patent law
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This article is written by Ramanuj Mukherjee, CEO, and Kashish Khattar, Team LawSikho.

Hi,

Let me start with a story of a case which changed the world of medicines. 

I am talking about the landmark Novartis case that was decided by the Supreme Court of India. It came at a time when Patent Laws were in a transition phase on the basis of the TRIPS (Trade Related Intellectual Property Rights) Agreement between WTO member nations, which includes India. 

The Novartis case was decided by a division bench of the Supreme Court which rejected an appeal by Novartis AG to evergreen a patent granted to it for a cancer medicine, Gleevec. 

It was argued by the generic manufacturers and activists that Gleevec was not patentable because it was not a new medicine and only minor improvements were made to it and it does not deserve patent protection. If a patent were granted, that means the company claiming the invention could have claimed royalties from the generic manufacturers.

This is important because generic medicines are made at a fraction of a cost than the patented drugs and can only be legally produced after the period of 20 years has been completed. 

While the pharma sector is currently hard at work trying to invent and test COVID-19 medicines, inventions need not necessarily be restricted to pharmaceuticals. 

Inventions can be in the field of biotechnology – think of something like a genetically engineered organism, in the form of a bacteria that eats plastic! 

Or a lab made synthetic protein that could end the sufferings of billions of animals every year that human beings consume as food!

Or it could be engineering or chemistry – maybe a new kind of engine that turns water into safe hydrogen based fuel! Maybe a battery that stores more power so that you have to charge your laptop only once a month!

The world of inventions is truly fantastic. And while aspects of IPR such as trademarks and copyrights deal with expression of ideas, patents deal with the idea itself, the very invention!

If you’re not in it for the love of inventing, you can be in it for the money: it’s unlikely that you will be short of work or fees if you’re working as a patents lawyer. Let’s see how….

Patents being filed and grant of patents

As technological innovation has reached a fever pitch around the world, the number of patents filed per year have been steadily rising. 

Technology like 5G, internet of things (IoT), artificial intelligence and cloud computing sees the maximum patents filed in India, while other major contributors are pharma and biotech, automobiles, renewable energy, chemical and mechanical patents.

Patent law is hard to understand and comprehend for a newbie. It requires special expertise and non-experts cannot really take up patent matters even if they want to! It is not possible to draft a patent claim or defend a patent infringement case unless you have not legal understanding but grasp of theoretical and practical aspects of the technology in question as well.

This is why it is important for patent lawyers to have a sound understanding of theoretical underpinnings of various areas of science. This is also why patent lawyers sometimes micro specialise in a specific branch of patents.

 As a result, good patent lawyers are hard to come by, expensive and special in their own right.

The need for this kind of expertise is only expected to grow in the coming times given how central innovation and technology has become to human civilization and commerce. 

Worldwide, the number of patent applications have been going up by approximately 5% year on year, while in India the number varies from 8-10%. This means in about 8 years, the amount of work available to patent lawyers effectively becomes double of what it used to be. 

In the financial year 18-19, 15086 patents were granted, while 28853 patent applications were filed. That is a lot of work for a lot of patent lawyers given how small the community is in India!

There were also 3138 design registrations. 

Below is a breakdown of different areas. Note that electrical engineering includes all the mobility, information technology and AI related patents and chemistry includes pharma.

Electrical Engineering – 9776

Chemistry – 9176

Mechanical Engineering – 6659

Instruments – 4407

Other Field – 1570

According to Business today, the numbers suggest that after changing the law in 2005 for permitting products patents, the country has been increasingly granting patents in every area imaginable. 

If an invention pertains to software, extra caution has to be practised as software programs are not patentable inventions per se. In such cases, the practitioner is required to figure out ways to get it patented. He/she has to prove that the invention is more than a mere mental act and is associated with hardware. Creativity in drafting the specification becomes extremely important here.

Apart from patent drafting, which is a highly specialised and in-demand skill, filing the application until the grant of the patent, one is required to overcome various office objections and third party oppositions. This is another major area of work for patent agents and lawyers.

Patent disputes and litigation 

However, filing and patent office work is only one part of the work. More lucrative work is related to patent litigation.

Litigation may be related to defending a patent or trying to invalidate the patent of a competitor. It could also be for prosecution of anyone infringing a patent.

In the Indian context, clients for patent litigation can range from mobile phone companies, big pharma to even the renewable energy businesses.

Patent prosecution is a highly extensive and demanding process which requires one to have particular skill sets in order to be able to defend their clients’ applications before the patent office or other courts.

Pre-patent claim work 

There is also a big difference in the work that patent lawyers have to do for individual clients and institutional clients. Even within institutional clients, it is very different to work with a hi-tech company as opposed to any university. 

The individual inventors often approach the patent professionals with mere prototypes of inventions without really knowing whether an invention is patentable or not. Guiding them on various issues like confidentiality, patentability, prior art search, getting the right contracts in place with collaborators etc – there is a lot of work much before claims have to be drafted. 

Patent lawyers or patent analysts also have to conduct patent mapping and scouting work for tech companies in order to gauge the scope of a particular technology.

Even in companies and academic institutions, lawyers are hired or regularly consulted for this kind of work. 

Patent valuation and due diligence

Another type of work related to patents, although quite small niche, is valuation and due diligence related to a patent. Before tech, biotech, pharma or any R&D heavy companies are bought (M&A) or invested in, a patent due diligence, and sometimes a valuation exercise may be undertaken. This may be necessary at the time of joint ventures as well. 

Before assignment and licensing agreements are signed, for raising loan from banks and for the purpose of accounting and taxation, patent valuation and due diligence often becomes necessary. 

Patent Licensing and Assignment

Licensing is how a patent is often monetized. For instance, a mobile phone has many patented parts. Usually upto 5% of the cost of a mobile phone goes into paying for various patent licensing fees. There are lawyers drafting licensing agreements. Sometimes, a patent is acquired in its entirety, lock stock and barrel – which is called an assignment transaction.

These can be expensive transactions involving billions of dollars at times. Naturally the lawyers who work on patent licensing and assignment tend to earn very well, as badly drafted contracts could lead to a lot of headaches and loss of massive amounts later on.

Monitoring patent infringement

It is one thing to have a patent, but how do we ensure that nobody is infringing my patent? There are law firms and other service providers that specialise in this. They issue many cease and desist notices and even file pre-emptive cases against anyone who may be infringing a technology, and even prevent import or export of any product that may be infringing. 

We dug up a little deeper and found some common myths about building a career in patent laws and here we debunk these myths.

  • Registration work is kind of all you can get and that should have to suffice. 

While being well versed in the patent drafting and registration work can pay off, but it’s definitely not all you can get. You have read enough already to know the variety of work that is available to patent lawyers and even patent experts or analysts who may not be lawyers.

Right before even getting to the stage of registration, clients need advice on whether or not their invention is patentable in the first place. Very often, even before trying to build a technology or starting expensive R&D, patent mapping and prior art search is done to understand what can be created that would be patentable. It’s a question that can be faced multiple times by the likes of pharmaceutical, chemical, technology companies and they often have an army of lawyers and analysts working on these aspects. 

Rarely an inventor exists who does not want to monetise his invention and therefore, it’s highly likely that patents are followed by requirements for advice on licensing transactions and drafting of licensing agreements or deeds of assignment. 

Companies which tend to secure a large number of patents and are looking to monetise it would also need advice on how their patent portfolio can be managed. Patent valuation, due-diligence, coming up with patent strategy to deal with competitors (offensive and defensive), monitoring new patent applications that may have to be opposed – there is a lot of regular work for patent lawyers beyond drafting claims. 

You could also think of how to gear up to take on opposition and litigation work. Opposition is rare, but patent infringement matters are not sparse at all.  

  • I need to adopt the grind for a few years at a law firm and they will teach me what I want to learn (or I will get trained by a senior at an internship to do practical work)

Here are the problems with that belief:

  • They are not specialised in training junior lawyers. You will get very little inputs in form of training and will have to learn mostly by observation. 
  • They are already busy, and have very little time to dedicate to training juniors separately. They would hope that you are a fast learner and will learn to swim by virtue of being thrown into the ocean. If you sink, you sink. You can try another job if you can’t make it work. 
  • Your seniors are hoping you will make their life easier, not more difficult because on top of their work, now they have to train you also! How much time should they spend training you in a day? 15 mins? 1 hour? 2 hours? What is in it for them?
  • There is uncertainty involved about whether you will finally manage to learn, they are not sure if it’s worth the effort.
  • Most seniors had bad experiences where they trained a junior with a lot of patience and effort and the moment this junior learned the work well, they found another better paying job and left as there is always a high demand for well trained lawyers.
  • If you make too many mistakes as you try to learn and deliver work at the same time, you will be criticized, and may lose bonus, job, and growth opportunities. A lot of times, you will get shouted at, which is likely to put a dent in your self esteem, mess with your mental health and sometimes make you quit what was once your dream career.
  • Sometimes, the work that you want to learn is not available in the organization where you get a job. Should you be circumscribed by those limitations and stop yourself from learning what you want to learn?
  • Seniors will only pass on to you whatever work they are getting and in that too, you may be involved in only specific parts of the work. It is quite difficult that you will be involved in the process from A to Z right from sourcing the client to billing. 
  • You don’t need to do grunge work for a number of years to acquire specific skills. The focus should not be on the number of years invested but rather on the marketable skills learnt. 

However you should have the experience of actually doing the work you want to learn, grappling with it and trying to find your way out of it and then it does not matter whether you learn it in a few months or a few years. 

If you get to learn some skills that are highly in demand in a month, rather than through brief exposures during a full year of working at a law firm and sporadic shouting by frustrated seniors, you are winning!

  • I did not focus on patents in college; it’s too late to learn about this area now.

It is never too late to learn something new and certainly not patent law. 

We recently interviewed a lot of top patent lawyers, and turns out most of them started learning about patents only after they graduated from law school. Some of them had not even heard about patents before they graduated, and now they run top patent law firms!

You can take up patent work now even after having practiced in some other field of law as a professional. 

Patent law does not comprise completely alien concepts and is based on the general principles of science as well as law, which, if keenly pursued, are not impossible to learn. 

Often, it is believed that if you did not choose science as a stream during your initial schooling years, it will now be difficult to go back and take up patent laws because it requires an in-depth understanding of scientific principles before you could understand inventions and patents.

That however, is not the case. It is possible to dig into a specific invention and attempt to understand its specific features and properties in scientific terms and make sense of it, even if you are not from the science background. There are many lawyers who are not from science backgrounds and have managed to do very well in patent practice. 

However, you would need to keep up with your reading, be able to apply your mind to complex and abstract concepts and work towards developing a deep knowledge, in order to succeed. 

What is the career potential if I become a patent lawyer or patent expert?

  • There are many specialised IP law firms (employing between 50-200 lawyers) which engage in the registration of patents, enforcement of patent rights, disputes and litigation over patents, licensing and assignment of patent rights, managing patent portfolios and such other work. These law firms provide a great opportunity to have a rewarding career in patent law to young lawyers.
  • Most big law firms have an IP law team, and they often hire patent lawyers to develop in-house capacity.
  • There are LPOs, as well as technology platforms such as VakilSearch and IndiaFilings that hire many lawyers and patent professionals to make patent searches and register patents at economic rates.
  • The Government of India has further helped to create a larger market as it finances the patent application process and the fees of the professionals for startups and universities. Startups are even being granted patents on an expedited basis in order to encourage indigenous technology.
  • Patent licensing, assignments, objections, oppositions and litigation has increased many folds over the years, turning patent law into a very lucrative profession.
  • Having practical knowledge with respect to patent litigation and the various strategies and defences to be able to efficiently deal with patent infringement matters is sure to attract clients and/or employers alike. 
  • The field involves a lot of advisory work with respect to the patentability of an invention, licensing of standard-essential technology, the prior art of an invention, etc. It is highly imperative to be able to advise the client efficiently which in turn shall generate more opportunities. 
  • Corporate houses and firms undertake work such as patent valuation and portfolio management for pharmaceutical and technology companies. 
  • You cannot learn these things by studying any particular laws, regulations or rules, and there are no adequate books that can help you here. Success in patent law practice requires skills which are more varied than merely knowing the provisions of various statutes or having a degree in science. 
  • Check out the learning objectives section to understand what you will exactly need to learn.

Relevant industries: Pharmaceutical companies, Information technology companies, Software development companies, Telecommunications companies, Tech companies, Chemical industry, Intellectual property law firms, All service law firms, IP consultancies. 

What do I have to learn in order to get started with a career in patent law?

These are some skills that we identified and thought that every learner should learn if they want to excel in patent law. Please learn all these skills to be a better patent lawyer:

  1. Learn how to identify whether an invention is a patentable subject matter and advise the client accordingly;
  2. Learn how to efficiently conduct novelty searches before applying for registration;
  3. Learn how to conduct patent scouting and landscaping for companies dealing in patentable subject matter;
  4. Learn how to conduct freedom to operate searches;
  5. Learn how to accurately draft patent specifications, description of drawings and abstract for a patent application; 
  6. Learn how you can draft claims with respect to different industries such as chemical, mechanical and pharmaceutical;
  7. Learn how to file an online patent application and fill the relevant forms to be attached therewith;
  8. Learn how to amend or withdraw an already filed patent application;
  9. Learn how you can fulfil the patent office’s requirement to divide a patent application; 
  10. Learn how you can apply for a patent of addition once the parent application has been filed; 
  11. Learn how to overcome the patent office objections in the first examination report;
  12. Learn how to overcome software and abstract idea objections by the patent office;
  13. Learn how to file a patent revocation petition before Intellectual Property Appellate Board;
  14. Learn how to file a pre grant opposition after the publication of the patent application;
  15. Learn how to file a post grant opposition within one year of grant of the patent;
  16. Learn how to advise a client to enforce his rights in a patent by filing a patent infringement suit;
  17. Learn how you can proficiently prepare a defence/settlement strategy against a patent infringement suit;
  18. Learn how to file an application before the registrar for review of his decision
  19. Learn how to file an appeal before the Intellectual Property Appellate Board against the controller’s decision;
  20. Learn how to file an international patent application through PCT or Paris convention route;
  21. Learn how to identify whether an invention is patentable subject matter in the U.S.
  22. Learn how you can file a provisional as well as a complete patent application in the U.S; 
  23. Learn how to file a reply to the examination report before USPTO;
  24. Learn how you can advise your client with respect to licensing of a patent and draft patent licensing agreement for him/her;
  25. Learn how to advice your client with respect to assignment of patent and draft patent assignment agreements skillfully;
  26. Learn how to draft Inventions agreements/Non disclosure agreements; 
  27. Learn the techniques of developing and maintaining a patent portfolio;
  28. Learn how to effectively deal with matters surrounding standard essential patents;
  29. Learn how to draft a license deed in compliance with FRAND terms of licensing; 
  30. Learn how you can efficiently use patent docketing softwares to keep a track of the ongoing matters.

Let us introduce you to the Executive Course in Patent Law 

LawSikho is introducing the executive certificate course in patent laws for its learners. This is a shout out to every intellectual property rights enthusiast or young lawyer who wants to make a career in patent law or learn these skills rapidly and effectively. 

This is the right time. Use the pandemic induced break to the fullest and learn new skills

The one thing that the pandemic has taught is that upskilling is essential and change is inevitable. 

So, what does the LawSikho course offer?

  • The course is not limited to a provision-by-provision study of the Patents Act and associated case laws alone; rather the course trains you on different kinds of actual work that is required to be performed by industry professionals. After finishing the course, you will have as much practical knowledge as a lawyer/agent working at a big law firm with a year or two of experience. 
  • It is not a mere theoretical study, but hands-on practical lessons where you will have to draft a lot of documents.
  • The course is tough and intensive, you will not be awarded the certificate unless you complete 50% of all the exercises. You have to spend 8-10 hours per week on this course.
  • You will get personal attention and coaching from the trainer, and get individual feedback on the quality of work you produce.
  • You will be writing an article every month and with our guidance, publish the same either on iPleaders blog or various other industry publications.
  • We will provide you with training in professional networking, CV writing and interview skills so that you can easily find jobs.
  • Those who perform well in class will be recommended to top firms for internships and jobs. If you do not need such help, let us know in what other ways we can help you.
  • After completing the course, you will be able to perform various tasks that fall in the domain of Patent laws and be at ease with different aspects of patents.

Do you know about our webinars? 

LawSikho offers amazing webinars that you can attend and learn from, with no charges, every day. Now we are even giving certificates to those who attend the full webinar. Check out some of our past webinars here: https://www.youtube.com/c/LawSikho/

While you can see past recordings of webinars on our YouTube channel, to participate in one personally is quite a different experience, as you can ask questions and interact with such amazing speakers and even other attendees. How can you attend these webinars in person? Sign up over here.


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