What is a Patent?

In basic terms, Patent is a set of exclusive rights granted by a country to an applicant in exchange for a public disclosure of their invention. The invention could be a product or a method/process which provides a technical solution to a problem or offers a new way of doing something. The “exclusive rights” granted to the applicant that include the rights to exclude others from making using, selling, importing, or distributing the patented invention without the permission of the patentee.

Types of Patent Applications

In India, Patent applications can be broadly classified into 3 types based on the approach taken by an applicant for filing a patent application in India viz.,

• Ordinary application
• Convention application
• PCT National phase application

A much detailed explanation of the types and filing of different types of patents applications in India can be read here.

Term of a Patent

Section 53(1) of The Patents Act 1970 sheds light on the term of patents. Term of patent is a period of time during which the applicant is awarded exclusive rights to exclude others from infringing i.e., making, using, selling, importing, or distributing the patented invention without the permission of the applicant. The set of exclusive rights for a patent is granted to an applicant for a limited period of time, which is 20 years. The patentee will have the exclusive rights to exclude others from making, using, selling, importing, or distributing the patented invention for a period of those 20 years. However, once the term of the patent is completed, the patent is termed expired, implying that the patented invention can now be made, used, sold, imported, or distributed by anyone without needing the permission of the patentee.

During the term of the patent i.e., 20 years (assuming the patent is active), the patentee can have a monopoly in the market over the patented product by stopping others from commercially exploiting the patent or can license the patent to other entities. The patentee can also claim damages from entities that infringe upon the patent, however, can only claim damages for infringements that might have occurred after the date of publication of the application until the expiry of the patent. This is where the term of a patent plays a vital role.

The term of a patent is a fixed 20 year term, however, calculation of start of the term of a patent may change based on the approach of an applicant in filing a patent application in India. Calculation of start of the patent term (considering just the 3 types of applications mentioned in the foregoing) is different in two scenarios, one in case of Ordinary application and one in case of Convention application or PCT National phase application.

Ordinary Application

In case of an Ordinary application, the patent term starts from the earliest priority date. In a scenario where a provisional application is filed followed by a complete application within the 12 months due date, the date of filing the provisional application (one with earliest priority date) is considered for calculating the term of the patent. For example, assuming a provisional application being filed on January 01, 2000 followed by a complete application filed on January 01, 2001. Assuming that a request for early publication was field using Form 9 on January 01, 2001 along with the complete application, the application may be published within 2 weeks from the date of filing the request (January 15, 2001 will be assumed as the date of publication for further explanation). The application may then be prosecuted and may be granted. In the instant case, the term of the patent is considered from the earliest priority date i.e., date of filing the provisional application. The expiry of the instant patent application will be on January 01, 2020.

Now, since the application was published on January 15, 2001, the patentee has the right to claim damages, if any, from entities infringing on the patent from January 15, 2001 until the expiry of the patent.

Convention application/PCT National phase Application

In case of Convention application, an application (provisional/complete) may be first filed in a convention country and then enter India within 12 months from the earliest priority date of the convention application. In this case the date of filing the application in India is considered for calculating the term of the patent. For example, assuming a provisional application being filed on January 01, 2000 in a convention country followed by a complete application in India filed on January 01, 2001. Now, similar to the ordinary application, assuming that a request for early publication was field using Form 9 on January 01, 2001 along with the complete application, the application may be published within 2 weeks from the date of filing the request (January 15, 2001 will be assumed as the date of publication for further explanation). The application may then be prosecuted and may be granted. In the instant case, the term of the patent is considered from the date of filing the application in India i.e., date of filing the complete application in India which is January 01, 2001 in the instant case. Therefore, the expiry of the instant patent application will be on January 01, 2021.

Similarly, in case of PCT National phase Application, a provisional application is filed in any of the PCT member country including India, and then file a PCT application within 12 months from the earliest priority date, the date of filing the PCT application is considered for calculating the term of the patent. For example, assuming a provisional application being filed on January 01, 2000 in any PCT member country followed by a PCT application filed on January 01, 2001 simultaneously entering India on the same date. Now, similar to the ordinary application, assuming that a request for early publication was field using Form 9 on January 01, 2001 along with the complete application, the application may be published within 2 weeks from the date of filing the request (January 15, 2001 will be assumed as the date of publication for further explanation). The term of the patent in this case is considered from the date of filing the PCT application which is January 01, 2001 in the instant case. Therefore, the expiry of the instant patent application will be on January 01, 2021.

In view of the two scenarios explained in the foregoing viz., the Convention application and the PCT National phase application, since the term of the patent expires on January 01, 2021 and not on January 01, 2020 as in case of an Ordinary application, and also that the applications in case of Convention and PCT National phase were published on January 15, 2001, the patentee has the right to claim damages, if any, from entities infringing on the patent from January 15, 2001 until the expiry of the patent, which is January 01, 2021 thereby giving the patentee an extended period of protection (which is almost one year in this case) as compared to the Ordinary application filing route.

Strategies for availing maximum benefits from an Indian patent by an Indian applicant

Strategy 1: Ordinary application

An Indian applicant can directly file a complete application instead of filing a provisional application first, and then request for early publication. In this case the application may be published within two weeks from the date of such request. Now, in case of the patent grant, the term of the patent is calculated from the earliest priority date (i.e., date of filing complete application in this case), and since the application was published within two weeks from the date of filing the complete application, the patentee can claim damages from the date of publication of the application. However, in such cases, the applicant is deprived of the 12 months term between the earliest priority date and the date of filing a complete application, as the applicant now directly files a complete application. The patent, in the instant case, effectively expires 20 years from the earliest priority date.

Strategy 2: PCT National phase

An applicant can benefit the most by utilizing the PCT National phase or the convention route. An Indian applicant can avail the benefits by opting for a PCT application, wherein the applicant can first file a provisional application in India followed by a PCT application within 12 months from the earliest priority date, and simultaneously entering India. In such case, the term of the patent is calculated from the international filing date, and for the purpose of examination, prior arts with priority date falling before the earliest priority date are considered. In this way the applicant can avail the most from the patent.

Having said that, the costs incurred in filing an application via PCT national phase route is higher as compared to that of filing an Ordinary application. However, if the applicant believes that the invention is commercially viable, the applicant can opt for the PCT, as the outcome of having the shift in the term of patent protection can outweigh the costs incurred during the filing of such patent applications. On the contrary, this approach may be a hurdle for individual inventors or small companies that are not financial backed and therefore opting the PCT route may not be affordable.

Strategy 3: Convention route

An Indian applicant can directly file an application in any of the Convention country by requesting permission for foreign filing (Form 25), and then entering India within the 12 months deadline. In the instant case too, as discussed in the foregoing, the term of the patent is calculated from the date of filing the application in India, whereas for the purpose of examination prior arts with priority date falling before the earliest priority date are considered.

In case of PCT or Convention application, the patent expires effectively by a maximum of 21 years from the earliest priority date.

Conclusion

In view of the scenarios discussed, it is clear that the applicant benefits the most by opting a PCT route or a Convention route. In fields especially like pharma, where the competition is fierce and the patents play a vital role, just the approach of filing a patent application makes a significant difference. In the PCT and the Convention route, the term of the patent is shifted by almost a year as the term of patent is calculated from the date of international filing/date of filing in India, thereby giving the applicant an edge over opting Ordinary application filing. Having said that, in case of Ordinary application, if the applicant believes that the invention requires no further development, it is advisable for an applicant to directly file a complete application, followed immediately with a request for early publication to avail maximum benefits from the patent.

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