Patent

Patents are at the forefront of the innovation business. In a cut-throat market, no business wants to incur legal hurdles to R&D that may hamper its growth. We have a team of experienced advisors to help our clients cruise through such obstacles in order to effectively protect and monetize their inventions. Members of our multifaceted team are capable of considering the needs of and assisting clients ranging from individual inventors, startups and academic institutions to multinational corporations.

Our services include:

Patent Analysis: We provide advice related to global prior art searches, patent landscape, patent validity, infringement analysis, patentability opinions and freedom to operate searches.

Patent Drafting and Filing: We draft provisional as well as complete (non-provisional) patent specifications for submission to the Patent Offices of various jurisdictions. We assist the clients in obtaining patent rights in India as well other countries through Convention and PCT Applications.

Patent Prosecution: We are a team with vast cross-border experience and specialist knowledge of all relevant sectors and disciplines of science and technology to provide our clients with prompt and effective counsel on all patent matters. We are well versed with handing prosecution of patent applications before various Patent Offices. We also represent our clients in pre-grant and post-grant oppositions and revocation proceedings.

Patent Monetization: We help our clients to develop the best patent licensing strategies through an in-depth analysis of their portfolio and careful research of target industries and products.

Patents cover a wide range of subject matters, but what’s patentable and what isn’t differ between regions. In India, a variety of inventions are classified as non-patentable under Sections 3 and 4 of the Indian Patents Act. These range from a patent being frivolous or physically impossible [S. 3(a)] to it being an admixture or a rearrangement of existing substances/objects [S.3(e), S. 3(f)] to the patent being part of traditional knowledge [S. 3(p)]. The application must be examined carefully and worded so that it does not encroach upon any of these subsections.

The invention also needs to satisfy the criteria of novelty, non-obviousness/inventive step and capable of having an industrial application across all three jurisdictions.

Novelty requires that the invention had not been previously published. Sections 29-34 of the Act lists specific and time-limited exceptions for this limited publication.

Non-Obviousness/Inventive-step requirement in the Patents Act states that a feature of the invention must involve “technical advance as compared to the existing knowledge or having economic significance or both and that makes the invention not obvious to a person skilled in the art." [S. 2(ja)]

Utility or Capable of industrial application simply requires that the invention must not exist in the abstract and must have some sort of practical application.

A well-drafted patent application takes all of these criteria into consideration. The objective is to have minimal grounds for objections from both the examiner and potential oppositions. This both speeds up and simplifies the patenting process.

To analyse the requirement of novelty and inventive-step before applying for a patent, an applicant needs to search for all existing prior art that may be similar to their invention. This prior art can be anything from a published patent to a published paper- so long as it’s in the public domain. In case of prior publications with similarities to the proposed patent, the applicant needs to distinguish these publications from the applicant’s new invention.

Patent search is conducted on a global scale regardless of which country you’re applying from.

In India, a domestic patent application can be provisional or complete. The provisional application sets the priority date for your invention (so long as the provisional application discloses the matter of the invention fairly), and gives you 12 months from the filing date to apply for a complete application. It is advisable to file the provisional application as soon as physically possible in order to secure the date. The complete specification can then be drafted more carefully, particularly in terms of claims, which are what provides rights to the patentee.

Since it requires that each patent application is for a single invention, the applicant or examiner may prefer to split the application into two through a divisional application. A patent of division occurs if an application under prosecution is deemed to have more than one invention as part of it. All new applications arising from this retain the priority date of the original application.

Conversely, a patent of addition occurs if the applicant or patent-owner wants to make additional claims with slight modifications which don’t qualify for an inventive step. The patent of addition retains both the priority and expiry dates of the parent patent.

Once the complete specification is filed, the patent moves to the publication stage- once the patent is published, the applicant technically gets the rights and privileges as if the patent has been granted, but they cannot institute infringement proceedings till the actual grant. While the publication of the application automatically occurs after 18 months of the filing date, however, the applicant may also request for earlier publication.

An examination request must compulsorily be filed by the applicant within 48 months of the priority date. This request can be either a standard examination request or an expedited one (in special cases), as per the needs of the applicant.

Once the request for examination has been filed, the examination of the patent application by the patent office takes place. The First Examination report (FER) is then issued by the patent office, and the applicant can respond to any objections in writing within six or nine months (the latter on request) of FER issue. The Controller of Patents examines the response and grants the patent if satisfied. Alternatively, the Controller may issue a hearing notice where the applicant can attempt to justify the patent claims.

If the patent is granted, annual fees are required to be paid after the third year of grant throughout the life of the patent - ie, 20 years from the priority date. If the patent is not granted, the applicant may appeal to the Appellate Board for further considerations.

In the United States, a provisional application without a formal patent claim, oath or declaration can be filed 12 months before the non-provisional application is filed. As provisionals are not examined they need not include any information disclosure statement. Similar to other jurisdictions, this establishes an earlier filing date to be associated with the invention.

While the 12 month deadline between the provisional and non-provisional applications cannot be extended, if the non-provisional is filed within 14 months of the provisional an application can be filed with the USPTO for restoration of filing date. Needless to say, the latter path is not recommended, but it may sever to help out in a pinch. Instead of filing a new non-provisional, the applicant may also choose to convert the provisional into a non-provisional. However, as the patent term is granted from the date of filing of non-provisional, this is not recommended.

The USPTO also grants a one year grace period to inventors who disclose the patent in any form (publication, offer for sale, public use) for filing their provisional application. Note that this is usually not the case in other jurisdiction and a multi-national patent needs to take this into account.

In addition to utility patents, the US also grants Design and Plant patents. These are covered under Design and Plant Varieties in the Indian jurisdiction.

Once a non-provisional patent application is filed, they are moved to the queue for examination on a first-come first serve basis. Normally, the applicant may have to wait for about one to three years before the non-provisional is examined. Applicants have the option of filing (and paying for) an expedited examination request which can considerably shorten this waiting period.

Following examination, the applicant is issued the first Office Action. Most patents are initially rejected via the office action, and clear responses need to be formulated to convince the examiner that the patent is valid and fulfills the required criteria. While this response is normally given in writing, the prosecuting attorney has the option of conducting an in-person or telephonic review with the examiner with prior notice and payment. A patent may be granted following the office action and responses. If it’s not, the applicant can appeal to the Patent Trial and Appeal Board.

When patenting an invention in EU can apply either under the EPC (European Patent Convention) or the PCT (Patent Cooperation Treaty). If your invention requires patenting in only one jurisdiction it may be better to apply directly for a national patent in each of those countries.

An EPC Patent application can be technically filed in any language, but if the language is not French, English or German a translation of the application into one of these three official languages must accompany the original application. In additional, the applicant is required to confirm which states in the EU they want the Patent for by paying the required fees. While the EPC does allow for provisional applications, the applicant can apply for the priority date for Patents filed in the EU, USA, Korea or China within 16 months of the initial application. This is also available for any international patent application filed with the EPO as a receiving office. In case of claiming earlier priority, the applicant is also obliged to file the search results of the earlier application as soon as the applicant has access to them. The EPO also lists extensive disclosure norms that the applicant must follow.

Once the application is filed, the EPO sends the applicant a receipt acknowledging the filing date. The applicant must pay the required filing fees and search fees within one month of said date. There may also be additional fees, a complete list of which are provided in the European patent Guide.

The examination procedure for an EPC patent occurs in two stage. The first is an examination to see if all the procedural norms have been complied with. The second stage is the substantive examination of patent content and claims. At this stage written, oral, telephonic or video-conference representations may be made to defend the patent claims. Opposition claims can be made on the patent only after the grant in the EPC regime.

The Patent Cooperation Treaty (PCT) is a WIPO-based international treaty that allows an applicant to apply for a patent multiple international jurisdictions at the same time instead of applying individually to every country.

The PCT patent applications take place over two phases- the International phase and the National phases. The filing date of the international phase establishes the priority date. The application needs to be filed with the IPO receiving office, which forwards it to an International Searching Authority (ISA) which examines the application for patentability. International publication of noth the application and the ISA written opinion is made within 18 months of submission of the application. The applicant may then request a supplementary search. At the end of the PCT procedure, usually 30/31 months from the initial filing date (which qualifies as the priority date) the applicant can move to the national phase, where they pursue patent grants in each of the jurisdictions they want patent rights in.

In addition to examinations by the issuing authority, patents may also be subject to external oppositions. This is particularly so when it comes to highly competitive fields and popular technologies with huge potential market value. The exact system of opposition depends on the national regimes and may be either pre-grant, post-grant or both. The general idea is to offer third parties time-limited opportunities to oppose patent grants. The national laws also generally prescribe grounds for opposition, and the opposing party must specify said grounds.

Any opposition to the patent will be forwarded to the applicant, who can then present arguments to justify their position or comply with the objections of the opposing party. The examiner is the one who makes the final call on if oppositions and replies are satisfactory enough to grant or reject a patent.

Once your patent has been granted, you have a limited window of proprietary right over it. Patents can be monetized in multiple ways; the patentee may of course license, sell or turn patents into products. There are also less traditional ways of monetization, such as forming patent pools.

Patent licensing is when the patentee assigns the ownership of the patent to a third party such that they can use and sell inventions in return for a negotiated amount of royalties. A license can be either exclusive or non-exclusive. Depending on the nature of the patent and the market for it, one type of licensing is likely to be more advantageous than the other.

Licensing is important because inventors may not often have the time or resources to translate their work into marketable products. While it’s possible for inventors to be entrepreneurs, inventions in highly competitive fields tend to be backed by pre-established and well-funded business practices. In such cases, licensing allows you to monetize your invention while also minimizing the risk of having to enter a highly competitive market without an established brand or consumer base. Licenses may also be granted for limited time periods depending on risk assessments. For example, a patent that may soon be obsolete is better off being licensed for a longer period of time, while a patent with potential future use may be first licensed for a shorter period, followed by negotiating for more royalties on re-licensing. This, of course, is a risky process which involves analysis of both the technology and the market.

There may also be cases where party X’s patent is licensed to Party Y in return for Party Y licensing their patent to Party X. This type of cross-licensing may be advantageous in case of technologies which require the implementation of multiple patents in order for them to be marketed.

In addition to licensing, patents may also be monetized through enforcement.  Patent enforcement is a fairly tricky process, requiring both careful reading of patent claims and rigorous analysis of the infringement. Patent enforcement typically begins with negotiations with the offending party, and only reaches courts in case a compromise cannot be reached. Enforcing a patent is likely to be very expensive, so a cost-benefit analysis needs to be performed on the situation. It’s generally not advised to go for patent litigation unless your claim is strong.

Patent pooling is an attractive option for holders of technologies which need to be combined with other patents in order to be properly marketed. In this case, multiple patent holders form a patent “pool” which is then licensed out as a singular entity to larger corporations or producers.

When a patent holder wants to monetize their product it’s advised they come to an experienced patent professional with ties to the industry and knowledge of the existing technologies and market products. This allows us to leverage all of our knowledge into maximizing client profits.

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