12 November, 2011

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Indian Patent System and Structure - A Complete Overview !!

How to file a patent in Indian Patent Office

The decision to grant patent protection in a particular country ultimately rests on the Patent Office of that country. Patentee’s rights include the exclusive rights to prevent others from using his patented invention.

Who can file: Patent Application can be filed by an inventor, alone or jointly with others, or his/their assignee or legal representative of any deceased inventor or his assignee.

Where to file: Application is required to be filed according to the territorial limits where the applicant or the first mentioned applicant in case of joint applicants, for a patent normally resides or has domicile or has a place of business or the place from where the invention actually originated.

If the applicant for the patent or party in a proceeding having no business place or domicile in India, the appropriate office will be according to the address for service in India given by the applicant or party in a proceeding. For example, patents can be filed at the Chennai Patent Office where the address for service would be Intepat IP, Bangalore.

The appropriate office once decided in respect of any proceedings under the Act shall not ordinarily be changed.

Types of Patent Application: Different types of Patent Application can be filed. These are-

a) Ordinary Application

b) Application for Patent of Addition (granted for Improvement or Modification of the already patented invention, for an unexpired term of the main patent).

c) Divisional Application (in case of plurality of inventions disclosed in the main application).

d) Convention application , claiming priority date on the basis of filing in Convention Countries.

e) National Phase Application under PCT.

Documents required while filing:

1) Application form in duplicate (Form 1).

2) Provisional or complete specification in duplicate. If the provisional specification is filed, it must be followed by the complete specification within 12 months.(Form 2).

3) Drawing in duplicate (if necessary).

4) Abstract of the invention in duplicate.

5) Information & undertaking listing the number, filing date & current status of each foreign patent application in duplicate (Form 3).

6) Priority document (if priority date is claimed) in convention application,when directed by the Controller.

7) Declaration of inventor-ship where provisional specification is followed by complete specification or in case of convention/PCT national phase application (Form 5).

8) Power of attorney (if filed through Patent Agent).

9) Fees (to be paid in cash/by cheque/by demand draft)

These are the important points to be noted while filing an application at the IPO.

Cost of Obtaining a Patent in India

It is understood that patenting is an expensive and extensive process. Usually while filing a patent, only the statutory filing fees and the professional fees are disclosed. However, after the filing, there are certain other fees that are to be paid to the Indian Patent Office (IPO). Therefore, it is imperative that one should understand the patent procedure and realize the fee break-up while applying for a patent.

While approaching a patent attorney, a bundled fee consisting of the statutory fees and the professional fees would be disclosed. The professional fees vary from attorney to attorney. Herein, only the statutory fee is disclosed.

Filing- Firstly, while filing a patent application, the status of the applicant- whether a natural person or other than natural person - is considered. ‘Other than natural person’ may include a legal entity; it may also include a legal entity and a natural person jointly. Whereas a natural person’s fee for filing an application is marked at Rs. 1000/-, fees for others is marked at Rs.4000/-.

Specification and Claims- The IPO levies no fees for a specification up to 30 pages and up to 10 claims. However, if the specification exceeds 30 pages, then a fee of Rs. 100/- per page for natural person (Rs.400/- per page in case of ‘other than natural person’) is levied. Similarly, no fee is charged for a maximum of 10 claims. However, if there are more than 10 claims, then a fee of Rs 200/- for natural person (Rs. 800/- in case of ‘other than natural person’) is charged per extra claim.

Early Publication- All patent applications filed are published in the Patent Office Journal after 18 months from date of filing of the application. However, if the publication needs to be hastened, then there is an option of early publication by filing Form-9 and making appropriate payments. The fee for early publication is Rs.2500/- for natural person and Rs. 10,000/- for others. If early publication is opted, the application will be published within one month from the date of request.

Request for Examination- Applications are examined only when the examination fees are paid by the Application; otherwise, the applications are deemed to be abandoned. Fee for examination needs to be paid within a period of 48 months from the date of priority or date of filing of the application. It is to be kept in mind that earlier payment of fees entitles earlier examination, thus hastening the patent procedure. The prescribed fees for examination are Rs. 2,500/- for natural person and Rs. 10,000/- for others.

These are the statutory fees that are most important to keep in mind while filing a patent application. Besides these, there are opposition fees, fees for requesting an extension of time as well as renewal fees.


Patent searches and their importance

In the grant of a patent, a lot of time, sweat and money are involved. The arena of patents is developing at a fast pace. In 2009-2010, around 40,000 patent applications were filed in India against the 17,500 applications filed in 2004-2005, a leap of 250% in the past five years. However, one should understand that not all patent applications filed are prosecuted successfully. The primary reasons for rejection of an application are either (a) the invention is not novel (b) or it is obvious such that a similar patent already exists.

The Government fees for a patent filing can be anywhere from Rs.14,000 - Rs.20,000. Besides the Government fees, fees to the attorney or agent needs to be considered. On the whole, it is without doubt that patenting is an expensive process and therefore, requires an inventor/assignee to tread carefully in order to successfully prosecute patent applications.

A patent search or a patentability search is a search conducted in patent databases as well as in the literature available to check whether any invention similar to your invention already exists. In other words, it evaluates your chances of getting a patent grant. Therefore, instead of going forth with the filing, if one conducts the patentability search, one can get a clear idea about the patentability of the invention; whether the application should be filed and the strengths and weakness of his invention.

Since patenting is an expensive procedure, it is prudent to conduct a patentability search before filing an application. Besides financial reasons, there are several other compelling reasons for conducting a search before filing an application.

  • A patent search would make one realize the patentability or the extent of patentability of an invention. Many a times, inventors are not well-versed with the scope of patentability that law covers. For example, computer programmes, per se, is non-patentable but computer programmes that are manifested in a useful way can be patented. A patentability assessment can help you understand whether your invention is patentable and if so, how far can it be protected.

  • It is important that your patent agent/attorney knows the prior art available in order to draft the patent claims. A patentability search gives an idea of what can be sought patent protection and what falls in the prior art domain. Thus, one can understand from the search report the area of strength of the invention and accordingly draft claims that do not infringe other patents or fall in the prior art.

  • Sometimes, the invention might not be novel and the patentability search might reveal patents/ inventions similar to the invention. In such cases, from reading the prior art literature, one can come up with newer ideas and refine the invention such as to make it patentable.
  • By knowing the literature present in the field of one’s invention, one can understand the strength or weakness of the present invention. This, in turn, helps in drafting a stronger patent application and making it less vulnerable to rejections by the Patent Office. On the other hand, it would also help to decide whether one should proceed with the filing of the application or forsake it.
  • The patent search can also reveal certain companies who are keen on obtaining patents in the field of technology relating to your invention. In such cases, it gives you the lead on which companies to contact for licensing of your invention.
  • Many-a-times, we see existing patents already available in the database, yet they have not been commercialized. Analyzing the patent search may reveal why commercialization was not viable, thereby, helping you decide whether you should proceed with filing the patent application if commercialization is on your mind.
  • One should note that while applying for a patent, the applicant needs to describe his entire invention. Even if his patent gets rejected, his application would be considered prior art, open for all to see. This can very often lead to a scenario where his competitors get access to his hard work. To avoid such a situation, a patent assessment would prove helpful. Even if in the eyes of the patent law, your invention is not patentable, yet you can use it as a trade secret and license it to others and gain revenue. A patentability assessment would help the investors realize whether applying for patent would justify the expenses borne.

It is a well-known fact that free patent databases are available over the Internet and anyone can access these databases. However, it is pertinent that a person skilled in conducting searches be given the task. The reason being, patent searches involves tedious, repeated searching through various patent and non-patent literature. An unskilled person would not be able to do justice to the vast amount of literature to be searched. Furthermore, a skilled person understands the importance of the claims of a patent. The claims of a patent are of utmost importance when a similar patent to your invention exists; in such a case, one needs to analyze the patent claims to determine the degree of similarity between the two. Furthermore, a skilled person would be able to counsel on the strength of your patent or on refining your patent so that it does not infringe other existing art. A non-skilled person may not understand these concepts.

Professionals at Intepat understand the realms of patent searches and conduct comprehensive searches in patent and non-patent literature and also provide counseling on management of patents.

Why and what should you patent?

The basic reason why inventors/ companies go for patent protection is for the exclusive right that they hold over their invention for a specific period. But besides this obvious reason, there are other reasons why an inventor/ assignee would want to patent his invention.

Before we discuss the other reasons, let us first look at what rights do the term “exclusive right” of the inventor encompasses. Exclusive rights means the inventor wields monopoly rights over his invention, such that he can stop others from using his invention without his permission. This, interpreted in another sense, would mean he can gain royalties from persons who use his invention. Royalties is one reason why many inventors/ companies want to patent.

Besides this privilege of exclusivity, many companies use the patent system as a weapon of defense also, i.e. they patent to stay ahead of others besides being able to stop others from overtaking their progress.

Sometimes, a single novel invention is all it takes for a company to leap light years ahead of others. In extreme cases, a single patent had started up entire industries- like the xerography technology started by the company, Xerox Corporation.

As a start-up company, having a patent brings an advantage of the company’s ability to rope in investors. Investors would always look for signs of growth, of knowing that his investment would be protected in a company and he would get some returns out of it. Companies with strong patents would always have a unique position in the market. This would in turn rope in investments to your company.

Nowadays, most companies understand the importance of IP valuation and have IP portfolios to manage their IP assets. Valuation is important for investment- to show the investors the strength of the company’s IP; and also for licensing and Mergers & Acquisition- to realize the full potential of the patents.

As seen, there are compelling reasons why you should patent your inventions but the next important question is: Should one try to patent any invention that one comes across? In other words, what should be patented?

The one major hurdle in the patent procedure is that patenting is an expensive affair. It becomes an even more expensive affair when you want to patent in several countries; since, unlike the general notion, patents are territorial and are not protected internationally.

Hence, one should identify in which inventions to invest money and which to forsake. To estimate whether one should go for patenting or not, the question to be asked is- how successful will the patented product be? If it is successful enough to be wanted by the competitors, then it is worth protecting. If it can give a reasonable profit by licensing it to others, then also it is worth protecting. However, if it gives a very meager amount of profits, then there is no point in investing money trying to patent it.

Though patenting might give your company very many advantages, yet before going forth, you should fully realize the value of your patent, the equation of your investment to the value you will receive from your patent; and once sure of the value of your patent, go forth investing in it.

Source : India Patents

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