Patent

  1. What is a patent?

Patent is an exclusive right granted by the patent office to an applicant in respect of a new product or process. Such a product or process simultaneously satisfies the three criterion of Novelty, Inventive Step and Industrial applicability on the date of filing of the patent application.

  1. Who can apply for patents?

An individual person or a legal entity and/or both can apply for a patent.

  1. How many persons can apply for a patent? Is there any limitation for number of applicant or inventors for a patent?

A patent application needs to have at least one applicant while applying for the patent. However, there is no limitation on number of Applicants/inventors. It may include ‘n’ number of applicants/inventors.

  1. Is there any difference between an applicant and inventor?

Yes. Applicant is someone who applies for the invention and in the name of whom the patent is granted. Inventor is someone who conceives/contributes the invention but never owns the invention. Applicant can be a natural person and/or a legal entity. Inventor is always a natural person.

  1. Can a company become inventor?

No. A natural person can be an applicant and inventor both, but a legal entity can only be an Applicant and can never be an inventor.

  1. Can I file a patent application to protect my idea?

No. mere abstract ideas can never get a patent. However, idea may be protected under patents when it transforms into a physically existing model that passes all three criterion of patentability namely Novelty, Inventive step and Industrial applicability.

  1. What is a criterion on the basis of which a patent is granted in India?

The patents are granted on three criteria of patentability namely Novelty, Inventive step and Industrial applicability. Novelty is the criteria that ascertains that the invention is not in public domain before the date of filing of the patent application without being anticipated by the prior art. Inventive step is the criteria that ascertains that the invention is having technical advancement over the prior art without being just combination of known things in the prior art. Industrial applicability is the criterion that ascertains that the invention is capable of being made or used on industrial scale.

  1. What is difference between invention and patentable invention?

Invention means a product/process that passes at least one criterion of the patentability but failing to qualify as a patent as it lacks at least on criterion of patentability. Patentable invention is something that passes all the three criterion of patentability.

  1. What is meaning of term of a patent?

Patent is a cluster of exclusive rights that is granted to Applicant for a limited period. However, the period as per Indian Patents Act is 20 years from the date of filing of the patent application.

  1. Can you explain how will you make sure that the confidentiality of my invention will be maintained at your end?

A relationship between an applicant/ inventor and the patent agent is governed by an established principle known as Attorney-Client relationship.  This relationship specifically prevents the patent attorney (agent) from disclosing the invention to anyone thereby keeping the communication confidential. This is a better option that Non-disclosure agreements that are used in tandem now a days. The non-disclosure agreement has major limitation that the communication between Attorney and the client needs to be disclosed in front of judge in the court of laws. However, the Attorney-Client privilege relationship facilitates the Attorney not to disclose the communication even in front of the judge in the court of laws.

  1. What is the minimum time to receive a patent in India?

There is no specific min. time to receive patent is mentioned in the patents act. However, Applicant may opt for Publication and Examination procedures that can be expedited in India by filing appropriate forms. This enables the examination procedure to start substantially earlier than routine patent application process flow.

  1. Can I get a worldwide protection if have an Indian Patent on my name?

Yes. WIPO provides a facility named PCT that facilitate prosecution of an International patent application by claiming a priority of an Indian patent application. PCT mainly has two phases namely an International phase and a national phase. The international phase facilitates filing and publication of the international application under PCT. The national phase facilitates the application to be independently prosecuted for grant in each country that is signatory to the PCT. It is to be understood here that PCT is a International filing system and not a granting system and there is nothing like an international patent.

13. Why should I file a patent through a patent attorney? Is that recommended?

  • It is observed during examination of the patent applications that more than 60 % patent applications are rejected as they fail to comply the patent drafting requirements. The patent specification specifically needs to be drafted in a proper format as prescribed by the Patents Act. The patent agents are well aware of the patent drafting norms and accordingly they can draft the patent application in most appropriate manner as needed by the patent office.
  • Secondly, the claim drafting is a skill that provides a broadest possible protection of the invention. Also the claims need to be drafted in a specific legal language per the claim drafting norms. The patent agents can smartly draft the patent application with claims to give broadest possible protection to the client’s invention.
  • Lastly, the patent prosecution is a legal procedure that is governed by The patents Act and Rules. Hence, one needs to have a thorough understanding of the patents act to prosecute the patent application before the Patent office which can be achieved by the Patent Agent.

14. What is the difference between a patent agent and a patent attorney?

  • Patent Agent is a techno-legal person who has basic qualifications of technology (such as engineering and science) and legal qualification to act as an agent for the client before controller general of patents on behalf of clients. Patent attorney in India is generally an advocate or a lawyer who represents the client before the court of laws and not before the controller.
  • Patent agent prosecutes the patent application before controller and Patent attorney litigates the patent before the court of laws.

15. Should I get a patent protection in India, if my invention is not known in India, but it is known in any other country like China/USA/UK?

No. Although the patent is a territorial right, one can’t get a patent protection in India if it is known in any other country as there is provision of Anticipation in Indian patents Act. The Public knowledge of an invention anywhere in the world before the date of filing of patent application in India would result in loss of Novelty of invention that would limit it from getting a patent in India

16. When should I do the prior art search? Is it necessary to perform a prior art search?

The prior art search is generally done before filing a patent application. It is not mandatory, but always advisable to conduct the prior art search before filing the patent application. The prior art search presents a worldwide patent-non patent literature scenario in comparison to Novelty, Non-obviousness and Industrial applicability aspects of the invention for evaluating its patentability in future. There are various types of searches such as Novelty Search, Infringement Analysis, Validity analysis, Invalidity search, Freedom-To- Operate search that are conducted in this regard.

17. What is a design patent?

In India there is no such term as a design patent as like US. In India, there is a separate act for protection of designs wherein an outer or aesthetic look of product that is visible to naked eye is protected for a limited period under The designs Act.

18. Whether assignment is applicable to a patent?

Yes. The patent right possesses all feature of real estate property. The only difference is that patent right are intangible and non-inheritable. However, the patent can be sold, licensed, assigned, gifted as that of real estate property.

19. Who is patent granting authority in India?

The patent is granted by The controller of Indian patent office in India.

20. Could a foreign citizen file a patent application in India?

Yes. The foreign citizen can file a patent application in India provided that he/she is having  an address for correspondence in India and/or appointed an Indian patent Agent to prosecute the patent application on his/her behalf.

21. What is patent infringement?

The patent is cluster of exclusive rights given to an Applicant to exclude others from making, selling, offering to sale, using, and importing the patented article without his written consent. If  anybody performs above mentioned acts without the permission of Application then it would result into infringement of the patent

22. What is renewal of a patent?

The patent needs to be annually renewed by payment of annuity fees to keep it in force. The patent would lapse if the annuity fee is not paid.

23. Can I object a granted patent?

Yes. There are two provisions under the Patents Act to object a granted patent namely a Post grant opposition and Revocation. The post grant opposition needs to be filed within a period of 12 months from the date of grant of patent after which the provision of Revocation is available any time after one year’s time from date of grant of patent.

24. What is publication and examination in patents?

  • Publication is a phase wherein the patent application for an invention is published in the official gazette of the patent office that is released on each Friday of every month. The publication can be a normal publication or an expedited publication. In normal publication, the patent application gets published after 18 months from the date of filing of the patent application. In expedited Publication, the patent application a special request needs to be made by filing an appropriate form and by payment of an appropriate fee. In expedited publication, the patent application gets published within 1 months from the date of request for early publication.
  • Examination is a phase wherein the patent application is evaluated by the Patent office to check whether the patent application passes all three criterion of the patentability in addition to checking whether it is in prescribed format as required by the patent office. Examination does not happen naturally. Applicant needs to make a request for examination before 48 months from date of filing of patent application. If no request for examination is made, the patent application gets abandoned. Also, Examination never starts before the Publication of the patent application.

25. I have a registered patent in India for last 4 years. Can I receive protection for the same patented invention in the USA now?

No. The Indian patent act limits the filing of patent application outside India to a period of 12 months from the date of filing of the said patent application in India.

26. What does the terms patent pending means?

It means that the patent application for an Invention is filed/published/ examined but not yet granted/registered. The patent pending status is achieved from the date of filing of patent application, i.e. priority date.