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FAQ

Patent filing benefits

Obtaining patent protection will enable the patent owner to stop others who do not have his consent, from:

the act of making, using, offering for sale, selling or importing that product in India. If the patent is for a process, the same rights apply to a product obtained by the process.

Only applying for patents does not enable stopping others from copying your product/process. However, you can inform the infringer that, your patent is pending and you intend to take action against them after grant. A granted patent will give you the right to stop others who are copying your product/process.

A value of a company is definitely increased by having patents since the patent owner now has exclusive rights over their patented product/process. These rights create a barrier for entry to the competitors, thereby creating a larger market share for the patent owner.

Obtaining patent rights will definitely give a competitive edge over the competitors, since it creates a barrier of entry for the competitors to create the patented product.

The best thing about patents is that, even if a company does not do well, they still have a valuable asset, which is their patent portfolio. Obtaining patents is always a win-win, irrespective of whether business succeeds or fails.

Patent Filing process

The steps involved in filing for patents should ideally involve the below steps:

  • Conducting a patentability study to determine the patentability of the invention. Though this is an optional step, it is recommended to be carried out.
  • Drafting of a patent specification. This is a highly skilled job and it is recommended that, it is carried out by patent professionals.
  • Preparations of documents required to file the patent application. Your patent agent will prepare all the required documentation. InvnTree employs patent agents who are well versed in preparation and filing of patent applications.
  • Filing of the application in the Indian Patent office.

Docketing of the filed applications to keep tract of the deadlines associated with the patent application. InvnTree uses custom docketing software, which enables us to keep tract of the deadlines associated with the patent application.

The provisional application can be filed, if the inventors feel that, there is enough progress in the invention to warrant filing of a patent application, but there is still more progress needed. By taking such an approach, a priority date can be secured for the parts of the invention which has progressed. However, if the invention is at a stage, wherein all the progress has been achieved, it is advisable to file a complete application.

Once the patent application is filed, the following sequence of events happen:

  • The patent office will review the application to determine, if the application is related to national security or atomic energy. If it is so, secrecy directions are issued, if not no such directions are issued. Such directions are issued within 6 weeks of the filing.
  • The complete application is published after 18 months from the priority date
  • The application is examined
  • An examination report is issued
  • A response to examination has to be filed

The patent office may issue a final grant or rejection

Yes the patent office may raise objections to the grant of patent, based on the various requirements of patentability

Yes. Any person can raise objections to the grant of patent by providing the cause for the opposition.

If objections are raised by the patent office, response to the examination report has to be filed.

InvnTree process

All projects at InvnTree are initiated upon filing Non-disclosure agreements (NDA). Further, InvnTree has taken legal and hardware measures to ensure confidentiality of its client’s data.

InvnTree places foremost importance on the quality of its services. To ensure quality, some of the steps taken are:

  • Hire and train the best talent
  • Projects are worked on by employees having educational background related to the domain of the invention

All projects go through rigorous review process – legal review – technical review – discussion about how to cover possible workaround - peer review

InvnTree always strives to ensure that, its clients have a higher chance of patent grant. In that, direction, InvnTree has created OptiResponse, an intelligent patent prosecution tool developed by InvnTree for exclusive use by employees at InvnTree.

InvnTree advises its clients to get a patentability study done before initiating the patent specification drafting and filing, so that, the specification is drafted keeping in mind the prior art. This ensures that, such patent applications have a higher chance of grant.

InvnTree ensures that responses to examination reports issued by the patent office are backed by comprehensive research and solid arguments, so that, chances are grant are higher.

InvnTree has clients from all over the world. Technology has enabled us to communicate efficiently and effectively with clients all over the world.

There uses various methods to understand the inventions from the inventors.

A comprehensive invention disclosure form is used to get a preliminary understanding about the invention. This involves filling up of the invention disclosure form by the inventor. However, many a time we have noticed that, inventors are not able to spare their valuable time in filling up the invention disclosure form. In such cases, we fix a video conference with the inventor, where in the inventors are also able to share and show documentation with us.

We interview the inventor about the invention and get through with the invention. The inventor also shares follow-up documents through email.

InvnTree uses video conferencing with filing sharing, emails and phone calls to communicate effectively and efficiently with their clients all over the world.

The process followed by InvnTree in filing for patents is as below:

  • InvnTree advises its clients to get a patentability study done as a preliminary step, so that, they can take an informed decision about filing a patent application
  • Upon receiving the patentability study report along with our opinion, the client can take an informed decision about filing the patent application
  • If the client takes a decision to go ahead with the filing of the patent application, a patent specification is drafted by our team member who has domain knowledge and education background in the subject matter
  • The specification is sent to the client for review and finalized upon taking inputs from the client.

The application is filed after going through various reviews within InvnTree

The Indian patent office has very strict deadlines and non-adherence of some deadlines may lead to abandonment of such patent applications.

To ensure that, no deadlines are missed we docket all Indian patent applications in our custom docketing software. The docketing software is designed as per the Indian Patent Act and Rules. Docketing of the applications ensures that, the client receives multiple reminders for every action which is pending.

InvnTree provides end to end patent services. Some of our services are listed below:

  • Conducting patentability studies to determine patentability of inventions
  • Preparing of patent specification drafts
  • Filing of patent applications
  • Prosecuting of patent applications
  • Maintaining of patents
  • Conducting freedom to operate studies
  • Conducting competitor monitoring studies
  • Conducting infringement analysis studies
  • Conducting landscape studies

Filing of pre-grant and post-grant opposition of patents

Cost related

The below listed expenses are only related to the Government fee involved in filing of patents. To know about our professional fee, please get in touch with us, since the professional fee depends on the quantum of work involved.

  • Fee for filing of patent applications – (INR 1600 for individuals)
  • Fee for filing of early publication request (optional) – (INR 2500 for individuals)
  • Fee for filing of examination request – (INR 4000 for individuals)

These are the patent office fee incurred for most patent applications.

After applying for a patent you may incur the below expenses:

  • Professional fee for prosecuting the patent application by responding to examination reports (if issued) by the patent office
  • Professional fee for prosecuting the patent application by attending hearing, if the application goes to the hearing stage
  • Professional for filing yearly statement relating to working of patent for granted patent

Patent  office and professional fee for annuity fee for keeping the patent in force. The annuity fee has to be paid from the 3rd year till the 20th year of the patent term.

There are 4 types are applications considered by the Indian Patent office:

  • Natural person – when the applicant(s) are all individuals
  • Startup – An entity who can be considered as a startup as per Indian Patent laws
  • Small Entity – An entity who can be considered as a small entity as per Indian Patent laws
  • Other than small entity – An entity who neither qualifies as a startup nor as a small entity

The patent office fee is least for natural persons and startups. The fee for a small entity is 2.5 times the fee for a natural person and the fee for an entity other than small entity is 5 times the fee for a natural person.

  • The Indian Patent office encourages filing of patents by individuals, startups and small entities by according them various benefits such as:
  • Reduced fee for individuals, startups and small entities

Opportunity for availing expedited examination for startups

The costs associated with maintaining granted patents pertain to payment of annuity fee after grant of the patent. The annuity fee is applicable from the 3rd year till the 20th year of the patent term. The term of the patent is 20 years.

When to file for patents

A patent application should be filed at the stage of the invention, when there is substantial details pertaining to the working of the invention. The details should be such that, a person with ordinary skill in the subject matter should be able to replicate the invention by following the details provided.

It is not advisable to publicly disclose the invention before filing a patent application. If the invention is publicly disclosed before filing a patent application, the public disclosure will be considered as prior art during examination of the patent application.

Building a prototype is not necessary for filing a patent application. Only detailed description pertaining to the invention is necessary.

There is no need to provide any proof relating to the working of the invention to the patent office.

It is advisable to file patent application before submitting the Ph.D thesis.

Timeline

A complete application has to be filed within 12 months of filing a provisional application. Failure to file a complete application within 12 months of filing a provisional will lead to abandonment of the application.

Steps need to be taken within 12 months of filing the priority application to enable filing of the patent application in other jurisdictions. Convention applications can be filed within 12 months of filing the priority application. PCT application can be filed within 12 months of filing the application in India. Filing of PCT application will give 30/31 months from the priority date, to file national phase applications in other jurisdictions.

By default, a complete application will be published upon 18 months from the priority date. However, if an early publication request is filed for a complete application, the application will be published within 21 days of filing such a request.

The deadline for filing an examination request is 48 months from the earliest priority date. However, it is advisable to file the request at the earliest, since the application is put in queue for examination only upon filing the request.

As per the Indian Patent Act, the application is put in queue for examination upon satisfying the criteria of being published and an examination request filed. Typically, at present, the patent office is issuing examination reports within 36 months of filing the patent application. However, the patent office is increasing its resources and has promised to issue examination reports within 18 months of filing the request for examination.

A response to examination has to be filed within 6 months of receiving the examination report. However, it is advisable to respond to the examination report at the earliest, to give the patent office time to issue any further examination requests if any.

It takes about 36 to 48 months at present to get a final decision on a patent application. However, the Indian patent office is hiring more resources to bring down this timeline.

The term of the patent is 20 years from the filing date.

An expired patent cannot be renewed.

What can be patented

Section 3 and Section 4 of the Indian Patent Act, lists what are not inventions. It can be considered that, inventions which do not fall under these sections can be patented.

Inventions which fall under Section 3 and 4 of the Indian Patent Act cannot be patented.

As per the Indian Patent Act, pure business methods will not be granted patents.

Patents are the only option to protect technological innovations.

Conditions for patent grant

The conditions to be satisfied for patent grant are:

  • It should be patentable subject matter
  • The invention should satisfy the novelty requirement
  • The invention should be non-obvious to a person skilled in the art
  • The invention should be capable of made or used in an industry

The description should satisfy the enablement requirement

By virtue of being the first importer of an existing product, a patent cannot be granted

Though patent rights are jurisdiction specific, even if a patent is not filed in India, you will not be able to obtain patent protection for the same in India.

Getting a patent grant for a new use of a known product is not possible under the Indian Patent Act.

There is no need to prepare a working model to get a patent grant. In rare cases, the patent office may request for a model. In such cases only, a model is to be provided.

Examination of patent applications

The procedure followed by the patent office for examination is as below:

Upon requesting of examination, the patent office puts the patent application in queue for examination.

Upon taking the application up for examination, the patent office examines the application based on the various requirements of patentability and checks the application for satisfaction of formal requirements

  • Subject matter
  • Novelty
  • Non-Obviousness
  • Industrial applicability

Enablement

Typically, at present, the patent office is issuing examination reports within 36 months of filing the patent application. However, the patent office is increasing its resources and has promised to issue examination reports within 18 months of filing the request for examination.

Typically the patent office raises objections relating to the below:

  • Lack of novelty in the invention
  • Invention is obvious in light of prior art
  • Subject matter is not patentable
  • Enablement requirement is not satisfied

The patent office will rely on all documents in the public domain including patent and non patent literature. Hence it will not restrict its search to only Indian databases.

The patent office may issue more than 1 examination reports and also provide an opportunity for an hearing.

The authorized agent can meet the examiner for a hearing to discuss the objections and overcome the same.

Expedition of patent examination can only happen under the below circumstances:

  • The applicant is recognized as a startup
  • There is a corresponding PCT application filed, in which India is chosen as the ISA

Ownership of patents

The rights to the patent will be held by the applicant(s) for the patent

Unless the inventor is also the applicant, the inventor will not have any commercial rights conferred by the patent

The applicant can sell the rights to the patent. However, if there are multiple applicants, consent of all the applicants is required to sell the patent. If there is an agreement to the contrary, the agreement has to be registered with the patent office to be valid.

The applicant can license the patent to third parties. However, if there are multiple applicants, consent of all the applicants is required to license the patent. If there is an agreement to the contrary, the agreement has to be registered with the patent office to be valid.

If there are multiple applicants, all applicants will have equal and undivided share of the patent. Each of the applicant is free to commercialize the invention on their own. However, there can be an agreement which can specify the pattern of ownership. Such an agreement has to be registered with the patent office to have validity.

Patent infringement

When a product or process maps on to the claims of a patent, it can be considered as patent infringement.

Patents cannot infringe on other patents. Only products or processes can infringe of other patents.

A suit for infringement can be filed by the applicant against the alleged infringer in a District court or high court.

It is very important to determine if by launching your product in the market, if you will infringe on other’s patent rights. If you are infringing, an injunction against selling your products can be bought by the patent holder. If light of this, a freedom to operate study needs to be conducted to determine if you have freedom to launch your products in the jurisdiction of interest.

If you are infringing on others patent rights, your options would be:

  • To seek a license from the patent holder
  • Try to invalidate the patent
  • Reengineer your product to overcome infringement

In a suit for infringement, the patent owner can seek damages or an account of profits.

Jurisdiction of patents

There is no option to file a single patent application covering all jurisdictions. You will have to file patent applications in all jurisdictions of interest. Only an EP application can cover multiple European countries.

A patent application filed in India provides protection only in the Indian jurisdiction.

If you wish to file patent applications in other jurisdictions by claiming priority of the Indian application, you can either file convention applications or a PCT application.

Patents are jurisdiction specific. The rights granted are specific to the jurisdiction. You would not be able to stop the manufacturing of your patented product in a jurisdiction in which you do not have protection. However, you can stop the import of the patented product into a jurisdiction in which you have a patent.

The decision to file patent application in different jurisdictions will depend on your business interests in those jurisdictions. If you feel that, you will be able to commercialize your innovation in that jurisdiction, you should file a patent to protect your innovation in that jurisdiction.