What is a Patent?

In layman terms, A patent is a 20-year legal protection provided to an inventor for his/her invention. The patent holder can exclude others from making, using, selling and importing their invention in a respective country. The people who help you in obtaining a Patent and protecting your Invention are called Patent Attorneys and Patent Agents.

Who is a Patent Attorney and a Patent Agent?

Generally, both the terms are used interchangeably, as both of them have many similarities, but similar does not mean the same! Have you ever thought that what is the difference between a Patent Attorney and a Patent Agent and how it may affect you?

Let us take a brief look into both the profiles:

A Registered Patent Attorney is a person, who holds a technical degree i.e. in science, engineering or technology, a law degree i.e. LLB, has qualified the Indian Patent Agent Examination, and is registered with the Indian Patent Office to practice before the controller of patents. Therefore, in a Techno-legal domain like patents, a Patent Attorney can draft and file Patent Applications, provide legal opinions on patent related matters such as infringement, send legal notices for patent infringement, represent the Client in Appellate Board and Courts for Patent related cases, and based on experience recommend a legal strategy for developing patent portfolios.

A Registered Patent Agent is a person who has technical expertise i.e. has obtained a degree in science, engineering or technology and has passed the Indian Patent Agent Examination. The Patent Agents are responsible for drafting and filing of Patent Applications, but their services are limited to activities, which relate to the controller of patents as per Section 127 of the Indian Patent Act 1970. In simple terms, the Patent Agents have a limited right to represent their clients in proceedings/issues related to patents only in front of the controller and cannot provide any legal opinion or send legal notices.

When to choose a Patent Attorney or Patent Agent?

The Registered Patent Attorney and Registered Patent Agent can draft and file the patent applications for Protecting your Invention. They can also help you get a Patent granted. However, it is important to note that since Patent is a Techno- Legal subject and Patent Attorney has a better understanding in the legal domain, he is in a better position to foresee the legal issues that may surface in future and may help to obtain better protection. The knowledge of law also helps the Patent Attorneys to advise clients with a broader view of the various patent related issues as in the end it is a Techno-Legal matter.

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The inventor or applicants in search of new and better technology which can transform the world are creating new products which have lead human race to make this world a place of heaven with facilities. Patents are playing a prominent and important role in the entire technology life cycle, from initial Research and development to the market introduction stages including licensing, where competitive technologies can be protected with patents and licensed out to third parties to expand financial opportunities are creating a competitive environment around the world. This competition leads to the new invention and by exploitation of the existing technologies, a new and better product with advanced technologies are coming, helping the dire needs of human.

A patent can also be licensed to another party (a licensee), which permits that party to manufacture, use and sell the invention. In return, the licensor usually receives royalty payments from the licensee. The company getting the license to manufacture or sell the product or technology will do their research on particular product and technology and a new product can be expected by investing in research and development. The huge potential in technologies and inventions lead to the in-depth analysis of patents with the prior art and then shaping the future.

The latest trends in the technologies which will lead to the competitiveness among the companies and to introduce the newer and better products in the markets The unavailability of such information is unfortunate from an analytical perspective, since that information could be used to identify the utility of patents and the networks of patent information diffusion and application.

An Example of how the patent has changed the way in which the telephone invented by Graham bell and then got patent in year 1876, and after that how the patent help other inventors or competitive companies or person to think to make it more efficient and to reach maximum people across the globe. The invention of telephone in 1876 leads to the introduction of candlestick in 1900 and then introduction of rotary in 1940 where the function was to rotate the dialand then release but soon this products and technology were lagging behind as the AT&T in 1963, introduces the push-button or touch tone which allowed phones to use a keypad to dial numbers and make phone calls and most important was that a person can make the long distance calls sitting in another region. After this, the answering machine on telephone made the telephone to record the calls. The beginning of 1980 saw the change in the technology and products which lead to the invention where the telephone were replaced by the portable phones and people across the world can call to other one. It was in the year 1984 when first ever mobile phone was launched by Motorola and it actually shapes the world with dire needs to introduce the technology of signals and communications within a phone. Since 1984, the patent tug-of-war between Nokia, Motorola, Samsung, Microsoft, and Apple was there. As having a patent means protection for twenty years and other cannot use without prior permission from the inventor or from the applicant. To use the technology, the license should be granted and after that companies can use the patent and information so as to remain alive in world.

The patented innovation has performance innovation which increases the performance of the addition of functions,   the durable innovation which decrease in damaging effects, an ergonomic innovation which means more ease of use, economic innovation which lowers the costs and made it easy for the end user to reach.

The actual use of Patents in technical, business and legal information for advancement of technology and products can be used for a number of different and broad purposes including;

• Patented and non-patented literature of prior art searches to establish a baseline for technical research and development activities;
• To identify the key patenting trends with respect to technology in the same discipline or in inter-discipline patents and innovation patterns.
• Once patents have expired, the information is freely available for others to use and by way of dissemination of the information the people may reach to a new technology or new products.
• As the information related to Patent is public, patent databases whether paid or non-paid constitute an important source of technological knowledge of patented as well as non-patented literature. At the same time, individual patents are often only the part of a larger technology solution and written in such a way that know-how and other specific knowledge are required to fully deploy the invention to an economically profitable extent with leave a loopholes for new technology to immerse within the sphere.
• Patent trends can be analyzed to identify Research and Development trends with know-how and to forecast innovations. The portfolio analysis which includes number of patent filed in a certain field, the geographicallocation of patent filings, the name of filing organizations, applicants and inventors, the referencing of patents with prior arts and the patent families around the world is used as indicators of innovation. Patent filings are often relevant to markets formation, patent analysis can generate valuable information about market development, such as which fields of technology current businesses intend to enter in the years ahead.
• Patenting of an invention is an indicator of RD&D progress and which will result into key technology which will emerge or be successful in the market.
• Competitive assessments of patent information in combination with information such as GDP and RD&D investments can indicate the technology competitiveness of a country or the economic performance of a company or country.
• Quality patents will ultimately help to increase the marketplace as well as economic growth and will help to enhance further technological innovation.

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A Patent Attorney or A Patent Agent, What is the Difference?

A question that often comes amongst Start-ups or Individuals in India w.r.t the Patent Registration is “Should they look out for a Patent Attorney or a Patent Agent in India”. Well!! The below Article will help you (Start-ups or Individuals) in Choosing either a Patent Attorney or a Patent Agent!

What is a Patent?

In layman terms, A patent is a 20-year legal protection provided to an inventor for his/her invention. The patent holder can exclude others from making, using, selling and importing their invention in a respective country. The people who help you in obtaining a Patent and protecting your Invention are called Patent Attorneys and Patent Agents.

Who is a Patent Attorney and a Patent Agent?

Generally, both the terms are used interchangeably, as both of them have many similarities, but similar does not mean the same! Have you ever thought that what is the difference between a Patent Attorney and a Patent Agent and how it may affect you?

The post A Patent Attorney or A Patent Agent, What is the Difference? appeared first on .

Important steps to be considered for protecting your idea, before converting it into a product:

1. IDEA WRITING: First important thing is to write your idea into a paper. What are the features of the idea? What is all about the idea is talking about? On a paper, you can write the title, abstract, specification, material used, apparatus used specifically which are required to manufacture it. What future potential you are seeing it after getting a patent? What market is it going to affect?
2. CONSULT ATTORNEY: Consultation with an attorney or advocate might give you insights of how to take a step forward in the market. Experienced attorney will help you doing market research and in patent search as well as convert your idea into the legal language which might help during patent filings so that you will not miss anything.
3. MARKET RESEARCH: After this, you have to conduct a market search that how the product is going to change the market. Few thing to be kept in mind doing the market research. What are the similar products which exist already in the market with same or similar to the idea, and if so, where are they selling and who’s buying the products? Who are your possible competitors? If competitors are already there, then what should be the price of the product so as to be reasonable to the public as compared to others?
4. INITIAL PATENT SEARCH: Initial patent search actually helps the idea protector to give insights about the existing patent for the technology or to the product associated. Based on the location, you can do the Patent search as some of the products might not be available in the same location or in the different locations. Attorneys will help you conducting a prior art search to find any existing worldwide in patented as well as non-patented literature. The freedom-to-operate analysis will help you building a legal opinion as to whether a particular product is considered to infringe any patent(s) owned by an individual or other organizations.
5. MAKE/DEVELOP A PROTOTYPE: Prototype is an individual that exhibits the essential features of a later type. Convert the idea into a diagram or drawing, or any product or professional product so that it can be shown to companies for licensing or to show it to the patent office for working. Make the prototype with the help of latest 3-D printing techniques. Once it is developed, it’s time to start bringing an idea to fruition. This prototype will help you to find the flaws in the product and if something is missed in the product, so it is an early stage to rectify the flaw and make a perfect product for the public. You can show the prototype product to the companies for licensing agreements.
6. CHOOSE BETWEEN MANUFACTURING AND LICENSING: After prototype, carefully choose what actually you want to do to with the product, either to manufacture by yourself or give it to a company to license it so that company has right to manufacture and sell. Well, chose it carefully as once the product is licensed, you will not be able to manufacture it and if you did, then infringement suits will be followed and that will be an extremely costly business. Manufacturing the product will bring question like an office, location with where to manufacture it, where to store raw materials, storage capacity and transportation. These things needed to be addressed as early as they can to avoid any possible future conflict.
7. FUNDING: Funding is an important part after a prototype is developed and you chose to manufacture it by yourself. You can seek help by asking Government to provide funds (Start-up funds in India), collaboration with governmental or non-governmental agencies, various research companies, crowdfunding, bank loans and microloans.
8. LEGAL REQUIREMENTS/STEPS: Legal requirements are going to be a huddle as if you have decided to go either for licensing or for manufacturing of the product, then you have to sign many documents like:
9. Technology transfer or know-how or technical assistant agreement

• Technology transfer or know-how or technical assistant agreement
• Source code escrow agreements
• Design and development agreements
• Settlement agreements
• Franchise agreements
• Royalty agreements
• Marketing agreements
• Distribution and sale representation agreements
• Material transfer agreements

One mistake while signing these documents can lead to a loss of money which you have invested, so be careful.

9. CONFIDENTIALITY: It is the dominant step or at supreme priority as once your idea is leaked, then all the above-mentioned steps are of no use, as everybody knows now what you are planning. Maintaining the confidentiality of your concept or idea is very important. Only tell those people to whom you can trust or better to keep it as a trade secret so no one would be aware of that.

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The inventor or applicants in search of new and better technology which can transform the world are creating new products which have lead human race to make this world a place of heaven with facilities. Patents are playing a prominent and important role in the entire technology life cycle, from initial Research and development to the market introduction stages including licensing, where competitive technologies can be protected with patents and licensed out to third parties to expand financial opportunities are creating a competitive environment around the world. This competition leads to the new invention and by exploitation of the existing technologies, a new and better product with advanced technologies are coming, helping the dire needs of human.

A patent can also be licensed to another party (a licensee), which permits that party to manufacture, use and sell the invention. In return, the licensor usually receives royalty payments from the licensee. The company getting the license to manufacture or sell the product or technology will do their research on particular product and technology and a new product can be expected by investing in research and development. The huge potential in technologies and inventions lead to the in-depth analysis of patents with the prior art and then shaping the future.

The latest trends in the technologies which will lead to the competitiveness among the companies and to introduce the newer and better products in the markets The unavailability of such information is unfortunate from an analytical perspective, since that information could be used to identify the utility of patents and the networks of patent information diffusion and application.

An Example of how the patent has changed the way in which the telephone invented by Graham bell and then got patent in year 1876, and after that how the patent help other inventors or competitive companies or person to think to make it more efficient and to reach maximum people across the globe. The invention of telephone in 1876 leads to the introduction of candlestick in 1900 and then introduction of rotary in 1940 where the function was to rotate the dialand then release but soon this products and technology were lagging behind as the AT&T in 1963, introduces the push-button or touch tone which allowed phones to use a keypad to dial numbers and make phone calls and most important was that a person can make the long distance calls sitting in another region. After this, the answering machine on telephone made the telephone to record the calls. The beginning of 1980 saw the change in the technology and products which lead to the invention where the telephone were replaced by the portable phones and people across the world can call to other one. It was in the year 1984 when first ever mobile phone was launched by Motorola and it actually shapes the world with dire needs to introduce the technology of signals and communications within a phone. Since 1984, the patent tug-of-war between Nokia, Motorola, Samsung, Microsoft, and Apple was there. As having a patent means protection for twenty years and other cannot use without prior permission from the inventor or from the applicant. To use the technology, the license should be granted and after that companies can use the patent and information so as to remain alive in world.

The patented innovation has performance innovation which increases the performance of the addition of functions,   the durable innovation which decrease in damaging effects, an ergonomic innovation which means more ease of use, economic innovation which lowers the costs and made it easy for the end user to reach.

The actual use of Patents in technical, business and legal information for advancement of technology and products can be used for a number of different and broad purposes including;

• Patented and non-patented literature of prior art searches to establish a baseline for technical research and development activities;
• To identify the key patenting trends with respect to technology in the same discipline or in inter-discipline patents and innovation patterns.
• Once patents have expired, the information is freely available for others to use and by way of dissemination of the information the people may reach to a new technology or new products.
• As the information related to Patent is public, patent databases whether paid or non-paid constitute an important source of technological knowledge of patented as well as non-patented literature. At the same time, individual patents are often only the part of a larger technology solution and written in such a way that know-how and other specific knowledge are required to fully deploy the invention to an economically profitable extent with leave a loopholes for new technology to immerse within the sphere.
• Patent trends can be analyzed to identify Research and Development trends with know-how and to forecast innovations. The portfolio analysis which includes number of patent filed in a certain field, the geographicallocation of patent filings, the name of filing organizations, applicants and inventors, the referencing of patents with prior arts and the patent families around the world is used as indicators of innovation. Patent filings are often relevant to markets formation, patent analysis can generate valuable information about market development, such as which fields of technology current businesses intend to enter in the years ahead.
• Patenting of an invention is an indicator of RD&D progress and which will result into key technology which will emerge or be successful in the market.
• Competitive assessments of patent information in combination with information such as GDP and RD&D investments can indicate the technology competitiveness of a country or the economic performance of a company or country.
• Quality patents will ultimately help to increase the marketplace as well as economic growth and will help to enhance further technological innovation.

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It depends upon various factors on which an inventor can choose the best way for filing a patent application. Both provisional and complete patent applications have there on merits or demerits, which depends on the invention.

Provisional patent application

The Provisional Patent application allows you to file a patent application at the early stage of the invention. If the inventor is working on the initial or intermediate stage of the invention and still needs further experimentation then in this situation, it is better to file a provisional application.

So at this stage of filing a provisional patent application will give you the following benefits:-

• Do not need any formal format.
• Do not need any claim.
• Low filing fee.
• Less expensive.
• Secure priority date from the provisional filing date.
• Give 12 months time for filing complete patent specification.
• No complicated drafting skills needed, can be drafted by an inventor.

Also following are the demerits in filing a provisional patent application:-

• The Provisional patent application has to follow by complete patent specification so a provisional patent application can take a long time in granting a patent.
• Early publication in case of provisional patent application leads to loss of trade secret in the invention.
• Increase in total cost
• Inadequate disclosure risk involved

Complete patent application

Complete or non-provisional patent application allows you to file an application when the invention is in the end stage. when inventor think that there is no need for further experimentation then he/she can go for complete patent application filing.

The Provisional patent application must be followed by complete or non-provisional patent application within 12 months from the date of filing of a provisional patent application.

The Complete patent application involves following requirements:-

• Higher filing fees
• Complex format as per the Act and Rule.
• Claims and complete disclosure of the invention are mandatory.
• Not suitable for the inventors to draft, have to consult experts in this field.
• The patent office will examine the complete patent application.

So, from the above discussion, we can say that provisional or complete patent application should be the choice of the inventor. If the invention is in early stage and further experimentation is needed and if inventor is ready to take some risk then can go for provisional patent filing. But if the invention has high value in market and prototype is ready to make profitable investment in the market then it is better to go for complete patent application filing and should consult with the patent attorney for better preparation of a patent draft.

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Filing of these two patent applications depends upon various factors which we will discuss later.

So first let’s understand these two patent applications individually, on what situation these two patent application file.

Convention Application:-

If the request for a patent is claiming the priority date of the same or a large extent similar patent application filed in one or more of the Convention countries, then it is called Convention Application.

To claim convention status, an applicant has to file the application within twelve months from the basic application in Indian Patent Office (IPO).

PCT International Application:

PCT stands for Patent Cooperation Treaty which is an international patent law treaty that provides a unified patent application filing platform that protects the invention in all contracting states.

Under PCT filing an applicant can file a single international application for a patent in a receiving office to seek protection at the same time in all the contracting member countries.

It takes approximately 31 months for the applicant to enter into various countries from the date of filing of PCT application.

Comparison of PCT and Convention route:-

PCT application has high filing fee as a comparison to Convention filing and with the same amount applicant cane file more than two to three Convention applications. So, when an applicant has a tight budget and wants to secure patent protection in only a few countries, then it is better to go with Convention Application.

In comparison with Convention Application, PCT application takes time in grant so when an applicant wants to protect his/her invention in very less time than it is better to go for Convention Application.

The need for filing Convention Application arises when an applicant wants to secure his/her rights in non-PCT member countries like in Argentina, Pakistan, Taiwan, Kuwait, Jordan, Kuwait, Saudi Arabia, Ethiopia, Eritrea then can go only with direct filing.

So filing of Convention Application or PCT Application depends upon business strategies, and for fulfilling business strategies applicant generally adopt both filing options as per their need, so it all depend on, where applicant want to protect his/her rights. PCT provides a platform where with a single application applicant can file his/her application in all PCT member countries.

It is often seen that filing strategies are a very complex task so, it is better to consult with the patent attorney and try to communicate about commercial and business planning so that better protection can be made

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Before a patent application, it is important to conduct a patentability search in order to determine the invention is patentable or not. Patentability search includes an invention must be Novel, involve Inventive Step, Capable of being Industrial Application and should not be fall under non-patentable subject matter of Section-3 and Section-4 of Patents Act, 1970.

Filing of a patent application is a legal document to obtain a patent in India. A patent application has to be filed in a patent office as per the jurisdiction prescribed.

Who can apply for a patent?

Under Section-6 of the Patents Act, 1970, an application for an invention may be made by any of the following person;

• Any person claiming to be the true and first inventor of the invention;
• Any person being the assignee of the person claiming to be the true and first inventor;
• Legal representative of any deceased true and first inventor or his/her assignee;

Where to file a patent application (Jurisdiction)?

There are four Indian Patent Office (IPO) for the purpose of facilitating the registration of patents in India i.e. Kolkata, Delhi, Mumbai, Chennai.

Jurisdiction of the patent office is to be decided by the following criteria:

• Place of residence, domicile or business of the applicant.
• The place from where the invention actually originated.
• For a foreign applicant, the address for the service in India given by the applicant, when the applicant has no place or domicile in India.

Following are the four patent offices in India with territorial jurisdiction:-

Following types of Patent Applications can be filed:-

• Ordinary Application
• Convention Application
• PCT International Application
• PCT National Phase Application
• Application for Patent of Addition
• Divisional Application

 Patent Application can be filed by the following two ways in Indian Patent Office (IPO):-

• Offline Filing or Physical Filing
• E-Filing

After the identification of patent office, filing needs to be done:-

Forms required at the time of filing:-

• Form 1- Application for grant of patent
• Form-2-Provisional/Complete specification
• Form-3-Statement and Undertaking under Section-8(information pertaining to corresponding foreign applications)
• Form-5-Declaration as to Inventorship
• Form-26-Form for authorization of a patent agent/ or any person in a matter of proceeding under the Act.
• Form-28-To be submitted by a small entity/startup (in case of small entity/startup)

Documents required at the time of filing:-

• Declaration of Inventorship
• Statement and Undertaking
• Proof of right
• Authorization of patent agent
• Priority documents in case of Convention Application, PCT National Phase Application
• Permission from the National Biodiversity Authority if the application pertains to a biological material.

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Basically, Intellectual Property (IP) is divided into two categories:-

1. Industrial Property:-

Industrial Property again can be divided into two areas;

• One area can be distinctive signs for Trademarks (TM) that distinguish the goods or services of one enterprise or undertaking from those of other enterprises or undertakings.Geographical Indications (GI) that identify a good originating in a place where a given characteristics of the good is essentially attributable to its geographical origin.

• Other areas include Patents, Industrial Designs (IDs), Trade Secrets (TS) for innovation, design and the creation of technology.

1. Copyrights and Rights related to Copyrights deals with;

• Authors’ Literary works (e.g. novels, poems, plays, writings and books), Artistic works (e.g. paintings, sculptures, drawings and photographs), films, computer programs, musical compositions and architectural designs.
• Neighboring Rights include rights of performers (e.g. actors, singers and musicians), broadcasting organizations in their radio and television programs, and producers of phonograms in their recordings.

Intellectual Property Rights (IPR)

Deals with the legal rights granted to protect the creation of the intellect. These rights are same as of other property right. Rights allow creator or owner to get benefits by exploiting their creation.

IPR provides an exclusive right for the limited period of time to the individuals, enterprises and other entities to exclude others from unauthorized use, copy, sell, distribution or license.

Further Intellectual Property Rights are outlined in Article 27 of the Universal Declaration of Human Rights, which talk about the right to benefit from the protection of moral and material interests resulting from authorship of scientific, literary or artistic productions.

The Importance of Intellectual Property (IP) was first recognized in the Paris Convention for the protection of Industrial Property in year 1883 and the Berne Convention for the protection of Literary and Artistic Works in year 1886. Both treaties are administered by World Intellectual Property Organization (WIPO).

Types of Intellectual Property Rights (IPR) are:-

1. Patents
2. Trademarks
3. Copyright
4. Industrial Indications
5. Trade Secrets
6. Industrial Designs
7. Confidential Information
8. Layout- designs of integrated circuits

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The most challenging task for a startup is to survive in a hostile environment with scarce resources. While for larger businesses funds are available in plenty, it becomes a challenge for an entrepreneur to prioritize and allocate optimal funds to each and every aspect of the business. It is important to remember that not all forms of intellectual capital can be converted to commercially viable intellectual property that suits the needs of the business. With a limited amount of fund, it is an unintelligent exercise to convert all the intellectual capital into intellectual properties, as creating intellectual property is a costly affair.

Therefore, it is important to create a mechanism to separate the wheat from the chaff and create high quality intellectual properties which can maximize the business value. This is the juncture at which there is need of a robust intellectual property strategy.

Further, certain key aspects of integrating useful intellectual property practices in day to day business of an organization is essential for establishing an intellectual property driven culture and securing a high quality intellectual property portfolio.

Intellectual Property Strategy acts as a link between the management of intellectual property and the business objectives. A rational IP Strategy is tailored according to the specific needs and capabilities of the organization and lays down the roadmap which on execution by the management produces an effective and valuable Intellectual Property Portfolio.

Intellectual Property Strategy seeks to achieve the following objectives:-

• Creating a robust system for streamlining worthy ideas which can be converted to Intellectual Property
• Giving support to long-term product development goals, not just ad-hoc innovations
• Setting up a system for analyzing Intellectual Property held by others to gather competitive intelligence that provides an informed understanding about the competitor’s position and strategy and saving yourself from surprises like infringing upon the patents of a competitor
• Saving resources in filing for patents which are not inclined with business objectives
• Standing out amongst other startups and getting the attention of investors who understands and values the sophisticated manner in which Intellectual Property should be handled
• Create awareness amongst employees regarding intellectual property and how valuable IP can be lost if adequate standards of secrecy are not maintained

Key Considerations in formulating an Intellectual Property Strategy

While formulating an intellectual property strategy, any business and a start-up in particular must keep some considerations in mind before they put the draft on the table. The considerations are:-

• Identification of the organizations that are holding the fundamentally important patents in the technological space in which the business is operating.
• The pace at which innovation is taking place in the specific technological area and how are other organizations adapting to that.
• The chances of forming strategic alliance with other organizations to invest or license in the technological space.
• The internal culture of the organization and how to integrate intellectual property as an integral part of that culture.

Role of an intellectual property professional in formulating IP Strategy

Formulating an effective Intellectual Property Strategy requires the expert knowledge of important internal practices which successful corporations follow throughout the world. Further, these practices should be affordable and aligned with the business objectives of the organization which would help the organization in creating a valuable intellectual property portfolio.

It is recommended that for creating a robust intellectual property strategy, the business owner must take the help of an experienced attorney who can help in crafting the perfect strategy which is absolutely in line with the business objectives which the organization wishes to achieve.

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