In this article, Rounak Biswas of Symbiosis Law School Pune discusses “Guide to IPR and Patent in India”.
“Piracy begins where creativity ends.” ― Kalyan C. Kankanala
A creative mind does not need to imitate the work of others. A creative mind is always capable of creating something new, something of value. And the problem of piracy arises when one runs short of owns imagination and creativity and in order to get quick money and fame resort to the practice of stealing. In other words piracy of creativity or Intellectual Property Rights is nothing but a form of stealing.
Intellectual property rights – What is it?
Intellectual property has become a new age sensation among people across the world. People talk about intellectual property rights. The entrepreneurs, businessmen, institutions and almost anyone in this world who runs business is concerned about their intellectual property rights (IPR). It can be said that the free market economy and innovation and technological advancement is fuelling the growth of the field of intellectual property rights. But what exactly is this IPR? In India we do not have any legislative definition of IPR. However taking cue from the articles published by WIPO and the various online and offline sources, IPR can be defined as something that is a product of human intellect, something that involves an application of human reasoning and intelligence based on an idea. The importance of intellectual property rights can be attributed by the fact that the developed economies like United States of America, China, Japan and the OHIM/ European Union Intellectual Property Rights are at the forefront as per the 2015 WIPO’s World Intellectual Property Indicators. Innovation, intellectual property and the protection on one hand and the business on the other are inter-dependent and are important for the innovation driven economy. IPR can be said to be THE DIFFERENTIATING FACTOR helping the customers identifying and distinguishing the products when it comes to a particular sector. The rise of the Google, Facebook, Uber in the US markets and all over the world and their contribution to world economy proves the necessity of intellectual property in business.
Prominent examples of IPR
People identify different products with the help of various logos, but does not understand the intrinsic value or importance of the same. IPR in itself can be called to be the identity of an organization or an individual. IPR can be of different types ranging from trademark to shapes and designs. Say for example – The Uber logo is unique and therefore is an identity of the business. The same is true with Ola , Indian Railways , Delhi Metro Railway Corporation , Kolkata Metro , iPleaders , ClikLawyer , MobiKwik , Quickheal , UrbanClap , BMW , TATA Group etc. The logos are an identity in itself and the popularity of the same can be manifested by how people connect to these logos. The uniqueness and innovativeness of the design for every company is the USP of the particular company. These logos are primarily involves the trademark aspect. The peculiar shape of a bottle of an alcoholic beverage or a lighter or a packaging (otherwise known as trade-dress) can be considered as prominent examples of intellectual property rights. IPR helps in distinguishing products of same nature produced by different brands.
Marie Gold and Marie Light are both Marie biscuits but are being offered by Britannia Industries and ITC Limited respectively.
Types of intellectual property
Intellectual property in India can be of different types and can be broadly classified into two types, namely – copyright and industrial property.
Copyright is the right given by law to an individual or an organization to reproduce his/ her work any number of times with a profit or non-profit motive. Copyright is essentially a bundle of rights and can be used as a bundle or separately as per the terms and conditions of the author or the publisher whoever owns it. The Indian copyright law, Copyright Act, 1957 provides protection primarily to three kinds of areas – original literary, dramatic, musical and artistic works, cinematograph films and sound recording. Copyright comes into existence as soon as musical piece or artistic work or an article is penned down and does not necessarily require registration unlike trademark or patent registration. For something to claim protection under the copyright law it should be original and should not be copied in toto if someone has written a story inspired from a pre-existing story. This is a fact that copyright does protect the ideas and therefore several people can develop musical piece or novels or the script of cinematographic films on the same topic or idea but one should be different from the other in terms of execution of the idea. However slogans, names and taglines for product and business identification aren’t protected under copyright law and the trademark law comes into picture for the same. In case an author or writer writes something and it is being published by a publisher, the ownership does not pass on to the publisher by default. The ownership of the article penned down by the author only in case the same has been assigned to the publisher. Assigning of the writing should be avoided since it is less profiting and one should prefer licensing as the latter allows royalty which in turn is more profitable over the former. In case, one has to assign the article, the author should always charge a handsome amount obviously considering the quality. Because in case some literary, dramatic, musical or artistic work has been assigned to a publisher by the author, the author cannot claim any profit which the publisher may get by selling it to business concern. Therefore it is always good to license one’s literary works or publish the books yourself. Though publishing on one’s own cost is costly, in case it becomes successful becomes a double bonanza – one the copyright remains with the author itself and second, it helps the author in owning and running a successful start-up publishing house. The copyright act in India gives monopoly over its creation for sixty years excluding the life of the author. In case the work is a creation or work of joint authorship, the author who dies last shall be considered as the reference point for calculating the term of sixty years. For any other protection regarding the term of protection the Copyright Act, 1957 can be followed.
Computer software/ program (computer program, tables and compilation including computer databases) can be registered as literary work and can also be protected by the use of Copyright Act, 1957. The owner or the developer whoever is applying for copyright should give their source code in the copyright application in case he wants to get it registered in the trademark registry. In case of open source software, the ownership of the same is determined by what has been stated in the agreement. If an employee develops a software using employee’s resources, and there is no agreement at all in that case the employer will have the ownership. However it is always advisable to assign the copyright of the open source software developed from copyrighted software to a group of administrator overseeing the project to reduce complexity later. Also it is advisable to keep a record of all licenses given by the original author to other people for a quick detailed reference in case of any conflict in future.
For getting an estimate of the cost involving copyright registration and the allied serives one may refer to the link, http://copyright.gov.in/frmFeeDetailsShow.aspx.
Under the broad classification of IPR, the second one is industrial property. The industrial property is again a broad idea and the class in itself is comprised several sub-classes trademark, patent, layout designs of integrated circuits, geographical indications, trade-secrets, know-how and protection against abuse of intellectual property. The reason why it is called industrial property is perhaps because this class of IPR is totally idle and useless without proper industrial application. Without their application, the class of industrial property is absolutely useless and therefore it does not add any value to the concerned innovation.
Ø Patent – A patent can be defined as a protection given under law for a limited period of time to an individual for inventing something new. The novelty, utility, inventive step and the necessity of industrial application is a must for an invention be made patentable. The patent application also needs to be made in such a way so that it has clarity and completeness of all the technical details in a lucid style so that any layman can understand the same without any difficulty. The main purpose as to why patent information needs to be made public is to reduce the chances of duplication of effort and finances in inventions. A patent is being granted for a period of twenty years during which a monopoly is being given to the inventor restricting others from using it. However in case it is used for not allowing the use of the invention, it will defeat the purpose of patent. Also the patent-holder will not get any monetary benefit from his/ her effort. Therefore it is always advisable that if a patent-holder does not exploit the patent at personal basis, should always license its use and implementation by other parties through which it can gain substantially, earning substantial royalty. In case a product has changed a little bit which does not necessarily bring a hell lot of changes in the same, the product cannot be considered for patent. In other words, ever-greening of patents just by bringing minor changes in the existing products is totally against the law. Often for the purpose of protecting an invention, some people takes the route of trade-secret by which they do not disclose important information and can therefore protect the secret of an invention for an infinite period of time without the danger of disclosing at the end of certain time period. Coca-cola’s secret formula or PageRank can be considered to be of such nature. Protecting the trade-secret is an easier option though since in many cases, reverse engineering fails to get the process as it has happened in the case of Google PageRank. GoogleRank in its patent application has mention of the number of signals and codes but did not disclose them in the patent application. They kept the rest as trade-secret, therefore the chances of getting the information public and being exploited by some party or organization at the end of the term period of twenty years was prevented. Though patent is very common pertaining to the technology aspect, however in India any invention related to atomic energy is not patentable.
Ø Trademark & Domain names – A trademark can be defined as a shape, mark ,device, name, signature, brand, heading, label, word, letter, numeral, shape of goods, colors, slogans individually or a combination of several of them which gives it an unique and aesthetic look capable of distinguishing the goods of one person or company from the other. The chief utility of trademark is that it protects the public from confusion and deception and on the other hand protects the trademark owner’s trademark and goodwill and the business in the long run. Trademark can also be a certification trademark or collective mark or a composite mark or a trademark for goods and services.
Certification trademark as defined in the Trademark Act, 1999 is a mark which helps in differentiating between the products on the basis of quality, material or manufacture of the product. Certification marks helps in differentiating between low quality and high quality products and are generally issued by the authority supervising various sectors of business. For example – India Organic, AGMARK , FPO, ISI Mark, Hallmark, Ecomark or Non Polluting Vehicle Mark. These are the typical examples of certification marks which are used by Agricultural and Processed Food Products Export Development Authority (APEDA) – India Organic, Directorate of Marketing and Inspection – AGMARK, Ministry of Food Processing Industries (India) – FPO, Bureau of Indian Standards – ISI Mark, Hallmark, Ecomark and Central Pollution Control Board of India – Non Polluting Vehicle Mark. The certifying agencies certificates or marks are considered to be supreme in their respective arenas and anyone using this mark is considered to be of supreme quality. In other words certification marks are an indicator of quality of products.
Collective Mark – There are certain companies which want to get multiple trademarks of their subsidiary companies at one go. And the trademark they apply for have certain similarities. For example almost all TATA Sons companies have the iconic TATA mark. In this case TATA is the collective mark.
Composite Mark – Marks which cannot be registered solely by combination of words and for inducing the uniqueness and distinguishing factor of products or services are needed to be registered in a design format preferably with a tagline or a combination of words can be called as composite marks. For example – The mark of McDonald’s or ClikLawyer’s mark are some of the examples of composite marks.
Trademark for goods and services – Every goods and services are classified into certain number of classes, thirty four classes of goods and eleven classes of services in total forty-five classes of goods and services based on which different products are classified. A list for the same can be found at http://www.smartbrain.in/downloads/Trade%20Mark%20Classification.pdf and http://euipo.europa.eu/ec2/.
However, names mentioned in International Non-proprietary Names list cannot be applied for registration. The list is being published in four volumes every year and the same can be accessed here http://www.who.int/medicines/publications/druginformation/innlists/en/.
Domain names are nothing but the internet address of a website which is essentially a combination of the name of a person or a company, unique in its nomenclature which will help a person in finding someone or something affiliated to a person in the World Wide Web. There is no law for the protection of domain names; however the law of passing off can be used to seek protection. Just like trademark which helps the customers in distinguishing the products and the owners of business in protecting the goodwill of the business, the domain name helps the customers or people in distinguishing people and products and the goodwill involved with them. For example Bandhan Bank and United Bank of India are both financial and banking service companies. People know the two banks by their names and goodwill they have. By the the domain names http://www.bandhanbank.com/ and http://www.unitedbankofindia.com/english/home.aspx people can differentiate and locate the two banks in the web arena. Few years back in 2011, Arun Jaitley, the current Finance Minster of India won a case against one Network Solutions Pvt. Ltd. And Ors. who had earlier registered the domain www.arunjaitley.com in 2009. In an attempt to register the domain name in his name, Mr. Jaitley found his name have been encroached in the web arena by someone else than him. The court held that the defendant company is accused of passing off his name. It is quite probable that someone else having control of a domain name bearing a popular personalities name can fall prey to mischief which may cause irreparable injury to the person’s social status. Recently an Indian based law firm assisted Rhiti Sports, the celebrity management agency handling Mahendra Singh Dhoni’s IPR rights in getting a favorable judgment for the domain name www.msdhoni.com which one Mr. David Hanley based out of New York was involved squatting in the cyber world. It is always advisable for any individual or a business to have their domain name registered at the start of the business to prevent any chances of cyber-squatting which will certainly affect a business in a lot of ways. As it happened with Dhoni, the name that was registered by Mr. Hanley was back in 2005, few years after Dhoni started playing international cricket. The domain names can be registered as per UDRP and INDRP, provided the domain names which are to be registered has no mala fide intention behind it.
Ø Designs – Designs in India are protected by the Designs Act, 2000 and the protection can be extended to shapes (in case of three-dimensional objects) and configuration, pattern, ornament or composition of lines or colors used in any article (in case of two-dimensional objects) or a combination of one or two more features of them. The only parameter for judging the design is that the features of the object and the appeal should be judged solely by eyes and no other parameter can be used.
Ø Plant Varieties – Plant varieties in India is protected by a sui-generis law i.e. The Protection of Plant Varieties & Farmer’s Rights Act, 2001 enacted following the Article 27(3) (b) of the TRIPS agreements which makes it an obligation upon the signatory countries to protect plant varieties through patent or a sui-generis law in India. The sole motive of the act is to protect the right of those farmers and plant-breeders who are involved in the development of new plant varieties as also to encourage newer developments in the area. However for any plant to be protected by the same act, the plant should not be of extant variety (a variety which exists for a long time, a farmer’s variety or those varieties notified by Section 5 of the Seeds Act). The subject matter should meet the conditions namely novelty, stability, uniformity and distinctiveness. In case some variety has been developed and that too no much time ago, then in that case it is registrable. Any eligible person can submit the application for the same.
Ø Geographical Indications – Geographical indication is essentially a very important aspect of a business which indicates the country or region of origin of particular goods. GI as it otherwise referred to as is a sort of an identity of a good the mere reference of which determines a class among the similar class of goods, while it guarantees a quality too. For example Darjeeling Tea or Champagne or Roquefort Cheese or Porto or Swiss Watches. As the names suggests the commodities signifies the area of origin of the product. Protection in India on the same can be done by the Geographical Indications of Goods (Registration & Protection Act, 1999). Unlike the exclusive nature of copyright or patents, the exclusivity is not centered around only individual or organization but can be extended to all the products belonging to multiple parties originating from the same place. Like Benarasi Sarees. All the producers of Benaras producing the same saree and maintaining the same quality can claim protection under GI legislation in India or abroad.
Ø Layout designs of integrated circuits – Designs of integrated circuits in India are protected by the Designs Act, 2000 and the legislation provides anyone registering a technical design (comprising of the layout of transistors and the corresponding elements of circuits and lead wires connecting with such elements and being showcased in any manner in the semiconductor integrated circuit.) for a period of ten years from the date of filing of registration or from the date of first commercial exploitation whichever is earlier. The main purpose of providing registration of the integrated circuits is to provide protection even for a limited period to the innovators and the scientist community. With the more innovation it becomes possible to make the circuits smaller and more effective which in the long run helps in making better electronic products which are smaller than the previous one yet more effective. The innovation in the long run contributes to the economic growth. At the same time, the exclusivity of others help the innovator in exploiting the same design commercially therefore benefiting commercially.
Ø Trade Secrets – Trade secret is essentially confidential information which is very important to one’s business or enterprise and may prove to be very costly for one’s business in case the information is compromised with individuals outside the business and enterprise and may totally affect or jeopardize the business of the person who is the original owner of the same. The owner of the trade-secret should take utmost care to protect the secret ad should never share with any other individual who is an employee of the business and they may prove injurious in future when the same person comes in the same business. Once the trade-secret goes public, it will be totally disastrous. Therefore it is always advisable to keep trade-secret to one self, specifically in franchisee businesses. The following are some examples of the trade-secrets – designs, drawings, architectural plans, algorithms and processes implemented in computer programs and software, teaching instructions and methods, techniques and know how, manufacturing process, marketing plans, information related to R&D procedure. Google’s Page Rank and Coca Cola’s preservation of its secret ingredient are the best examples of how trade-secret should be kept secure from prying eyes.
Ø Know-how – Know-how is mostly the knowledge arising from one’s daily activity in business or research procedures and should be kept securely with an individual to prevent the theft which may prove very costly for a business concern. This is true that there is no dedicated legislation for the protection of know-how and people working on something will certainly gain know-how and therefore it is not possible to absolutely rule out the possibility of know-how getting leaked. It is always advisable to have the mention of know-how in one’s Non Disclosure Agreement with huge pecuniary obligation in case of any leak of information from the concerned employee.
How to spot valuable IP in a business
Spotting a valuable IP depends on what business a person or an organization is inclined to do. While the trademark will always be an important aspect of running any form of business, the other types of IP will be dependent on the type of business that is being carried out. Say for example Paytm and Mobikwik are technology based payment system which basically stores money in their account in an intangible form, the one which is popularly now being called cashless system. These websites employ technology for transfer and payment of money through cashless form without actually revealing card and account details every time someone is keen to make an online payment. Therefore apart from trademark, patent, know-how and trade-secret is important for doing the same business. The Paytm also hosts lot of commodities for sale much like Amazon, Flipkart or Snapdeal which also involves trade-secret and therefore this is one area which should be protected by the company in order to avoid any losses arising out of the same. Again say for example Tupperware which deals with home products line, trademark, patent, know-how, trade-secret will come into play. While if we refer to food-chains like Domino’s, Pizza Hut, Fassos, McDonalds apart from trademark, trade-secret, know-how and design (the box in which the food is being delivered) will come into play. In case of mobile or laptop manufacturing companies like HP, Motorola, Samsung or Asus, the patents will play a very important role apart from respective trademark and know-how and should be preserved carefully so that the vital information do not pass out to the competitors inadvertently thereby causing loss. Therefore it is quite understandable by now that IP of a business is totally dependent on the nature of business is and the IP and the concerned protection will change from case to case basis! For an individual or organization coming into business with the plan of expanding and possible franchising, it is always advisable to consult with an expert regarding the same for detailed understanding.
Meaning of intellectual property: What is intellectual about intellectual property? How is it different from other kind of properties? – Concept of tangible and intangible property.
Property in India can be classified into two classes, namely physical and non-physical property. Physical properties are those which can be perceived by their physical properties, namely touch. In other words physical properties are those which are tangible and cannot be easily reproduced. Also the cost of individual production is high. Non-physical properties are those which are intangible in nature, cannot be perceived be physical properties such as touch and are capable of being reproduced easily at lesser costs. Intellectual property is the best example of physical or intangible property. Now the question may arise in one’s mind is that what is so intellectual about intellectual property rights. Intellectual property can be called to be product of an individual’s human intellect in plain language. But the important question pertinent to the matter is that why do we even need intellectual property rights for our life. Clause 1 of Article 27 of Universal Declaration of Human Rights, 1948 talks about the importance of everyone to take free participation in contributing for the cultural life and enjoyment of the arts and also for benefit sharing of the scientific advancement. Clause 2 of the same article says that an author of artistic, literary and scientific creation have the moral and material interest arising out of the same. The same article gives an individual an equal right over its creation the same way the law provides an individual the right over the tangible properties such as land, building etc.
How valuable IP can be
IP in itself is very important for a business or an individual. Considering the future prospects of a business and also the likely chances of sale, merger and acquisitions, licensing and franchising, division of business it is more important for an existing business to be valued at the very beginning of the business and a track should be kept on the rise or fall of the value of IP. IP is valuable not just for the business but also for those who are investors, bankers who keep the IPR as collateral in cases of loans, judges and arbitrators, and taxing authorities just to name a few. The IP valuation is a very important part of a business and profiling the same as per the individual IP value is very important for the IP portfolios.
Four basic ways of valuation of IPR are as follows, namely – cost approach, market approach, income approach and relief from royalty approach.
IPR can be used effectively to prevent one’s attempt to pass off under trademark law, or by taking refuge of litigation a person who is using patent illegally can be stopped from using it with recourse to damage and compensation too. Same is true for design, copyright or trade-secret. IPR’s value cannot be defined and can be used in multiple ways so as to make profit from them.
IP value of SME
SME or Small and Medium Industries are considered to be the backbone of a country’s economy. It can be India or Nigeria or European Union, but the fact remains unchanged for all the countries across the globe. There is no fixed definition of a SME and countries consider various entities as SME’s depending on the number of employees attached with them. However as per a WIPO statistics, 90% of business in Asia, 88% in USA and 95% of business enterprises in OECD are SMEs. The figure in itself speaks for itself.
A majority of business in these developed and developing countries are of the type of SMEs. The numeral statistics also drives home a point how much contribution SMEs has for income generation and for the job creation in the long run. However in most cases there is a general tendency among the SME owners to avoid the established methods for IPR protection and instead they chose a traditional yet less protective measure. Many people also rely on trust more than the IPR protection as per the established law of land. The owners of SMEs also tend not to get involved in legal battles with the fear that it may cost a fortune. All these together, not protecting the IPR in the first place and avoiding legal entangle may cost a business which may contribute to SME enterprises being in trouble which will contribute to unemployment in short run and poverty and economic loss of a country in the long run. Therefore it is quite easily understandable how important role IPR plays for a business enterprise belonging to the SME category. Now another major question arises that why should a business concern take a bullet for someone else. Now the answer to this lies within. In many cases the enterprises belonging to SMEs’ are not aware about their IPR values and those who have less literacy (including legal literacy) are more susceptible to the loss of their IPR. The solution to the same lies in IP Auditing which helps a business understands what are the areas where the business has IPR value, the possible areas they can have and what the ways of protecting them are. Intellectual Asset Management is an effective way of making an IP valuation and thereby knowing the areas which may prove to be profitable. The whole purpose of IPR is to protect one from using or exploitation of others, so that only the concerned person can exploit the related IPR for his/ her own profit. Therefore valuation plays a major role in knowing one enterprise’s worth which in the long run contributes towards profit making and revenue generation.
For example companies like Emmbi Polyarns or CONTROLPRINT, apart from the trademark that distinguishes their product from the other, the patent and business strategy or plans (trade-secret) plays an important role in giving them an advantageous position in the market and a possible edge over the market. Even though owners of SMEs’ are familiar with patent, in many case they feel helpless when it comes to trade-secret laws as we don’t have any specialized law for it in India. Therefore the thumb rule for any business concern is to identify its IP through its valuation and therefore take steps accordingly. A miscalculated approach can actually lead the concerned business to its doomsday. It is always advisable for the stakeholders to either take a calculated step after conducting an IP valuation themselves by employing an appropriate person bearing considerable command over the subject matter or to consult a lawyer dealing with or specializing in intellectual property rights.
How important the Government of India is considering the IP for SMEs can be proved by the fact that in the National IPR Policy that has been published in the middle of this year. The Government has kept the MSME’s and start-ups at its focal point with the intention of creating conducive ambience that will promote innovation to create an Indian counterpart of Silicon Valley. The Government wants to tap the inventions of the MSMEs and start-ups to meet the needs of the country, while ensuring the concerned stake-holders can reap their benefits too. The Government intends to make materials for the benefit of the enterprises (MSMe’s and startups), to make the IP mechanism easy for them and also to lessen the cost involved with the IPR registration and protection. The government in this case wants to make a level playing field so that even a small innovator promoting MSME or start-up can have accessibility to all mechanism as a dominant player of the field has. Another motive of the initiative is to encourage Indian players to acquire in foreign markets and playing a pivotal role n launching products.
SME’s has multiple ways of reaping benefit from an innovation. In case the innovation can be patented, the same can be sold to another party for exploitation or can be used by themselves for manufacturing. In case someone wants to exploit the same by keeping it as trade-secret, the same can also be possible.
How do intellectual property rights impact business?
Intellectual property without any doubt is an important aspect of the business and without IP a business is nothing but radar less ship. The importance of IP can be manifested by how much importance Government is giving to IP nowadays. Let’s just take few examples to prove the point about how important IP can be for business. Let’s just take for example some businesses and let’s see what the IPR involved are. Mahindra Marksman and Mahindra Axe are two armored vehicles capable of carrying defense personnel. Here in this case the trademark does not only remain with the name of the vehicle but also with the design of car and specifications of the engine (the engine can be patented). With the country giving more emphasis on the defense sector and more specifically on the ‘Make in India’ campaign, intellectual property is no doubt going to become an important tool in India. Same is true for TATA Armored Vehicle and Anti-mine vehicles. China is ill-famed for making counterfeit products of anything and everything under the sun. Due to the Chinese counterfeits, the US economy loses millions of dollars every year. Very less IPR protection in China coupled with the financial inability of the smaller firms of USA, are making the problem worse day by day. Though USA is going all-out against counterfeits still they cannot do away with the counterfeits. Recently a Chinese car company came up with a car model Landwind X7 SUV which is an almost exact copy of Land Rover Evoque. Now the Land Rover is suing the company which has copied the design of the car. What happens to the future of the case is not known, but getting someone’s IPR already protected gives them certain edge over the party which copies the product. Consequently one can understand how powerful impact intellectual property can have on the business.
How to manage IP portfolio?
Patent portfolio is an important aspect of business of an enterprise. IP portfolio is nothing but an accounting system by which one measures the strength and weakness of the IPR of an organization. Portfolio is mapping a business’s landscape by drawing a SWOT diagram of the enterprise and its competitor and matching them with each other to measure the comparative strength and weakness of a business and finding a way out to deal with the lacunas. The primary way of protecting a business is to identify first what are the areas of the business which is coming under the IPR regime. For example – a portfolio which can be better protected under trade secret law need not be protected under patent law as is the case of Coca-colas formula. Also another important point that should be kept in mind for making and maintaining portfolio is to make sure how do one wants to protect its invention. Say for example if someone comes up with a complex invention as that of Google’s PageRank and wants to protect the secret behind the same to get the maximum profit, an individual may not get it solely patented. Instead they may chose a judicious balance of patent and trade-secret as what Google did to keep its creation PageRank totally away from one’s reach forever while making a part of it patentable thereby making a way out for income for a fixed period of time for anyone who wants to use the same technology. Again a producer of a movie or a singer should manage its IP portfolio through Copyright law. The renowned marks and taglines can be protected by trademark law based on its novelty. And a product which is identifiable by its visual appeal can be protected by acts pertaining to design law.
Alphabet for example (earlier known as Google), since it is very much into technology therefore the IP portfolio will mostly be based on the patent. Therefore for managing the patent portfolio it is important to take note of what are the advanced technologies one party has that will give an edge over others. Similarly Samsung and IBM whose business involves technology too, deal with lots of patents and therefore they have a dedicated patent centric IP portfolio management system. For maintaining IP portfolio an entity needs to know what it is dealing with and the main purpose of creating the portfolio is make one well conversant with the technological strengths of a business. Canon being primarily in the manufacture of imaging and optical products has lot of patents on the same and will focus primarily its IP portfolio in the patens. The same is true with Qualcomm the company which is a designer of wireless telecommunication products and services and manufacture products.
Can IP improve the valuation of a company?
Intellectual property rights or IP, though intangible in nature are economically of the same value as that of a tangible asset like a building or a property or an automobile and therefore can be used conveniently by anyone. The economic nature of the IP and its infinite nature of use makes it a suitable source of money which can be infinite too in case it a worthwhile breakthrough and products of same genre or an advanced type is in use. Therefore, IP valuation is likely going to improve the valuation of the business unless other factors involving the valuation (such as public image of the company etc.) does not goes against it.
Can IP be sold separately from the business?
IP can be sold separately from the business. IP is one of the many pillars of a business and therefore a business can be sold separately after keeping one or multiple IP with them. Let’s just take for example Motorola Mobility. Motorola Mobility was bought by Google in August 2011 which was sort of a strategic move to prevent any lawsuit on important patents which is quite common in technology sector and that is one source of constant trouble for technology companies like Google, Apple. By buying out Motorola Mobility, Google strengthened its patent portfolio. Google strategically took away all the useful patents of the Motorola Mobilty and later on again sold the same company to Lenovo. Thus we can understand that IP can be sold separately from the business. In many cases, IP can be sold despite having any business. For that matter, let’s take the example of Laszlo Biro, the person who had invented the ball pen sold only the patent to another person. In many cases, universities and research institutions which are into innovation get their innovations and inventions patented and later on sell them to organization or institutions in need of the patent at high price. The innovators in these cases are though human beings by working condition and contract transfer the same to University which in turn sells the same. Therefore it is possible for someone to sell the IP separately from the business.
Can IP portfolio – patents, copyright or trademark be used as security to raise finance?
IP has a capital value and like any other property can be used as a security to raise finance. In countries like Japan and USA mortgaging of intellectual property is allowed. Now as per the new national intellectual property rights policy, in India one can use IP as collateral for raising finance. In case someone is in need of finance may mortgage it for the purpose of raising finance. The IP remain as security and in case of default of payment can be sold to get a return of the money. However amount of finance that can be recovered is directly proportional with the IP portfolio of a person or a company. The finance that can be raised depends on the value of the IP in the market and whether it is still in use or not. Like if someone today comes up with a modified version of cassette and gets it patented and tries to sell it to the financier, it is highly possible that no one will use it as a collateral or security to give a huge loan. Again if someone comes up with an advanced version of storage facility, which is more advanced than pen-drives and memory chips, the same patent can be used to get sizeable amount of finance from the market, provided it is useful for the general public. The purpose is to get a good buyer in case the person from whom collateral has been taken fails to pay off their loan or debt finance.
IPR policy of major corporations
IPR policy of Major Corporation changes from organization to organization. However one thing that may remain common more or less is that all the corporations are well aware about the application of their products, their popularity and makes sure no one gets away by infringing their IP portfolio. The IPR policy again depends on the type of business one is in and what are the types of IPR they want to get protected. Apple in concerned about the trademark and the software privacy issues apart from the patent issues. Samsung apart from the patents they have, are concerned about their trademark and domain name. TATA for that matter are likely to protect their trademark which in itself has become a standard apart from the different kinds of business and the IP involved in it. IPR policy of major corporations can be of several types, one meant for general masses or for specific groups like investors, employees etc.
IP consulting in India
IP consulting in India can be done by anyone who is an expert in IP law. Law firms like Anand & Anand, K&S Partners, Remfry & Sagar, S. Majumdar Patents & Trademark Attorneys Cliklawyer and a host of others does the work of IP consulting in India. IP consulting helps and guides one to indentify its IP and a possible legal problem and recourse to that. The IP consulting lays down a map of what all to do to keep the IP portfolio safe and secure and also advises the IP owners how to exploit them to get the maximum return from their IP property.
IP Protection in India
What is the status of intellectual property protection in India?
Here comes the most controversial and relative issues of intellectual property. As per the Indian standards and the Government IP protection is up-to the mark and many countries including US has expressed its faith on the Indian Judiciary. However things are not smooth as they appear. Even though various developed countries lead by USA has reliance on Indian legal system, they express their constant displeasure with patent law of India. In order to teach India a lesson it has put India in the Priority Watch List with other countries with whom India does not have any comparison at least in IP protection. India was ranked second last, 37th out of 38 countries in the U.S. Chamber of Commerce-International Intellectual Property Index. The 38 countries or economies incidentally represent eighty-five percent of global GDP. USA incidentally ranked first in the same list, which is quite outrageous considering the list was published by US industry body only. Also the parameters, on which the ranking was done is quite popular in developed countries and the developed countries IP laws have those principles incorporated. This is not true that IP protection is great in India and the rank is totally wrong. Trademark infringement and online piracy do happen in India, but the legal system is taking appropriate steps to counter the problem too. China which is quite unpopular with their copying attitude and producing counterfeits have been placed better than India (22nd) and this is what questions the true intention of this ranking system. Even developing economy like Brazil has been ranked better compared to India at 29th position has an ill reputation of producing counterfeits. Therefore, all this makes the entire gamut of ranking a little controversial issue. US as usual with its highly advanced laws have a tendency to protect the corporate interests and IP protection is quite strict there. Therefore someone who wants a full-proof IP legal environment for protecting their innovation and invention USA is the best place for them. But at the same time, this is true that Indian legal system does not allow ever-greening of patents and this in itself is quite satisfactory from the point of view of access to medicine and life-saving products. The court as a matter of fact have prevented a situation where by making minor changes big pharmaceutical companies could have continued the patent of the products for infinite time and same would have prevented access to medicine for the needy people. So the entire issue of IP protection, at least from the point of view of patent has two sides to it.
IPR Policy in India has been published recently on May 2016. The IPR Policy is the first of its kind in India and has been drafted so as to promote a positive and progressive IP regime in India while encouraging innovation, creativity and fostering a spirit of entrepreneurship. Another intention of the IPR policy is to discourage piracy. The new policy is compliant to TRIPS too. The new policy has been tailor made to protect and promote the interests of entrepreneurs and stakeholders making products in India under Make in India, Start-up and Digital India campaign. The IPR policy talks about criminalizing any attempt to violate the provisions of the copyright law. The policy also talks about the management of innovation (something that is covered under portfolio management). The policy while aligning the laws to the most advanced treaties also made sure those old and backdated laws should be abolished or amended. The policy also talks about making application under IPR regime easier and less time consuming. The policy also talks about various tax benefits related to IP innovation. DIPP or Department of Industrial Policy and Promotion have been made a nodal point for all IP related activities. The policy also discusses about generating IP awareness and ways of exploiting the innovation and IP through commercialization and by encouraging them through incentives. The policy has got both pros and cons and therefore can prove beneficial or harmful, or both.
Intellectual property lawyers – all you need to know about them
Any lawyer specializing in IPR or having profound knowledge in IPR are fit enough to serve the client. There is not any rule saying no other lawyer other than those specialized in IPR laws can provide services to the client. However it is always preferable that a lawyer practicing in the specific field of law should have sound knowledge on the working and applicability of the concerned law.
How to find IP lawyers – Online and Offline?
Finding an IP lawyer is not a difficult task. Though as per the Advocates Act, no lawyer can actually advertise for itself, but the law firms or lawyers can have their own websites. The websites provides a way out of finding IPR lawyers. Even a generic search across any web platform also helps one in finding an IPR lawyer. However for an effective way of finding out one may refer to various websites and platforms like Lawfarm which acts as an aggregator of lawyers. Some websites also have a rating system which helps client in knowing about individual lawyers. For getting the service of IPR lawyers from renowned law firms one may also refer to Hg.org or Legal500 website. The name of various law firms are given as per tier of services, so that one may find out the details of a firm before approaching a law firm or a lawyer. Start-ups like Cliklawyer have also started doing work in IPR and is looking to build up its practice in the same domain.
How to choose IP lawyers – what are the important factors?
This is one tricky question. Choosing an IP lawyer is not based upon a single factor. A lot of factors are taken together by clients to take a decision on the same. Some of the factors which contribute to the same are client satisfaction or dissatisfaction associated with a law firm. Sometimes a renowned lawyer’s name plays an important role as is the case of Advocate Pravin Anand of Anand & Anand or Advocate Ashwin Julka of Remfry & Sagar. Sometimes clients rely on the number of cases won by the particular lawyer or law firm in the recent times and cases of the celebrities certainly pave a way of choosing the lawyers. Sometimes strategic location of a law firm is given consideration. For example a Media & Entertainment Company based out of Mumbai will prefer not to appoint an IP lawyer from Bengaluru or Kolkata for that matter and their natural choice will be someone or some law firm from Mumbai itself.
Top IP law firms in India
As per the recently published Legal 500 list of IP law firms, firms like Anand & Anand, Krishna & Saurashtri Associates LLP, R.K. Dewan & Co, Remfry & Sagar are in the tier 1 of the concerned category. Other law firms, namely Khaitan & Co, K&S Partners, W.S. Kane & Co, DP Ahuja & Co. Inttl Advocare, S.S. Rana, Scriboard and S.Majumdar Patent & Trademark Attorney are quite popular. Every law firm has their own positive and negative point. Therefore it is always suggestible to personally assess thing before making decisions. And it is always unwise to place a particular law firm in a hierarchy. Few days back, Scriboard Consultants advised Rhiti Sports in acquiring a website in Mahendra Singh Dhoni’s name originally registered illegally by another person. Again RSG India Law Centre’s ranking report on Anand & Anand has given 9.3 score out of 10 in client satisfaction proving how popular Anand & Anand is among it’s clients.
Top IP law experts in India
As per the Legal500 report the leaders among IPR lawyers are Mr. Ashwin Julka, Mr. Chander Lall, Mr. Sunil B. Krishna, Mr. Pravin Anand and Mr. Manish Saurashtri. (Names are not in any chronological order). However there is no ground rule that only these lawyers are the best and no one can be better than them. The top priority should be given to lawyers, who can play with words, law and at the same time can provide the client with top quality hassles less services.
Top IP academics in India
Like the lawyers, India is fortunate to have a group of leading IP academicians from all age groups and part of India. To name few of them, they are Mr. Swaraj Paul Barooah, Mr. Shamnad Basheer, Mr. V.K. Unni, Mr. Yogesh Pai, Mr. N.S.Gopalakrishnan.
Top law schools in India for IP
More or less every law school in India has some form of cells/ committees and dedicated faculties and posts of IPR Chair sponsored by MHRD, Government of India for promoting IP studies among law students in India. However when it comes to a dedicated IP law school, there is only one law college in India which deals with the same. Rajiv Gandhi School of Intellectual Property Rights Law (RGSOIPL), a constituent college of IIT Kharagpur deserves special mention for their IP centric courses. The college offere three years LLB course, LLM and PhD program. However for anyone to be eligible for their LLB course, it’s mandatory to have studied Science or Engineering before during graduation. The presence of such conditions makes it impossible for any student from arts or commerce background to study here for making a career only in IPR laws. N.C. Banerjee Centre for Intellectual Property Rights Studies is another good centre of IP laws among the National Law School framework.
Trusted source of information on IP laws
Like any other field of law, IPR is another field that needs timely update of IPR news and cases so that everyone get an idea of what is happening around. The professionals due to their sheer work pressure do not get enough time to read about the same and therefore IP blogs and news centers come handy for knowing about everything happening in the field of IP.
Trusted sources for IP news – Top IP blogs in India & abroad
SpicyIP in India is a very trusted source of information in India, where the articles are written by IP enthusiasts and only quality articles are being published. Apart from this there are certain other blogs in IPR which provide reliable news. They are as follows, namely – IP Watch, IP Watchdog, IPKat, Patent Baristas, Sinapse, Banana IP News Centre etc. Other than this occasionally articles come across in leading magazines and newspapers authored by leading academicians and lawyers. Apart from all this blogs like iPleaders blog, LegalserviceIndia, though being not IP specialized blogs are another important source of knowledge regarding IP law in India and abroad.
Intellectual property authorities in India – Where can IPR be registered in India?
Intellectual property in India is of several types and hence can be registered under various laws and under different Indian authorities. Patent, Design and Trademark related issues are administered and resolved at preliminary level by the Office of the Controller General of Patents, Designs & Trade Marks (CGPDTM). Under the aegis of CGPDTM (which is based out of Mumbai) works the Patent Office, Design Registry, Trademarks Registry, Geographical Indications Registry, Rajiv Gandhi National Institute of Intellectual Property Management (NIIPM) and Patent Information System. NIIPM and Patent Information System are located at Nagpur. The patent office is headquartered in Kolkata with branch offices spread across India in three major metropolitan cities, namely New Delhi, Mumbai and Chennai. The registry of design is located at Kolkata too. The Geographical Indications (GI) registry is located at Chennai. Among the other authority, the Copyright office is located at New Delhi. These are the suitable bodies where the registration of IP is being done. Apart from all these there are certain Copyright societies in India which has been mandated by Copyright Act and they keep a tab on violation of copyright of the owners and collect royalties and carry out all the compliance work and penalty collection for the authors/ owners. As per the general rule, not more than one copyright society is allowed to do business in a particular class and if found that the society is proving to be detrimental for the owners, the license for such registration societies shall be revoked.
The Intellectual Property Board (IPAB) headquartered at Chennai and the benches are based out of Kolkata, Mumbai, Delhi and Ahmadabad apart from the Chennai itself. The IPAB has jurisdiction over Trademark, Patents and Geographical Indication matter. The tribunal has an impeccable record of being the only tribunal in India which has a certain global impact.
Where do you have to go to get IP enforcement in case of IP INFRINGEMENT?
In case an IP is infringed, filing a criminal complaint by means of an FIR in the police station or moving to a competent court (competent magistrate) for issuing search and seizure warrants for the police to carry out raid to collect evidences. Certain injunction can be pressed against the infringer like permanent injunction, interim injunction, Anton pillar order, John Doe order, seizing the accounts and handing them over to the person who is affected is a convenient way of enforcing the law against the infringer. Apart from this Intellectual Property Rights (Imported Goods) Enforcement Rules, 2007 along with certain provisions of Indian Customs Act are a good way of combating the issue of IP infringement in India.
How to patent an idea – Can ideas be patented in India or anywhere in the world?
Idea cannot be patented, copyrighted or be protected by any IP laws, no matter whichever jurisdiction one goes to. As per the Indian Patent Act 1970 a patent protection can be extended only to the inventions. However the Patent Act does not explicitly state that an idea cannot be patented thereby leaving a scope that in case someone comes up with an idea which he is capable of developing fully can get his idea patented provisionally. However in case the concerned person fails to transform the idea into a functional innovation or fails to give the proper product specification within a time period of twelve month, the patent application will stand as cancelled.
Can provisional patent protect an idea?
A provisional patent can protect an idea but only for time being, i.e. only for one year in case the application gets revoked due to failure on part of the applicant to submit the concrete and final patent and for the term period of the patent as mandated by the patent act, in case the patent is being granted. The provisional patent has several benefits compared to full patent protection. Apart from an extra year the patent gets the protection, the cost of application is much less expensive. In case of any conflict at later, provision patent filing date will be given more privilege. Provisional patent provides ample time to find out the lacunas of the patent which may help one to file a better patent application, one year later. However, one need not have to fear about the details getting disclosed, since the patent application filed under provisional patent application does not get disclosed to the public.
What does it take to get a patent?
The novelty, utility and inventive step is a necessary feature of product to be eligible for patent.
Patent Consideration in India
Patent consideration in India is something which should be considered carefully by any business concern, before they start any commercial activity in India. India and its patent law are totally against ever-greening of the patents and therefore will never allow a patent to over-shoot the term of its protection unless significant changes has been made to the efficacy of the product. India does not allow patent protection to a method of medical treatment either. In case two known and active substances are mixed which in turn increases the efficacy of the final product to the extent that it can be considered to be a new compound, patent protection can be granted.
What is a design patent?
Design patent is a concept not being known among the people. A design patent is the protection given to a particular design of a functional item. Say for that matter a beer’s bottle or Coca-colas bottle design. In some countries like USA a design can be patented by means of design patent which is otherwise known as industrial design right. Apple has several design patent registered. The shape of the Apple – rectangle with four rounded corners is an example of a design patent.
Can one get a design patent in India?
India’s law regarding design and the protection of the same is a little bit different. In India design is protected by Industrial Design Act, 2000 and not by patent act. Though the term of protection is same as that of the patent and the granting of protection is being done by the same office, but a design cannot be patented in India. Also a particular design can be protected in India on the basis of its visual appearance and not otherwise. So, whether a design has been infringed or not depends solely by the physical look.
What is PCT and how can you get a patent through PCT?
PCT stands for Patent Co-operation Treaty – an international patent treaty that was concluded in 1970 and was made effective in 1978 aimed at protecting patents across several jurisdictions (countries) by means of a single patent application made in any one jurisdiction. The contracting states which are a party of the PCT form a union which is known by the name International Patent Co-operative Union. The main purpose of the union is to make sure that by a single window system a patent can be protected across all the 151 contracting states without the need to apply for protection in several jurisdictions by means of individual and separate applications. The unified payment of fees is another key aspect of the PCT. By making a single payment one can apply for a patent, which again saves time while ensuring proper patent protection at the same time. A reference to the fees can be found here. The details of patent filing under PCT, its procedure and documents necessary can be found here. However only nationals of the states which are the contracting parties to the treaty (151 as of now, may shoot up in case more countries decide to be part of the treaty) only can apply for patent under PCT.
For one who is interested in getting a patent registered, the following steps are needed to be complied with. An application for the patent should be made with the national office of the any of the 151 contracting countries to be filed in the International Bureau of WIPO in Geneva. Once the application is made in a national patent office, automatically it will be considered as if the same application has been made into all the national office of the contracting states and the filing date will be considered same for all countries. In case the patent application is being filed in a country which is party to any of the following conventions, namely European Patent Convention, Eurasian Patent Convention, the Bangui Agreement or Harare Protocol the patent application under PCT can be made with the respective following offices too, namely European Patent Office (EPO), Eurasian Patent Office (EAPO), African Intellectual Property Organization (OAPI) and African Regional Intellectual Property Organization (ARIPO). Once the application is being filed it is made to undergo an international search which is normally carried out by a competent authority known as International Searching Authority. At the conclusion of the search an international search report is being prepared having the details of published documents which may affect the invention claimed in the international application. Along with the search report another non-binding preliminary report is being attached which clearly lays down whether the applied patent application meets the patent criteria or not. Following this, the search report and written opinion will be communicated to the applicant and the applicant may withdraw (in case the written opinion and search report suggests that it is difficult to get it patented) or amend to the existing patent application. In case the patent is not being withdrawn the patent application along with the search report is being published by the International Bureau. However during the publication, the written opinion which is non-binding in nature is not published. The applicant may request for a Supplementary International Searching Authority (to be conducted by any ISA which is interested in carrying out the searching) before the expiry of 19 months time (to be calculated from the priority date – the date when the application was filed). This is done to make eliminate the chances of further documents coming to the light later on which may affect the chances of a patent to get protection later on. The national procedure starts after the passage of 30 months from priority date of a patent application before each designated office of various countries member to the Union. During this process, the application is being sought translated in local languages (in which ever jurisdiction it is necessary and it is being sought). The payment of the necessary fees of different jurisdiction and the service of the local patent agents are done at the same time. In case the patent applicant makes any change to the application, an optional preliminary examination may be requested, the report of which is generally being prepared by any International Preliminary Examining Authorities (IPEA) and is being published as IPRP Chapter II. In case no request has been made by the applicant for optional preliminary report which is obviously not binding, the International Bureau establishes an International Patent Report on Patentability which is published as IPRP Chapter I.
What is a patent search?
A patent search is the process of searching and identifying any patent which has been issues and published in a country or in jurisdiction of several countries on the same subject matter and the same may be considered as prior art. The prior art helps in comparing between a patent application and something that is exiting for a long time. It helps in two ways; first it helps in reducing patent application based on copying of the exiting one. Secondly in case of a bona fide applicant it prevents the applicant from working on the same project, thereby saving invaluable time and money. The novelty of a patent plays an important role in deciding the patentability of an object, apart from other conditions.
Why to do a patent search
A patent search is necessary because it helps the patent applicant and the authorities administrating patents in understanding whether any similar type of invention had been made before or not. Thus it deters filing application devoid of novelty and are just mere copies with little or no modification and in case the same thing happens, does not violate the rights of the earlier patentee. And the patent search helps the authority governing and giving the monopoly to the patentee on deciding whether any technology of same type is in existence or not. It reduces the chance on the part of authority of being unfair to the original patentee. Furthermore, a patent search at any stage preserves valuable time and money and labor of all the stake-holders involved in different stages.
At what stage should you do a patent search?
Though normally patent search is being done just before a patent application has been filed, it is always advisable to search the patentability of the invention before one starts working on the same. In case something has already been patented, the patent applicant can save his/ her valuable time, not to mention he/ she may use the same time and money to invent something that is more novel and has more utility and inventive step in it. Even if a patent search in the same area has been done before attempting to make something which is innovative and novel and the same results in providing that there exists no evidence of something of same nature; it is always advisable to keep a tab on the development in the field of patents by means of search to understand whether someone has already patented the said subject matter or not. It also helps the patent applicant in incorporating more changes and utility to make it suitable for patent in future.
Can you conduct a patent search yourself?
With the advancement and development of various user-friendly websites, it is not that difficult to conduct a patent search by oneself. Say for that matter the InPass setup of the ipindia website which actually helps any layman searching about patent i.e. about prior art. The system has very simpleified setup whereby any person mentioning just the application date (range of dates), abstract, description, patent number, application name, number, title of the patent, claims of the patent, inventor name, address, filing office and many others shall help an individual in finding prior art and in conducting the atent search oneself. A screenshot of the InPass System is being attached below:
However it is always advisable for a skilled person trained in the art to conduct the patent search. A person who has experience over a period of time in the field of patent law (patent/ IP lawyers) or any person who has studied science (physics, chemistry, mathematics or engineering) in graduation is a suitable person for conducting patent search. The knowledge pertaining to technology in this case will certainly help them in finding prior art and differentiating and comparing the new ones with the prior ones in deciding whether the subject matter involves novelty, utility and inventive step or not.
Top patent search engines & patent databases
In today’s world when everything from buying a pin to buying a plane is being done online, how can it be possible that there will be no dedicated search engines for finding prior arts related to patents? Every Government has come up with their innovative and user-friendly search engines. A name of few of them is given below. In India we have InPass (http://ipindiaservices.gov.in/publicsearch/), Australia (http://pericles.ipaustralia.gov.au/ols/auspat/welcome.do;jsessionid=8LbUlMA6vyXFdgUQ142YIeA6qtI35ahhFnowpeU_0T-q6TMEoozH!1879099504), Canada have got Canadian Patents Database (http://www.ic.gc.ca/eic/site/cipointernet-internetopic.nsf/eng/h_wr00001.html), European Patent Organization WIPO and European Patent Office has Espacenet (http://worldwide.espacenet.com/), Germany has DPMAregister (https://www.dpma.de/english/index.html), Hungary has PIPACS (http://pipacsweb.hpo.hu/), Ireland has Patents Office Register & Database Search (https://www.patentsoffice.ie/en/), Japan has Patent and Utility Model Gazette Database (http://www.jpo.go.jp/index.htm), Korea has Korean Patent Abstracts Database (http://kpa.kipris.or.kr/kpa/search/search_kpa.do), LATIPAT for Latin American countries (http://www.oepm.es/internet/bases_datos/inven.htm), New Zealand has IPONZ Databases (https://www.iponz.govt.nz/), Romania has RoPatentSearch (http://bd.osim.ro/cgi-bin/invsearch8), UK has UK Patent Office and Spain has OEPMAT. For a detailed account one may access the following links.
How to do a world patent search
It is really difficult to do a world patent search at the same time. This is due to the fact that not all the countries are under one patent co-operation treaty or union. Therefore it cannot be done through centralized and uniform way. However since Patent Co-operation Treaty has 151 members, in that case a single patent search in PATENTSCOPE will help. For the rest of the countries it is advisable to check the respective country’s website so as to come to a conclusion as to whether a particular patent application matches with prior art or not. A judicious balance of search in PATENTSCOPE (https://patentscope.wipo.int/search/en/search.jsf) and other databases and search engine will certainly help an individual to search for patents (prior art) across the world.
In which countries should I apply for patent?
For an inventor the prime concern other than protecting his or her invention is to find a jurisdiction where he or she can apply for a patent. While Patent Co-operation Treaty has given a chance to protect patent easily across several jurisdictions at the same time, the protection may fall short in case the destination country where the patent has been filed for protection or has been protected refuses to give the desired protection. In those cases, the attempt to protect the invention by patents can become counter-productive which may lead to disclosure of important information. Therefore a patent holder needs to be very careful on which countries or jurisdictions to choose for patent filing. Another point every patent applicant should keep in mind before applying for patent is that it is always ideal to file patent in a country which is developing or developed in terms of economy. This is because the developed and developing countries in it’s attempt to become powerful economically always employs new technologies to make things and life easier. Presence of large number of companies which are into manufacturing and business sector makes sure one thing that if patent be filed in those economies, the new technology will have many takers which will not just contribute to a country’s economy but will also contribute to the riches/ wealth of the inventor too who can accordingly decide the value of his/ her invention. As per the 2014 Global IP Filings China reports to have registered the highest patent filing of close to 9.5 Lakh at 9, 28,177. USA and Japan registers 5,78,802 and 3,25,989 filings. We will take few examples of USA, EU, Japan and India to understand the same.
USA – USA is no doubt one of the countries which leads the leader board when it comes to patent filing. Patent protection in USA is covered by Title 35 of the United States Code which talks about protecting patent in USA. USA follows a first to file system of patent filing which means one who applies for patent application successfully is the one who is entitled for the patent. The Leahy-Smith America Invents Act which came into effect in March 2013 made this transition from first to invent, which was mostly based on the evidence of who first made the invention. For a person to get an invention patented in USA, one needs to incorporate the best way practice. By this one may not get patent on the same, but until the Leahy-Smith Act of 2013, if there was no mention of the same, it was sufficient to cancel the patent application. However now even if the same application is not a requirement, but it is a formal condition which needs to be incorporated in the patent application. In US, a patent application is published after 18 months of filing unless requested not be published and the application is only for USA. The rights conferred by the patent in USA are valid only in US jurisdiction and not outside US. However US in itself have a huge market and therefore cannot be any better option. Considering the market size the amount of royalty from those using the patent will be huge too. Another important aspect of patent in USA is that in any case, there is any opposition to any grant of patent unlike other jurisdiction there is no formal way of Opposition. There is a re-examination procedure by which anyone can present the reasons for such application. Bur for deciding on the same the patent holder is being engaged in a discussion with the USPTO (United States Patent & Trademark Office) examiner and the person who challenges the patent is not kept inside such discussion. Another important feature of the US patent system is that it has one part claim. Anything filed in the first part of two-part claim is considered as a prior art claim. Thereby any of the part of one’s invention if added to the first part may lead to jeopardizing the patent itself.
EU – EU’s patent filing is not a local one, unlike USA but spreads over a region or over a continent i.e. Europe. As of now 38 countries are part of the European Patent Office (EPO) – the body which oversees patent filing in EU. The EPO is a PCT styled patent cooperation treaty which gives an opportunity for a patent applicant to get protection in as many number of states at one go. The European Patent Office grants patent protection in a bundle as one patent application makes it fit to be protected in several EU countries. Also every patent is considered as national patent in this case. The EU patent application is a two part application which needs an invention to be novel and should necessarily involve an inventive step. In case someone wants to oppose a patent, he or she can file an application mentioning the reasons for such opposition in writing within 9 months. The EPO generally gives its judgment after both the patent holder and opponent argues over a matter. While first part of filing opposition and reply happens in several rounds in writing, the second part of argument and hearing happens orally. The EPO does not need a patent applicant to mention the best use of his/ her patent. Also it is noteworthy that the patent application under EPO gets published after 18 months and the same cannot be kept secret unlike in case of US.
Japan – Japan much in the lines of the most advanced countries has a first to file system. In case two applications for the same type of product are filed on the same day, and none of them manages t come into a mutual understanding, none of the applicant will get their patent registered. The ownership of the patent can be decided by the contracting party which means in case someone who invents a new product was under a contractual obligation of a company, a company may claim for the same patent. However the Japanese patent law also says that in case the patent application has been filed by someone who is totally unrelated to the inventor, the patent application will be nullified. For getting a patent to be registered in Japan, a product needs to be something of the utility, the product should be non-obvious (it should be an inventive step) and novel in nature. The Japanese Patent law mentions of a six month grace period and that too in case of special circumstances only. For further information on the same and a detailed study, one may refer to the following link.
India – India is no doubt a great place to get an innovation registered as a patent. The country is advancing both in terms of technology and innovation and the economy is booming. Therefore patent protection under Indian law (Patent Act 1970) has become an essential condition for a business entering into Indian market. However Indian patent law is totally against ever-greening of patents and therefore it may prove to be risky and dangerous destination for the money minded pharmaceutical companies. Also the compulsory licensing under Indian patent law is another big headache for the foreign companies looking to protect their patents in India. One can file a patent in India under Indian Patent Act 1970 for getting protection only in India. However anyone from India trying to get protection worldwide may use the PCT route for the same. When the Indian Patent act 1970 was enacted, in order to fulfill the government’s aim to protect the poor and the vulnerable and to provide them with medicines at lower rates, only the process patents were enacted. That means patent on product was not given and the Indian companies started producing medicines using reverse engineering and by using other procedures the same medicine. However as soon as India acceded the TRIPS Agreement, it was decided that India will henceforth respect the products patents, but only the ones that are being provided in India and the protection will be of 20 years from the date of filing of the application. In a positive note India is no doubt a good place to file ones patent if not better.
However under the present regime when PCT has become a possibility, in case one wants to protect its invention in multiple jurisdictions, PCT is the best route. In case one wants to protect his or her invention and the concerned country has not acceded to PCT, the corresponding law of the country or the region can be used.
What is process patent and product patent – what is the difference?
Patent is considered to be one of the most important IP and is definitely an important driving force behind a country’s economy and development. Patent is a statutory protection given by the Government of a country to its owner and is also a source of revenue and income for state and people respectively. Naturally people have more interest in getting things patented. Patent can be of two types, namely – product patent and process patent. Product patent is a type of patent whereby the final product is granted protection. Whereas process patent is a utility patent whereby only a specific process of the patent is being granted protection and the main product is not being provided any protection. Developed and developing countries follow different way of patent, the developed countries follow the product patent way whereas the developing countries in fuelling their development and welfare activities prefer the process patent route. However countries which are within the ambit of TRIPS have to protect product patent.
Is getting process patent easier than getting product patent?
Process patent may be easier to get since by means of reverse engineering one can get the product and its composition elements and can find out a way to get a different process patented. But in case the product is patented, no matter whatever process is being used no one can patent the product which is most likely to be already patented. However one will be interested to know that currently under Indian Patent Regime, a product can be patented and therefore the question does not arise of whether it is easier to get a product patent or process patent. Henceforth whosoever will apply for patent protection will apply for product patent and getting a process patent will become impossible.
What is the role of the patent office in the patent process?
The Indian patent office plays a very important role in the entire patent process and procedure. Like starting from the application to the final granting of the patent, the patent office and the examiners plays a very sincere role. An error on their part would certainly cause the patent applicant and the country a lot of losses and therefore no can belittle the effort put by the patent office. Starting from objecting to a wrong patent to a company’s attempt to ever-green a patent – anything and everything under the sun is being regulated by the patent office. The examiner and controller in the patent office can be considered to be two arms of the patent office. The importance of them can be comprehended from The Ayyangar Committee Report on the ‘Revision of the Patents Law’. For knowing about them one may refer to the Spicy IP article authored by Mr. Prashant Reddy on the same. A few snapshots of the relevant report can be found here.
Who are patent officers in India and what their qualification is
Patent officers in India are those who are actually entrusted with the day to day operation of the patent office in terms of patent examination. Patent officers are primarily entrusted with sorting and managing the patent application in the various offices across India, analyzing the patent on the basis of novelty, utility, inventive step and industrial application. For a person to be appointed as a patent officer one need to be a science graduate or a n engineering graduate. One may also have master’s degree in science. The primary reason why a patent examiner needs to be a science graduate is that most of applicants that are being applied for protection are technology based. Therefore it is almost impossible for a person without having science knowledge to analyze the scientific aspect of an invention; hence the science qualifications do really plays an important role.
How does one get a job in patent office?
From time to time, the patent office expresses its intention to appoint patent agent in its various offices. For keeping a tab on the same, one may refer to the Employment News; a weekly published by Government of India or may refer to ipindia.nic.in website.
How can one become a patent agent in India? Why can’t advocates file patents or appear before patent authorities in India?
For an individual to be eligible for becoming a patent agent one needs to pass the patent examination or should have at least 10 years experience as an examiner in the office. The applicant should be of minimum 21 years age, and Indian citizen and ideally one needs to be a science or engineering graduate who can understand the technological intricacies necessary to be understood in cases of patents. Therefore the controlling body believes that anyone other than a science or engineering graduate will not be able to carry its work effectively. However, recently Madras High Court has struck down this eligibility for one to be a patent applicant. But the same judgment have been challenged, which raises question on whether an advocate can also be patent agent or not? However to play safe it is always suggestible that a patent drafting be carried out both by an advocate and a science graduate, so that one may compliment the other.
How to get patent – basic universal steps
Getting a patent may seems to be a pretty easy task. However in case the correct procedure is not followed, a patent may even get invalidated. Therefore ideally a patent should follow certain procedures, which are considered as the minimum requirements for getting a patent. Firstly, it is important to identify the inventor. Secondly, it is important to mention the area of invention along with the advantages which can be derived from the same, description of the invention and the working of the invention. Thirdly one needs to find out whether the invention that is applied for patent has any novelty in it or not which is also known as patentability search. Also one should keep in mind the industrial applicability of the patent and how much non-obvious the product is. The patentability report and opinion helps an individual in deciding whether to continue with patent or not. One should also try to spot where his / her patent lies (design patent or a utility patent) and what kind of patent one may expect to get. One also needs to find out by what time one aims to complete the procedure of patent examination and publication. In case the patent faces any opposition the same issue should be addressed as soon as possible to make sure patent is being granted as soon as possible without any unnecessary delay.
How to draft a patent application
Drafting a patent application forms the main part of a patent. A meticulously detailed and well researched patent application decides the fate of a patent and during the time of its filing, examination or prosecution or granting of the patent plays a significant role. A well drafted patent needs to incorporate the following points. A patent should have a cover page which is also known as first page and front page. The cover page should ideally have the name of applicant, date of filing, name of inventor and the title of invention, date of priority, publication, and abstract of invention and grant of patent. In a word the first page generally covers the factual information related to the invention in the form of a bibliography. Secondly the patent document should have the patent specification which is also known as disclosure or description. Ideally the written description should be just next to the cover page. The patent specification is nothing but a written illustration of the purpose and along with diagrams and pictures of the invention showcasing the functioning of the object which is the subject matter of patent application. However hard and complicated languages in the patent specification should be avoided as much as possible as the complexity may mar the chances of a patent to be granted. While drafting patents, one should keep in mind whether any layman can face any trouble in understanding the same! The body of the patent specification changes from jurisdiction to jurisdiction. The style Indian Patent Office follows can be listed down here – Title of invention, Field of invention, Background of invention with regard to the drawback associated with known art, Object of invention, Statement of invention, A summary of invention, A brief description of the accompanying drawing, Detailed description of the invention with reference to drawings/ examples, Claim(s) and the abstract. The PCT again follows somewhat different format for patent specification, namely – technical field, background art, disclosure of information, brief description of drawings, best mode(s) for carrying out the invention, industrial applicability and claims. Whereas the USPTO follows a different formant divided under the following sub-headings, namely – Title of invention, cross-reference to related application, statement regarding federally sponsored research or development (if any), reference to a sequence listing (if any), background of the invention, brief summary of the invention, brief description of the several views of the drawing (if any), detailed description of the invention, claims and the abstract of the disclosure.
The title of the invention as the name suggest, clarifies what the main art of invention is! It should ideally be not more than fifteen words. The field of invention signifies the scope and the area of the invention. The field of invention should be to the point so that the patent examiner may understand the same at one reading. The crispness of the draft is an important element in this case. In the part of the background provisions one needs to say how is his / her invention different from the prior art and how the invention can solve the problem which is common in the prior arts. The object of the invention should necessarily incorporate the advantages the said patent is set to bring. The object of invention should have a comparative analysis of the innovated product with the one existing in the market already. The statement of the invention describes the novelty or inventive step involved with the patent. The summary of invention basically sums up the detailed overview of the patent and its specification that in spite of being a gist actually brings to the light what exactly the invention is all about! In the brief description of the drawings it is necessary to mention the procedure by which the object has been produced. All the technicalities should be explained well enough so that someone who is skilled in the art may understand the same and perform the functioning I f needed. The detailed description should necessarily show the detailed procedure of the invented product, all the pictures of the invention which will help a person to comprehend the invention, how the invention works in an application with real life example wherever possible. The real life examples help one understand in a lucid and better way. The abstract should be short (ideally within 150 words) summing up the invention in a simple language. A claim is the part where the author or inventor is limiting the boundary of his / her invention. In other words, the claim is the submission made by the applicant whereby he is marking the area or territory which he/ she is asking to be protected legally by the act. The claim has three parts – an introduction regarding prior art, one applicant’s contention on its invention and a link connecting two of them. The claim part should be totally free from any error, there should not be in repetition of facts, words should be crystal clear so that the actual meaning of the applicant comes out. Only a single line should be used in each claim. All the claims are judged individually and therefore refusal of acceptance of one of the claim makes the application invalid. Also one should have a look at various terms and conditions related to the fees as there are different fees for individual, company and entrepreneurs / start-ups. Start-ups under the newly framed IP and Start-up Policy has got certain discounted fees.
Patent drawings – how important?
It is often said that a patent drawing is equivalent to thousand words. In other way patent drawing is another pillar of success/ failure for a patent application. Patent drawing incorporate minute differences in the drawing and the same difference can be noticed if shown through image instead of words. Words, in many case fails to illustrate and elucidate a certain point through simple words and therefore pictures play a very important role. It is not an issue for simple patents, but in case of complex patent involving combination several parts drawings play an important role in understanding the reality of innovativeness. Without picture one may find it very difficult to comprehend and may pose a big challenge while comparing the exiting application with the prior art. Also in case of any patent litigation, pictures come handy in proving one’s point as to the degree of innovativeness involved in the said subject matter.
Who should do your patent drawings?
Though there are no statutory instructions or rules regarding as to who can make a patent drawing, ideally someone who has got knowledge in technology or science should be the best person to execute the patent drawing. The reason being an engineer, or a scientist or a technical bears the proper acumen to draw and has the best knowledge to design and amend changes in the design in case there is any technological error. Making a patent drawing with the help of a technology specialist helps in reducing the chances of error in patent drawings, which will certainly help one in the long run in case of any conflict on the later stage. For the purpose of drawing, one may use CAD (Computer Aided Design) Software which is a flexible platform for drawing and making amendment to the patent drawing in an effective yet easy way.
How and where should I apply for patent in India? Can patent filing be done online?
Patent are supposed to be applied in the respective patent offices in India. Since the patent filing has been made centralized and the Patent Amendment Rules of 2016 has made it obligatory for the applicants to file the application through online mode only, there one may file the patent one and only through Comprehensive E-Filing. The same can be accessed at https://ipindiaonline.gov.in/epatentfiling/goForLogin/doLogin. Patent can be filed by an inventor, or his legal representative or his assignee at the head office or its associated branch offices. The jurisdiction of the office where the application can be made will be decided by the residence, domicile status or the place where his principle business office is located. This rule is applicable for Indian applicants. In case of foreign applicants, the jurisdiction is decided by the place where the business is intended or by the patent attorney’s office, the general trend being the later one. The application should have the declaration where the inventor has made a declaration to that effect, a statement and undertaking as regards to the invention, applicant’s proof of right of making the application and the agent authorization by which the agent is free to carry out the case and take the decision on the client’s (applicant’s) behalf. The filing of patent can be of three different types as per the Indian jurisdiction, namely – Ordinary Application, Convention Application and PCT National Phase. The three applications are different and have terms and conditions involved.
- Ordinary application as the name suggests is the general form of patent application which is filed first and where no priority is being claimed in comparison t any other patent application which is under process in patent office or the ones which has just been filed. An ordinary application can be provisional or a non-provisional one (in case a patent has been filed directly for patent) depending on varied terms and conditions.
For applying a provisional patent application under the ordinary form of application, one needs to submit the provisional application in Form 2 along with an application in Form 1 and other documents in a copy of two. The prescribed fees for the same are according to the First Schedule. The front page of the From 2 should have the mention of the title of the invention, name, address and nationality of the applicants of the patent and also introduction of the preparatory statement as regards to the invention. The ordinary provisional patent application also needs to include the description of the invention with a proper title explaining the same, illustration (wherever necessary). Since the application is a provisional one, claims may not be made a part of the claim as the sole purpose of making the provisional application is to make a priority claim. It is advisable not to file ordinary provisional patent application if the patent application is made as a divisional, convention or PCT National Phase application. It is also noteworthy that in case the complete specification is not filed within twelve months of filing the provisional application, the whole purpose of the same will get defeated as according to the Patent Act, 1970 the same shall be considered to be abandoned.
This is what a provisional ordinary application is all about. Now let’s have a look at its counterpart, the non-provisional application. As stated earlier, the non-provisional application needs the complete specification where full concept about the invention, its use and the operation along with the method of performance is necessary. Apart from this the following condition also needs to be satisfied, namely the best method of performing the invention (which is known to the applicant) should be made out in the application, the claim which ultimately defines the scope of the invention should be mentioned, should have an abstract which will provide a scope of the invention and in case the specification has a biological material mentioned, the application shall be made public once and only when the same material is deposited to an International Depository Authority (IDA) as per the Budapest Treaty. The claims made in the application should be clear and such that all the road should lead to a single invention. In case multiplicity of concept is being found the same may lead to cancellation of the application. The paten application should also have a power of authority in From 26. In case a general power of authority has been filed in other jurisdiction or other application, the same needs to be self attested and should be submitted. In case the company is a small entity one needs to submit Form 28 while making payments every time to prove the entity status. Also there is a specific time as to by what time Form 3 can be submitted. It can be filed wither with the application or within six months of filing the application, in case it is not filed earlier. One can refer to the Forms for a better understanding.
- Convention application is the form of application by which an application should be filed in the patent office with a claim mentioning a priority of the application. In other words, the application which is filed in the patent office should have substantial similarity with the application filed earlier in patent office of some other country which is also a part of the convention as like India. In order to get application through this route one needs to file the application within twelve months of applying the first application in one of the convention country. A convention application should have the mention of all the specifications, should be accompanied by an abstract, a list of complete specification filed in the convention in respect of which the protection has been sought, or additional specification compared to the one already applied in ca convention country. The application under convention application also needs to have a mention of date on which the first application was made along with the date on which such an application has been made. The applicant should mention that no other application has been filed for protection before the date provided in any other convention country by the applicant or by any person who hold the title originally. Also, a certified copy of the priority document issues by the controller of the concerned authority of the country where the first application was filed should be submitted. In case the original application is of some other language, a certified copy of the translated version of the same should be submitted. A Form 28 should also be filed in case the entity is a small one whenever any fee is being paid.
- The last way among the filing of patent is the PCT National Phase which is usually the second phase in PCT, following the International phase. The National phase as the name suggest is the time when a patent is being filed with respective offices of different nations who are part of PCT. Generally one needs to file the national phase within a definite time period i.e., 31 months from the priority date. The time limit, however be extended from country to country as per the national laws of different countries. In case the international application has been published in languages other than Hindi or English, a translated version of application is necessary along with the claims (originally and amended), abstract, descriptions, illustrations. By rule title description and all details mentioned in international application should be taken unless the same has been amended and modified. In that case, amended versions should be taken. The applicant can also request for an amendment to the Controller in the complete specification filed with the controller in a separate form. The fee payable is being decided on the number of pages in the application and the claims mentioned in the PCT Application (till the date of patent filing in India).
If any change is being made in the International Application before ISA or IPEA, if the applicant wants the same change can be made in India too. For that one needs to make an application with the Controller. In case o change in the name of applicant, if the change has been effected in International application the same can be done in India to by filing form 6 and/ or 13. In case one fails to file the priority document by the said time, a three month grace period will be given to provide it failing which the priority application will be disregarded. Processing an application will not be made before the expiry of 31 months. Also since with WIPO all documents are accessible, people should try to submit as much correct information as possible. Apart from this all other formalities related to National Phase Application should also be made applicable.
However for a better and proper handling of the case, it is suggested to advise a seasoned patent lawyer to strategize the steps.
 Section 20 (1) of Atomic Energy Act, 1962