Mar 6, 2023 | Indian Patents Act 1970, Key Terms of Patents Act
The term “Resident of India” has not been defined in the Indian Patents Act. However, The Income Tax Act, 1961 defines the term “Resident of India”. Under the Income Tax act, an individual can be termed as a ‘resident’ if he stays for the prescribed period during a fiscal year either for:
- 182 days or more;
- 60 days or more (182 days or more for NRIs) and has been in India in aggregate for 365 days or more in the previous four years.
Any person who satisfies these conditions is termed as a “Resident of India”.
The term “Resident of India” plays an important role while filing a patent application outside India. According to Section 39 [Residents not to apply for patents outside India without prior permission],if the applicant is resident of India but wants to file patent application in foreign country, the applicant should:
- either files application in Indian Patent Office and wait for 21 days to receive any objections.
- or takes permission from Indian patent Office to file patent application in foreign country. Such permission is called as Foreign Filing License (FFL).
Foreign Filing Permission (FFP) or Foreign Filing License (FFL) for making patent application outside India can be made through Form 25 [Request for permission for making Patent application outside India] and the fee applicable is:
- Natural person or Startup or small entity: 1600 INR
- Others, alone or with natural person or start up or small entity: 8000 INR
If a resident of India files a patent application outside India without taking Foreign Filing Permission (FFP), he will be liable to imprisonment or fine under Section 118 [Contravention of secrecy provisions relating to certain inventions].According to this S-118, if any person fails to comply with any direction given under section 35 or makes or causes to be made an application for the grant of a patent in contravention of section 39 he shall be punishable with imprisonment for a term which may extend to two years, or with fine, or with both.
Therefore, if you are resident of India, before filing patent application outside India, you mst either file patent application in India and wait for 21 days before you file foreign application or seek FFP or FFL from Indian Patent Office.
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Mar 6, 2023 | Indian Patents Act 1970, Key Terms of Patents Act
The term “Assignee” refers to a person to whom some right, interest, or title to property is transferred. In Patent law, the term Assignment refers to transfer of patent rights and such transfer of patent rights is often permanent.
According to Section2 [Definitions and interpretation]of Indian Patent Act, the assignment of patent refers to the transfer of patent rights by the patent holder (assignor) to another person (assignee). The term Assignee also includes:
- The assignee of the assignee; and
- The legal representative of a deceased assignee.
After death of the assignee, its legal representatives are also called as assignee.
Illustration
Rahul is a student doing research in a University and has an invention to be patented. As per policy of the University, the ownership of all Intellectual Property generated by the students belongs to the University. In such a case, Rahul has to assign his rights on the invention to the University. Rahul becomes “assignor” and University is “Assignee”. However, if the University (assignee) further assigns its patent right to a company, such company becomes assignee and University becomes assignor. Company can also be called as assignee of the assignee
Assignment is used in the following instances:
- At the time of filing patent application where inventor often assigns the invention to the applicant. However, assignment may happen any time before or after grant of the patent;
- During acquisition / merging, assignment of patent might take place where one company assigns patent (s) to the other company; and
- When a patent is commercialized, the licensee or buyer of such patent might want full or partial assignment of the patent.
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Mar 6, 2023 | Indian Patents Act 1970, IPR & Business, Startups
Technology Transfer (TT), also called Transfer of Technology (TOT) refers to handing over or transferring a technology, knowhow, methodologies, processes, confidential information, trade secrets by the Technology Developer (TD) to the Technology Buyer (TB) and this transfer is completed by execution and signing of a Technology Transfer Agreement, very similar to the way sale deed is signed at the time of buying/selling of the house when ownership is transferred from seller to buyer of a house. The agreement, generally called as Technology Transfer Agreement has all terms and conditions agreed between the parties to complete the process of Technology Transfer. However, Technology Transfer is very sensitive in nature and is prone to getting exploited easily due to intangible nature of the technology. Therefore, lots of precautions need to be taken while entering into Technology Transfer arrangement.
Why to transfer a technology?
To develop a new technology/product, there is huge investment involved in terms of time, money and resources. After technology is developed, scaling up the technology to industrial level and bringing it to the market could be very challenging for the Technology Developer. On top of it, if Technology Developer doesn’t have clue about how to sell the technology, he may be wasting a lot of time without any substantial gain.
It is moment of great joy for the Technology Developer to see his technology working well at industrial level and reaching consumer effectively. In order to commercialize technology, usually Technology Developer, being scientist or researcher, does not have expertise, resources and bandwidth to manufacture, market and sell the technology on his own. Therefore, it makes a lot of sense for the Technology Developer to transfer technology to the suitable company that is already into manufacturing similar product (s) and has well established systems to manufacture, market and sell the product in given territory or the country.
If executed well, usually Technology Transfer is beneficial to both developer and buyer. On one hand, Technology Developer gets opportunity to join hands with the buyer and commercialize technology and on the other hand, the Technology Buyer gets opportunity to new technology which may add lots of value to his business.
Modes of transfer
as generally happens by means of licensing, assignment or joint venture. In licensing the Technology Developer permits the buyer to use technology for a specific period of time without transferring the ownership whereas in case of assignment, the Technology Developer transfers technology to the buyer permanently and in this process, ownership is also transferred. In joint venture, both developer and buyer come together, join hands and establish business jointly. Depending upon the preferences of the parties, the suitable mode of Technology Transfer may be worked out.
Further, the technology can be licensed in exclusive or non-exclusive manner. In case of exclusive license the Technology Developer (licensor) agrees not to grant license to any other company whereas in case of non-exclusive license, Technology Developer can grant license to more than one companies.
Steps to transfer a technology
Once technology is developed, the steps to be followed to transfer technology are as below:
- Detailed documentation of technology to be transferred is very critical. If there is a possibility to register technology as copyright, patent or design, it should be done by the Technology Developer before Technology Transfer process is initiated. Novelty in the technology, problem statement, working of the technology, prototype details, feasibility studies shall be documented in detail. Specific emphasis shall be given to the extent of know-how, confidential information that developer discloses to the buyer because once this information is disclosed to the buyer, there is no way to recover it back. For this reason, it will be wise for the developer to register intellectual property wherever possible so that disclosure of technology becomes easier and safer.
- It is advisable to make a BEDP (Basic Engineering Design Package) for the technology that is being transferred. This helps the Industry to simulate the manufacturing process of the technology and scale up the technology.
- Technology Developer shall have idea about value of the technology. Initially relying on secondary market research data related to market need/size/preferences and applying right techniques, value of the technology shall be estimated.
- At least 50-60 potential companies which may buy the technology shall be listed out and further contact details of top officials in the company shall be extracted.
- Such companies shall be contacted, and positive leads shall be separated out for further follow up. Discussions with such companies may be initiated to finalize the deal. Usually lots of communications and negotiations happen at this stage.
- Execution of the agreement is the final step where all terms and conditions agreed between the developer and buyer are converted to the agreement.
Precautions before entering into Technology Transfer agreement
After discussions and negotiations on terms and conditions, the parties enter into Technology Transfer agreement. For Technology Developers, precautions to be taken before signing the agreement are as below:
- Technology Developer shall be clear about the kind of rights he is granting to the buyer and the jurisdictions to which such rights extend to.
- Value of technology that Technology Developers is getting, and royalty/payment terms/applicable taxes shall be made clear.
- Most of the times, Technology Developer is required to provide initial assistance to the buyer in terms of meetings or trainings the teams. In such a case, Technology Developers shall ensure that he is being paid for such trainings and his travel is also taken care of.
- Term of the agreement, ways of terminating the agreement and effect of termination of the agreement shall be checked properly. Exit from the Agreement shall be smooth for both parties.
- Other than this clauses on indemnity, Governing law, dispute resolution may be looked into thoroughly.
For Technology Buyer, following precautions are needed to be taken:
- Check status of IP filed or granted in the name of the Technology Developer. If patent forms substantial part of the Technology Transfer agreement, it is required to get validation search done to check strength of the patent. Legal status, term of the patent and countries in which patent is filed/granted is also needed to be checked thoroughly. As a part of Technology Transfer, if Technology Developer is going to assign patent to the buyer, it is imperative to make note of prosecution details of the patent, especially renewal fee payable annually in different countries because if such IP is going to be assigned to the buyer, all liabilities and future fee payments also become responsibility of the buyer.
- Scope of rights granted to the buyer shall be such that it should enable buyer to sell the end product smoothly without any hinderance.
- Freedom to operate analysis shall be performed by the buyer to see if product made using the technology of the developer is safe to be launched in a given jurisdiction or not.
- Invention of the Technology Developer may work well in the laboratory but in order to bring product in the market, scalability of the technology shall be checked. It is better to obtain prototype or feasibility studies data from the Technology Developer.
Case study: Jasmine Exporters in Tamil Nadu
Tamil Nadu is the leading producer of jasmine in India and the flowers produced in the state are being exported to various countries like Singapore, Malaysia, Sri Lanka & United States etc and due to long travel time, the flowers would get spoilt and lose fragrance. More precisely the post-harvest losses were 35-40% and this was causing a huge loss to the flower growers.
There was attempt made to solve this problem by working on the better packaging technology. The Indian Council of Agricultural Research (ICAR) along with National Agricultural Innovation Project (NAIP) sponsored project ‘Value Chain on Flowers for Domestic and Export Markets’ in collaboration with M/S. Vanguard Exports, a private successful flower exporter, developed a reliable export packaging technology that would cater to the near and far overseas markets.
R&D of the project was undertaken by Tamil Nadu Agricultural University (TNAU). The technology was disseminated to jasmine growers and entrepreneurs through training programmers and demonstrations. A total of 1280 Growers and entrepreneurs were trained through 26 training Programs in Jasmine growing area of Tamil Nadu.
The technology primarily involved treatment of flower bud strings with boric acid, followed by packing in ventilated corrugated fibre board (CFB) boxes with butter paper lining and the ventilation is made by making holes in the corrugated fiber boxes. After proper packaging the boxes are airlifted to respective destination. The packing in case of longer travel further involved packing of boric acid treated flower bud strings in aluminium foil lined light weight cardboard boxes. These boxes in turn are packaged in large thermocole boxes with intermittent ice gel packs to maintain the temperature and humidity inside the box. These thermocole boxes are transported in refrigerated vans to airport and then it is dispatched to the respective destination.
With this packaging technology, shelf life of flowers increased to 72 hours against 36 hours in normal packaging system and post-harvest losses were reduced from 40% to 10% and the export volume increased to 1000 kg/ day in 2013 (100%) from 500 kg/day in 2008. Before NAIP intervention, the net profit gained was only Rs. 9,250/day, and after the intervention it increased to Rs. 17,500/day. For Dubai market, the export volume increased to 900 kg/ day (2013) from 600kg/day (2008) and the net profit hiked from Rs.2,250/day (2008) to Rs.9,250/day (2013). Tamil Nadu Flower Growers’ Association, Sathyamangalam (3000 growers) was linked directly with jasmine exporters for marketing. Patent for the packaging technology was filed in the name of TNAU (1370/CHE/2010).
Technology Transfer is a very effective way to commercialize a new technology If worked out well, both Technology Developer and buyer can be benefitted by this arrangement. However, both parties shall be aware of terms and conditions they are agreeing upon to make this arrangement win-win for both.
References:
- https://tnau.ac.in/research/wp-content/uploads/sites/60/2020/02/Annexure-7-Jasmine-Packaging.pdf
- https://agritech.tnau.ac.in/export_import/jasmine/index.html
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Mar 4, 2023 | Indian Patents Act 1970, IPR & Business, Patent
Patent search is a process of identifying relevant patents and depending upon the purpose of patent search, the parameters like timeline, jurisdiction, subject matter can be defined while performing a patent search for a specific purpose. There are different types of prior art searches for different purposes, but broadly patent search can be classified in to six main categories namely:
- Patentability or Novelty search (PAS)
- Freedom To Operate (FTO)
- Validity or Invalidity search
- State of the Art search
- Technology Landscape Analysis
- Evidence of use search
A. Patentability search (PAS) or Novelty search
“Patentability search”, also known as “Novelty search”, is the most common type of search on patent/non-patent literature to assess novelty & patentability of the invention. While patentability search can be performed much earlier during the development of an invention, it is more commonly performed prior to submitting a patent application. Patent search is often done world-wide or globally using various paid or free databases.
B. Freedom To Operate (FTO)
FTO search, also known as “Clearance search” or “Right to use search” is conducted prior to launching a new product to check the patents that are in force in a country to ensure that upon launching the product, the company is not infringing any patent (s) of third party. FTO search is limited to patents that are ‘in-force’ and it requires in-depth analysis of the claims and legal status of patents identified. FTO is usually done jurisdiction-wise because patent rights are specific to jurisdiction, and FTO analysis should relate to particular countries or regions where a company wants to operate. If the company wants to launch products in the US, FTO is required to be done in the US alone but if the products have to be exported to four other countries, FTO shall be done in other four countries as well.
C. Invalidity/Validity Search
The purpose of validity/invalidity search is to determine whether a patent issued on an invention is valid or not in view of prior art. The main reason to perform this search is to either validate or invalidate one or more claims of a patent. In other words, when a search is conducted to validate the claims of a given patent, it is called Patent Validity Search and when it is determined to invalidate the claims of a given patent then it is called Patent Invalidity Search.
D. State of the Art search
The State-of-the-Art search is the broadest and the most general of all types of patent searches. It is essentially a market survey that ideally finds out what technologies already exist. State of the Art search results are valuable in many situations especially when a company is contemplating entry into a particular field of art. The State-of-the-Art search results may provide concrete evidence of the advisability of such a decision. To a company that is currently active in a particular field of art, the State-of-the-Art search results may lay out the path that must be followed to design around the current art.
E. Technology landscape
Technology landscape is an in-depth analysis of patents to understand the technology evolution, major players, current and upcoming competitors and changes in the timeline trend. The main purpose of technology landscape is to identify the white space or gap in the technology, and it provides a comprehensive scope to plan the future R & D, leading to innovative projects to bring out new products/process in an industry. The main purpose of technology landscape study is to understand the technology trends, strength of competitors, to learn latest technology advancement and analyse the patent activity related to technology of interest. Based on technology landscape analysis, appropriate IP strategy in compliance with business strategy is devised for the companies because a good IP strategy is a critical part of business plan and growth at any stage.
F. Evidence of use search
Purpose of Evidence of Use search, also known as EOU, is to identify potential infringement of the existing patents and is helpful at the time of technology transfer as proof of patent infringement can affect the terms and conditions of the transaction.
Patent search is performed to extract valuable data related to specific product or the invention and this data may be used in various ways depending upon the purpose of patent search.
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Mar 4, 2023 | Indian Patents Act 1970, IPR & Business, Patent
The word “patent search” or “prior-art search” in patent law means any information that exists in the form of publication or patent or prior use, before the date of the filing a patent application. This knowledge (or “prior art” or “state of art”) may be in any form such as patent, scientific literature, publications (such as journal articles, proceedings of conferences, data books and display information from technical exhibitions), public discussions or news from anywhere in the world. The prior-art search is often performed by a patent attorney or a patent agent or a patent searcher and it is conducted through various patent and non-patent databases and other relevant technological websites to identify relevant prior-arts.
Novelty of an invention is always determined before inventive step because the technical contribution of the inventor can be assessed only by knowing the novel elements of the invention. The invention is not considered to be novel if information about the invention has already been disclosed in public.
The right time of doing patent search is at the stage of idea itself. Before investing time and money to develop the idea, it is extremely important to assess whether the idea is novel or already published or claimed by anyone else. Often the inventors assume that the idea is novel by looking at the products which are already in market and comparative analysis of such products with their idea makes them believe that idea is novel. The hard reality is that only small fraction of patents is commercialized, whereas a big chunk of patents, even though are not commercialized, but certainly form part of the prior art and may prevent an inventor from getting a patent on his invention.
Prior art search is performed at various stages of product/process development and the purpose of doing it may vary depending upon the requirements. The main reasons for which prior art search is done are:
1. Before filing for patent
Inventor may perform prior art search for his invention before filing for a patent to make sure that on the day of filing patent application, his invention is novel and there is no existing patent or publication of the invention before he files the patent application.
2. At the time of planning R & D
Due to heavy competition, today companies spend lots of time and resources for Research and Development. Patent search may be performed by researchers in a particular area of technology to assess the work already done and based upon such existing knowledge they can plan R & D in a better and effective manner. Prior art search gives a fair idea on the research already done in a particular area of technology and the inventor can work further on it instead of working again on the same area. Prior art search also provides ideas to refine and improve the invention by identifying whether the invention has significant improvement over existing inventions.
3. Before product launch
A company may perform prior art search before launching product in a specific market to make sure that it is not infringing patent rights of any third parties by the product launch. This search is called as “Freedom To Operate search (FTO Search)” or “Clearance Search”.
4. Technology Landscape studies for devising IP Strategy
The purpose of Technology Landscape study is to understand the technology trend, strength of competitors, to learn latest technology advancement and analyze the patent activity related to technology of interest. Based on Technology Landscape Analysis (also called as Patent Landscape Analysis), appropriate IP strategy, in compliance with business strategy is devised for the companies because a good IP strategy is a critical part of business plan and growth at any stage.
5. During opposition or revocation
If anyone wants to oppose or revoke a patent application or a granted patent, patent search is necessary to identify the grounds on the basis of which validity of a patent/application shall be contested.
6. Patent Licensing
Patent licensing is the process of transferring patent rights to third party by the patent holder for a particular period of time, in a given jurisdiction. At the time of patent license, patent search is performed to understand strength of the patent by comparing the patent to be licensed with the prior art.
The prior art or patent search is essential for innovation driven companies not only to plan research, take decision on patent filing but also to formulate appropriate IP strategies.
Therefore, it is imperative for the inventors to perform patent search at the stage of idea itself, assess chances of patentability as well as infringement of patent right of the third party (ies) before investing money and time in research. For the inventor to make a decision on the patentability of the invention, it is critical to get the search done in time.
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