Competitive benchmarking & IP Portfolio analysis

Apr 18, 2023 | Indian Patents Act 1970, IPR & Business, Patent, Startups

Knowing the pulse of the competitor is extremely important for any business. In general, competitive benchmarking is performed to compare and measure the philosophies of an organization and practices with other organizations to help them to improve their performance in this competitive space. The current economy is often referred to as a knowledge-based economy where intangible assets have become the main source of revenue for most firms. Consequently, more than 65% of most firms’ value and revenue is sourced straight from intangible assets, such as patents. Competitive Benchmarking is a commonly used term and refers to the practice of comparing business processes, innovations, products/services and performance metrics of the best-performing companies to understand and learn from them to improve own business. In today’s competitive world, generating innovation and having the right business strategies both play a vital role to shape and direct businesses toward success. Competitive benchmarking plays an important role to understand the strategies and approaches of competing organisations. The strategies and approaches could involve processes such as designing a new product, creating an IP portfolio, setting product prices, assessing innovation in existing products, launching new products, compiling litigation data, and so on. Such information can potentially be very important for your business and can help you better position yourself in the market. Competitive benchmarking can additionally help you build the right business strategies to advance past your competitors in your industry. Innovation and IP portfolio are amongst the most valuable pieces of information that one can have about their competitors, offering a glimpse into their arsenal of assets and strengths. After expiry of a specific duration of time after a patent application is filed, the application is published and is made available on the official website of the respective patent offices to be viewed by the public. This timeline may have some variance depending on the country where the application is filed, but ordinarily all patent applications are published and can be viewed using free or paid patent databases. A patent is an extremely valuable source of information, especially with respect to technologies or products of your competitors. If a patent search is performed using technological details, previously unknown competitors may be revealed. In this way, information pertaining to patent portfolios can inadvertently help a company identify previously unknown competitors and their patent assets. New competitors can also help in recognizing new opportunities for licensing and acquiring technology.  A typical competitive portfolio benchmarking answers the following questions:

• What are my competitors doing?
• What are the latest patent trends in my industry?
• What is the current phase of innovation of my competitors?
• Possible licensing candidates?

A few things to keep in mind:

• Competitor profiling includes products in the market & under development.
• Products protected by patent nationally and internationally are assessed
• Identification of IP assets to visualize and understand their value in relation to their competitive environment is done.
• IP portfolio of competitors is procured, with a specific emphasis on recently patented applications to see the current area of interest of competitors.
• Periodic assessment of patents filed by the competitors or specific technologies may be done by generating monthly, quarterly or half yearly patent alerts.

  Before competitive benchmarking is carried out, it is important to understand the purpose behind it. This ensures that the right steps are performed, and there is a reduced amount of redundant data generated. Identification of direct or indirect competition is done as the competitive benchmarking report solely depends upon the kind of companies chosen as competitors. Information about the competition, based on the driving purpose of competitive benchmarking is extracted and compiled. Threats and opportunities in the existing market may be understood better with competitive benchmarking. There could a great learning from the failure of specific products or businesses in the market as well.

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Disclosure of the invention & Patent Filing

Apr 18, 2023 | Indian Patents Act 1970, IPR & Business, Patent, Startups

Documentation of the invention before you approach a patent agent to draft the patent specification may be extremely helpful for you to explain the invention details to the patent agent. What all shall be documented and how much details are enough, has to be made clear before you proceed further with drafting specification.

Though one feels lazy writing the disclosure of the invention, honestly speaking, there is no substitute to documentation. Sooner or later, you have to document the invention so that interaction with your attorney is fruitful. It is always advisable to execute Non-Disclosure Agreement with the attorney to whom you will be disclosing the invention. The patent agent or attorney with whom you decide to work, may also make you fill Invention Disclosure Form (IDF) when you approach him to file patent application for you.

What is to be claimed?

Patent is a techno-legal document and you get protection over the subject matter you claim in the specification. Hence, identification of novel elements, which may relate to a product or process or utility, shall be done at first level itself. Once you are clear about what to claim, the detailed description of the invention in patent specification revolves around such novel elements and helps you to fine tune the invention as well as highlight novelty of the invention. The best way to separate out novelty of the invention is to perform a thorough global patent search and then remove the elements that are in public domain. Therefore, while documenting your invention, it is a good idea to list out novel elements of the invention.

Existing technical problem

In order to be patentable, your invention shall have an inventive step. One of the ways to assess inventive step is identification of the technical problem that your invention solves and the way your solution works.

The Indian Patents (Amendment) Act 2005 in Section 2(1)(j) and 2(1)(ja) respectively states invention means a new product or process involving an inventive step and capable of industrial application and inventive step means a feature of an invention that involves technical advance as compared to the existing knowledge or having economic significance or both and that makes the invention not obvious to a person skilled in the art.

Hence, you should always be clear about the prior art or existing knowledge or evolution of technology in order to know technical problem precisely and such technical problem shall be explained properly while documenting the invention.

Best mode

As you know that best mode disclosure in a specification is an essential part of a patent application, specifically a complete application that starts with preamble, “The following specification particularly describes the invention and the manner in which it is to be performed”. This clearly indicates that disclosure has to state the best mode of working the invention and at the same time, the disclosure has to be complete, without any gaps in the process.

Section 10 (4) of Patents Act, 1970, clearly states that every specification, whether provisional or complete, shall describe the invention and shall begin with a title sufficiently indicating the subject- matter to which the invention relates to. Every complete specification shall fully and particularly describe the invention and its operation or use and the method by which it is to be performed; disclose the best method of performing the invention which is known to the applicant and for which he is entitled to claim protection; and end with a claim or claims defining the scope of the inventions for which protection is claimed.

The disclosure of the invention shall be sufficient enough that a person skilled in the art shall be able to achieve the results without further experimentation. Incomplete documentation of the invention by inventor resulting in incomplete disclosure of the same in patent specification may be one of the grounds for patent revocation or invalidation. Hence it is important to disclose complete process that is executable.

Specifications often consist of background, description, claims, abstracts and drawings etc. Step wise documentation of the invention assists your agent to draft specification in a better manner. You may always prepare flow charts or drawings for easy understanding even though the drawings submitted by you often would undergo complete re-doing of the work to match standards of the respective patent office.

Documentation/Disclosure of the invention is integral part of the process of patenting. There is no substitute to it. The quality of the patent specification primarily depends upon the precise and clear information you provide to your patent agent. Even though it takes one or two days extra, it makes lots of sense to spend some time and write the invention description patiently.

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Select the right Patent Law Firm

Mar 18, 2023 | Indian Patents Act 1970, IPR & Business, Patent, Startups

A patent is a statutory right granted by the Government for a product or process which satisfies certain criteria of patentability. The term of a patent is often 20 years from the date of filing and is subject to certain terms and conditions. The claims of a patent determine the scope and kind of rights the patent grants to the patentee. Patent rights are territorial in nature, which means that an Indian patent for example is valid and enforceable only in India. If one wishes to have patent rights in foreign countries, the patent application must be filed in the required foreign countries within 12 months from the date of priority of the application filed in the home country.

There are few conditions that must be satisfied by an invention for it to be granted a patent. The invention can be a product or process and must have novelty, industrial applicability and must not be obvious to a person skilled in the art. Further, the invention must not fall into any category of inventions that are not patentable, as disclosed in section 3 and 4 of the Act. There are many benefits that a patent holds for patent owners and inventors. For companies and institutions, patents help generate a good image for them and thus enjoy a brand image in the market. If the invention has good potential in the market, patents could be a good source of revenue for the patentee. A patent may add value to a students’ professional records, helping them improve their odds of getting a job or good institutes to pursue higher education. When a patent application is filed, a date of filing is obtained, also called the priority date. The patent rights of a patent are calculated taking this priority date into account, making disclosure of the invention easier after a patent application is filed. This is particularly useful when the inventor is required to publicly disclose their invention at through publications or events. With a priority date secured, it becomes possible for the inventor to disclose their invention, additionally making it easier for business owners to obtain investments for their organization once the patent is filed.

Procedure of obtaining a patent in India

Once a new idea is conceived, the first step should be documenting the novelty of the idea in detail, along with the problems that the invention is attempting to address and solve. A basic understanding of whether similar documentation as the invention exist already must be assessed with a patent search. If the idea is novel, a patent specification must be drafted and filed in India as soon as possible to claim the earliest possible priority date. It must be noted that patent application shall be filed by a registered Indian Patent Agent only. After the publication is filed, it is published on the official website of Indian Patent Office (IPO) after expiry of 18 months from the date of filing, after which the application is examined by the patent examiner. If there are objections submitted by the examiner, the inventor must comply by all the objections. Once everything has been cleared between the inventor and examiner, the patent is granted. A periodic renewal fees is required to be paid by the applicant after patent grant to keep the patent in force.

After the application is published, there may be an opposition to the grant of the application. If such oppositions against the invention are filed within 12 months from the date of filing of the application, the oppositions are called pre-grant oppositions. However, if the same oppositions are filed within 12 months from grant of a patent, the oppositions are called post-grant oppositions. Further, if oppositions are raised after the elapsing of 12 months since filing the patent, the oppositions are called revocations. Oppositions and revocations can be handled by a patent attorney or patent lawyer who may or may not be a patent agent.

Importance of selecting the right patent firm

Selection of the right patent firm or agent is of crucial importance for inventors because a patent document is a highly complex document. It takes both a high level of both technical and legal skill to draft a patent application to accurately capture the essence of an invention. Subsequent prosecution after filing the application is also complex and intricate, further accentuating the need to employ the services of a skilled patent firm or agent.  Other processes that the patent firm and agent undertake include maintenance of the patent application, responding to objections raised by the examiner, filing in foreign countries, and so on.

The two terms used most frequently in the industry are “patent attorney” and “patent agent” and is therefore of prime importance to understand the difference between the two. A Patent Agent is someone who possesses at the minimum an undergraduate degree in Science, has cleared the Indian Patent Agent Exam and has registered himself as a registered patent agent with Indian Patent Office. A patent attorney however is an advocate who practices Intellectual Property (IP) law and may or may not be a patent agent. Patent attorney or advocate is required to register himself with the Bar council of India as an advocate. For the processes of drafting, filing and prosecution of a patent application, a registered Patent Agent is required.  On the other hand, a patent attorney can assist with handling of oppositions, revocations and lawsuits relating to patent applications. Patent agents and patent attorneys are hence people who have specialized knowledge and qualifications necessary for representing clients in obtaining patents and acting in all matters and procedures relating to patent law and practice. A patent agent may also be appointed by the inventor or applicant to perform various actions before the patent office on behalf of the applicant and in consultation with them.

Qualifications required to become a patent agent/attorney

In order to become a patent agent, the candidate is required to file an application to write the exam. The candidate must sit for the exam and clear it. The candidate must then request the Controller for Form-22, which is then to be filled and submitted along with a fee of 3200 INR for registration of the candidates’ name as a patent agent in the register of patent agents. The candidate must then pay an annual fee of 800 INR to ensure that their name is maintained in the register of patent agents.

Additionally, a person is qualified to have their name entered in the register of patent agent if he/she fulfill the following conditions:

• He is citizen of India;
• He is above the age of 21;
• They have obtained a degree in science, engineering or technology from any university established under law for the time being. The institute must be active in the territory of India or must possess such other equivalent qualifications as the Central Government may specify in this behalf.

The Controller maintains a register called “Register of Patent Agents” in which the names, addresses, phone numbers, fax numbers, E-mail IDs and other relevant particulars of all persons qualified to be registered as patent agent are entered. The list of registered patent agents is available on the official website of IPO.

According to Rule 110, the qualifying examination for patent agents is conducted over a period of 2 days and consists of the following sections:

• Paper I : Patents Act and Rules, 100 marks
• Paper II: Drafting and interpretation of patent specifications and other documents, 100 marks
• Viva Voce: 50 marks

Section 127, dealing with rights of patent agents explains that registered patent agent can draft, file and prosecute patent applications at the IPO (these actions include filing of patent, sending request for early publication or examination, reply to examination report, paying renewal fee, etc.). Every patent agent whose name is entered in the register shall be entitled:

(a) To practice before the Controller during prosecution process such as at the time of opposition to the grant of patent,

(b) To prepare all documents, transact all business and discharge such other functions (such as filing of patent, sending request for early publication or examination, reply to examination report, paying renewal fee, etc.) as may be prescribed in connection with any proceeding before the Controller under this Act.

According to section 128, Subscription and verification of certain documents by patent agents:

A registered patent agent can take authorization from their client on Form-26 [Form of authorization] so that they can act on behalf of their client. All applications and communications to the Controller may be signed by a patent agent.

Form-26 shall be executed on stamp paper of 100 INR denominations.

Factors taken into consideration for choosing the right patent firm/agent:\

When choosing a patent firm or agent, the scientific prowess of the firm or agent must be checked. In the case of a patent agent, they must be a graduate or post graduate in the domain of the invention for which the patent is being filed to ensure that they understand the invention well.

1. Each patent agent has their own unique ID, obtained from the patent office.  Their registration number or even ID card must be checked before working with them.
2. The patent agent can be asked to show their previous patent applications that have been published or been granted patents which can be verified by checking the patent and publication numbers respectively. If the patents have been granted, a look at the objections raised by the examiner on their patent application can provide valuable insight into the quality of the patent agents’ work.
3. An essential skill required for drafting of patent specifications is command over the English language. The inventor must speak directly with the patent agent responsible for the drafting of their invention to properly understand whether the patent agent is capable of drafting their specification.
4. Since some inventions are highly technical in nature, the technical hold of the patent agent over the subject matter of the invention should be judged carefully.
5. Inventions often belong to more than one scientific domain. Therefore, it must be verified that the patent firm being chosen comprises a diverse group of patent agents, well-equipped to handle any kind of technical query.
6. Another point to be considered is the pricing that the firm quotes. Filing of a patent application involves official fees that are paid to the IPO and professional fees that are paid to the patent firm that carries out the patenting process.

Conclusion

The process of patent filing is tedious, and the quality of the drafted specifications plays an important role in the prosecution, grant and further commercialization of the invention. Selection of the right patent firm and agent for undertaking this complex procedure is thus crucial to the success of the patent. Experience of the patent firm or agent, quality of the work produced and the number of successful cases are some of the parameters to be considered before selecting the law firm.

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