Articles, Blog, Brand Valuation, Compulsory Patent License, Digital Right Management, Hi Tech Patent Litigation, India, Intellectual Property, Patent, Patent Infringement, Patent Opposition, Pharma- Biotech- Patent Commercialisation

How to research a patent idea by performing novelty invention search?

Written by adminSeptember 11, 2019

How to carry out research on patentable idea?

A novelty patent search is performed to analyse whether your idea/ technology / invention is new or not.  The patent search novelty report provided by the patent expert will tell you whether your invention is novel or not. The search report will include list of selected granted patents, published patents and non-patent literature which will become prior art existing for your technology. The patent search report will also contain legal expert opinion on the novelty of your invention. Our patent lawyers and attorneys assist in re-engineering your invention in the light of prior art documents

How can Patent Search help in determining Patentability of Invention?

Before spending time, money and resources for filing a patent application, it is strongly advisable to conduct a patent search . A qualified patent attorney can determine patentability of an invention by analysing relevant prior art references (published patent applications, granted patents and non-patent literature) in accordance with patent laws of relevant jurisdictions.

Patent Search before Filing A Patent Application 

While conducting a prior art search and performing patentability analysis, patent attorneys ensure that the search is comprehensive and corresponding analysis is thorough to include all possible embodiments of the proposed invention. Generally, the patent search results are compiled in the form of a detailed document known as patent search report. The patent search report further helps in writing a draft specification for patent.

 

Read More
Blog, Intellectual Property, IP Litigation, Patent, Patent Infringement, Patent Opposition

Patent Filing Process in Canada

Written by adminJune 13, 2019

Canadian Intellectual Property Office, commonly known as CIPO, is the controlling body for Patents and Trademarks in Canada. CIPO has been making a continuous effort to cut down the prosecution time to make the process of getting the Patent Application granted much faster. Currently, it takes nearly around 80 months for a Patent Application to be granted from the date of filing. It is still on a higher side when compared to the timelines of other countries like United States, Europe, India, and many other countries.
If we talk about the process for filing a Patent Application in Canada, it can be understood as described below:

Step 1: Filing of Patent Application:
Filing of a Provisional / Complete Application is done in English / French Language. In case of filing of a Provisional Application, Complete Application needs to be filed within 12 months of filing date / priority date (whichever is earlier).

Step 2: Publication:
Publication of the Complete Application is done in the Patent Journal within the 18 months of the filing date / priority date. However, the applicant can also opt for expedited publication for which an additional fee needs to be paid at the time of filing the complete application.

Step 3: Examination:
Examination of the Patent Application is carried out by the Examiner to evaluate the Patent Application on the grounds of the patentability criteria’s. The application comes to examination of the Patent Office (CIPO) as soon as the applicant submits the Request for Examination (RFE) that has to be submitted within 60 months of the filing date / priority date after the publication of the Patent Application.

Step 4: Prosecution:
Based on the examination conducted by the examiner and issues Objection Report which is also known as Office Action / Examination Report. If not satisfied with the response of First Examination Report (FER), the examiner can issue Second Examination Report (SER) or can also call for a face to face hearing. The consolidated time for this overall process is 90 days from the date of issuance of FER.

Step 5: Payment of Annuities:
Upon the grant of the Patent Application, annuities are supposed to be paid by the applicant to the Patent Office after second year onwards the grant till the tenure of the patent protection which is 20 years from the filing date / priority date.

Effectual Services has experience in dealing with Patent Filing/Prosecution as per Canadian Patent Filings, and can assist in hand-holding through the complete prosecution lifecycle of a Patent. Our patent filing procedure is in compliance to CIPO’s guidelines.
If you have any doubts or questions about the patent process in Canada, feel free reach out at Info@effectualservices.com

Read More
Blog, India, Intellectual Property, Patent

Patent Filing Procedure in India

Written by adminJanuary 21, 2019

Patent is one of the pillars of Intellectual Property (IP). A patent gives its owner the right to exclude others from making, using, selling, and importing an invention for a limited period of time, usually twenty years. A Patent provides exclusive rights to the Patent Owner and restricts others from using the patented technology. These rights also exclude others from selling, making, using and importing patented technology for a time duration, which is twenty years in India. This concept of exclusivity provides a cutting edge advantage to the Patentee to launch the monopolistic products in the market and maximize their revenue. This can also be verified from the fact that almost every known company in today’s scenario is going towards having Patent Protection.

Now the question arise is “how to get these Patents in India”? Indian Patent System has following stages during the lifecycle of a Patent which are depicted below in flow chart shown below:

Patent life-cycle flow chart

 

The first stage in life cycle is patent filing after drafting a provisional/complete specification, which is followed by publication of patent application. The Publication of Patent Application  takes place in the Patent Journal issued by Indian patent office. The publication of a patent application takes around 18 months from the Priority date/ date of Filing (whichever is earlier). The publication is followed by next stage i.e. “Examination of patent application” by Indian Patent Office: A Request for Examination (RFE) has to be submitted to Patent Office after Publication of Patent and within 48 months of Priority Date / Date of Filing (whichever is earlier).The publication stage is next followed by examination stage of patent application. The examination reports i.e. First examination reports (FER’s) are being issued by Indian patent office. The Patent Office provide an Examination Report after checking the patent application on grounds of the Patentability Criteria and provides the First Examination Report (FER). Response for the objections are raised in FER has to be submitted within 6 month of date of Issuance of FER, which can be further extended to three months. After submission of response to FER by the applicant, the Controller of Patent consider all the objections and check whether all the objections have been compiled or not. The controller then either issue a hearing notice and appoint a hearing or may grant patent application and publish the patent application in official journal accordingly.  Once the patent is granted, Annual Fees are required to be paid on and after third year of grant of the Patent. Annuities are required to be paid each year throughout the life of the patent i.e. 20 years from the Priority Date / Date of Filing (whichever is earlier).

 

For more information on Patent filing procedure in India, please write to us at info@effectualservices.com

Read More
Blog, Digital Right Management, India, Intellectual Property, IP Licensing, IP Litigation

What Are Litigation Support Companies and What Do They Provide?

Written by adminSeptember 18, 2018

The litigation support experts help attorneys to manage the legal needs and other aspects of large scale litigation and complex litigation. The term large litigation refers to the litigation that has wider scope and therefore it requires the assistance of more legal experts than smaller scale litigation. Talking about complex litigation, it refers to the litigation whose complexity is defined by a large number of witnesses and has extremely less time frame to try a case of complex information which is difficult to present to the jury in a simple way.

Although the litigation on a larger scale and even complex litigation is concerned with the different types of litigation, it is not uncommon for them to occur together. If in any case, both the larger scale litigation and complex litigation, or both of them happen at the same time, then usually the contract with litigation support service keeps the litigation on its proper schedule without adjusting the quality of legal counsel.

Starting from research and documentation of precedents and facts to legal IT support, the type of service which is rendered by the litigation support professionals depends upon the needs of attorneys. The litigation experts work individually as the part of litigation service agencies. In many circumstances, attorneys prefer to hire litigation specialists who are well aware of litigation providers especially when such providers put their staff on through and through screening process which determines the individual’s professionalism in terms of dress, personal disposition, commitment etc. Even though the litigation support experts posses numerous expertise, they use them to accomplish one thing by administering the legal duties, and they allow attorneys to focus on the basic features of the case without being distracted by the case’s extra requirements.

The experts of litigation start their work by becoming more knowledgeable about the general specific facilities of the case that is being filed or is ready to be filed. After taking down all the information about the case, they begin to identify the precedents, previous legal actions and also the current laws which are connected to the case. After presenting it to the attorneys, we can have two major impacts on the case, firstly it can strengthen an attorney’s developed line of inquiry or disclose the flaws in the line of inquiry which is based on the legal facts and precedents. In this way, the case is won, as the litigation professionals may continue to assist the attorneys by examining the proper collection process for damages that were applicable. If in this, the case is lost, the supporters of litigation may continue to assist the attorneys in determining whether there were details which have emerged during the trial that could serve as ground for an appeal.

 

Read More
Blog, Compulsory Patent License, Digital Right Management, Hi Tech Patent Litigation, India, Intellectual Property, Patent, Patent Infringement, Patent Opposition

HOW TO PROTECT YOUR INVENTION IN FOREIGN COUNTRIES?

Written by adminSeptember 11, 2018

Like any other Intellectual Property Right, Patent also is territorial in nature. Granted patent of one country cannot give protection in any other country other than the one it is granted in. The only option to protect any invention in foreign countries is to have a granted patent in those countries. It is again a lengthy and an expensive process to apply for a patent in different countries separately. But like trademarks, there are certain treaties and conventions to make it a little easier for the applicant to protect his/her invention in foreign countries.

The following are the treaties and conventions:

  • PARIS CONVENTION: In the case of trademarks, Paris Convention confers on applicants a Right to Priority which says a person applying for a trademark under Paris Convention gets a Right to Priority in all the member countries at the time of registration. Same way this right is given to the patents also. A person applying for a patent under Paris Convention can get a priority right in the member countries to apply but with a grace period of one year in case of utility patent and a period of six months for a design patent.
  • TRADE-RELATED ASPECTS OF INTELLECTUAL PROPERTY RIGHTS (TRIPS): Under the Paris Convention, only member countries get the luxury of grace period, and non-members of the Paris Convention get the same luxury under TRIPS agreement provided they are the members of the World Trade Organisation (WTO).
  • PATENT COOPERATION TREATY (PCT): Under PCT also, an applicant gets only a grace period to apply in different countries but under this, the period is a little longer, it gives a total of 30 months grace period to the applicant to apply in different nations.

Under the Patent Cooperation Treaty, a person files for a patent and opts for an international search by International Search Authority (ISA) which does a search and issues a search report along with a non-binding written opinion to the respective patent office. The respective patent office later publishes the invention approximately after 18 months of priority date. After which, an applicant has a choice to apply in multiple nations within a 30 month period. Later, the respective countries will carry on their respective patent grant procedures to grant a patent. The most important point to be noted is that a PCT application does not guarantee a patent to be granted in the countries that they have applied for but only assures a priority right.

From the above discussion, we may understand that it is not possible to get a patent protected in multiple nations with a single application but can only get a priority right. Since India is a member of all the above-mentioned treaties, an applicant from India can apply under any of them to get his/her patent registered in multiple nations.

Read More
Blog, Compulsory Patent License, India, Intellectual Property, IP Litigation, Patent, Patent Infringement

Section 8 of the Indian Patents Act

Written by adminSeptember 7, 2018

In recent times section 8 of the Indian Patents Act has raised concerns amongst Patent applicants with regards to foreign applications. This section is about information and undertaking regarding foreign applications. This section states as under:

  1. Where an applicant for a patent under this Act is prosecuting either alone or jointly with any other person, an application for a patent in any country outside India in respect of the same or substantially the same invention, or where to his knowledge such an application is being prosecuted by some person through whom he claims or by some person deriving title from him, he shall file along with his application or subsequently within the prescribed period as the Controller may allow-

(a) a statement setting out detailed particulars of such application; and

(b) an undertaking that, upto the date of grant of patent in India, he would keep the Controller informed in writing, from time to time, of detailed particulars as required under clause (a) in respect of every other application relating to the same or substantially the same invention, if any, filed in any country outside India subsequently to the filing of the statement referred to in the aforesaid clause, within the prescribed time.

  1. At any time after an application for patent is filed in India, and till the grant of a patent or refusal to grant of a patent made thereon, the Controller may also require the applicant to furnish details, as may be prescribed, relating to the processing of the application in a country outside India, and in that event the applicant shall furnish to the Controller information available to him within such period as may be prescribed.

This section basically states that the Patentee has to file the information at the Indian Patent Office if an application has been made for same or substantially same invention in any country or countries outside India, and also provide information regarding any objections or amendments.

The Justice N. Rajagopala Ayyangar report on the revision of patent law, of September 1959 is where Section 8 had its origins. One of the most important changes this report bought in the legislation was anticipation, which in the earlier Patents Act of 1911 was limited only to documents within India, but which now included documents published anywhere in the world.

If the argument for disclosure of subsequent foreign applications during the prosecution of the Indian patent application is necessary to assess the strength of the Indian application, it defies logic that such an obligation is limited to foreign applications only. It is possible that a person may file subsequent Indian application for the substantially same invention to the pending application in India? It is possible that such a person may choose to file the application in India and not in any other country. What if the subsequent Indian application which is substantially same to the pending Indian application is rejected or found obvious? Is the examination report issued in the subsequent Indian application not more relevant than the examination reports issued in foreign jurisdictions? The only logical answer for non-disclosure of subsequent Indian application, even though it could be substantially same to the first invention, is that Section 8 is limited to foreign applications which are corresponding to the Indian application. If Section 8 requires disclosure of any application other than ‘corresponding” foreign applications, it should have included subsequent Indian applications also. To hold otherwise defies logic and leads to absurd results.

Section 8 was first used in the case of Chemtura Corporation vs. Union of India. In this case it was held that the plaintiff had suppressed information regarding prosecution of patent applications at the USPTO and EPO. Plaintiff said that since the patent was granted in India by the IPO it was valid. The defendants argued that due to non-submission of facts regarding application in USPTO and EPO, the IPO could not look into the matter. The High Court had held that the status of prosecution of a patent application in jurisdictions outside India must be provided in detail, including information on searches, objections etc. The court further held that the application could be revoked under section 64 of the Act and the IPAB was at a liberty to decide the same in the revocation filed by the Defendants.

Section 8 also states that if such information regarding application for patents in jurisdictions outside India is not disclosed, it shall be a ground for refusal for grant of patents as under Section 25(1)(h) or being revoked by the Intellectual Property Appellate Board (IPAB). Also under section 8(2) the applicant is required to submit information under Section 8(2) to the Controller (Patent Office), and must do so within 6 months of such request under rule 12.

Case Laws

  1. In the case of F. Hoffmann-La Roche Ltd & Anr. Vs. Cipla Limited, Cipla’s sole ground of non-compliance of Section 8 requirement was non-disclosure of a subsequent foreign application for a polymorphic form of the compound during the prosecution of the patent application for the compound. Roche had filed an infringement action against Cipla for infringing its patent. Cipla contended that Roche did not disclose the substantially similar patent it had filed in the US for containing polymorph B version, as was required under section 8. Roche contended that it did not need to as the polymorph B compound was different from the Indian patent. Despite the court saying that Roche had not complied with section 8, it did not revoke the patent, as it said that the decision to revoke or not lies with the court due to the word “may” being used in the Patents Act.
  2. In the case of Tata Chemicals vs. Hindustan Unilever, it was held by the IPAB that, once the Controller had called upon the applicant to furnish particulars with regards to applications in jurisdictions outside India under section 8(2), it is the duty of the applicant to furnish such details.
  3. In the case of Richter Gedeon vs. Cipla, the Controller of the Indian Patent Office held that it was not informed by Richter about information regarding applications filed in foreign countries, which was a violation of section 8.

It was held that the obligation to provide information with the patent office will be applicable till the Indian patent is granted and not after that. The patent was subsequently revoked under section 8.

  1. In another important case of Maj (Retd) Sukesh Behl & Anr v Koninklijke Philips Electronics, Philips filed a patent infringement suit against Maj. (Retd.) Sukesh Behl for permanent injunction to stop them from using Philips essential DVD Video/DVD, ROM Discs patents. Sukesh Behl contended that Philips patent should be revoked as it did not comply with section 8. The Delhi High Court had held that even though it is mandatory to comply with section 8 of the patents act, and any non compliance can lead to revocation of application under section 64(1)(m), but since the word “may” is used it means such revocation will happen only at the discretion of the authority deciding such application. The language of section 64(1) is plain and unambiguous. Revocation would only follow if the court is of the view that the omission was deliberate.

The High Court of Delhi in the above case has read “willingness” into Section 8 of the Act. Such a reading along with the failure to comply with Section 8 is taking the case closer to ‘inequitable conduct’ of USA. Inequitable conduct is a defense that a party accused of infringement can raise in a patent litigation in the USA. This defense stems from the doctrine of ‘unclean hands’, a principle of equity. In order for this defense to be successful, the defendant must show that the patent applicant has breached a ‘duty of candour and good faith’ by misrepresenting or suppressing information submitted to the Patent Office.

 

 

Read More
Blog, Brand Valuation, India, Intellectual Property

Types of Intellectual Property

Written by adminAugust 29, 2018

Don’t get confused with types of Intellectual Property Protection

Intellectual Property is an intangible asset that leaders of growing companies and entrepreneurs need to clearly understand. Today every business needs one or the other kind of IP protection and the choice of a correct kind of protection is very important. Some businesses would need multiple types of protection while the other may need just one type of protection. Deciding what would work best for you is important because a wrong kind of IP protection is as good as no protection. You would have heard people say trademark this invention, copyright this idea, or patent this logo, but as a matter of fact none of these are possible. So let’s see what are the possibilities available to you.

What are the various types of intellectual property protection available?

The selection of correct protection depends on the material you want to protect. For e.g. you may trademark a logo or patent an invention. Following is an explanation of the types of protection available:

Patents: Patents are considered to be the strongest type of protection available. They can be granted for an apparatus or a method provided it is useful, novel, and non-obvious. Patents allow you to exclude others from practicing your invention for a period of 20 years. A granted patent can be enforced on anyone who infringes and the courts help you enforce a patent. Patents are also issued for Designs and have a protection period of 14 years. Companies worldwide try to patent their inventions and then earn royalty on the protection. Important point to note is that patents are jurisdiction specific and can only be enforced in jurisdictions where you have got the patent registered. Also, patents being the strongest type of protection are most time consuming and expensive.

Trademarks: Trademarks are granted word, symbol, or a name that is used to identify a service or goods. They only protect the identity and not the underlined invention or creative work. Registering a trademark is less time consuming and less expensive than a patent but takes more time and money than a copyright protection. Though some protection for trademark is automatically granted as soon as the mark is used, but it is advisable to register the trademark with the national registering authority. A registered trademark can be enforced and the judicial courts help enforce registered marks in case they are infringed.

Copyrights: Copyright protection is for a novel and original piece of work. Copyrights are granted for writings and other forms of expression and protect from unauthorized copying, re-production, and distribution. It does not protect the idea but protects the expression on an idea. They are the easiest and least expensive to obtain. © is the universal mark for copyright protection. This right lasts till the person is alive and for 70 years thereafter. Though some protection for copyright protection is automatically created, but it is advisable to register the copyright with the national registering authority.

Trade Secrets: Trade Secrets are considered to be most delicate type of intellectual property protection. An example of a trade secret is Colonel Sanders recipe for fried chicken or formula for Coca-Cola. There are no legal procedures to register a trade secret. They can only be protected by signing non-disclosure agreements with vendors and employees and these agreements are enforceable. They last forever but are lost as soon as they become public.

To conclude, it is important to understand the differences in the protection available and to go for the correct type of protection. Best is to do some background research before selecting the protection or take help from firms that provide intellectual property registration services.

 

Read More
Blog, Brand Valuation, India, Intellectual Property, IP Litigation, Patent Opposition

Patent Opposition in India

Written by adminAugust 29, 2018

The Patents Amendment Act, 2005 provided for an integrated opposition system in India which allows both Pre and Post-grant opposition of a patent so as to ensure the quality and validity of granted patents.

Though the grounds for both pre and post-grant opposition are same, there are various differences regarding proceedings between the two systems. While ‘any person’ can represent in writing for pre-grant opposition, only the ‘interested person’ explaining specific interest can file a post-grant opposition. Another important difference being that in case of pre-grant opposition the act does not unequivocally provides the patent applicant the opportunity to be heard. Additionally, in pre-grant opposition there is no remedy provided by the act against the decision of the controller.
The grounds for opposition listed in the act primarily includes: (a) Wrongful obtaining of the invention (b) lack of novelty (c) prior public knowledge or public use (d) Invention is not patentable (e) Invention is anticipation having regard to the knowledge, oral or otherwise, available within any local or indigenous community in India or elsewhere etc.

Pre-Grant opposition 
The pre-grant opposition is made by way of ‘representation’ to the Controller of Patents any time after the publication of the application but before grant supported by a statement and evidence, if any, along with a request for hearing if so desired. However, the Controller shall consider such representation only when a request for examination of the application has been filed. On consideration, if the Controller is of the opinion that the application for patent should be refused or requires amendment, he gives a notice to the applicant to which applicant has to reply within three months time from the date of the notice. After considering the representation, submission and hearing the parties (if requested), the controller simultaneously either rejects the representation and grant the patent or accept the representation and refuse the grant of patent ordinarily within one month from the date of completion of the proceedings.

Post Grant opposition 
The post grant opposition is made by ‘notice of opposition’ by the opponent within one year from the date of publication of grant in prescribed form to the Controller along with a written statement setting out the nature of his/her interest, the facts on which he/she bases his/her case, the relief that he/she seeks and evidence (if any) and providing a copy thereof to the patentee also. Upon receiving the notice, the Controller constitutes an ‘Opposition Board’ consisting of three members and one of the members nominated as Chairman. The examiner who has dealt with the patent application at the time of the grant is disqualified from being a member. The Opposition Board examines the notice of opposition and forward a report within a period of three months from the date on which the documents were forwarded to it.

If the patentee desires to contest the notice of opposition, he/she leaves the reply statement setting out fully the grounds upon which the opposition is contested and evidence within a period of two months from the date of receipt of the opponent’s written statement and notice and also delivers to the opponent a copy thereof. The opponent may within a period of one month of the receipt of the patentee’s reply statement and evidence leave evidence at patent office strictly in reply confined to matters in the patentee’s evidence with a copy thereof to patentee as well. After this no further evidence can be delivered by either party except with the leave of the Controller. On completion of presentation of evidence and after receiving the recommendations of Opposition Board, the Controller shall fix a date for hearing and give the parties a notice of not less than 10 days of such hearing. If either of the party desires to be heard, it gives a notice along with the prescribed fee to the Controller and after hearing both the parties, controller notifies his decision with reasons therefor.

Conclusion
The new integrated opposition system in India has suitably addressed the post TRIPS concerns of the generic pharmaceutical industry regarding the increase in the number of grant of many false patents. However, the patent applicants are now at the risk of multiple pre-grant oppositions filed by the competitors as a part of their business strategy resulting in constant and repeated opposition proceedings and thus causing a delay in the grant of the patent. Furthermore, a pre-grant opponent may subsequently file a post-grant opposition after the patent grant thus complicating the scenario for the patent applicant. On the other hand, Post grant opposition has been well acknowledged as its proceeding serves the interests of both patent applicant and opponent.

 

Read More
Blog, Brand Valuation, Hi Tech Patent Litigation, India, Intellectual Property, IP Litigation, Patent Infringement, Patent Opposition, Pharma- Biotech- Patent Commercialisation

Life Cycle of a Patent

Written by adminAugust 29, 2018

A patent issued for an invention allows exclusive rights of the invention. In order to be eligible for a patent, the invention has to possess new characteristics and not be apparent for an average expertise. Patenting your invention prevents other people, your competitors, from producing, utilizing, selling or offering to sell the patented item/method within the boundaries of the country, or import it into the country. As the patent owner, you can dispose of your invention by selling the patent, patent right – entirely or partially, as well as license the use of it.

Patenting Process: The process begins with the filing of a patent application and ends with the rejection or issuance of a granted patent. The process starts as soon as an idea is conceived.

Conception of an Idea: The first thing to remember is that one cannot patent an idea. The idea or concept needs to be put together as an invention. The idea and invention together form what the law calls conception. The conception date is important since it can be utilized to argue against prior art cited by the US Patent and Trademark Office (USPTO).

If two or more patent applicants file separate patent applications at the Patent Office for the same invention, the Patent Office conducts what is called “interference.” The conception date is important when interference is initiated to prove which inventor was the first to create the invention. Interference is basically a mini-trial to determine which inventor invented first and is thus entitled to the patent. Like trials in court, evidence is what wins the day. Detailed records are evidence that the inventor was diligent in developing the invention. One need not have a prototype built in order to get a patent, but should be able to describe the invention with enough clarity so that someone who is technically skilled in the art can understand how to make and use the invention.

After conception of an idea and diligently recording it one should move further trying to finalize the invention. This process is called as reduction to practice. Reduction to practice, therefore, can occur through the creation of a prototype or the specific definition of the invention in writing in a filled patent application.

First to Invent and First to File: U.S. patent law stands apart from the rest of the world: it alone adheres to a “first-to-invent” system, which allows an inventor to assert first-inventor rights and claim priority back to the date when the invention was first conceived. Thus, in a priority contest between competing inventors, the inventors’ dates of conception and reduction-to-practice take precedence over their application filing dates. Almost every other country in the world has a patent system based on the “First-to-File” doctrine, in which the patent is granted to the inventor who is the first to file a patent application, regardless of the date of invention.

Patentability (Novelty or prior art) Search (Optional): Patentability searches are performed before applying for a patent to assure an invention is patentable. A patentability search examines granted and published applications of major patent offices as well as domain-relevant non-patent literature. A Patentability Search answers the following questions:

  • Is my idea or invention novel?
  • Has it been patented earlier or given the scope of patentability, is it worth the cost of filing a patent?
  • Is it worth the effort and expense to fully develop and market your concept?

Patent Drafting and Filing the patent application

Filing a Provisional Patent Application: After the patent search stage if the applicant decides to move forward then applicant can either file a provisional or a non-provisional patent application. In situations where all the details of the invention are not available, applicant can consider filing a provisional patent application. The provisional patent application may include the basic idea of the invention. It is not required to provide the patent application according to the Patent Office patent application guidelines.

Filing a Non provisional Patent Application: In order for the patent prosecution process to begin, a non-provisional patent application must be filed within one year of filing a provisional application. A non provisional patent application is the application you file when you want the Patent Office to review the filing and proceed toward issuing a utility patent application. A complete patent application includes a specification describing the invention, including any necessary drawings, an oath by the inventors, claims legally defining the scope of the invention, and an appropriate filing fee. In case the non provisional patent application submitted is in complete, the applicant will receive either a Notice of Missing Parts or a Notice of Omitted Items. The Notice of Missing parts awards a filing date and explains what must be submitted and by when, and includes any fee (i.e., penalty) due for the privilege of this later filing. With respect to the Notice of Omitted Items, such a notice explains that you have referred to something in the application that was not included in the original filing.

Patent Publication: The U.S. Patent Office will treat any non-provisional patent application as confidential until the patent application is published. This usually happens 18 months after filing the application. The eighteen-month publication provisions apply to divisional, continuations, continuation in part, and international applications entering the national phase in the US. For a fee, the publication can be moved to either an earlier or later date depending on the desire of the inventor.

Non Publication Request: A non publication request prevents an application from being published until the application issues as a granted patent. An applicant can avoid publication by certifying in a formal non-publication request that it is not planning to file a parallel application in a foreign country that has an 18-month publication requirement. This is beneficial to an applicant because they are able to keep the information confidential if they don’t obtain a patent. If the applicant is confused between protecting the information as a trade secret or as a patent, and if a patent is ultimately not granted, the applicant can still keep the information as a trade secret. If a non-publication request is made and the applicant subsequently decides to file a parallel foreign application subject to an 18-month publication requirement, the applicant must notify the Patent Office within forty-five days after the date of foreign filing or risk abandonment of the application.

Patent Examination and Office Action:The examiner may first check the number of inventions claimed in the application. According to USPTO, there can only be one invention claimed in a single patent. If the examiner determines that there is more than one claimed invention in the application, the examiner will request the inventor to restrict the application to only one. The inventor may then file a separate (divisional or continuation or continuation in parts) application while still keeping the original filing date.

After resolving this, the examiner may review the application to determine if the claimed invention is patentable.

After the examiner has examined the application, examiner sends an Office Action to the applicant. The office action cites prior art and gives reasons why the examiner has allowed, or approved, the applicant’s claims, and/or rejected the claims. There are several types of Office actions: examiner’s amendments, priority actions, non-final Office actions, final Office actions, and suspension inquiry letters. The applicant must respond to each Office Action within 3 months from the Office Action date. 3 months extension can be granted by paying additional fee.

There can be a series of office actions before the examiner makes the rejections final. There is still an opportunity to amend and make changes. In order to continue examination of the application one can cancel claims, place claims in better condition for appeal, or amend the claims as per suggestion of the Examiner that would make a claim patentable.

Request for Continuing Examination: On receiving a final rejection the applicant may file a Request for Continuing Examination (RCE). This RCE will restart prosecution and the amended claims are examined just as if they were being presented for the first time in a newly filed application.

If you choose to have the allowed claims issue you can choose to file a Continuation or a Continuation in Part, which will allow for you to continue to try and persuade the patent examiner that certain claims are allowable. Both Continuations and Continuations in Part start a new application process from the beginning, as opposed to the RCE which continues forward on the same application.

Appeal: Along the way a decision can be made to appeal a Final Rejection by the examiner. Such an appeal goes to the Board of Patent Appeals (BPAI), and perhaps ultimately to the United States Court of Appeals for the Federal Circuit, or the United States District Court for the District of Columbia.

Allowance and Grant of Patent: After the examination of the application or at a later stage during the reconsideration of the application, if the patent application is found to be allowable, a Notice of Allowance is issued by the Patent Office to grant you a patent. Issue fees are drawn generally within three months of the Notice of Allowance. The issued fee must be paid after you get that Notice of Allowance and the patent will be published and issued several months later when it is printed with a patent number in the official gazette and published in the USPTO website.

Patent Term and fees: A granted patent will expire after 20 years of the filing date, unless it expires earlier due to a failure to pay fees or a declaration of invalidity by a court. After the patent expires, the invention is available to all. Design patents, unlike utility patents, have a term of 14 years from the date of issue. If the patent office takes longer than three years to examine and grant a patent, the term of the patent may be adjusted accordingly.

There are three patent maintenance fee payments that must be made during the life of your patent to keep it in force. Maintenance fees on utility patents in the United States are due 3½, 7½ and 11½ years after grant of the patent. No maintenance fees are due while an application is pending. Design patents and plant patents are not subject to maintenance fees at all.

 

Read More
Blog, IP Licensing, Pharma- Biotech- Patent Commercialisation

Introduction to Patent Licensing

Written by adminAugust 29, 2018

A patent holder may legally allow another party to make, use, sell or import his invention for a specific period of time in a specific geographical region and in return for a license fees. This process is called patent licensing or invention licensing. The patent owner is known as the licensor, and the other party is the licensee. The licensee assumes all of the business risks, from manufacturing to marketing and also handling infringement cases.

A license is a written contract and may include whatever provisions the parties agree upon, including the payment of fees whether one time or royalties. It is a way for commercialization of a patent. Licenses are revocable since it is a contract with performance obligations, the failure to comply with them may lead to the termination of the license, and the patent exclusive rights coming back to the licensor. Several companies such as IBM and Microsoft, and Universities around the world generate large amounts of revenue via patent licensing.

 

  1. Broad Classification of License Agreement
  • In License (obtaining a license for a patent)
  • Out License (granting a license for a patent)

Before going for licensing, a company should do strategic planning by identifying the potential opportunities and then contacting with potential partners, negotiation and management of deals post-completion.

 

  1. In License Agreement

It is an agreement by which a party acquires the rights to use a patent. In-licensing allows a company to obtain IP rights, without the risks and costs involved in the otherwise tedious and long R&D.

Benefits of In- Licensing:

  • Widening of a company’s IP Portfolio
  • Speeds up research
  • Accessibility to new products and processes
  • Enable a company to obtain rights in platform technologies to assist in internal R&D activities
  • To avoid infringement action
  • Financially rewarding, as the cost of procuring a license may be very less as compared to the cost incurred on in-house

Things to take care of before in licensing a patent:

  • Scope of claim should be broad enough to encompass any obvious design modifications to the licensed-in technology. For a narrow claim set, a competitor may be able to potentially “design around” the patent claims and commercialize a competing product, thereby undermining the value of such a patent.
  • Patent portfolio should not be involved in any Infringement legalities
  • Check whether the technology is of interest, be it a product or a method, and is actually covered by the claims of a patent portfolio. A patent does not give the owner the right to practice the invention; rather, it provides the owner with the right to exclude others from making, using, selling, offering for sale, or importing the patented invention for the term of the patent. Therefore it is crucial to check whether the issued patent claims actually cover the technology.
  1. Out Licensing Agreement

It is an agreement by which a patent holder grants the right to use a patent to a third party. Inventors license-out their patented invention to a company that has the capability and the desire to develop the technology for commercialization.

There are numerous reasons to out-license a product or technology:

  • Earns ROI for product development
  • Revenue generation from obtained patents or for acquiring early returns from a technology not meeting criteria for investment/development
  • Freedom to operate in new industries and job opportunities
  • Royalty income
  • Entry in an export market niche through specific geographic regional licensing
  1. Types of Patent Licenses
  • Exclusive License
  • Non Exclusive license
  • Sole License
  • Cross License

Exclusive license: In an exclusive license, the licensor keeps the title to the patent but retains no other rights for itself. The licensee acquires the right to sub-license the patent and sue for patent infringement. Exclusive licenses may be limited to a geographical region, to a particular field of use, or to a specified period of time. A patent holder may, therefore, retain the right to exploit the invention in other territories or fields of use, or to license patent rights to a different entity, perhaps also on an exclusive basis. In addition, an exclusive license does not alone grant a right to sub-license. This right must be separately granted.

Non-exclusive license: A non-exclusive license allows the licensee to license some or all of the rights to a number of third parties, and also to retain the right to use the patented invention himself. Non-exclusive licenses may also be restricted to a particular territory, field of use, or period of time.

Sole License: A sole license entitles the licensor as well the licensee to use the licensed patent or product with the condition that the patent owner may not license it further to any other entity. Sole licenses are less risky than exclusive licenses for the licensor as they are not totally dependent on the licensee; however, the royalties with a sole license are usually slightly lower.

Cross Licensing: Cross licenses are negotiated when two companies have patents that read on to others product or processes. Instead of taking a litigation, the two companies can enter into a cross license. When large corporation’s extensive intellectual property portfolios are involved, cross-licensing helps, as rights to intellectual property may be exchanged while no royalty payments are involved or a balancing payment is worked out. It is highly precompetitive as each company is free to compete, both in designing its product without the fear of infringement and in pricing its product without paying per unit royalty to the other entity. It is an agreement between two companies that grants each the rights to practice the others patent. It may be restricted to a field of use or geographical restrictions.

Read More