Mar 8, 2023 | Indian Patents Act 1970, IPR & Business, Startups
Patents contain a wealth of knowledge as disclosing the best mode of working the invention is one of the important requirements to get a patent.
The word ‘Patent’ originates from the Latin word, ‘patere’, which means ‘to lay open’. Patent is a techno-legal document granted to the inventor (s)/applicant (s) by the respective patent office, in order to claim legal rights over the invention and to prevent third parties from using it without consent of the patentee or patent holder. To be more precise, patent is a set of exclusive rights granted by a state (national government) to an inventor or their assignee for a limited period of time in exchange for a public disclosure of an invention. Generally speaking, in order to get a patent, the invention shall not only be novel, inventive and industrially useful but also disclose best mode of working known to the inventor at the time of filing.
In today’s fast-growing economy, innovation is adopted as a major strategy to achieve competitive edge in the market. Expectations of the consumer on one hand and competition on the other hand put huge pressure on the companies to introduce new products in the market. However, short product cycle and increasing competition put enormous pressure on companies to have sustainable innovations to become and remain competitive in the domestic and foreign markets. Appropriate protection of innovation is extremely critical, and the exclusive rights provided by a patent may be crucial for innovative companies to prosper in a challenging, risky and dynamic business climate.
The purpose of this article is to find out the ways companies can use patents to create stronger technologies/products, innovate better in less time and create more valuable products. In this document, we have used the terms “Patent” and “Patent Application”, where “Patent” literally refers to the granted patent, which provides exclusive rights for inventor or patentee for limited period of time, subject to certain conditions. A “Patent Application” refers to a request pending at a patent office for the grant of a patent for the invention described and claimed in the application.
Let’s understand more about patents, step by step in next sections.
- Patents are WEALTH of knowledge
Patents contain a wealth of knowledge as disclosing the best mode of working the invention is one of the important requirements to get a patent. This means that an invention submitted to the patent office in the form of a patent, discloses the invention to the extent that a person with ordinary skills in the art understands it well and is able to replicate it independently. After filing a patent application, usually it is not immediately available for public viewing till expiry of a specific period of time, for example, 18 months in India. This means that a patent application is published only after expiry of 18 months from the date of filing. Usually, all national patent offices have their own databases, where a patent application is published. Therefore, the patent databases have extremely valuable information in the form of patent applications or granted patents.
In a patent specification, the description of the invention, supported with drawings and examples further help to understand the working of the invention. Since grant of a patent undergoes various steps including the examination of the patent application by patent examiner, the subject matter claimed in a patent is not just unique but also meets statutory standards. Therefore, patent is a wealth of knowledge.
2. Rights of a Patent holder
A patent gives exclusive rights to the patentee to prevent third parties from making, using, selling, offer for sale and import the patented product into the country where there is patent protection.
(1) Where the subject matter of the patent is a product, the patentee has exclusive right to prevent third parties, without his consent, from the act of:
- Making;
- Using;
- Offering for sale;
- Selling; or
- Importing for those purposes that product in India.
(2) Where the subject matter of the patent is a process, the patentee the exclusive right to prevent third parties, without his consent, from the act of:
- Using that process;
- Offering for sale;
- Selling; or
- Importing for those purposes the product obtained directly by that process in India.
Any violation to these rights would generally deem to be patent infringement though in most of the legal regimes, there are certain exceptional acts where the use of patented invention without consent of the patentee doesn’t constitute infringement. In India, following acts are not deemed to be infringement:
- Any act of making, constructing, using, selling or importing a patented invention solely for uses reasonably related to the development and submission of information required under any law for the time being in force, in India, or in a country other than India, that regulates the manufacture, construction, use, sale or import of any product.
- Importation of patented products by any person from a person, who is duly authorized under the law to produce and sell or distribute the product, shall not be considered as an infringement of patent rights.
A patent specification has various sections, such as, title, background, description, drawing, abstract etc. but the most important section is ‘Claims’, that not only defines scope of the invention claimed but also defines legal rights of the patentee.
3. Can the patents owned by third party (ies) be used?
As we know that patents are wealth of knowledge for various reasons. A patent is a technical document and disclosure of best mode of working of the invention is one of the conditions on which it is granted. Unlike paper publication, a patent discloses a much better description of the invention along with examples and drawings to the extent that a person with reasonable skills in the art is able to replicate it without any further assistance. Grant of a patent undergoes examination process where complete scrutiny of the patent happens, which ensures that the subject matter of a patent is authentic, though it is generally believed that it is possible to invalidate a majority of patents. All over the globe, every day several patents are granted and each national patent office maintains data of all granted patents as well as patent publications. The good thing about such databases is that they are searchable where one can search, view, download and analyse the patents.
Let’s further understand how this wealth of knowledge in the form of patents can be effectively and smartly used to reduce R&D efforts. Now, the most important question that arises is, “Can these patents be used or implemented?” The answer is Yes and No. These patents can be used by you only if they are abandoned/expired or you have sought permission to use them or if they are not filed/granted in the jurisdiction of your choice. Using a valid patent, without due diligence can put you in a big trouble.
Let us analyse an infringement case between Philips and two companies namely, Anant Electronics and Futuristic Concepts Media Ltd who were using “digital transmission system” technology to manufacture VCDs using MPED 1 coding audio compression/expansion system in India. Philips had a patent protection (Patent no 175971) on this technology in India, which these two companies were unaware of. They were in fact infringing the patent granted to Philips. Delhi High Court ordered both the companies to stop manufacturing the VCDs that infringed Philip’s “digital transmission system” patent. Had they done infringement risk analysis before manufacturing and launching the product, they would have saved lots of time and money lost in litigation. Therefore, using technology protected by another company can drive one out of business and prior risk assessment is essential to prevent such disputes.
Abandoned, Expired and Lapsed patent
The three terms, Abandoned, Expired and Lapsed look very similar to each other and it is important to differentiate between them. An application (patent application) that has been declared abandoned is “dead”, and is no longer pending. There could be various reasons for an application to go abandoned, such as, failure to reply to office action, failure to request for examination or failure to submit complete application within prescribed time after filing provisional application etc. The term ‘Abandon’ is used generally with respect to the patent application.
The patent, which is no longer valid due to non-payment of renewal (maintenance) fees is called as ‘Lapsed patent’. Usually, a lapsed patent can be restored by making a request to the respective authority within specific time period. If lapsed patent is not restored in time, it fails to be in force.
A patent, which has run its full term in a country and is no longer protected in that geography, is called as expired patent. In other words, after completion of 20 years from the date of filing, a patent expires and is open to public. After expiry, the patent holder does not have any rights over the patent and hence, using such patent does not require permission of the patent holder. However, further due diligence is necessary to ensure the legal status of such expired patent. Once the patent is expired, it cannot be renewed or restored.
In depth analysis and due diligence by a legal expert is mandatory before using the abandoned, lapsed or expired patents. Following checklist is important to be looked into before deciding to use a patent owned by third party (ies):
- Legal status of patent (active, expired, abandoned, lapse).
- Countries or jurisdiction where it is filed/granted.
- Countries where the patent application would be filed during national phase.
4. How to use patents to reduce R&D efforts?
Now we know that patents are wealth of knowledge and after proper due diligence, one can make make use of existing patents that are expired, lapsed or abandoned. Let’s see how they can be used to reduce R&D effort.
Let’s take an example, suppose you are doing research on the product that is meant for water purification, converting any water into portable and drinking water. Before starting the process of R&D and designing your product, you have two options.
Option I
The first option is to have discussion with your team of engineers and design the product. With this option, you can finalize the product which might be the replication of something that is already been patented/claimed/published or the level of innovation may not be high. If there is search in existing patents in the jurisdiction where you intend to manufacture, market or sell the product is not done, there may be likelihood of infringing the patent rights of third party (ies)
Option II
However, the second option is to outline the features that you want to see in the product and perform a broad patent search to pull and list all the related patent documents. Going through such list of patents gives you overview of the kind of work that is already been done by others, key players in the industry, countries that have the maximum number of such patents. Additionally, you can always perform a product search to know about the similar products that are already in the market, what price they are selling at, features of such products etc. With this kind of data in hand, you are certainly in a much better position to design a new product.
Now let’s see using existing patents, how can R&D cycle can be reduced and at the same time, you have more innovative product in hand.
Step 1: Assess the state of the art
In this technological progressive era, huge amount of data 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 and market demand 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 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 of the most important step 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 never see the market, meaning that, there is huge amount of information, in the form of patents, which is not seen in the market. Hence, it is essential to assess state of the art before proceeding further with finalising the product features.
Step 2: Identify the patents that are of interest
State of the art search shall be done by an expert searcher using the specific and proper search strategies, else you might get patents in thousands and screening through them itself will become a huge task. If the search strategy is too narrow, you might miss out many good patents. Therefore, drawing outline of what is to be searched plays the most important role in extracting the desired patents.
Out of the patents, you got from the first round of search, screen through them and identify the ones that interest you.
Step 3: Due diligence
After going through the contents, process, composition of the patents that interested you, there are chances that you find good patents but don’t have capability or infrastructure to implement all of them. Hence, you should further screen through these patents and short list the ones that you actually want to implement or you have feasibility to implement them. Further, due diligence of these patents shall be done and opinion from an expert shall be obtained to know if it is safe to use such patents or not.
The patents that can be used safely include:
- Patents that have lapsed and have no chance of restoration;
- Patent applications that are abandoned and have no chance of restoration;
- Patent/patent application not granted/filed in the countries where you don’t intend to use, market, sell or export them. However, if the international or convention application is filed, you would be required to keep track of such applications as they might enter into national phase after specific time.
Step 4: Patent infringement analysis
A patent gives exclusive rights to the patent holder or patentee to exclude third parties from making, using, selling, offering for sale and importing the patented invention. Violation of any of these rights is called as infringement. If any company wants to launch a product in particular market, it is essential to make sure that launch of such product is not infringing any third parties patent rights because infringement has fatal consequences.
“Freedom To Operate”, abbreviated as “FTO”, is a kind of patent search that is performed to determine whether a particular action, such as testing or commercializing a product can be done by a company without infringing valid intellectual property rights of others or not and whether such company is “Free To Operate” without any risk of patent infringement. Broadly defined, an FTO search means the ability to proceed with the research, development and/or commercial production, marketing or use of a new product or process with a minimal risk of infringing the unlicensed IP rights of others.
Performing the four steps described above will help you immensely to get idea on latest innovation that is happening in a given area of technology, identify patents of interest, and implement them onto existing products/processes after due diligence and finally infringement analysis to avoid infringement of third party’s patent rights.
Step 5: Review Litigation History
It is imperative to note that having a clarity and complete knowledge of litigation in the area of interest or commercial pursuit, will give additional confidence in the research planning and arriving at an appropriate business plan. Specifically, litigation details concerning patent or other forms of IP dispute is always a good guidance towards drawing ones boundary lines.
Advantages
We observed in four steps above that assessment of state of the art or existing patents along with proper due diligence can give you overview of evolution of technology in a given area of technology and using this information with appropriate due diligence can help you in multiple ways such as:
- Over view of technical evolution
You get to know about the top companies working in this area and their core expertise. You might get opportunity to collaborate on R&D or further build business relationship with such companies.
2. Avoid re-inventing the wheel
Knowing about the latest patents, you don’t waste your time in re-inventing the wheel. This way you can start your research from the next level itself. State-of-art is a gold mine and before inventing further, it makes lots of sense to mine it. However, if there are no patents filed or granted in the given area of technology, you have more reasons to smile and be confident that this space is available for further research.
3. R&D efforts are more fruitful
Since this whole exercise gives enough exposure about the patents/patent applications filed or granted in a particular area of technology, you get better clarity on the steps to be taken for further development of product, direction in which R&D efforts has to be planned and of course, patentability assessment of your new ideas. This not only saves R&D effort and time but also helps you to come up with more innovative products having more sustainability in the market.
4. Patent infringement Risk assessment
During the search you may come across some patents that you would like to use or even implement on your current products or processes. However, you may have to further perform due diligence to ensure that you are not infringing any third party’s legal rights. If such patents are filed/granted in the jurisdictions or countries where you have or plan to have business, you can always look for in-licensing such patents.
5. Avoid litigation and related expenses.
Once an appropriate litigation research is done in the area of interest – one can avoid the pitfalls of getting similar litigations and save from possible litigation hassles and expenses.
Knowledge available in the form of patents is very valuable. Thorough analysis and due-diligence of published patent applications and granted patents can be very helpful to give right direction to R&D, create more innovative products and optimize R&D cycle.
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Mar 8, 2023 | Contracts, Copyright, Indian Patents Act 1970, IPR & Business, Patent, Startups, Trademark
Video games are amongst the most widely enjoyed forms of entertainment today. While video games are predominantly played by people in their adolescence, these games are making their way into a multimillion-dollar full-fledged industry that is based on competitive playing. With this level of involvement of games in the lives of people everywhere, it then comes as no surprise that there have been cases where popular characters of video games have come under the spotlight of intellectual property theft. Let’s take a look at a case riddled with twists featuring some of the world’s most popular movie and video game characters.
The case
When we picture the word “Mario”, we instantly imagine a character wearing a red plumber’s uniform, bouncing on platforms to save his princess from evil forces. And when we hear the phrase “King Kong”, our minds instantly jump to a massive gorilla waving his arms around, swatting at airplanes atop the empire state building. It may come as a surprise that the owning studios of these productions have in fact gone head-to-head in a rather interesting lawsuit regarding the theft of the idea of the popular oversized gorilla.
The movie King Kong was first released in the year 1933 by Merian C. Cooper. The production house for King Kong was RKO, which later went on to release subsequent sequels of King Kong in the following years. The movie franchise went on to do very well, earning their producers and directors large sums of money throughout the runtime of the movie. In the year 1981, Nintendo released their game Donkey Kong, where Donkey Kong was a large ape and would attempt to stop Mario (then called Jumpman) from reaching Pauline (Mario’s romantic interest, then called Lady). The game was a big hit and it was simply a matter of time before the game caught the eye of Universal Studios, who then apparently held the license for King Kong. Outraged at Nintendo and other game studios for blatantly copying the idea of King Kong, Universal Studios sternly ordered every agency selling products under the name of Donkey Kong to pay Universal Studios royalties for the misuse of Donkey Kong by way of cease-and-desist letters. Almost all the agencies reverted back with the royalty payments, except Nintendo.
Nintendo attempted to settle the suit outside the proceedings of a court in the year 1982 to which the Vice President of Universal Studios Robert Hadl responded by asking Nintendo to stop making copies of Donkey Kong. Nintendo’s attorney Howard Lincoln pointed out that the name King Kong had previously been used on multiple products that were in no way affiliated with Universal Studios, claiming that Universal Studios in fact did not have the rights to King Kong in the first place. Hadl then asked Nintendo to brace themselves for a lawsuit, claiming that Universal Studios saw lawsuits as a way of making money.
John Kirby was brought in by Lincoln to represent Nintendo in the case because he had a history of winning big-name lawsuits for companies like Sony. During the proceedings, Universal Studios claimed that Nintendo’s Donkey Kong and Universal Studios’ King Kong could easily be confused with each other and that the story line of the movie and game were also similar. To counterattack, Nintendo asked a representative to assure the court that the gameplay of Donkey Kong was in no way similar to the storyline of King Kong. Additionally, Nintendo went on to claim that Universal Studios did not own the rights for King Kong and shockingly enough, that Universal Studios were aware of this fact and still decided to demand royalties for King Kong despite knowing they did not have the rights for King Kong.
Historically, the rights of King Kong had always been a territory undefined. When King Kong was initially released by Cooper in 1933, the rights were firmly with Cooper. Later on, Cooper realized that other production houses were making movies with the character King Kong, and that he had no clear documents preventing them from doing so. Cooper tried to find papers to authenticate his rights but found that he had given the rights for only 2 movies to a production house called RKO Pictures and for a book written by his friend Delos W. Lovelace sometime in the decade of 1970, a whole decade before the release of donkey Kong by Nintendo. However, Cooper could not find documents stating that the license was given to RKO Pictures. During this time, Universal Studios wanted to make their own series of movies on King Kong but were stopped as the rights to King Kong were with RKO Pictures. Desperate to win King Kong, Universal Studios argued in court that the copyright on Lovelace’s novel (which was the only existing document proving ownership of any kind) had expired by then and that King Kong was therefore a public domain character. The court decided that King Kong was indeed in the public domain and therefore anyone could make their reproductions of the character as long as the story involving the character was not copied.
The presiding judge during the 1982 case of Nintendo versus Universal Studios kept all this in mind and reprimanded Universal Studios for knowing fully well that Universal Studios had themselves contested that King Kong was a public domain character but still asserted that they owned the character and even demanded royalties from agencies making use of King Kong. The presiding judge further ruled that the game Donkey Kong was not similar to the storyline of King Kong in any way and was “a parody” at best, thus solidifying Nintendo’s case against Universal Studios. The judge declared that any agency that had paid royalties to Universal Studios were free to demand the royalty fee back from Universal Studios and that all cease-and-desist letters from Universal Studios were rendered null and void. Further, the court found that a game released by a company called Tiger Electronics was very similar to Donkey Kong and thus ordered Tiger Electronics to pay Nintendo a sum of $58 million.
Universal Studios was the one to push this lawsuit against Nintendo in order to extract money from them by means of a character that they didn’t have the rights for. Universal Studios knew this in fact because a few years ago they themselves had gone to court to prove that King Kong was a public domain character, and anyone was free to use the character. Nintendo had initially planned to settle the matter outside of the court but went against the movie giant Universal Studios and even won with getting money from profits from a by-product of the ruling. This case shows us that it is never a good idea to underestimate the court or your opponents, and to assume that all secrets regarding ownerships and rights are out in the open for everyone to access. Universal Studios underestimated the court and Nintendo and subsequently ended up losing the case.
Author: Udit Sharma, Graduate student in Additive Manufacturing, Uppsala University, Sweden
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Mar 8, 2023 | IPR & Business
What is ageing?
How does the sequence of life appear in a person over time?
Is there any external influence that controls our biological clock?
If so, how does our biological clock determine relationship of time in our physical world?
The Sense of time and its relationship to celestial events are well documented in our history. It is a wonder that our ancestors were able to come up with precise calculation of a year, including the leap year, which takes care of timing of revolution of mother Earth around our star, the Sun. The speed of revolution and rotation are constant and would remain so for the next 5 billion years to come, the remaining life span of Sun.
Year after year, the seasons change and we witness the marvel of Nature. The whole life system on earth responds to these changes appropriately. The axial tilt in the Earth’s axis and its revolution around the year are the main reasons for these seasonal changes that we see. In physical form, it is the duration and intensity of Sun light (with its heat energy) that brings about these variations on Earth.
It is not just photosynthesis – a mechanism by which the plant life harnesses the solar energy and convert them into organic energy / fuel. In animal kingdom, the Sun influences the diurnal cycle (day and night variations in body) and the seasonal cycles that directly influences ageing.
We see the world through our eyes. The light is conveyed through our retina (within the eyeball) to the rear end of the brain -the occipital lobes, through the optic nerves (the second cranial nerve). Here, the light and images are captured, are interpreted and associated with meaning. This is the visual pathway. The vision of timing of nature is also conveyed to the brain, through an interesting circuit, the lesser known – supra-optic pathway, which are nerves from the retina reaching the third eye – the Pineal Gland!
The third eye is often associated with religious visions, the ability to observe chakras and auras. In Taoism, Chinese religious sects such as Chan and Zen.
in Japanese, “third eye training” involves focusing attention on the point between the eyebrows with the eyes closed. In Hindu mythology, the third eye of Lord Shiva, though is described in forehead(by most) is also described by few to be actually located in the rear of the head, an analogy to pineal gland (Ref: https://blavatskytheosophy.com/the-third-eye-and-the-pineal-gland/).
I am not giving a neurosurgeon’s perspective of the third eye, rather, it’s a proven fact in medical science. The third eye does exist and gives the vision of life for the individual. The pineal gland, located in the third ventricle of the brain (at the rear portion of brain) is the anatomical third eye of the body. The light rays when reach our pineal gland, convey information of the average length of day (exposure to light), which over a period of time is interpreted as seasons. It secretes Melatonin in absence of light. A chemical indication of day night cycle within our body is set here.
The pineal gland in close association with the hypothalamus and pituitary gland sets the circadian rhythm of life. Which is the daily variations in our body with respect to day / night cycle, our timing of sleep & activity and energy needs. Through the influence on all hormones of the body, they together bring about short and long term changes in the body mechanism ultimately controlling the growth and ageing in a person.
The past decade of research has converged on an understanding that in many or perhaps even most instances, causality with respect to disease, disorders, and maladaptive development—as well as the preservation of health and maintenance of normative, adaptive development—is best viewed as an interplay between genome-based biology and environmental exposures. This understanding represents a clear departure from the historical views that human morbidities are attributable to either pathogenic environments or faulty genes.
Growth and ageing are natural. There are genetic codes set in a given individual, but are influenced significantly by the environmental factors. Healthy environment is not easy to find, thanks to mindless development that is happening around the world. Our quality of food, air and water are going to only deteriorate with time. Our lifestyle and stress further adds to these worries. Wellness is the concept which all of us should work towards, the best investment that we can do for ourselves.
Biological clock
The third eye is real, and its disturbance is now experienced by most of the population as lifestyle disorders. The biological clock has been re-set in all of us, probably due to over exposure to artificial light, more so with the advent of computers and smart phones. Early puberty, obesity, infertility, insomnia (lack of sleep) and early physical changes of ageing are quite common nowadays.
We cannot go back to the dark ages, however, we can make an attempt to follow a routine in life. With balance of work, activity and adequate sleep, we can at-least work towards the remedial measures.
Adequate physical activity & exercise, avoidance of coffee/tea after 4pm and early dinner can contribute to peaceful sleep. Of course, this is possible only when we can take our minds off our TV and phone! For people working on shifts/ night duty, it is an occupational hazard. They have to find ways not to miss their 6 to 7 hours of sleep.
To age graceful and lead a healthy life, one has to take efforts to combat stress and live a healthy lifestyle. Importance of sleep cannot be over emphasized. Sleep is essential for not only resting the body and mind, but to give the right sense of timing to our biological clock – the third eye.
Author: Dr Murali Mohan
Director of Neurosciences at People Tree group of Hospitals; Director at Dr Klinisch Research Pvt Ltd; Managing Director at Synapse Health Centre LLP; Founder & Managing Director at Radarc Medical Innovations Pvt Ltd
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Mar 7, 2023 | Indian Patents Act 1970, Key Terms of Patents Act
The term Post-Dating with respect to Patent law means shifting date of filing patent application to the later date. There are specific reasons for which the applicant desires to post-date the patent application. Provision of post-dating a patent application is available in other countries like New Zealand and United Kingdom. However, the US patent law does not have any provision for post-dating of patent application.
In Indian Patents Act 1970, there is a mention of post-dating in Section 9 [Provisional and Complete specifications] and Section 17 [Power of Controller to make orders respecting dating of application].
Applicant can request the Controller to post-date the application under Section-9, after filing & before the grant of the patent. The date of post-date shall be specified, and the Controller may direct that the application shall be post-dated. Such post date shall not be requested or made for a date later than 6 months from the date on which it was actually made or would, but for the provisions of this sub-section, be deemed to have been made. Applicant shall file complete specifications within 12 month of filing provisional application. On the request of applicant, the Controller may cancel the provisional specification and post-date the application to the date of filing of the complete specification.
Illustration
Date of filing Provisional application: 5th June 2009
Date of filing Complete application: 15th October 2009
By postdating under section 9, Priority date could be shifted to 15th October 2009
Postdating can’t be requested beyond 6 months from date of filing
In Standipack Pvt. Ltd. Vs. Oswal Trading Co. Ltd. (AIR 2000 Delhi 23, 80 (1999), wherein the judge while considering the provisions of postdating clearly stated in paragraph 8 it was held that the postdating of the patent can be done only to the date of filing of the complete specifications. Where a complete specification has been filed in pursuance of an application for a patent accompanied by a provisional specification or by a specification treated by virtue of a direction under sub-section (3) as a provisional specification, the Controller may, if the applicant so requests at any time before [grant of patent], cancel the provisional specification and post-date the application to the date of filing of the complete specification.
U/S 17 [Power of Controller to make orders respecting dating of application], the application for patent may be post-dated to a date not later than six months from the date of application on a request made by the applicant at any time before the grant of patent along with the prescribed fee as given in first schedule. However, this provision will not apply if the application is deemed to be abandoned.
Illustration
Date of filing application: 5th June 2009
Postdating can’t be requested beyond 5th December 2009 (6 months from date of filing)
There is no specific form for post-dating the application and hence the request for post-dating can be filed through Form-30 to post-date the application.
Applicant may be required to post-date the application under specific circumstances. If the applicant has filed provisional application, within 12 months the complete application shall be filed, else, the application shall be deemed to be abandoned. However, if the information to file complete application is not ready or there is some financial crisis, the applicant can post-date the application to the maximum time of 6 months and this helps him to extend his deadline to file complete application. It is interesting to note here that the post dating as an option can be availed to post-date the date of filing complete application also if the applicant claims priority date by filing complete application. This may give extra time to file PCT application, if needed.
Even though post dating is helpful for the applicant in few circumstances, it could be very risky at times. After filing patent application, if the applicant has disclosed the invention in public by in any way, followed by post-dating of the application, this might destroy novelty of the invention. Therefore, the applicant shall opt for post-dating the application after calculating the risk.
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Mar 7, 2023 | Indian Patents Act 1970, Key Terms of Patents Act
A plaintiff, also known as a claimant or complainant, is the term used for the party who initiates a lawsuit before a court. Plaintiff seeks a legal remedy, and if successful, the court will issue judgment in favor of the plaintiff and make the appropriate court order like an order for damages.
A defendant is any party who is required to answer the complaint of a plaintiff in a civil lawsuit before a court, or any party who has been formally charged or accused of violating a statute.
In a well-known case, Apple Inc vs VirnetX, relating to FaceTime video calling service, VirnetX sued Apple Inc for infringement of four patents of VirnetX used in its FaceTime video calling service (U.S. Patent Nos. 6,502,135, 7,418,504, 7,921,211 and 7,490,151). Apple was ordered to pay US$368.2 million in damages to VirnetX.
In this case, VirnetX initiatied law suit against Apple Inc for infringement of patents and hence VirnetX is a Plaintiff, whereas Apple Inc is a Defendant.
Following are the important sections of the Patent Act, where the terms Plaintiff and Defendant have been used:
U/S 104A [Burden of proof in case of suits concerning infringement]
Infringement in simple words is violation of rights of a patent holder. In any suit for infringement of a patent, plaintiff (Patentee) has burden of proof and this is specifically for the product patent where a patentee can compare infringed product with his patent claims and assess extent of infringement.
However, where the subject matter of patent is a process for obtaining a new product and the patentee could not establish through reasonable efforts to determine the process actually used by the infringer, the court may direct the defendant to prove that the process used by him to obtain the product, identical to the product of the patented process, is different from the patented process. Hence, in case of process patent infringement, burden of proof shifts from plaintiff to the defendant.
U/S 107 [Defenses, etc., in suits for infringement]
When a law-suit is filed by the plaintiff for infringement of his patent rights, the defendant shall defend himself and prove that he is not infringing rights of the plaintiff. All the grounds of revocation U/S 64 can be used as defense by the defendant.
U/S 109 [Right of exclusive licensee to take proceedings against infringement]
In any suit for infringement of a patent by an exclusive licensee, if the patentee does not join as plaintiff, he is added as a defendant, but a patentee so added as defendant shall not be liable for any costs unless he enters an appearance and takes part in the proceedings.
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