Apr 17, 2024 | IPR & Business, Patent
Introduction
The concept of Intellectual Property Rights (IPR) in these modern times is progressing as people across the globe create more and more intangible assets with the use of their intellect and creativity. IPR protections various Intellectual Properties (IP) and fosters a sustainable mechanism to make it harmonious with growth. Patent is a subset of IPR, and it focuses on technical inventions, their application and process of manufacture. Patent grants exclusive right to prevent third parties from making, using, selling, offering for sale and importing the patented invention in the jurisdiction where patent is granted. But first, there are certain criteria laid out by the Indian Patents Act, 1970, which must be fulfilled for a product or a process to be considered as an invention; they are Novelty, Inventive Step and Industrial Application. In the case of Novartis AG vs. Union of India, we witness the standard requirements and importance of novelty and inventive steps in India. The Honourable Supreme Court of India clarified various terms stated under Section 3(d)[1] and applied the concept of Evergreening of Patents to solve the case effectively. The appeal was dismissed by the court on the basis that “Glivec” failed to show enhanced efficacy when compared to an already patented drug “Imatinib Mesylate”.
Facts
One of the largest multinational pharmaceutical corporations, Novartis AG, based in Switzerland, created a drug called “Imatinib Mesylate” and in 1992 filed it for a patent at the United States Patent and Trademark Office (USPTO), which was granted. In 1997, Novartis AG filed another patent application in the United States for a “Beta Crystalline” form of imatinib mesylate named “Glivec”, which was also granted a patent in the US. This same drug was also granted a patent in 35-plus countries[2]
Then, in 1998, Novartis AG filed a patent application for Glivec at the Madras Patent Office, India, which was facilitated via the TRIPS agreement. The application specified that it was a beta crystalline form of Imatinib mesylate and further illustrated that it helps to treat cancer, specifically Chronic Myeloid Leukemia (CML) and Gastrointestinal Stromal Tumors (GIST). Novartis AG claimed the superiority of Glivec over previously patented imatinib mesylate, as it had improved flow properties, thermodynamic stability and lower hygroscopicity[3].
Prior to the Patent (Amendment) Act, 2005, India didn’t grant product patents but only process patents as per Section 5[4] of the Patents Act, 1970. Until the section was repealed, Novartis AG couldn’t pursue a product patent for Glivec.
In 2005, the Madras Patent Office considered and later (in 2006) rejected the product patent application filed by Novartis AG for Glivec on the basis that it was not novel, that is obvious to a person skilled in the art and was anticipated by the prior publication of Zimmermann patent; Novartis AG had also wrongly claimed date of filing of the application in Switzerland as the priority date in India. Further, Section 3(d)[5] of the Patents Act, 1970 was applied, “the mere discovery of a new form of a known substance which does not result in the enhancement of the known efficacy of that substance or the mere discovery of any new property or new use for a known substance or of the mere use of a known process, machine or apparatus unless such known process results in a new product or employs at least one new reactant.” and the patent office concluded that glivec was a new form of an already known substance which didn’t result in enhanced efficacy.
Aggrieved by the patent office’s rejection, Novartis AG filed multiple (one by the appellant and one by the Indian power of attorney holder) writ petitions in Madras High Court under Article 226[6] of the Constitution of India.
The appeals claimed Section 3(d)[7] of the Patents Act, 1970, to be unconstitutional, as it was alleged to be in contradiction to the TRIPS agreement and in violation of Article 14[8] of the Constitution.
In 2007, the Madras High Court transferred the case to the Intellectual Property Appellate Tribunal (IPAB) after its formation, along with the previous writ petitions challenging the order of the Assistant Controller. IPAB heard the appeal and reversed certain findings of the controller by approving Glivec’s novelty and nonobviousness but still rejected the application for a patent grant as the product was adequately being hit by Section 3(d)[9] of the Patents Act, 1970. As per IPAB reasoning, Section 3(d)[10] establishes high standards for patentability in India and stops the “evergreening of patents”, which is necessary for the benefit of the citizens of India, especially when it comes to life-saving drugs.
In 2009, Novartis AG filed a Special Leave Petition (SLP) under Article 136[11] of the Constitution before the Honourable Supreme Court of India, pleading against the order of IPAB.
Issues Raised
- To define “Known Substance”, stated in Section 3(d)[12] of the Patents Act 1970?
- To define “Efficacy”, as stated in Section 3(d)# of the Patents Act 1970,
- Whether Section 3(d)[13] of the Patents Act, 1970, allow a certain amount of increase in bioavailability to be qualified as increased efficacy?
- To compare the stated improvements of glivec with imatinib mesylate properties and judge the patentability?
Relevant Legal Provisions
- Section 3(d)[14] of the Patents Act, 1970: “the mere discovery of a new form of a known substance that does not result in the enhancement of the known efficacy of that substance or the mere discovery of any new property or new use for a known substance or of the mere use of a known process, machine or apparatus unless such known process results in a new product or employs at least one new reactant.
Explanation.—For the purposes of this clause, salts, esters, ethers, polymorphs, metabolites, pure form, particle size, isomers, mixtures of isomers, complexes, combinations and other derivatives of known substance shall be considered to be the same substance, unless they differ significantly in properties with regard to efficacy”.
Article 27(1)[15], TRIPS: “Subject to the provisions of paragraphs 2 and 3, patents shall be available for any inventions, whether products or processes, in all fields of technology, provided that they are new, involve an inventive step and are capable of industrial application. Subject to paragraph 4 of Article 65[16], paragraph 8 of Article 70[17] and paragraph 3 of this Article, patents shall be available and patent rights enjoyable without discrimination as to the place of invention, the field of technology and whether products are imported or locally produced”.
Judgment
In 2013, the Hon’ble Supreme Court of India gave its final verdict, wherein the court rejected the patentability claim of Glivec, filed by Novartis AG. The court upheld previous verdicts of Glivec (a beta crystalline form of imatinib mesylate) as being a new form of an already-known substance with minor improvements. The court defined the word “Efficacy” as stated under Section 3(d)[18] of the Patents Act, 1970, apropos to “Therapeutic Efficacy” and “Known Substance” as something in public or traditional knowledge. Addressing the issue of a 30% increase in bioavailability, previously claimed by Novartis AG, the Honourable Supreme Court cleared that it would amount to an increase in efficacy, but Novartis AG failed to produce any proper evidence of the same (30% increase in bioavailability of Glivec when compared to imatinib mesylate). Further, the court tested all the other claims of improved flow properties, thermodynamic stability and lower hygroscopicity of Glivec with Imatinib Mesylate and found them to be of no value regarding enhanced therapeutic efficacy. No further documents were provided by Novartis AG, which claimed enhanced efficacy of Glivec over the previously patented drug imatinib mesylate. Lastly, no violation of the TRIPS agreement was found.
Conclusion
India is a developing country which is making a positive mark on geo-politics despite its demographic drawbacks. India upholds the responsibility of prioritising public health, and this judgment replicates the same. There was no violation of the TRIPS agreement because India successfully adopted Article 27[19] of TRIPS without contradicting it. Furthermore, the TRIPS agreement mandates countries to adopt the stated measures but gives member countries flexibility to adopt them at their convenience. The concept of Evergreening of Patents was used by the Honourable Supreme Court, especially in the context of the pharmaceutical industry, to stop big companies from exploiting public and welfare initiatives. Section 3(d)[20], among other areas, safeguards medicine availability to the public at large on a cheaper by price by stopping pharmaceutical companies from getting their inventions patented in perpetuity upon introducing minor changes; this means once the designated time of protection ends, those medicines will be available to the public for manufacture and trade at a cheaper price, without taking consent from the proprietor. Hence, the Honourable Supreme Court safeguarded all Indian citizens, especially the ones in need, from exploitation by the Pharmaceutical Industry. The high and fair criteria of patent protection in India promote fair competition and harmonise all industries. The court interpreted and defined the term “efficacy” as a tool to analyse the notion of invention and as a criterion to judge novelty and inventive steps. Ultimately, the Honourable Supreme Court gave clearance to Novartis AG to get patients over the drug Glivec, but the company failed to fulfill the established criteria.
Author: Hardik Manwani, UPES Dehradun
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Apr 15, 2024 | Patent
When navigating the world of patents and patentable inventions, we come across essential requirements which an invention shall fulfil to get a patent and Section 3[1] of the Indian Patents Act, 1970, which provides a list of inventions which are non-patentable under section 3 (d) of the Act. Section 3(b)[2] restricts the grant of patents for inventions which are injurious to life forms and the environment. Here, the question arises: to what extent can an invention be considered injurious enough to be denied patentability? This article establishes a connection between morality and patents. Further, it aims to clarify the ambiguous words of the provision by analysing the case of Harvard Oncomouse.
Introduction
In today’s age, the scope of Intellectual Property Rights (IPR) is expanding exponentially with the aid of extensive technology and modern equipment. IPR is a concept that is recognised worldwide, granting rights and protection to various established fields of Intellectual Property (IP) such as Copyright, Patents, Trademarks, Designs, Geographical Indications, Semiconductor Integrated Circuits, Plant Varieties and Biological Diversity in order to facilitate fair trade and safeguard the intellectual labour, all while upholding public policy[3].
In India, the law of patents is governed via the Indian Patents Act 1970, with notable amendments in 2002 and 2005. A patent is an exclusive right granted to the true and first inventor of an invention for a period of 20 years from the date of filing. Section 2(1)(j)[4] of the act defines “invention” as a new/novel product or a process that includes an inventive step and is capable of industrial application. The invention also includes an improvement capable of independently meeting the aforestated criteria. Section 2(1)(j)[5] defines inventive step as technical advancement, having economic significance, or both compared to existing knowledge.
It’s not necessary that when a subject matter qualifies all the three criteria of patentability it will benefit society. Hence, various provisions under the act, such as section 3[6] and section 4[7] of the act, lay out criteria for inventions disqualified from grant of patent. In this article, we will understand the bar on the patentability of an invention when it causes some serious prejudice to a life form, against public order and morality.
Morality and Public Policy in Patent
Morality and public policy have a significant role in patents. First of all, the right to patent is granted to the inventor in order to reward his/her intellectual labour fairly. Then the exclusive right protection lasts for a period of 20 years so that upon its expiry, the invention is available to the public at large, and society can also benefit from it. Further, we witness provisions of compulsory licensing (Sections 82 to 94), surrender and revocation of patents (Sections 63 to 66), Section 47[8], and the use and acquisition of patent by the Central Government for their own use; these provisions govern the use of patents on the basis of public policy and morality.
Amendment of 2002 in the Patent Act, 1970
Article 27[9] of the Trade-Related Aspects of Intellectual Property Rights Agreement (TRIPS) establishes general principles of patentability. The exclusion part of the second clause grants member countries certain rights to exclude the following inventions from patentability to protect public order and morality. They include any inventions contrary to human, plant, animal and environment, not limited to exposition defined and barred by the law[10].
Section 3[11] of the act is very important as it lays out a negative list, stating the products or processes that won’t be considered as an invention, despite qualifying the essentials of the patent criteria. Section 3(b)[12] of the act was amended in 2002 to incorporate the regulations laid out in Article 27[13] of TRIPS; it states that any invention whose primary use or intended use or commercial exploitation would go against the public order or morality or the invention causes serious prejudice to human, animal or plant life or health or to the environment will not be considered as an invention. Examples: inventions related to theft, gambling, human cloning, etc.
Harvard Oncomouse Case[14]:
Facts
In the early 1980s a group of researchers at Harvard Medical School invented one of the world’s first transgenic mice for furthering cancer research. They induced an oncogene in the mouse’s DNA, which made the mouse vulnerable to cancer and develop tumours. The creators of “Oncomouse”, on behalf of the institution, filed for a patent in the USA, Canada and the European Patent Office (EPO)[15].
Issues Raised
- Upon meeting the essential patentability requirements, should parents be granted regarding living animals and their varieties, specifically for higher stature animals such as mammals?
- How should moral implications and public policy be affected in regard to transgenic animals and their suffering?
The case was fought in various jurisdictions, and each country has given different perspectives on the issues raised[16].
United States of America
Harvard University was granted a patent by the US Patent Office in the year 1998. It described the mouse as “a transgenic non-human mammal whose germ cells and somatic cells contain a recombinant activated oncogene sequence introduced into said mammal or an ancestor of said mammal, at an embryonic stage…”. The matter of patents on human beings and modifications to the human genomes was explicitly excluded, considering the legal and moral concerns[17].
European Patent Office
The oncomouse case was considered at length in front of the European Patent Office (EPO), and the final decision was given by the Appellate Board in 2004. The board applied Article 53(a)[18] which states non-grant of a patent for “inventions the commercial exploitation of which would be contrary to “ordre public” or morality; such exploitation shall not be deemed to be so contrary merely because it is prohibited by law or regulation in some or all of the Contracting States” and Article 53(b)[19] stating non-grant of patent for, ”plant or animal varieties or essentially biological processes for the production of plants or animals; this provision shall not apply to microbiological processes or the products thereof”.
The EPO stated that the oncomouse didn’t qualify under the definition of animal variety, and so it doesn’t qualify under Article 53(b)[20]. It was further stated that a ban on patenting “animal varieties” under the article didn’t implicate a ban on the patenting of animals.
The EPO came up with the Utilitarian test in order to address and balance public order & morality. The test was set out to compare positive aspects with the negative ones. In this case, the positive aspect was the benefits occurring from the use of oncomouse in furtherance of cancer research for humans and was weighed against the morally negative aspect of suffering caused to the oncomice.
In furtherance of the test, other factors were also considered, such as environmental harm, which turned out to be neutral and public discontent, which was also recorded as neutral after considering the evidence based on European demographics.
Thus, the EPO gave its judgment in favour of granting of patent to the oncomouse. Since the test results specified that the positive aspects and utility of oncomouse in furtherance of cancer research greatly overpassed the negative aspect of morality and suffering caused to the oncomice.
Later, in 1992, Upjohn Pharmaceuticals put a similar case of genetically modified mice before the EPO. In this case, the transgenic mouse was being used to advance the treatment of human baldness and wool production mechanisms. This infusion resulted in the loss of all hair in the mouse. EPO used the same utilitarian approach to weigh out the positive aspects and negative aspects, but here, the latter prevailed over the former. The mouse was not guaranteed patent as it was against morality, and the use wasn’t as essential as oncomouse[21].
Canada
When the case was filed in the Canadian patent office, the patent officer rejected the request for patent prima facie on the basis that their law didn’t include animals in the definition of the invention. Regardless, another claim on the patent process for producing the oncomouse was allowed to go forward.
The Supreme Court of Canada gave its final verdict in the year 2002. The court stated that higher life forms and mammals were not subject to the definition of the invention, which mainly focuses on the manufacture or composition of matter, as per the Patent Act 1869. The act previewed “Manufacture” as a non-living mechanical product or a process and “Composition of matter” as a mixture of ingredients or substances by a person. The judges distinguished that the lower life forms were subjected to the composition of matter while the higher life forms were disqualified. So, the court qualified microorganisms and transgenic animals as a composition of matter and approved a patent while rejecting the patent claim on the body of the oncomouse.
The court pointed to the Patent Act, 1869, and stated that the drafters left out the subject matter of the patentability of higher life forms while drafting the act. The court recommended that the patentability of life higher forms was very controversial and the parliament must engage in a public debate to discuss the subject matter’s social standpoint, morality and legislative stance. The court concluded by stating that, scientific alteration of the genetics of an animal (not a higher life form), which doesn’t exist in nature in that altered form, will qualify under “composition of matter” under the Patent Act[22].
Conclusion
Creating and patenting transgenic animals proposes a moral and ethical dilemma in the field of patents. The oncomouse case showcases the diverse reasoning and standpoints of various jurisdictions across the world. The case has outlined patentability requirements, patentable subject matter and ethical dimensions of patentability on life forms which stand controversial with public order. It can be concluded that patentability of higher life forms, such as mammals, is barred across the world as of now. In India, Section 3(b)[23] of the Patent Act, 1970 doesn’t allow an invention to be patented that will drastically affect humans, plants, environment while going against public policy or morality. Upon hitting Section 3(b)[24] of the Indian Patent Act, 1970, the inventor must prove to the controller that the invention’s positive aspects outweigh the negative aspects and ensure he/she has taken the necessary steps to minimise the negative effects, then only the invention will have a chance to be patented, subject to discretion of the controller of patents.
Author: Hardik Manwani, UPES Dehradun
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Apr 7, 2024 | General
Recognising Odisha’s culinary heritage, the beloved delicacy known as “Kai Chutney” has been bestowed with the prestigious geographical indication (GI) tag under the Geographical Indications of Goods (Registration and Protection) Act, 1999[1]. Hailing from the Mayurbhanj district, this savoury condiment from red weaver ants stands out for its unique cultural significance and remarkable health benefits.
Weaver ants, scientifically known as Oecophylla smaragdina, play a central role in the creation of Kai Chutney. These industrious insects are commonly found in Mayurbhanj throughout the year, crafting nests from the leaves of host trees. Their nests, ranging from small single-leaf structures to large elliptical formations, demonstrate impressive resilience against wind and water.
The culinary journey of Kai Chutney begins with the careful collection and cleaning of red weaver ants from their forest habitats. Tribal communities, deeply rooted in this age-old tradition, sustain their livelihoods by harvesting these insects and crafting the renowned chutney. The preparation process involves grinding a blend of salt, ginger, garlic, and chillies with the collected ants and their eggs, resulting in a flavorful and aromatic paste.
But Kai Chutney is more than just a culinary delight; it’s also celebrated for its numerous health benefits. Packed with essential nutrients such as protein, calcium, zinc, and vitamins, this unique condiment offers a natural boost to one’s well-being. It is believed to alleviate ailments like flu, common cold, and whooping cough while enhancing appetite and vision.
Beyond its nutritional value, Kai Chutney holds cultural significance among the tribal communities of Odisha. It serves as a symbol of tradition and heritage, embodying centuries-old practices passed down through generations. Additionally, integrating red weaver ants into the diet showcases a sustainable approach to food production, offering an eco-friendly alternative to conventional livestock farming.
With its recent recognition through the GI tag, Kai Chutney stands as a testament to the rich culinary diversity of Odisha and the innovative utilisation of local resources. As this beloved condiment continues to captivate taste buds and promote well-being, it reinforces the importance of preserving and celebrating indigenous food traditions[2].
Author: Gayatri Singh, UPES, Dehradun
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Mar 27, 2024 | Patent
In simple words, patent infringement is the violation of patent rights of a patentee in the country or jurisdiction where the patent has been granted. This violation happens when any third party, makes, uses, sells, offer for sale, a product or process claimed in the patent, granted to the patentee without his/her authorization or license. When a patent is granted, the patentee gets the right to prevent third party (ies) from making, using, selling, offering for sale or importing the patented product in the country where there is patent protection.
To avoid patent infringement, it is highly recommended for the business owners to examine existing patents before launching their new products to ensure that no patent rights are violated in the territory where their product is going to be launched. This investigation to assess patent infringement risk is called as Freedom to Operate (FTO) analysis or clearance search.
How is FTO performed?
Purpose of FTO search is to assess the likelihood of patent infringement upon launch of new product in a specific market. The best time to perform FTO search is at the time of designing the new product because it is easier to make changes in the product specifications and the infringement risk can be minimised or nullified easily at early stage of product development. FTO is a very specialised investigation and analysis of patent documents, done by a skilled attorney, who possesses a good working knowledge of technology as well as law. The final opinion on infringement shall always be rendered by an advocate according to the laws of the jurisdiction. Generally, following steps are taken up to perform FTO analysis:
- Identification of components of the product to be launched and listing out nomenclature of the components, as generally used in the industry.
- Performing a patent search with all possible synonyms of the product component names along with other search techniques to pull all relevant patents with a timeline of 20-22 years. Patent search here may be global or country-specific depending upon the countries in which the product is going to be launched or sold. The business owner must be very focused and specific with respect to patent search strategies to ensure that the right data is extracted.
- For FTO search, generally only “in-force” or live patents are analysed. Therefore, considering very old and expired patents may not be of much use for FTO search. However, expired patents may be extremely helpful to find out technologies or products for which patents have expired. Even though expired patents may not impose any infringement risk but they can certainly provide valuable information otherwise.
- After the relevant patent documents are extracted, it is important to segregate them as “expired”, “abandoned” or “in-force” patents. Further, there may be a need to separate out the patent applications and the granted patents. If there are any risky patent applications, it is highly recommended to monitor them periodically to find out the kind of objections that the examiner raises during prosecution and to know if patent application gets granted as a patent or not.
- Further, during performing FTO search, if there are any “lapsed patents”, there may be chance of restoring such lapsed patent. Therefore, the legal status of lapsed patent shall be checked periodically and the risk it imposes shall be completely ruled out only after the timeline to restore has lapsed and its legal status reflects as “Expired”.
- Patents so extracted during the search shall be analysed in detail by comparing claims of the patents with product features. Generally, patent practitioners prepare claim maps where the portions of the claims with match or overlap with product components are highlighted. Based on the extent of overlap between patent claims and the product components, the patent documents may further be considered as low, moderate or high-risk patents.
How to handle high-risk patents?
In case the FTO analysis reveals high risk patents, using such patents may be detrimental for the business. Following points may be taken into consideration before using such patents:
- Check expiry date of the patent. If the patent is going to expire soon, it is worth to wait for the patent to expire before using it.
- Carefully read and analyse patent claims and try to understand what is claimed. Often the language used in the claims is very complex and expert advice must be sought.
- Perform invalidation search to understand how strong the patent is. This search is performed to identify the grounds on the basis of which a patent may be invalidated. Generally patent search is performed to reveal closest prior art and novelty/inventive step is assessed.
- Based on the outcome of invalidation search, opposition to the grant of patent, if patent is not yet granted; or post-grant opposition or even revocation may be filed. The opposition petition shall have all possible statutory grounds of opposition, which help the Controller of Patents to give decision on invalidating or revoking the patent.
- In case there is no other way out, obtaining license to use the patent may be obtained from the patentee. This option may not be feasible in most of the cases as granting license is at sole discretion of the patentee.
Above listed are few ways to handle a situation where there is a high risk of patent infringement. If none of the step’s work, it is advisable not to use the patent because if patentee takes a legal action, it may be detrimental for the reputation and good will of the business. In Merck vs. Glenmark case, the 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.
Patent infringement risk assessment and mitigation shall be integral part of steps to be followed before new product launch. FTO search can be extremely helpful to understand extent of infringement risk and to take right measure to minimise it.
Author: Bindu Sharma, CEO, Origiin IP Solutions LLP
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Mar 14, 2024 | Patent
Patent pruning is a process of analysing the patent portfolio of a company or an institution to identify, categorize, and optimize the patents. The analysis & pruning of the patent portfolio helps to identify and categorize the low-quality patents, so that the low-quality patents are discarded to strengthen the overall worth of the patent portfolio.
Patent pruning refers to the process of refining or simplifying a patent application by removing unnecessary or redundant elements while retaining the essential features and claims. This process aims to improve the clarity, focus, and strength of the patent, making it more likely to be granted and enforceable. Patent pruning process facilitates optimization of the patent portfolio of a company, wherein discarding low-quality patents can prevent the wastage of resources used in the maintenance of low-quality patents for a company and ultimately helps save significant amounts of money. The main benefit of the patent pruning process is cost saving, where a company can substantially reduce the patent maintenance cost by categorizing low-quality and high-quality patents. Let’s discuss the process involved in Patent Pruning.
- Patent Pruning process
It is essential to understand the process involved in patent pruning and the importance of patent pruning, to effectively execute the identification and categorization of patents. The patent pruning process involves:
- Patent indexing and categorization: The process of patent pruning starts with the indexing of patents and then categorizing them into core and non-core patents. More structured categorization and indexing of patents may be done by performing an IP Audit. Identifying and categorizing a company’s patents into core and non-core patents involves determining the patents that are related to a company’s core technology and products and the patents that are not so related to the company’s core technology. Further, along with determining the core and non-core patents, sides core and non-core classification, the patents can be shortlisted based on the market performance and future scope of the invention.
- Patent Mapping: Mapping the patents helps to understand the valuable core patents that can promote and protect the company’s business. Mapping the patents related to profitable end products and important sectors helps in analysing the core patents of higher value.
- Patent Grouping: After categorizing the patents, the patents of interest are grouped for further analysis, wherein the grouped patents can be related to core technology having profitable end products. Grouping of similar patents may be achieved by using patent landscape techniques.
- Patent Sorting: The sorting of the patent groups can be achieved based on various parameters, including the life of the patents, family size of the patents, citations per year, forward citations and self-citations of the patent etc. Based on these parameters, the grouped patents are sorted to discard the low-quality patents and optimize a company’s patent portfolio.
The life span of a patent is generally 20 years and in order to complete the life span, the patent has to be renewed by paying the required renewal and maintenance fee. As the term of a patent increases, the maintenance fee also increases. Hence, it is very important to identify the relevant and important patent groups to save unnecessary costs spent on patent renewal on low-quality patents. The analysis of patent life for the patent groups is highly critical as the industrial applicability of the patent for 20 years and its relevance for the complete life span helps to prune the irrelevant patents.
Further, the family size of a patent is important as it identifies the patent families comprising a large number of patent members, and it is to be noted that patents with a large number of patent members involve larger filing and maintenance fees. Another important parameter is the citations per year, wherein analysing the patent citations per year helps determine the patents with more citations per year, indicating that the patent has higher market potential. Such patents are important for a company as the increasing market potential indicates that such patents can prevent competitors from entering the market.
The next important parameter is the forward citations and self-citations of a patent, wherein the forward citations help determine the importance of a patent as the patent is cited by the competitors of the same domain. When a patent has a significant number of forward citations, the patent possesses great potential. And similarly, the patents with a very low number of forward citations are low-quality patents, and can be discarded, abandoned, sold or licensed. The self-citation of a patent is done when a patent cited by a company is of higher value. The number of self-citations of a patent determines if the technology protected by a patent is important for a company.
The sorting of the patent groups enables the companies to categorize the irrelevant patents clearly, and the irrelevant patents should be pruned to optimize the patent portfolio.
After completing the patent pruning process, the companies must effectively maintain their patent portfolio by conducting the pruning more often, leading to the selection of high-quality patents, and the selected high-quality patents are maintained, and low-quality patents are discarded.
- Patent pruning frequency
Knowing how frequently a company must run the patent pruning process is important. Companies can select their patent pruning frequency based on the number of patents they filed and their profits. Generally, big companies conduct the patent pruning process monthly. The pruning process can be conducted monthly, quarterly or yearly.
Pruning a patent portfolio is often necessary for several reasons:
- Cost Reduction: Maintaining a large patent portfolio can be costly in terms of maintenance fees and administrative overhead. Pruning allows companies to reduce these expenses.
- Focus on Core Technologies: Companies may choose to focus their patent efforts on technologies that are most relevant to their business strategy and goals. Pruning helps to streamline the portfolio in alignment with these priorities.
- Avoiding Infringement Risks: Some patents may carry risks of infringement claims against the company. By pruning patents that pose such risks, companies can reduce their legal exposure.
- Enhancing Portfolio Value: A leaner, more focused patent portfolio can be more attractive to potential buyers or licensees, potentially increasing its overall value.
- Adaptation to Market Changes: Technologies and markets evolve over time. Pruning allows companies to adapt their patent portfolios to reflect these changes and stay competitive.
Conclusion
The patent pruning process is critical in maintaining a company’s patent portfolio. Pruning the low-quality patents enables the companies to identify, categorize and optimize their patents, thus increasing the overall value of their patent portfolios and reducing the cost involved in the maintenance of the irrelevant patents.
Author: Megha S Nadiger, Origiin IP Solutions LLP
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