Patent search: What is the right time to do it?

The word “patent search” or “prior-art search” in patent law means any information that relates to the knowledge existing prior to the date of invention, which has been made available in the public domain. This knowledge (or “prior art” or “state of art”) may be in any form such as patent, scientific literature, publications (such as journal articles, proceedings of conferences, data books and display information from technical exhibitions), public discussions or news from anywhere in the world. The prior-art search is often performed by a patent attorney or a patent agent or a patent searcher and it is conducted through various patent and non-patent databases and other relevant technological websites to identify relevant prior-arts. 

Novelty of an invention is always determined before inventive step because the creative contribution of the inventor can be assessed only by knowing the novel elements of the invention. The invention is supposed to be lacking in novelty, if information about the invention has already been disclosed. Thus, for example, if a claim specifies alternatives or defines the invention by reference to a range of values (e.g. of composition, temperature, etc), then the invention is not new if one of these alternatives, or if a single example falling within this range, is already known. Thus, a specific example is sufficient to destroy the novelty of a claim to the same thing defined generically.

Purpose of patent search

Patent search is done for various reasons such as:
1.         Patent search gives clear idea on the work claimed or published by others and helps inventor to assess chances of getting patent for his invention.
2.         Even if the invention that the inventor intends to claim is already claimed by third party (ies), results of patent search give him direction on how further research shall be done.

3.         Patent search shall also be done before planning research and development to make sure that the companies don’t waste time in re-inventing the Wheel/duplication of work and focus purely on innovation.

4.         Patent search also helped to assess strength of the competitions by revealing their names and gives picture of the inventions for which they have filed for patents.

When to do patent search?

The right time of doing patent search is at the stage of idea itself. Before investing time and money working on the idea, it is extremely important to assess whether the idea is novel or already published or claimed by anyone else. Often the inventors assume novelty of idea by looking at the products which are already in market and comparative analysis of such products with their idea makes them believe that idea is novel. The hard reality is that a small fraction of the patents are commercialized and big chunk of patents, even though are not commercialize but certainly form part of the prior art and may prevent an inventor from getting patent on his invention

Therefore it is imperative for the inventors to perform patent search at the stage of idea itself, assess chances of patentability as well as infringement of patent right of the third party (ies) before investing money and time in research. This is crucial for the inventor to make decision on patentability of the invention, it is important to get the search done in time.

Jurisdiction for patent search

Patent search is done world-wide or globally even though patent rights are territorial. A publication related to the invention in US is enough to destroy novelty and prevent an inventor patenting the same invention in India even though there is no valid patent granted in India.

Conclusion

Timely patent search is an important not only to assess chances of getting a patent but also to plan research and development in an organization and know competitors in the same area of technology. It is good idea to perform patent search at the stage of idea itself to save time, money and to have better quality of research output.

US or India: Where to file for a patent first?

United States Patent and Trademark Office (USPTO) often is one of the favorite or lucrative destination for the applicants for filing a patent application for various reasons, the prime reason being that usually the target as well as potential market of the invented product or process is US. Another major reason for interest in filing in US is that US patent laws permit broader spectrum of software patents compared to Indian Patent Law which says that software per se is not patentable till it has technical application. For all these reasons, at the time of filing for a patent, the biggest dilemma an inventor has is where to file for a patent first, in India or US?

In this article, we will explore the advantages of filing in India first and consequences of filing in US first if the inventor is a resident of India.

Filing in India first makes sense (U/S 39)

Before taking a decision on where to file first, it is essential to understand what does Indian Patent Law says about foreign filing. The issue is sensitive as well as critical and lack of expert legal advice on the same may have fatal consequences.

Accordingly to Section 39 (Residents not to apply for patents outside India without prior permission) of the Patents Act 1970, a person who is resident in India shall not make application for grant of patent outside India without:

1.             Either taking Foreign Filing Permission (FFP) from the Controller of patents. This permission is usually granted by the Controller within 21 days and is required not only for foreign filing but also for filing a PCT application; or

2.             Filing for a patent for the same invention in India and waiting for 6 weeks.

Who is “Resident of India”?

The term “Resident of India” has not been defined in the Patents Act, 1970 but according to Income Tax Act, an individual can be termed as a 'Resident of India' if he stays for the prescribed period during a fiscal year i.e. 1st April to 31st March, either for:

1. 182 days or more; or
2. Has been in India in aggregate for 365 days or more in the previous four years.     

Any person who does not satisfy these norms is termed as a 'Non-Resident'. A resident individual is considered to be 'ordinarily resident' in any fiscal year if he has been resident in India for nine out of the previous ten years and, in addition, has been in India for a total of 730 days or more in the previous seven years. Residents who do not satisfy these conditions are called individuals 'not ordinarily resident'.

Rational behind filing in India first

Main rational behind having Section 39 is to safeguard national defense and security. If the invention is relevant for defence purpose or atomic energy, the Controller shall not grant permisson for foreign filing without the prior consent of the Central Government. Such application may be imposed Secrecy Directions and the Controller may give direction for prohibiting or restricting the publication of such application if it appears to him that the invention in question falls in one of a classes notified to him by Central Government as relevant for defence purposes or the Controller himself considers it to be so. However, this section shall not apply in relation to an invention for which an application for protection has first been filed in a country outside India by a person resident outside India.

Do you lose anything by filing in India first?

It is a myth that by filing in India first and US later, one loses on the date and the date of filing in US gets delayed. The fact is that even if you file for a patent in India first, you can file the same application in US (as convention application) immediately after expiry of 6 weeks from the date of Indian filing. At the time of filing in US, you can claim priority date from your Indian filing as both India and US are convention countries. Effectively, this means that even though you file in India first and US later, the same date of priority can be maintained in USPTO as well as . Infact when priority is claimed from Indian filing, the applicant has to submit in USPTO, the priority document obtained from the Indian Patent Office.

Therfore, it actually doesnot matter where you filed first, but yes, it certainly is a better and a safe choice to either file for a patent in India first or take permission from the Controller for foreign filing.

Consequences of violating section 39

If a person makes or causes to be made an application for the grant of a patent in contravention of section 39, he shall be punishable with imprisonment for a term which may extend to two years, or with fine, or with both. Hence, it is important to either file application in India first or take FFP from the Controller of Patents.

Conclusion

In the instances where the applicant is a resident of India, it is important to consider filing for a patent in India or taking permission for foreign filing from the Controller, before filing for a patent in foreighn country ot PCT the the reason that violation of this provision can lead to fatal consequences. 

Invention report template

By:              Donal O’Connell        

Date:          October 2011

One simple yet effective way to build a level of discipline into the invention handling process is to define a standard template for invention reports coming from the inventor community.  If the idea is of potential value and is patentable, then the inventor should complete an invention report.  An invention report is the first step in obtaining patent protection but does not constitute the filing of the patent application.  Such a report should be completed for each discovery or invention that has a potential commercial value or represents a breakthrough in technology.  To help both the inventor understand what is expected of him or her, and to ensure consistency, it is worthwhile considering defining an invention report template to be used.

Such a template may consist of the following:-

·         The title of the invention

·         Inventors details

·         Additional contributors to the invention

·         Is the invention related to a specific project or program?

·         Technology area of the invention

·         Does the invention relate to a Standard?

·         A summary of the invention

·         A more detailed description of the invention, together with any figures or drawings

·         Description of all known, related prior art

·         Will the invention be disclosed publicly?

·         Reference material

Invention title:

The title should be defined in one sentence and capture the essence of the idea , although this may or may not be the same as the title of the subsequent patent application filed at the Patent Office.  This is important to note, as it can cause confusion later if they are not identical.

Inventor details:

Inventor details need to be defined well.  This means their full  given name, home address, telephone number, email address, nationality, employers name and address etc, so they can for example be contacted when they are needed to sign papers.  The inventor's home address information should inform the company where the inventor was at the time the invention was made.  Such information may be needed to determine where the reward should be paid and which company division or unit should arrange the payment, due possibly to national taxation or legislative issues.  Having the inventor's home address information available may help when answering certain Patent Office requests and it may also help in determining whether the company needs a foreign filing license or deciding where to file first.

Inventorship:

If multiple inventors are involved, then such information is also extremely important.  The rules on inventorship are quite clear and derive from the rules for patentability.  To be patentable, an idea must not only be novel, but must also involve an inventive step, which is an insight that is not obvious to someone possessing reasonable skill in the relevant technical area.  Anyone who contributes something novel and non-obvious must be named as an inventor on the patent application.  But someone who has not contributed in this way must not be so named.  If inventors are omitted from the application, or if non-inventors are included, any patent/s granted can subsequently be invalidated, so it is very important that this information is correct at the outset.

Where an invention arises in a group session, as a result of a brainstorm or other type of discussion, it is often the case that everyone present has genuinely contributed something.  However, it does not follow from this that everyone present is entitled to be named as an inventor, because not all contributions are novel and non-obvious to someone possessing reasonable skill in the relevant technical area.  If you have thought of something novel and genuinely inventive, and then refine and improve that idea by bouncing it off a number of other people, their contributions do not automatically make them inventors.  Only a person who is responsible for a genuinely novel and non-obvious contribution should be named as an inventor.  It is quite unusual for large groups of people to contribute inventively in this way to the same patent application.  Therefore, if you intend to name more than two people on an application, it is recommend that the inventor gets together with the other people in the group, to do an honest evaluation of what each person contributed, before proceeding.

Joint invention:

Is the invention based on a joint effort with another company or organisation?  If the answer is yes, then is it important that the inventor specifies the other company involved, discloses any relevant agreement or contractual details they may have with this other company, and provides the necessary key contact details.

Project relation:

Does the invention relate to a specific project?  If yes, then the inventor should identify the name of the project and provide further relevant and helpful details.

Technology area:

The primary technology area of the invention needs to be specified and classification systems exist to help guide the inventor here.  A Patent Classification is a code which provides a method for categorising the invention.  In the US Patent Classification (USPC) system, classifications are typically expressed as "482/1".  The first number, 482, represents the class of invention and the number following the slash is the subclass of invention within the class.  There are approximately 450 Classes of invention and 150,000 subclasses of invention in the USPC.

Classes and subclasses have titles which provide a short description of the class or subclass and they also have definitions which provide a more detailed explanation.  Many classes and subclasses have explicitly defined relationships to one another and patents are contained in the subclasses.  In a sense, classes also contain patents but for classification purposes patents are always classified at the subclass level.  Which means that one or more classification (i.e. class/subclass designations) is assigned to each granted patent and each published application.

A patent classification also represents a searchable collection of patents grouped together according to similarly claimed subject matter.  A classification is used both as a tool for finding patents (patentability searches) and for assisting in the assignment of patent applications to examiners, for examination purposes.  Classifications have definitions and hierarchical relationships to one another.

Standards related:

Is the invention planned to be contributed to a “Interoperability Standard”.  If yes, then the inventor should give the name of the standard and the SDO (Standard Defining Organisation) plus the date when it is planned that the invention is to be contributed.

Interoperability refers to the ability of diverse systems to work together or inter-operate, without any special effort on the part of the customer or end-user.  It is the ability of two or more networks, systems, devices, applications or components to exchange information between them and to use the information that has been exchanged.  Interoperability standards can help facilitate data integration and transmission.

Patents underpin open standardisation and allow the disclosing and sharing of ideas openly and early.  Without patents, it is most likely that secrecy would prevail.  Patents allow technical specifications that can be promulgated consensually and early, thereby making the process inclusive, rather than exclusive.  However, patents do have the potential to delay or even block the standard and thereby cause a technology “hold-up”.

Invention summary:

A short summary of the invention should be requested in the invention report template and it is helpful to ask certain specific questions here such as:-

·         What problem is solved by the invention

·         What are the existing solutions and what limitations do these solutions have

·         What are the novelty features and the benefits of this invention

Technical documents, figures and drawings should then be attached to explain the invention in more details.

Prior art:

Is the inventor aware of the prior art, which is any evidence that your invention is already known.  An existing product is the most obvious form of prior art but prior art does not necessarily need to exist physically or be commercially available.  It is enough that someone, somewhere, at some point in time has previously described, shown or made something that contains a use of technology that is very similar to your invention. 

Search engines on the internet are familiar to everyone browsing the world-wide-web and there are a variety of patent specific search engines available for use, with some being free of charge, which allow you to search through various patent databases.  These can prove extremely useful, for example, when conducting prior art searches.  There are also some patent search tools that are provided by national, regional and global Patent Offices, while others are actual commercial products on sale from specialist companies, usually with some extra ‘bells and whistles’ attached to give some additional value add to the user.  Patent search tools allow you to search through various databases looking through patent claims, using the complete text from an invention disclosure, or free form text.

There are tools for analysing existing patent data and many people have begun to make increasing use of such patent information.  These tools provide search results and analysis of the patenting activities in an industry, technology or company to ascertain or forecast the direction of technical change and to pinpoint the relative technological position of a company in a particular marketplace.  Patent mapping systems are available to allow you to truly understand the existing patent landscape with many of the more advanced versions allowing the patent analysis results to be displayed by visual representation, using bar graphs, polygonal line graphs, pie charts, radar charts and other charts or graphs, which are typically called ‘Patent Maps’.  Such visualisation is an especially effective way of representing the results of this type of patent analysis.  Patent mapping is also a technique that uses patent information to create a graphical or physical representation of the relevant art pertaining to a particular technology area.

Invention disclosure:

Is the invention expected to be publicly disclosed in any way, and if so, when?  An invention is considered public if it is disclosed in any way. An example could be a publication, university thesis, technical presentation, product user manual, service manual, inter-operability standards specification, a website or a submission to a technical seminar.

There may be a need to sanity check the exact date of intended publication at some seminars or conferences as items such as abstracts may be published before the actual event itself is held, and could act as prior art to the same invention.

There are however some exceptions which do allow disclosure prior to filing a patent application with the Patent Office.  Use of a non-disclosure agreement with an external party is included as an exception since the invention is not made public in this form.  For public disclosures two options can also be found, that is the use of simple "grace" periods, such as with the USPTO, or the more complex example of the EPO exhibition rule.  The local jurisdictions, rules and guidance should be carefully checked to see that you are fully compliant before endeavoring to make any such public disclosure.

Reference material:

From the inventor’s perspective, the invention report is the first disclosure of the invention and should include a list of references which relate to that invention but no background references should be quoted in the report.  An IDS (Information Disclosure Statement) is essentially a list of any references that relate to the invention and the full reference must be stated including the author, publisher, ISBN, chapter and page numbers.  The number of pages quoted should be less than ten so as not to infringe any Copyright laws.  Typically, there should be between three and five references listed in the document.  If the inventor has not fulfilled their obligations under the IDS document, the Patent Attorney prosecuting the case will receive a Notification of missing parts and be given an opportunity to correct this.

Other things to consider:

The items listed above are not exhaustive, and there may be other things to consider adding into your invention report template including:-

·         Product information

·         Agreement and contract information

·         Links to note books

Final thoughts:

As stated previously, one simple yet effective way to build some discipline into the invention handling process is to define a standard template for invention reports coming from the inventor community.  I hope that this paper provides the reader with some ideas and insights on this subject matter.

Donal O'Connell is the Managing Director of Chawton Innovation Services Limited. His first book “Inside the Patent Factory” was published by Wiley & Sons in 2008 and his new book “Harvesting External Innovation” was just published by Gower Publishing in mid 2011.

Can idea be patented?

Bindu Sharma, Origiin IP Solutions LLP

‘Patentability of an idea’ is one of the most common, controversial and toughest questions a patent attorney has to often reply in the first meeting with the enthusiastic and passionate inventor. Though there is no clear answer to this question to be replied in YES or NO but it is worth exploring at times. The answer to this question may vary from idea to idea.

Before assessment of patentability of an idea, it is important to understand what can be patented. As per law, only inventions can be patented though there is no express mention in The Patent Act 1970 that ideas can or cannot be patented. The line between idea and invention is very thin because all inventions are ideas before they mature to breakthrough patentable inventions. In order to get a patent, the invention needs to be novel, industrially useful and non-obvious to a person skilled in the art. If we talk about idea, the idea can also be novel, industrially useful and non-obvious to a person skilled in the art. So where is the difference between idea and real invention for assessment of patentability?

Let’s look deeper and understand the provisions that talk about the information that shall form part of the patent application. Apart from the basic requirements of patentability, according to Section 10, The Patents Act, 1970, every specification, whether complete or provisional, shall describe the invention and shall begin with the title sufficiently indicating the subject matter to which invention relates. It further states that every complete specification shall fully and completely describe the invention and its operation or use and the method by which it is to be performed. Additionally, the complete specification shall also disclose the best method of performing the invention which is known to the applicant and for which he is entitled to claim protection.

This clearly indicates the in addition to fulfilling basic requirement of patentability; the invention shall also have capability of being performed practically. Now if the idea has capability of being performed and the inventor has a process of how the idea works, the idea may get matured into invention and it can certainly be filed for a patent. Since the complete specification requires the best mode of performing the invention to be disclosed, one can file provisional application with idea and subsequently work on the invention to identify the best mode of working and within 12 months of filing provisional application, the complete specification may be filed.

Further, the preamble for description of provisional application says that “the following specification describes the invention” whereas the preamble for description of complete application says that “the following specification particularly describes the invention and the manner in which it is to be performed”, indicating that the complete process needs to be disclosed only at the time of filing complete specifications.

For example, one has an idea pertaining to mobile application security system and has expertise to transform idea into an invention. With such idea provisional application can be filed and later complete specification can be submitted which fully and particularly describe the invention and its operation or use and the detailed method of performing the same. Failure to disclose the best mode of performing the invention can lead to invalidation of the patent or patent application a result of post-grant opposition/revocation or pre-grant opposition respectively in the ground that the complete specification doesn’t sufficiently and clearly describe the invention or the method by which it is to be performed. Therefore, before filing for a idea patent analyse critically whether the idea has capability to be performed or not.

Copyright Registration: Is It Necessary?

Bindu Sharma, Origiin IP Solutions LLP

A copyright is a form of intellectual property which protects original works of authorship such as literary (books, periodicals, computer programmes, tables and compilations including computer and databases), dramatic, musical (songs and graphical notation of the same), artistic, cinematographic and sound recording. In fact, it is a bundle of rights including, inter alia, rights of reproduction, communication to the public, adaptation and translation of the work. There could be slight variations in the composition of the rights depending on the work.

The history of copyright law starts with early privileges and monopolies granted to printers of books. The British Statute of Anne 1709, full title "An Act for the Encouragement of Learning, by vesting the Copies of Printed Books in the Authors or purchasers of such Copies, during the Times therein mentioned", was the first copyright statute. Initially copyright law only applied to the copying of books but over the period of time other uses such as translations and derivative works were made subject to copyright and copyright now covers a wide range of works, including maps, performances, paintings, photographs, sound recordings, motion pictures and computer programs.

It is interesting to note that copyright law does not protect the ideas but only expression of the idea. For example there are hundreds of movies based on love stories. Here idea is love story, which is not protected by copyright law. Expression of idea when expressed by different directors in different way is considered as different expression and hence gets protection under copyright law. Each expression and each movie will have individual copyrights. Additionally, the work shall have substantial amount of skill, judgment, labor and the work shall be fixed in a tangible form e.g., if it is a song or drama it should be recorded, if it is a computer program it should be written..

The most frequently asked question about copyright is whether it is necessary to register copyright or not. The answer is NO because copyright is statutory as well as inherent right and comes into being automatically after competition of the work. The legal copyright notice can be put even without registration of copyright but registration of copyright with copyright registry is important under certain circumstances such as:

1. The certification of copyright registration is an authentic proof of valid title and ownership that can be produced in the court as a prima facie evidence of ownership in case of any dispute or litigation. In some jurisdictions, copyright registration is a prerequisite for bringing a copyright infringement lawsuit. Therefore, when a work is to be used commercially; it is advisable to get copyright registration done. However, it is highly recommended to put copyright notice on the work even if it is not registered.

2. Copyright registration is even more important in case of computer software program because the copied work looks identical to the original work and it is extremely difficult to differentiate between the two.

3. Copyright registration establishes a public record of the copyright claim.

4. Registration certificate is very important to have, if it becomes necessary for the copyright owner to obtain a preliminary injunction against a copyright infringer, such as the immediate cessation of the distribution of the infringer's work. The presumption of validity will only apply if the work has been registered.

Therefore, even though the copyright registration is not mandatory, it is good idea to get it done especially when the work has to be used commercially. It is proof of ownership and valid title. The copyright can be registered at Copyright Registry, New Delhi.

Article Source: http://EzineArticles.com/6241408

IP Audit: Way of assessment of the intangible assets

Bindu Sharma, Origiin IP Solutions LLP

Intellectual Property (IP) has gained more importance than ever before in India as well as around the world. Creation of IP requires huge financial investments along with tremendous human efforts. This is the reason it has become increasingly important for companies to keep track of the extent, quality, and use of their intangible assets, as well as to have processes  and procedures in place to create, inventory, perfect and use intellectual property rights associated with those assets.

 One traditional definition of an intellectual property audit is, “the cataloguing of an organization's intellectual property assets” but practically IP audit has a wider meaning and may be defined as, “a systematic review of the IP owned, used or acquired by a business”. Its purpose is to uncover under-utilized assets, to identify any threats to a company's bottom line and to enable business strategists to devise informed strategies that maintain and improve their company's market share and brand equity.

The processes and stages in which audit is carried out varies from organization to organization depending upon their business goals and areas of business. Patents may be important for one organization wherein for the other organization copyright or industrial designs may be critical. The process of IP audit includes review of IP processes within the organization, identification of trade secrets and providing best solutions to secure it by advising on the various methodologies necessary to maintain security and confidentiality.

IP audit starts from the reviewing of an area of business and the goals that a company wants to achieve. This reveals the kind of IP a company needs to focus upon. The aim of audit typically is to examine and evaluate strengths and weaknesses in the procedures that are used to protect each intangible asset, secure appropriate intellectual property rights, to develop additional processes and to make improvements to existing processes. Most of the times, companies have a particular reason for the requirement of audit. The reason could be acquisition or merging of the company or it may be because the company has undergone some misappropriation of IP and by means of audit; it wants to identify the reason of such misappropriation and flaws in the agreements, security processes or sensitization level among employees. It’s essential to define scope of the audit. After getting the requirements and reasons for audit, the proper plan will be devised and then the executed in best possible manner.

The typical components of audit are: reviewing and documentation of existing intellectual property, registered, to-be-registered or not-to-be registered. Registered IP shall be checked for its validity; review of agreements such as Non-Disclosure Agreement (NDA), Employment agreement, agreements with contractors, license agreement etc, to ensure that agreements are sufficiently binding on the employees and contractors to secure proprietor IP interview of employees to assess IP awareness level; monitoring of the processes in the company to ensure confidentiality and security of IP; monitoring systems in R & D wing such as maintaining record book, general practices, IP disclosure forms etc.

Based on the observation and information collected, the final report will be prepared and presented to the key people in the organization. The report might reveal strengths and weaknesses of the organization and it may also suggest remedies to rectify the flaws in the processes.

Prior Art Search: Essential for innovation driven organizations

Bindu Sharma, Origiin IP Solutions LLP

The word “prior-art” in patent law means any information that relates to the knowledge existing prior to the date of invention, which is already available in the public domain. This knowledge may be in any form such as a patent, scientific literature, publications (such as articles in journal, proceedings of conferences, data books and display information from technical exhibitions), public discussions or news from anywhere in the world. The prior-art search is performed by a patent attorney or a patent agent or a patent searcher and is conducted through various patent and non-patent databases and other relevant technological websites to identify the prior-arts.

Prior art search is performed at various stages of product/process development and the purpose of doing it may vary depending upon the requirements. The main reasons for which prior art search is done are:

A. Before filing patent

Inventor may perform prior art search for his invention before filing a patent to make sure that on the day of filing patent application, his invention is novel and there is no existing patent or publication of the invention before he files the patent application.

 B. At the time of planning R & D

Due to heavy competition, today companies spend lots of time and resources for Research and Development. Novelty search may be performed by researchers in a particular area of technology to assess the work already done and based upon such existing knowledge they can plan R & D in a better and effective manner. Prior art search gives a fair idea on the research already done in a particular area of technology and the inventor can work further on it instead of working again on the same area. Prior art search also provides ideas to refine and improve the invention by identifying whether the invention has significant improvement over existing inventions.

C. Before product launch

A company may perform prior art search before launching product in a specific market to make sure that they are not infringing patent rights of any third parties by the product launch. This search is called as “Freedom To Operate search (FTO Serach)” or “Clearance Search”.

D. Technology Landscape studies for devising IP Strategy

The purpose of Technology Landscapes study is to understand the technology trend, strength of competitors, to learn latest technology advancement and analyze the patent activity related to technology of interest. Based on Technology Landscape Analysis (also called as Patent Landscape Analysis), appropriate IP strategy, complaint with business strategy is devised for the companies because a good IP strategy is a critical part of business plan and growth at any stage.

 E. During opposition or revocation

If anyone wants to oppose or revoke a patent application or a granted patent, patent search is necessary to identify the grounds on the basis of which validity of a patent/application shall be contested.

The prior art or patent search is essential for innovation driven companies not only to plan research, take decision on patent filing but also to formulated appropriate IP strategies.

Filing first patent application: Important

Bindu Sharma, Origiin IP Solutions, LLP

 Not maintaining confidentiality before filing patent application is the most common mistake inventors make......

After working intensely for months on the amazing idea, investing money, resources, it’s time to fulfill dreams, set-up new business with the idea and invention that has not been thought about or performed by anyone else in the world before.

This is the most common thought an inventor has before he approaches a patent attorney.

Is there anything else that is required to be done much before? Yes, before commercialization and filing a patent application, there are a few essential steps to be performed before meeting your attorney.

Following are the most crucial issues to be considered by an inventor to help him in enhancing quality of research and file patent application in a cost-effective manner:

1.       Prior art search: Get a thorough prior art search done right in the beginning when you get an idea. The scope of the search is not only the granted patents but also patent applications that are published or paper publication. The search, often done globally using various paid or unpaid databases, helps to identify the closest and the most relevant patents/patent application that would help you to assess the weight and commercial value of your invention. Prior art search works as a strong base not only to assess novelty of the invention, but, at later stages, it also helps in drafting of the patent application. Prior art search is an essential and crucial step to give shape to your idea and hence it’s a good idea to take professional help to get the search done.

2.       Maintain confidentiality: Inventors often are extremely passionate and enthusiastic about their invention. Having invented something feels great and one feels like disclosing it to the world. But stop! It is strictly essential to maintain confidentiality of the invention till the patent application is filed. One of the critical requirements of getting a patent is that invention shall be novel on the date of filing. Hence, never disclose, publish or make your invention available to public till you file a patent application. Additionally, do have an NDA (Non-Disclosure Agreement) with your attorney as well before initiating discussion on filing patent application.

 A classic example is when Archimedes solved the problem of checking the purity of a gold crown without damaging the crown. While taking a bath, he noticed that the level of the water in the tub rose as he got in, and realized that this effect could be used to determine the volume of the crown. Archimedes then ran in the street naked, so excited by his discovery that he had forgotten to dress, crying "Eureka!"

3.       Documentation: Documentation of an invention is extremely critical. Step-wise documentations shall be done and the novel features of the invention, existing technical problem which your invention overcomes, how your invention works shall be highlighted. Explain the process or the product with drawing and\or flow diagrams. Thorough understanding of the invention by your attorney is necessary. Don’t get lazy to fill the invention disclosure form if given by your attorney in order to describe the invention systematically.

4.       Consider the cost: Understand why and in which county (ies) or jurisdiction (s) you want to file patent application. Choosing to file provisional or complete application, PCT application or convention application or filing in India based on your requirements can really help you to manage your finances and specify the timelines. Spend some time with your attorney to understand the procedure to work on the most cost-effective package.

5.       Explore options other than patent: Depending upon kind of product, don’t forget to explore other option for protection of the innovation in the form of copyrights, design or trademark.

 Being inventors is takes tremendous amount of innovation and taking invention in right direction, in right manner is imperative to protect it appropriately and reap the revenues.

Trade-secret: an interesting form of Intellectual Property

Bindu Sharma, Origiin IP Solutions LLP

Your secret is no secret once it slips from the mouth

A trade secret is a formula, practice, process, design, instrument, pattern, or compilation of information which:

1.       Is not generally known or reasonably ascertainable, by which a business can obtain an economic advantage over competitors or customers;

2.       Confers some sort of economic benefit on its holder (where this benefit must derive specifically from its not being generally known, not just from the value of the information itself);

3.       Is the subject of reasonable efforts to maintain its secrecy.

The formula for Coca-Cola, sauces of McDonald, KFC chicken recipe and the Hyderabad fish cure for asthma are well-known examples of trade-secret.

In Roman times, the law afforded relief against a person who induced another’s employee (slave) to disclose secrets relating to the master’s commercial affairs. Modern trade secret law evolved in England in the early 19th century in response to the growing accumulation of technology and know-how and the increased mobility of employees.

In Williams v. Williams case, a son sold medicines for his own account, although he had prepared them from formulas given to him by his father on the understanding that the two would use the formulas for their joint benefit. The Chancery trial court issued an injunction restraining the son from using or divulging the trade secret and from selling the medicines. Even on appeal, the court said that the son cannot breach the contract setup by his father but the court did not go into the injunction much because the formula had already been given out.

Trade-secret is an interesting form of Intellectual Property (IP) and has several peculiar features. It is not supposed to be disclosed like other forms of IP and independent creation or reverse engineering of a trade-secret is not an offence. Because it represents nothing more than information, which can be memorized, scribbled down, e-mailed or copied onto some tangible medium and then quietly removed from company premises, it can be easily misappropriated. Duration of a trade-secret is not fixed and once disclosed in public, value is lost forever.

Usually Confidential information and trade-secret terms are used synonymously but both are not the same. Confidential information is the information which company would like to keep secret but may or may not be essential for business. Moreover, confidential Information is generally limited to a single event in the conduct of a business, whereas a trade secret is a process or device for continuous use in the operation of a business. For example, merging or acquisition of company is confidential information but use of combination of yeast strains to make softer bread is a trade-secret.  We can say that all trade secrets are confidential in nature but all confidential information cannot be termed as trade secret.

In USA, the trade-secrets are protected under Uniform Trade Secrets Act but in India, we don’t have any specific legislation to protect it, but common law. There are various ways to prevent misappropriation of trade-secret in an organization such as having appropriate legally enforceable contacts with the employees, restricting access, having processes to ensure confidentiality and security are one of the most effective methods.

Well protected trade-secret can immensely contribute to the business of an organization and hence, its identification and methods to maintain confidentiality is extremely crucial. It is one of the most ignored, the most important and the most difficult to handle assets.