Tag: Patent Office

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Activities After Patent Application

Dear readers, in the previous articles throughout this year we have seen how to know if your invention is patentable and finally how to apply for an Indian patent. However, the process does not really end with the application, there are further activities to do. This article briefly explains these activities assuming you have filed an ordinary patent application (provisional specification) with  the Indian Patent Office.

Submitting a compete specification

A complete specification must follow the provisional specification within the next 12 months [Ref. 1]. If you do not submit the complete specification within that time period then the application automatically lapses [Ref. 1]. Of course this step does not apply if you have submitted a complete specification in the first place. However, there is a provision to convert a complete specification into a provisional specification if a request is made within 12 months [Ref. 1]. One benefit of doing so is that the applicant can re-write the claims, as claims are not part of a provisional specification. It may help you when your invention has matured since the initial filing and you think there is a scope to improve the specification.

Tips: The Patents Act permits conversion of a complete specification into a provisional specification.

international Patent Application

Chronologically this optional step comes before the remaining steps as an international application must be filed within 12 months from the Indian application. Remember an Indian patent protects your rights only in India. Hence an international application is important if you wish to protect your invention in other countries too. Additionally, an international application costs a lot more than its Indian counterpart. Thus you need to plan early for an international application. Notable here is at least 6 weeks must have lapsed after the Indian application to proceed with the international application [Ref. 2]. The applicant also needs to get permission for such application [Ref. 2] through Form 25.

The ways to file such an application are:

  • To apply in different countries of your choice provided these countries are members of the Paris Convention.
  • To apply under the Patent Corporation Treaty (PCT) to the International Bureau (IB) of World Intellectual Property Organisation (WIPO) directly or through the Indian Patent office as the receiving office. Based on WIPO’s examination of the application you can then apply to the member countries of your choice. This route is simpler than the previous one.

Presently 177 and 152 countries are signatories to the Paris convention and PCT respectively.  So, if you wish, you could protect your invention almost all over the world! The Patent Office Manual is a good place to find the applicable procedures for PCT application by an Indian applicant (see section 07.02.01). Furthermore, the WIPO patent drafting manual provides guidelines to write a specification for a PCT application.

Tips: Obtain permission form the Indian patent office before applying to foreign countries. Application is possible through the Paris convention route or PCT route.

Patent Publication

The first important thing that happens in the process of patent granting is the publication of the patent application. After 18 months from the filing date the patent application is published [Ref. 3] in the Official Journal of the Patent office. However, if an applicant wishes to publish the application early then he may request so through Form 9 and paying the necessary fee, along with the patent application or separately later. However, the patent applications that are subjected to secrecy are not published until the secrecy direction lapses [Ref. 3].

Tips: Automatic publication happens after 18 months from the application. Early publication is possible through appropriate applications. 

Patent Examination

The next and perhaps most important step towards the grant of patent is the examination of patent. As we have seen in the previous article, patent examination is not an automatic step. Either the applicant or an interested person must request [Ref. 4] through Form 18 within 48 months from the filing date [Ref. 5]. In reality the examination may take a few years.

After the examination the patent office issues a first statement of objections, along with any relevant documents [Ref. 5]. The applicant must make the necessary changes within 6 months [Ref. 5, 6]. However, there is a provision to extend it for a further 3 months on request through Form 4 along with the prescribed fee [Ref. 5].

The applicant also needs to address any pre-grant opposition filed by any person after publication of the application [Ref. 7]. The Controller of Patents gives opportunity to both the parties before deciding in favour of or against granting a patent [Ref. 8].

After this process has been done satisfactorily a patent is granted and included in the Register of Patents. Congratulations, you have obtained a patent for your invention!

Tips: Remember to file a request through Form 18 along with the initial application or within the next 48 months to queue it for examination.

Expedited Patent Examination

The patent examination may take years because there are many applications in queue! To reduce the waiting time the Indian Patent Office, since 2016, provides a fast track option for certain cases called Expedited Patent Examination [Ref. 9].

This is done by filing Form 18A along with the applicable fee [Ref. 9]. As of now the facility is only available for startups and PCT applicants who have chosen India as the International Searching Authority (ISA) or International Preliminary Examining Authority (IPEA).

Tips: A startup can request for an expedited patent examination. 

patent renewal

Getting a patent does not end your journey. You need to renew it every year for continual protection of your invention [Ref 10]. The patent renewal fees start from the expiration of the second year [Ref. 11], and for a natural person and startup it amounts to Rs. 800, which increases in later years. A patent owner may pay every year or for more years in advance. There is no specific form for this purpose.

A lapsed patent, due to non-payment of renewal fees, can be restored within 18 months from the date of lapse by providing evidence that the delay in payment was not intentional [Ref. 12, 13]. Such an application is made through Form 15 [Ref. 13].

It is noteworthy that the renewal fee is not applicable until a patent is granted and in case a patent is granted later than two years from the date of application, the accumulated renewal fee can be paid within 3 months [Ref. 14].

Tips: Patent renewal fees are applicable until the 20th year to maintain the rights. An applicant need not start paying until the grant of patent.

post-grant opposition

Although this may be undesirable from an inventor’s point of view, the Patent Office makes it fair to other interested parties by keeping a mechanism called post-grant opposition [Ref. 15]. Through this mechanism interested parties can oppose a patent within one year after the grant [Ref. 15]. The patent holder has to address such opposition within the framework of the Patents Act, 1970 and the Patents Rules, 2003.

Tips: Remember that your patent may face post-grant opposition, which interested parties can file until one year since the grant of patent.

Commercialisation of a patent

A patent holder can either market the product himself or transfer his rights to other natural or legal person(s). Transfer of rights can be done through assignment, licence, mortgage or other ways through formal agreement [Ref. 16]. The new person with transferred rights must ensure to register with the Patent Office through Form 16 [Ref. 17].

Commericalisation of an invention needs dedicated discussion and in most aspects have nothing to do with the regulatory framework. This article does not get into such details apart from touching the relevant regulatory points. There may be a separate article later.

Tips: Remember to transfer your rights through formal agreements and get the assignee or licencee registered with the Patent Office.

Other Continued Activity for a Patent

The patent owner or licencee is required to provide a periodic statement to the Patent Office about the commercial use of the patented invention in India [Ref. 18]. This statement is to be prepared for every calendar year and submitted through Form 27 within 3 months from the subject year end [Ref. 19]. This compliance is likely to help the Office maintain statistics about the degree of commercialisation of all the granted patents.

summary

This article provides an outline of the activities after a patent application that an Indian patent applicant must be aware of. This one along with the other articles published earlier this year covers the entire life cycle of a patent. In summary, the relevant articles are:

  1. Idea, Invention and Patent
  2. What are not patentable (Part 1 & Part 2)
  3. Inventions subject to security and secrecy
  4. Patent application

Obviously, there are many other aspects of a patent. However, these articles along with the applicable regulations and guidance materials should provide fair amount of clarity regarding invention and patents.

References: 

The numbers given below indicate the respective sections of the Patents Act, 1970. Wherever rules are mentioned, they belong to the Patents Rules, 2003.

  1. 9 – Provisional and complete specifications
  2. 39 – Residents not to apply for patents outside India without prior permission
  3. 11A – Publication of application
  4. 11B – Request for examination
  5. Rule 24B – Examination of application
  6. 21 – Time for putting application in order for grant
  7. 25(1) – Opposition to the patent
  8. Rule 55 – Opposition to the patent
  9. Rule 24C – Expedited examination of applications
  10. 53- Term of patent
  11. Rule 80 – Renewal fees under section 53
  12. 60 – Applications for restoration of lapsed parents
  13. Rule 84 – Restoration of patents
  14. 142(4) – Fees
  15. 25(2) – Opposition to the patent
  16. 68 – Assignments, etc., not valid unless in writing and duly executed
  17. Rule 90 – Registration of title and interest in patents
  18. 146(2) – Power of Controller to call for information from patentees
  19. Rule 131 – Form and manner for statements required under section 146(2)

 

Next Article: The next article, likely to be available early next year, would look into other aspects of an invention.

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Idea, Invention and Patent

Hello friends, have you ever had an idea and wondered if you can get a patent for it or what you should do to get a patent for it? I had similar questions a few years back and it took some effort to figure out the things. Fortunately I found out that it’s not at all complex; it just calls for a bit of information and some effort to follow a well defined process. Today’s article will highlight some relevant points in this regard and will be further elaborated with subsequent articles. Hopefully the information shared here will help some of you in identifying your own patentable ideas and getting them patented.

Idea vs. invention

Imagine that you have an idea and you want to patent it. You may ask if you can do so. There is only one correct answer to it – you cannot, not yet. Even the brightest idea would not result in a patent automatically.

It is not so bad though. With an idea you have actually taken the first step. Remember the  wheels of invention? You are very much there within a prominent part of the environment for invention. All you have to do is to work upon the idea to turn it into an invention. An invention may be patented.

Wondering what an invention means? There could be many definitions but within the legal framework [ref. 1] it means a product or process which is:

  1. New (novel),
  2. Has an inventive step, and
  3. Has some industrial application (utility).

The jargon “inventive step” needs better clarity to make the picture clear. It means [ref. 2] at least one feature in the product or process that involves:

  • Technical advancement compared to the existing knowledge, or
  • Economic significance, or
  • Both technical advancement and economic significance, and
  • The feature makes the invention not obvious to a person skilled in the art.

We can elaborate this with an example. Suppose you have developed a new water filter technology that provides same effectiveness as a commercial RO water purifier but requires no electric power. This product has a new technology and saves electricity, thus has both technological advancement and economic significance. Had you just replaced an existing type of pump in a RO machine with another known type of pump to improve its performance, it would probably miss the not obvious requirement, as anybody knowledgeable in RO technology surely knows that. Fortunately, that is not your case, your machine has some feature which nobody would generally think as a solution. It is only after your patent application people could take a note and say “WOW”! Congratulations, your product has a clear inventive step.

The product is new, and it can be manufactured by relevant industry and used by people. Thus your machine qualifies as an invention. There you go! Now you can apply for a patent.

The requirements talked above are in line with the Trade Related Aspects of Intellectual Property Rights (TRIPS) agreement under the World Trade Organisation (WTO) and followed by the World Intellectual Property Organisation (WIPO). Therefore you can expect similar requirements world wide although the way of assessment may slighly vary.

Tips: A product or process, qualifying as an invention can only be patented. A mere idea is not patentable.

Is that all?

Almost, but not all. The condition of being “new” needs a relook; it should be understood from the legal point of view. A new invention is one that is not available to public domain (legal term is “anticipated”) before the patent application is filed [ref. 3] by publication or use anywhere in the world.

It is thus extremely important to be sure that your work is indeed new. This can be done through prior art search from various patent databases and scientific literature. Major databases and a few search tips can be found from the “Useful Links” section of this website.

Conducting a prior art search ensures that nobody else has done the same work. Equally important is to manage your own publication. As a thumb rule you should file a patent application before publishing a related paper or demonstrating it elsewhere. Of course there are a few exceptions but it is better not to rely on them. If you are interested about the exceptions, please see Chapter VI of the (Indian) Patents Act.

Tips: Do not publish or demonstrate your invention before filing a patent application.

WHAT is a Patent?

Now that you are ready with an invention, you would most likely expect recognition for it and possibly monetary benefits too. In India publishing a research paper based on the research work is often regarded as a recognition and possibility of a patent is overlooked. However, you can have both!

Let us learn about what a patent is and the benefits it may give. In simple words a patent is a legal recognition of an invention that grants certain exclusive rights to the patentee (the applicant). These rights prevent others from making, using, importing and selling the patented product or process [ref. 4]. The patentee can transfer the rights in part or full to a third party by means of assignment or licence. He may legally challenge anybody violating the rights.

These rights are territorial (valid within a specific country). If you have a patent in India, the rights are applicable here but outside the country there is no protection. It would require a patent in another country also if you wish to protect your invention in that specific country.

A patent, if granted, is valid from the date of application for a period of 20 years [ref. 5]. Hence remember once you file a patent application, your clock starts ticking. So plan well to exploit it’s full commercial potential. However, keep in mind that the patent office only confers you the rights, it does not ensure automatic money. It is up to you to make use of your rights to generate monetary benefits.

Tips: Patent is a legal recognition that confers exclusive rights to the patentee and is valid for 20 years from the date of application.

Who can apply for a Patent?

It is time to file your patent application. Let us see who can file it. The Indian patent law permits the following persons to apply for a patent with the Indian Patent Office [ref. 6]:

  1. The inventor(s),
  2. The assignee of the inventor(s),
  3. The legal representative of an inventor or assignee if he died before filing the application,
  4. The above persons either singly or jointly with any other person.

This means you, the inventor, can manage your application all by yourself. It is a cost effective way provided you learn about the filing process and write a proper patent specification. You will only have to pay the official application fees, usually a few thousands.

If you do not want to break your head for this and have enough funds, then hiring a patent agent is a good option. A patent agent is a techno-legal professional authorised by the patent office to process the application on your behalf [ref. 7].  A number of firms may also  do the job through their patent agents. The application expenditure increases due to the fees an agent would charge.

If you assign your invention to somebody else, termed as the assignee, he can make an application. You will still be recorded as the inventor. It is between the inventor and assignee to decide the terms and conditions for transfer of rights, the patent office will not play any role here but may require proof of such agreement.

Tips: The inventor, assignee  and their legal representative (for a deceased person) can file an application himself or through a patent agent. 

How to apply for a patent

The major work for filing a patent application is to write an appropriate specification for the invention. The Indian Patent Office Manual has adequate details to follow and file your application. Similar manual is also there for an international application with WIPO. In this article I am not detailing the application process. There will be dedicated articles later covering this. Meanwhile, if needed, the links given in our “Useful Links” page can be referred to.

Tips: The Patent Office Manual has well defined procedures to prepare and file an application.

References:

Following sections of the Patents Act, 1970:

  1. Section 2(j)
  2. Section 2(ja)
  3. Section 2(l)
  4. Section 48
  5. Section 53
  6. Section 6
  7. Section 127

About the author: The author is an experienced Mechanical Engineer and inventor.

Next article: What are not patentable? Expected during the second half of February 2018.

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