Position of software Patents in India

Apr 18, 2023 | Indian Patents Act 1970, IPR & Business, Patent, Startups

India has become a preferred destination for many multinational companies to establish and outsource their software development activities. Large investments are being made in the IT sector with expectations of ushering in technology and product development to the market.

A patent is a valuable tool for protecting an innovation. Once a given technology has been patented, the owner of the patent can enjoy a monopoly over the technology for 20 years.  The term “patent” was once prevalent solely within the scientific industry but is now slowly gaining prominence in the software industry as well. One of the earliest filed patents on software was filed as early as 1962 for a British patent application entitled “A Computer Arranged for the Automatic Solution of Linear Programming Problems”. The invention disclosed an efficient memory management for the simplex algorithm and may have been implemented by purely software means. The patent was granted on August 17^th, 1966 and appears to be one of the first. The patentability of software-related inventions is currently one of the most hotly debated topics within intellectual property circles, with software becoming patentable in recent years in most jurisdictions, with software patentability becoming valid in the US since 1982. The only patentability criteria is that the invention has to produce useful, concrete and tangible results. In Europe and Japan, the invention is patentable if it is sufficiently technical in nature. However, when it comes to India, the criteria for patentability of software inventions seems to be more stringent as compared to the criteria in most other countries.

The Indian Patent Office (IPO) has published the Draft Guidelines for computer-related inventions in 2016. This document is managed as a tool to be used by the IPO for streamlining the procedure of examination of patent applications related to computer-related inventions (CRI). In addition to this, the Draft Guidelines give some clarity on the scope of section 3(k) and section 3(n). According to Section 3(k) of the Indian Patent Act, “a mathematical or business method and a computer program per se or algorithms are not patentable” with the term “per se” relating to a computer program in isolation or standalone software. Thus, computer programs alone are not patentable, even though software products also come under computer program per se. It should also be noted that computer-implemented business methods are not patentable in India, unlike the US. The term “business method” includes all activities in a commercial or industrial enterprise relating to monetary transactions or transaction of goods and services such as marketing or sales-purchase methodology. With the development of e-commerce and associated B2B and B2C business transactions, it is possible to have claims drafted with certain technical features such as internet, networks, telecommunication and so on for business methods. If the claims are drafted with these parameters, the subject matter of the claims is considered while examining the patentability. If the matter of the claims relates to business methods, then such claims are not permitted under Section 3(k) of Indian Patent Act.

For a computer program to be patentable in India, it has to have a technical process or should be combined with hardware. This means that the invention should contain something more than a computer program to be eligible for a patent protection. An invention in which the technological advance is nothing more than a computer program is not patentable if the computer is suitable for the particular purpose without special adoption or modification of hardware or organization. However, an invention that relates to a particular manner of organizing the Central Processing Unit or other peripheral units, regardless of whether the invention is implemented by means of a program or special hardware facilities, is patentable. Thus, if a patent is claimed for some tangible device coupled with a software i.e. an embedded device in such a manner, the patent office considers that it is not computer program per se and is thereby patentable. Software that works with new or novel hardware is also considered as patentable.

The awareness on the importance of software patents in India is on the rise. Indian software giants who were filing patents only in the US are now filing patents in the Indian Patent Office as well.  The nature of the software patent not only involves new operating systems and software but also includes inventions that we use in day-to-day life such as conversion of a TIFF into PDF, compression/decompression techniques, provision to have multiple network providers on the same cell phone, remote monitoring of data usage, etc.

In 2009, Apple applied for a patent for a ‘method for browsing data items with respect to a display screen associated with a computing device and an electronic device’ (Application No. 461/KOLNP/2009). The objections against the invention was that it was a merely a software program and thus falling within the scope of computer programs per se i.e., under the provision of section 3(k) of the Act.

In their response, Apple submitted that “the method constitutes a practical application of this computer software to an improved technical effect while presenting advantages and overcoming drawbacks of hitherto known techniques”. The outline of the argument is as follows:

Technical Need

Though a single browse window is sufficient, there is still a desire for improved methods and systems for browsing through media items.

A single browse window may be limiting to users who desire to browse through more than one media group at a given time.

Technical Advancement

The applicant submitted a point-wise response for technical advancement for 3(k) objections as follows:

Apple submitted that the graphical user interface includes an application window generated by the media application programme.

The application window concurrently includes a first browse window and a second browse window.

The first browse window displays descriptive information regarding a media file, while the second browse window displays images associated with one or more media files.

The content shown in the first and second browse windows are automatically synchronised when selections are made.

In May 2017, Kolkata Patent Office granted a patent to Apple for the Application No. 461/KOLNP/2009 titled ‘method for browsing data items with respect to a display screen associated with a computing device and an electronic device’.

Thus, it is concluded that even though guide lines are provided there are many aspects that need to be evolved for a better protection of software inventions in India to remove ambiguity regarding what is patentable or not under software inventions as well as the scope of technical advancement while considering the patentability of software inventions.

By Priyadharshini M

Please contact us at info@origiin.com to know more about our services

Subscribe to YouTube Channel HERE

Join India’s largest Linkedin Group: Indian Patent Agent Exam

Competitive benchmarking & IP Portfolio analysis

Apr 18, 2023 | Indian Patents Act 1970, IPR & Business, Patent, Startups

Knowing the pulse of the competitor is extremely important for any business. In general, competitive benchmarking is performed to compare and measure the philosophies of an organization and practices with other organizations to help them to improve their performance in this competitive space. The current economy is often referred to as a knowledge-based economy where intangible assets have become the main source of revenue for most firms. Consequently, more than 65% of most firms’ value and revenue is sourced straight from intangible assets, such as patents. Competitive Benchmarking is a commonly used term and refers to the practice of comparing business processes, innovations, products/services and performance metrics of the best-performing companies to understand and learn from them to improve own business. In today’s competitive world, generating innovation and having the right business strategies both play a vital role to shape and direct businesses toward success. Competitive benchmarking plays an important role to understand the strategies and approaches of competing organisations. The strategies and approaches could involve processes such as designing a new product, creating an IP portfolio, setting product prices, assessing innovation in existing products, launching new products, compiling litigation data, and so on. Such information can potentially be very important for your business and can help you better position yourself in the market. Competitive benchmarking can additionally help you build the right business strategies to advance past your competitors in your industry. Innovation and IP portfolio are amongst the most valuable pieces of information that one can have about their competitors, offering a glimpse into their arsenal of assets and strengths. After expiry of a specific duration of time after a patent application is filed, the application is published and is made available on the official website of the respective patent offices to be viewed by the public. This timeline may have some variance depending on the country where the application is filed, but ordinarily all patent applications are published and can be viewed using free or paid patent databases. A patent is an extremely valuable source of information, especially with respect to technologies or products of your competitors. If a patent search is performed using technological details, previously unknown competitors may be revealed. In this way, information pertaining to patent portfolios can inadvertently help a company identify previously unknown competitors and their patent assets. New competitors can also help in recognizing new opportunities for licensing and acquiring technology.  A typical competitive portfolio benchmarking answers the following questions:

• What are my competitors doing?
• What are the latest patent trends in my industry?
• What is the current phase of innovation of my competitors?
• Possible licensing candidates?

A few things to keep in mind:

• Competitor profiling includes products in the market & under development.
• Products protected by patent nationally and internationally are assessed
• Identification of IP assets to visualize and understand their value in relation to their competitive environment is done.
• IP portfolio of competitors is procured, with a specific emphasis on recently patented applications to see the current area of interest of competitors.
• Periodic assessment of patents filed by the competitors or specific technologies may be done by generating monthly, quarterly or half yearly patent alerts.

  Before competitive benchmarking is carried out, it is important to understand the purpose behind it. This ensures that the right steps are performed, and there is a reduced amount of redundant data generated. Identification of direct or indirect competition is done as the competitive benchmarking report solely depends upon the kind of companies chosen as competitors. Information about the competition, based on the driving purpose of competitive benchmarking is extracted and compiled. Threats and opportunities in the existing market may be understood better with competitive benchmarking. There could a great learning from the failure of specific products or businesses in the market as well.

Subscribe to YouTube Channel HERE

Join India’s largest Linkedin Group: Indian Patent Agent Exam

Disclosure of the invention & Patent Filing

Apr 18, 2023 | Indian Patents Act 1970, IPR & Business, Patent, Startups

Documentation of the invention before you approach a patent agent to draft the patent specification may be extremely helpful for you to explain the invention details to the patent agent. What all shall be documented and how much details are enough, has to be made clear before you proceed further with drafting specification.

Though one feels lazy writing the disclosure of the invention, honestly speaking, there is no substitute to documentation. Sooner or later, you have to document the invention so that interaction with your attorney is fruitful. It is always advisable to execute Non-Disclosure Agreement with the attorney to whom you will be disclosing the invention. The patent agent or attorney with whom you decide to work, may also make you fill Invention Disclosure Form (IDF) when you approach him to file patent application for you.

What is to be claimed?

Patent is a techno-legal document and you get protection over the subject matter you claim in the specification. Hence, identification of novel elements, which may relate to a product or process or utility, shall be done at first level itself. Once you are clear about what to claim, the detailed description of the invention in patent specification revolves around such novel elements and helps you to fine tune the invention as well as highlight novelty of the invention. The best way to separate out novelty of the invention is to perform a thorough global patent search and then remove the elements that are in public domain. Therefore, while documenting your invention, it is a good idea to list out novel elements of the invention.

Existing technical problem

In order to be patentable, your invention shall have an inventive step. One of the ways to assess inventive step is identification of the technical problem that your invention solves and the way your solution works.

The Indian Patents (Amendment) Act 2005 in Section 2(1)(j) and 2(1)(ja) respectively states invention means a new product or process involving an inventive step and capable of industrial application and inventive step means a feature of an invention that involves technical advance as compared to the existing knowledge or having economic significance or both and that makes the invention not obvious to a person skilled in the art.

Hence, you should always be clear about the prior art or existing knowledge or evolution of technology in order to know technical problem precisely and such technical problem shall be explained properly while documenting the invention.

Best mode

As you know that best mode disclosure in a specification is an essential part of a patent application, specifically a complete application that starts with preamble, “The following specification particularly describes the invention and the manner in which it is to be performed”. This clearly indicates that disclosure has to state the best mode of working the invention and at the same time, the disclosure has to be complete, without any gaps in the process.

Section 10 (4) of Patents Act, 1970, clearly states that every specification, whether provisional or complete, shall describe the invention and shall begin with a title sufficiently indicating the subject- matter to which the invention relates to. Every complete specification shall fully and particularly describe the invention and its operation or use and the method by which it is to be performed; disclose the best method of performing the invention which is known to the applicant and for which he is entitled to claim protection; and end with a claim or claims defining the scope of the inventions for which protection is claimed.

The disclosure of the invention shall be sufficient enough that a person skilled in the art shall be able to achieve the results without further experimentation. Incomplete documentation of the invention by inventor resulting in incomplete disclosure of the same in patent specification may be one of the grounds for patent revocation or invalidation. Hence it is important to disclose complete process that is executable.

Specifications often consist of background, description, claims, abstracts and drawings etc. Step wise documentation of the invention assists your agent to draft specification in a better manner. You may always prepare flow charts or drawings for easy understanding even though the drawings submitted by you often would undergo complete re-doing of the work to match standards of the respective patent office.

Documentation/Disclosure of the invention is integral part of the process of patenting. There is no substitute to it. The quality of the patent specification primarily depends upon the precise and clear information you provide to your patent agent. Even though it takes one or two days extra, it makes lots of sense to spend some time and write the invention description patiently.

Subscribe to YouTube Channel HERE

Join India’s largest Linkedin Group: Indian Patent Agent Exam

Select the right Patent Law Firm

Mar 18, 2023 | Indian Patents Act 1970, IPR & Business, Patent, Startups

A patent is a statutory right granted by the Government for a product or process which satisfies certain criteria of patentability. The term of a patent is often 20 years from the date of filing and is subject to certain terms and conditions. The claims of a patent determine the scope and kind of rights the patent grants to the patentee. Patent rights are territorial in nature, which means that an Indian patent for example is valid and enforceable only in India. If one wishes to have patent rights in foreign countries, the patent application must be filed in the required foreign countries within 12 months from the date of priority of the application filed in the home country.

There are few conditions that must be satisfied by an invention for it to be granted a patent. The invention can be a product or process and must have novelty, industrial applicability and must not be obvious to a person skilled in the art. Further, the invention must not fall into any category of inventions that are not patentable, as disclosed in section 3 and 4 of the Act. There are many benefits that a patent holds for patent owners and inventors. For companies and institutions, patents help generate a good image for them and thus enjoy a brand image in the market. If the invention has good potential in the market, patents could be a good source of revenue for the patentee. A patent may add value to a students’ professional records, helping them improve their odds of getting a job or good institutes to pursue higher education. When a patent application is filed, a date of filing is obtained, also called the priority date. The patent rights of a patent are calculated taking this priority date into account, making disclosure of the invention easier after a patent application is filed. This is particularly useful when the inventor is required to publicly disclose their invention at through publications or events. With a priority date secured, it becomes possible for the inventor to disclose their invention, additionally making it easier for business owners to obtain investments for their organization once the patent is filed.

Procedure of obtaining a patent in India

Once a new idea is conceived, the first step should be documenting the novelty of the idea in detail, along with the problems that the invention is attempting to address and solve. A basic understanding of whether similar documentation as the invention exist already must be assessed with a patent search. If the idea is novel, a patent specification must be drafted and filed in India as soon as possible to claim the earliest possible priority date. It must be noted that patent application shall be filed by a registered Indian Patent Agent only. After the publication is filed, it is published on the official website of Indian Patent Office (IPO) after expiry of 18 months from the date of filing, after which the application is examined by the patent examiner. If there are objections submitted by the examiner, the inventor must comply by all the objections. Once everything has been cleared between the inventor and examiner, the patent is granted. A periodic renewal fees is required to be paid by the applicant after patent grant to keep the patent in force.

After the application is published, there may be an opposition to the grant of the application. If such oppositions against the invention are filed within 12 months from the date of filing of the application, the oppositions are called pre-grant oppositions. However, if the same oppositions are filed within 12 months from grant of a patent, the oppositions are called post-grant oppositions. Further, if oppositions are raised after the elapsing of 12 months since filing the patent, the oppositions are called revocations. Oppositions and revocations can be handled by a patent attorney or patent lawyer who may or may not be a patent agent.

Importance of selecting the right patent firm

Selection of the right patent firm or agent is of crucial importance for inventors because a patent document is a highly complex document. It takes both a high level of both technical and legal skill to draft a patent application to accurately capture the essence of an invention. Subsequent prosecution after filing the application is also complex and intricate, further accentuating the need to employ the services of a skilled patent firm or agent.  Other processes that the patent firm and agent undertake include maintenance of the patent application, responding to objections raised by the examiner, filing in foreign countries, and so on.

The two terms used most frequently in the industry are “patent attorney” and “patent agent” and is therefore of prime importance to understand the difference between the two. A Patent Agent is someone who possesses at the minimum an undergraduate degree in Science, has cleared the Indian Patent Agent Exam and has registered himself as a registered patent agent with Indian Patent Office. A patent attorney however is an advocate who practices Intellectual Property (IP) law and may or may not be a patent agent. Patent attorney or advocate is required to register himself with the Bar council of India as an advocate. For the processes of drafting, filing and prosecution of a patent application, a registered Patent Agent is required.  On the other hand, a patent attorney can assist with handling of oppositions, revocations and lawsuits relating to patent applications. Patent agents and patent attorneys are hence people who have specialized knowledge and qualifications necessary for representing clients in obtaining patents and acting in all matters and procedures relating to patent law and practice. A patent agent may also be appointed by the inventor or applicant to perform various actions before the patent office on behalf of the applicant and in consultation with them.

Qualifications required to become a patent agent/attorney

In order to become a patent agent, the candidate is required to file an application to write the exam. The candidate must sit for the exam and clear it. The candidate must then request the Controller for Form-22, which is then to be filled and submitted along with a fee of 3200 INR for registration of the candidates’ name as a patent agent in the register of patent agents. The candidate must then pay an annual fee of 800 INR to ensure that their name is maintained in the register of patent agents.

Additionally, a person is qualified to have their name entered in the register of patent agent if he/she fulfill the following conditions:

• He is citizen of India;
• He is above the age of 21;
• They have obtained a degree in science, engineering or technology from any university established under law for the time being. The institute must be active in the territory of India or must possess such other equivalent qualifications as the Central Government may specify in this behalf.

The Controller maintains a register called “Register of Patent Agents” in which the names, addresses, phone numbers, fax numbers, E-mail IDs and other relevant particulars of all persons qualified to be registered as patent agent are entered. The list of registered patent agents is available on the official website of IPO.

According to Rule 110, the qualifying examination for patent agents is conducted over a period of 2 days and consists of the following sections:

• Paper I : Patents Act and Rules, 100 marks
• Paper II: Drafting and interpretation of patent specifications and other documents, 100 marks
• Viva Voce: 50 marks

Section 127, dealing with rights of patent agents explains that registered patent agent can draft, file and prosecute patent applications at the IPO (these actions include filing of patent, sending request for early publication or examination, reply to examination report, paying renewal fee, etc.). Every patent agent whose name is entered in the register shall be entitled:

(a) To practice before the Controller during prosecution process such as at the time of opposition to the grant of patent,

(b) To prepare all documents, transact all business and discharge such other functions (such as filing of patent, sending request for early publication or examination, reply to examination report, paying renewal fee, etc.) as may be prescribed in connection with any proceeding before the Controller under this Act.

According to section 128, Subscription and verification of certain documents by patent agents:

A registered patent agent can take authorization from their client on Form-26 [Form of authorization] so that they can act on behalf of their client. All applications and communications to the Controller may be signed by a patent agent.

Form-26 shall be executed on stamp paper of 100 INR denominations.

Factors taken into consideration for choosing the right patent firm/agent:\

When choosing a patent firm or agent, the scientific prowess of the firm or agent must be checked. In the case of a patent agent, they must be a graduate or post graduate in the domain of the invention for which the patent is being filed to ensure that they understand the invention well.

1. Each patent agent has their own unique ID, obtained from the patent office.  Their registration number or even ID card must be checked before working with them.
2. The patent agent can be asked to show their previous patent applications that have been published or been granted patents which can be verified by checking the patent and publication numbers respectively. If the patents have been granted, a look at the objections raised by the examiner on their patent application can provide valuable insight into the quality of the patent agents’ work.
3. An essential skill required for drafting of patent specifications is command over the English language. The inventor must speak directly with the patent agent responsible for the drafting of their invention to properly understand whether the patent agent is capable of drafting their specification.
4. Since some inventions are highly technical in nature, the technical hold of the patent agent over the subject matter of the invention should be judged carefully.
5. Inventions often belong to more than one scientific domain. Therefore, it must be verified that the patent firm being chosen comprises a diverse group of patent agents, well-equipped to handle any kind of technical query.
6. Another point to be considered is the pricing that the firm quotes. Filing of a patent application involves official fees that are paid to the IPO and professional fees that are paid to the patent firm that carries out the patenting process.

Conclusion

The process of patent filing is tedious, and the quality of the drafted specifications plays an important role in the prosecution, grant and further commercialization of the invention. Selection of the right patent firm and agent for undertaking this complex procedure is thus crucial to the success of the patent. Experience of the patent firm or agent, quality of the work produced and the number of successful cases are some of the parameters to be considered before selecting the law firm.

Watch Video HERE

Subscribe to YouTube Channel HERE

Join India’s largest Linkedin Group: Indian Patent Agent Exam

Cross border trading and IPR

May 7, 2022 | Indian Patents Act 1970, IPR & Business, Patent, Startups

Cross border trade refers to trading of goods and services between two commercial entities or consumers and commercial entities across state borders. This gives consumers a huge range of commodities to choose from and provides commercial entities with a plethora of opportunities and new markets to exploit. Cross border trading and outsourcing to meet necessary requirements has been an important part of civilizations since the inception of the barter system. The motivations of cross border trade and expansion of markets lies at the very foundation of international relations. While cross border trade is not new by any means, the role that it plays today in markets across the globe is unprecedented. This is a boon of modern technology and the internet marketplace.

It is estimated that by 2022, cross border shopping will take up about one-fifth of the e-commerce space along with sales recording a whopping 627 billion dollars. The Indian market, ranked ninth in cross-border growth, is showing growth projections of upto 4% of the total retail trade by 2025.

While the scope for profit and promotion has increased manifold with the popularization of cross border trading, additionally has spiked the risk of infringement of Intellectual Property Rights (IPR), duplication and counterfeit of the products.

The protection of intellectual property on a global scale can be a complex issue, a tight rope to walk while balancing national autonomy at the same time as to drive further into global existing markets. The risk of IPR infringement exists at multiple areas in the transit of goods. The many working aspects of the supply chains further complicate the issue.

Protection for IPR exists at various levels, internationally which simply implies that the said protection of property extends across numerous regions and nationally. The World Intellectual Property Organization (WIPO) founded in 1967 is the foremost intergovernmental organization working towards ensuring protection of intellectual property rights across borders. International conventions such as the Paris Convention  and the Hague Agreement for Industrial property and designs, and the Madrid Agreement  regarding deceptive indication and false goods date back to the 19th century, India is party to most of these agreements except The Hague Agreement. However, the protection these treaties offer extends only to the territories of member countries; this magnifies the risks that exist in the countries that are not signatories to the treaty. Though this protection includes goods being exported, imported and also those in transit i.e only passing through these member states, it is not adequate.

While international conventions grant rights, aid in easing the application procedure across member states and in some cases even outline procedural aspects they do not provide for mechanisms to enforce these rights. Territorial or national enforcements of these rights leave space for multiple interpretations, some of which can be unjust and ill motivated. This also happens due to IP rights registered and enforced in bad faith, as is the case with Chinese patents, copyrights and designs.

In recent times ecommerce giants such as Amazon and popular clothing sites like Shein have faced slander for copying designs from small time designers, a piece of clothing designed in interior North America might very well gain immense popularity in cities far away without the designers ever getting any deserved (or even legal) recognition. This speaks to the potential and scope of IPR infringements and the impact it carries.

As of today six BIPOC have been awarded copyrights,  for choreographies they created that went viral during the first set of lockdowns imposed world-wide and are highly used and recognised amongst young adults. These copyrights now ensure credit is given to them in case these are used in games or movies. Though considering the multiple languages and regions that produce cinema and e-games the scope of infringement is wide and questions of justness and ease of the process of redressal in such cases arise. This copyright in a global sense would be granted under the WIPO Performances and Phonograms Treaty of 1996, the issue of justice in case of violation remains open ended so far.

The latin maxim Ubi jus ibi remedium est used in various areas of law, including contract law, supports the idea that the existence of right also implies the need for a remedy, rights that are not justiciable are no rights at all. Like most practices of international law, the conventions and agreements under the WIPO and IPR protection purview is not by nature applied in its whole essence, the application and adoption lie with the member states as sovereignty of nations is priority.

But sovereignty cannot take precedence in the face of blatant violation of rights of individuals. It is also important to note that WIPO does have an Arbitration and Mediation Center,  traditional methods of recourse and redress are still lacking.

Simply put, there is a need for an intergovernmental organisation, a neutral adjudicator. This could be in the form of an appellate dispute resolution body on an international level, exercising the powers of review and recall, or in terms of separate councils for different continents consisting of members elected by various states exercising the powers of regulation.

While many approaches can be thought of, to solve this problem, the root of all such approaches must be with the intention of maximum utility and enforcement of all intellectual property rights across the world.

Author: Vaishnavi Srinivas of RV Institute of Legal Studies

Contact us at info@origiin.com to avail services in Patent, Trademark, Contracts, Patent Licensing, M&A

Subscribe to our YouTube Channel HERE

Email: info@origiin.com

Whatsapp: +91 7483806607

Bolar exceptions & Parallel Import

Jan 18, 2022 | Indian Patents Act 1970, IPR & Business, Patent, Startups

 A patent gives exclusive rights to the patentee to prevent other from making, using, selling, offering for sale and importing the patented product into the country where the patent is granted. Any violation to these rights without the permission from the patentee would generally cause patent infringement. However, there are certain exceptional Acts where the use of patented invention without consent of the patentee doesn’t constitute infringement. Section 107 of Indian Patents Act details such exceptions.

In certain countries including India, the generic drug makers are allowed to use the patented invention without the consent of the patentee for development and submission of information required under law. This provision is called Bolar-like provision or Regulatory provision. This provision came into existence from the case of Roche Products v. Bolar Pharmaceuticals. Roche is a discovery based pharmaceutical whereas Bolar is a generic drug maker. Roche holds a patent over the drug Valium. Bolar intended to submit an Abbreviated New Drug Application (ANDA) to the FDA for a similar drug containing the same active ingredient as to Valium. Hence Bolar used the patented chemical in its experiments, before its patent expiry in order to determine if the generic version is bioequivalent to Valium. Roche responded to this by filing a suit for patent infringement. The District Court of Eastern District of New York declined Roche’s appeal saying that no infringement had taken place owing to the experimental nature of Bolar’s work. The Court of Appeal for the Federal Circuit however disagreed with Bolar’s argument as it intended to sell its generic product in competition with Roche’s Valium, soon after its patent expiry and stated that the exemption does not apply to experiments which have commercial objective. Bolar argued that such violation of exemption would extend the monopoly of Roche over Valium even after its patent expiry. Thus in 1984, in response to Roche v Bolar judgement, and in an attempt to promote competition by simplifying authorisation for generics while maintaining appropriate protection for the interests of research-based pharmaceutical manufacturers, the US Congress passed the Drug Price Competition and Patent term Act (known as Hatch-Waxman Act). This law permits the use of patented products in experiments for the purpose of obtaining FDA approval and it established the modern system for FDA approval of generic drugs.

Another instance where an exception made for infringement is in the case of Parallel import. A parallel import is said to occur when a product sold by a patent holder in one country is exported by a buyer to another country with the price for the same patented product being higher. The purpose of the parallel import is to check the abuse of patent rights and to control the price of the patented product. Pharmaceutical companies follow the practice of differential pricing of drugs according to the purchasing capacity of the prospective consumer in a target country. As a result, the same drug may be expensive in a developed country and relatively cheap in developing countries. This principle of differential pricing forms the basis of parallel trade. It enables countries in which drugs are expensive to import them from cheaper markets.

On March 23, 1995, a decision regarding parallel imports was delivered by the Tokyo High Court. BBS Kraftfahrzeug Technik A.G. (“BBS”) of Germany held both German and Japanese patents for certain aluminum automobile hubcaps. The hubcaps were legitimately purchased in Germany by a Japanese company which was engaged in the export of the relevant goods to Japan where an affiliated Japanese company was engaged in the sale of the goods. These two companies were virtually under the same management when the goods were imported into Japan for sale at a price lower than that charged by BBS dealerships in Japan. Subsequently, BBS filed suit for patent infringement in Tokyo District Court in June of 1994. The district court found that the two companies had infringed the BBS Japanese patent. However, on appeal the judgment in favor of BBS was reversed. In reversing the district court, the High Court held that the patentee’s right to enforce its Japanese patent against the imported goods had been exhausted since the patentee had legally transferred title to a rightful purchaser of the patented product.

Please contact us at info@origiin.com to know more about our services

Watch video HERE

Subscribe to YouTube Channel HERE

Join India’s largest Linkedin Group: Indian Patent Agent Exam

Watch Patents of the competitors

Nov 18, 2021 | Indian Patents Act 1970, IPR & Business, Patent, Startups

Innovation is the key to sustainable growth for any business today and patents play a vital role by securing innovations and obtaining competitive edge in the market. Patent filing is increasing globally and hence keeping yourself updated with the latest trends and progress of technology is important for any business.

Patents are excellent source of technical information, primarily for the reason that inventions are not only disclosed systematically in the patent specification but also the best mode is disclosed to meet statutory requirements in most of the jurisdiction. Therefore, the patent databases contain valuable information that can be used to add value to an invention.

Staying ahead of your competitors in the world where innovation is happening in every area of technology is not easy. In order to improve quality of innovation, avoid duplication of work, filing quality patents and giving right direction to R&D, it is essential for the companies to be updated with latest inventions for which patents are being filed for/published/granted/expired.

However, keeping track of the kind and number of patent applications published, granted, abandoned or expired is a big challenge today. On one hand, knowing latest happenings in the area of patents helps business in multiple ways, on the other hand, with growing data & increasing number of patent filing, extracting desirable information is extremely tough.

Generating periodic (weekly, monthly or half yearly) patent alerts is one of the most effective tools to track the latest happenings in the area of patents. Published/granted and even abandoned/expired patents can be monitored on regular basis in the technical area of interest to get valuable information on:

1. New products/processes for which patent applications have been filed and build up own products to ensure that the same invention is not replicated and also to assess likelihood of patent infringement. In addition to this, since the patents technically disclose the invention, thorough review of the same might be extremely useful to assess chances of getting patent for your core technologies or new idea by knowing novelty, non-obviousness and industrial applicability of the invention.
2. By knowing published applications, one might want to oppose the applications, which may not be subject matter of a patent or grant of which might affect the business adversely, though there are several other reasons to oppose a patent application or a granted patent.
3. New markets or new technologies that your competitors are focusing at. This might give you overview of the kind of products they are planning to launch in given markets.

Patent watch can be done primarily in two ways:

Technical Patent Watch: Here you may list out core technology (ies) of interest and monitor newly published patent applications or granted patents in a technical area of interest as soon as they are published. One may also monitor latest prosecution status of pending patent applications. This way it will be easier to keep in touch with latest happenings in the industry and one may also come across interesting patents that may be used and implemented to add value to existing products or technologies.

Such patents may be considered for licensing or if they are not filed in the jurisdiction of interest or they don’t have a chance to be filed in the jurisdiction of interest, it may be used without any fear of infringement. However, it is highly recommended to take opinion of an expert on the legal status of such patent (s) before implementing it.

Competitor Patent Watch: Knowing patent portfolio and watching patent activity of the competitors may be of great business value. Competitor companies may be listed out and their newly published patent applications or granted patents may be monitored on periodic basis. However, one may also monitor latest prosecution status of pending patent applications or latest legal status/continuation applications of granted patents of competitor companies.

This information obtained by observing periodic patent alerts may prove to be a game changing strategy for any company.

Staying ahead of your competitors is critical for sustainability today. With increasing focus on innovation, it becomes important to know about the recent trends in the area of patent filings. It is not only interesting to watch what your competitors are doing or the latest technologies for which patents are being filed or granted in given jurisdiction, but also, it gives you platform which you can use to fine tune your existing products and assess chances of infringement.

Please contact us at info@origiin.com to know more about our services

Watch Video HERE

Subscribe to YouTube Channel HERE

Join India’s largest Linkedin Group: Indian Patent Agent Exam

Technology Transfer: Meaning, Types and Steps

Oct 18, 2021 | Indian Patents Act 1970, IPR & Business, Patent, Startups

Innovation and growth have always been synonymous to each other, ultimately leading to development. Business ecosystems are largely dependent on these innovations and diffusion of technology plays a crucial role in shaping the future of these organizations. The term ‘technology transfer’ indicates the movement of knowledge, skills, know-hows and other valuable assets of the organization which is driven by profit. The concept of technology transfer is age old and has been rightly referred by Mansfield as, “One of the fundamental processes that influence the economic performance of nations and firms is technology transfer”.

Economists have long recognized that transfer of technology is at the heart of process of economic growth, and that the progress of both developed and developing countries depends on the extent and efficiency of such transfers. In recent years, economists have also come to realize (or rediscover) the important effects of international technology transfer on the size and patterns of world trade.

Meaning of Technology Transfer

The process of disseminating knowledge, skills and other know-how that manifests in the form of technology from its owner (individual or an organization) to another person or organization is known as technology transfer. It is also popularly known as Transfer of Technology. Various stakeholders amongst whom technology transfer takes place includes universities, business organizations, research and innovation societies and others. Such transfer takes place with the motive to share skills, knowledge, technologies, methods of manufacturing and other related profit motives. The transfer is further done with an intention to provide improved accessibility to a wide range of users who can then further develop and exploit the technology to develop new products, processes, applications, materials or services.

Types of Technology Transfer

Technology transfer can be broadly classified into vertical and horizontal technology transfer.

1. Vertical Technology Transfer- This chain of transfer includes basic research to applied research, applied research to development and from development to production. It is also known as internal technology transfer. This type of transfer is mostly carried out between research associations, universities, and governments, among others.
2. Horizontal Technology Transfer- When technology which has already been put in place or use within one organization is further transferred and used in another place, the transfer is known as horizontal technology transfer. It is also known as external technology transfer. This type of transfer takes place between private companies, small and large business organizations, among others.

Methods of Technology Transfer

Technology transfer can take place using the following instruments.

1. Licensing- An agreement between the owner of the technology (Licensor) and the receiver (Licensee) which gives the right to use the technology developed or owned by the transferring individual or company for a specified time period is known as licensing. The two broad categories of licensing include the one which grants exclusive rights to use the technology and another which grants non-exclusive rights wherein the owner reserves the right to further transfer the technology to other company apart from the receiver. It may also include the right to sub-license, permitting the licensee to grant someone else the right to use the technology.
2. Joint Venture Agreement- The company executes a joint venture agreement with respect to technology transfer for a particular business with a vision to incorporate long-term cooperation between the parties, motivation of all participants in the successful transfer and to incur lower costs as compared to working independently.
3. Franchising- It is one of the most preferred methods of transferring technology. The companies generally transfer technical know-how or skill involved under this type of agreement.
4. Original Equipment Manufacturer- It is a kind of sub-contracting agreement wherein a foreign company transfers a relevant portion of its technologies and a local company manufactures according to the specifications in the agreement. Such agreement enables local companies and firms to absorb technologies and restructure their production mechanism. 

5. Buy-Back Contracts- It is a form of agreement between stakeholders from developing countries and large foreign companies, wherein a foreign company supplies industrial equipment in exchange for profits derived from the sale of raw materials or goods produced. This kind of technology transfer is often used in the construction of new plants and other related business.

It is interesting to note that a considerable amount of knowledge and technology exists today that enables the development of approaches and can effectively plan and implement business processes. What needs to see the light of day is a well-funded and potent mechanism for executing technology transfer between the stakeholders in order to ensure uninterrupted economic advancement.

By Shreya Pandey

Please contact us at info@origiin.com to know more about our services

Watch video HERE

Subscribe to YouTube Channel HERE

Join India’s largest Linkedin Group: Indian Patent Agent Exam

Filing for a patent: Important considerations

Apr 18, 2020 | Indian Patents Act 1970, IPR & Business, Patent, Startups

After working hard on the new idea, investing money, resources, it’s time to fulfil the dreams, set-up new business, bring new product in the market. IP protection is an important step to secure innovation to prevent others from copying it.  Is there anything else that is required to be done much before it? Following are the most crucial issues to be considered by an inventor to help him in enhancing quality of research and file the patent application in a cost-effective manner:

Prior art search: Get a thorough prior art search done right in the beginning when you conceive a new idea. The scope of the search should not be limited to the granted patents, but the published patent applications and paper publication should also be searched. The search shall be done globally using various paid or unpaid databases to identify the closest and the most relevant patents/patent application that would help you to assess the novelty of the invention. Prior art search also is helpful in drafting of the patent specification. Prior art search is an essential and crucial step to give shape to your idea and hence it’s a good idea to take professional help to get the search done.

Maintain confidentiality: Inventors often are extremely passionate and enthusiastic about their invention. Having invented something feels great and one feels like disclosing it to the world. But stop! It is strictly essential to maintain strict confidentiality of the invention till the patent application is filed. One of the critical requirements of getting a patent is that invention shall be novel on the date of filing. Hence, never disclose, publish or make your invention available to public till you file a patent application for the same. Additionally, do have an NDA (Non-Disclosure Agreement) with your attorney as well for the same before initiating discussion on filing patent application. A classic example is when Archimedes solved the problem of checking the purity of a gold crown without damaging the crown. While taking a bath, he noticed that the level of the water in the tub rose as he got in and realized that this effect could be used to determine the volume of the crown. Archimedes then ran in the street naked, so excited by his discovery that he had forgotten to dress, crying “Eureka!”.

Documentation: Documentation of an invention is extremely critical. Stepwise documentations shall be done and the novel features of the invention, existing technical problem which your invention overcomes, how your invention works shall be highlighted. Explain the process or the product with drawing and\or flow diagrams. Thorough understanding of the invention by your attorney is necessary. Don’t get lazy to fill the invention disclosure form if given by your attorney in order to describe the invention systematically. Consider the cost: Understand why and in which county (ies) or jurisdiction (s) you want to file a patent application. Choosing to file provisional or complete application, PCT application or convention application or filing in India based on your requirements can really help you to manage your finances and to identify the timelines. Spend some time with your attorney to understand the procedure to work on the most cost-effective package.

Explore options other than patent: Depending upon kind of product, it is advisable to explore other option for protection of the innovation in the form of copyrights, design or trademark. Being an inventor requires tremendous amount of effort and taking invention in right direction, in right manner is imperative to protect it appropriately and to reap the benefits.

Please contact us at info@origiin.com to know more about our services

Subscribe to YouTube Channel HERE

Join India’s largest Linkedin Group: Indian Patent Agent Exam

Patent Infringement Risk Mitigation

Apr 19, 2018 | Indian Patents Act 1970, IPR & Business, Patent, Startups

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.

A business owner may violate rights of a patent with or without knowledge and therefore, it is highly recommended for 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 its 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:

1. Identification of components of the product to be launched and listing out nomenclature of the components, as generally used in the industry.
2. Performing a patent search with all possible synonyms of the product component names and other search techniques to pull all relevant patents. Patent search here may be global or country-specific depending on the countries in which the product is going to be launched or sold. The business owner must be very focussed and specific with respect to patent search strategies to ensure that the appropriate data is extracted.
3. Depending on the requirements, a history dating 20 to 22 years prior to the date of performing the search may be set as the scope of patent search because the term of a patent is 20 years and only “in-force” or live patents get infringed. 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.
4. After the relevant patent documents are extracted, it is important to segregate them into “expired”, “abandoned” or “in-force” patents. Further, there may be a need to separate out patent applications and 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.
5. 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 imposed shall be completely ruled out only after the timeline to restore has lapsed and its legal status reflects as “Expired”.
6. Patents so extracted shall be studied 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 extend 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:

1. 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.
2. 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.
3. 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.
4. 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.
5. 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 steps 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.

Please contact us at info@origiin.com to know more about our services

Watch Video HERE

Subscribe to YouTube Channel HERE

Join India’s largest Linkedin Group: Indian Patent Agent Exam

Patent/Technology Landscape

Mar 19, 2018 | Indian Patents Act 1970, IPR & Business, Patent, Startups

Patents are recognized as a valuable source of technology and competitive information due to the disclosure of technical and scientific information in it. Study and analysis of patent literature provides good understanding of current technological and competitive environment of any technology domain. A better insight of the patenting activity reveals a more objective approach in determining how to prioritize research and development. Research-based firms continuously seek to discover new ideas and new technologies and to translate these into unique products that can be protected from competition by patents or other intellectual property rights such as design or copyright.

In order to convert ideas into unique product one should possess solid knowledge of the market and trends in the market, also a better understanding of the competitors in the relevant field of technology. This is possible through patent mapping or patent landscaping. Patent landscaping, also known as “patent mapping” or “patent analytics” is a comprehensive state of art search, which gives past and present patent and non-patent activities of the competitors in the given area of technology. It also provides a graphical representation allowing for comprehensive analysis with an ability to link more detailed text when needed. This search is a deeper analysis of a State of Art Search, where State of Art Search is the broadest and most general of all patent searches. It is essentially a market survey that should ideally finds out what technology already exists and then build on it.

The Patent Landscape Search can identify potential patent portfolios for acquisition, existing or potential infringers to be pursued, and potential technology to be exploited. The typical Patent Landscape Analysis, Patent Mapping or Patent Analytics are customized to the client’s needs and are useful for:

• Identifying the key players operating in a technology domain. This is critical for any business to know so that activity of competitors can be monitored and based on this own IP strategies can be devised.
• Identifying the R&D focus of key industry players by identifying the patents and analyzing the technologies they are working in. Based on this, own R&D can be planned in a better manner.
• Identifying the technology curve & trends
• Identifying seed patents in a technology domain
• Identifying licensing opportunities based on the identification and knowledge of technologies patented by others in particular jurisdiction. The thorough review of the valid patents can also help to minimize patent infringement risk.
• Monitoring market interest
• Identifying opportunistic technology gaps for licensing, development, or in a geographic area
• Visualizing the most densely patented and most sparsely patented technology area
• Determining the most prolific inventors
• Identification of possible collaboration and acquisition and merger opportunities
• Devising suitable patent strategies for the organization

Therefore, patent analytics or patent landscape can be useful for to formulate business strategists, market analyst, scientists who make key decisions in new product development, R & D planning and strategic business development in order to gain a competitive edge.

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 abroad.

Deliverables: Landscape report in PDF and backend data in excel sheet is provided

Timeline: 15 business days

Please contact us at info@origiin.com to know more about our services

Subscribe to YouTube Channel HERE

Join India’s largest Linkedin Group: Indian Patent Agent Exam