There have been a lot of discussions and difference of opinions on whether an idea can be patented or not. Well, this indeed is a tricky question with an uncertain answer.
Filing for a patent requires the invention, as a product or a process, to be novel, industrially useful and inventive. As an inventor, while drafting patent specifications, one must disclose the best method known to him or her on the day of filing patent application. An issue arises that if the invention is just an idea, what is the best method of implementing the invention? At the same time however, all inventions originate from ideas. Therefore, it must be understood clearly that patents are granted only to inventions and not to ideas, provided such inventions fulfil certain statutory conditions as specified in patent law.
There are two ways to file for a patent, i.e., either a provisional patent application or complete patent application. If the invention is still in the development stage and is not complete yet, a provisional application should be filed. Some other reasons to file a provisional application are:
The earliest date of filing or priority date is required;
Conservation of time and money is a matter of importance;
It is unsure if the invention will be developed further or not;
The experimental data concerning the invention is not ready yet;
Investor will release fund only after inventor produces evidence that patent application is filed;
Changes are expected in the experimental data before completion of the work.
It is worth noting here that provisional application may be filed if the invention is at the stage of idea, provided that the idea is executable and is capable of being performed practically because at later point of time, at the time of filing complete application, best mode of performing the invention has to be disclosed. Further, the inventor should also keep in mind that the scope of provisional and complete application must remain same. A complete specification may be filed within 12 months from the date of filing provisional application. However, if the complete specification is not filed within this time period, the provisional application gets abandoned automatically without loss of confidentiality as the provisional application was not published.
Article 83 of the European Patent Convention states that an application must disclose the invention in a manner sufficiently clear and complete for it to be carried out by a person skilled in the art, and insufficient disclosure is one of the grounds for opposition of the patent.
United States patent laws explain that the patent specification must be complete enough so that a person of “ordinary skill in the art” of the invention can make and use the invention without “undue experimentation”. The laws further state that the disclosure must also contain the inventor’s “best mode” of making or practising the invention.
In India, section 10 of Patent Act sys that every complete application must fully and particularly describe the invention and its operation or use and the method by which it is to be performed. The Act also mentions that the application should disclose the best method of performing the invention which is known to the applicant and for which he is entitled to claim protection.
At the time of filing complete application, the best mode of working the invention must be disclosed. Failure to do so may expose the application to opposition before or after grant of the patent, thus leading to invalidation of the patent.In the Press Metal Corporation Limited vs Noshir Sorabji Pochkhanawalla case, it was held that it is the responsibility of the patentee to state clearly the nature and scope of what they claim in the patent, and that the patent specifications shall not contain ambiguous and obscure information.
In conclusion, an idea cannot get a patent as such if the idea not executable or cannot be converted to an invention. In order to claim priority date & protect the idea, it is recommended to file a provisional application if the invention is at the stage of an idea or experimental results of the invention are not complete and the invention is at a developmental stage. However, at the time of filing complete application, idea itself is not enough and inventor shall submit full disclosure of the invention along with best mode of working the invention.
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When a patent application is filed, it is necessary that one patent application is filed for one invention. If more than one inventions are claimed in a single patent application, such inventions shall be related to each other or we can say that such inventions shall have unity of invention. Unity of invention is a formal administrative requirement that must be met by the inventor to comply with the provisions of patent law. Basically, a patent application should relate to one and only one invention or a group of closely related inventions.
The purpose of this requirement is administrative, as well as financial and prevents applicant from filing single application for more than one inventions, while paying only one set of fees (filing fee, search fee, examination fee, renewal fees, and so on). However, if the inventions are related to each other, single patent application may be filed. For example, the inventions such as, micro organism as a product, its process of isolation, preparation of genetic recombinant strain are related to each other and form a single inventive step. Therefore, all of them have unity of invention and can be claimed and filed as single patent application.
Unity of invention also makes the classification of patent documents easier. If multiple and unrelated inventions are permitted to be claimed and filed as single patent application, assigning multiple classes will be extremely confusing and cumbersome process, further making patent search also difficult. The International Patent Classification (IPC) is a hierarchical patent classification system used by majority of the countries to classify the content of patents in a uniform manner based on the area of technology. Though there are very fine and detailed sub-classes, the broad classes are as below:
During examination of patent application, the application may be objected due to lack of unity. However, such application is not denied the grant due to lack of unity. The applicant is given opportunity to break the parent applications into divisional applications. And this way, all divisional applications continue to exist and are taken for further prosecution. While filing the divisional application, in order to claim priority from the parent application, a statement is required to be added in divisional application, Form-1 & 2 in following format:
This is a divisional application and claims priority from the parent patent application number XXXX/CHE/XXXX with a priority date of Date/Month/year. Separate fee for filing, examination, depending upon the number of claims and pages is applicable for the divisional patent application.
If the Controller feels that one application contains more than one invention (lacks unity of invention), he may direct the applicant to split the application and file divisional application i.e., one application shall be split into more than one application. Section 16 [Power of the Controller to make orders respecting division of application] of Indian Patents Act 1970 says that when an application made by applicant claims more than one invention, the applicant on his own or to meet the official objection during examination of patent application by the examiner, may divide the application and file two or more applications, as applicable for each of the inventions. This type of application, divided out of the parent one, is called a Divisional Application. It is interesting to note that the priority date for all the divisional applications will be same as that claimed by the Parent Application (Ante-dating).
If claims of the complete specification relate to more than one invention, applicant shall file a further application in respect of an invention disclosed in the provisional or complete specification already filed in respect of the first mentioned application.
Such further application (or divisional application) shall be accompanied by a complete specification, but such complete specification shall not include any matter which was not disclosed in the complete specification filed in pursuance of the first mentioned application.
The Controller may require such amendment of the complete specification filed in pursuance of either the original or the further application as may be necessary to ensure that neither of the said complete specifications includes a claim for any matter claimed in the other.
The further application (or divisional application) and the complete specification accompanying it shall be deemed to have been filed on the date on which the first mentioned application had been filed, and the further application shall be proceeded with as a substantive application and be examined when the request for examination is filed within the prescribed period.
Illustration
Date of filing provisional application and priority date: 15th November 2006
Date of filing complete specification: 13th November 2007
Upon examination of the application, the Controller raises the objection that the invention lacks unity of invention and hence, the application should be split into 2 applications i.e., main or parent application and divisional application.
Applicant again files the divisional application on 10th Jan 2009
In such a case, both parent application and divisional application will have priority date of 15th November 2006 even though the divisional application was filed 10th Jan 2009.
This assignment of earlier date to the divisional application is called as Ante-dating.
Watch Video HERE (Divisional Patent Application- Term 19)
A Non-Disclosure Agreement (NDA) or Confidentiality Agreement is a legally binding contract that establishes a legal relationship between the two parties where one party discloses the confidential information, and second party receives it. However, NDA may also be two sided where both the parties disclose and receive confidential information to each other. The parties signing the NDA agree that confidential information which they got access to, will not be made available to any others in unauthorised manner because such unauthorised disclosure may put disclosing party at a big risk.
What is Confidential Information?
Confidential information is defined as information which is not in public domain, has economic value and the owner of such information has taken reasonable steps to safeguard it. Confidential information may be categorised into technical and business information. Technical information generally includes inventions, ideas, drawings, designs, software code etc whereas business information may be related to acquisition or merging, employee salaries, future plans, product launch, press release, financial data of the company. Any information which is in public domain cannot be named as confidential information. It is important to take utmost precautions to protect confidential information of the company. Other than physical measures, companies shall also have right policies & processes to safeguard it. Executing NDA is one of the ways to safeguard such valuable information wherein the parties disclosing and receiving the confidential information agree on specific terms and conditions to avoid misappropriation of the information.
When is NDA needed?
Businesses need to disclose business or technical information to third parties very often and it is important to take precautions before such sensitive information is disclosed. NDA is an important agreement to be executed in the instance when such information is disclosed and requires to be safeguarded:
Business or product information is to be revealed to external vendors/consultants to seek advise or to get the product manufactured.
Business/financial/product information is to be discussed with investors.
Intellectual Property, especially invention details are to be disclosed to the patent attorney.
Company information is to be shared with the employees.
Main clauses of NDA
Like any other agreement, NDA is signed between atleast two parties wherein one party discloses, and other party receives the confidential information. In some situations, both parties may disclose, or receive information from each other and such NDA may be called as mutual NDA.
The agreement starts with date of execution and full name & address of the parties. All the important terms used in the agreement, including the term “Confidential Information” shall be defined to avoid discrepancies at later point of time. Reason and purpose to execute the agreement shall be defined in the agreement along with obligation of both the parties.
Every agreement, including NDA, that is executed shall be have a specific term. Date of execution, term of the agreement and way of termination form a very important part of the agreement. Depending upon need and life of confidential information, term of NDA may be fixed. For example, if the purpose of NDA is to maintain confidentiality of the invention before filing for a patent, then, as soon as patent is filed for, the confidentiality of the invention may not be strictly required to be maintained.
Injunctive Relief forms part of most NDAs where disclosing party has the right to injunctive relief to stop the other party from breaching the agreement. Under this clause, the disclosing party can get a court order to stop the other party from breaching the agreement.
Apart from this, governing law, jurisdiction shall be specified to ensure that if any dispute happens, it is resolved with least difficulty.
Conclusion
NDA is one of the most commonly executed agreement and is used for various purposes. In order to be enforceable, the NDA shall have all the clauses of a valid agreement.
A Patent agent as defined under Section 2(n) of the India Patent Act, 1970 is a person who has passed Indian Patent Agent Examination and is registered under section 126 of the Indian Patent Act as a patent agent. Patent agent is involved in drafting filing, and prosecution of the patent application before the controller on behalf of the person who wish to file a patent. Patent agent has to be authorized by the inventor to act on his behalf by executing power of attorney in his name. Patent agent is person who has written and passed patent agent exam and registered himself as a patent agent. Doing this, his name is entered in the Register of Patent Agents by the Controller.
Who can be a patent agent?
The qualifications to become a Patent agent are as follows:
He should be a citizen of India;
He have completed the age of 21;
He should have completed a degree in either Science, Engineering or Technology from any university established under law for the time being in force in the territory of India or should possess such other equivalent qualifications as specified by the Central Government; In this regard, final year students can also apply as long as they can produce their degree certificate with all the marks card within 2 months from the date of announcement of patent agent examination results;
He should have either passed the qualifying examination prescribed for the purpose or should have functioned either as an examiner or discharged the functions of the Controller under section 73 or both, for a total period not less than 10 years provided that, at time of making the application for registration he has ceased to hold any such capacity; &
He should have paid the prescribed fees.
Indian Patent Agent Examination
Only a person meeting the qualification provided under Section 126 of the Act shall apply for the Indian patent agent examination. The applicant should select the center of his convenience to write the exam which is usually conducted in 5 cities that is, Mumbai, Delhi, Nagpur, Chennai and Kolkata. The Indian patent agent examination, generally, is conducted once every year and the examination consist of:
Written Exam: The written exam, conducted by the office of the Controller of patents comprises of:
Paper I (100 marks)
Paper II (100 marks)
The Paper I will have both Objective and Descriptive type questions and is based on the Patent Act and Rules.
Paper II will have questions related to drafting, interpretation of patent specifications and other descriptive questions from Patent Act and PCT.
A candidate is required to score a minimum of 50 marks in each paper to pass the examination. Therefore, to qualify, the person should be thorough with the acts, rules, practice and procedures of patenting.
Viva voce: Candidates who pass in Paper I and II are called for Viva and it is conducted for 50 marks. The questions that are generally asked are based on IPR and more specifically patent law provisions related to the technical field of the candidate. For a person to qualify as a patent agent, he should secure an overall 60% aggregate of the total marks. The amendment in relation to the scores requires to be qualified were made after 2012, Delhi High court decision in the case of, Anvitha Singh v. Union of India wherein the rule prescribing a minimum 50 per cent marks in the viva-voce part of the patent agent examination was struck down thereby giving less weight to it.
The result of the examination is usually announced after two months of conducting the examination. The results are announced on the official website of Office of Controller General of Patents.
Rights of a Patent Agent
Rights of a Patent agents are described under section 127 of The Patents Act 1970. These rights are as follows:
(a) to practice before the Controller; and
(b) to prepare all documents, transact all business and discharge such other functions as may be prescribed in connection with any proceeding before the Controller under this Act.
Indian Patent Agent is authorized to draft, file, prosecute patent and design application in India and PCT.
How to prepare for Indian Patent Agent Exam
In order to prepare for the exam, you need following:
Indian Patent Act 1970. You must be thorough with all sections, rules, fee and forms of Indian Patent Act 1970. The manual of patent office practice and procedure is very useful to understand various provisions of the Act.
A patent agent, being atleast gradate in science is a perfect candidate to work in research and innovation-based industries. Based on his scientific degree, he can work in pharmaceutical, biotechnology, manufacturing, automobile, automotive industry as a patent engineer or patent analyst. A patent agent can work in following areas:
Different types of Patent searches like novelty search, technology landscape, invalidation search, EOU (Evidence of use) search etc.
Patent specification drafting, file, prosecution in India and PCT
Handling patent opposition, revocation etc
Being a registered patent agent is helpful for those who want to have long term career in the area of patents. It opens up many more areas to work in, especially patent specification drafting, filing and prosecution.
Origiin has been successfully conducting training sessions to help aspiring candidates qualify the Indian Patent Agent Examination since the year 2009.
Our in-house IP experts have been instrumental in developing a comprehensive study material for the Online Course to prepare for Indian Patent Agent Examination.
Course advantages:
Learn at your own pace and convenience
Illustrations and examples provided for easy learning
Assessment and practice questions at the end of every module
Link to register for the course: https://www.origiin.com/indian-patent-agent-examination/
Some important links:
Official website of Indian Patent Office
https://ipindia.gov.in
Guidelines to apply for exam (forms, fee and procedure)
Evidence of Use search (EOU) Search is performed to help patent owners identify potentially infringing products in the marketplace. The purpose of EOU search is to identify products or processes in the market which are likely to infringe the patent holder’s patent or even patent application. In order to perform EOU search, thorough understanding of patent infringement and jurisdiction specific laws is important as it is a very sensitive search and any negligence in the process of performing search and analysis of the findings may prove to be dangerous for the organization.
Understanding of rights of patent holder as well as patent infringement is also critical for EOU search. In simple words patent infringement means violation of rights of the patent holder i.e., to prevent third parties from making, using, offering for sale, selling and importing patented product or product made using patented process in a given jurisdiction.
Advantage of EOU search is that the patent holder can get to know about the existing products in the market that may infringe upon his patent (s) and patent holder can take necessary action against the infringer by enforcing his patent rights.
The steps to be followed in order to perform EOU search are as below:
Step 1: Subject matter of patent shall be understood thoroughly, especially the claims. Claims is a part of patent document that seeks legal protection. Further patent claims shall be interpreted in best possible manner with help of case laws pertaining to the particular jurisdiction.
Step 2: Assessment of strength of the patent based upon the corresponding forward and backward citations of the patent document is important because this step determines strategy to be adopted to handle the infringing products found in the EOU search. Further, it is advisable to check legal status, expected expiry date of the patent as well along with chances of it getting invalidated in case any opposition or revocation is filed.
Step 3: A secondary research shall be performed to identity products available in the market that are likely to infringe claims of said patent of the patent holder. A very vital part of the investigation is to assess size and strength of the companies that are manufacturing the infringing products because this helps patent holder to have right strategies in place.
Step 4: Claim maps or claim charts shall be prepared in order to analyse the extent of the overlap of the identified product with said patent claims.
Step 5: Opinion on EOU shall be written based on jurisdiction specific laws. EOU report will typically have list of infringing products found, mapping of product components of features with patent claims, opinion on patent infringement, strength of the patent, strategies to be adopted to enforce patent rights etc.
Evidence of Use search (EOU) Search is an important search for the patent owners to identify potentially infringing products in the market sothat they can take necessary steps to address it.
Origiin, with a skilled team of patent agents is one of the best patent companies in India offers patent services such as patent searching, and patent filingin India and foreign countries. Origiin also provides value added search services such as Evidence of Use. Origiin, with in-house patent attorney can also help you in drafting and sending patent infringement notices based upon the derived EOU opinion.
Deliverables: EOU report, claim charts along with PDF copy of all prior arts listed in the report
