Feb 23, 2023 | PCT
Patent Cooperation Treaty or PCT is an important treaty, concluded in 1970. The uniqueness of PCT stems from the fact that it provides a unified procedure for filing patent applications in its contracting states, earning it the title of “International Application”. As on 1st September 2020, 153 countries are contracting states of PCT (details may be viewed here: https://www.wipo.int/export/sites/www/pct/en/list_states.pdf). PCT is administered by the World Intellectual Property Organization (WIPO), primarily created to promote and protect intellectual property (IP) across the world by cooperating with countries as well as international organizations. Headquartered in Geneva, Switzerland, WIPO began operations on 26th April 1970 when the convention came into force. Key responsibilities of WIPO include extending technical & legal assistance in the area of intellectual property, conducting research on various areas of IPR and ensuring the proper facilitation of international IP protection.
Steps to file PCT Application
PCT is one of the most preferred ways to file patent application in multiple counties. Steps to file PCT application are as below:
- Applicant is required to file patent application (provisional or complete application) in his home country first to claim date of priority.
- Within 12 months from the date of priority, PCT application shall be filed.
- PCT application may be filed directly with International Bureau of WIPO (online) or via a Receiving Office (RO), which ultimately transmits PCT application to International Bureau.
As soon as the PCT application is filed, international phase starts. The application is searched by International Search Authority or ISA at a later point in time and international search report and written opinion is generated. This report is very important as it gives detailed patentability analyses of the invention. The inventor can consider this report and can take a decision regarding the number of countries in which the application must be filed.
Before International Phase ends, i.e., within 30 or 31 months from the date of priority, PCT national phase application, in PCT-contracting states shall be filed. The applicant may chose any number of countries out of 153 contracting states of PCT. The deadline to enter national phase is 30 months in majority of the countries but some countries like India follow a deadline of 31 months from the date of priority.
Advantages of PCT application filing
The main advantages of filing PCT application are as below:
- PCT is a unified platform that enables applicants to file their patent application in multiple countries claiming priority from the application filed in their home country’s national office. Please note that the applicant can file patent application via PCT route only in the countries that are member states or contracting states of PCT.
- The process of filing PCT application is completely hassle-free. The application may be filed online, requiring the filing of only a single application.
- Unlike convention application filing where international application has to be filed within 12 months from the date of priority, PCT allows the applicant a time window of 30 or 31 months from the date of priority to file application in individual countries that are PCT contracting states.
- International Search Authority (ISA) gives written opinion on patentability of invention which helps applicant to take right decision with respect to national phase filing.
Myths and facts
Even though PCT is a popular and a convenient way to file patent application in multiple countries, there are a lot of myths surrounding PCT filing, as listed below:
Myth 1: PCT grants patent
Fact: PCT is a patent filing platform and does not grant patents. Patents are granted only by national offices when PCT-national phase application is filed and prosecuted as per national laws of the given country (ies). PCT does not have any authority to grant patents.
Myth 2: PCT filing ensures grant of patent globally
Fact: Filing PCT application does not mean that you have an automatic protection in all contracting states of PCT. Instead, you get protection in the contracting states of PCT only if you file national phase application there and your patent is granted by such national offices.
Myth 3: Foreign attorney files PCT application
Fact: The patent agent of your country is authorised to file PCT application, which means you don’t need a foreign attorney to file PCT application. However, a local attorney belonging to the country in which the PCT is being filed will be required for filing PCT National Phase application in that specific country.
Myth 4: PCT filing fee takes care of all expenses
Fact: Applicants often ask whether they are required to file separate fees at the time of filing PCT national phase application as they have already paid PCT filing fees. The fact is that PCT national phase filing fees is independent of PCT filing fees. The fee that the applicant paid to PCT is only for PCT filing and for generating the search report. When a national phase application is to be filed, applicant needs to pay fees for each country for filing and prosecution of the application.
Myth 5: With PCT, National Phase application may be filed in any country
Fact: By filing PCT application, national phase application can only be filed in PCT contracting states. Before considering PCT filing, it is highly recommended to look into list of PCT contracting states on the official website of WIPO to ensure that the countries where you desire to file application is a contracting state of PCT.
Even though PCT is a popular and convenient way to file international application, all pros and cons shall be weighed carefully before opting for PCT route.
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Feb 23, 2023 | Indian Patents Act 1970, Key Terms of Patents Act
Burden of Proof in simple words means ‘adequate evidence to prove oneself’. In criminal cases, as every person is presumed to be innocent until the contrary is proved, the burden of proof rests on the prosecutor, unless a different provision is expressly made by statute. In civil cases, the plaintiff is normally charged with the burden of proof, but the defendant may be required to establish certain defenses. In patent law, the patentee or plaintiff, who initiates a law suit, has burden of proof in case of patent infringement.
The burden of proof is defined in section 101 of the Indian Evidence Act, 1872, (act) as below:
- Whoever desires any Court to give judgment as to any legal right or liability dependent on the existence of facts which he asserts, must prove that those facts exist.
- When a person is bound to prove the existence of any fact, it is said that the burden of proof lies on that person.
U/S 104A [Burden of proof in case of suits concerning infringement]of Indian Patents Act, in any suit for infringement of a patent, plaintiff has Burden of Proof. When a patent is infringed, patent owner/plaintiff has to establish the fact that the patent has been infringed. Comparison of product of defendant with claims of Patentee’s patent can establish 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.
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Feb 23, 2023 | IPR & Business
For various reasons, every inventor wants to file for a patent internationally after filing it in his/her home country. Sometimes it’s about the status that is associated with having a patent filed in the US or Europe, but having an international patent may also enhance the valuation of the technology which ultimately may impress investors and fetch better value to the inventor. Oftentimes, inventors drop the idea of filing for patent internationally because it is expensive, complicated, and long procedure. Laws across the countries are also not unified in terms of procedures, fee and timelines leading to more and more confusions at every stage,
It is firstly of crucial importance to understand the term “International Patent”. In reality, there is nothing called international patent or global patent. Despite there being ways to file for a patent internationally, there is no single authority to grant international patents with validity across the globe. Patents are required to be filed in and granted by each country where the inventor wishes to seek protection.
Few things are required to be focused on, when filing a patent outside India. For a resident of India, Section 39 [Residents not to apply for patents outside India without prior permission] of Indian Patents Act 1970 states that the patent must be filed in India first and can be filed in any foreign country within a period of 12 months. Once this 12-month period expires, the inventor loses the chance of filing outside India.
- Two ways to file patent application internationally
There are 2 ways to file a patent in foreign countries. These are:
- Patent Cooperation Treaty (PCT) Route
An inventor may file a single patent cooperation treaty (PCT) application or international application within 12 months from the date of filing a patent application in India. PCT is an international patent law treaty that provides a unified system for filing patent applications in each of its contracting states. It is a convenient platform to assist inventors that are seeking patent protection internationally (in the contracting states of PCT) for their inventions. It also helps patent offices with their patent granting decisions by providing comprehensive search reports for the patent application along with opinion on patentability. PCT publishes the patent application filed with it and maintains an online database called Patentscope which facilitates patent searches as well as gives public access to a wealth of technical information in the form of patents.
PCT examines the application, issues examination report and enables inventors to file their application within 30/31 months from the date of priority in any of the member states of PCT. After this, the patent is processed and granted by the national offices of the countries where patent protection is sought, based on the procedures and requirements of the respective offices. PCT enables patent filing in its member states & gives extra time to the inventor to decide about the countries they want to file their application in.
2. Convention Route
The countries which are members of the Paris Convention are called convention countries and an application filed in a convention country is called a convention application. Unlike PCT, convention application is required to be filed in the convention country within 12 months from the priority date.
Reasons to file international application
Filing international application without clarity on the reason to file is not a good idea. It does not help inventors in long run and may actually lead to a very stressful situation if the prosecution is left midway, further making the overall process financially cumbersome. Following parameters should be considered when deciding about the countries to file patent application in:
a. Your future business plans
Patents must be filed in the countries where the inventor wishes to expand the business in the future. It must be remembered that there is a specific time period within which inventors must file the patent application in specific countries. Once this period has lapsed, it is not possible to file an application at a later stage. Therefore, if it is desired by the inventor to expand the business in countries like the US or Japan 5 years later, it would make sense to file patents in these countries within the required time frame.
b. Potential of technology in given jurisdiction
Sometimes, it makes sense for an inventor to file for patent in some countries even if the inventor does not have business there. Countries like the US have a mature system of buying, selling and enforcing patents. If technology has good potential in a specific country, a patent should be filed in that country. Further, licensing and selling options may also be explored to facilitate easier transition of the patented technology to the market.
3. Your budget
Filing and prosecution of a patent is a long process and strictly regulated by several timelines. A patent may be lost if the inventor does not respond to the office in time or fails to pay the necessary fees. Further, there are standard expenses for each country and renewal fees to be paid post grant of the patent. This leaves a very small window for postponing expenses and timelines, making the overall process of getting a foreign patent extremely time consuming, complex and expensive. The tentative costs of filing, prosecution and maintenance must be assessed in advance and only then should a decision about foreign filing be taken.
Keeping in mind budget, type of invention and area of business, the decision to file patent internationally shall be taken.
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Feb 22, 2023 | IPR & Business
Intellectual Property (IP) is a valuable asset for any research and innovation-driven company today. The creation of IP requires investment in terms of money, time and intellect and therefore, it is extremely important for the companies to claim legal rights on IP and prevent others from using the same. At this point of time, India is facing multiple challenges brought upon by COVID-19. Exports and imports have been significantly affected and due to this, it is becoming increasingly important for India to become self-reliant to reduce load on imports and boost local industry. It is now extremely important for startups, SMEs and MSMEs to not only realize the importance of innovation & IP but also to devise correct & effective strategies, processes and policies at the inception stage of ideas to make sure their innovation is well protected, enforced and eventually commercialized.
The most effective IP strategy is the one that is aligned well with the business goals of a company.
The most effective IP strategy is the one that is aligned well with the business goals of a company. For different companies, the importance, effectiveness & meaning of IP strategies may vary depending upon area and type of business, even though the aim of IP strategy may remain the same. Success of IP strategy is dependent upon formulation & implementation of IP practices, processes and policies within the organization.
Five of the most important components of any IP strategy are as listed below:
- Reducing R&D cycle: Every company today, especially product development companies, wants to not only reduce time & expenditure on research and development, but also to develop more innovative products keeping in view of the market. Early entry of these innovative products into the market will results in the products having a competitive edge as well as longevity in the market. This can be achieved by strategically performing a comprehensive prior art search to assess the research already done and explore the ways that the existing knowledge can be utilized for existing products or design. Prior art search may reveal existence of IP having good opportunity to be in-licensed.
- Protection of IP: For any organization, protection of IP at right time and under appropriate legal framework is essential. Trademarks, patents, designs, copyrights and trade-secret are the most important forms of IP. Multiple IPs can be registered for the same product, where if the product is an invention, then it can be registered as patent. Similarly, name of a product/company may be registered as trademark and literal/artistic/cinematographic/musical work may be registered as a copyright. Trade-secret is another powerful form of IP, which is not registered but owner of trade-secret shall take steps to protect it. KFC’s fried chicken recipe, McDonald’s Big Mac Special Sauce, the recipe of Coca-Cola and Google AdWords are a few examples of well protected trade-secrets.
- Infringement risk analysis: For any product company, infringement risk analysis or Freedom to Operate (FTO) search should be an integral part of their IP Policy. This single step saves companies from big litigations and it should be made an integral part of any new product launch process. Let’s understand this with an example; two companies, namely, Anant Electronics and Futuristic Concepts Media Ltd were using “Digital Transmission System” technology to manufacture VCDs using MPEG 1 coding audio compression/expansion system in India. Philips had a patent protection (Patent no 175971) on this technology in India, of which these two companies were not aware of, thus 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 performed an infringement risk analysis before manufacturing and launching the product, they could have saved a significant amount of time and money. Using technology protected by another company can be fatal for any business and prior risk assessment is essential to prevent such undesirable scenarios.
- Monetization of IP: Licensing or assignment are the most popular ways to monetize IP. Licensing is a method to transfer technology rights for a particular period of time, whereas assignment is a permanent transfer of rights. Licensing helps innovators to quickly collaborate with more partners and launch their product in the market quickly, whereas assignment of IP, usually worked out at the time of acquisition/merging, is a way to generate more money in a single transaction. Sree Chitra Tirunal Institute of Medical Sciences & Technology developed the technology for the manufacture of blood bags conforming to international quality requirements. They identified Peninsula Polymers Ltd. for setting up a plant based on indigenous technology and further provided equity assistance of up to 25% of the total equity. The production of the blood bags started for the first time in the country in 1987 by this company. Subsequently, Sree Chitra Tirunal Institute of Medical Sciences & Technology licensed this technology to a number of companies in India who not only met indigenous requirement of blood bags but also provided the product at an affordable price and exported their products to various countries such as the UK, USA, Germany, Netherlands, Kenya and Bangladesh.
- Enforcement of IP: After registration, IP can be enforced by the innovator, if there is any violation. In Merck vs. Glenmark case, Delhi High court passed an injunction against Glenmark for manufacturing the generic drug Sitagliptin and using patented product of Merck as there was prima facie infringement of patent rights of Merck. Delhi High court passed injunction order against Glenmark from manufacturing and selling of Zita and Zitamet. Thereby, patent rights of Merck were protected and enforced.
There is another interesting case-study to see how IP rights can be enforced. VirnetX is an internet security software and technology company based in Zephyr Cove, Nevada. This company’s patent portfolio includes American and international patents in areas such as DNS and network communication. Since 2010, VirnetX has been involved in litigation with big companies like Apple, Cisco, Microsoft, etc. In December 2014, Microsoft and VirnetX settled patent disputes over Skype technology for $23 million. VirnetX, in another law suit with Apple was awarded $368 million in damages for FaceTime infringement.
An effective IP Strategy, aligned with business strategy plays a vital role for growth of a business. Devising strategy itself is not enough till there is a process to implement the same effectively.
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Feb 22, 2023 | Indian Patents Act 1970, Key Terms of Patents Act
Generally, a patent application is published in official website of the patent office after expiry of 18 months from date of filing or date of priority, whichever is earlier. In case of the inventions, which are considered by Central Government as relevant for national defence and security, Patent Act 1970provides for secrecy directions, meaning that such inventions shall not be published till the time it is considered relevant for national defense.
According to Section 35 [Secrecy directions relating to inventions relevant for defense purposes],
- In case it appears to the Controller that the invention falls in one of a class notified to him by the Central Government and is relevant for defence purposes, he may give directions for prohibiting or restricting the publication of information with respect to the invention or the communication of such information.
- Once such secrecy direction is given by the Controller, he shall give notice of the application as well as the directions to the Central Government. The Central Government shall decide whether the publication of the invention would be prejudicial to the defence of India or not. If the publication of the invention doesn’t appear to be so prejudice, notice to the Controller shall be given by the Central Government; the Controller shall revoke the directions and notify the applicant accordingly.
- In case the Central Government is of opinion that an invention in respect of which, the Controller has not given any directions is relevant for defense purposes, it may at any time before the grant of patent notify the Government. If the invention belongs to one of the class notified by the Central Government, the provisions of secrecy directions apply and Controller shall give notice to the Central Government of the directions issued by him.
Section 36 [Secrecy directions to be periodically reviewed], explains that the question whether an invention in respect of which directions have been given continues to be relevant for defence purposes shall be reconsidered by the Central Government at intervals of 6 months or on a request made by the applicant. If request of the applicant is found to be reasonable by the Controller or if it appears to the Central Government that the publication of the invention would no longer be prejudicial to the defence of India or in case of an application filed by a foreign applicant, it is found that the invention is published outside India, it shall give notice to the Controller to revoke the direction and the Controllers, shall revoke the directions previously given by him. The result of every re-consideration shall be communicated to the applicant within prescribed time and manner (within 15 days of the receipt of the notice by the Controller).
The result of every re-consideration of secrecy direction by Central Government are communicated to the applicant within 15 days of the receipt of the notice by the Controller, under Rule 72 [Communication of result of reconsideration under section 36(2)].
Section 37 [Consequences of secrecy directions] saysthatas long as the secrecy directions are in force, the Controller shall not pass an order refusing to grant of the patent. The orders passed by the Controller in this regard cannot be appealed. The application may proceed up to the stage of grant of the patent, but the application and the specification found to be in order for grant of the patent shall not be published, and no patent shall be granted in pursuance of that application.
- Where a complete specification for an invention in respect of which directions have been given (Section-35) is found to be in order for grant of the patent during the continuance in force of the directions, then:
- If during the continuance in force of the directions, any use of the invention is made by or on behalf of, or to the order of the Government, the provisions of sections 100, 101, 103 shall apply in relation to that use as if the patent had been granted for the invention and
- If it appears to the Central Government that the applicant for the patent has suffered hardship due to secrecy directions, the Central Government may make to him reasonable payment by way of solatium having regard to the novelty and utility of the invention and the purpose for which it is designed, and to any other relevant circumstances.
- Where a patent is granted in pursuance of an application in respect of which directions have been given (Section-35), no renewal fee shall be payable in respect of any period during which those directions were in force.
There is prescribed time to perform a particular task under this Act e.g., prescribed time to pay examination fee is within 48 months from date of filing or priority date, whichever is earlier. But when secrecy direction is imposed and later revoked, the Controller may extend the time within which any step or any act shall take place under section 38 [Revocation of secrecy directions and extension of time], The time line for paying examination fee is 48 months from date of filing but if the secrecy directions were imposed on the application, the Controller may extend this time line of 48 months.
Section 39 [Residents not to apply for patents outside India without prior permission], says if the applicant is resident of India but wants to file patent application in foreign country, it is important that he either files application in Indian Patent Office and waits for 6 weeks to receive any objections or takes permission from Indian patent Office to file patent application in foreign country.
- Section-39 is one of the important Sections of the Act which says that the applicant who is resident of India and interested in filing application in foreign country shall:
- Either file application first in India before foreign filing and wait for 6 weeks to receive any objections from the Controller or
- Shall take permission from the Controller on Form-25 [Request for permission for making patent application outside India] before filing application in foreign country in order to safeguard national defense and security.
- There shall not be any secrecy direction imposed on the application in relation to the application in India, or all such directions have been revoked.
- If the invention is relevant for defence purpose or atomic energy, the Controller shall not grant permission to file patent in foreign country without the prior consent of the Central Government.
- This section shall not apply in relation to an invention for which an application for protection has first been filed in a country outside India by a person resident outside India.
Under Rule 71 [Permission for making patent application outside India under section 39], the request for permission for making patent application outside India shall be made in Form-25 [Request for permission for making patent application outside India]. The time within which the Controller disposes of such request shall ordinarily be within a period of 21 days from the date of filing of such request. In case of inventions relating to defense or atomic energy, period of 21 days shall be counted from the date of the receipt of consent from the central government.
Under Section 40 [Liability for contravention of section 35 or section 39], applicant shall not disobey any direction by the Controller under:
- Section-35 [Secrecy directions relating to inventions relevant for defense purposes] or
- Section-39 [Residents not to apply for patents outside India without prior permission]
If applicant violates any of the direction under Section 35 or 39, the application of patent is:
- Deemed to be withdrawn or
- If the patent has been granted already, it is deemed to be revoked.
All orders of the Controller giving directions as to secrecy as well as all orders of the Central Government under this Chapter shall be final and shall not be called in question in any court on any ground [Section 41: Finality of orders of Controller and Central Government].
Section 42 [Savings respecting disclosure to Government] explains that even if the application has been imposed secrecy direction and such application shall not be disclosed, the Controller can disclose information concerning the application or a specification filed to the Central Government for the purpose of the application or specification being examined for considering whether an for secrecy direction should be made or whether an order so made should be revoked.
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