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Early Publication of Patent Applications in India: Provisions, Importance and Current Scenario at Indian Patent Office (IPO)

Written by adminApril 14, 2020

Publication of Patent Application

Once a patent application gets filed at Indian Patent office (IPO), the patent application is automatically published in the Official Gazette after 18 months of completion from the date of filing or priority date (Section 11A(1), Rule 24). Thereafter, it becomes available for public inspection. The publication is done on every Friday in the Official Gazette.

 “Save as otherwise provided, no application for patent shall ordinarily be open to the public for such period as may be prescribed for such period as may be prescribed”.

The publish patent applications can be accessed from the following link: http://ipindia.nic.in/. This database generated by the Indian Patent Office is having currently all Patent Journals issued from 2005 onwards. Before 2005, the Patent Journals may be accessed from the IPO library physically. Following particulars of a patent application are provided while publication in Official Gazette (Section 11A(5)) :

  • Application number, Applicant Name and Address, Title of the invention, Priority details, Abstract

The date of publication is very important as it provides privileges and patent rights as if the patent has been granted on the date of publication of patent application, however infringement proceedings may be only run in court after date of grant (Section 11A(7))

 “On and from the date of publication of the application for patent and until the date of grant of a patent in respect of such application, the applicant shall have the like privileges and rights as if a patent for the invention had been granted on the date of publication of the application:

Provided that the applicant shall not be entitled to institute any proceedings for infringement until the patent has been granted:

Provided further that the rights of a patentee in respect of applications made under sub-section (2) of section 5 before the 1st day of January, 2005 shall accrue from the date of grant of the patent:

Provided also that after a patent is granted in respect of applications made under sub-section (2) of section 5, the patent-holder shall only be entitled to receive reasonable royalty from such enterprises which have made significant investment and were producing and marketing the concerned product prior to the 1st day of January, 2005 and which continue to manufacture the product covered by the patent on the date of grant of the patent and no infringement proceedings shall be instituted against such enterprises”.

Early Publication of Patent Application

An applicant may file request for early publication using Form 9 and submit it to IPO for publication (Section 11A(2)). Such patent applications would be published within 1 month from the date of making such request for early publication (Rule 24A).

Provisions – How to Apply for Early Publication for Patent Application

Patent applicant is only eligible to make request for early publication of a patent application. One is required to file Form 9 along with requisite fee as prescribed by IPO.

As per Section 11A(3), every patent application would be published excluding only cases where the secrecy directions have been imposed against a patent application (Section 35) or a patent application has been abandoned (Section9(1)) or a patent application has been withdrawn 03 months before the specified period i.e. 18 months.

“Every application for a patent shall, on the expiry of the period specified under sub‑section (1), be published, except in cases where the application–

(a) in which secrecy direction is imposed under section 35; or

(b) has been abandoned under sub‑section (1) of section 9; or

(c) has been withdrawn three months prior to the period specified under sub‑section (1)”.

Further, as per Section 11A(4), in case of secrecy directions imposed under Section 35, patent application would only be published once secrecy directions have ceased to operate or if the  period as specified under Section (1) gets expired whichever is later.

“In case a secrecy direction has been given in respect of an application under section 35, then it shall be published after the expiry of the period prescribed under sub-section (1) or when the secrecy direction has ceased to operate, whichever is later”.

Additionally, when a patent application is related to biological inventions, then while publication of such patent application, applicant should reveal the biological material in the specification and depository institution should make such biological material(s) available for public and IPO should make specification and drawings of such patent applications available to general public (Section 11A(6)).

Advantages of Early Publication

  1. Faster Prosecution Time: Patent application gets only examined once request for early publication has been submitted. In matters where the complete application has been filed with Form-9 and Form-18 (Request for Examination) at the time of filing, the IPO publishes the patent application within 1 month and FER (First Examination Report) gets issued faster.
  2. Patentee Rights: A patentee can only file suits or other types of infringement proceedings against the infringing party once the patent gets granted, however, the patentee rights get into action only after the date of publication of a patent application. Therefore, in the first instance of making request of early publication at the time of filing the patent application, the patentee gets “extra” time for claiming damages against potential patent infringers.
  3. Acts as a Prior Art: The patent applicant who is interested in accruing his patent rights at an earliest may take advantage of detracting his competitors by making his invention/application public and ensuring the patent application acts as a prior art reference for other similar inventions.
  4. Discouraging Competitors: The provision of early publication provides access to the invention for public inspection as well as for the potential competitors in a related technology domain. This could detract the competitor(s) from thinking about published patent application with a similar product or process.

Disadvantages of Early Publication

  1. Official Fees: There is additional cost for applying request for making early publication, otherwise it will be automatically published in general cases after 18 months of completion.
  2. Withdrawal of Patent Application: There is a provision in IPO to withdraw a patent application within 15 months of filing the application. This choice is not applicable when it has been already published.
  3. Pre-grant Opposition risk: Any person/applicant may file pre-grant opposition once the patent application gets published till the time patent gets granted if the examination fee has also been paid by the applicant. Therefore, early publication provision gives more chances and more time for the opponents for filing pre-grant opposition.

Conclusion

It should be appreciated that based on Applicant’s interest and actions taken, the early publication provision may be exercised at the discretion of Applicant in order to enrich value of the patent. The patent publication date is important as the applicant’s advantages as well as patent rights start into consideration from the date of patent publication.   It should be also be noticed that the early publication seems to be effective non-expensive method to expedite the prosecution process.

About the Author

Dr. Amit Goel, Director and Jyoti Chauhan, Manager at Effectual Services.

Views expressed in this article are solely of the author and do not reflect the views of either of any of the employees or employers.  For any query related to Early Publication in India, please feel free to contact at : amit.goel@effectualservices.com.

Effectual Services is one of the fastest growing Intellectual Property Management Advisory firms offering IPR services (trademark, copyright, design and patent) and knowledge research services to Fortune 500 companies, law firms, start-ups, research institutes, universities, and venture capital/PE firms.

 

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Patent Opposition System in India: Grounds, Provisions and Current Scenario at Indian Patent Office (IPO)

Written by adminApril 9, 2020

Introduction

For invalidating a patent, there are time consuming and expensive patent litigation proceedings in various  jurisdictions around the world. Another way for invalidating a competitor’s patent application / granted patent can be through patent pre and post grant opposition  proceedings. That is, one may challenge a pending patent application (prior to grant) or after patent is granted. Indian Patent Act 1970 provides opposition provisions wherein a party (“opponent”) may oppose a patent application before grant of patent which is called “pre-grant opposition” and the oppositions which  are filed after the grant are called “post-grant opposition”.

Patent Opposition Provisions

In India, both oppositions (pre- grant and post-grant), proceedings takes place in front of Controller General of Patents, India. The main advantage of filing opposition proceedings in Indian Patent Office is that it is time-specific and therefore the interested parties/opponents need not to undergo time consuming expensive lengthy procedures as conducted in Courts. The involved cost in oppositions is also minimal as compared to litigation cost in Courts.

The pre-grant opposition provides detailed information to patent examiner which could  prevent grant of patent for ineligible patent matter which does not qualify either  patentability criteria or other procedural/ formality requirements as per Indian Patent Act. Further, in pre-grant proceedings, hearing is not mandatory, however, in post-grant proceedings, based on hearing, the controller takes decision for a patent.

Sections 25(1) and 25(2) of the Indian Patents Act 1970 discloses grounds for proceedings before the Controller General of Patents, India. The grounds for pre-grant and post-grant oppositions are almost same and there is no restriction for filing pre-grant opposition thereafter filing post-grant oppositions; however, there are few procedural differences between the two oppositions.

Pre-Grant Opposition

According to Patent Amendment Rules 2016, once a patent application gets published, any person can file a pre-grant opposition before grant of the patent by filing Form 7A (under Sec. 25(1)). There is no official fee for filing pre-grant opposition. One needs to file and submit written representation to the Controller of Patents including statement and evidence(s). The applicant is given three months to file a reply to representation from the receipt of notice from the Indian Patent Office.  Based on the representation submitted by opponent and reply submitted by the applicant, the controller may schedule hearing, if required. The Controller may either refuse or grant the patent application; or suggest requests for amendment of specifications/claims to the applicant after completion of opposition proceedings.

Post-Grant Opposition

Any interested person as defined under Section 25(2) of the Indian Patents Act, may file notice of opposition i.e. with prescribed Form 7 within one year from grant date which is mentioned in Patent Journal i.e. Date of Publication of Grant along with payment of prescribed official fee. The notice of opposition must disclose following items:

  • The nature of the opponent’s interest;
  • The facts under which opposition is done; and
  • The relief which the opponent seeks

Thereafter, patentee may challenge the opposition by filing a reply statement within two months from the receipt of the opposition notice. After that, the opponent may file further evidences within one month of receipt of reply by the patentee. In case where the patentee do not submit reply of opposition notice, then in absence of any reply by the patentee, the patent may be deemed to be revoked/ abandoned.

On receipt of a notice of opposition, the controller may thereafter form an opposition board, which further comprises of three members, including one chair member. The opposition board analyses the opposition facts, opposition statement in detail and then sends its recommendations to the controller within three months. Based on the recommendations of the opposition board, the controller takes his decision, however these recommendations are not binding opinion to the Controller, but if the controller is of opinion that is contrary to the recommendations of the opposition board, then the controller passes a reasoned order  which contains his or her analysis and detailed analysis. The controller may also schedule a hearing between both parties and takes a decision for the patent to be revoked, maintained or amended.

The final decision taken by the controller of patent related to regarding a pre-grant or post-grant opposition may be further appealed to the Intellectual Property Appellate Board (IPAB). The time limit for making such appeal is within three months of the date of the decision..

  • Grounds of Opposition:

Section 25 discloses various following grounds for opposition:

  • Lack of novelty (i.e, the invention was previously published in India or elsewhere, or was previously claimed in India i.e. anticipation by prior date, Prior claiming in India).
  • The invention formed part of the prior public knowledge or the prior public use or traditional knowledge of any community.
  • Obviousness and lack of inventive step i.e. the invention is obvious and lacks inventive step.
  • Ineligibility of invention (i.e., the subject of a claims does not constitute an invention within the meaning of the Patents Act or is not patentable under the act).
  • Failure to disclose information or furnishing false information relating to foreign applications filed by the applicant for the same or substantially the same.
  • Wrongfully obtaining the invention.
  • Insufficiency of description of the invention.
  • Non-disclosure of information as per the requirement or providing materially false information by an applicant.
  • Patent application not filed within 12 months of filing the first application in a convention country.
  • Nondisclosure/ wrong mention of source of biological material.
  • Invention anticipated with regard to traditional knowledge of any community, anywhere in the world.
  1. Statistics – Pre-Grant Patent Oppositions

The Annual Journal report issued by the Intellectual Property Office i.e.  Controller General of Patents, Designs, Trademarks and Geographical Indications office report 2018-19 reveals that a total number of patents  which were published under Section 11A were around 46899 during the reporting year (2018-19), while  number of pre-grant oppositions which were filed by the opponents was around only 260, that constitutes around 0.55% of the total published applications. Also, the below data reveals since 2013 to 2016 there has been considerable growth in the trend of count of pre-grant oppositions i.e. 0.98%, 0.91% and 0.69%, respectively.

Year Number of Patent Publication Number of Pre-grant Opposition Pre-grant opposition / Patent Application Publication (%)
2013-14 31413 309 0.98
2014-15 26934 247 0.91
2015-16 41752 290 0.69
2016-17 86766 206 0.23
2017-18 46899 260 0.55

 

   Source: http://www.ipindia.nic.in/annual-reports-ipo.htm

Conclusion

Based on the analysis done on available data captured by the Indian Patent Office’s online discloses that the major grounds on the basis of which both pre-grant and post-grant opposition were filed last year were “The invention constitutes non patentable subject matter” and  the “invention lack inventive step”. Also, the formality objection ground relating to Section 8 was also noticed extensively. In the pharmaceutical field, the grounds of opposition were related to the subject matter is non-patentable under Section 3 (d) of the Patents Act. Here, the opposing party is required to prove that the claimed compound is only a mere derivative of a known substance or claimed invention is new property or new use for a known substance or of the mere use of a known process, Such machine or apparatus as claimed unless such known process results in a new product or employs at least one new reactant.

India’s patent law provides provision for both pre-grant and post-grant opposition. This provides efficient and effective method for preventing or revoking the grant of a non-eligible patent. The provision of opposition proceedings also adds to the backlog of patent prosecution at IPO. These opposition also may delay in the grant of the patents. Furthermore, a pre-grant opponent may also file a post-grant opposition after the patent grant. The opponent may also file IPAB appeal if not satisfied by IPO decision.

For any query related to opposition system in India, please feel free to contact at info@effectualservices.com.

Authors:

Dr. Amit Goel (Director) can be reached at amit.goel@effectualservices.com

Jyoti Chauhan (Manager)  can be reached at jyoti.chauhan@effectualservices.com

Effectual Services is one of the fastest growing Intellectual Property Management Advisory firms offering IPR services (trademark, copyright, design and patent) and knowledge research services to Fortune 500 companies, law firms, start-ups, research institutes, universities, and venture capital/PE firms.

 

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Patent issues leading to unprecedented growth of IoT companies

Written by adminDecember 27, 2019

It is unclear today how to draft a patent framework that allows seamless communication between IoT devices manufactured by different companies adhering to different standards

IoT products are a major component of Industry 4.0 which brings together advances in computational power, wireless communication, AI, and data to build a vast technology infrastructure that works nearly autonomously.

The size of the IoT market is expected to grow spectacularly over the next decade. Globally, by 2020, it is expected to reach $7 trillion, and in India $9.2 billion.

Huge advances in manufacturing have allowed even small manufacturers to produce relatively sophisticated IoT products. This brings to the surface issues of patents governing IoT products and communication standards governing devices.

Patents in IoT space present opportunities

Until now most manufacturers of IoT products sought patents on physical products, the configuration of devices and their structures, output, and operation. Most IoT devices work within electronic products, healthcare products, and household products. Patenting products in which IoT devices can be used could potentially stymie the growth of the IoT industry. Thankfully examples set by some of the largest technology companies in the world including Apple, IBM, Samsung, and Qualcomm reveal there is a wide range of products that can be embedded with IoT devices.

New IoT products are regularly conceived and their function cannot be patented. Hence a tiny IoT capsule that upon being swallowed, captures and relays images from inside the human body cannot be patented. This allows companies that didn’t conceive of an IoT product to also manufacture a somewhat identical device. Functions for which IoT products can be created are numerous as well.

Patent issues leading to unprecedented growth of IoT companies  By Amit Aggarwal
Co-Founder and Director, Effectual Services

https://cio.economictimes.indiatimes.com/news/internet-of-things/patent-issues-leading-to-unprecedented-growth-of-iot-companies/70877591

Article was 1st published On ETCIO

 

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Patent filing Procedure in US

Written by adminSeptember 12, 2019

US Patent and Trademark Office (USPTO) is one of the oldest patent offices in the world. For obtaining a Patent, two types of patent applications can be filed:

  • Provisional:- It is a quick and less expensive means of filing application however, it only survives when a regular non-provisional patent application within one year is filed.
  • Non provisional/Complete:- It is the final application on the basis of which the patent is granted after being examined by a patent examiner.

Also there are 2 types of patent applications in US- Design patent, Utility patent

1) Preparing a patent application

The first thing in patenting of the invention is preparing a patent application.  There may be different requirements which may be complied depending on it is design patent or it is utility patent. The requirements may be complied and written description, claims and drawings are drafted carefully.

There should be effective communication between the inventor and the person who may be drafting patent specification. The patent application should disclose al relevant details. It should meet § 112 enablement and also it should meet best mode for carrying invention.

Another important step in preparing a patent application is identifying true inventors who contributed claims of an invention in actual sense.

2) Filing

Filing of Non Provisional Application

Although a non provisional utility patent application can be filed through the Office’s electronic filing system called EFS-Web, delivery by U.S. mail, or hand delivery to the Office in Alexandria, Virginia. However, if the application is filed via mail or hand delivery, it would incur extra payment of $400 called “non-electronic filing fee” subject to certain exceptions.

Filing of Provisional Application

A Provisional Application is not require to have a formal patent claim, an oath or declaration, and information disclosure statements as such application are not examined. It is helpful in establishing an early effective filing date in a later filed non provisional patent application filed. Corresponding non provision application has to be filed within 12 month of the filing of the application of provisional application.

The non-provisional utility patent application will be along with transmittal forms and application data sheets. The filing receipts is issued by USPTO (United States Patent and Trademark Office)

The patent filing fee may vary according to the size of the application, claim no.s, whether it is paper-filing or electronic and whether the applicant is a small entity or company etc.  The filing fees may be reduced in half for small entities.  A small entity is an individual, a small business (500 or fewer employees) or a non-profit organization subject to certain limitations.  The filing fees may be in the range of $1,000, or $500 for small entities.

3) Publication of Patent Applications

Publication is done after the expiration of an 18-month period following the earliest effective filing date or priority date claimed by an application. After the publication, applicant gets the provisional rights.

4) PROSECUTING APPLICATION-Examination of Applications and Proceedings in the USPTO

In the examination, the concerned application is tested on the parameters of patentability, its compliance with the legal requirements and if such application satisfies a patent is granted. At the time of examination, the Patent Office will issue the Examination Report (FER) / Office Action with a set of objections/requirements response to which must be filed within at least 2 months from the date of issue of the FER. The patent attorney may file response no later than 6 months after the date of the First Office Action.  Patent Examiner will set “shortened statutory period” to respond, which is usually 3 months for an Office Action. The shortened statutory period is the time in which you can respond without having to pay a fee to respond. You can respond up to 6 months but only if you request AND pay for an extension.

After prosecution is over, one can accept some claims which are allowed, or all being rejected or all being allowed. In many situations, few claims will be allowed and few may be rejected. There is also another provision of “Request for Continuing Examination (RCE)” where the prosecution gets restarted.

5) ALLOWANCE

United States Patent and Trademark Office(USPTO) access the patentability aspects of invention and if found patentable, it sends a Notice of Allowance to the applicant.  It may include requirements to be met by the applicant before the patent gets issued, but the requirements are more formalities rather than substantive requirements. In response to notice of allowance, the applicant do correct formalities and pay the issue fee accordingly.  The issue fee is reduced in half for small entities.

6) ISSUANCE

Once USPTO receives issue fee, it assigns a patent no. to the patent application and the same application in published in official gazette being published weekly.

7) MAINTENANCE/Annuities

Annuity for 3’rd year onwards is to be paid after grant of the Patent. Protection of the Patent is for 20 years from the International Filing Date.  The maintenance fees are not applicable for Design patents.  The maintenance fees are due 3.5, 7.5 and 11.5 years from the date of filing of original patent grant. The maintenance/annuity fees are reduced in half for small entities.

If you have any doubts or questions about the patent process in US, feel free reach out at Info@effectualservices.com

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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.

 

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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.

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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.

 

 

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Compulsory Patent License Regime in India

Written by adminAugust 29, 2018

Preface
According to “The Paris convention of 1883” each contracting state had to take legislative measures providing for the grant of compulsory licenses to prevent the abuses which might result from the exercise of the exclusive rights conferred by the patent. Further, the compulsory licensing of pharmaceutical products was addressed by the Doha Declaration which allowed members to issue compulsory license to export generic versions of patented medicines to countries with insufficient or no manufacturing capacity in the pharmaceutical sector.

Many developed countries had effectively applied the concept of compulsory licensing and after Doha Declaration which addressed the concerns related to public health various developing and less-developing countries have also adopted it.

Indian Framework
The existing legal framework for the issue of compulsory license in India is comprehensive and meets all the obligations provided under Article 31 of TRIPS. According to the compulsory licensing system, the controller is empowered to allow third parties to manufacture and market a patented product or process with or without the patentee’s consent.

The Indian regime incorporates provisions for the grant of compulsory licenses to any person interested on request in case of;
a. Non-working of patent,
b. Reasonable requirement of the public are not met and,
c. Non availability to the public at a reasonably affordable price

In deciding on application for compulsory licences several factors are considered by the controller including the nature of the invention, the time which has elapsed since the sealing of the patent, the measures taken by the patentee to make full use of the invention, the ability of the applicant to work the invention to the public advantage, and the applicant’s capacity to take capital risk.

Compulsory license may also be granted to third party for manufacture and export of patented pharmaceutical products in certain exceptional circumstances wherein any country has insufficient or no manufacturing capacity for the concerned product, provided compulsory license has been granted by such country or such country has, by notification, allowed importation of the patented pharmaceutical products. Further, in order to prevent re-imports of products so exported are identified by special color, packaging etc.
Additionally, if the government is satisfied, then without the consent of the patentee the controller may in case of national emergency, extreme urgency or public non-commercial use including public health crises or other epidemics may grant a compulsory license to third party to work the invention.

While settling the terms and conditions for granting a compulsory license the controller endeavor to secure that the royalty and other remuneration reserved to the patentee is reasonable and the patented invention is worked to the fullest extent by the licensee. Moreover, the license granted is a non-exclusive license and non-assignable for the balance term of the patent unless a shorter term is consistent with public interest.

Conclusion
Compulsory licensing provisions are foreseen as sustaining a balance between the needs of technology consumers and innovators. In a developing country such as India, compulsory licensing is probably the most effective safeguard against the potential abuse of monopoly by patentees. However, while the provisions and procedure are detailed under the law, only one compulsory licences has been issued in India till date.

 

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Blog, Compulsory Patent License, Hi Tech Patent Litigation, India, Intellectual Property, IP Litigation, Patent, Pharma- Biotech- Patent Commercialisation

Common Errors found in Patent and its Implications

Written by adminAugust 29, 2018

It can be very costly to fix errors in issued patents, which are often left over in a patent, during its drafting or prosecution; some errors, for example, incorrect dependencies in claims, might significantly limit even the scope of the patent or lead to its revocation post grant. Sometimes extra fees, delays, denial of patents, or invalidation of awarded patents results due to errors in patents. Therefore, it is very crucial, although a laborious task, to proofread patent applications to identify discrepancies in patent claims and specifications, such as missing antecedent references, claim numbering, incorrect status indicators, or inconsistent numbering of the claims.

Errors in a patent are diverse; and are of varying nature depending on the stage they are crept in –
Beginning with the Face Page which constitutes the bibliographical information, errors in this segment are critical in nature such as incorrect names of inventors, attorneys or assignees (generally spelling mistake), or missing any amendments during the prosecution, such as change of the names of the above or insertion or deletion of the same. Similar is the nature of errors in case of specification, drawings and claims.

The impacts of the errors in the various parts of a patent are different. Any error on the face page is potentially grave in nature. Error in the priority information might lead to serious repercussion which even results in abandonment of a patent. Similarly, errors in the names of inventor, attorney, assignee are very crucial part of a patent which might cause confusion if found incorrect.
Another kind of errors are found in List of references cited, they are also very critical as incorrect or any missing citations may jeopardizes the validity of the patent, leading to conclusions such as the invention is not novel and has been cited earlier.

As the component must be depicted generically in the drawing, errors in the specification and drawings are equally important and any omission of any one of these component parts or wrongly incorporated components or any spelling mistake may misrepresent the invention or even change the scope of the invention.

It has been at times seen that reference numerals in drawings which pictographically explains the invention refers incorrect components in the invention -.

Claims are the part of a patent specification that defines the legal scope of the protection sought by an inventor. USPTO requires that, each and every claim must be clear and concise and supported by the description. Hence, it is the most essential constituent of the patent and any error in this part of the patent such as incorrect dependency, missing claims and inconsistent numbering of the claims can impair the enforceability of the patent and can prove detrimental to the interests of the owner of the patent incurring financial losses as well.

Errors in the patents might prove fatal and bring uninvited trouble to the owner of the patent. So, in order to avoid such unpleasant circumstances proofreading of a granted patent or a patent application becomes inevitable.

Effectual Services (www.effectualservices.com) patent proofreading process follows an extremely detailed analysis of a patent’s prosecution history to identify any PTO or applicant errors. Our team members run thorough manual as well as automated checks simultaneously to ensure that a patent is free of any errors. Our proofreaders have in-depth knowledge of Patent laws and are also trained in Patent drafting best practices for various jurisdictions, including US and EP.

We also prepare ready to file Certificate of Correction that can be filed with the PTOs saving your precious time.

For more information, please write to us at info@effectualservices.com

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Blog, Brand Valuation, Compulsory Patent License, India, Intellectual Property, Patent

Benefits of filing a provisional patent application

Written by adminAugust 29, 2018

A provisional patent application is an interim utility patent filed with a patent office. A provisional patent is filed without including any claims, oath or declaration, or any disclosure statement. A provisional patent application gives you protection on your invention for one year only and after that you must file for a non-provisional or regular patent application or abandon your patent. It also allows the term

“Patent Pending” to be used, which acts as a deterrent to likely infringers.

Provisional patent application also acts as a low-cost alternative or a preliminary step before filing a non-provisional patent. It gives one additional year of protection or grace which is normally enough time for an inventor to evaluate the market potential of his invention and to get investors on board.

A provisional patent application has numerous advantages over regular or non-provisional patent application. The foremost being the priority date. An earlier priority on a patent application could be a game changer for a breakthrough invention. Moreover, since the cost involved in drafting and filing a provisional patent application is generally 1/4th of a regular application, therefore it serves as a cost effective, legitimate and credible source of getting your invention registered with a patent office.

Another advantage of filing a provisional patent application is the tenure of protection that your invention enjoys. A provisional patent application gives your invention a total tenure of 21 years which otherwise would be 20 years if you first file a regular or non-provisional patent application.

Further, the paperwork involved in filing a provisional application is minimal and easy. You don’t need any legal knowledge or skills to file a provisional application. Though it is recommended to involve a firm or patent agent/attorney, but in case you don’t wish to, a provisional application can easily be filed online directly with the patent office.

One precaution that has to been taken with a provisional application is the cutoff date. The provisional application automatically expires at 12 months and one has to file a regular or non-provisional application before that. In case you miss the deadline and don’t act within 12 months you not only loose the priority date but even lose the right to patent that invention.

To conclude, it is very convenient, easy, and inexpensive to file a provisional patent application and the associated benefits are immense. Therefore, it is recommended to go for a provisional patent application filing as soon as possible.

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