Patent is a set of exclusive rights granted by a state (national government) to an inventor or their assignee for a limited period of time in exchange for a public disclosure of an invention. Patent rights are territorial i.e. the patent granted in India is valid only in India. To have protection in other countries, inventor is required to file patent application separately in other countries too.
Important considerations before filing for a patent are as below:
For an invention to qualify patentability criterion, one has to look into the following aspects in the invention:
Though there are several factors which determine purpose and use of filing for a patent, in order to actually realize benefits of filing a patent application it is critical to analyze following prime factors:
If invention is not in market, often inventors feel that it is novel and there is no need to perform patent search. Patents are a great source of technical information and it makes lots of sense to check them to assess state of art before filing for a patent. Patent law expects invention to be novel, inventive and industrially useful, hence, before proceeding with filing a patent application, make sure that invention fulfils these criteria. Though patent officers are final authorities to decide on patentability of the invention but still such assessment of patentability can certainly be done with help of a patent attorney who knows subject matter well. Even if the search reveals that invention is not novel, results of a patent search gives you fairly a good idea and roadmap on how much is already done by others and how to develop your invention further.
Provisional application shall be filed if invention is at the stage of idea or if it is critical to claim earliest priority date or if funds need to be arranged in short period of time. However, if experimental results or prototype is ready, it is good idea to file complete application to save cost of drafting provisional application. Often patent attorney will take longer time to draft complete application and therefore, if date of filing is critical, one may opt for provisional application.
It is worth noting that if inventor is resident of India, he shall either file application first in India and wait for 6 weeks before foreign filing or take permission from Indian Patent Office for foreign filing. If one fails to do so, he may be punishable with imprisonment for a term which may extend to two years, or with fine, or with both. For foreign filing of patent application, one may select either filing PCT application or convention application. However, countries where the patent application shall be filed shall be selected very carefully and one shall file only in the countries where there is a market. Filing without reason in undesired jurisdictions results in wastage of money and time.
Work out on commercialization options as soon as you file application because technology is growing really fast and losing upon the time may not fetch desired attention in the market. You may either opt for commercializing on your own in case you have capacity and willingness to manufacture and sale invention or transfer your rights to someone who has capacity to commercialize your invention. You may transfer your rights by means of license or assignment that shall be in writing and executed in the form of a valid deed.
I am sure most of patent practitioner will agree with me that it is really tough to convince and communicate to the inventors that after filing for a patent, when they actually plan to launch the product in market, it is necessary to check if they are not infringing third party (ies) intellectual property rights. Clearance search, also called as freedom-to-operate search is extremely necessary to minimize risk of infringement of third party (ies) patent rights upon product launch.
See our video: 5 steps before filing for a patent
There are different types of prior art searches based on the different purposes, and can be broadly classified into the following categories:
Patentability search or Novelty search is the most common type used to assess patentability of the invention. Patentability search can be performed during the development of an invention, but is also recommended to perform prior to submitting a patent application. This search involves reviewing prior art pertaining to the subject matter of the invention from patent and non patent literature. Even though patent rights are territorial, patent search is performed globally, using various paid and free search engines.
FTO search also known as Clearance search is a non-infringing search. Performed before commercializing the invention to check if the use of the present invention is non infringing. This search is performed prior to the launch of a new product or a service to check the patents that are in force in a country, and to ensure that upon launching the product, the company is not infringing any patents of third party. FTO search are limited to patents which are ‘in-force’ and also done jurisdiction-wise. Therefore it requires an in-depth analysis of the claims and legal status of the patents relating to the product, also, FTO analysis is based on the countries or regions the company wants to operate. If the company wants to launch products in the US, FTO is required to be done in the US alone but if the products have to be exported to four other countries, FTO shall be done in other four countries as well.
Validity/invalidity search is performed to determine whether a patent issued on an invention is valid or not in view of prior art. This search is performed mainly to either validate or invalidate one or more claims of a patent, i.e. when a search is performed to validate the claims of a given patent, it is called Patent Validity Search and when a search is performed to invalidate the claims of a given patent then it is called Patent Invalidity Search.
The State of the Art search is the broadest and the most general of all types of patent searches. It is essentially a market survey that ideally finds out what technologies already exist. State of the Art search results are valuable in many situations especially when a company is contemplating entry into a particular field of art. The State of the Art search results may provide concrete evidence of the advisability of such a decision. To a company that is currently active in a particular field of art, the State of the Art search results may lay out the path that must be followed to design around the current art.
Technology landscape is an in-depth analysis of patents to understand the technology evolution, major players, current and upcoming competitors and changes in the timeline trend. The main purpose of technology landscape is to identify the white space or gap in the technology and it provides a comprehensive scope to plan the future R & D, leading to innovative projects to bring out new products/process in an industry.
The main purpose of technology landscapes study is to understand the technology trends, strength of competitors, to learn latest technology advancement and analyse the patent activity related to technology of interest. Based on technology landscape analysis, appropriate IP strategy, complaint with business strategy is devised for the companies because a good IP strategy is a critical part of business plan and growth at any stage. Timely patent search is important not only to assess chances of getting a patent but also to plan research and development in an organization and know competitors in the same area of technology. It is good idea to perform patent search at the stage of idea itself to save time, money and to have better quality of research output.
Main stages from filing a patent application till the grant of a patent are as follows:
A complete or provisional application can be filed at the Indian Patent Office in order to claim earliest priority. Foreign Filing Permission is required from Indian Patent Office in case one doesn’t wish to file in India. In case where a provision application is filed, the complete application has to be filed within 12 months from the date of filing a provisional application.
After the expiry of 18 months from the date of filing, the application will be published by patent office. Date of publication is very significant as upon publication the invention forms part of prior art.
After publication, the application is taken up for examination; an examination report is sent by the examiner and has to be replied in a given period of time.
After replying to the examination report, applicant may hear for grant of the patent. This is the time to pay for annual renewal fee to maintain the patent, and subsequently grant of patent is published.
A Trademark is a mark capable of being represented graphically and which is capable of distinguishing the good/services of one person from those of others. A trademark may include a word, letters, numerals, a device, brand, heading, label, ticket, name, signature, shape of goods, packaging or any combination of colours. A trademark constitutes rights to lawfully use a heading, label, name, signature, symbol, word, letter, numeral, shape of goods, packaging or combination of colours. which identifies a product/goods or services of a known source.
To identify goods or services of one proprietor and separate them from goods or services of others. one of the main function is to protect the public against confusion and deception by identifying the source of origin of particular products/Services by distinguishing it from other similar products/services.
Any person “claiming to be proprietor” of the mark may make an application for registration of his trademark. Here, any person includes any individual, Company, association of persons , society, partnership firm, Trust and Joint applicant.
A trademark agent/attorney helps the client in the following manner
No, it is not necessary. But registration of a trademark provides legal rights for the use of certain distinctive marks or logos for their products or services and also prevents others from using deceptively similar marks.
A trademark is registered for a period of ten years, after which it can be renewed for an additional ten years.
In order to have a distinctive trademark, use fanciful or coined terms or arbitrary marks.
No. Trademark registration is territorial in nature. Separate applications need to be filed in each country where you wish to register your trademark.
There is no global/International trademark registration/protection procedure. There are some international treaties under which one can file international trademark application in more than one country by a single application and that is valid for the countries who have signed the treaties.
Under Madrid protocol a trademark can be protected in many countries by filing a single application for International Registration. Such application is presented to the International Bureau of the WIPO (World Intellectual Property Organization) at Geneva, through the office of Origiin i.e. the Trademark office of the applicant. There if the application complies with the applicable requirements, the mark will be recorded in the International Register and published in WIPO Gazette om international Marks. The International Bureau will then notify each Contracting Party where protection has been requested in the international application.
If you want to go for filing under Madrid protocol, you need to file a basic application in the home country first. Based on that trademark application, one can initiate the application in foreign countries.
By applying through Madrid protocol will hassles of applying to each country individually. Still in the Madrid application, one needs to mention the name of the countries where he wants to apply for trademark. The fee depends on the countries to which applicant need to apply. The application is first evaluated and approved at WIPO and then forwarded to individual countries. These countries then examine the application according to their own procedure and regulations. Prosecution in these countries, if required, have to be handled directly and there is no WIPO involvement in prosecution.