Apr 19, 2018 | IPR & Business, Patent, Startups
In this technologically progressive era, huge amount of knowledge gets generated and added in the prior art every day. Where on one hand keeping pace with technical progress in present times is a challenge, on the other hand, innovation has to happen to ensure sustainable growth. Till the time, you foresee the innovation in a given area of technology, it is impossible to create significantly creative and valuable products. Another issue in technologies such as electronics or software is that innovation cycle is too short, meaning that in no time after you market or commercialize the product, you may see next versions of the product floating around. Considering the high cost of R&D and resources, output often is not that meaningful and sustainable.
In most of the companies, before designing R&D in a given area of technology, one important parameter is often missed out, i.e. assessment of “state of the art”. Even though by means of product surveys, competitors’ products or otherwise, the products available in the market are often watched carefully but the wealth of technical information lying in the form of patents is largely ignored. It is important to note that few of the patented technologies actually come in the market, meaning that, there is a huge amount of knowledge, in the form of patents, which is not seen in the market. However, assessment of this wealth may help in various ways, such as:
- It helps you to assess quality of your product and after knowing state of the art, you may further fine tune your product or add more value to it.
- ‘State-of-the-Art’ may reveal many interesting ways of performing a process or a method or manufacturing a product, which you would have never thought about and this actually can add lots of value to the existing product/process.
- Assessment of patentability of the invention compared to state of the art becomes clear and easy.
- The best thing about a patent is that the best mode of performing an invention known to the inventor is disclosed. In most of the countries, patent law expects inventor to disclose the best mode of working the inventions. Thus, most of the times the patent documents provide complete technical working of the inventions with illustrations, drawings and examples.
- Based upon State-of-the-Art, if you feel that your invention is significantly better than existing patents, you might consider filing for a patent for your invention.
- Infringement of patent happens when one makes, sells, offers to sale, import patented product or a product made from a patented process without permission of a patent holder. As a result of state-of-the-art search, you might come across a few patents or patent application (not been granted), that are very close to your invention. In such a case, it is worth looking at such patents in detail and check for their validity (whether they are legally enforceable or not) or to see if they have been filed or granted in the country (ies), where you intend to market your product. If there are any such patents, you need to be careful as there are chances that you might be infringing such patents.
- State of art data can be represented in various forms and interpretation of such data into various graphs can provide you valuable information in terms of key players, active areas of technology, patent filing, publication and grant trends, favorable jurisdictions, international classification etc. This data may play a vital role in formulating patent strategies for the organization.
State-of-the-art is a wealth of knowledge, in fact a powerful tool that is important not only to prepare a strong base to formulate your R&D strategies but also assists in multiple ways. It is worth investing time to unfold state-of-art to create innovative, commercially viable and meaningful products to obtain a competitive edge in the market.
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Apr 19, 2018 | Indian Patents Act 1970, IPR & Business, Patent, Startups
In simple words, patent infringement is the violation of patent rights of a patentee in the country or jurisdiction where the patent has been granted. This violation happens when any third party, makes, uses, sells, offer for sale, a product or process claimed in the patent, granted to the patentee without his/her authorization or license. When a patent is granted, the patentee gets the right to prevent third party (ies) from making, using, selling, offering for sale or importing the patented product in the country where there is patent protection.
A business owner may violate rights of a patent with or without knowledge and therefore, it is highly recommended for business owners to examine existing patents before launching their new products to ensure that no patent rights are violated in the territory where their product is going to be launched. This investigation to assess patent infringement risk is called as Freedom to Operate (FTO) analysis or clearance search.
How is FTO performed?
Purpose of FTO search is to assess the likelihood of patent infringement upon launch of new product in a specific market. The best time to perform FTO search is at the time of designing the new product because its is easier to make changes in the product specifications and the infringement risk can be minimised or nullified easily at early stage of product development. FTO is a very specialised investigation and analysis of patent documents, done by a skilled attorney, who possesses a good working knowledge of technology as well as law. The final opinion on infringement shall always be rendered by an advocate according to the laws of the jurisdiction. Generally, following steps are taken up to perform FTO analysis:
- Identification of components of the product to be launched and listing out nomenclature of the components, as generally used in the industry.
- Performing a patent search with all possible synonyms of the product component names and other search techniques to pull all relevant patents. Patent search here may be global or country-specific depending on the countries in which the product is going to be launched or sold. The business owner must be very focussed and specific with respect to patent search strategies to ensure that the appropriate data is extracted.
- Depending on the requirements, a history dating 20 to 22 years prior to the date of performing the search may be set as the scope of patent search because the term of a patent is 20 years and only “in-force” or live patents get infringed. Therefore, considering very old and expired patents may not be of much use for FTO search. However, expired patents may be extremely helpful to find out technologies or products for which patents have expired. Even though expired patents may not impose any infringement risk but they can certainly provide valuable information otherwise.
- After the relevant patent documents are extracted, it is important to segregate them into “expired”, “abandoned” or “in-force” patents. Further, there may be a need to separate out patent applications and granted patents. If there are any risky patent applications, it is highly recommended to monitor them periodically to find out the kind of objections that the examiner raises during prosecution and to know if patent application gets granted as a patent or not.
- Further, during performing FTO search, if there are any “lapsed patents”, there may be chance of restoring such lapsed patent. Therefore, the legal status of lapsed patent shall be checked periodically and the risk it imposed shall be completely ruled out only after the timeline to restore has lapsed and its legal status reflects as “Expired”.
- Patents so extracted shall be studied in detail by comparing claims of the patents with product features. Generally, patent practitioners prepare claim maps where the portions of the claims with match or overlap with product components are highlighted. Based on the extend of overlap between patent claims and the product components, the patent documents may further be considered as low, moderate or high-risk patents.
How to handle high-risk patents?
In case the FTO analysis reveals high risk patents, using such patents may be detrimental for the business. Following points may be taken into consideration before using such patents:
- Check expiry date of the patent. If the patent is going to expire soon, it is worth to wait for the patent to expire before using it.
- Carefully read and analyse patent claims and try to understand what is claimed. Often the language used in the claims is very complex and expert advice must be sought.
- Perform invalidation search to understand how strong the patent is. This search is performed to identify the grounds on the basis of which a patent may be invalidated. Generally patent search is performed to reveal closest prior art and novelty/inventive step is assessed.
- Based on the outcome of invalidation search, opposition to the grant of patent, if patent is not yet granted; or post-grant opposition or even revocation may be filed. The opposition petition shall have all possible statutory grounds of opposition, which help the Controller of Patents to give decision on invalidating or revoking the patent.
- In case there is no other way out, obtaining license to use the patent may be obtained from the patentee. This option may not be feasible in most of the cases as granting license is at sole discretion of the patentee.
Above listed are few ways to handle a situation where there is a high risk of patent infringement. If none of the steps work, it is advisable not to use the patent because if patentee takes a legal action, it may be detrimental for the reputation and good will of the business. In Merck vs. Glenmark case, the Delhi High Court passed an injunction against Glenmark for manufacturing the generic drug Sitagliptin and using patented product of Merck as there was prima facie infringement of patent rights of Merck. Delhi High court passed injunction order against Glenmark from manufacturing and selling of Zita and Zitamet. Thereby, patent rights of Merck were protected and enforced.
Patent infringement risk assessment and mitigation shall be integral part of steps to be followed before new product launch. FTO search can be extremely helpful to understand extent of infringement risk and to take right measure to minimise it.
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Mar 19, 2018 | Indian Patents Act 1970, IPR & Business, Patent, Startups
Patents are recognized as a valuable source of technology and competitive information due to the disclosure of technical and scientific information in it. Study and analysis of patent literature provides good understanding of current technological and competitive environment of any technology domain. A better insight of the patenting activity reveals a more objective approach in determining how to prioritize research and development. Research-based firms continuously seek to discover new ideas and new technologies and to translate these into unique products that can be protected from competition by patents or other intellectual property rights such as design or copyright.
In order to convert ideas into unique product one should possess solid knowledge of the market and trends in the market, also a better understanding of the competitors in the relevant field of technology. This is possible through patent mapping or patent landscaping. Patent landscaping, also known as “patent mapping” or “patent analytics” is a comprehensive state of art search, which gives past and present patent and non-patent activities of the competitors in the given area of technology. It also provides a graphical representation allowing for comprehensive analysis with an ability to link more detailed text when needed. This search is a deeper analysis of a State of Art Search, where State of Art Search is the broadest and most general of all patent searches. It is essentially a market survey that should ideally finds out what technology already exists and then build on it.
The Patent Landscape Search can identify potential patent portfolios for acquisition, existing or potential infringers to be pursued, and potential technology to be exploited. The typical Patent Landscape Analysis, Patent Mapping or Patent Analytics are customized to the client’s needs and are useful for:
- Identifying the key players operating in a technology domain. This is critical for any business to know so that activity of competitors can be monitored and based on this own IP strategies can be devised.
- Identifying the R&D focus of key industry players by identifying the patents and analyzing the technologies they are working in. Based on this, own R&D can be planned in a better manner.
- Identifying the technology curve & trends
- Identifying seed patents in a technology domain
- Identifying licensing opportunities based on the identification and knowledge of technologies patented by others in particular jurisdiction. The thorough review of the valid patents can also help to minimize patent infringement risk.
- Monitoring market interest
- Identifying opportunistic technology gaps for licensing, development, or in a geographic area
- Visualizing the most densely patented and most sparsely patented technology area
- Determining the most prolific inventors
- Identification of possible collaboration and acquisition and merger opportunities
- Devising suitable patent strategies for the organization
Therefore, patent analytics or patent landscape can be useful for to formulate business strategists, market analyst, scientists who make key decisions in new product development, R & D planning and strategic business development in order to gain a competitive edge.
Origiin, with a skilled team of patent agents is one of the best patent companies in India offering patent services such as, patent searching and patent filing, in India and abroad.
Deliverables: Landscape report in PDF and backend data in excel sheet is provided
Timeline: 15 business days
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Mar 4, 2018 | Indian Patents Act 1970, IPR & Business
In this case, Medical Technologies (hereinafter referred to as MT) filed a suit for passing off against Neon Laboratories (hereinafter referred to as NL), for the use of the Trade Mark “ROFOL”, which they pleaded is deceptively similar and identical to their trademark “PROFOL”. Brief facts of the case are as follows:
- MT herein had pleaded that they are engaged in business and manufacture of pharmaceutical products and medical preparation, and have acquired high reputation and goodwill in the market. That their predecessor-in-title, introduced a molecule preparation and generic drug ‘propofol’ for which the product permission was obtained from Commissioner of Food and Drugs Control Administration on 02.05.1998. That their predecessor also coined the trademark “PROFOL” in April 1998 and since then the said mark has been used for the product. In 2000 after amalgamating with the predecessor, MT became owner of the mark “PROFOL” and subsequently filed for trademark registration.
- On coming to knowledge that NL introduced in the market similar product with the mark “ROFOL”, the present suit was filed by MT claiming that the mark “ROFOL” is deceptively similar and identical to their mark “PROFOL” and that the NL has been passing off its products as that of MT. The Trial Court restrained NL from using the “ROFOL” on the basis of its similarity to MT’s mark “PROFOL”, which was affirmed by the High Court on an appeal. And an appeal was preferred by NL against the decision of High Court.
Arguments
By Appellants i.e., NL
- That they had obtained registration of the trademark “ROFOL” in class 5 of fourth schedule Trade Mark Rules on 14th September 2001 relating back to date of application viz. 19th October 1992.
- That the date of application is relevant to present dispute as MT was not present in the market in the year 1992.
By Respondents i.e., MT
The primary contention of MT was that they were honest concurrent user of the mark “PROFOL” and that the mark had been in use since 1998 by their predecessor-in-title which was passed upon them in the year 2000 whereupon they filed for registration of the said mark. That they have acquired high reputation and goodwill and that the mark used by NL was deceptively similar and identical to that of MT’s and hence injunction was sought by them to restrain NL from passing off their product as that of MT’s.
Issues
The core issue before Hon’ble Supreme Court was that whether the prior registration will obliterate the goodwill and reputation earned by the parties? Would a deeming provision i.e., relating registration retrospectively prevail on prior user?
Judgement
The Hon’ble Supreme Court observed that to claim exclusivity trademark should not be descriptive and should normally be partake of new creation, but in pharmaceutical industry it is common for a product to be named after the molecule or salt from which it is constituted which form a favourable determinant in passing-off action.
Further, Hon’ble Supreme Court elucidated upon the rule of “first-user” and observed that this rule is seminal part of the Trade Marks Act. The court reiterated Section 34 of the Trade Marks Act, 1999 and observed that:
“This Section palpably holds that a proprietor of a trade mark does not have the right to prevent the use by another party of an identical or similar mark where that user commenced prior to the user or date of registration of the proprietor. This “first user” rule is a seminal part of the Act. While the case of the Plaintiff-Respondents is furthered by the fact that their user commenced prior to that of the Defendant-Appellant, the entirety of the Section needs to be taken into consideration, in that it gives rights to a subsequent user when its user is prior to the user of the proprietor and prior to the date of registration of the proprietor, whichever is earlier. In the facts of the case at hand, the Defendant-Appellant filed for registration in 1992, six years prior to the commencement of user by the Plaintiff-Respondents. The Defendant-Appellant was, thus, not prevented from restraining the Plaintiff-Respondents’ use of the similar mark PROFOL, but the intention of the Section, which is to protect the prior user from the proprietor who is not exercising the user of its mark prima facie appears to be in favour of the Plaintiff- Respondents.”
And thus, it was held by court that reluctance on part of NL to use the mark and to restrain MT from using similar mark could be interpreted as an indication of abandonment of the mark. And, that the MT had been using the mark well before any attempted use by NL. The Court affirmed with the observation of lower courts and subsequently injunction was grated in favour of MT.
By: Dhruv Dangayach, Ramaiah College of Law
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Feb 19, 2018 | Indian Patents Act 1970, IPR & Business, Patent, Startups
The most significant aspect of a patent specification is unquestionably the patent claim. A patent claim concisely defines what the invention claims and what is to be protected. In other words, patent claims specify the scope of the invention. Every patent application must have carefully phrased claims, as claims are very important in litigation. Notably, a claim is typically phrased as a codified statement of technical facts indicating the extent of the invention claimed to be protected. A patent claim specifies the novel characteristics in the patent application that the inventor wishes to protect.
Anatomy of a Patent Claim
A patent claim comprises three essential parts: the preamble, transitional phrases, and the body of the claim.
- Preamble: This section specifies the type of invention for which the patent is being applied, such as a method, process, apparatus etc. The preamble should always be consistent with the title of the invention. For example, if the applicant wishes to patent a method/assembly/system, the preamble will begin like, “A method for…”
- Transitional Phrases: The transitional phrases indicates whether the claim is restricted to the elements stated or whether it may apply to products or processes that have other elements. In other words, they are typically the statements that convey the idea that the claim is either limited to the items specified or encompasses more procedures with additional attributes. Some examples of transitional phrase are, comprising of, wherein, consisting of etc.
- Body: This section of the claim includes all constraints and aspects of the claim and illustrates their relationship.
Preamble Transitional Phrase Body of the Claim
A bed sheet tensioning device comprising [a resilient strap with releasable fasteners at each end thereof, each of the releasable fasteners being adapted to fasten the strap to the cloth material of a bed sheet by gripping the cloth material without any part of the fasteners being included on the cloth material]
Different types of patent claims
- Types of claims based on drafting
- Independent Claims: Due to their ability to precisely define the distinguishing quality, they are also referred to as “primary claims.”. Independent claims are “stand-alone” claims that do not refer to any other claim. Independent claim includes a preamble and all the details required to describe the invention. The first claim, generally stands alone, establishes the level of protection that the invention is claiming. To prevent possible infringers from evading the independent claim in any way, independent claims are often more expansive than dependent claims.
- Dependent claims: These claims are so called because they relate back to a prior independent or dependent claim, thereby limiting the applicability of the earlier claims. The scope of dependent claims is generally less than that of the claim upon which they are based such as independent claim. It occasionally might include well-known characteristics, even minor details and optional innovative elements of the invention.
- Types of claims based on invention field
- Jepson claims: The preamble of a Jepson claim describes a prior art statement, which is followed by claims that represent an improvement over the prior art. In an overview, it elaborates on the point of the invention’s uniqueness in comparison to previous art in a specific domain. Jepson claims are the most common in US patent law.
- Markush claims: A Markush claim is a type of claim that is used to prevent the creation of new claims. A Markush claim allows a patent drafter to select a specific element of the invention from a group of features that all share some common characteristics.
- Swiss-type claim: This type of claim is used when a previously unknown compound or substance is to be patented for a new medicinal use. In other words, this is a resurrected claim format intended to include the first, second, or subsequent medical utilisation of a well-known composition or substance.
- Types of claims based on invention
- Product claim: A product or apparatus claim addresses an invention’s structure or functionality. A product claim, for example, can define the components of a new device, the structure of an electrical device, or the functional components of an equipment.
- Process claim: A process or method claim describes how you do something, such as perform a task, develop a product, or process the data. For example, the manner you process specific materials to form a product, encode and decode data within a particular context, or perform image recognition using an imaging system are all examples of processes which may be described with a process claim. Software and corporate approaches also fall into the process claim category.
- Types of Claims based on structure
- Composition claims: These claims are frequently made when an innovation relates to the elemental composition of any component or material.
- Mean-plus-function claims: These claims make no reference to the precise design of the invention. Further, the mean plus function claims provides instructions on how to carry out the desired function. In a mean-plus-function claim, the element in the claim can be expressed in terms of the steps necessary to carry out a function. Additionally, the scope of these claims is broad enough to encompass all the components or structures described in the application.
Patent claims are perhaps the most significant aspect of any patent application. As a matter of fact, when drafting a patent claim, the patent drafter should always consider taking extra care and attention. The more precisely the patent claim is documented, the easier it is to defend the invention against potential infringers. The technical aspects of the invention should be stated as thoroughly as possible in the claims. Drafting a patent is a challenging task, and failure to do so properly can arise in a delay in grant, or even rejection. To avoid such disruptions, one should seek the advice/assistance of patent experts to attain a thorough understanding of preparing claims that provide better protection.
By: Dr. Paridhi Malhotra
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