Tag: Patent

Posted on

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.

Posted on

Patent Application

In continuation with our previous articles on patents it is now time to know about the patent application process. This article aims at describing the essential information to file a patent application in India. It is likely to guide the inventors who want to file their own application at an affordable cost. It is also useful for a top level understanding even if you do not wish to do everything yourself and have access to professional services.

Contrary to the popular belief a patent application is not very complicated. The Indian Patent Office have well defined guidance materials through a manual [ref. 1] for this purpose, formally called “Manual of Patent Office Practice and Procedure“. This manual gives all the required information without burdening with the acts and rules. Further, the “Useful Links” page of this website provides links to many official sources of information.

Types of patent application

Let us start with the types of patent application. There are the following two ways of securing protections for inventions:

  • Indian patent application (ordinary application)
  • International patent application (under Paris convention or PCT)

An Indian patent protects the owner’s rights within the Indian jurisdiction. To ensure protection in other countries the inventor needs to file an international patent application. Strictly speaking, the term “international patent” is a misnomer as there is no single patent that protects your rights in multiple countries. We will examine this part of patent application in later posts, today we aim at getting an Indian patent. An Indian inventor usually cannot file an international application without first applying in India [ref. 2].

Tips: An Indian patent application is a must before one can proceed with an international patent application.

can an inventor file a patent application?

Yes, an inventor himself can file a patent application. If you have a patentable invention, you may make an application with the patent office. One of our previous articles describes this aspect in details.

Simply speaking, any of the following persons (including companies) can file a patent application [ref. 3]:

  1. The inventor(s)
  2. Assignee of the inventor(s)
  3. Legal representative of a deceased inventor or assignee
  4. A registered patent agent on behalf of the above persons [ref. 4]

Going by the above, you can file a patent application yourself or get it done through a registered patent agent. You may find a registered patent agent from the electronic register of patent agents in the patent office website. However, at the time of writing this article this link is not working properly. Another official place to look at for patent agents is the StartupIndia website.

Tips: File a patent application yourself, as an inventor or seek professional service from a registered patent agent.

Where to file a patent application?

The patent offices in Kolkata, Mumbai, Delhi and Chennai receive patent applications from Monday to Friday. Addresses of these offices are available in the patent office website. Territorial jurisdiction of these offices, detailed in the website, should help you identify your place of application. An Indian applicant can choose the applicable office based on his present residential address or domicile or place of business or place of invention. Other applicants can do the same based on their residential or business address in India or based on their agent’s business address.

There is a provision for online submission too. All the paperwork, however, remain same as hard copy submission. The patent office has an e-gateway for this purpose. The user manual linked to the bottom of this page provides sufficient information. Section 03.04.02 of the current version of the patent manual also provides relevant information. The most significant requirement for online application is to have a digital signature.

Tips: A patent application can be submitted at the applicable patent offices. Facility exists for online application too.

Does it require complex documentation?

It is not at all complex. The patent office manual provides sufficient information for a new person to identify the applicable documentation.

A patent application means a combination of a number of prescribed forms. Section 03.04.01 of the current manual identifies all the relevant forms.

At minimum one has to submit the following forms:

  1. Form 1 – application for grant of patent
  2. Form 2 – patent specification (complete or provisional)
  3. Form 5 – declaration as to inventor ship (required with a complete specification)

Apart from that the following forms may be applicable:

  1. Form 26 – power of attorney to a patent agent allowing him to file the application on behalf of the inventor or assignee.
  2. Form 3 – statement of undertaking, if the applicant is also pursuing for a foreign patent application [ref. 5].

For simplicity of our discussion let us assume that you are applying yourself and not pursuing for a foreign patent at this moment. That makes you seek details for forms 1, 2 and 5 only.

Form 1 is basically the application details covering the applicant’s identity, the inventor’s identity, proof of right as an assignee granted by the inventor (not applicable if the inventor is the applicant), summary of patent specification, payment details etc. The form is self-explanatory and is not difficult for an educated person. Same can be said for form 5. It basically identifies all the inventors of the invention being protected.

Form 2 is the heart of an application and needs some knowledge (and possibly practice too) to complete it. It is fine to seek professional help for this, if you can afford. On the other hand, you can write it yourself based on the Patents Act [ref. 6] and the patent manual guidelines (chapter 5 of the current version). Additionally, WIPO patent drafting manual and previous patents (Indian and foreign) are good references. You may also go through patent drafting trainings offered by various agencies. For example, WIPO conduct online courses at reasonable price like DL-320, “Basics of Patent Drafting”.

Irrespective of the author a complete specification has to have the following contents:

  1. Title
  2. Field of the invention and use of invention
  3. Prior art and problem to be solved
  4. Objects of the invention
  5. Summary of the invention
  6. Detailed description of the invention
  7. Best method of performing the invention
  8. Drawings
  9. Claims
  10. Abstract

Out of the above, 2-8 are part of “Description” in form 2. In my opinion the inventor can write this part better than anybody else. However, the most important part of the specification is the “Claims”. This needs to be written carefully. Remember that irrespective of what you write elsewhere the patent protects only your claims!

Now that we broadly know about the forms, let us find out their source. All the forms are downloadable from the patent office website but they are not editable. You need to type and edit them in MS Word following the patent manual guidelines given in sections 03.04.05 and 05.03.09. The acceptable languages are English and Hindi.

Tips: Make use of the patent office manual for preparing your application. 

provisional vs. complete secification

In the last section I talked about a complete specification. I now introduce another form of it, named provisional specification. It requires the same form 2, minus claims and abstract. Filing a provisional specification is useful when you need to disclose your invention (e.g. to publish a research paper or to demonstrate the invention somewhere) but it has not reached the final stage. You must submit the complete specification within 12 months of filing the provisional specification [ref. 7].

Tips: A provisional specification is only description of an invention. If must be followed up with a complete specification within one year time.

Is it a very costly affair?

The patent office fees are not huge, generally a few thousand rupees. However, if you seek professional help then you may end up spending much more depending on the service provider.

The applicable fees can be easily calculated from the “first schedule” available in the patent office website. The amount depends on the type of applicant, application mode, forms filed, number of pages in the specification and number of claims. To give an example, for a natural person filing hard copy application with patent specification containing less than 30 pages and 10 claims, ₹1750 is applicable. A start-up company needs to pay the same but for a small company it is ₹4400. E-filing reduces the fees by about 10%, requiring ₹1600 and ₹4000 respectively for the above cases. Every extra page or claim requires additional payment, as defined in the “first schedule”.

Cash, electronic transfer, demand draft and cheque are acceptable modes of payment. For further details see section 03.04.07 of the patent manual.

Tips: Refer to the first schedule on the patent office website for calculating the patent application fees. There is no other fees charged by the patent office.

support in filing a patent application

There exist some avenues to support an inventor to secure a patent. One such option for start-ups is the StartupIndia initiative. Under this a start-up pays less application fees same as a natural person, lesser than a regular company, and a mechanism exists to fast track such applications. More details are in the StartupIndia website.

National Innovation Foundation (NIF) facilitate the grassroot inventors to protect their inventions and it is absolutely free. Details are in their website.

Tips: StartupIndia and NIF facilitate patent applications. Explore their websites while planning for a patent, you may get a lot of support.

Summary

This article gives an outline of the patent application process in India with relevant reference materials. As discussed above, a patent application is a combination of specific forms along with prescribed fees. The patent office manual is an excellent guide to prepare an application. There are post-application activities from both the applicant and the patent office, but that is better left to a later article.

References:

(The sections mentioned below belong to the Patents Act, 1970)

  1. Manual of Patent Office Practice and Procedure, version 01.11, 22nd March, 2011.
  2. Section 39 – Residents not to apply for patents outside India without prior permission
  3. Section 6 – Persons entitled to apply for patents
  4. Section 127 – Rights of patent agents
  5. Section 8 – Information and undertaking regarding foreign applications
  6. Section 10 – Contents of specifications
  7. Section 9 – Provisional and complete specifications

Next Article: The next article will cover the post-application activities. You may subscribe below to know when that article is out there.

Posted on

Inventions Subject to Security and Secrecy

Dear readers,  welcome to the last post about patentable inventions. Before starting this specific article on inventions subject to security and secrecy, let us once look back to the complete picture. According to the  Patents Act, 1970 a product or process is patentable if it meets certain defined requirements. Further, the Act defines what are not inventions or not patentable. It also has a provision to deny patent for national security and secrecy reasons. An inventor needs to be aware of all these provisions while assessing patentability of his work. Looking at Figure 1 below one can get a  simple yet complete view covering all these provisions.

Figure 1: Patent – What to Meet and What to Avoid

Explanation of the first two areas (green and amber blocks in Figure 1) are part of the following articles:

  1. Idea, Invention and Patent
  2. What Are Not Patentable? (Part 1)
  3. What Are Not Patentable? (Part 2)

In the current article we will see where the Patent Office can deny a patent to an otherwise patentable invention to protect national security and secrecy (red blocks in Figure 1). This provision prevents sensitive technologies from appearing in public domain.

Inventions related to atomic energy

The Patents Act prohibits patents to inventions relating to atomic energy [ref. 1]. This, in line with the Atomic Energy Act, 1962 [ref. 2], denies patent for inventions ranging from mining till disposal of atomic energy. 

Accordingly, for inventions potentially related to atomic energy, the Patent Office, advised by the Department of Atomic Energy (DAE), may deny to grant patents. Such decisions are final and one cannot appeal against them. The Central Government may also directly examine any patent application for this purpose. Every year the Patent Office send a good number of applications to the DAE for examination and deny patent for a part of these applications. Figure 2 below gives a glimpse of all such cases between 2010-11 and 2015-16 [ref. 3].

Figure 2: Statistics of Inventions Subject to Atomic Energy

Even if such an invention is granted a patent, the Central Government, on finding so, may direct the Patent Office to revoke the same [ref. 4]. However, as per the Act the Patent Office give the patentee an opportunity for hearing before revoking the patent.

It is noteworthy that the Indian patent law does not differentiate between atomic energy and atomic weapons; simply all inventions in the realm of radioactivity fall under this provision. An example is Merck & CIE’s medicine that was rejected for being related to atomic energy. Unlike India some countries like the USA separate innovations related to atomic weapons and not atomic weapons, and may grant patents for the latter group [ref. 5]. A few of these patents are example 1, example 2 etc.

A further checkpoint is in place under the act that prevents bypassing the Indian system and directly filing a foreign patent application [ref. 6]. A direct application to another country cannot happen without the Patent Office’s written permission [ref. 6]. Usually one has to first file a patent application with the Indian Patent Office.

Tips: Remember that atomic energy related inventions are not patentable in India. 

inventions subject to secrecy

Apart from the atomic energy related inventions there are restrictions for inventions relevant to defence purposes. Usually such inventions are not published and not granted patents until the Central Government examine them [ref. 7].

The Central Government notify the Patent Office through secrecy directions about such inventions and review relevance of certain types of inventions every six months [ref. 8]. These directives are not available to public but generally one can expect inventions related to weapons, war equipment, aircraft, unmanned aerial vehicle (UAV) etc. as some potential cases.

The Defense Research & Development Organisation (DRDO), on behalf of the Government, examine such patent applications for threat to the nation. The Patent Office grant or deny a patent based on this examination. None of the orders of the Central Government in this regard is questionable in any court on any ground whatsoever [ref. 9]. See Figure 3 below for those cases between 2010-11 and 2015-16 [ref. 3].

Figure 3: Statistics of Inventions Subject to Secrecy

As seen in the earlier section an Indian resident can apply outside India only if he has a written permission from the Patent Office or at least six weeks have passed from the time of application in India for the same invention [ref. 6]. The Patent Office can revoke a patent if a security threat is identified later [ref. 10].

In some instances the Central Government may choose to use such an invention for their own purpose any they may compensate the applicant [ref. 11].

Tips: Remember that inventions related to defence can be denied patents under the secrecy directions. 

summary

The Patent Act clearly defines the criteria for an invention to be patentable. The Act also identifies cases which are not inventions.  In this article we have seen that all inventions related to atomic energy are not patentable in India. Further, defence related inventions may be denied patents if the Central Government find their availability in the public domain may compromise national security. Knowing about these provisions of the act equips one with enough understanding to assess patentability of his invention.

Thank you all for showing interest in the articles published in this website. Please feel free to seek further clarifications, if you need so.

References:

The following sections/sub-sections of the Patents Act, 1970, except for the specific acts/reports mentioned where applicable:

  1. 4 – Inventions relating to atomic energy not patentable
  2. Sub-section 20 (1) of the Atomic Energy Act, 1962
  3. IP India Annual Reports
  4. 65 – Revocation of patent or amendment of complete specification on directives from Government in cases relating to atomic energy
  5. Section 151-160 of the (USA)  Atomic Energy Act of 1954
  6. 39 – Residents not to apply for patents outside India without prior permission
  7. 35 – Secrecy directions relating to inventions relevant for defence purposes
  8. 36 – Secrecy directions to be periodically reviewed
  9. 41 – Finality of orders of Controller and Central Government
  10. 40 – Liability for contravention of section 35 or section 39
  11. 37(2) – Consequences of secrecy directions

About the author: The author is a mechanical Engineering student trained in Intellectual Property Rights. Through this article he intends to share his learning about patent with those interested in patents.

Next Article: The next article will explain about the patent application rules and is likely to be available in June 2018.

Posted on

What Are Not Patentable? (Part 2)

Let us start from where we left the previous article last month – part 1 of “What are not patentable“. We had seen a number of works which are not patentable under the Patents Act, 1970. Today we are going to see the remaining cases where one cannot obtain a patent.

AGRICULTURAL or hoRticultural methods

A method of agriculture or horticulture is not an invention [ref. 1]. For example, methods performed on an open field like tillage or seed sowing or methods like greenhouse farming are not patentable. Even if you find out a new form of cultivation or soil preparation, you cannot obtain a patent in India.  However, if you develop an automatic seed sowing machine, that may be patentable.

Tips: Agricultural methods are not patentable but agricultural machinery may be patentable.

medical treatment processes

According to the Patents Act “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” is not an invention [ref. 2].

Confused with a lot of words? Simplifying it we can say that methods for human and animal treatment are not inventions and hence not patentable. For example, dosage of antibiotics or a method of vaccination or a surgical process is not patentable. It may be noteworthy that a new process for manufacturing a medicine is patentable but the medicine in itself is not.

However, this provision does not restrict any diagnostic device or instrument from a patent. For example,  Indian patent 237854 was granted for a device to detect antibodies to HIV and p24 antigen. But whether such cases count as a process or a device depends upon the decision of the patent examiner. The Patent Office may deny to issue a patent for a device merely replicating a well established treatment process.

Tips: Medical treatment methods are not patentable but it may be possible to earn a patent for a medical device. A new process for manufacturing a medicine is patentable but the medicine in itself is not.

Copyright vs. patent

A mathematical or business method or a computer programme or algorithm is not considered as an invention [ref. 3].

Accordingly, one cannot expect to get a patent for a new mathematical method to solve the Navier-Stokes equation. On the same ground Electronic Navigation Research Institute was denied patent for their method of calculating Chaos Theoretical Exponent value (CTEV) in 2013. This type of work would undoubtedly attract a lot of attention in scientific journals but patent is not the relevant recognition. Similarly, a business method like sales strategy is not patentable.

Computer programmes and algorithms are not patentable. For example, if IRCTC create a more efficient system for their online ticket booking system, that is a great improvement from the users’ perspective, but they cannot obtain a patent neither for the software programme nor for the algorithm. However, both can be protected under another form of intellectual property, i.e. copyright under the Copyright Act, 1957. Unlike India software is patentable in the USA and the European Union has also examined software patentability through a draft derivative. The WIPO provides a few useful tips when considering patent protection of software related inventions.

Other copyrightable works include a literary, dramatic, musical or artistic work or any other aesthetic creation including cinematographic works and television productions but these are not inventions [ref. 4].

Tips: You can protect computer programme, algorithm and various forms of artistic work as copyrights, not as patents.

MethodS

A mere scheme or rule or method of performing mental act or method of playing game is not considered an invention [ref. 5]. A method of playing a game such as solving a crossword puzzle is not patentable. This provision allows players to play games in all possible manners without any restriction. Imagine M. S. Dhoni patenting “helicopter shot” that prevents others from playing it! Seems funny, right?

A presentation of information is also not considered as an invention [ref. 6]. According to this provision any method of conveying information by either spoken words, symbols or visual display and recorded in a carrier is not patentable.

Tips: Methods of performing a mental act or playing a game, and presentation of information are not patentable.

Electronics integrated circuits

Topography (layout-design) of integrated circuits is not an invention [ref. 7]. Instead it can be protected under the Semiconductor Layout Designs Act, 2000.

traditional knowledge

Finally, traditional knowledge is not considered as an invention [ref. 8]. According to the Patents Act “an invention which in effect, is traditional knowledge or which is an aggregation or duplication of known properties of traditionally known component or components” is not an invention. However, any improvement to the traditional methods or processes may get a patent.

This completes identifying the works which are not inventions under the legal framework of India. We have seen that some of these can have different forms of protection under the legal provisions of copyrights, semiconductor design etc. We have also seen that slight differences exist in some countries for some of the cases we discussed. In the next article I intend to cover some inventions where the Indian Patent Office may deny a patent to ensure national security and defence secrecy. With that we will fairly complete our understanding about the determining factors for a patent.

References:

The following sub-sections of section 3 of the Patents Act, 1970:

  1. 3(h)
  2. 3(i)
  3. 3(k)
  4. 3(l)
  5. 3(m)
  6. 3(n)
  7. 3(o)
  8. 3(p)

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

Next article: Inventions Subject to Security and Secrecy. Expected during the second half of April 2018.

Posted on

What Are Not Patentable? (Part 1)

Dear readers, in my previous article – “Idea, Invention and Patent” – I tried to draw a picture about what an invention is and what makes it patentable. I hope it was useful to some of you. It is time to develop the learning further to know what are not legally considered as inventions or what are not patentable despite appearing like inventions. To keep the amount of information simple and short I will cover the topic in two parts. All the information given here are within the framework of the (Indian) Patents Act, 1970. Unlike patentable inventions, some of these cases may not be so similar throughout the world. This article also talks about a few such key differences.

An Invention contradicting natural laws

Would you like to have a generator that gives electricity without burning fuel or consuming any other source of energy? No doubt, most of us may like to have one but at the same time we ourselves know that it is not to be. Such a device clearly violates the law of energy conservation that denies us free energy. Any product or process like this device, which cannot be proven with sound scientific methods and concept or that contradicts well established natural laws, is not considered as an invention [ref. 1]. Anyone can still challenge a natural law in other scientific forums, if there are enough reasons, but the patent office is possibly not the most relevant place for that.

Tips: Examine an idea early for a possible contradiction with any natural law. If you are not sure then ask others knowledgeable in the related area.

An invention Contrary to public welfare

According to the Patents Act a product or process is not an invention if its intended use could be contrary to public order or morality or which causes serious prejudice to human, animal or plant life or health or to the environment [ref. 2].

I believe this would appear logical to most of us. One should not expect to patent a bomb for mass destruction, which is a serious threat to human life. Products or processes that go against human morality, e.g. unethical cloning, are not inventions. However, there may be instances where products likely to fall into the above category have been granted patent, possibly when the positive aspects of the said invention are likely to outweigh the negative ones. For example, the Indian Patent Office granted patent no. 234015 for an improved explosive device for mining operations. In this case the intended use – mining, a positive intention with benefits – could have paved the way for this patent.

Tips: An invention in general should not be harmful to life or environment.

A scientific DISCOVERY is not patentable

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 is not an invention [ref. 3].

This prevents certain Mr. Issac Newton from holding his laws of motion with him for 20 years or Mr. Charles Darwin from patenting the many new species he discovered in the Galapagos islands. This intends not to restrict scientific knowledge with a few. By the way, I am no way suggesting that Newton or Darwin tried patenting their theories.

If you have discovered anything new, that is remarkable and surely adds value to scientific knowledge, but is not patentable. However, if you are the first to develop a product or process based on the new discovery, that may be patentable.

Tips: Mere discovery is not an invention but you can derive a patentable product or process out of it.

Living Beings are not inventions

We have seen that discovery of living beings is not an invention [ref. 3]. Not only limiting to discovery alone, the patent law generally restricts patenting of plants and animals [ref. 4]. It says – 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, are not inventions.

It is noteworthy that micro organisms are patentable (not the naturally occurring ones though). As part of the patent application process the subject micro organism is to be deposited for examination. The Budapest Treaty on the International Recognition of the Deposit of Microorganism ensures that a deposit at any recognised International Depositary Authority (IDA) is accepted by all the countries part of the treaty. This saves an applicant from depositing in every country he intends to file an application.

Unlike India, plants can be patented in some countries including the USA.

Tips: Plants and animals are not recognised as inventions but micro organisms are patentable. 

new form or use of a known substance

Discovery of a new form of a known substance is not recognised as an invention, unless it improves known efficacy (effectiveness) of the substance [ref. 5]. Suppose if you discover a form of bleaching powder that remains liquid in normal environment. It is not regarded as an invention. However, if the new form improves its disinfecting properties, it may be patentable.

Let us imagine another case – today you  are the first person to discover that the good old bleaching powder can remove tough stains and thus can be used for cleaning purpose too. Unfortunately it is not an invention as you have just discovered a new property/use for a known substance.

Similarly, mere use of a known process, machine or apparatus is not an invention, unless such known process results in a new product or employs at least one new reactant [ref. 5].

Tips: Mere discovery of a new form or use of a known substance or device is not patentable. However, that does not stop one from trying the new form or use in a novel product.

admixture and re-arrangements

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 is not patentable [ref. 6]. Imagine you have mixed common salt, pepper and sugar to have a mixture with all the respective tastes present. This mixture is not an invention. It can be if the mixture gives a fourth distinct taste.

Similarly, mere arrangement or re-arrangement or duplication of known devices each functioning independently of one another in a known way is not an invention [ref. 7]. For example, you have combined a known type of temperature sensor and pressure sensor to meet a particular demand. Here the two sensors are merely integrated into a single body but they perform their functions independently without affecting or being influenced by the other one. This is not patentable but if you can achieve the two functions from one single sensor, that may be patentable.

Tips: Mere admixture and rearrangement are not patentable. However, something unique in the product due to this change can make it patentable.

That is all for today. In the next part I will be back with some more interesting provisions including software, copyrightable works, medical treatment etc. Please use the comment box if you have any questions; we will get back to clear the doubts.

References:

Following sub-sections of section 3 of the Patents Act, 1970 (What are not inventions):

  1. 3(a)
  2. 3(b)
  3. 3(c)
  4. 3(j)
  5. 3(d)
  6. 3(e)
  7. 3(f)

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

Next article: What are not patentable (part 2). Expected during second half of March 2018.

Posted on

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.

Posted on

The Wheels of Invention

Drawing an Analogy

Hello readers, wish you all a very happy new year. I am glad to post the first article in this website that explains the name of the site and forms the base for the subsequent posts. It helps in understanding the relationships among an idea, its development leading to an invention, patenting it and commercialising it; particularly in Indian context.

Let us start with a touchy topic that many people like to talk and debate about – why can India, with a billion population, not win a lot of medals in the Olympic games? We often see a lot of assessments in the media and committees are formed after each games to identify the ways to do better. 

I do not intend to discuss the outcomes of these assessments and committees, and rather would like to point towards a success story. While the country as a whole have failed to boost the available talents, a gentleman named Mr. Gopichand (needs no introduction) has successfully created a winning environment for one of the Olympic sports, Badminton. In less than a decade time his academy has produced 2 Olympic medals (7% of India’s total tally of 28 medals in more than 100 years). Moreover he has produced a number of excellent world class players who promise to deliver more exceptional results. By now you might be wondering what Mr. Gopichand’s academy has got to do with this website that claims to concentrate on inventions and patents. Please be with me, we are going there in a moment. All I am trying to highlight is the impact of right mindset and environment on the outcome that Mr. Gopichand has demonstrated.

Analogous to India’s poor record in Olympics we are equally short in producing outstanding inventions. With due respect to all the great minds who have done and are doing their best against all odds, we have never been a force in this arena. That’s why I thought in India inventions are analogous to the Olympic medals – have a huge pool of talent but the number of inventions disappoints. The question is – can we learn from this analogy and replicate Mr. Gopichand’s success for useful inventions in future?

A few months back I read a speech given by Infosys co-founder Mr. Narayanmurthy in front of the IISc graduates. There he pointed out the amount of impact MIT has made on technology and how we in India lack that trend. Surely he had a point. However, such discussions are not uncommon in media and anybody with an unbiased eye towards technological advancements in this country would readily agree to it. Here comes the next question – what can we do to replicate Mr. Gopichand’s model in the field of invention? There may exist multiple ways to do this. In this post I am going to explain an holistic view of what contributes to an invention.

Wheels of Invention – What it MeanS

Let us look at the title of this website. What do I mean by “Wheels of Invention”? Let us imagine the environment as a sphere in which an inventor has to work and many factors inside this sphere affect outcome of the inventor’s efforts. Some of these factors are more influential than others.  I like to term these more influential factors as the wheels of invention. These are:

  • Wheel of Invention
  • Wheel of Curiosity
  • Wheel of Knowledge
  • Wheel of Development
  • Wheel of Market

As seen in the figure below the wheels are interrelated. This interrelation is shown as rotation. As the outer wheels (drivers) are in contact with the central wheel (driven), any variation in these wheels’ rotation will determine how the central wheel of invention will rotate and hence perform. To keep the things simple,  to ensure a successful invention, an inventor has to be aware of the wheels and should preferrably be able to control them to some extent. I am now going to briefly explain the wheels. Our subsequent posts in this website will align to these wheels for better understanding.

The Wheels and Environment that Influence Inventions
Wheel of Invention

This is the wheel which actually churns out a successful invention. It is not necessary that a patent has to be obtained for an invention, it is a choice left with the inventor. However, a patent is a formal recognition of the invention and the inventor and therefore is the most important aspect of this wheel.

This is an area that poses a lot of difficult questions in a new inventor’s mind. For example, is my work patentable; how do I patent it; who can help me; would it cost me a lot to get a patent etc. Lack of awareness in this area is common in India, be it for individuals or academics or industry; except maybe for the bigger institutes or industries. Even in premier technical institutes, where patent cells exist to guide the inventors, publishing research papers  take priority and often patenting is not considered, although publishing such papers is still possible after applying for a patent. So, the bottom line is that the technical community must have at least basic awareness about patenting if we are to get more patents. A considerable number of future articles in this website will concentrate on creating such awareness.

To summarise, Wheel of Invention emphasises on awareness about patents.

Wheel of Curiosity

In my view everything related to an invention starts here. The product is actually conceived at this stage. Here the inventor identifies an opportunity for something new and embarks on the journey to build upon it. Have you ever tried ironing your shirt on a Monday morning for office and thought “How boring and time consuming process! Why is not there a washing machine like device for automatically ironing the clothes”?  That’s an example where an invention may be conceived. I would like to share later a few real examples.

So the important thing for a potential inventor is to keep eyes open and looking for opportunities that can be converted into products and processes. Such opportunities may be identified from various sources like identifying a problem (as in the above example), from a research work, from market demand, simply hitting upon an idea (solution) first and even from historically failed/incomplete technological attempts.

If it’s so simple, then why don’t we see great inventions often in this country? The answer is – no, we in fact see some great inventions here and there, which make ripples for sometime. However, most of them are result of individual brilliance and not due to a system. Those inventors have surely gone through the same process. Unfortunately our academic system does not encourage much to be curious to create enormous opportunities. All is not lost though; there is an excellent initiative by National Innovation Foundation in this area to gather concepts for developing further. I hope they will be able to reach to the grass root level more and more, and will support the talents we have.

To summarise, the Wheel of Curiosity emphasises on identifying new ideas by an individual or system.

Wheel of Knowledge

Here comes the next wheel. Once a problem is identified or an idea is available to solve a specific problem, it needs to be nurtured in a right manner. The inventor is not expected to know everything beforehand, he/she may have to learn many things. I know people who have some ideas but due to lack of right information they struggle to progress further. Access to relevant sources of knowledge is the key here. The sources include, but not limited to – libraries, research databases, teachers, industry professionals, other inventors etc. Such sources are not easily accessible to many people in  India and it hampers our prospect in the field of invention.

To summarise, the Wheel of Knowledge emphasises on getting relevant information/knowledge from the right sources at the right time.

Wheel of Development

This one is perhaps a tricky one. You have a great idea and knowledge but still converting it to a finished product may be extremely challenging. Apart from people who are actually involved in design and development, other people may not be able to appreciate the minute things that go into development. For example, I can design a mechanical part in great detail which may eventually become a manufacturing nightmare and may eventually send me back to square one. The key here is excellent planning before jumping into the actual work and relying on team work. While the previous two wheels may be managed well individually, this one may not be. It often requires expertise of various people to develop a real product.

To summarise, the Wheel of Development emphasises on developing your idea through proper planning and team work.

Wheel of Market

This is even a trickier one. Let us burst a myth here. Many people think that getting a patent is end of the story, after which everything is just “they lived happily thereafter”. There will be automatic fame and fortune following the invention. If it happens that’s great but unfortunately, it does not happen most of the time. Not all the patented products see light of the market in reality. There is no doubt  that even an uncommercialised invention also contributes to the future technology but getting it commercialised is the most desirable outcome.  Without getting their products in market, the great Mr. Edison or Tesla would not have been that great.

Unfortunately, there is no easy and defined way to successfully market a product, particularly in India where such environment does not exist. However,  there are recent initiatives to support inventors making it to the market. I would discuss this in later articles.

To summarise, the Wheel of Market emphasises on commericalisation on an invention.

Summary

An invention is an outcome of four influential factors, imagined as four driving wheels. Any inventor has to have some awareness and control over these wheels to be successful. That is all for today. We will be back with more informative articles in the coming days.

 

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

Click to listen highlighted text!