speed.  From start-to-finish cases can often be completed in roughly 8 weeks.  In light of the current state of our court systems that is about as fast as you are going to get.

The ACPA and Its Remedies

The ACPA was enacted by Congress and signed into law to combat the rising incidences of cybersquatting in the U.S.  Unlike the UDRP which relies upon a relatively simple administrative proceeding, an allegation under the ACPA is generally set forth in a federal district lawsuit filed in a court of competent jurisdiction.

Unlike matters under a UDRP claim, speed is not one of the hallmarks of the federal district court system.  Due to the complexities of the issues involved as well as other actors a case filed under the ACPA in federal district court can take a year or more to reach trial.

However, the remedies under the ACPA are much broader than those under the UDRP.  Should a Plaintiff be successful, in addition to transfer of the disputed name the prevailing party may also be awarded monetary damages, costs, and attorneys’ fees.

Summary

So if you (1) have existing rights in a trademark and (2) someone thereafter registers a domain name similar to that mark (3) in bad faith you may be able to have the domain name transferred to you.  If you just want the domain name pursue the matter under the UDRP.  If you want more, a claim under the ACPA will be required.