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Patent Application Filing in USPTO

Patent Application Filing in USPTO
We believe that a patent specification should be drafted meticulously. The objective while drafting a patent specification should not be limited to just describing a technology, but also to protect the technology. At the same time, we strongly believe that, such quality of service should not just be limited to large corporations, but be made affordable to one and all.
That’s why our patent experts work with determination to achieve perfection in every aspect of preparing a patent specification. Further, we make our services affordable by following an effective business model. Our patent experts are located in Bangalore, India, where majority of the work is carried out, and the patent application is finally prepared and filed by a registered US patent attorney/agent.
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A brief overview of the working model is provided below:

 

What is Utility Model protection and does India offer utility model protection?

Utility Model

Like patents, utility model is an exclusive right granted to an invention. This allows the grantee, the right to prevent others from commercially using the protected invention, without the grantee’s authorization, for a limited period of time. It is very similar to patents and are often referred to as, “petty patents” or “innovation patents”.
 
Though on the outset, both patents and utility model appear similar, there are many differences between the two, which are given below:
  •  As compared to patents, the requirements of obtaining a utility model differ. To obtain patent protection, patents are required to satisfy both novelty and non-obviousness requirements of patentability among other requirements. Utility models are supposed to satisfy the novelty requirement and the non-obviousness requirement for utility model is low or absent.
  • The term of protection for utility model is usually between 7 to 10 years, based on the jurisdiction.
  •  In most jurisdictions offering utility model protection, the applications are not examined prior to registration. This significantly reduces the duration required for registration.
  • As compared to patents, utility models are cheaper to obtain and maintain.
  • In some jurisdictions, utility model protection can only be obtained for certain fields of technology and only for products but not for processes.
Who should apply for utility model protection

 Primarily, utility model protection may be sought under the following circumstances:  

  • For inventions that do not reach the same level of inventiveness, which is required for patent protection.
  •  For inventions that require faster registration.
  • For innovations which are of incremental nature and do not meet all the requirements of patentability.
  • When the life cycle of the invention is short and/or if, the profits are not able to cover patenting costs.
  •  For minor improvements and adaptations of existing products.
  • The innovation is tangible and/or mechanical in nature.
Countries offering utility model protection 
Many may identify themselves under the above mentioned criteria and feel that, their innovation warrants a utility model protection and not patents. But all countries do not offer utility model protection.
 
Below is a list of countries, which offer utility model protection.

Source: Wikipedia link
Utility model protection in India 
Though utility model protection would be of great help to many, India, at present does not offer protection under utility model. At present, technological innovations can only be protected in India under patents.
 
I hope you found this article helpful. Please feel free check our patent services page to find out if we cater to your patent requirements.
 
You can download a copy of this article here
 
Best regards,
Team InvnTree   
 

Can the details of my invention disclosed in the patent application be maintained as a secret?

Often innovators wish to have their innovation protected by a patent, and at the same time are concerned that, publication of their patent application will enable competitors to copy their innovation. A common question posed by innovators is, whether it is possible to protect their innovation by a patent and at the same time restrict details of the information disclosed in their patent application from public access. A simple and straight forward answer to the previous question is, NO, it is not possible to get patent protection and at the same time restrict details of the information disclosed in the patent application from public access.

In order to understand the reason behind why such a provision is not extended to inventors, one will have to look at some of the fundamentals of the patent system.
 
First of all, the patent system enables a patent owner to stop third party from commercializing his patented technology. In other words, third party should know what technology is patent protected, so that they do not infringe on existing patents. Hence, details of the technology that is protected by patents have to be made public information.
 
Secondly, the patent system in essence is designed to encourage improvement in science and technology. In order to encourage such improvement, innovators are given an incentive, i.e. patent rights for 20 years, in exchange for disclosure of their technology. By making these disclosures available to the public, the system enables public at large to understand state of the art and bring about further improvements. Therefore, the fundamentals of the patent system do not permit grant of patent rights while preventing public access to details disclosed in the patent.
 
Having said that, some countries, such as US, will withhold publication of the patent application, subject to certain conditions, only till a patent is granted. However, once a patent is granted, the granted patent will be eventually published.
 
In India however, the patent application will be published after 18 months from the filing date (priority date) of the patent application. In case the patent applicant does not wish to have the patent application published, then the only option is to withdraw the patent application. The withdrawal of the patent application has to happen 3 months before the date the publication of patent application is supposed to happen. In case of withdrawal, the patent application will not be available for public access, and at the same time, the applicant looses the opportunity of a potential patent grant corresponding to the withdrawn patent application. In certain scenarios, such as change in the business environment, applicants explore the above option.
 
We hope you found this article useful.
Feel free to write to us at contact@invntree.com if you have any comments, queries or want to avail our services.
 
Please feel free check our patent services page to find out if we can cater to your patent requirements. You can also contact us to explore the option of working together.
 
Best regards – Team InvnTree   
 
   

How can I find out if my invention has already been invented?

This question may get asked when,

Researchers, before investing their time and money, would want to know, if it’s worthwhile to research on a product.  They would want to find out, what kind of similar products exists in the market and what technological improvements can be made to those products.

For any new technological improvements/inventions, inventors may want to patent their invention. Before starting the process of patenting, inventors would want to access their chances of patentability of the invention. In order to access the patentability of an invention, a search to identify prior art is required.


When a product is to be launched into the market, to avoid infringement, it is advisable to determine freedom to operate for the product in question. In order to determine Freedom to operate, a search of patent documents of the jurisdiction in question is to be conducted. To know more about freedom to operate, you can go through our article about Freedom to Operate

Different strategies can be adopted to determine the answers to the above scenarios:

A search for prior art can be conducted on the internet using search engines. This strategy may uncover some data, but will not always uncover  very relevant data. This is owing to the fact that patent documents and publications may not have been indexed in search engines. Search strategies involved in searching of relevant patent and non patent data requires considerable skill and technique. To know more about search strategies and techniques to be adopted, you can read our article How to conduct a patent search

Another strategy to be adopted is to Search for non patent literature. Searching of non patent literature can aid in finding out if a similar invention exists. Searching of non patent literature be conducted using databases such as  IEEE, Science Direct, IPmenu which hold enormous amount of data relating to non patent literature. Searching of such non patent literature data can uncover similar technology and would help in taking an informed decision regarding the invention. If a similar technology exists in non patent literature, it will affect the patentability of the invention, but it will have no bearing on the freedom to operate for a product, as non patent literature does not provide rights to the owner of that publication from stopping others from making and selling of those products.Note that if a publication about an invention exists in non patent literature, it does not mean that the owners would not have sought patent protection as well. It is advisable to cross check patent data as well before taking a decision about Freedom to operate.

 Another strategy to be adopted is to search patent literature. Searching of patent literature can be conducted using various free and paid patent databases. It is important to know a few facts about patents.

Patents are jurisdiction specific. It means that to obtain patent protection, one has to file for patents in all the jurisdictions one wishes to obtain protection. 

While determining freedom to operate for a specific country, only patent documents from that jurisdiction are to be considered. 

To determine the patentability of an invention, one needs to consider relevant patent documents from all jurisdictions.

I hope you find this article helpful. Check our  patent services page to find out if we can cater to your patent requirements. Also feel free to contact us or ask us a question and have it answered within 24 hours.
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Are patents always the best way to protect inventions?

To answer this question, let us first look at the bright side of patent. If you have a patent granted from your invention, it gives you the rights to exclude others from commercializing your patented technology for 20 years in the country in which it is granted. In other words, it means, you enjoy monopoly over the patented technology for 20 years in the country in which it is granted.

This sounds like a great way to protect your invention. However, before drawing such conclusion, let us try to get an idea about the effort involved in getting a patent granted.
  • On an average, it takes ~47 months (identified using a sample of 3191 US patents granted in the year 2011) from the date of filing a patent application to get a patent granted. Patenting is a time consuming process.
  • Patents are territorial. This means, you will have to file patent applications in each country in which you want to protect your invention.
  • You will have to pay a statutory fee to the patent office in each country you file a patent application. Additionally, you will also have to pay the patent consultant who helps you with filing the patent application in the respective country (we once received a quote of $2000 from a Japanese attorney for filing a patent application in Japan). In a nutshell, patenting is an expensive process.

Irrespective of all these hurdles, individuals and companies file for patents. In certain circumstances, it makes perfect sense to protect your inventions using patents. However, in my opinion, you should ask yourself some questions before you decide to protect your invention using patents.

  • How easily can my invention be reverse engineered?
  • How easy is it for someone to work around the invention and achieve the advantages provided by the invention?
  • Is the invention attractive enough for someone to copy it?
  • For how many years will this invention be relevant to the industry? 

 

patent protection - InvnTree
How easilycan my invention be reverse engineered?
 
In rare occasions, the nature of invention is such that reverse engineering the same is extremely difficult. In such cases, it is advisable to protect the invention as trade secret. By maintaining your invention as trade secret, you can benefit from it as long as someone reverse engineers it. On the other hand, if you were to protect this type of invention using patents, your protection would be limited to 20 years and to the countries in which you have secured a patent. Additionally, your competitors will get sufficient information from the patent specification, which can be used to work around your invention.
 
Companies often use patent and trade secret protection wisely together to derive maximum benefit.
 
How easy is it for someone to work around the invention and achieve the advantages provided by the invention?
One of the main objectives of getting patent protection is to ensure that advantages of your patented technology are not provided by your competitors’ products/processes. However, in some cases, the nature of the invention is such that, one can easily work around your patented invention, irrespective of how well a patent specification is drafted. In such cases, even if you do get a patent for your invention, you may not essentially gain any significant advantage from that patent. When such is the scenario, patenting may not be the best step forward, especially in cases where money is a concern.
 
However, if you indeed decide against patent protection in the above-discussed scenario, you can consider defensive publication as an option. By adopting defensive publication, you ensure that competitors do not patent obviously-similar technologies and stop you from using such technologies.
 
Is the invention attractive enough for someone to copy it?
 
Well this question, in most cases, is extremely hard to answer. However, if the answer to it is a straight NO, then from a commercial point of view, it may not be a good idea to get patent protection. As mentioned earlier, patents give you the rights to exclude others from copying your invention. If nobody is interested in copying your invention, then there are very few reasons to get patent protection. However, as in the previous case, if you decide against patent protection, you may consider defensive publication as an option.    
 
For how many years will this invention be relevant to the industry?
 
Some industries are such that certain technologies become redundant within an extremely short span of time. Considering the time consuming nature of patenting process, sometimes the technology you are intending to patent becomes redundant even before your patent application is published by the patent office, leave alone granting of patent.
 
In cases where life span of technology is significantly short, you will have to consider factors such as, the time required to copy your invention by your competitors and potential revenue generation from the patented technology. If your invention is such that, the time required for copying your invention and launching a product based on that technology by your competitors is pretty much equivalent to the life span of that technology, then I see few reasons for patenting. Instead, a defensive publication is a better option.
 
To conclude, one needs to take an informed decision on protecting business interests, be it through patent protection or otherwise.
 
I hope you find this article helpful in taking decisions with respect to your inventions. You Can download a complimentary copy of this article here
 
Please feel free check our patent services page to find out if we can cater to your patent requirements. You can also contact us to explore the option of working together.
Best regards – Team InvnTree   
 

 

What can be patented and what cannot be patented

Some time back I was asked by one of the readers of my article, if I can tell him what can be patented and what cannot be; hence this article.

This question appears to the one with a straightforward answer.  However, the answer to it is something that is highly debatable, and also varies depending on the country in which one wants to secure a patent.
 
A simple answer however is, anything that qualifies to be an invention can have a patent granted to it.
 
In the above answer, the word “invention” is the key word that requires definition.
 
In US, any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof may have a patent granted to it, provided it satisfies all other requirements of patentability.
 
In India, an invention means a new product or a new process that involves technological advancement and/or has economic significance, which makes that new product or process non-obvious to a person who is skilled in the technology to which the product or process belongs. Additionally, the new product or process should be capable of being made or used in an industry for it to qualify as an invention.   
 
Most of the patent offices provide a simple definition of the word invention. However, they also provide a list of exclusions, which are not considered as inventions. This list is the one that often stirs up debates.
 
In India, section 3 provides a list of exclusion, and the list with examples is provided below:

1.      an invention which is frivolous or which claims anything obviously contrary to well – established natural laws: (Ex:

 
2.      an invention the primary or intended use or commercial exploitation of which would be contrary to law or morality or which causes serious prejudice to human, animal or plan life or health or to the environment; (Ex: A method of hacking into email accounts)
 
3.      the mere discovery of a scientific principle or the formulation of an abstract theory or discovery of any living thing or non-living substance occurring in nature; (Ex: E = mc2)
 
4.      the mere discovery of any new form of a known substance which does not result in the enhancement of the known efficacy of that substance or mere discovery of any new property or new use for a known substance or of the mere use of a known process, machine or apparatus unless such process results in a new product or employs at least one new reactant. (This exclusion has been at the forefront of most debates in the pharmaceutical sector)
 
5.      a substance obtained by a mere admixture resulting only in the aggregation of the properties of the components thereof or a process for producing such substance. (Ex: Mixture of sugar and colorants in water, which only produces aggregation of properties and synergistic properties)  
 
6.      the mere arrangement or re-arrangement or duplication of known devices each functioning independently of one another in a known way; (Ex: A known type of torch connected to a know type of pen. Note, both the pen and torch work independently of each other)
 
7.      a method of agriculture or horticulture; (Ex: a method of growing plants)
 
8.      any process for the medicinal, surgical, curative, prophylactic diagnostic, therapeutic or other treatment of human beings or any process for a similar treatment of animals to render them free of disease or to increase their economic value or that of their products; (Ex: process of carrying out a surgery. Note: processes in this case are not considered inventions. However, systems and apparatuses are still considered as patentable subject matter)
 
9.      plants and animals in whole or any part thereof other than micro-organisms but including seeds, varieties and species and essentially biological processes for production or propagation of plants and animals; (Ex: Cloning of animals)
 
10. a mathematical or business method or a computer program per se or algorithms; (this exclusion has been debated to great lengths. The debate is essentially because of the “computer program per se” exclusion. Note that, not all software related inventions are considered as “computer program per se”. Hence, the debate is relating to what should be considered as computer program per se, and what should not be)
 
11. a literary, dramatic, musical or artistic work or any other aesthetic creation whatsoever including cinematographic works and television productions; (Ex: movies, poems etc.)
 
12. a mere scheme or rule or method of performing mental act or method of playing game; (Ex: Method of playing chess)
 
13. a presentation of information; (Ex: Presenting information in the form of a graph)
 
14. topography of integrated circuits; (Can seek protection under Semiconductor Integrated Circuit Lay-out Designs Act)
 
15. an invention which in effect, is traditional knowledge or which is an aggregation or duplication of known properties of traditionally known component or componenets. (Usage of Nilgiri oil for reducing aches)
 
Some of the exclusions are straightforward; however, a few are debatable (section 3(d) and 3(k)).
 
Similar to India, most of the countries have provided with a list of exclusions. Some of the exclusions put forth by other countries may be similar to the ones provided above. It is important to be aware of the exclusion set forth by a country you are interested in before deciding on the patent specification drafting and filing strategy.
 
To know more about what can and cannot be patented in India, you may read our articles listed below:
 
I hope you found this article helpful. Please feel free check our patent services page to find out if we cater to your patent requirements.
 
You can download a copy of this article here
 
Best regards,
Team InvnTree   
 

How much does it cost to get a patent in India?

How much does it cost to get a patent in India?

Understanding the cost structure corresponding to applying for a patent can help in making some important decisions. Hence, instead of having a generic idea about the overall cost, it helps if you are aware of the breakdown of the cost structure and the time of incurring such expenses.

The overall cost of obtaining a patent includes the fee that has to be paid to the patent office (statutory fee) and the fee paid to the patent service provider (professional fee). The professional fee varies based on the service provider you may select. Hence, in this article I will deal only with the statutory fee.
 
Please note that, the most important factor in filing a patent application is preparing a patent specification. Drafting a patent specification is a highly skilled job, which can be only performed by persons who have both technical as well as patent law expertise. If a person or company is serious about protecting their intellectual property, it is highly recommeded to use the services of professional patent practitioners. To know more about this, you can read our articles on this.
The statutory fee depends on who the applicant of the patent is. The Indian Patent Office (IPO) has categorized the applicants into 4 categories:
  1. Natural person
  2. Startup(s)
  3. Other than natural person – Small Entity
  4. Other than natural person – Others except small Entity

Any individual(s) applying for a patent is considered as a natural person. On the other hand, all other entities that do not fall under the first category, fall under the remaining three categories of :

  1. Other than natural person – Startup
  2. Other than natural person – Small Entity
  3. Other than natural person – Others except small Entity
For example, legal entities, such as, companies would fall under these categories. It shall be noted that, a patent application can have more than one applicant, and even if one of the applicants do not fall under the first category, then the patent application is considered to be filed by applicants of the remaining two categories.
Applicants who are other than natural person are categorized into the below three categories.
  1. Other than natural person – Startup
  2. Other than natural person – Small Entity
  3. Other than natural person – Others except small Entity
The patent office charges the least fee for applicants who are natural persons and Startups.
The patent office also charges the least fee for entities who are startups. Certain conditions have to be met to qualify as startups. You can read more about this in our article
The patent office charges other than natural person applicants who are a small entity, a fee, which is between a natural person/startup and others except small Entity.The patent office charges a maximum fee for other than natural person applicants who are Others except small Entity/startup.The patent office collects 2 times the fee from the applicants who are "Other than natural person – Others except small Entity"  as compared to applicants who are "Other than natural person – Small Entity". Certain conditions have to be met by other than natural person applicants, who wish to claim "Small Entity" status. You can read more about this in our article. 
In this article, we will list down the fee applicable to all the categories of applicants. Please note that, the fee mentioned below is for E-filing of applications only. The patent office charges an additonal fee of 10% of the total fee, if filing is done through hardcopies. If the application is not filed online, and is done through hardcopies, you need to calculate the fee, at additional fee of 10% of the total fee.
 
No Description Patent office Fee (INR) 1$ = ~ 60 INR(E-Filing only) Comments
Other than Natural person Natural Person/Startup
Small Entity Other than small entity
1 Application for grant of patent 4000 8000 1600 Mandatory
2 Early publication fee 6250 12500 2500 Optional
3 Request for examination of patent application 10000 20000 4000 Mandatory
4 For every Extra sheet over 30 sheets 400/sheet 800/sheet 160/sheet Mandatory
5 For every Extra claim over 10 claims 800/claim 1600/claim 320/claim Mandatory

Sl. No. 1

 

A fee of INR 1600/4000/8000 has to be paid while submitting the patent application in the IPO, based on the type of applicant.
 
Sl. No. 2
A fee of INR 2500/6250/12500 has to be paid, based on the type of applicant, if you wish to have your patent application published by the IPO early. If this request is not made, then the IPO publishes your patent application after 18 months from priority date (date on which you first file a patent application for your invention). There are several advantages of having a patent application published early. Some of the advantages are: early publication can help in expediting the patent application examination process and the patent rights start from the date of publication.
 
Sl. No. 3
A fee of INR 4000/10000/20000 has to be paid, based on the type of applicant, requesting the IPO to examine your patent application. This request for examination can be filed and the fee paid within 48 months from the priority date. However, note that the patent office puts your application in queue for examination only after receiving this fee. Hence, if you want to expedite the patent process, it is advisable to file this request at the earliest. A startup can also request for expedited examination of their patent application. The fee for this is INR 8000. At present, the patent office has limited this request to about 1000 request in a year.
 
Sl. No. 4
The IPO accepts patent specification, which has up to 30 sheets without charging any extra fee. However, if the specification crosses 30 sheets, then a fee of INR 160/400/800/sheet for each extra sheet has to be paid to the IPO, based on the type of applicant.
 
Sl. No. 5
Further, the IPO accepts patent specification, which has up to 10 claims (no limitation on independent claims) without charging any extra fee. However, if the specification has more than 10 claims, then a fee of INR 320/800/1600/Claim for each extra claim has to be paid to the IPO, based on the type of applicant.
You may also calculate the patent office fee using our cost calculator below: All fee in USD.
 

Indian Patent Filing Cost Calculator

 
You may also read our below listed articles to gain more knowledge about the Indian Patenting system:

I hope you found this article helpful. Please feel free to contact us to know more about how our patent services can help you in your business. 

Thank you,
Team InvnTree