Patent Office India – Published Patent Information – InvnTree Feb 25, 2011

The Indian Patent Office publishes patent information on a weekly basis (on Friday each week). This is a public notification, enabling you to take appropriate action if desired.

The publication includes published patent applications and granted patents, among other information, for the week of February 25, 2011.

You may go through this publication, and if you find patent information that has an impact on your business, then you may take appropriate actions, such as:

  1. File pre-grant opposition on published patent applications
  2. File post-grant opposition on granted patents

Data sourced from Indian Patent Office by Team InvnTree. The data can be downloaded here and can also be accessed  below.

I hope you find this data helpful. Check our patent services page to find out if we cater to your patent requirements. Also, feel free to contact us or ask us a question and have it answered within 24 hours.

Indian Patent Office – Published Patent Information – InvnTree Feb 18, 2011

The Indian Patent Office publishes patent information on a weekly basis (on Friday each week). This is a public notification, enabling you to take appropriate action if desired.

 
The publication includes published patent applications and granted patents, among other information, for the week of February 18, 2011.
 
You may go through this publication, and if you find patent information that has an impact on your business, then you may take appropriate actions, such as:
  1. File pre-grant opposition on published patent applications
  2. File post-grant opposition on granted patents
Data sourced from Indian Patent Office website  by Team InvnTree. The data can be downloaded here and can also be accessed  below.
 

 

I hope you find this data helpful. Check our patent services page to find out if we cater to your patent requirements. Also, feel free to contact us for any information you may require.

Indian Patenting Process Timeline

Each country follows its own predefined procedure of receiving patent applications, examining the applications and granting patents or rejecting patent grants. Based on the procedure followed by a patent office, the time required to have a patent granted to your invention can vary.

Indian Patent Office (IPO) also follows a predefined procedure, and this article provides an overview of the procedure and timelines corresponding to patenting your invention in India.
In the present context, I think you will find our articles, “What are the different patent filing options?” and “How much does it cost to get a patent in India?”, useful.
 
Some of the steps in this process revolve around the phrase “priority date”. Priority date is the date of filing of the first patent application for your invention. For example, if you have filed a patent application for your invention in US on January 01, 2010 and thereafter, you filed a patent application for the same invention in India on March 10, 2010, then the priority date will be January 01, 2010. On the other hand, if you haven’t filed any patent application for your invention previously, then the data of filing of patent application in India will be the priority date of your patent application.
 
The flowchart provided in this article illustrates the timelines involved in this process. The steps in blue blocks are actions that have be taken by you (applicant) and the steps in white block are actions that are taken by the IPO.
 Indian Patent Process Flowchart

Step 101

File a patent application in the IPO. I think you might find our articles on “Patent Application Filing Procedure/Process in India” useful.

Step 102
File an early publication request.
Filing an early publication request is an optional step. This request is filed to have your patent application published early. Filing an early publication request helps in expediting the patent examination process.
 
Step 103
If you file an early publication request, then your patent application will be published by the IPO, generally, within 1 week from the data of receiving the request.
 
Step 104
If the early publication request is not filed, then the IPO publishes your patent application after 18 months from the priority date.
 
Step 105
File a request for examination. This request can be filed within 48 months from the priority date. Note that the IPO will not examine your patent application, unless this request is filed. Hence, if you wish to expedite the patent process, early filing of the examination request is advised.  
 
Step 106
Once the IPO receives your request for examination, the IPO puts your application in queue for examination. Subsequently, your patent application will be examined by the IPO. In light of the examination, if the IPO is of the opinion that your patent application satisfies all the requirement of patentability, then a patent is granted to your invention.
 
Step 107
On the other hand, after examining your application, if the IPO is of the opinion that the requirements of patentability are not met, then a First Examination Report (FER) is issued.  
 
Step 108
 
You will have to respond to the FER within 6 months from the date of the FER. However, it is advisable to respond as early as possible. By responding early, you provide an opportunity to the IPO to issue another examination report if the IPO is not convinced by your response to issue a patent.
 
Please note that issuance of subsequent examination reports by the IPO and responding to the same by the applicant can occur within 12 months from the date of the FER.
 
Also, note that you can request the IPO for a hearing and the IPO is obligated to provide you the same.
 
Step 109 and 110
 
In light of the communication with the IPO, the IPO can either grant a patent or reject granting of a patent.
 
Note that, if the IPO does not grant a patent, then you may, if you wish, appeal against the decision of the IPO. The Intellectual Property Appellate Board (IPAB) is authorized to hear such appeals.
 
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 preformed by persons who have both techinical 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 article on this here.
 
I hope this article helps you in filing patent applications in India. 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   
 

Patent Application Filing Procedure-Process in India

Patent Application Filing Procedure-Process in India

Filing a patent application in the Indian Patent Office is the first step towards securing a patent to your invention in India. To file a patent application, a set of forms has to be submitted to the patent office. The forms can be submitted online (http://ipindiaonline.gov.in/epatentfiling/goForLogin/doLogin) if you have a class 3 digital certificate. Alternatively, you can send true copies (hard copies) to the patent office. The patent office charges 10% additional fee if applications are filed offline.

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 preformed by persons who have both techinical 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 article on this:
 
Further, we have provided this article for knowledge purposes only. It is recommened to avail services of professionals to file patent applications, as mistakes will prove costly. Thorough understanding of the Indian Patent Act is essential for filing patent applications. Patent agents have understanding of the Indian Patent Act and are the only persons (other than the applicant themselves) authorized by the Patent office to file patent applications on behalf of the applicant. InvnTree employs patent agents.
 
Indian patent offices are located at Delhi, Kolkata, Mumbai and Chennai. The patent application has to be filed in the appropriate office based on your/your company’s location. The table below provides the addresses of the patent offices in India and their respective territorial jurisdiction.
Office Address Territorial Jurisdiction
Mumbai

Intellectual Property Office, Boudhik Sampada Bhawan, Near Antop Hill Post Office, S.M.Road,Antop Hill, MumbaiI – 400 037.

Phone: 24137701, 24141026, 24150381, 24148165, 24171457 FAX : 24130387 EMAIL: mumbai-patent@nic.in

The States of Maharashtra, Gujarat, MadhyaPradesh, Goa and Chhattisgarh and the Union Territories of Daman and Diu & Dadra and Nagar Haveli
Chennai

Intellectual Property Office, Intellectual Property Office Building, G.S.T. Road, Guindy, Chennai-600032,

Phone: 044-22502081-84

FAX: 044-22502066,

Email: chennai-patent@nic.in

The States of Andhra Pradesh, Karnataka, Kerala, Tamil Nadu and the Union Territories of Pondicherry and Lakshadweep
New Delhi

Intellectual Property Office, Intellectual Property Office Building, Plot No. 32, Sector 14, Dwarka, New Delhi-110075,

Phone : 011-28034304, 28034305 28034306

FAX:011- 28034301,02

Email: delhi-patent@nic.in

The States of Haryana, Himachal Pradesh, Jammu and Kashmir, Punjab, Rajasthan, Uttar Pradesh, Uttaranchal, Delhi and the Union Territory of Chandigarh.
Kolkata

Intellectual Property Office, Intellectual Property Office Building, CP-2 Sector V, Salt Lake City, Kolkata-700091,

Phone : 23671945, 1946, 1987,

FAX-033-2367-1988,

Email:- kolkata-patent@nic.in

The rest of India.
Once you have identified the patent office in which you have to file your patent application, it is now time to get an overview of the forms that have to be submitted.
 
To file a patent application, you will have to submit form 1, form 2, form 3 and form 5. Subsequent to filing these forms with the appropriate fees, you will receive a patent application number from the patent office. You can choose to file form 9 (optional) and form 18 along with fiing a complete application or after filing a complete application. You can download the Indian patent application filing forms.
 
In the table below, the list of forms that have to be submitted and their respective fees is provided. Please note that, the fee mentioned is for E-filing only. The patent office charges an additional fee of 10% over the fee for applications filed offline.
 

 

 

Form

 

 

 

Title

Patent office Fee (INR) 1$ = ~ 60 INR

E-Filing only

 

 

 

Comment

Applicant-Natural person/ Startup Applicant –

 

 

other than natural person

Small Entity Others except small entity
1 Application for Grant of Patent 1600 4000 8000 Mandatory
2 Provisional/Complete Specification No fee* No fee* No fee* Mandatory
3 Statement and Undertaking Under Section 8 No fee No fee No fee Mandatory
5 Declaration as to Inventorship No fee No fee No fee Mandatory
9 Request for Publication 2500 6250 12500 Optional
18 Request for Examination of Application for Patent 4000 10000 20000 Mandatory

 * – A fee of 160/400/800/sheet, based on the type of applicant, is applicable for each sheet exceeding 30 sheets in a patent specification. Further, a fee of INR 320/800/1600/Claim, based on the type of applicant, is applicable for each claim exceeding 10 claims in the patent specification.

Before reading further, I recommend reading our article “How much does it cost to get a patent in India?” I think it will help you in taking some decisions during the filing process.
 
​You may also calculate the patent office fee using our cost calculator below: All fee in USD.
 

Indian Patent Filing Cost Calculator

 
It should be noted that Forms 1, 2, 3 and 5 can be submitted online. All forms of the patent office can be filed online.
 
An overview of each of the forms is provided below.
 
Form 1 – Application for Grant of Patent
As the name suggests, this form is an application for grant of patent in India. In this form, you will have to furnish information, such as, name and address of the inventor(s), name and address of the applicant(s), information corresponding to prior patent applications relating to the current invention, which you or any authorized entity has filed, and some declarations, among other information.

 
(Added after receiving comments from Mr. Naren) Please note that a local communication address (address in India) has to be provided. This point is of importance to foreign (Non-Indian) applicants.
 
Form 2 – Provisional/Complete Specification
Form 2 is used to furnish your patent specification. The patent specification can be provisional or a complete patent specification depending of the type of patent application (provisional or complete) you are filing. You might find our article on “What are the different patent filing options?” useful.

 
If you are filing a provisional patent application, then use the following preamble in the first page of Form 2:

The following specification describes the invention

On the other hand, if you are filing a complete patent application, then use the following preamble in the first page of Form 2:

The following specification particularly describes the invention and the manner in which it is to be performed

Note that, if you are filing offline, 2 copies of the patent specification has to be sent to the patent office. Additionally, count the number of sheets and claims (extra fee for more than 30 sheets and more than 10 claims) and calculate the appropriate fee. While counting the sheets, even the drawing sheets will have to be taken into account.

Form 3 – Statement and Undertaking Under Section 8

Form 3 is used to furnish information/actions relating to patent applications filed in other countries for the current invention. Additionally, any information relating to the rights corresponding to the present patent application has to be furnished. Further, you would be using form 3 to undertake that you will be keeping the patent office informed in writing the details regarding corresponding applications for patents filed outside India. You can read more about this in ourarticle.

Form 5 – Declaration as to Inventorship
This application is used to declare the inventors of the subject matter sought to be protected using the current patent application.

 
Form 9 – Request for Publication
If this form is not filed, then the patent specification will be published by the patent office after 18 months from the priority date (filing of the first patent application for the current subject matter). On the other hand, by filing this form, you can generally have your patent specification published within 1 month from filing this form. Note that the patent rights start from the date of publication of the patent application (enforceable after grant of patent).

 
Form 18 – Request for Examination of Application for Patent
This form can be filed within 48 months from the priority date. The patent office will not consider your patent application for examination unless this form is filed. Hence, if you wish to expedite the patenting process, filing of form 9 and 18 at an early stage is advised. 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.

 
As a final note, I would advise you to go through our article only for the purpose of gaining knowledge of the patenting process, not as a guide to file patents on your own, since this will lead to adverse affects at a later stage.
 
You may read our other articles to gain more understanding of the patent system:
I hope this article helps you in filing patent applications in India.
 
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
 

Indian Patent Office – Published Patent Information – InvnTree Feb 11, 2011

The Indian Patent Office publishes patent information on a weekly basis (on Friday each week). This is a public notification, enabling you to take appropriate action if desired.

The publication includes published patent applications and granted patents, among other information, for the week of February 11, 2011.

You may go through this publication, and if you find patent information that has an impact on your business, then you may take appropriate actions, such as:

  1. File pre-grant opposition on published patent applications
  2. File post-grant opposition on granted patents

Data sourced from Indian Patent Office website  by Team InvnTree. The data can be downloaded  here and can also be accessed  below.

I hope you find this data helpful. Check our patent services page to find out if we cater to your patent requirements. Also, feel free to contact us for any information you may require.

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   
 

 

Indian Patent Office – Published Patent Information – Feb 04, 2011

The Indian Patent Office publishes patent information on a weekly basis (on Friday each week). This is a public notification, enabling you to take appropriate action if desired.

The publication includes published patent applications and granted patents, among other information, for the week of February 04, 2011.

You may go through this publication, and if you find patent information that has an impact on your business, then you may take appropriate actions, such as:

  1. File pre-grant opposition on published patent applications
  2. File post-grant opposition on granted patents

Data sourced from Indian Patent Office website  by Team InvnTree. The data can be downloaded  here and can also be accessed  below.

I hope you found this article helpful. Check our patent services page to find out if we cater to your patent requirements. Also feel free to contact us for any information you may require.

5 options available if your product is infringing on a patent

Companies and individuals alike take aggressive steps to protect their patent rights. Most often, if a patent holder finds out that a product or a process is violating his patent rights, he might seek damages from the infringing party. Such enforcement of patent rights is usual in developed economies, such as US and Europe. However, in the recent years, even India has seen its share of attempts to enforce patent rights (Ex: TVS vs Bajaj).

Generally, one may realize that his product may be infringing on a patent(s) by carrying out a freedom to operate study (our article on freedom to operate) and an infringement analysis (our article on infringement analysis). On the other hand, a patent holder might have informed you that your product is infringing his patent and asked you to stop all activities relating to the infringing product. Irrespective of how you found out, the question now is to find out a remedy in this scenario.
 
This article attempts to provide an overview of the options you may consider when you find out that your product is most certainly infringing on someone’s patent. In a nutshell, you may consider the 5 options listed below:
 
1 – Product reengineering
2 – Compulsory license
3 – Cross licensing
4 – Licensing
5 – Invalidation
 
1.                 Product reengineering
 
Product can be reengineered in such a way that the reengineered product does not infringe existing patents. It may be noted that a product is said to be infringing on a patent, if the product maps on to the claims of a patent. Hence, to reengineer a product, you will have to clearly understand the scope of the claims of relevant patents. Thereafter, the product should be modified in such a way that the modified product works around the scope of existing patents.
 
Product reengineering can be an effective strategy if you are at an early stage of product development or if reengineering the product is not an expensive procedure. In some cases product reengineering may require significant investment of time and money. Further, product reengineering may delay the product launch, which may in turn affect the success of the product. In case where product reengineering is not a suitable option, you may consider the viability of the remaining 4 options provided below. 
 
2.                 Compulsory license
 
The provision of compulsory license exists in India, and you can give this option a serious thought with respect to the Indian market.
 
According to the Indian Patent Act, a patent holder within 3 years from the date of grant, work the patented invention in India. Further, the patent holder has to make the patented invention available to public at reasonably affordable price and fulfill reasonable requirement of the public (Refer to section 54 of the Indian Patent Act). The Indian Patent Act also recites that patent holder has to file a statement every year regarding working of patent (there can be significant penalties for not filing this statement). This statement of working helps the patent office in determining which patents are worked in India and which ones are not.
 
As a strategy, you can check if the relevant patents are worked in India. If the patents are not worked, then you can use the appropriate grounds to seek a compulsory license from the patent holder.      
 
3.                 Cross licensing
 
Cross licensing as a strategy can be explored if you have a patent portfolio. In this approach, you would essentially check if the holders of those relevant patents are infringing on patents in your portfolio or if they would benefit from practicing your patented invention. If answer to one or more of the above conditions is in affirmative, then you can reach an arrangement, wherein you let the holders of the relevant patent practice your patented invention(s) and in return you are given a license to practice their patented invention(s).   
 
4.                 Licensing
 
In the previous approach, as the name suggested, you provide license to patent holders to practice your patented invention, and in return, you get a license to their patented technology. On the other hand, if you do not see a significant advantage in cross licensing, you can explore the option of getting licenses from the patent holders. There are different options, such as buying the patent, fixed royalty, running royalty and fixed plus running royalty, which you may want to explore when you are contemplating on adopting this strategy.     
 
5.                 Invalidation
 
Invalidation means proving that a patent was wrong granted and having the same revoked. This approach can be used when there is a good probability of invalidating the relevant patent(s). Invalidation, although an effective approach in some cases, it can be a time-consuming affair, as invalidation proceedings are generally carried out in courts.
 
In India, one can invalidate a granted patent by filing a “post-grant” opposition in the patent office within 1 year from the data of publication of grant of patent. Thereafter, you will have to take a different approach to have a patent invalidated. On the other hand, if you feel that a patent application, if granted, can be a threat to your business, then you can file a pre grant opposition anytime between the publication of patent application and grant of patent. 
 
Companies generally use services such as technology monitoring and competitor monitoring to keep a watch on granted patents and published application and take actions, such as, filing of pre-grant and post-grant oppositions. 
 
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.
 
I hope you found this article helpful.You can download a copy of this article here
 
Best regards, Team InvnTree   
 

Why is freedom to operate study a must for technology companies?

Before launching any product, companies conduct market research to ensure that they have a successful product.

Companies may have different reasons to conduct market research, which may include:
a)      Analyze if there is a need for their product
b)      Identify a market for the product
c)      Study competition
d)     Device a marketing plan
e)      Come up with pricing strategy
 
While, market research is an essential step, an equally important task is finding out if the product has Freedom to Operate (FTO).
 
Now you may ask, if this has got anything to do with obtaining a licence from the government authorities. Well, this has nothing to do with that. FTO is related to finding out if your product infringes upon the patent rights of others. If it does, you may want to strategize the launch of your product based on that.
 
So what is Freedom to Operate or FTO and why should you bother about it?
 
FTO in simple words is the freedom to commercialize a product/process without infringing (our article on infringement: Is my product infringing on others patents) on others patent rights. Commercialization of infringing products may lead to expensive law suits. Hence, a FTO study is an essential task to be carried out before commercializing a product.
 
How is a FTO analysis conducted                     
 
It shall be noted that patent rights are territorial. For example, if someone has a patent over a specific type of “pen” in the US and not in UK, then one can commercialize that “pen” in the UK without infringing on the US patent. Hence, a FTO study for a product/process is specific to a territory and considers patents in that territory. So, if you want to find out, whether you have the freedom to operate in US, the relevant patents in US will be taken into consideration.
To find out if your product is infringing on the patent rights of others in a specific country, a search has to be carried out to uncover all the relevant patents in that country. This search will consider granted patents and patent applications (not granted yet) into consideration.
 
Now you may ask, why consider patents applications which have not yet been granted, and how can you be infringing upon such patent applications. Well to answer your question, a published patent application may be granted in future, and once a patent is granted, they will have the right to sue somebody who has infringed upon their patent rights.
 
Why carry out Freedom to operate search and what other advantages can you gain from it.
 
Freedom to operate search should be preferably carried out at an early stages of product development, so that you do not incur huge development costs in developing potentially infringing products and are not entangled in a legal battle later, on infringement charges.
 
A Freedom to operate search helps in many ways; some of them are listed below:
  1. Will minimize the risk of getting sued by others, for having infringed upon their patent rights.
  2. Such a search will also dig out patents, which have expired (in most countries its 20 years). There may be many useful technologies which can be used from these expired patents.
  3. You will find a list the patents which are relevant to your product/technology and helps you craft strategies, such as:
·         Purchasing patents which are relevant to your product, so that you gain freedom to operate rights in that territory
·         Obtaining a licence from the patent holder for a specific duration of time by working out a payment option. This will give you the right to operate without infringing on others patent rights.
·         If you do have a patent of your own, you can also try the approach of cross licensing of patents to gain mutual benefits.
·         Redesigning your product in such a way that it does not infringe upon others patent rights.
·         Try and invalidate the patents in question so that you gain freedom to operate in the concerned territory.
 
In conclusion, FTO analysis is a step every technology company should take before commercializing their product to avoid expensive law suits and gain knowledge about the strategies that can be adopted to obtain FTO in their desired territory.
 
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.
 
We hope you found this article helpful.You can download a copy of this article here
 
Best regards – Team InvnTree   
 

What are the different patent filing options?

In simple words, “Patent filing” can be defined as a process of submitting an application in a patent office requesting grant of patent to your invention. If you wish to protect your invention in different countries, then you will have to submit a patent application in each of those countries. There are various options or approaches you may use to protect your invention in one or more countries. By understanding the various patent filing options, you can construct a patent filing strategy based on your business objectives and economic constraints. This articles attempts to provide an overview of the patent filing options you can use. (You may be also interested in reading the article “How much does it cost to get a patent in India”)

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 preformed by persons who have both techinical 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 article on this here.

I will attempt to explian the options in a less complex way without trying to be “politically correct”. The options can be broadly divided into 4 classifications:
  1. Filing a provisional patent application

  2. Filing a complete patent application in your country

  3. Filing a patent application in a foreign country

  4. Filing a Patent Cooperation Treaty (PCT) application

patent filing options flowchart InvnTree(2)

1. Filing a provisional patent application

A provisional patent application is filed to secure a priority date for your invention. A priority date is the date on which the first patent application for your invention is filed. This date is important because, knowledge available in public domain before the priority date is referred to as “prior art”, and this prior art is considered by the patent office to decide if a patent has to be granted to your invention. If you delay filing of the patent application, then naturally, more knowledge in the public domain gets added to the prior art, hence decreasing the probability of patent grant to your invention.

Normally, inventors/companies file a provisional application in two scenario. The first scenario is when time is of concern, and drafting a well constructed complete patent specification might delay the patent filing process. This delay in filing, pushes the priority date further, thereby reducing the probability of patent grant to your invention. The second scenario is when money is of concern. Depending on the country in which the patent application is filed, there can be a substantial difference between the provisional and complete application fee that has to be paid  to the patent office. Further, depending on the patent consultant you choose to work with, there can be substantial difference in the fee charged by the patent consultant to draft a provisional and a complete specification. Hence, sometimes inventors/companies draft a provisional specification on their own and file the same.

 
The main difference between a provisional and a complete patent application is, a complete application will have a “claim” section, whereas the claim section will be absent in a provisional application. Claims define the scope of your invention and describes what you wish to protect in your invention.
 
It shall be noted that, a complete patent application has to be filed within 12 months from the date of filing the provisional application. Failure to do so will be considered as abandoning the provisional application. Once abandoned, the advantages of filing the provisional application cannot be availed.
 
A provisional application can be filed in  the patent office of your country or in a patent office of any convention countries (list of contracting countries – Paris conventional).
 
2.Filing a complete patent application in your country

A complete patent application has to be filed in the patent office of your country if you wish to protect your invention in your country. A complete patent application can be filed in the first place or if you have filed a provisional application provisously, then within 12 months from the provisional application filing date.

A complete patent application in your country can be filed by using any one of the following options:
  1. File a provisional application in any convention country (secure a priority date) and file a complete application in the patent office of your country within 12 months from the priorit date.

  2. File a complete application in any convention country (secure a priority date) and and file a complete application in the patent office of your country within 12 months from the priority date.

  3. Use the PCT route – Explained under option 4

3.Filing a patent application in a foreign country
 
If you wish to wish to protect your invention in a foreign country, you can choose from one of the options given below:
  1. File a provisional application in any convention country (secure a priority date) and file a complete application in each of the foreign countries in which you wish to protect your invention within 12 months from the priorit date.

  2. File a complete application in any convention country (secure a priority date) and file a complete application in each of the foreign countries in which you wish to protect your invention within 12 months from the priority date.

  3. Use the PCT route – Explained in detail below

4.Filing a Patent Cooperation Treaty (PCT) application
 
Filing a PCT application is a good strategy if you wish to protect your invention in more number of countries. By filing a PCT application, you get 30 months duration (sometimes even 31 months depending on the country) from the priority date to file patent applications in each country in which you wish to protect your invention. Note that if you had not filed a PCT application, then you would have only 12 months duration from the priority date to file patent applications in each country in which you wish to protect your invention. Another important point to be noted in case of PCT application is that, only comple patent applications are accepted as PCT applications. Further, a PCT application can be filed in the patent office of your country.
 
A PCT application can be under the following scenarious:
  1. File a provisional application in any PCT member country (secure a priority date) and file a PCT aspplication within 12 months from the priorit date. Subsequently, file patent applications, within 30/31 months from priority date, in each country (has to be a PCT member country, list of PCT contracting countries) you wish to protect your invention.

  2. File a complete application in any PCT member country (secure a priority date) and file a PCT application within 12 months from the priority date. Thereafter, file patent applications, within 30/31 months from priority date, in each country (PCT member country) you wish to protect your invention.

  3. File a PCT application in the first place and secure a priority date. Thereafter, file patent applications, within 30/31 months from priority date, in each country (PCT member country) you wish to protect your invention.

It should be noted the patent filing strategy may be constructed on a case to case basis. The filing strategy may depend on business objectives, market conditions and economic constriants, among other factors.

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I hope you found this article helpful.
 
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