Tag Archives: patent filing

Should I apply for a patent in the name of my company or in my name?

Author: invntreepatent
May 15, 2013     No comments

Several start-ups, smaller companies and family owned companies among others, have asked us whether they should apply for a patent in the name of their company or in the founder’s name. Well, even though there is no single correct answer, several factors can be considered, and a decision that suits the situation, can be taken. Some of the factors that can be considered while taking the decision are listed below:

1.      Costs involved in the patenting process
2.      Enforcement of the patent on potential infringers
3.      Investor perspective
4.      Protecting the inventor’s interest 
Now let’s discuss each of the factors in a little more detail: 
1.      Costs involved in the patenting process 
The table below provides an overview of some of the costs involved during the patenting process in India for different categories of applicants:

Sl. No.

Description

Patent office fee (INR)  (e-filing)

Natural Person (individuals)/ Startups

Other than individuals

Small entity

Other than small entity

1

 Application for grant of patent

1600

4000

8000

2

 Early publication fee (Optional)

2500

6250

12500

3

 Request for examination of patent application

4000

10000

20000

4

 Extra pages – After 30 sheets

160/Sheet

400/Sheet

800/Sheet

5

 Extra claims – After 10 claims

320/Claim

800/Claim

1600/Sheet

 

 

Further, it shall be noted that, once the patent is granted, yearly renewal fee has to be paid. Even the renewal fee is discounted if the applicant is a natural person/startup.
We have often observed that cost considerations often drive founders of early stage companies to file the patent applications in their name, as opposed to filing under the company’s name. However, with the introduction of a new type of applicant as Startup, startups can file as startups and avail discounted patent office fee, along with other benefits.
 2.       Enforcement of the patent on potential infringers

The primary objectives for obtaining a patent are to establish monopoly using the patented technology and gain monetary benefits from patent infringers. Both the objectives, if they were to be achieved, may require initiation of patent infringement suits. Hence, we will analyze some of the outcome of such suits from the perspective of patent being owned by individual(s) or company.

In the event of a patent infringement suit, if the court decides that the patent has been infringed, then relief will be provided to the patent owner. The relief can include, granting injunction, and EITHER damages or an account of profits. The relevant section of the Indian Patent Act is reproduced below:
 
108(1) The reliefs which a court may grant in any suit for infringement include an injunction (subject to such terms, if any, as the court thinks fit) and, at the option of the plaintiff, either damages or an account of profits.

If the patent owner prefers “damages” instead of “account of profits”, then it is preferable to have the patent owned by the company, as damages can be relatively easily calculated and the size of the damages can also be substantially large, as compared to a scenario wherein the patent is owned by individuals.

On the other hand, patent owner may prefer “account of profits”, if the infringer is a large company. In this scenario, whether the patent owner should ideally be individuals or a company, may be of little relevance in the context of this discussion.
The dilemma of patent ownership generally occurs when the startup has a potential to grow rapidly and foresees potential infringement of patent.
It shall be noted that, patent is just like any other property. Hence, even if one applies for a patent in the name of individuals, it can be assigned or licensed to the company at a later stage.
 
3.      Investor perspective
If you are going to have your company funded, then the investors would like to have the patent assigned to the company. Even if you have applied for patent in the name of individuals, the investors would insist on transferring the patent application to the company.
Our opinion from the investor perspective is very clear. At the time of investment, the investor would like to have the Intellectual Property assigned to the company.
 
4.      Protecting inventor’s  and company's interest  
There can be a scenario wherein one of the founders is an inventor. In such a scenario, the inventor would like to apply for a patent in his name, as it gives him immense control over the technology, thereby also giving control over commercial aspects of the company. On the other hand, the company would ideally like have the patent application assigned to them, thereby preventing a situation wherein, the inventor is in a position to dictate terms.
 
In addition to this, please note that, any invention which has been conceived by an employee during the course of his work for the company and relates to his field of work in the company, may always belong to the company, in light of the employment agreement that might be in place.
We hope that, this article will help you in deciding the applicant of your patent application.
We hope you found this article useful. You can download the article here
If you have any queries, you can reach us at [email protected]
Regards,
Team InvnTree
www.invntree.com | [email protected] | +91-80-65700262
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Should an inventor take professional help to draft and file patent applications?

Author: invntreepatent
May 15, 2013     1 Comment

Why would inventors want to tackle the patenting process themselves, without taking professional help?

We have asked ourselves this question, and concluded that, some of below mentioned points might be some of the reasons, which might influence the inventors to proceed with the patenting process on their own, without availing professional help.
  • Financial constraints
  • The inventor might feel that, since he is the inventor, he is the best person to describe the invention, and hence professional help is not required
  • An inventor who has prior experience in preparing public disclosures, might feel that, preparing a patent specification is a similar task
  • The inventor might be under the impression that, filing for a patent is just an administrative process and can be done by filling up and submitting the forms

We then analyzed these points in detail, so that, through our analysis, inventors can take an informed decision.

Financial constraints 
Most inventors opt to tackle the patenting process themselves, without seeking professional help, due to financial constraints.
When inventors feel that, they have invented something unique, they wish to protect their invention through patents. However, financial constraints often stop them from availing the services of patent professionals. They begin to think of ways to tackle the patenting process themselves and start to search the internet for information. There is a lot of data on the internet, which guides the inventors as to how to tackle the patenting process.
The information on the internet may relate to the below listed subjects
  • Strategies to filing patents when on a very tight budget
  • Drafting patent applications
  • Filing patent applications
Regarding advice on the internet about strategies on filing and drafting of patent applications
 
To save money, usually the advice provided on the internet is to file a provisional patent application on your own, and thereafter file a non-provisional (complete) application, within the prescribed time period, using the services of a patent professional.
This advice is given to inventors, because, there is no prescribed format to draft provisional patent applications. An inventor can just write down how his invention works and thereafter file a provisional patent application. Following this strategy, undoubtedly saves money and helps in obtaining a priority date, but it has many cons as well, which is discussed below.
Most people fail to advice inventors that, a non-provisional (complete) application which is filed after filing a provisional application, is based on the provisional application and has to be within the scope of the provisional application. It is therefore advisable to draft a provisional application with the same vigour as a non-provisional application. If the provisional specification is not drafted well, there will be serious limitations as to drafting a complete application based on the provisional specification. The provisional specification has to go into minute details of the invention. Drafting a provisional specification by a person who is not well versed with drafting patent specifications, will certainly affect the level of protection sought by the inventor.
There are number of books and resources on the internet, to teach an inventor to draft patent specifications. An inventor may read through these books for academic interest, however, it is not advisable to try to draft your own patent specifications after reading such material.
The inventor must understand that, the patent specification is the only document which is protecting his invention, hence utmost care and professional knowledge should be employed in drafting the patent specification.
Patent professionals have to spend years together to learn how to draft patent specifications, which provides the utmost protection to the inventor for his inventions. Patent professionals are highly trained in the patenting process and have to appear and pass in certain examinations to become patent attorneys and patent agents.
Certain formal requirements of the patent office have to be met in drafting the patent specification. Inventors usually do not comply with such formal requirements, since they do not have knowledge regarding those requirements. Such applications get rejected and the inventor has to comply with the formal requirements and file the application within a stipulated time period. Such situations often lead to anxiety and also additional costs.
Considering all this, the inventor must understand that, just by reading a few books and materials on the internet, he will not be able to draft a good quality patent specification, which complies with the requirements of the patent office among other requirements.
If the inventor is keen to protect his invention, he must allocate some funds to get professional help in the patenting process. If his invention goes on to become something big, it will always reap rich dividends.
Though employing the services of patent professionals may feel expensive at the beginning, inventors must always consider the fact that, a badly drafted specification will in most cases affects the enforcibility of a patent. A badly drafted specification is very easy to be worked around. This will lead to loss of revenue due to inability to enforce the patent.
Patenting is an expensive process, be it patent office fees or professional fees of a patent practitioner. The inventor must only pursue patents, if he feels that, his invention will go on to become something big and will earn a lot of money. If the inventor does not have enough funds to pursue patents, he should however, go for public disclosure of his invention. This will however not give him any rights, but will stop others from patenting the same.
 
About filing of patent applications
 
Unlike drafting of patent specifications, filing of patent applications is an administrative step and can be achieved on their own by the inventor, if they spend a lot of time in learning the process.
However, it is always advisable to employ the services of patent professionals for drafting of the patent specification. Most patent professionals, whose services are being availed by the inventor for drafting the specification, will offer the inventor with filing services in their jurisdiction at a discounted fee.
Hence, instead of filing the patent application on their own and making any mistakes, which might prove expensive, it is best left to be done by professionals, who do it day in and day out.
 
Regarding inventors who feel that, patent specification is just like any other scientific disclosure document.
 
Some inventors who have experience in preparing scientific disclosures, might feel that, a patent specification is just a technical document, similar to the scientific disclosures, they have experience in preparing, and hence they can draft a patent specification on their own.
Other inventors might feel that, the patent specification is just a document describing their invention in detail and since they are the inventors, they are the best person to describe it.
However, these reasons are unfounded, since, a patent specifications is not just a technical document or just a description of the invention, but a techno legal document, which determines the scope of protection for the invention.
Only a person, who has both technical knowledge in the domain of the invention, as well as good knowledge of patent law, will be able to draft a good patent specification, which provides the maximum protection to the inventor for his invention.
The person drafting a patent specification must have good understanding about the prosecution of patent applications. The patent specification has to be drafted in light of the prosecution of the application.
Unlike scientific disclosures, drafting of patent specifications is tricky, since, one has to possess knowledge about use of certain words and their interpretation according to patent law. This will be of utmost importance during the enforcement stage of the patent.
A patent specification is not just the description of the invention, as disclosed by the inventor. The patent professional usually comes up with many embodiments of the invention, wherein the desired result can be achieved by various methods. This is usually done to insulate the invention against any work-around which the inventor’s competitors may come up with.
Unlike scientific disclosures, patent specifications contains, ‘claims’, which basically defines the boundaries of protection that is sought for the invention. Drafting of claims and the usage of words in the claims is of utmost importance. Drafting of claims is very difficult and highly skilled job, and patent professionals develop this skill only after studying patent law and working for a few years.
Considering all this, though the inventor might have skills in preparing scientific disclosures, drafting of patent specifications is best done by patent professionals, since they posses both technical and patent expertise.
 
Regarding filing of patent applications on your own
 
We have written an article on our blog, wherein, we list out various forms that have to be filled to file a patent application. Many inventors after going through our article, feel that, filing a patent application is just an administrative process, and all they have to do is fill those forms and send it to the patent office, and their patent gets filed.
However, what they fail to understand is that, the most important aspect in filing a patent application is, preparing a patent specification, which is both time consuming as well as a highly skilled job, which has to be done by professionals.
As mentioned before in this article, patent specification drafting is best done by professionals, if the inventor is serious about protecting his invention.
After drafting the specification, the patent professionals will themselves file the patent application, and advice the inventor about any future actions which may have to be taken.
Choosing patent service providers for your patenting needs  
In light of this discussion, we feel that, the inventor by now might have realized that, availing the services of patent professionals for his patenting needs is in his best interest.
 
Now comes the part, wherein, the search for the right person for the job begins.
 
A few pointers to choosing the right patent services provider for the job.
  •  Do not always go for the lowest bidder. This is not a product you are buying, but availing a service, wherein, different service providers may provide varied quality of service for a varied fee.
  • The most expensive service provider may not always be the best. Speak to the concerned service provider to gauge the level of knowledge, willingness to work on your invention and quality of advice they provide.
  • Choose a service provider, who has domain expertise in the field of your invention, and will be able to understand your invention easily.
  • Search on the internet to gauge the reputation of the patent services provider.
  • Do not choose freelancers especially for your patenting needs, since you need someone who is liable to you and provides you complete support till the end of the patenting process.
  • Have a non-disclosure agreement is place, before disclosing your invention.
Closing statement 
We hope that, our article has helped you in understanding that, a patent specification is the only document that protects your invention, and hence, has to be drafted by the best person for the job. We hope that, inventors do not try to save some money initially and regret it later. We have seen this happen to so many inventors and hope that, we sharing this information with you, will help you take the right decision.
 
We hope that, this article will help you in taking the right decision in tackling the patenting
process. You can download the article here.
 
If you have any queries, you can reach us at [email protected]
Regards,
Team InvnTree
www.invntree.com | [email protected] | +91-80-65700262
 

 

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How soon after filing a patent application in India, will it be examined?

Author: invntreepatent
May 15, 2013     No comments

It has been a common misconception that, a patent application is queued for examination after it is filed at the Indian Patent Office (IPO). In India, filing a patent application does not essentially mean that an Applicant for the patent is requesting the IPO to examine his patent application. In fact, the Applicant can refrain from filing a request for examining his application up to 48 months from the filing date of the Indian patent application. It shall be noted that, if the Indian patent application is claiming priority from a corresponding patent application filed in a convention country or a PCT application, then the 48 month duration is calculated from the priority date of the Indian patent application.

In light of the above discussion, it is certain that, unless a request for examination is filed, the patent application will not be queued for examination. Having said that, by no means are we saying that just because an examination request has been filed, the patent application will be queued for examination. A second criterion has to be satisfied as well for the application to be queued for examination, and the second criterion is publication of the patent application. The patent application is published after 18 months from the date of filing the Indian patent application, unless an early publication request is filed. In case an early publication request is filed, then the patent application is normally published within 1 month from the date of filing such a request.
We can summarize the above content by mentioning that, a patent application will be queued for examination after both the below listed criteria are satisfied:
  • A request for examination of the patent application has been made
  • The patent application has been published
In case the Indian patent application is a national phase application, than the Indian patent application will be queued for examination after all the three below listed criteria are satisfied:
  • A request for examination of the patent application has been made
  • The patent application has been published
  • 31 months has passed from the priority date of the Indian patent application, unless “express” request for examination is filed       
The Indian patent office has introduced a expedited examination of patent applications, which is applicable if certain criteria is met. You can read more about this in our article.
 
The above mentioned are the criteria for the patent application to be queued for examination. Once queued, it can take a considerable amount of time, at least 2 years, to receive an examination report from the IPO. The current lot of patent applications, as per the year it was queued for examination, which are being issued examination reports, can be found here 
 
In order to expedite the patenting process in India, it is advisable to satisfy the above listed criteria as soon as possible.
 
I hope you found this article useful. If you have any queries, feel free to write to us at [email protected]
Best regards,

Team InvnTree

This work is licensed under a Creative Commons Attribution-NonCommercial 3.0 Unported License

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Can a lapsed patent be restored in India?

Author: invntreepatent
May 15, 2013     No comments

Once an Indian patent is granted for your invention, it has to be maintained subsequent to the grant. Maintaining a patent includes the task of paying patent renewal fee each year. Failure to pay the renewal fee will result in the patent ceasing to have effect.

The patent renewal fee in India is collected from the 3rd year onwards. Once the patent is granted, the pending renewal fee calculated from the 3rd year has to be paid. Further, the renewal fee for the subsequent years shall be paid before the expiration of the previous year of the patent. For example, renewal fee for the 8th year shall be paid before the expiration of the 7th year of the patent. The renewal fee details are provided below:

Renewal fee – Year

Patent Owner – Natural Person

Patent Owner – Other than natural person

Small Entity

Other than small entity

3 to 6

800

2000

4000

7 to 10

2400

6000

12000

11 to 15

4800

12000

24000

16 to 20

8000

20000

40000

 
As mentioned earlier, failure to pay the renewal fee will result in the patent ceasing to have effect. At a time when the patent ceases to have effect, the patent owner will not be able to enforce the patent. Further, even if the patent is restored, one cannot be held liable for infringement during the period in which the patent had ceased to have effect.
 
If a patent has ceased to have effect as a result of failure to pay the renewal fee within the prescribed time, i.e. before the expiration of the previous year, then the patent owner can request an extension of time to pay the renewal fee. The extended period is not more than 6 months from the date on which the patent ceased to have effect. The Indian Patent Office (IPO) fee for such an extension is INR 480/1200/2400 per month if the patent owner is a natural person or a small entity or other than small entity respectively.
 
In case a patent has ceased to have effect, it is advisable to reinstate it within the above stated 6 months. However, if the patent owner fails to reinstate the patent in this extended period of six months, then the patent owner can take an alternative approach to reinstate the patent. This alternative approach to reinstate is available till 18 months from the date the patent ceased to have effect. In the instant approach, the patent owner will have to mention, in detail, the circumstances which led to the failure to pay the fee, and the IPO may require further evidence. This approach however, is relatively difficult, time consuming and expensive.  
 
In short, we can summarize this article by stating that a patent that has ceased to have effect can be restored by either paying the renewal fee within 6 months from the date on which the patent ceased to have effect, using a first approach, or by paying the renewal fee within 18 months from the date on which the patent ceased to have effect, using a second, more difficult and expensive, approach.
 
We hope you found this article useful.
 
Feel free to write to us at [email protected] if you have any comments, queries or want to avail our services.
 
Best regards,
Team InvnTree
 
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Should I apply for a patent before publishing my invention?

Author: invntreepatent
May 15, 2013     2 Comments

We come across several individuals who publish their work, and thereafter explore the option of patenting. Hence, we have penned down our thoughts on effects of publication on patenting.

Even before we delve into the topic, we would like to state the fact that, patent laws are jurisdiction specific, and varies from one country to another. The law in the US gives an inventor a period of 12 months from the date of such publication to apply for a patent. However, the law governing the patent system in India is significantly different.
 
In India, when the patent office examines a patent application, it tries to determine whether the subject matter intended to be protected in the patent application is anticipated or not. To determine anticipation, publications in India or elsewhere, which exist before the date of filing of the Indian patent application, are considered. In a scenario wherein the inventor himself has made a publication before filing the patent application, will still be considered as “prior art”. The inventors own publication would result in anticipation of the subject matter sought to be patented by his patent application, and a patent will be rejected.
 
Hence, it is advisable to apply for a patent before considering publication elsewhere, especially if you wish to seek patent protection in India and European countries.
 
We hope you found this article useful. You may also be interested in reading our related article about "Can publicly disclosed inventions be patented in India?"    
 
Feel free to write to us at [email protected] if you have any comments, queries or want to avail our services.
 
Best regards,
Team InvnTree

This work is licensed under a Creative Commons Attribution-NonCommercial 3.0 Unported License

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

Author: invntreepatent
May 15, 2013     No comments

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 [email protected] 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   
 
   
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Options to restore lapsed patents in India

Author: invntreepatent
May 15, 2013     No comments

Introduction to patent maintenance

The term of a patent is for twenty years from the date of filing of the patent. The patentee has to pay renewal fee according to Sec 53 of the Indian Patent Act. Renewal fee or Maintenance fee is paid every year for keeping a patent in force for the term of patent. Renewal fee specified in the first schedule is payable before the expiration of the second year from the date of patent in respect of third year. Thereafter, renewal fee should be paid before the commencement of every succeeding year. However, this period is extendable by six months by requesting extension of time.

During pendency of the application of patent or where the patent has been granted after the expiry of two years from the date of filling, the renewal fee has to be paid within three months of the date of recordal in register of patents or within the extended period not later than nine months from the date of recording.
Renewal fee is not applicable for the patent of addition and for the period during which a direction was issued by the controller to keep the patent secret in view of certain secrecy directions. If the direction is revoked in any year irrespective of time at which the order was issued, renewal fee has to be paid for the full year.
 
Patent not renewed on time
If the patentee fails to pay the renewal fee within the prescribed period and also within the extendable period of six months by requesting extension of time, the patent ceases to have effect or lapses from the date of expiration. Patent lapsed, due to non-payment of renewal/maintenance fee can be restored within eighteen months from the date of lapse. 

Actions to be carried out to restore a lapsed Patent
Lapsed patent can be restored as per the below procedure

  • Application for restoration of lapsed patent should be made by the patentee or his legal representative according to Sec 60 and Rule 84
  • Application is to be filed within the eighteen months from the date of lapse
  • However one month extension can be sought under  rule 138 of Patent Rules, which is a discretionary power of the controller
  • Submit Form – 15 with prescribed fees (Section 60 and rule 84), which is INR 2400/6000/12000 for natural persons/small entity/other than small entity respectively.
  • Submit substantial evidence to support that the non payment of renewal/maintenance fee was unintentional
Statement and evidence generally considered for non payment of renewal/maintenance fee was unintentional

  • The Application must include statement setting out the circumstances which led to the failure to pay the renewal fee. This statement may be supported by evidence and copies of any document referred to.
  • The evidence must support the patentee's claim that the failure to pay the renewal fee was unintentional and that there has been no undue delay in applying for restoration.
  • The controller may call for further evidence, which may include letters, deeds etc.
  • If the patentee deliberately elects not to pay a fee under an erroneous supposition that he secured no advantage by doing so, he cannot claim that the failure to pay was unintentional even though he would have wished to pay if he had known the true position.
  • The patentee who has to pay the fee is usually the patentee himself, but may be a licensee or agent, under which circumstances the Controller recognizes the acts of a person apparently for the patentee where a business arrangement is complex.
  • In deciding whether the failure to pay renewal fee was unintentional, consideration is only to the patentee's last decision before expiry of the extended time for paying renewal fee under Section 53(2). No attention is paid to previous changes of mind. Any post-cessation decision not to apply for restoration is fatal to the applicant.
  • The patentee's financial inconvenience is not admitted as a ground of unintentional failure, but destitution resulting in physical impossibility to pay is considered.
  • As a patentee must exercise reasonable diligence in maintaining his patent, it is not necessarily sufficient to allege innocence of undue delay, because he was ignorant of the lapsing through the fault of his 'agent'. An evidence of proved negligence in the office of the agent may however be sufficient to secure restoration.
  • If the Controller does not agree that a prima facie case for restoration has been made out, the applicant is so notified and unless the applicant states within one month that he desires to be heard, the application may be refused.
Possibility of restoration of the lapsed patent
Upon submission of all the documents, the restoration of the lapsed patent is not a given possibility on filling of the application. The controller examines the information provided by the patent holder for the restoration of patent. If the controller is convinced that the evidence supported that non payment was unintentional and there has been no undue delay in making the application, the application along with the patent will be published in the official gazette as per Rule 84(3).

If the controller refuses to restore the lapsed patent based on evidence produced, the same shall be communicated to the applicant. If the applicant desires, a request to the Controller can be made to give him an opportunity to be heard. Such request needs to be made within a period of one month from the date of the decision of the Controller.  If no such request is made within the one-month period, the Controller shall refuse the application for restoration. On the other hand, upon request made by the applicant, the controller will give an opportunity for the applicant to be heard. If the controller is satisfied after the hearing, the application along with the patent will be published in the official gazette as per Rule 84(3).
The restoration application can be opposed by any person interested by filling Form 14 along with the fee within two months from the date of publication of the application for restoration. Once the notice of opposition is filed, the controller will notify the patentee and would provide him with a copy of notice. The controller will also give the patentee and the opponent an opportunity to be heard before deciding the case.
Further, under section 61(3) and Rule 86(1), if there is no notice of opposition filed, the controller rules the decision in favour of the applicant to restore the patent. Thereafter, upon paying the unpaid fees and additional fees within one month from the date of order of the controller allowing the application for restoration, the said decision is published in the official gazette.
It shall be noted that, no suit or proceedings will be commenced or prosecuted in  respect of an infringement of a patent commenced between the date on which the patent ceased and the date of publication of the application for restoration of patent.
 
Conclusion
Restoration of a lapsed patent involves several subjective decisions that may have to be taken by the Controller. Hence, patentees are advised to be extremely cautious about patent renewal deadlines. 
 
You may be interested in reading our article "Significance of Statement of Working In The Indian Patent System".
 
Also, feel free to contact us or ask us  a question and have it answered within 24 hours. 

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Significance of Statement of Working In The Indian Patent System

Author: invntreepatent
May 15, 2013     No comments

Introduction to statement of working 

Statement of working is a disclosure provided by the patentee or the licensee to the patent office stating if the patent is commercially exploited in the country to meet the reasonable requirements of the public. 

Governing statute 

Statement of working of the patent has to be submitted as per Section 146(2) of the Indian Patent Act and rule 131. This statement can be submitted in Form 27 each year within 3 months from the end of the calendar year.


Section 146(2) of The Indian Patent Act:
 (2) Without prejudice to the provisions of sub-section (1), every patentee and every licensee (whether exclusive or otherwise) shall furnish in such manner and form and at such intervals (not being less than six months) as may be prescribed statements as to the extent to which the patented invention has been worked on a commercial scale in India.  

Rule 131 of The Patent Rules: 
(1) The statements shall be furnished by every patentee and every licensee under sub-section (2) of section 146 in Form 27 which shall be duly verified by the patentee or the licencee or his authorised agent. 
 (2) The statements referred to in sub-rule (1) shall be furnished in respect of every calendar year within three months of the end of each year.
 
In addition to the above voluntary disclosure, the controller at any time, if required, may ask the patentee or the licensee to provide details in writing as to what extent the patent has been commercially exploited in India, as per Section 146(1).

Section 146(2) of The Indian Patent Act:  
1) The Controller may, at any time during the continuance of the patent, by notice in writing, require a patentee or a licensee, exclusive or otherwise, to furnish to him within two months from the date of such notice or within such further time as the Controller may allow, such information or such periodical statements as to the extent to which the patented invention has been commercially worked in India as may be specified in the notice. 
 
Details to be furnished in the statement
 

 (i)   The patented invention: {        } Worked {        } Not worked

(a)  If not worked: reasons for not working and steps being taken for working of the invention.

(b)  If worked: quantum and value (in Rupees), of the patented product:

i)   manufactured in India

ii)  imported from other countries (give country wise details)

(ii)   licenses and sub-licenses granted during the year;

(iii) State whether public requirement has been met partly/adequately/to the fullest extent at reasonable price.

 
Significance of the statement 
Penalty: 
If a patentee or licensee refuses or fails to furnish information required under Sec 146, the patentee or licensee will be punished with fine, which may extend up to Ten lakh rupees under Section 122(1)(b). Further, providing wrongful information or statement can impose the patentee /licensee to imprisonment up to six months or fine or both Section 122(2).

Section 122(1)(b) of The Indian Patent Act:

 122. Refusal or failure to supply information (1) If any person refuses or fails to furnish—

 

 (b) to the Controller any information or statement which he is required to furnish by or under section 146, he shall be punishable with fine which may extend to ten lakh rupees.

 
Compulsory licence: 
Information provided in the statement of working is used while deciding on applications for compulsory license on patents. The Intellectual Property Appellate Board (IPAB) of India, while granting the first compulsory licence in India heavily relied on the information provided in the statement of working submitted by the patent owner.  
 
In the above instance, Natco was granted a compulsory licensee to a patent, which was held by Bayer, covering the Nexavar drug. The IPAB relied substantially on the information submitted by Bayer corresponding to the patent, while granting the license. 
 
Patent litigation: 
In case of infringement, the patent owner, as relief, can seek injunction and damages or an account of profit under Section 108. The information submitted in statement of working can be used by the court to estimate the damages that may be awarded. On the other hand, in case statement of working is not filed, the alleged infringer may argue that the patent owner might not have encountered any damages in view of the missing statement of working.
 
Conclusion:
Patents are granted to encourage the growth of technology and to ensure that the patented invention is commercialed for the welfare of the public. Filing of statement of working provides the patent office to seek periodic information relating to Commercialization of the patented invention in the territory of India thereby preventing the misuse or non use of patented inventions. Therefore, the filing of Form 27 after the grant of a patent is a statutory requirement and the patent office should enforce strict action against those violating the law.
 
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Procedure after receiving ISR for PCT application from the chosen search authority

Author: invntreepatent
May 15, 2013     No comments

Once an Applicant of a PCT application receives an International Search Report (ISR) issued by the International Search Authority (ISA), the Applicant has the following options:

Option 1 – Do not respond to the International Bureau

The Applicant can choose not to respond to the International Bureau (IB), and thereafter decide on filing one or more national phase patent applications within 30 months (in some cases more than 30 months) from the priority date of the PCT application.

In our opinion, this option may be chosen when the ISR is “positive”, indicating a good probability of patent grant.

Alternatively, the Applicant may choose this option when the ISR is “negative”, indicating failure to meet patentability criteria, and the Applicant does not wish to file national phase patent applications.

Alternatively, the Applicant may choose this option when the ISR is “negative”, indicating failure to meet patentability criteria, and the Applicant wishes to pursue the matter further with national office(s) where national phase patent application(s) will be filed by the Applicant. In this case, the expenses involved in prosecuting national phase application(s) might increase.

Option 2 – Amend the patent specification (claims)

The Applicant can choose to amend the patent specification (claims) based on the observation presented in the ISA. Thereafter, Applicant can file one or more national phase patent applications within 30 months (in some cases more than 30 months) from the priority date of the PCT application.

The Applicant can have the amended specification considered for examination at the offices where national phase applications will be filed. The amendment may reduce the effort involved in prosecuting national phase applications.

The amendment shall be submitted to the IB within 2 months from the date of transmittal of the ISR to the Applicant or 16 months from the priority date, whichever time limit expires later.

Option 3 – Submit an “informal response”, without amending the patent specification

The Applicant can choose to submit an “informal response”, without amending the patent specification, based on the observation presented in the ISA. Thereafter, the Applicant can file one or more national phase patent applications within 30 months (in some cases more than 30 months) from the priority date of the PCT application.

The informal response may reduce the effort involved in prosecuting national phase applications.

The informal response shall be submitted to the IB within 30 months from the priority date, but preferably before expiry of 28 months from the priority date.

Option 4 – Amend the patent specification (claims) and submit an “informal response”

The Applicant can choose to amend the patent specification (claims) and submit an “informal response” based on the observation presented in the ISA. Thereafter, the Applicant can file one or more national phase patent applications within 30 months (in some cases more than 30 months) from the priority date of the PCT application.

The Applicant can have the amended specification considered for examination at the offices where national phase applications are filed. The amendment and the informal response may reduce the effort involved in prosecuting national phase applications.

The amendment shall be submitted to the IB within 2 months from the date of transmittal of the ISR to the Applicant or 16 months from the priority date, whichever time limit expires later.

The informal response shall be submitted to the IB within 30 months from the earliest priority date, but preferably before expiry of 28 months from the priority date.

Option 5 – Demand for International Preliminary Examination (Chapter II)

The Applicant can demand for International Preliminary Examination (IPE). Note that, statutory fee is associated with this demand. The fee will depend on the International Preliminary Examination Authority (IPEA) chosen by the Applicant.

An Applicant may choose this option if the ISR was “negative”, and the Applicant chooses to submit a response and/or amend the patent specification to pursue the IPEA to provide a “positive” International Preliminary Examination Report (IPER).

Note that, the opinion of the IPEA may not be binding on other national offices, if and when the Applicant files one or more national phase applications.

The proceedings during IPE may reduce the effort involved in prosecuting national phase applications.

The deadline for filing the demand is 3 months from the date of transmittal of the ISR or 22 months from the priority date, whichever expires later.

Option 6 – File national phase applications in Luxembourg, United Republic of Tanzania and Uganda

If option 5 is not chosen, and if patent protection is desired in Luxembourg, then a national phase application can be filed within 20 months from priority date of the PCT application. Alternatively, patent protection in Luxembourg can be sought by filing a national phase patent application in the European Patent Office within 31 months from priority date of the PCT application.

Similarly, if option 5 is not chosen, and if patent protection is desired in United Republic of Tanzania and Uganda, then national phase applications can be filed in the respective nations within 20 months from priority date of the PCT application. Alternatively, patent protection in United Republic of Tanzania and Uganda can be sought by filing a national phase patent application in the African Regional Intellectual Property Organization within 31 months from priority date of the PCT application.

InvnTree IP Services

InvnTree provides up to 30 minutes of free telephonic consultation to enable Applicants understand ISR and take a decision on the way forward.

We hope you found this article useful. Feel free to write to us at [email protected]

Best regards – Team InvnTree

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Can I apply for a patent before creating a prototype?

Author: invntreepatent
February 14, 2013     No comments

Generally inventors wonder whether they can apply for a patent before creating a prototype.

A simplistic answer to the question is, YES, one can apply for a patent before creating a prototype of the product.

Now let’s go to the reasoning behind the answer.

Every patent application has to be accompanied by a patent specification. The patent specification should explain your invention in sufficient detail so as to enable one having ordinary skill in the field of the invention, to practice your invention. Section 10(4) of the Indian patent act states what has to be included in the patent specification. A part of the aforementioned section is provided below: 

(4)Every complete specification shall—   

  • fully and particularly describe the invention and its operation or use and the method by which it is to be performed;
  • disclose the best method of performing the invention which is known to the applicant and for which he is entitled to claim protection; 

It shall be noted that, depending on the product and the field of technology, one may be able to “fully and particularly describe the invention and its operation or use and the method by which it is to be performed” without actually building a prototype. However, in some scenarios, one might have to build a prototype to be able to describe the invention in the required manner. In essence,   it is not mandatory, according to the Patent Act, to have a working prototype before applying for a patent.

In certain scenarios, the patent office might request for a model or sample, illustrating the invention. Even in such scenarios, the model or sample will only have to be provided before the patent is granted. The applicant will have sufficient time after applying for a patent to create such model or sample. Hence, the patent applicant need not worry about creating such model or sample before applying for a patent, if he can describe the invention adequately. The relevant section, which is Section 10(3) that corresponds to submission of model or sample, is reproduced below: 

10(3) If, in any particular case, the Controller considers that an application should be further supplemented by a model or sample of anything illustrating the invention or alleged to constitute an invention, such model or sample as he may require shall be furnished before the application is found in order for grant of a patent, but such model or sample shall not be deemed to form part of the specification.

It shall be noted that, making a prototype is not only a time consuming process, but also fairly expensive. If an inventor refrains from applying for a patent till the prototype is prepared, it may delay his patent filing process and in turn the priority date . In the mean time, if someone files for a patent for the same product, they will have earlier priority, and their invention will act as prior art for your invention, even though others might have invented the product after you did.

In such scenarios, he will be eligible for a patent grant, as in many countries of the world, including India, the patent systems follows a 'first to file' and not 'first to invent' concept. Hence, if the inventor feels that he has sufficient details about the invention to enable a person with ordinary skill in the field to practice the invention, even before building the prototype, he should ideally consider filing for a patent.
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Team InvnTree

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