Recent Trends in Handling Patent Related Issues – Protect Your Business

As we all know, IPR in totality is negative right and it’s supposed to be used fairly for building brand and credibility of the business. We expect businesses to operate ethically.

Due to various reasons, there is a delay in getting Patent Grant, which is advantageous as well as disadvantageous to the Business.

What are they:

  1. The Applicant can use Patent Pending status for an extended period,
  2. This Status can be used for Patentable as well as non-patentable invention,
  3. This can create an unnecessary dilemma in the minds of competitors about the validity of the patent, which they don’t check and instead prevent entering into that particular product domain,
  4. This “Patent Pending Status” is often confused by the Civil Force with copyright and sometimes premises of the opposite part are raided and ceased, which is not correct,
  5. This may lead to non-reparable defamation to the opposite party,
  6. This creates unnecessary fear amongst the competitors,
  7. Generally, courts do not admit infringement case when the patent application is still pending for the grant, but recently the courts have admitted cases because according to IPC, you should take action within stipulated time period from the date of offense, which is again advantageous to small business,
  8. The granted Patent application is enough to get immediate injunction relief sometimes.

Kindly, take appropriate action and prevent your self from unnecessary trouble.

Happing Inventing!!

 

Don’t Waste your Patent Applications

Patent applications are generally drafted to protect an invention, but still many times it happens that due to the unnecessary inclusion of contents, the patent application will be wasted and will remain a Paper Patent. Which means that the patent document will no longer be used effectively for preventing competition to your product.

These are the 10 things that the inventor can do to prevent deterioration of the patent document before filing:

  1. Do not ever try to draft patent application on your own, unless you have previous experience of drafting patent applications.
  2. A patent draft is not a technical document, but a techno-legal document. Which means, pure a technocrat or a lawyer without technical knowledge will not be a right person to writing patent drafts.
  3. Generally, inventors focus on advantages achieved by the invention rather than construction/method/process.  Objectives achieved by the inventions cannot be protected but only the construction/method/process can be. Therefore, advantages should not be the part of your claims but can be written separately at the end of the description and in the Objects of the inventions.
  4. Claims should be as short as possible. More you write in the claims, narrower is the scope of your patent. Most of the inventors try to include all elements in the claims, which is not a good. This may give competitors to do some small tweaking with your invention and get away from the scope of your claims, which you don’t want. If the claims are short and broad enough it will be difficult for your competitors to get away with small modifications and it’s true either way when the claims are lengthy and narrow. Getting a grant for a narrow claim is very easy, which is not useful. Writing the claims broad enough while filing and narrowing it down a bit at the time of examination is the best strategy.
  5. Enablement- This is one of the most important criteria for granting patent application. Enablement means, the claims should be enabled in the description by explaining best mode of working the invention, which can be construction or method or process which can be read by a normal person skilled in the art to reproduce the invention.
  6. Figures should be legible and according to the prescribed format by the respective patent office. The format is same across the globe but page setting is different in different offices. Improper figures may confuse the examiner and also the court in case there is an infringement suit filed by you in future. This may keep the opposite part and the decision making authority in dilemma.
  7. If you hire a patent consultant, you should trust him and let him do his part, your duty is to only explain what is your invention and wait for his version of patent specification with claims. You can check the documents with reference to the points mentioned above.
  8. Writing longer patent specification will add value to the patent is a wrong understanding. Shorter the patent application better it is during litigation. Many attorneys also have practices of writing a long patent application to please their clients, which is not advisable.
  9. Hire a Patent consultant/agent/attorney having experience of drafting patent applications from the same field as that of your invention. Generally, patent consultants may have experience of drafting from diversified fields of technology, which is common, just ask for few references before you hand over the work.
  10. Selecting a patent consultant/agent/attorney in itself is a big challenge. Many people have a mirage of expertise and some have real expertise. How to identify. Just check few patents published or ask him/her to work on a sample project in a short deadline of 15-20days, which will give you a fair idea of his/her expertise.

These are few things (not limited to) you can do to prevent wastage of your patent specification.

Foreign Companies having a higher edge over Indian MNC’s for Patents

Patent filing in India has substantially increased after 2005, which is when TRIPS (GATT) requirements were implemented and incorporated in Indian Patent ACT. The TRIPS agreement was signed in the year 1994. Before 2005, the Indian Patent was not equipped with advanced searching data base. Due to limitation and as the number of patent filed were less. TRIPS (GATT) was the culmination of a program of intense lobbying by the United States, supported by the European Union, Japan and other developed nations.

United States and European Union had long history of effective patent practices and litigation’s. Importance of patent documents can only be gauged at the time of Litigation. Due to frequent patent litigation’s, US and EP patent systems as well as US and EP companies were well mature in Patent matters before 1994. Which means they understood and were aware of strong Patent Practices, which includes searching and drafting of patent.

In India, after 2005 patent filing number was increased, mere filing of patents. The patent document also has to be strong with strong claims, which still is not understood by many MNC’s, it’s still the number game. The higher management, which was there before 2005 has still not changed.

As national phase filing with foreign priority contributes to 70-80% of total patent filing of Patent in India. The major business for well known IP firms, still on date is from filing national phase patent application, which is much larger than the number of patents drafted and filed by Indian national. Therefore, these firms also don’t have any motivation to upgrade their drafting standards, as it fetches less revenue. Most of the old law firms in India have expertise in litigation and in answering office actions. For drafting, they don’t need a resource or most of the times it’s outsourced.

Poor drafting of patent may have many negative impacts. In most of the cases, the claims drafted are very narrow, which makes its ineffective for preventing others from getting away by making small modifications. Which also means losing on licensing opportunity. In most of the company’s Patent Dept. has headed by R&D people with no Patent background. In most of cases, these people many not gauge quality of patent draft unless it is reviewed by an in-house IP expert. This makes it difficult to justify Returns on Investment (ROI). Still these companies fail to figure out what went wrong.

Where has all these foreign companies with Indian R&D centers have a capability to identity quality resources and firms irrespective of there year of establishment. This will definitely give them advantage, when litigation matters start rising. Which means knowledgeable resources from India will be put against Indian companies, making Foreign MNC’s position stronger in future.