Patent Business Lawyer in Asia

Patent Attorney practicing Patents, Corporate Law, Mergers and Acquisitions, Venture Financing, Startup Technology Law

Business productivity across nations has grown significantly due to ICT (Information and Communication technology) revolution. In essence, ICT represents intersection of multiple technologies in a manner to revolutionize the communication across the globe. With such rapid growth, ICT growth has resulted in commercial as well as legal implications.

ICT companies routinely face complex issues pertaining to corporate laws and intellectual property rights (IPR), specifically ICT patents. Since ICT patents are bound to play a crucial role in shaping up the digital future of the world, the patent expertise required to solve the ICT patent issues involves thorough understanding of communication technology, hardware devices and components, digital technology, Software as a Service (SaaS), eCommerce, Data Processing innovations, Education Technology (EdTech), Semiconductors, Antennas, Microprocessors, Microcontrollers, Financial Technology (FinTech) and Digital Content based innovations.

ICT Patents

As the citizens of the digital age, information technology has become an integral part of our lives. From catching up on the latest news to reading the new bestseller, there is hardly anything that can be done without the crutches of technology. In a nutshell, information technology is truly our second skin.

Information and Communication and Technology Patents

IT and ICT: Are they different?

While information technology (IT) refers to the whole gamut of computing systems aimed at the collection and dissemination of information, information and communication technology, commonly known as ICT, expands the scope of IT. In other words, one can say that ICT is an extension of  IT with its focus on ‘connective communicative technologies’[i].  This is best illustrated by the definition assigned by UNESCO. As per UNESCO, ICT can be defined as a “diverse set of technological tools and resources used to transmit, store, create, share or exchange information. These technological tools and resources include computers, the Internet (websites, blogs and emails), live broadcasting technologies (radio, television and webcasting), recorded broadcasting technologies (podcasting, audio and video players and storage devices) and telephony (fixed or mobile, satellite, video-conferencing, etc.).”[ii] Given the subtleties of differences between IT and ICT, it is not very surprising that these terms are often used interchangeably.

ICT: The Building Block of the ‘Innovation Economy’

Given the dynamic nature of ICT, constant innovation is the life blood to make the ICT industry more sustainable. The growth of the ICT industry in the past few years has led to the development of what is called as the ‘innovation economy’. The report published by the New South Wales, Australia Innovation and Productivity Council describes innovation economy as a system where any innovative “changes emerge at large scale and come to dominate or disrupt pre-existing sectors, and commerce or trade, to foster advanced and high-growth industries.”[iii] The report further states that the growth of internet and digital systems has led to a globalised innovation economy and the future of nations have recognized that the sustainable growth is heavily dependent on how innovative the said economy is.[iv] The European Commission has also in its report stated that a smart growth of the economy lies in strengthening the knowledge and innovation.[v]

The ‘Reward’ in Innovation Economy: Granting Protection through patents 

For an industry such as ICT that is entirely driven by innovation, providing adequate and appropriate incentives to the innovators becomes extremely essential. One of the ways in which incentives can be provided is by ensuring a strong framework to protect the interests of the innovators and allow them to reap the commercial benefits of their invention. This is where protection through patents comes in. Foremost, granting patent protection ensures that an inventor can control the commercial use of their invention[vi]. Secondly, patent protection also contributes to the development of the technology further as the revenues generated by the innovators are used towards extensive R&D.[vii]

Key Issues with Patent Protection in ICT Industry

Of the many concerns regarding patents awarded in the ICT industry, this article focuses on the two key issues of patent thickets and SEPs.

Patent Thickets:

The complex technological process and the surge in the volume of patent applications has led to a fragmentation of patent rights and led to patent thickets[viii]. The only formal definition of a patent thicket has been provided by Carl Shapiro in his paper[ix] and he has described patent thickets as a “dense web of overlapping intellectual property rights that a company must hack its way through in order to actually commercialize new technology”. The reason for the growth of patent thickets in the ICT industry is due to the simple reason that protections are required for several technologies which will be then utilized for the manufacture of a new product. Some commentators have argued that this leads to a large volume of patent thickets can ultimately lead to lesser innovation and higher costs for the R&D[x]. Patent thickets are also furthering competition in the industry as companies are vying to acquire and boast of the biggest patent portfolio.[xi]

Standard Essential Patents and FRAND:

Standard Essential Patents or SEPs refer to the patents which have been granted in order to implement a specific industry standard. Access to such patents is crucial in the ICT industry in order to further and promote innovation. Accordingly, the Standard Setting Organization of a nation have committed license the SEPs on such terms and conditions which are ‘Fair, Reasonable and Non-Discriminatory” (FRAND).[xii]

The FRAND terms ensures that the patent holders receive an appropriate reward for their investment in research and development and at the same time there is access to these specific patents.[xiii] Commentators have also noted that lack of a standard procedure to determine FRAND leads to disputes in cases of SEP licensing which in turn hampers the widespread use of the key standardised technologies and development of a true innovation economy.[xiv]

Conclusion

The surge of patenting in the ICT industry has led to a fragmentation of IP rights which has proved to be a major bottleneck of most national patenting system. Disputes and litigations arising out of the licensing terms of such patents is also another issue plaguing the industry. Reforms of the patenting system, keeping in mind the specific needs of the ICT industry, will require a true harmonization of the patenting rules.  A harmonized regime can prove to be a true game changer for the patents in ICT industry.

We provide comprehensive Patent and Trademark legal services via our global network to create valuable patent portfolios and resolve complex patent disputes by providing patent litigation support services.

Our team of advanced patent attorneys assists clients with patent searches, drafting patent applications, and patent (intellectual property) agreements, including licensing and non-disclosure agreements.

Advocate Rahul Dev is a Patent Attorney & International Business Lawyer practicing Technology, Intellectual Property & Corporate Laws. He is reachable at rd (at) patentbusinesslawyer (dot) com & @rdpatentlawyer on Twitter.

Quoted in and contributed to 50+ national & international publications (Bloomberg, FirstPost, SwissInfo, Outlook Money, Yahoo News, Times of India, Economic Times, Business Standard, Quartz, Global Legal Post, International Bar Association, LawAsia, BioSpectrum Asia, Digital News Asia, e27, Leaders Speak, Entrepreneur India, VCCircle, AutoTech).

Regularly invited to speak at international & national platforms (conferences, TV channels, seminars, corporate trainings, government workshops) on technology, patents, business strategy, legal developments, leadership & management.

Working closely with patent attorneys along with international law firms with significant experience with lawyers in Asia Pacific providing services to clients in US and Europe. Flagship services include international patent and trademark filingspatent services in India and global patent consulting services.

Global Blockchain Lawyers (www.GlobalBlockchainLawyers.com) is a digital platform to discuss legal issues, latest technology and legal developments, and applicable laws in the dynamic field of Digital Currency, Blockchain, Bitcoin, Cryptocurrency and raising capital through the sale of tokens or coins (ICO or Initial Coin Offerings).

Blockchain ecosystem in India is evolving at a rapid pace and a proactive legal approach is required by blockchain lawyers in India to understand the complex nature of applicable laws and regulations.

References:

[i] https://www.techwalla.com/articles/the-difference-between-it-ict

[ii]  http://uis.unesco.org/en/glossary.

[iii] Page 7, The Innovation Economy: Implications and imperatives for States and Regions, Professor Greg Clark, Dr. Tim Moonen and Jake Nunley (August 2018), available at: https://www.industry.nsw.gov.au/__data/assets/pdf_file/0007/163267/IPC-The-Innovation-Economy-2018.pdf

[iv] See generally:  The Innovation Economy: Implications and imperatives for States and Regions, Professor Greg Clark, Dr. Tim Moonen and Jake Nunley (August 2018), available at: https://www.industry.nsw.gov.au/__data/assets/pdf_file/0007/163267/IPC-The-Innovation-Economy-2018.pdf

[v] See generally   The Innovation Union Competitiveness Report, European Commission, 2013, available at https://ec.europa.eu/research/innovation-union/pdf/competitiveness_report_2013.pdf

[vi]See generally https://www.wipo.int/ipoutreach/en/ipday/2017/innovation_and_intellectual_property.html

[vii] ibid.

[viii] The Role of Patents in ICT: A Survey of the Literature, Stefano Comino et al. (2017) available at https://www.researchgate.net/publication/318040107_The_Role_of_Patents_in_Information_and_Communication_Technologies_ICTs_A_survey_of_the_Literature

[ix] Navigating the Patent Thicket: Cross Licenses, Patent Pools, and Standard-Setting, Carl Shapiro (2001), available at https://papers.ssrn.com/sol3/papers.cfm?abstract_id=273550

[x] Are ‘Patent Thickets’ Smothering Innovation?, Stefan Wagner, 2015, available at https://insights.som.yale.edu/insights/are-patent-thickets-smothering-innovation

[xi] Ibid. The author illustrates this with the example of Google launching its operating system. At that time, the patent portfolio of Google was relatively small. However, in order to be able to compete with industry giants like Apple, Google eventually acquired Motorola in order to gain access to its patent portfolio.

[xii] See footnote 8.

[xiii]Standard Essential Patents, Dipak Rao and Nishi Shabana, April 2016 available at http://www.mondaq.com/india/x/484412/Patent/Standard+Essential+Patents

[xiv] India as an Innovation Economy: The Role of IP and ICT, Indian Council for Research on International Economic Relations (ICRIER) and European Business and Technology Centre (EBTC), June 2018 available at http://www.indiaenvironmentportal.org.in/files/file/ICRIER-EBTC_White_paper_IP-ICT.pdf

 

EXPRESS AND EXPEDITE PATENT EXAMINATION IN INDIA

In India, an application for patent only goes through examination when a request for such examination is made to the Controller of Patents within a period of 48 months from the date of filing of that patent application, or from the date of priority of the first mentioned patent application, or within a span of 6 months from the date of filing of a further patent application such as a Divisional Application, whichever is later.

PCT National Phase Application in India

In case of a PCT (Patent Corporation Treaty) National phase application, an express request, along with a prescribed fee according to Rule 20(4)(ii) of the Patents Rules, 2003 (as amended), for examination can be made before the expiry of 31 months from the priority date of the said PCT national phase application. Once the express request has been made, the Controller is required to pass on that application to an examiner, and the examiner is then required to summarize and prepare an examination report within 1 month but not exceeding three months.

India’s federal Ministry of Commerce and Industry {Department of Industrial Policy and Promotion} in 2016 introduced new provisions under the Patents Rules, 2003, which permits a patent application to move out of turn for a faster prosecution. According to the new provisions the Indian Patent Office (IPO) are progressing applications out of turn for the examination if a request for expedited examination for an application along with the prescribed fees filed under Rule 24C of the Patents Rules, 2003 (as amended).

Expedited Patent Examination

However, the provision for expedited examination is only available to, startups and applicants who have designated “India” in their respective PCT applications, as an International Searching Authority (ISA) or International Preliminary Examining Authority (IPEA). Therefore, selecting India as ISA in a PCT application can be favorable for the Applicants to expedite grant process of corresponding PCT national phase Indian application. Under the expedited examination, the examiner is obligatory to give the First Examination Report (FER) within 1 month but not exceeding 2 months from the date of reference of the application to the Examiner for examination by the Controller, and further, the final disposal of the application is to be taken within 3 months of filing of response to the First Examination Report.

In India, patent offices initiated the expedited examination process in 2016 and, using this expedited examination process, many startups in India, including Optimus Pharma Pvt. Ltd., a Hyderabad based company, were able to get the patents granted within a record time of almost 10 months. The startup got a patent process of Apixaban, an anti-coagulant, in record time of almost 4 months under the expedited examination process. Such diminution in time will for sure help in cost efficiencies related to the management of a patent application up to their grant.

To provide the high demand of request for expedited examination of patent applications, IPO has also recently employed more than 250 patent examiners, affecting a substantial increase in the number of existing patent examiners. With this increase in the number of employed patent examiners, the period of ordinary patent examination is substantially declined to 2-3 years, which used to be almost 6-7 years and sometimes even more.

International Patent Applications filed in India under National Phase before the Indian Patent Office

A PCT international patent application under the Patent Cooperation Treaty can be filed before the Indian Patent Office before the expiry of 31 months from the priority date of the patent application. The complete patent specification should be filed along with Form 1.

In case, the language of the international patent application is in any other foreign language other than English, it has to be translated in English and the translated English copy has to be duly verified by the patent applicant or the person duly authorised by him that the contents thereof are correct and complete.

The patent translation of the international application should include the following details:

i. the patent description;
ii. the patent claims as filed;
iii. any text matter of the drawings;
iv. the patent abstract; and
v. in case the applicant has not elected India and if the claims have been amended under Article 19, then the amended claims together with any statement filed under the said Article;
vi. in case the patent applicant has elected India and any amendments to the description, the patent claims and text matter of the drawings that are annexed to the international preliminary examination report.

Advantage to Foreign Entities Filing Patents under PCT & entering India in National Phase

The patent attorney can file express patent examination request in Form 18 / Form-18A along with the fee specified in first schedule, at any time before thirty one months from the priority date.

Frequently Asked Questions by Inventors’ Worldwide

Our team of advanced patent attorneys assists clients with patent searches, drafting patent applications, and patent (intellectual property) agreements, including licensing and non-disclosure agreements.

Advocate Rahul Dev is a Patent Attorney & International Business Lawyer practicing Technology, Intellectual Property & Corporate Laws. He is reachable at rd (at) patentbusinesslawyer (dot) com & @rdpatentlawyer on Twitter.

Quoted in and contributed to 50+ national & international publications (Bloomberg, FirstPost, SwissInfo, Outlook Money, Yahoo News, Times of India, Economic Times, Business Standard, Quartz, Global Legal Post, International Bar Association, LawAsia, BioSpectrum Asia, Digital News Asia, e27, Leaders Speak, Entrepreneur India, VCCircle, AutoTech).

Regularly invited to speak at international & national platforms (conferences, TV channels, seminars, corporate trainings, government workshops) on technology, patents, business strategy, legal developments, leadership & management.

Working closely with patent attorneys along with international law firms with significant experience with lawyers in Asia Pacific providing services to clients in US and Europe. Flagship services include international patent and trademark filingspatent services in India and global patent consulting services.

Global Blockchain Lawyers (www.GlobalBlockchainLawyers.com) is a digital platform to discuss legal issues, latest technology and legal developments, and applicable laws in the dynamic field of Digital Currency, Blockchain, Bitcoin, Cryptocurrency and raising capital through the sale of tokens or coins (ICO or Initial Coin Offerings).

Blockchain ecosystem in India is evolving at a rapid pace and a proactive legal approach is required by blockchain lawyers in India to understand the complex nature of applicable laws and regulations.

Provisional Patent Filing

Provisional patent application is filed when the invention is not fully ready. A well drafted provisional patent provides patent pending rights to establish inventorship and patent ownership as patent office follows first to file approach to determine the true inventor of a patent covering new idea or product.

Formulating a sound patent strategy for your technology driven company is very important in the current era. Across the globe, the in-house patent counsels, heads of research departments, tech based startups and inventors file a preliminary patent application for their invention / idea before the patent office and is known as provisional patent application.

patent attorney for drafting patent application

How to Patent a Product?

It is extremely common for the inventors to ask this question about patenting a novel and inventive product. The first and foremost requirement for inventors while planning for patent process is to maintain proper records of their invention. In essence, laboratory notebooks, idea related documentation, technical specification and other details should be recorded with date, which can establish clear inventorship and ownership of the invention at a later date. It is common for the inventors to docket each and every step of the inventive process, inventive product and novel aspects of the invention, with a view to determine the patentability or patent eligibility of the invention. 

Subsequently, a detailed and thorough patent search is conducted to determine the relevant prior art, which can challenge the novelty and inventive step (non-obviousness) of the invention. While conducting a patent search, the patent searcher or the patent attorney conducts detailed patent search and analysis across various databases, such as, for example, Google Patents, USPTO Patent Database, EPO, UKIPO, JPO etc. Such patent search is conducted by forming multiple patent search strings and using these strings in different combinations by using boolean operators like AND, OR etc.

How much does it cost to file a patent?

The cost of filing a patent and obtaining patent rights depend upon multiple steps. The patent filing process begins by engaging a patent attorney, who charges a fee for conducting a patent search and drafting a patent application, which may be a provisional patent application (PPA) followed by a non-provisional patent application (NPA), or a NPA directly. The professional charges for patent searching and patent drafting by a competent patent attorney may be in the range of 2000$ to 8000$, or maybe upwards depending upon the jurisdiction of the patent and experience of the patent lawyer. Additional component to calculate the patent cost includes official filing fee, which again varies for each jurisdiction and is further dependent upon the category of the patent applicant, i.e. one or more natural person(s) or one or more legal entities. 

Once a patent application is filed, additional cost is required to maintain the pending patent application, and once the patent office issues a patent office action or a patent examination report, further cost is incurred for responding to such objections by way of patent office action response. Thereafter, once the patent prosecution process is complete, patent renewal fee is required to be paid at regular intervals during the term of the patent. Hence, as may be seen, the total cost of a patent depends upon multiple steps, subject to the jurisdiction and requirements specified by the local patent office.

How do you patent an idea or a product?

To protect a new idea or a new product, a well crafted patent strategy is required that ensures that the new idea or the new product is not infringed by third parties. One important point to be considered is that patent laws across various countries or jurisdictions require that a patent application must be filed before disclosing or discussing the idea publicly. This is so because once a new idea is shared publicly without filing a patent application, it becomes public knowledge and anyone is free to execute the idea.

How do I turn my idea into a product?

Successful conversion of new ideas into products requires detailed market research, development of prototypes and appropriate patent marketing. Operationally, patent licensing opportunities can be determined by conducting thorough studies about market potential, financial and technical due diligence, regulatory analysis and SWOT analysis.

What is a provisional patent application?

The provisional patent application is a legal document filed before the patent office (For example,  United States Patent and Trademark Office (USPTO), Indian Patent Office (IPO) or any other patent office.) If a US national is filing patent before the USPTO, the patent application would be known as U.S. national patent application having validity in U.S. alone. Even though, formal set of patent claims are not mandatory in the provisional patent filing we recommend our clients to write a broad set of patent claims in the provisional patent application

However, in order to obtain a granted patent, the patent applicant must fully and particularly describe the invention  in detail and describe the best mode in a complete specification. It is important to remember the deadline for filing Non-provisional patent application. Once the Non-provisional patent application in filed in the home country, one can file international PCT patent before the WIPO.

Missing the deadline for patent filing of complete / non-provisional patent application [12 months from filing provisional patent application] will cause irreparable loss and the provisional application will simply expire.

To read more articles related to Provisional patent applications: click here

Frequently Asked Questions by Inventors

Priority date implies the earliest date from which the patent rights begin, and while determining the term of a patent or during patent infringement lawsuits, the priority date plays a crucial role.

It is common for inventors to develop prototypes and pen down ideas during early stages before finalising the exact features of the invention. To ensure appropriate protection during this period, and to establish ownership by creating patent pending rights, it is important for the inventors to file a provisional patent application.

Provisional Patent Application

A provisional application is a summary of the invention and is filed to protect the invention at its early stage.

Since 8th June, 1995, U.S Patent and Trademark Office (USPTO) has provided inventors the choice of filing a provisional application for patent which was intended to provide a lower-cost prior patent filing within the United States and to administer U.S. applicants equality with foreign applicants under the General Agreement on Tariffs and Trade (GATT) Uruguay Round Agreements.

If an applicant has filed the a Provisional Patent Application for grant of patent he/she has to file the Non-Provisional/Complete Patent Application filed under U.S. Code § 111 of Title 35, within a period of 12 months from the date of filing of the provisional application or else the application will be considered to be abandoned. The pendency period of 12 months cannot be extended, but if the Non-Provisional/Complete Patent Application is filed after 14 months of filing the Provisional Patent Application, such application may be accepted by filing a grantable petition (including a statement that the delay in filing the Non-Provisional/Complete Patent Application was not deliberate and the required petition fee has been paid) to reinstate the advantages under 37 CFR (Code of Federal Regulations) 1.78.

Non-Provisional/Complete Patents v. Provisional Patents

> Non-Provisional/Complete Patents are most undeviating and therefore, the shortest path to grant of patents, whereas, Provisional Patents have a much lower cost of applying as compared to Non-Provisional/Complete Patents.

> A Non-Provisional/Complete Patents is good for inventions that have a short half life much like electronics and software which are about to be launched into the market, whereas, Provisional Patents are good for inventions that take time for R&D and thus needs to be kept under wraps by getting an additional year for filing for grant of the patent with complete specifications of the patent.

> In case the applicant wants to make additions after filling for Non-Provisional/Complete Patents, he/she has to do it by re-filing those addition inventions, whereas in Provisional Patents, the applicant has one whole year to make all the changes he/she wants in the patent and it also benefits the applicant by addition one extra year to the patent life (i.e., from 20 years to 21 years).

> One can only file his/her patents application as Non-Provisional/Complete Patent, in one time, whereas multiple Provisional Patent Applications may be filed by the applicant and be considered as one at the end of one year.

Limitation of Provisional Patent Applications

With some benefits, the Provisional Patents also attract certain limitations which are as follows:

1) The Provisional Patents Applications cost more than Complete Applications since the effort put in is double.

2) Even though the patent specifications will be kept from public record, the invention will has to be disclosed.

3) In case the applicant misses the one year deadline of filing the Non-Provisional/Complete Patent Application, the application will be considered as abandoned.

Filing of Provisional Patents Applications

A filing date will be granted to a Provisional Patent Application only when it contains a written description of the invention, fulfilling with all requirements of U.S. Code § 112(a) of Title 35.

The USPTO provides the following two documents for filing of Provisional Patent Application which have to be filled by either the applicant himself or his/her legal representative:

* Provisional Cover Sheet identifying;

* the application as a provisional application for patent;

* the name(s) of all inventors;

* inventor residence(s);

* title of the invention;

* name and registration number of attorney or agent and docket number (if applicable);

* correspondence address; and

* any U.S. Government agency that has a property interest in the application.

* Fee Transmittal Form as set forth in 37 CFR (Code of Federal Regulations) 1.16(d)

The provisional application (written description and drawings), filing fee and cover sheet can be filed electronically using EFS-Web or filed by mail.

Electronically Using EFS-Web: The provisional application can be filed electronically only if EFS-Web is used. EFS-Web permits patent applications, together with provisional applications, to be filed safely via the Internet. Applicants prepare documents in Portable Document Format (PDF), attach the documents, authenticate that the PDF documents will be well-matched with USPTO internal automated information systems, submit the documents, and pay fees with real-time payment processing. When fillable EFS-Web forms are used, the data entered into the forms is robotically loaded into USPTO information systems. Further information on EFS-Web is available here.

By Mail: The provisional application and filing fee can be mailed to:

Commissioner for Patents

P.O. Box 1450

Alexandria, VA 22313-145

USPTO Patent Filing

What information to include in a provisional patent application while filing it before US patent office USPTO ?

Many a times, our patent clients ask about what all information we should provide which can be included in the provisional patent application. However,  it is a known fact that you get protection for matter you disclose in the patent application. Having said that, it is important to include as much technical information as possible in the provisional patent disclosure.

The provisional patent application should describe the nature of invention & contain the description of essential elements of the invention. A provisional patent application with detailed explanation provides a good skeleton for the patent attorney to convert it into a utility / non-provisional patent application.

For example, a start-up research company is in phase I for making a new antibody to a particular antigen, but lack finances to actually create the antibody itself. Generally, in such a scenario the start-up research company will pitch the idea to the venture capital entities in exchange for the monetary funds needed to create the antibody. It is advisable for the start-up research company to first file a provisional patent application that includes details about the particular antigen and novel description for the same. More details of the main elements should be included in the provisional patent application.

Advantages for Filing Provisional Patent Application

As a patent centric firm managed by highly experienced patent attorneys and patent lawyers, we retrieve and provide clients with strong patentability analysis reports in addition to provisional patent application drafting, which can save time and money during the entire patent process. Such thorough patent research is aligned with the business strategy and corporate evaluations of the clients, so that potentially strong patent applications are filed to create a valuable patent portfolio, thereby adding to the intangible assets owned by the clients.

Advocate Rahul Dev is a Patent Attorney & International Business Lawyer practicing Technology, Intellectual Property & Corporate Laws. He is reachable at rd (at) patentbusinesslawyer (dot) com & @rdpatentlawyer on Twitter

Quoted in and contributed to 50+ national & international publications (Bloomberg, FirstPost, SwissInfo, Outlook Money, Yahoo News, Times of India, Economic Times, Business Standard, Quartz, Global Legal Post, International Bar Association, LawAsia, BioSpectrum Asia, Digital News Asia, e27, Leaders Speak, Entrepreneur India, VCCircle, AutoTech)

Regularly invited to speak at international & national platforms (conferences, TV channels, seminars, corporate trainings, government workshops) on technology, patents, business strategy, legal developments, leadership & management

Working closely with patent attorneys along with international law firms with significant experience with lawyers in Asia Pacific providing services to clients in US and Europe. Flagship services include international patent and trademark filingspatent services in India and global patent consulting services.

Global Blockchain Lawyers (www.GlobalBlockchainLawyers.com) is a digital platform to discuss legal issues, latest technology and legal developments, and applicable laws in the dynamic field of Digital Currency, Blockchain, Bitcoin, Cryptocurrency and raising capital through the sale of tokens or coins (ICO or Initial Coin Offerings).

Blockchain ecosystem in India is evolving at a rapid pace and a proactive legal approach is required by blockchain lawyers in India to understand the complex nature of applicable laws and regulations.

Patent Office Action

Once a patent application is filed with the patent office, patent applicants are required to submit request for early publication of patent application in addition to request for patent examination. Once a patent examination request is filed, the patent office examines the patent application in accordance with patent procedure and provides a patent examination report (patent office action) to the patent applicants.

patent filing in india pct national phase WIPO application

Indian Patent Office Procedure

As per the procedure followed by the Indian Patent Office, the patent specification filed by the patent applicant includes invention details and patent claims. As it is well known, the most important aspect of the patent application are the patent claims because the patent claims define the scope of the invention.

Patent Examination in India

Generally, the patent examiner issues an office action setting forth the basis for rejecting one or more patent claims with respect to prior art / novelty patent search conducted by the patent examiner. The patent applicant responds with amendments in patent claims/ patent drawings and/or arguments, and the examiner issues a next office action, etc. This process continues until the patent application is allowed, abandoned, or appealed.

First Examination Report – FER

In accordance with applicable laws and rules, patent applicants are required to submit a detailed response the patent examination report (FER or first examination report) within 6 months of issuance of the first examination report or the office action. A general strategy that can be followed to draft office action response includes preparing submissions for each of the objections raised by the patent examiner. For example, for objections relating to novelty and inventive step (non-obviousness), one of the strategies can be to amend the patent claims by limiting the scope of originally filed claims. This can be done in consultation with a patent attorney, whereby, certain features from the dependent claims (or detailed description) can be added to the independent claims to ensure that the amended claims are novel and inventive as compared to the prior arts (patent and non-patent literature) cited by the patent examiner. Therefore, chances of overcoming such objections get better when novel aspects of the invention are combined with the independent claims.

Patentability of Invention

When a patent application is examined by the patent office, the primary goal of the patent examiner is to determine the patentability of the invention as defined by the patent claims, as described in detail by the patent description, and as illustrated by way of patent drawings. The intention is to ensure that the technology covered by the patent application is new and the subject matter of the patent description and patents claims was not disclosed in public domain before the date of filing of patent application, or before the first priority date of the patent application.

Definition of Invention

In accordance with the Indian Patents Act, 1970, definition of invention and inventive step include:

Section 2(1) (j) “invention” means a new product or process involving an inventive step and capable of industrial application;

Section 2(1) (ja) “inventive step” means a feature of an invention that involves technical advance as compared to the existing knowledge or having economic significance or both and that makes the invention not obvious to a person skilled in the art;

In essence, the inventive step of the technology to be patented should illustrate technical advancement or economic significance in the subject matter of the patent application as compared to the existing knowledge which is already known to a person skilled in the similar domain.

View of Indian Courts on Determining Inventive Step

In Biswanath Prasad Radhey Shyam vs Hindustan Metal Industries Ltd, it was held by the Indian Supreme court that “The expression” does not involve any “inventive step” and its equivalent word “obvious”, have acquired special significance in the terminology of Patent Law. The ‘obviousness’ has to be strictly and objectively judged. For this determination, several forms of the question have been suggested. Was it for Practical Purposes obvious to a skilled worker, in the field concerned, in the state of knowledge existing at the date of the patent to be found in the literature then available to him, that he would or should make the invention the subject of the claim concerned?

To determine Invention Step, the following points should be taken into consideration:

(a) Identify the “person skilled in the art”, i.e. a competent craftsman in same domain or engineer as distinguished from a mere artisan

(b) Identify the relevant common general knowledge of that person at the priority date of filing the patent application;

(c) Identify the inventive concept of the patent claim in question;

(d) Identify what, if any, differences exist between the matter cited as forming part of the “state of the art” of the technology and the inventive concept of the patent claims;

Industrial Applicability of the Invention

The invention as claimed in patent specification should meet the criteria that the invention can be made or used in some kind of industry. The word “Industry” broadly refers to having any useful and practical activity while excluding intellectual or aesthetic activity.

Under section 2(1)(ac) of Indian Patents Act, “capable of industrial application”, in relation to an invention, means that the invention is capable of being made or used in an industry.

However, patent claims relating to “Method of playing games” and “computer programming languages” are not considered to be industrially applicable. The detailed description of the patent specification must disclose a practical application and industrial use for the claimed invention wherein a concrete benefit must be derivable directly from the description coupled with common general knowledge.

Therefore, while drafting patent application, writing the advantages of the invention in the last few paragraphs will be helpful to illustrate the industrial applicability of the invention.

Sufficiency of Disclosure

While drafting a patent application, writing the detailed description of the patent application includes explaining each and every element of the patent claims. One should note that the patent examiner takes into consideration the whole patent document which is read with patent claims and drawings (if any) to determine patentability of the invention.

‘What’ is the invention and ‘How to perform it’ requirement should be taken care off before submitting the Patent Application before the Indian Patent Office. The complete specification should therefore disclose the invention completely to meet the requirement of the Patents Act and should also enable a person skilled in the art to work the invention without any assistance of the patentee or any further experimentation.

What is the Invention: If the patent application relates to apparatus/system/device in a computer related invention (hardware based inventions), each and every feature of the invention should be described with drawings. However, if the said system/device/apparatus patent claims are worded in such a way that they merely and only comprise of a memory which stores instructions to execute the previously claimed method and a processor to execute these instructions, then this set of claims claiming a system/device /apparatus may be deemed as conventional and may not fulfil the eligibility criteria of patentability.

Law Office of Rahul Dev, Patent Attorneys and Technology Corporate Lawyers, represents a law firm headquartered in Gurgaon, Haryana, with associate offices in New Delhi, in the proximity of the Indian Patent and Trademark Office. We are primarily focused on intellectual property law and provide patent services and patent consultation for large, multi-national corporations, universities, middle-market and emerging market companies, and startups and entrepreneurs.

Patent Prosecution in India

We handle patent prosecution in India by facilitating the interaction between inventors, patent applicants and Indian patent office, which usually includes highly complex technical and legal issues. Our team has significant experience in handling the entire patent process in India and we possess strong understanding of the relevant procedures and the potential pitfalls.

We have successfully advised our clients to obtain patent protection in India and across international jurisdictions (US, Europe, UK, Singapore, Malaysia) for a wide scale of technologies, and our patent attorneys possess years of experience in patent research, patent prior art searches, patentability analysis, patent analytics, patent application drafting, patent claim drafting, patent prosecution, , licensing, and other intellectual property-related issues.

Software Patent FAQs:

How to Patent an Idea

General Patent FAQs:

Advocate Rahul Dev is a Patent Attorney & International Business Lawyerpracticing Technology, Intellectual Property & Corporate Laws. He is reachable at rd (at) patentbusinesslawyer (dot) com & @rdpatentlawyeron Twitter

Quoted in and contributed to 50+ national & international publications(Bloomberg, FirstPost, SwissInfo, Outlook Money, Yahoo News, Times of India, Economic Times, Business Standard, Quartz, Global Legal Post, International Bar Association, LawAsia, BioSpectrum Asia, Digital News Asia, e27, Leaders Speak, Entrepreneur India, VCCircle, AutoTech)

Regularly invited to speak at international & national platforms (conferences, TV channels, seminars, corporate trainings, government workshops) on technology, patents, business strategy, legal developments, leadership & management

Working closely with patent attorneys along with international law firmswith significant experience with lawyers in Asia Pacific providing services to clients in US and Europe. Flagship services include international patent and trademark filingspatent services in India and global patent consulting services.

Law office of Rahul Dev is a niche technology and research based law firm focusing on next generation business and legal issues faced in India and outside India during international business and cross-border technology transactions. We assist our clients in close collaboration with our associates and counsels within India and outside by providing custom engagement models to address our client’s needs.

Practice areas include drafting and filing patent applications, patent prior art searches, patent prosecution, patent filing in India, PCT national phase entry in India, PCT international applications with WIPO, freedom to operate searches, patentability analysis and patent strategy to create a valuable patent portfolio.

Patent attorney Rahul Dev works with clients providing expert legal services in the field of innovative pharmaceutical products, branded drugs, generic drugs, molecular biology, immunology, cell biology, regenerative medicine including ESCs, iPSCs, pSCs, diagnostics, therapeutics, theranostics, drug delivery systems, host-vector systems, high throughput screening, bioinformatics, diagnostic imaging, ancillary services (PET, CT, MRI, ultrasound, greenlight, lithotripsy, radiation therapy, cyber-knife, nuclear camera, clinical lab, pathology, physical therapy and dispensing prescriptions).

Patent attorney and technology lawyer Rahul Dev works closely with USPTO licensed patent attorneys to assist clients with patent reexaminations, patent prosecution, drafting USPTO office action responses, patent infringement litigation, patent claim mapping and patent licensing. For international patent filings, we have an established network of global patent attorneys to provide reliable and cost effective services to our clients.

Journey of my blog from LinkedIn to 30+ news portals

Flagship Speaking Engagements

Patent Forum (Munich, Germany) | News Channels | Ministry of Corporate Affairs | ASSOCHAM | FICCI | Brand Licensing India | BioEnergy International

Featured Publications

Economic Times | The Hindu | BioSpectrum | International Bar Association | LawAsia | SwissInfo | Global Legal Post | HT Live Mint | Outlook Money

Technology Business Corporate Lawyers

International Corporate Lawyers and Patent Attorneys

Patent Attorney and Corporate Lawyer in Asia

Contact at rd (at) patentbusinesslawyer (dot) com

Strong expertise in resolving business and personal disputes via mediation, negotiation and out of court settlements

Managing full practice law firm in Delhi and Gurgaon with team of legal experts — Civil and Criminal, Cyber Law Issues, Digital Business Disputes, Social Media Defamation, Personal, Property and Matrimonial Problems, Contracts and Agreements

Technology Savvy Advocates, Patent Attorneys & Corporate Lawyers with 11+ years of experience in Asia Pacific, US & Europe

Experts in Litigation, Patent Protection, Licensing & Enforcement, Cross-border Mergers & Acquisitions, Joint Ventures, Foreign Direct Investment & Tech Transactions in South East Asia covering consulting for global patent Attorneys in executing:

Patent drafting & filing for B2C & B2B digital products

Protection of Mobile App’s Intellectual Property via Patents, Copyrights, Website Terms & Vendor Contracts

Wearable device’s patent portfolio protecting hardware, dashboard, app & data analytics software

Medical device patentability analysis, prior art search, provisional & complete patent drafting, patent claims & patent drawings, patent filing in India, PCT, USPTO & EPO, responding to USPTO, UKIPO, MyIPO (Malaysia) & SIPO (Singapore) office actions

Patent Landscape & Patentability Studies for innovations in Artificial Intelligence (AI & Chat bots), Internet of Things (IoT), Wearables, Driverless Cars, Virtual & Augmented Reality, 3D Printing, Drones, Mobile Payments (Digital Wallet) & FinTech

Assisting Clients with Complex Patent Issues: Patent Searches, Patent Drafting, Patent Filing, Patent Office Examinations, Patent Prosecution, Patent Due Diligence & Patent Litigation Strategy

Patent Strategy for International Patents, USPTO Filings, Drafting Office Action Response, Patent Reexaminations & Reissue Proceedings, Appeals to PTAB, Patent Office Trials, Inter Partes Review, Post-grant Review, Covered Business Method Patents, Interferences, Derivations & Appeals of PTAB Trial Decisions

European Patent Practice, Patent Oppositions, Appeals, EPO Third Party Observations, Central Limitation and Revocation, Supplementary Protection Certificates (SPC) & United Kingdom (UK) Patent Practice Advisory

Specialties: Litigation, Patent Litigation, Patent Infringement, Corporate & IP Strategy, Startups: Incorporation, Funding, Brand Management, Contracts & Agreements, Legal Research, SWOT, Corporate Governance, Due-diligence, Mergers & Acquisitions, Antitrust & Competition Laws, Regulatory Affairs, Freedom-to-Operate, Patent Drafting, Claim Drafting, Patent Searches, Office Actions Response, USPTO Patent appeal briefs, Patent Invalidation Analysis, Patent Opposition, Product-Claim Mapping, Patent Enforcement

Global Blockchain Lawyers (www.GlobalBlockchainLawyers.com) is a digital platform to discuss legal issues, latest technology and legal developments, and applicable laws in the dynamic field of Digital Currency, Blockchain, Bitcoin, Cryptocurrency and raising capital through the sale of tokens or coins (ICO or Initial Coin Offerings).

Blockchain ecosystem in India is evolving at a rapid pace and a proactive legal approach is required by blockchain lawyers in India to understand the complex nature of applicable laws and regulations.

International Trademark Filing in India – The Madrid Protocol

  1. India adopted Madrid Protocol in 2013
  2. The Madrid Protocol is a WIPO administered treaty to simplify the process of filing trademarks across multiple jurisdictions
  3. Trademark applications can be filed in India under the Madrid Protocol when India is either the origin country or the designated country
  4. If India is the origin country, the Indian Trademarks Registry (TMR) will receive the applications for international registrations of trademark
  5. If India is the designated country, the international trademark application is filed with WIPO selecting India as the designated country

trademark attorney lawyer law firm in india

Replying to Provisional refusal in India under Madrid Protocol

International Trademarks and Brand Protection

Provisional refusal in India under Madrid Protocol Services

Provisional refusal in India under Madrid Protocol: Although, it is not possible to register a particular brand as “International Trademark”, the Madrid Protocol system provides an easy solution to the companies and individuals if the country in which they want to register their trademark has signed up the Madrid Protocol.

India signed up for Madrid Protocol With WIPO in the year 2013. Madrid System, including Madrid Agreement and Protocol relating to Madrid Agreement, is an international treaty to facilitate international registration of trademarks and management of trademark applications worldwide.

How Madrid Protocol Trademark System Works in Favour of  Brand & Trademark Owners

It can be used to file and register the trademark in the home country, for example, resident of India will file trademark in India first and subsequently be able to secure wider trademark protection globally. Once the Indian trademark application is filed before the Indian Trademark Office, one can extend the trademark registration in other countries by using a single trademark application. The details of the single trademark application should include desired countries in which you want to seek trademark protection.

Overall costs for filing trademark under Madrid protocol will depend on the applicable official government fees of the designated countries in which you are applying to register your trademark brand, and the number of trademark classes.

Filing International Trademark Applications Under Madrid Protocol With WIPO – Procedure, Cost and Requirements for Indian Trademarks

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Madrid Agreement and Madrid Protocol – Governing Treaties

The treaties provide an easy and cost effective way of filing international trademarks. Once the trademarks are registered by respective designated offices, the Madrid protocol further provides simple procedures to manage international registrations.

Provisional refusal in India under Madrid Protocol: Office of Origin

The trademark office that receives application under Madrid protocol is known as office of origin.

Provisional refusal in India under Madrid Protocol: Designated Offices

The trademark applicant can designate one or more trademark offices as contracting party, which is then notified about filing of trademark application under Madrid protocol by WIPO.

Provisional refusal in India under Madrid Protocol: Madrid Protocol Application – General Procedure

Usually, once the international trademark application is filed with designation of countries with the office of origin, the contents of said application are verified by said office of origin. Once done, the application is forwarded to WIPO, which is then published by WIPO and subsequently, WIPO notifies all the designated offices. Thereafter, each designated office examines the trademark application as per respective trademark laws, rules and procedures.

Madrid Trademark Application in India

The Indian Trademark Office is authorized to receive an international trademark application under Madrid Protocol.

Madrid Trademark Application in India – Requirements

The basic criteria to file Madrid Trademark Application in India requires applicant to be eligible to file said trademark application, which essentially requires the applicant to be an Indian national or having a place of business in India. In addition, the Indian trademark office requires an existing trademark application, known as the basic application, and designation of one or more countries wherein international trademark protection is required.

Documents Required for Filing Trademarks in India

The Indian Trademark Office requires an international trademark application under Madrid Protocol to be accompanied by an application form, power of attorney, payment of handling fee, and payment of international designation fee (in Swiss Francs) payable to WIPO.

Madrid Trademark Application – Role of Office of Origin

During the process of receiving an application for international trademark registration under Madrid System, the office of origin plays an important role. After receiving the application, the office of origin verifies the contents, certifies the application and forwards it to WIPO for publication and notification to designated offices. Subsequently, the office of origin receives details of irregularities in the application, if any, and further communicates with WIPO regarding status of basic trademark application.

Responding to Provisional Refusal from the Indian Trademark Office under Madrid Protocol

The Indian Trademark Office examines every international trademark registration designating India received from the International Bureau of WIPO. An International Registration Designating India (IRDI) number is allotted by the Trade Marks Registry to every International Registration in which India has been designated. The trademark examiner examines the Brand trademark on the ground of non-distinctiveness and similarities to registered trademarks and pending trademarks before the Indian Trademark Registry.

While examining the trademark application, if there is any objection for protection of such trademark registration in India, a provisional refusal is notified to the International Bureau of WIPO within 18 months from the date the international registration was notified to India.

General objections raised by Trademark Registry in India | Trademark Objections under Provisional Refusal In India

9(1){a) under Indian Trademark Law- The objection is raised under S 9(1) (a) of the Trade Marks Act 1999, as the mark is non-distinctive and as such it is not capable of distinguishing the services of one person from those of others.,
11(1) under Indian Trademark Law – The objection is raised under S 11 (1) of the Trade Marks Act, 1999, as the mark is identical with or similar to earlier marks in respect of identical or similar description of services and because of such identity or similarity there exists a likelihood of confusion on the part of the public.

The provisional refusal includes an Examination Report containing objections. The International Bureau records the provisional refusal in the international register and provides the details of such provisional refusal to the trademark applicant of the international registration.

The provisional refusal is recorded in the International Register, together with an indication of the date on which the notification was sent. The provisional refusal is also published in the WIPO Gazette, with an indication as to whether the refusal is total (i.e. relates to all the goods and services covered by the designation) or partial (i.e., relates to only some of those goods and and services covered)

Responding to Provisional Refusal Issued by the Indian Trademark Office under the Madrid Protocol

The trademark applicant can respond to the provisional refusal by engaging a trademark agent or an  Indian trademark attorney having address in India by executing a Power of Attorney in the favour of the agent/attorney.

Follow the Deadline Dates | Trademark Response Deadline to Respond to the Objections:

The normal deadline to respond to trademark objections raised by the Indian Trademark Office is 1 month from the date of receipt of the provisional refusal notification by the trademark applicant. Technically, once the trademark applicant receives the provisional refusal notification from the International Bureau of WIPO the last date to respond to provisional refusal can be calculated.

Note:  If you have opted to receive notifications from the International Bureau of WIPO by paper mail, it is advisable to retain the postal receipt. So, if there is a delay by the post the date of receipt of the provisional refusal from WIPO, the postal receipt will act as documentary evidence.

What to do if you miss the deadline / extension of timeline to respond to trademark objections raised by the Indian Trademark Office?

The Indian trademark attorney can file an application for extension of time and the same is at the discretion of the trademark office. The Trade Marks Registry (TMR) office of India then considers the response of the trademark applicant of the international registration and may either confirm the refusal or move for advertisement of the international registration in the Trade Marks Journal.

Amending detailed description of different trademark goods/services:

Any amendments in goods/services in respect of the Indian trademark application needs to be made only at the International Bureau of WIPO and the same needs to be notified to the Indian Trademark Office by the International Bureau of WIPO.

Relevant legal provisions in Indian Trademark Law for International Trademark Applications Filed under Madrid Protocol

A new interpretation/definition clause has been inserted in accordance with the Madrid Protocol in Indian Trademark Law (S.36B read with Rule 67A).

Applicant or registered proprietor of trademark under section 18 or under section 23 (‘basic application’ or ‘basic registration’) of the Act may make an international application in Form MM2 (E) along with prescribed fees in Swiss francs.

The Registrar shall certify & forward it to the International Bureau within two months from the date of receipt of the said application & for this, a fee of INR 2000 is payable to the Registrar towards handling charges (S. 36D read with Rule 67E & 67F).

A separate record for international registration where India has been designated shall be kept by the Registrar called the ‘Record of Particulars of International Registration (S. 36E read with Rule 67G).

For a period of five years from the date of an international registration, if the initial basic national application/registration ceases to have effect, through a withdrawal, refusal, cancellation following a decision of the Office of origin, or Court, or voluntary cancellation, or non-renewal, the international registration will no longer be protected. After the expiry of a period of five years from the date of international registration, the registration becomes independent of the basic registration or basic application (S.36D & S.36E).
Provided that, where an appeal is made against the decision of registration nd an action requesting withdrawal of application or an opposition to the application has been initiated before the expiry of the period of five years of an international registration, any final decision resulting in withdrawal, cancellation, expiration or refusal shall be deemed to have taken place before the expiry of five years of the international registration. (Provision of Sub-section 5 of Section 36D).
The Registrar shall examine the application within 2 months where India has been designated. If grounds for objection are found during the examination by the Registrar, or if an opposition is filed, the Registrar can declare a provisional refusal (within 18 months of receipt of the application’s notification from the International Bureau for India) for protection of the mark in that member country (S.36E read with Rule 67H).

The international registration of a trade mark at the International Bureau shall be for a period of ten years and may be renewed for a period of ten years from the expiry of the preceding period and subject to payment of a surcharge prescribed by the rules, a grace period of six months shall be allowed for renewal of the international registration (s. 36G).

Advocate Rahul Dev is a Patent Attorney & International Business Lawyerpracticing Technology, Intellectual Property & Corporate Laws. He is reachable at rd (at) patentbusinesslawyer (dot) com & @rdpatentlawyer on Twitter

Quoted in and contributed to 50+ national & international publications(Bloomberg, FirstPost, SwissInfo, Outlook Money, Yahoo News, Times of India, Economic Times, Business Standard, Quartz, Global Legal Post, International Bar Association, LawAsia, BioSpectrum Asia, Digital News Asia, e27, Leaders Speak, Entrepreneur India, VCCircle, AutoTech)

Regularly invited to speak at international & national platforms (conferences, TV channels, seminars, corporate trainings, government workshops) on technology, patents, business strategy, legal developments, leadership & management

Working closely with patent attorneys along with international law firms with significant experience with lawyers in Asia Pacific providing services to clients in US and Europe. Flagship services include international patent and trademark filingspatent services in India and global patent consulting services.

We represent our clients as leading patent lawyer in Gurgaon and patent attorney in Gurgaon for providing various patent services in India.

 

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