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.
- 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.
- 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.
- 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.
- 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.
- 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.
- 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.
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