Tag Archives: patent filing

Are patents always the best way to protect inventions?

Author: invntreepatent
February 8, 2011     No comments

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   
 

 

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What are the different patent filing options?

Author: invntreepatent
February 1, 2011     3 Comments

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.

You may be interested in reading our other related articles listed below:

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   
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What can be patented and what cannot be patented

Author: invntreepatent
January 25, 2011     2 Comments

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

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

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

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

Author: invntreepatent
January 11, 2011     No comments

Introduction 

The concept of patents can be traced back to the 14th century and it has consistently evolved over time. The concept of patents was introduced to encourage innovators by awarding exclusive rights over the improvements in technology made by them. In essence, a patent is a set of exclusive rights granted by a country in exchange for a public disclosure of their invention. The rights granted to a patentee, in most countries, include, the right to exclude others from making, using, selling, importing, offering for sale or distributing the patented invention without permission of the patentee. This set of exclusive rights is granted for a limited period of time, and in most cases the right is limited to 20 years.
The exclusive rights granted to a patentee have business impact, some of which are listed below:
  • A patentee gets the liberty to enjoy monopoly over the patented invention for 20 years
  • A patentee can monetize his patented invention by selling or licensing out his rights, in addition to other ways of monetizing
  • Engineers and scientists can access a rich pool of patent information and improvise on existing technology
  •  Competitors will have to create non-infringing products and processes
The business impact of patents can be used to enhance the competitiveness of a business. A wholesome, systematic and customized approach towards patents is required to use the power of patents to positively impact your business.
 
4 fold approach for enhancing competitiveness
 
1.                  Build a patent fortress
2.                  Proactively safeguard your business interests
3.                  Respect others intellectual property
4.                  Intelligent approach to product and process development  
 

One of the approaches for improving competitiveness of a business is by having product differentiators. Product differentiators are brought about by developing products that are technologically superior, has newer/better features or addresses specific needs of customers. Sometimes, there might not be any changes made to the product, however, companies might differentiate themselves from competition by offering products at reduced prices. This might be possible by making changes to the processes used in producing the product. Such modifications made to the products/processes might be patent worthy. Hence, when a company feels that they have made some modification that might be patent worthy, it is important to contemplate the idea of having such improvements protected by a patent.

You may go through our articles to know more about filing patent applications in India and the cost of filing patent applications in India.

Patents to Improve Competitiveness – InvnTree IP Services 

It shall be noted that such improvements give added advantages to a business. If a company hasn’t taken any measure to protect the improvement made by them, then competitors might as well copy such improvements, thereby diluting the advantage gained by the business. Further, competitors might copy the products and introduce the same at lower prices, as they would not have invested in developing the product/process. By protecting the improvements made to the products or processes, businesses gain at least the following advantages:
  • Create an entry barrier for competitors
  • Maintain product or process differentiators
  • Protect products or processes from being copied by competitors
  • Enjoy monopoly over improvements for 20 years
  • Increase valuation of the company

The previous approach dealt with protecting technological improvements made by a company. While, the previous approach dealt with building a patent fortress to safeguard ones business territory, it is equally important to monitor the patent fortress’ built by competitors.

It is often seen that, in a bid to build a patent portfolio that is as strong as possible, companies tend to protect things that already exist and sometime try to protect improvements that are not novel and are obvious. If they do succeed in protecting such existing and obvious technology using patents, then they might stop others from using such technology, or they can at least stop others from using such technology till somebody proves that the patents were wrongly granted.
It is important to take necessary actions to avoid being in a situation in which a company uses patents granted to an existing or obvious improvement to stop you from using such technology. This can be achieved by monitoring and opposing the patent applications filed in the technology that is of your interest
One can monitor patent applications filed by competitors and oppose grant of patent to such patent applications. On the other hand, one can also monitor patents that are getting granted in related technology fields, and opposes the patents even after the patent is granted. By taking such proactive steps, businesses gain at least the following advantages:
  •  Ensure against obvious improvements being protected by competitors
  •  Enhance the valuation of patents held by you in a technology field
  •  Avoid being sued for infringing patents that shouldn’t have been granted in the first place
  •  Easy access to freely use and adopt minor improvements in technology

Respect others intellectual property

In the previous two approaches, we dealt with building a patent fortress and ensuring that competitors do not strengthen their patent fortress using minuscule technological improvements. In the current approach we illustrate why it is important to respects others Intellectual Property rights.

As highlighted in the introduction, patents give exclusive rights to the patentee to exclude others from making, using, selling, importing, offering for sale or distributing the patented invention without permission of the patentee. In other words, if you copy, intentionally or otherwise, an invention patented by others, then you will be infringing on their patent right. A patentee can sue you for violating his patent rights, and if the court finds you guilty, then the damages that you might end up paying could be significant. Hence, it is important to be aware of patent rights held by others while carrying out your business.
A well proven approach to ensure that your products or processes don’t infringe on others patent rights is by carrying out a Freedom to Operate (FTO) study before introducing a product in a country. It is important to dig out the patents that exist in the field that you operate in and determine if your products or processes infringe on others patents. If found that the products/processes might infringe on others patent rights, then necessary steps have to be taken to avoid such infringement, and thereby avoid expensive law suits. By taking such precautions you will at least gain the following advantages:
  •  Ensure against introducing infringing products to the market
  •  Avoid expensive patent infringement suits
  •  Ensure that brand name is not tarnished by such infringement 

​​To know more about respecting others intellectual property, you may read our articles listed below:

Remember, no one got too far by reinventing the wheel, neither will you; hence, there is no point in reinventing the wheel. It is important to appreciate the fact that most of the problems that we might be trying to solve, might have been solved by somebody else in some part of the world. Therefore, it will be intelligent on your part to look at such solutions and improvise on them. Patent data is considered to be the richest source of scientific information, and using this information is an intelligent approach to product and process development.

By harvesting information provided by patents, you can work on improving solutions provided by others. Hence, the solution provided by you might end up being much more superior and also different. Further, one reduces the possibility on developing something that has already been developed, hence, your investment in R&D yields better returns. Furthermore, one can bring down the cost of developing a product by simply copying a patented invention and introducing the same in a country where the invention has not been patented. Additionally, patent data can be used to analyze technology trends and plan your business accordingly.
The ways in which patent data can be used by businesses is endless, and the advantages gained by using patent data are tremendously valuable. Some of the advantages of using this approach are:
  • Enhanced returns on investment in R&D
  • Development of products/processes that have improvised on existing technology
  • Reduced cost of development of product/process
  • etter business forecasting and planning

We hope you found this article helpful. You can download a copy of this article here

Please feel free to contact us for any information that you may need.

Thank you,
Team InvnTree
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