Requirement and procedure
Patents
What rights does a patent confer? The idea behind a patent is exclusivity of use of the invention within a particular territory. Thus, the owner of a patent has the exclusive right to stop others from making, selling, offering for sale, importing or using the patented invention in any other way. This however applies only for the term of the patent within the country where the patent has been obtained.
Who can apply for a patent? The inventor(s), assignee(s), legal representative(s) of deceased inventor or assignee may make the application, either solely or jointly.
In India, the patent system follows the First-to-File principle. This means the right to obtain a patent lies with the first person to file the application. It is advisable therefore to:
- File the application as early as possible
- File before making any non-confidential disclosures
A patent gives legal/commercial protection to the Applicant(s) (individual(s)/company(s)) holding it.
For the individual (Inventors)
- Enjoy monopoly of the technology for 20 years
- Makes any invention/technology saleable
- Facilitates the creation of distribution and licensing agreements
- Provides inventors a basis for further invention or improvisation
- Establishes the patent owner and inventor as the market leader and attracts customers
- Informs the marketplace of an individual’s serious commercial intent
For the Company(s)
- Licensing or sale avenues open up, creating new revenue streams
- Consolidates/strengthens market position
- Increase in negotiating power through cross licenses or Joint Venture agreements
- Fuels a company culture of innovation, brand presence and design
- Attracts new capital for product development
- Creates and enhances company image to potential investors, customers, manufacturers and distributors
- Keeps the talent bank secure, thus encouraging more inventions in future
- Makes it easier to operate in overseas markets and to sign up distributors
An invention means a new product or a process involving an inventive step and capable of having industrial application.
Novelty : The invention has to be new and cannot be part of the “prior state of art”. This prior art refers to everything that has been published, presented or disclosed to the public, as on the date of filing for the patent.
Inventive Step : The invention will be judged by a person skilled in the relevant area. It should not be an obvious extension of the state-of-the-art. It should involve a significant technical advance as compared to the existing knowledge or should have a noticeable economic impact or both. In short, the invention should be non-obvious to a person skilled in the art.
An invention cannot be considered to have an inventive step if a non-inventive mind would have thought of the alleged invention by combining the teachings of different documents that are available to the public.
Industrial Applicability : An invention must be capable of being produced or used in some kind of industry. It has to take the form of an apparatus or device, a product such as some new material or an industrial process. An invention is certified for applicability, if it:
- Can be made
- Can be used in at least one field of activity
- Can be reproduced with the same characteristics as many times as necessary
Patents will not be granted for the following types of inventions.
- Frivolous or obvious inventions
- Inventions which are contrary to law or morality or injurious to human, animal or plant life and health or to the environment
- Mere discovery of the scientific principle or the formulation of an abstract theory or discovery of any living thing or non-living substances occurring in nature
- Mere discovery of any new property or mere new use for known substance or the mere use of a known process, machine or apparatus- unless it results in new products or employs one new reactant
- Producing a new substance by mere admixtures of substances
- Mere arrangement / rearrangement or duplication of known devices functioning independently
- Method of agriculture and horticulture
- Any process for the medicinal or surgical, curative prophylactic, diagnostic, therapeutic or other treatment of human beings, animals to render them free of disease or to increase their or their products’ economic value
- The biological processes for production or propagation of plants and animals in whole or any part thereof other than micro-organisms but including seeds, varieties and species
- A mathematical or business method, algorithm or software per se
- Aesthetic creations including cinematography and television production
- Mental methods or teaching or games and sports techniques
- Presentation of information
- Topography of Integrated Circuits
- Invention which in effect, is traditional knowledge or which is an aggregation or duplication of known properties of traditionally known components
- Inventions relating to Atomic Energy
- Patents, like any other property, may be assigned or licensed or even mortgaged
- Self-Profit - A patent recognizes the right of the patentee and gives him exclusivity of use, allowing the patentee to exploit the patent himself, manufacture the product and distribute it through his own organization. Direct use of the patent is the easiest and most uncomplicated method of use
- Licensing - through licensing, the patent owner allows use of the patent, while retaining the ownership rights
- Exclusive license - except for the licensee excludes all others even the licensor from manufacturing, selling, importing or using the licensed product
- Sole license - excludes all others except the licensee and the licensor from manufacturing, selling, importing or using the licensed product
- Simple license (or) Non - exclusive license - does not preclude the licensor from granting more than one license at the same time in the same territory
- Transfer / Assignment - Thanks to the nature of a patent, it can like any other property, be bought or sold (patent purchase). By transferring, as opposed to licensing, the patentee transfers his patent rights to another individual or entity, who then becomes the patent owner
- Application with Provisional specification
- Ordinary Application
- Convention Application
- PCT- International Application
- PCT - National Phase Application
- Divisional Application
- Patent of Addition
1. Application with Provisional Specification
Provisional Application is a temporary or interim application filed with a Patent Office when an invention is not complete in all aspects.
The provisional application is to be followed up by a complete specification within a period of 12 months else it will be treated as abandoned.
Advantages:
- Provisional applications are extremely helpful, as they can be filed where some experimentation is required to complete the invention
- Provisional Applications secure the all important "priority" status with Patent pending Number and Priority date
- Relatively inexpensive to prepare and file
- Can be used to file foreign applications within a 12 month window
- Enables the inventor to study the feasibility of the invention in terms of potential markets, distributors and licensees
- Enables products to be marked "patent pending"
- Provisional Patent Specification remains a secret i.e. it is not published
- Delays downstream patent costs, such as official fees, attorney fees, etc.
However, one should try to align the disclosure in a provisional application as close as possible to the Final Claims one has in mind. Incomplete applications will only harm the applicant’s chances in the future. Important points to note are:
- Adequate disclosure should be made
- The full implications of the invention should be understood and a rough set of claims in line with the broad inventive concept and intended coverage to be sought should be kept in mind, even if such claims are not presented at this stage
- Substantive Supporting Drawings have to be provided
A first application made for an invention without claiming priority from any application is called an ordinary application. A person may file an ordinary application if the invention is complete in all aspects. This application should be accompanied by a complete specification and claims.
By virtue of the Paris convention, an application filed that claims a priority based on a same or substantially same invention(s) filed in one or more of the convention countries, is called a convention application. To get a convention status, an applicant should file the application before the Indian patent office within 12 months from the date of first application in the convention country.
4. PCT- International Application
The Patent Cooperation Treaty or PCT is an international agreement for filing patent applications having effect in up to 138 countries.
Although the PCT application does not provide for the grant of an international patent, the system:
- Simplifies the process of filing patent applications
- Delays the expenses associated with applying for patent protection in various countries
- Allows the inventor more time to assess the commercial viability of his/her invention
- Provides an International Search Report citing the relevant prior art that may have to be taken into account in deciding whether the invention is novel and inventive
- Provides an option of an International Preliminary Examination Report that is forwarded to the elected Offices and the applicant, the report containing an opinion as to whether the claimed invention meets certain international criteria for patentability
- These reports give the applicant a fair idea about the patentability of the invention before incurring charges for filing and prosecution in each individual country
Under the PCT, an applicant can file a single international patent application in one language with one receiving patent office in order to simultaneously seek protection for an invention in up to 138 countries throughout the world.
The PCT-national phase must follow the international phase. The applicant must individually “enter into the national phase.” i.e. file a National phase application in each county he wishes to enter. If the applicant does not enter the national phase within the prescribed time limit, the International Application loses its effect in the designated or elected States.
5. PCT-National Phase Application
An international application made according to the Patent Cooperation Treaty being the first application or claiming earlier priority, can enter the national phase in India within 31 months from the international filing date or priority date (whichever is earlier). This application filed before the Controller in the Indian Patent Office claiming the priority and international filing date is called PCT National Phase application. The filing date of the application shall be the international filing date accorded under the Patent Cooperation Treaty.
An invention disclosed, but not protected or claimed in an application, can be protected by filing a further application divided out of the first mentioned (parent) application. This type of further application divided out of the parent is called divisional application. The priority date for the divisional application will be the same as that claimed in the parent application.
When an applicant feels that an invention is a slight modification on the main invention for which he has already applied for/has patent in India, he can seek a patent of addition to protect the modification. An invention qualifies to be claimed in a patent of addition even when, passing the test of novelty, it is still deemed non-inventive or barely invented over the invention claimed in the main patent. The major benefits are low examination threshold and exemption of renewal fee so long as the main patent is renewed. A patent of addition lapses with the cessation of the main patent.