Mar 3, 2023 | Indian Patents Act 1970, IPR & Business, Patent
A patent is a form of Intellectual Property Rights (IPR) and is a statutory grant by the Government that gives its owner the legal right to exclude others from making, using, selling, offering for sale or importing the patented invention in the territory wherein patent is granted, for a limited period of time.
Invention shall have novelty, inventive step and industrial applicability in order to get a patent granted. Patent is granted to the inventor only if these three conditions are fulfilled. The way to assess patentability of the invention before filing a patent application is by performing patentability search.
Patentability search (also called as novelty search or patent search or prior art search) is a kind of patent search which is often performed to analysis novelty of the invention before filing for a patent wherein prior arts, similar to the invention are identified, analysed and compared with the invention in detail to assess novelty of the invention. This helps further to draft patent claims in a better manner. This search is also sometimes performed to plan further research by analysis of the research which others have already done. It is highly recommended to search non-patent literature (research paper publications) also in addition to patent search, especially when the purpose of search is to assess novelty of the invention.
The search is often performed by patent professionals into several paid or free patent databases by using various search techniques such as key word search, International Patent Classification (IPC) based search, assignee search and so on. Further, patent professionals use various search strategies to yield the most relevant and accurate results corresponding to a particular invention.
In order to perform patentability search, following steps shall be taken:
Step 1: Identification of novel elements of the invention
The novel features may be listed out as novel feature 1, 2 and so on. This listing helps to formulate the key words and set right search strategies.
Step 2: Formulating right key words & framing search strategies
It is important to do basic research on the invention so that it is easy to identify keywords and their synonyms to ensure that prior art search is comprehensive, and no important prior art is missed during the search.
Step 3: Performing search in patent databases
Every patent office maintains its own patent databases comprising published applications and granted patents. Some of the commonly used databases includes espacenet, google patents, patentscope by WIPO and USPTO patent database. Search in these databases is free. However, there are more comprehensive databases, which are paid. Search shall be performed in these databases to extract the relevant prior art. Searcher shall focus on key words and search string formulation otherwise you may get a very high volume of search results and it becomes difficult to screen through it.
Step 4: Screening of prior art and categorizing them based on similarity with the invention
At the time of performing patentability search, the entire patent specification shall be read with special emphasis on the patent claims/embodiments and categorised as most relevant, relevant prior art.
Step 5: Comparison of prior art with novel elements of the invention
Comparison of prior art with novel elements of the invention shall be done for each novel element and finally the invention shall be assessed for patentability.
Step 6: The invention shall also be assessed to check if it falls under category of inventions not patentable in a specific jurisdiction.
In addition to meeting 3 conditions of patentability such as novelty, inventive step and industrial application, the invention shall not fall into any of the category of inventions not patentable. In Indian patent law, section 3 and 4 talk about the inventions that are not patentable in India. For example, the inventions that relate to computer software, traditional knowledge, atomic energy or the inventions that are injurious to human, plant animal life or environment are not patentable in India even though such inventions fulfil criteria of patentability. In step 7, invention shall also be assessed to check if it falls under category of inventions not patentable in a specific jurisdiction.
Step 7: Assessment of patentability of the invention in terms of novelty, inventive step and industrial application
In order to assess patentability of the invention and write opinion on patentability of the invention, the searcher shall be thorough with that different provisions of patent law. Based on finding of above 6 steps, opinion on novelty and patentability of the invention shall be written.
Novelty search is important to be performed before taking final decision on filing for a patent. If this search reveals similar or identical prior art, which is very close to the invention, inventor has a chance to improve upon the invention to minimise the objections to the grant of the patent during examination of the patent application.
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 foreign countries.
Deliverables: Patentability search report is written in word document with opinion on patentability considering statutory provisions along with PDF copies of all prior arts listed
Timeline: 3-5 business days
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Mar 1, 2023 | Indian Patents Act 1970, Key Terms of Patents Act
To keep patent in force after it has been granted, the renewal fee has to be paid periodically (annually). Failure to pay the renewal fee may lead to lapse of a patent which means that patent ceases to have effect.
Under section 60 to 61 of the Indian Patents Act 1970, the lapsed patent can be restored; if it is proved by the patentee that the failure to pay fees was unintentional and pending renewal fees is paid within 18 months from the date on which the patent ceased to have effect. The evidence must support the patentee’s claim that the failure to pay fee was unintentional and there has been no undue delay in applying for restoration. The Controller may call for further evidence, which may include letters, deeds etc.
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The due date for payment of renewal fee is 24th June 2009 and the applicant fails to pay the renewal fee, as a result the patent lapses and ceases to be in force. If the applicant wants to restore the application, he shall make request to restore the application before 24th December 2010 i.e., within 18 months from the date patent ceases to be in force.
After hearing the applicant, if the Controller is prima facie[1] satisfied that the failure to pay the renewal fee was unintentional and that there has been no undue delay in the making of the application, he shall publish the application. Any person interested[2] may give notice to the Controller of opposition on the grounds:
- That the failure to pay the renewal fee by the applicant was not unintentional; or
2. That there has been undue delay in the making of the application.
If notice of opposition is given by the opponent to the Controller, the Controller shall notify the applicant, and shall give to him and to the opponent an opportunity to be heard before he decides the case.
If no notice of opposition is given within the period aforesaid or if in the case of opposition, the decision of the Controller is in favor of the applicant, the Controller shall, upon payment of any unpaid renewal fee and such additional fee [as may be prescribed] restore the patent and any patent of addition, which has ceased to have effect on the cesser of that patent.
The Controller may, if he thinks fit as a condition of restoring the patent, require that an entry shall be made in the register of any document or matter which, has to be entered in the register but which has not been so entered.
As, failure to pay renewal fee may lead to lapse of the patent, the time between lapse of patent and date of restoration of patent by the applicant is very crucial and during this time, there is no protection available to the patent in legal sense. During this time, someone may commercialize or use the patented invention assuming that patent has ceased to be in force. In such a case, if anyone has started commercializing the invention and then applicant restores the application and patent comes into force again, situation is extremely sensitive. This situation gives rise to following issues:
- To protect the persons who have begun to use the applicant’s invention between the date when the patent ceased to have effect and the date of publication of the application for restoration, every order for restoration should include the provision and the Controller may impose other conditions for protection and compensation of the persons who have begun to use the applicant’s invention.
- No suit or other proceeding shall be commenced or prosecuted in respect of an infringement of a patent committed between the date on which the patent ceased to have effect and the date of the publication of the application for restoration of the patent.
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[1]Latin expression meaning on its first appearance, or at first sight.
[2] For details refer Section-2, Chapter-1
Mar 1, 2023 | IPR & Business, Patent, Startups
Buying patent (s) is a very effective way for the companies to increase size of their patent portfolio and get access to the new and latest innovations without spending much time and money on R&D. In today’s highly competitive world, acquiring intellectual property, is increasingly becoming an important business strategy to increase companies’ offerings or differentiating itself with respect to competition.
By in licensing a patent, companies get permission from the patent holder to use the patented invention for a specific period of time in a given jurisdiction and therefore, buying a patent may also help companies overcome risk of patent infringement.
The sole difference between buying and in-licensing of patent is that in case of buying patent, ownership of the patent gets transferred to the buyer and when patent is licensed, there is no transfer of patent ownership from patent holder to the buyer but it’s only permission granted by the patent holder to the buyer to use the patented invention for a specific period of time.
In this article, we will discuss advantages of buying patents and important considerations before taking decision to buy patents.
Why should companies buy patents?
Innovation is key to success of any business today and in order to obtain a competitive edge in the market, innovative products, processes or services shall be created. Acquiring innovative patents or technologies could be one of the most effective ways to create innovative products. When the patent is granted to patent holder by the Patent office, the patent holder is granted specific rights in a specific jurisdiction which he/she can license or sell it to other in lieu of royalty or an upfront payment. Therefore, if both patent holder and buyer are interested, the ownership of patent may be transferred to the buyer by patent holder.
In 2017, InVisage was acquired by Apple Inc, along with its patent portfolio of more than 100 patents on Quantum Dot Technology for Advanced Cameras along with other technologies. This is how Apple got access to Quantum Dot Technology and thereby it helped enhance size of its patent portfolio and use the acquired technology in their latest cell phones.
In 2014, flash array vendor Pure Storage acquired 100 patents from IBM, which were related to storage technology to prevent litigation. This way, Pure Storage could not only build a robust patent portfolio but also got freedom to operate in a wider range by minimising patent infringement risk. Further, acquiring patents also improved valuation of the company.
There are various advantages of buying patents, such as:
- Obtaining access to new/latest technologies and markets
- Reduce R&D cycle, thereby reducing time to market
- Remain “ahead of the curve” vis-à-vis competition
- Minimise patent infringement risk
- Increase size of patent portfolio
- It may help in branding or marketing
Important considerations while acquiring or licencing a patent
Buying of patent is a cost to the company. Hence it becomes important that only useful and relevant patents are bought. Following points shall be taken into consideration before taking final decision to buy a patent:
a. Area of Technology: In order to buy patents, first of all, areas of technology in which patents are to be bought shall be identified. Reading through the entire patent specifications, especially the claims will be immensely useful to find out subject matter claimed in the patent. Further, the patent to be acquired should complement or enhance the current technology offerings.
b. Jurisdiction: The buyer should be clear about the jurisdiction where the patented invention is to be used. For example, if the business of a company is only confined to India and US, then, patents filed/granted in these two jurisdictions shall be searched. However, there is a possibility of existence of good and relevant patents in other jurisdiction where there may be opportunity for companies to use such patents without a need to buy them or in-license them. For example, if an Indian automobile company finds a good, patented invention in Brazil for which Indian patent is either not filed or timeline to file in India has expired, the Indian company may use such patent in the countries other than Brazil. Patent rights are territorial in nature and patent granted in Brazil is valid only in Brazil. Using such patent outside Brazil generally does not deem to be infringement of patent rights. However, thorough due diligence is needed in such cases to ensure that there is no patent infringement risk involved.
c. Searching right patents: There are free and paid patent databases from where list of published patent applications or granted patents may be extracted using various search strategies. You may shortlist the relevant documents, read through the abstract and if need be, full patent document may be downloaded and read to understand which is the right patent to be bought.
d. Legal status of patents: It is very important to check legal status of the identified patents so that you know if they are “in-force”, “abandoned” or “expired” patents. It is good idea to segregate the identified patents into various categories depending upon their legal status. It is important to note here that you must buy only “in-force” patents because expired patents anyways are available for you to be used for free. As far as abandoned patents are concerned, they may have a possibility to be restored. So, if you are interested in abandoned patent, you must watch it carefully and periodically to understand if it comes into force again or gets expired. So, your strategy to buy such abandoned patent will change accordingly.
e. Making offer to the patent holder: After you have identified the patents of interest and confirmed their legal status, the next step could be to extract name and contact details of the patent holders to contact them to show your interest in buying the patents. Discussion may be initiated with patent holders regarding buying of the patents. At the time of buying patents, before making an offer to the patent holder, one of the important action points you should be focussing at, is valuation of the patent to understand how much you are going to pay for buying the patent. There are various well-tested methods to assess value of a patent, however, lots of things depend upon how the parties want to proceed.
f. Check prosecution history of the patent and it’s renewal fee: After patent application is filed, there are various prosecution stages through which a patent application passes to get a patent granted. This prosecution history may give you very vital information on quality of patent, kind of objections the examiner raised before grant of patent. This information may be of great use at the time of negotiation the patent holder. Further, after a patent is granted, there is an annual renewal fee which is to be paid by the patent holder to respective patent office to keep the patent in force. Failure to pay this fee may result in expiry of the patent. Once you buy the patent, you will be responsible for paying this renewal fee. So, depending upon the term of patent left, you must estimate the amount of fee payable by you to keep the patent in force.
g. Patent Assignment: Patent assignment is the term used with respect to transfer of patent rights and ownership from patent holder to buyer of patent. Here the buyer becomes owner of the patent and patent assignment is completed by executing assignment deed between patent holder and the buyer. Copy of such Assignment Deed is submitted to the respective patent office and then Controller of patent makes changes in the official records.
h. Patent Infringement Risk: It is worth noting here that even if you buy a patent and own it legitimately, before implementing or using such patent, it is important to ensure that usage of such patent does not infringe any third party’s patent rights. Hence Freedom to operate search or infringement analysis is important to be performed before acquisition of the patent.
Conclusion
Buying a patent is an effective and powerful way to increase size of IP portfolio and own patents without spending much on R&D. However, like owning tangible property, IP ownership also comes with obligations and responsibilities. With proper due diligence and expert advice, this process can be made really effective and useful for the organization.
Authors: Bindu Sharma (Founder, CEO Origiin IP Solutions), Bhavya Sharma (BBA, LLB) from Jindal Global Law School.
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Feb 28, 2023 | Indian Patents Act 1970, Key Terms of Patents Act
The word Jurisdiction is a combination of two Latin words, juris ‘law’ + dictio ‘declaration’.
Jurisdiction, in simple words, is the geographic area over which authority extends for the authority to hear and determine causes of action. Jurisdiction also denotes the geographical area or subject-matter to which such authority applies or a court’s power to hear a case.
When an offence has been committed at a particular place, usually the court in whose jurisdiction the crime has been committed has the jurisdiction to inquire into and try that case.
Jurisdiction, usually is categorized as below:
- Jurisdiction bases on the subject-matter: Certain courts entertain suits of particular classes only. For example, there are specific courts to handle environment related cases. So for such cases, right jurisdiction could be the Courts that handle such specific cases.
- Territorial Jurisdiction: Every court has its own limits like a District court is in charge of the district and cannot exercise his power beyond that district.
- Pecuniary Jurisdiction: Different courts have different limits to try suits or hear appeals of different amounts or value. Some of these courts have unlimited pecuniary jurisdiction.
- Original or Appellate Jurisdiction: The jurisdiction of a court may again be Original or Appellate. In District Court one can file original cases whereas supreme court may handle only appeals.
U/S 104 [Jurisdiction] of the Indian Patents Act 1970, no suit for a declaration under section 105 or for any relief under section 106 or for infringement of a patent shall be instituted in any court inferior to a district court having jurisdiction to try the suit.
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Feb 27, 2023 | Indian Patents Act 1970, Key Terms of Patents Act
Parallel Import is an important topic related to Exhaustion of Rights principle whereby the right holders’ IP rights in respect of a product are considered exhausted (i.e. he no longer can exercise any rights) when that product has been put on the market by the IP holder, or by an authorized party. After a patented product has been sold by the patentee or by others with the consent of the patentee, the IP right is said to be exhausted. It can no longer be exercised by the owner of the patent or patentee.
For example, if an inventor obtains a patent on a new oximeter, the inventor can exercise his rights and legally prohibit other companies from making, using, selling, offering for same and even importing such oximeter in the territory where he has patent protection, but cannot prohibit customers who have bought this oximeter from the patent owner from reselling it to third parties.
U/S 107A, [Certain acts not to be considered as infringement], 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. Therefore, it is possible to import the patented products from the licensee of the patentee in any country without the permission of the Patentee.
The purpose of Parallel import is to check the abuse of patent rights and to control the price of patented product by taking away the monopolistic power of the patent holder. Parallel import (also called grey market imports) is not unauthorized, unofficial or illegal sale, nor it the sale of pirated and counterfeited products, rather parallel imports are genuine, often branded, products that do not violate an IP right and legal in most of the nations.
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Suppose a company called Blue Pharma has a patent for a drug in India. This company has licensed its patent to red Pharma in Russia. Here Blue Pharma is Patentee while Red Pharma is Licensee and is authorized by patentee to see the drug. Now Green pharma in India, buys the drug from Red Pharma and imports to India. Even though Blue pharma has patent rights in India and it can prevent Green pharma from importing the drug in India, as principle of exhaustion of patent rights comes into picture. Since Green Pharma is buying and getting drug imported from Red Pharma where red pharma is duly authorized under the law to produce and sell or distribute the product, importation of drug by green pharma in India shall not be considered as an infringement of patent rights.
Parallel import is helpful in controlling prices of the goods and prevents patentee from abusing his/her patent rights.
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