Blog, Compulsory Patent License, India, Intellectual Property, IP Licensing, IP Litigation, Patent

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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Blog, Brand Valuation, Design, Digital Right Management, Hi Tech Patent Litigation, India, Intellectual Property, IP Licensing, IP Litigation, Trademark, Trademark Litigation

Trademark Filing in India- Importance and Analysis of the Market

Written by adminDecember 27, 2019

The Government of India has been taking significant steps to develop favorable arena for Trademark filing. With registered trademark, one can stop others from using the trademarked business name/logo/word with respect to goods or services. Trademarks serve as a mark for identification of good or services and provide a better way to reach out to the huge audience. Trademarks influence the customers’ purchasing decision, reputation and acceptability such brands represent. Trademarks function as a valuable asset as they serve as a life-long support for business expansion. Even the giant companies like Apple protect their important assets for the business by means of trademark.

Recent amendments in Trademark Rules 1999, notified in March 2017, not only simplified the trademark registration process but also removed a number of redundant provisions thus making the overall process extremely user-friendly. Major changes that were brought in by Trademark Amendment Rules 2017 include –

1) reduction of number of Forms needed to be filled from 74 existing forms to 8 consolidated forms.

2) Single application form isrequired to file all type of trademark applications.

3) inclusion of online mode of service.

4) concession in fees to start-ups, individuals and small enterprises.

Trademark Filling in India- Importance and Analysis of the Market By Amit Aggarwal
Co-Founder and Director, Effectual Services

http://www.licensingcorner.com/know-how/trademark-filling-in-india-importance-and-analysis-of-the-market/

Article was 1st published On Licensing Corner

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Blog, Brand Valuation, Design, Digital Right Management, India, Intellectual Property, IP Licensing, Patent, Patent Infringement

How patents have transformed the Health Care Sector

Written by adminDecember 27, 2019

Currently India is aggressively adopting ‘Smart life’ where everything is driven by smart technology like artificial intelligence and IoT, but a grave reality still haunts most of the population is lack of basic healthcare facilities.

Currently India is aggressively adopting ‘Smart life’ where everything is driven by smart technology like artificial intelligence and IoT, but a grave reality still haunts most of the population is lack of basic healthcare facilities. In recent years, many projects and initiatives have been undertaken to improve the quality of life of common people, however, more concrete steps are still required to achieve the dream of ‘Healthy India’.

In a developing country like India, cheaper drugs & affordable healthcare infrastructure models can work wonders because the more it is affordable the more it is accessible. To make things affordable, we need innovation in drugs, developing therapeutic domain and building healthcare facilities. In last couple of decades India has developed a strategy of delivering highest quality drugs at lowest cost to patients within the country and other developing ones.

India revised the patent regime in pharmaceutical sector to comply with the WTO agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPS) in 2005,which excluded certain types of chemical entities such as polymorphs and salts combination of drug patentability so as to prevent patent ‘evergreening’ by large pharmaceutical companies, which can make drugs unaffordable to the general population. Below are the changes that Indian Pharmaceutical Industry has gone through during the pre-compliance (till 2005) and post compliance(after 2005) phases. Read More

How patents have transformed the Health Care Sector By Amit Aggarwal
Co-Founder and Director, Effectual Services

https://health.economictimes.indiatimes.com/news/industry/how-patents-have-transformed-the-health-care-sector/68721028

Article was 1st published On ETHealthworld

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Patent Services- Trends and Analysis Transforming the Smartphone Industry

Written by adminDecember 27, 2019

Smartphones Industry has taken the technological market by storm in India, with an urban audience, generally categorized as millennials, keenly observing the market and waiting to get their hands on every piece of new technology that comes bundled within the new smartphones. From “feature phones” constructed chiefly for the purpose of placing and receiving calls, to “smartphones” capable of overpowering computers, the journey has involved a lot of innovation and patent rights have performed akey strategic role in protecting those intellectual breakthroughs against unfair use.

The patent portfolio of a tech driven organization, along with its various intellectual property assets such as designs, trademarks and copyrights, is vital for its future success. A growth strategy aimed at strengthening the innovative capabilities of domestic firms and businesses can go a long way in ensuring a sustainable competitive advantage for domestic firms with the help of a strong intellectual property regime. Companies are able to invest in R&D of these technologies primarily because of the security and promise of the economic returns that these patent rights provide to their inventions.

Smartphone wars: The Patent battles
The patent rights, generally seen as a means of protection against unfair use, have also served as weapons used by the behemoth Smartphone companies in the infamous “Smartphone wars”. What kick-started in 2009, with Nokia suing Apple for using some of its SEP’s (Standard Essential Patents) without paying, has been followed by major wars between leading companies, the prominent ones being the series of lawsuits between Apple and Samsung and the numerous lawsuits launched against Google by an alliance of tech enterprises like Microsoft, Apple, BlackBerry, Sony, and Ericsson under the name “Rockstar” to de-throne the largest search engine in what is described as the “nuclear attack” in the patent smartphone wars.

The great deal of lawsuits involving telecom patents also justifies the interest and investment of handset and OS providers in the R&D of communication technologies, as a significant portfolio of communication patents would provide a stronger defense to companies when patents are asserted against them. As a matter of fact, this technology space created by the patent rights has
taken us from the slow-moving 2G communication phase to the point that 5G communication testing has already started in some countries.

A research indicates that a large proportion of the smartphone patent wars are associated to mobile data access, touch screens and transmission of mobile data, each of which has a different company dominating the patent portfolio.

Smartphone Patents: Pros and Cons
All the major tech-giants, now own a substantial smartphone patent portfolio. And while this level of patent activity is a positive indicator of innovation in the field, those who doubt the significance of patents argue that patents lead to hike in the prices of smartphones, and are scared of the consequences of sending legal threats and enforcing patents. Other than this, one might also find a group of individuals who see the smartphone-related patents as a means that harms the innovation.

However, there’s no concrete evidence to support the statement that patents have harmed innovation in the industry. In fact, smartphones have advanced quickly than any other consumer product over the past decade, and have seen a fair share of innovational breakthroughs from multiple-screens to curved screens, all thanks to the protection offered by the patent rights.

Citing a real world example of the importance of intellectual assets, the single thing that kept its boat afloat at the point where Nokia had completely lost its monopoly over the cell phone market was the revenue generated from the licensing of patents that it had filed over the years. Standing somewhere between the winners and the losers that were downgraded to has been as a result of the smartphone wars, the company’s timely focus on developing a strong IP portfolio paid off when it failed to develop products that could keep pace with the rapidly-changing smartphone market at the time.

Smartphone Patents: The Indian Landscape
In the past few years, India has emerged as a favorite destination for all the major Smartphone companies, be it the Chinese Smartphone brands like Vivo, Oppo, Oneplus, Xiaomi etc or the global leaders like Samsung, Apple etc. A detailed look on the patent activity of these companies in the country, however, reveals a complete different story. Vivo and Oneplus does not have much patent activity, thanks to the patent filings of their sibling Oppo in the country, which makes it easier for them to use all those technologies without any fear. Another Chinese giant, Xiaomi also has very little presence when it comes to patent filings in India, a lot lesser that their Chinese patent portfolio and have been sued by Ericsson for patent infringement during the days of its dawn in the Indian market. Even the players of the big leagues like Apple have very few filings in India.

Conclusion
The smartphone industry has been driven by the active involvement of patent rights since the beginning. And while the filings by the leading companies are mostly done from a defensive perspective, the virtues offered by building a strong patent portfolio can be seen in the results of the past smartphone wars where the winners walked away with billions while some of the losing parties completely lost their grip of the market. Talking about the patent activity in the Indian market, the Government needs to scrutinize intellectual policies to drive filings by the big players, as a good manufacturing hub has to have filing by the big players of the game.

To sum up, patent services have played a crucial role in the growth of the smartphone industry since the beginning and will continue to water this ongoing technology sector especially during the upcoming phase where most of the companies are unlocking their innovational potential and working towards the age of folding screens and complete display smartphones.

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Blog, Brand Valuation, Hi Tech Patent Litigation, India, Intellectual Property, IP Licensing, IP Litigation, Patent, Patent Infringement, Patent Opposition, Press Releases, Uncategorized

EFFECTUAL SERVICES – BS Best Places to Work in 2019

Written by adminOctober 24, 2019

To foster innovation and creativity, intellectual property (IP) must be protected. Creations of the mind, such as names, symbols, new technological processes, etc. can be protected through patents, copyrights and trademarks. In an era of start-ups and unconventional career paths, an awareness of laws that protect intellectual property can go a long way in boosting the economy. The IP industry also plays an important role in keeping public interest in mind, while at the same time enabling organizations to profit from their ideas and innovations.

Effectual Services performs this very task of striking a balance. The organization has grown to become one of the most trusted partners offering IP support solutions to a number of companies. It has helped clients in generating ideas to produce sustainable solutions regarding patents and trademarks. It also offers high level strategic consulting services that helps mitigate risks in the decision making process.

Collaboration:

Effectual Services caters to clients from 22 countries across 5 continents, including 55 of the Fortune 500 companies, and offers support across various disciplines. The organization’s mission is to respect all stakeholders and encourage collaboration. It also works with several SME’s to protect their innovations from bigger sharks in the industry and ensure revenue gains.

Awards & Achievements:

Since its inception, Effectual Services is leading the IP industry, and has been recognized for its contributions.

  • Founder Amit Aggarwal have been listed in IAM Strategy 300: The World’s Leading IP Strategists 2019.
  • Awarded Deloitte India Technology Fast 50 Awards – 14th fastest growing company in India in 2014.
  • Awarded Deloitte Asia Pacific Fast 500 Awards – 124th fastest growing company in Asia Pacific in 2014.
  • Awarded Red Herring – Winner of Asia Top 100 Award in 2015.
  • Received “IP Excellence in India” in 2018 & 2019.
  • ISO 27001: 2013 – Information Security Certified.
  • Member of IFCCI since November 2017.
  • Member of IGCC since December 2017.
  • Member of IACC since March 2018.

Services

  • Patentability / Novelty Search
  • Invalidity Searches / Claim Charts
  • Clearance Searches
  • Patent Proofreading Services
  • Evidence of Use

Team:

Effectual Services consists of a team of driven, highly experienced employees who perform with excellence. The organization exudes trust, and has encouraged loyalty in its employees, many of whom have been working with the organization since its inception. Employees hold the organization’s mantra, “Client Centricity, Ethics & Integrity, Innovation & Integrity, Ownership, Respect & Collaboration” close to their hearts. A unique feature is the existence of “quality circles” who meet to discuss problems, and brainstorm solutions. The work culture is healthy with a democratic leadership style, where each one is encouraged to express their views and ideas, to grow both professionally and personally. A platform is also given to individuals to blow the whistle, ensuring complete transparency.

A special feature of the organization is its “Team Off Sites”, where people can bond and simultaneously break the monotony of their work life which leads to enhanced productivity. Thus the organization encourages freedom of expression and high levels of engagement in all its activities.

Founder:

Mr. Amit Aggarwal has 17+ years’ experience, and is focused on creating awareness of the industry in India, especially among students. Venturing into a relatively new industry was a brave risk. Building a team of 175+ analysts from scratch, and encouraging and informing parents and employees about the scope of a new industry has also been challenging. But, with democratic leadership, the organization has overcome every hurdle and has become a trail blazer. Ideas also had to be generated on expediting the training while maintaining employee effectiveness and mentoring students. Ensuring consultancy services are fact driven and result oriented has also added to the value of the company. Thus as a founder, Mr. Aggarwal’s vision and leadership has played a vital role in every decision taken by the organization.

The organization’s vision, “to be the most innovative business partner serving the knowledge economy, by attracting and nurturing the best global talent”, lays down the perfect road map to achieve its goals in the future.

CSR:

Effectual Services has organized social awareness sessions for employees, conducted drives on the environment and supports underprivileged children. Tie ups with NGO’s and orphanages also help the organization make a positive impact on society.

Future Ahead:        

The organization plans to expand to other locations, especially in Europe, Asia and Australia. It also plans to expand vertically by pairing up with like-minded organizations or investing in new business opportunities. It considers collaborations a significant aspect in expansion. Working with more Fortune 500 companies to help craft IP strategies, and also save SME’s from frivolous litigation by NPE’s is a key concern for the organization.

With utmost dedication and firm belief in the consultancy services they provide, Effectual Services has overcome several challenges and made a lasting impression in the IP industry, and continues to do so.

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Blog, Brand Valuation, Digital Right Management, India, Intellectual Property, IP Licensing, IP Litigation, Patent, Patent Infringement, Patent Opposition

As 5G, IoT Patent filings rise, litigations Go up too

Written by adminSeptember 12, 2019

Since India is becoming a hot-bed for IoT and 5G based filing, we may soon see a litigation war here too.

Internet of Things (IoT) represents a whole world of connected objects that talk to each other at a whirlwind speed that never falters. The applications and benefits of this niche technology are multifold as it has the potential to revolutionise the world that we live in.

Amit Aggarwal, co-founder and director of Effectual Services, an intellectual property (IP) management advisory firm, says: “According to tech experts, by the year 2020, IoT devices will generate data accounting to 5 quintillion bytes every day.” According to him, the tech world is rooting for 5G as the superpower for handling such extensive data as it has the potential to connect everything together. The key reason for bidding on 5G technology lies in “The Cloud”, where the massive amounts of data from IoT can be stored, processed, and fed back to users, he insists.

Artificial Intelligence (AI) has to be the brain digging through the pile of IoT data. AI has the ability to quickly deduce insights by automatically identifying patterns and detecting anomalies in the data that these smart devices generate. Gartner predicts that by 2022 more than 80% of enterprise IoT projects will include an AI component.

Aggarwal says, “Exploring the intellectual real estate, we observed that each of these technologies has significant patent filings of its own. For IoT patent filing, the key foreign corporates such as Samsung, Qualcomm, Nokia, Ericsson, LG, top the ladder. A few Indian origin companies such as Wipro, Tata Consultancy Services, HCL Technologies are also making it to the top list. The 5G patent filing activity also is in good shape with industry behemoths joining the race.”

Further, within AI, more than 300,000 patent applications have been filed, he says. For patent filings involving the integration of these domains—Samsung is filing multiple patents which involve using 5G network for IoT communication and AI implementation in IoT for smart home, health care, etc.

“This growing filing trend in these domains has also initiated a litigation war worldwide. Litigation studies show that during 2013-18, the cumulative number of IoT-litigated patents witnessed an increase of more than 400%, with a sharp spike from 2017 to 2018,” he informs. Further, patent assertion entities (PAEs) are acquiring IoT, 5G and AI patents, which they will likely monetise, assert and litigate over the coming years.

“Based on our analysis, we expect to see an increasing number of patent litigation as 5G inches closer to seeing the light of the world. Since India is also becoming a hot-bed for IoT and 5G based filing, it might soon find its troops marching towards the litigation war,” he summarises.

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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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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.

 

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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.

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Blog, Compulsory Patent License, India, Intellectual Property, IP Licensing

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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