What is a Patent? Why get an invention protected?

A patent is a set of exclusive rights granted by a state (national government) to an inventor or it’s assignee for a limited period of time in exchange of public disclosure of the invention.

A granted patent gives the owner a monopoly his/her invention and entitles the owner to prevent others from exploiting it. In most countries, patents can last up to 20 years from the date of earliest priority.

As an inventor, it is important to secure your rights in return for the time and money put in by you in lieu of your invention.

Patents are registered rights. To obtain patent protection, it is necessary to file an application with a detailed description of the invention and explain how it will work. Drafting a patent application requires considerable care and skill. Before a patent is granted, the application must first be searched by the Patent Office to see what has already been published in the same field; thereafter it goes through the stage of examination.

It is worth pointing out that in order to get a patent granted, an invention must be new, that is, not previously published or sold or obvious to a person skilled in the art. It can be a product itself or a process or method for making the product and must be capable of being applied industrially.

New ideas in themselves are not patentable. You must be able to describe how the idea will be implemented in practice.

Different kinds of patent applications

1. Ordinary Patent Application

This application does not claim priority from any other application. An ordinary application is of 2 types :

(i) Provisional Application

When the invention has been conceived and is in its conceptual stage but has not been perfected upon yet, a provisional application may be filed to help establish the applicant’s priority over the invention. A provisional application explains the invention in broad manner but not completely.

(ii) Complete Application

A complete application is to be filed within 12 months from the date of filing the provisional application else the application is deemed to have been abandoned under the Indian Patents Act. It may even be filed directly without any provisional application. The complete application includes detailed description of the invention with claim(s) which establishes the legal boundary of the invention.

2. Convention Patent Application

A patent application which claims a priority date based on the same or substantially similar application filed in one or more convention countries is a convention application. The convention application is to be filed within 12 months from the date of earliest priority application.

3. PCT (Patent Cooperation Treaty) National Phase Application

This application is filed for obtaining grant of patents in different countries simultaneously based on a single international/ PCT application filed either within 12 months from the date of priority or it may also be filed directly. The applicant gets a time period of 30-31 months to make national phase entry in the designated countries. PCT does not grant patent; the power of granting/refusing a patent lies exclusively with the national/regional Patent Offices in accordance to their local patent laws and rules.

4. Patent of Addition

This application is filed when the invention is a mere modification or improvement of an already filed patent application. The date of filing this application can either be same or later than the date of filing of the main patent application. It is not granted before the main patent application and expires along with the main application. Separate renewal fee is not required to be paid for a patent of addition.

5. Divisional Patent Application

A divisional patent application is filed if the application relates to more than one invention. It can be filed either at the applicant’s accord or if specifically asked to do so by the Patent Office. The date of filing the divisional application is the same as the date of filing the main patent application. The term of this application will be calculated from the date of the main patent application.

Different stages of Indian Patent Application

1. Filing of the Patent Application

A patent application can be filed either by true and first inventor or its assignee, either alone or jointly with any other person. Legal representative of any deceased person can also make an application for patent.

2. Publication of Patent Application

Once the application is filed, it is published after 18 months from the date of filing or the date of priority, whichever is earlier.

3. Examination and Grant of Patent Application

In India, the application is not examined by the Indian Patent Office unless a request for examination (Form-18) is filed by the applicant or any other interested person within 48 months from the date of earliest priority. If the said Form is not filed within the stipulated time period, the application is deemed to have been abandoned.

After filing of the above-stated request, the Patent Office ordinarily issues First Examination Report with objections (technical as well as formal), if any. The applicant is given a period of 6 months to comply with the pending requirements and file response to the Examination Report. If the Patent Office is satisfied with the filed response, the application proceeds to grant, else a Hearing Notice is issued giving another opportunity to the applicant to overcome the pending objections.

4. Term of the Patent

A patent in India is granted for a period of 20 years from the date of application or priority date, whichever is earlier.

5. Patent Renewal/ Annuity

In order to keep the patent in force, the patentee is required to pay the prescribed renewal fee in respect of each year (from the 3rd year onwards) in advance i.e., before the expiration of the succeeding year, till the term of the patent. If the patentee missed to pay the renewal fee within the prescribed time period and also within the extendable period of 6 months by requesting extension of time, the patent ceases to have effect or lapses. Patent lapsed, due to non-payment of renewal/maintenance fee can be restored within 18 months from the date of lapse.

Services we provide

The lawyers, patent agents and legal assistants in our patent group provide all of the services required to secure and maintain patent ownership and protection, including :

Counseling and preparation of opinions on infringement and validity of patents.

Litigating cases involving patent infringement, validity, licensing and related matters.

Investigating and preparing opinions on the potential patentability of inventions.

Drafting and filing provisional, complete and Patent Cooperation Treaty patent applications.

Assisting with technology transfer and know-how licensing.

Assisting clients in using their patent rights to leverage their profitability.

Requirements for filing :

For PCT National Phase Application :

The PCT National Phase application is to be filed within 31 months from the date of first priority.

Minimum filing requirements (required before 31 months) :

Name, address and nationality of applicants and inventors.

PCT application number & filing date.

Priority application number, date of filing and country

Patent specification as filed, claims and drawings in English.

Amended claims, if any, filed under Article 19 or Article 34

Complete filing requirements: (may be filed after 31 months) :

Power of Attorney (by e-mail)

Assignment deed evidencing transfer of right from inventor(s) to applicant(s) (by e-mail) in the event the applicant(s) and inventor(s) are different

(The original hard copies are only to be submitted when the Patent Office specifically requests for the same and when such a communication is received, the original documents are to be filed within 15 days from the date of issuance of such communication)

Form PCT/IB/304 (for notice of transmittal of priority documents)/ English translation of priority application, if applicable

Following information regarding the application filed in other countries, if any (as far as available):

* Name of the Country

* Date of Application

* Application Number

* Status of the Application

* Date of Publication

* Date of Grant

For Convention Application :

The convention application is to be filed within 12 months of first filing in convention country.

Documents and information required (before 12 months):

Certified copy of the priority document

Verified and true translated copy of the complete specification filed for convention country, if the original application is not in English

Power of Attorney

Assignment deed evidencing transfer of rights from inventor(s) to the applicant(s) in the even the applicant(s) and inventor(s) are different

Full name, address and nationality of the applicant(s) and inventor(s)

Following information regarding the application filed in other countries, if any (as far as available) :

* Name of the Country

* Date of Application

* Application Number

* Status of the Application

* Date of Publication

* Date of Grant

The government fee for filing of trade mark / patents / design, grant of patent / design, request for examination of patent, payment of annuities, etc. is based on the type of applicant :

Natural person/ start-up/ small entity

Large entity

The lowest fee is payable by an individual person/ start-up/ small entity (in India, an entity is considered to be a small entity if the initial investment of the entity does not exceed INR 50 crores and the last turnover does not exceed INR 250 crores) which is usually 1/5th of the official fee paid by the large entity.

Working statement for granted patent

Form-27 is the Form prescribed for patentees and licensees to furnish statements regarding the commercial working of their patent in India.

Some important pointers about Form-27

A single Form-27 may be filed for multiple related inventions if the followings conditions are met with :

* The patents should be related.

* The approximate revenue/value accrued from one patented invention cannot be derived separately from that accrued from related patents.

* All such patents are granted to the same patentee or patentees.

The approximate revenue/value accrued in India is to be mentioned in the said Form. The earlier requirement of mentioning the quantum of the patented product in addition to the value has now been done away with. The patentee/licensee must separately mention the revenue generated by manufacturing in India, and the amount obtained by importing into India. However, the previous requirement of listing out country-wise details (in cases of importation) is no longer needed.

There is no requirement of mentioning if the public requirement has been met with.

All patentees can file a single consolidated Form; however, the licensee is required to file a separate Form.

Patentees were previously required to mention the licenses that were given out in a particular year. This requirement has been done away with.

The Statement of Working is now required to be filed for a financial year, which is April 01 to March 31, and not for a calendar year. It must be filed within six (06) months from the expiry of each financial year i.e., the statement is required to be filed till September 30, for the previous financial year.