Tuesday, October 11, 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.

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