Feb 23, 2023 | IPR & Business
For various reasons, every inventor wants to file for a patent internationally after filing it in his/her home country. Sometimes it’s about the status that is associated with having a patent filed in the US or Europe, but having an international patent may also enhance the valuation of the technology which ultimately may impress investors and fetch better value to the inventor. Oftentimes, inventors drop the idea of filing for patent internationally because it is expensive, complicated, and long procedure. Laws across the countries are also not unified in terms of procedures, fee and timelines leading to more and more confusions at every stage,
It is firstly of crucial importance to understand the term “International Patent”. In reality, there is nothing called international patent or global patent. Despite there being ways to file for a patent internationally, there is no single authority to grant international patents with validity across the globe. Patents are required to be filed in and granted by each country where the inventor wishes to seek protection.
Few things are required to be focused on, when filing a patent outside India. For a resident of India, Section 39 [Residents not to apply for patents outside India without prior permission] of Indian Patents Act 1970 states that the patent must be filed in India first and can be filed in any foreign country within a period of 12 months. Once this 12-month period expires, the inventor loses the chance of filing outside India.
- Two ways to file patent application internationally
There are 2 ways to file a patent in foreign countries. These are:
- Patent Cooperation Treaty (PCT) Route
An inventor may file a single patent cooperation treaty (PCT) application or international application within 12 months from the date of filing a patent application in India. PCT is an international patent law treaty that provides a unified system for filing patent applications in each of its contracting states. It is a convenient platform to assist inventors that are seeking patent protection internationally (in the contracting states of PCT) for their inventions. It also helps patent offices with their patent granting decisions by providing comprehensive search reports for the patent application along with opinion on patentability. PCT publishes the patent application filed with it and maintains an online database called Patentscope which facilitates patent searches as well as gives public access to a wealth of technical information in the form of patents.
PCT examines the application, issues examination report and enables inventors to file their application within 30/31 months from the date of priority in any of the member states of PCT. After this, the patent is processed and granted by the national offices of the countries where patent protection is sought, based on the procedures and requirements of the respective offices. PCT enables patent filing in its member states & gives extra time to the inventor to decide about the countries they want to file their application in.
2. Convention Route
The countries which are members of the Paris Convention are called convention countries and an application filed in a convention country is called a convention application. Unlike PCT, convention application is required to be filed in the convention country within 12 months from the priority date.
Reasons to file international application
Filing international application without clarity on the reason to file is not a good idea. It does not help inventors in long run and may actually lead to a very stressful situation if the prosecution is left midway, further making the overall process financially cumbersome. Following parameters should be considered when deciding about the countries to file patent application in:
a. Your future business plans
Patents must be filed in the countries where the inventor wishes to expand the business in the future. It must be remembered that there is a specific time period within which inventors must file the patent application in specific countries. Once this period has lapsed, it is not possible to file an application at a later stage. Therefore, if it is desired by the inventor to expand the business in countries like the US or Japan 5 years later, it would make sense to file patents in these countries within the required time frame.
b. Potential of technology in given jurisdiction
Sometimes, it makes sense for an inventor to file for patent in some countries even if the inventor does not have business there. Countries like the US have a mature system of buying, selling and enforcing patents. If technology has good potential in a specific country, a patent should be filed in that country. Further, licensing and selling options may also be explored to facilitate easier transition of the patented technology to the market.
3. Your budget
Filing and prosecution of a patent is a long process and strictly regulated by several timelines. A patent may be lost if the inventor does not respond to the office in time or fails to pay the necessary fees. Further, there are standard expenses for each country and renewal fees to be paid post grant of the patent. This leaves a very small window for postponing expenses and timelines, making the overall process of getting a foreign patent extremely time consuming, complex and expensive. The tentative costs of filing, prosecution and maintenance must be assessed in advance and only then should a decision about foreign filing be taken.
Keeping in mind budget, type of invention and area of business, the decision to file patent internationally shall be taken.
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Feb 22, 2023 | IPR & Business
There have been a lot of discussions and difference of opinions on whether an idea can be patented or not. Well, this indeed is a tricky question with an uncertain answer.
Filing for a patent requires the invention, as a product or a process, to be novel, industrially useful and inventive. As an inventor, while drafting patent specifications, one must disclose the best method known to him or her on the day of filing patent application. An issue arises that if the invention is just an idea, what is the best method of implementing the invention? At the same time however, all inventions originate from ideas. Therefore, it must be understood clearly that patents are granted only to inventions and not to ideas, provided such inventions fulfil certain statutory conditions as specified in patent law.
There are two ways to file for a patent, i.e., either a provisional patent application or complete patent application. If the invention is still in the development stage and is not complete yet, a provisional application should be filed. Some other reasons to file a provisional application are:
- The earliest date of filing or priority date is required;
- Conservation of time and money is a matter of importance;
- It is unsure if the invention will be developed further or not;
- The experimental data concerning the invention is not ready yet;
- Investor will release fund only after inventor produces evidence that patent application is filed;
- Changes are expected in the experimental data before completion of the work.
It is worth noting here that provisional application may be filed if the invention is at the stage of idea, provided that the idea is executable and is capable of being performed practically because at later point of time, at the time of filing complete application, best mode of performing the invention has to be disclosed. Further, the inventor should also keep in mind that the scope of provisional and complete application must remain same. A complete specification may be filed within 12 months from the date of filing provisional application. However, if the complete specification is not filed within this time period, the provisional application gets abandoned automatically without loss of confidentiality as the provisional application was not published.
Article 83 of the European Patent Convention states that an application must disclose the invention in a manner sufficiently clear and complete for it to be carried out by a person skilled in the art, and insufficient disclosure is one of the grounds for opposition of the patent.
United States patent laws explain that the patent specification must be complete enough so that a person of “ordinary skill in the art” of the invention can make and use the invention without “undue experimentation”. The laws further state that the disclosure must also contain the inventor’s “best mode” of making or practising the invention.
In India, section 10 of Patent Act sys that every complete application must fully and particularly describe the invention and its operation or use and the method by which it is to be performed. The Act also mentions that the application should disclose the best method of performing the invention which is known to the applicant and for which he is entitled to claim protection.
At the time of filing complete application, the best mode of working the invention must be disclosed. Failure to do so may expose the application to opposition before or after grant of the patent, thus leading to invalidation of the patent. In the Press Metal Corporation Limited vs Noshir Sorabji Pochkhanawalla case, it was held that it is the responsibility of the patentee to state clearly the nature and scope of what they claim in the patent, and that the patent specifications shall not contain ambiguous and obscure information.
In conclusion, an idea cannot get a patent as such if the idea not executable or cannot be converted to an invention. In order to claim priority date & protect the idea, it is recommended to file a provisional application if the invention is at the stage of an idea or experimental results of the invention are not complete and the invention is at a developmental stage. However, at the time of filing complete application, idea itself is not enough and inventor shall submit full disclosure of the invention along with best mode of working the invention.
We are here to help you and guide you in your innovation journey. Feel free to contact us at info@origiin.com or call or Whatsapp at +919845693459 to avail our expert services to register a patent. Click here to know more: Patent Registration
Author: Bindu Sharma
Feb 1, 2023 | Training
Being an Indian Patent Agent is an important credential to possess, particularly for candidates who aspire to build a career in patent prosecution and enforcement in India.
The candidates are required to qualify the Indian Patent Agent Examination, which is conducted annually by the Indian Patent Office (IPO) headquartered in Kolkata with branch offices in Chennai, Delhi and Mumbai.
1. Applying for the Indian Patent Agent Examination
The schedule of the Indian Patent Agent Examination is published by IPO on their official portal at least six months in advance. The aspiring candidates are required to fill an online form which is intended for collecting candidate information such as name, address, nationality, occupation and so on. Additionally, the candidates are required to submit the following documents:
- Proof of nationality (Passport);
- Address proof (Aadhar card/PAN card/ Driving license);
- 10th grade mark’s card;
- Degree certificate (attested by a Gazetted Officer); and
- Marriage certificate (if applicable).
Further, the candidates are required to pay a fee of INR 1600 to register for the examination. Upon submission of the required details, documents and fee within the given time (typically 1-2 months), IPO provides an official receipt which indicates that the candidate has successfully registered for the examination. Subsequently, the candidates receive an admit card from IPO at least 1 month before the date of the examination, wherein the admit card comprises the candidate details and the details regarding the examination centre.
2. Preparing for the Indian Patent Agent Examination
- Start early: It is advisable for the candidates to start their preparation at least 6 months prior to the date of the examination. Starting early will give the candidates enough time to be thorough with the Indian Patent Act, 1970, as it is important to note that the goal is not only to qualify the examination but also to acquire an in-depth knowledge of the Indian Patent Act, 1970 which is essential during prosecution and enforcement of patents/ patent applications.
- How to study: It is advisable for candidates to have access to a comprehensive interpretation of the Indian Patent Act, 1979 to understand the intended meaning of all sections and rules. Origiin IP Solutions LLP provides a highly comprehensive study material which is divided into 2 separate modules:
- Module 1 is an updated version of the Indian Patent Act, 1970 with interpretations and examples for easy understanding. This module prepares one sufficiently well for Paper 1.
- Module 2: Guide for drafting patent applications with samples. This module includes International Conventions and Treaties, PCT procedure, Patent Specification Drafting including claim drafting with examples, Tips for viva and Model question papers.
This module prepares one sufficiently well for Paper 2.
One can order these modules online from here: https://origiin.com/patent-agent-exam-training-2/
Pro tip: The examination pattern was revised in the year 2018 and hence, it is advisable to refer to the new examination format.
- Smart tools/aids: In this context, smart tools/aids refer to simple methods to make the learning process more efficient. Flash cards is one such aid which has proved to be highly useful for candidates during their preparation. Candidates may assign one card per section with relevant rules under the section, wherein repeated reference to the flash cards help in better retention of the contents present in the flash cards.
Pro tip: Candidates may make the flash cards as visually attractive as possible for better retention of information.
- Revision: Understanding the various sections and rules of the Indian Patents Act, 1970 is extremely important, however, it is more important to go revise the sections and rules at least two or three times before appearing for the Indian Patent Agent Examination given the vastness of the Act (herein, Act refers to the Indian Patent Act, 1970).
- Drafting techniques: A thorough understanding of the different sections of a patent specification is essential for acing Paper 2 of the Indian Patent Agent Examination. The candidates must have a good understanding of the anatomy of the patent specification and the scope of disclosure under each section of the specification.
Module 2 of the study material provided by Origiin IP Solutions LLP is recommended to gain an understanding of the nuances for drafting a patent specification as per the guidelines of the Indian Patent Office (IPO).
- Mock tests: Once the candidates feel they have the requisite knowledge of the Indian Patent Act, 1970, it is important to appear for mock tests to validate the acquired knowledge. For this purpose, the candidates may download Paper 1 and Paper 2 from the year 2018 from the official IPO website and answer the questions within the suggested time (I.e., 2 hours for Paper 1 and 3 hours for Paper 2).
- Fill the gaps: After the mock test, the candidates are required to evaluate their answers with the answer key provided by IPO on their official website. This will provide the candidates a clear idea on the areas which require more attention so that the candidates can go back to those areas and revise further to ensure their preparation is comprehensive.
- R&R: On the day before the examination, candidates are advised to rest well and keep their mind calm so that they can orient their mind for the examination and avoid last minute jitters.
Pro tip: Use the flash cards to recollect all sections and rules
3. Day of the examination
Candidates are required to carry their admit cards to the examination venue. The examination commences with Paper 1 which is an objective assessment for 100 marks, wherein Paper 1 mainly tests the candidate’s knowledge on the Indian Patent Act, 1970. Subsequently, the candidate is required to appear for Paper 2 which is a subjective assessment for 100 marks, wherein Paper 2 mainly tests the candidate’s knowledge on drafting a patent specification.
4. Viva-voce
The candidates who qualify Paper 1 and Paper 2 are required to attend Viva-voce (50 marks) at the designated patent office, wherein the panel of examiners at IPO ask several application-specific/scenario-based questions to the candidates to gauge the candidate’s ability to correlate the scenario with relevant sections of the act and provide appropriate responses by quoting the relevant sections of the act.
Pro-tip: Revisit the flash cards & the act before appearing for viva-voce for refreshing the memory on all sections and rules of the Act.
The above-mentioned tips/strategies for acing the Indian Patent Agent Examination are suggestive in nature and are provided based on experience.
The aspiring candidates who intend to appear for the Indian Patent Agent Examination in 2023, may write to us on info@origiin.com for further information regarding the suggested study materials and support.
Author: Dharini Dinesh
Registered Patent Agent
Origiin IP Solutions LLP
