Labeling product as “Patent Pending”

Bindu Sharma (bindu@origiin.com)

From the date of filing of patent application to the grant is a long procedure and often disappoints the inventor for the reason that grant of patent is going to take long time and securing patent of his interest becomes a great worry till then. However, when a patent application is filed (provisional or complete specification), patent office issues a receipt on which date of filing or priority date is stated. It is worth noting that from that date, the product for which patent has been applied for  or product made by a process for which patent has been applied for can be marked as “patent pending” or "patent applied for" as a warning or a notice, meaning that patent has been applied for but not yet granted. The marking as an express notice serves to notify potential infringers, that they may be liable for damages, seizure, and injunction once a patent is issued.  The patent law gives applicant all rights and privileges of a patent holder except that law suit cannot be initiated till patent is granted.

 Prime advantages of marking products as “patent pending” are that it not only helps to avoid innocent infringement but also encourages patentees to give notice to the public that the article is patented and also aids the public to identify that the article is patented. Indian patent law (Section 111, Indian Patent Act of 1970) limits the award of damages in patent infringement cases when an infringer or the defendant is able to prove that he was unaware of the patent-in-suit. However, the Patent Act effectively reverses this allocation of the burden of proof in cases where an article is marked with the word “patent” and a patent number. In a suit for infringement of a patent, damages or an account of profits shall not be granted against the defendant who proves that at the date of the infringement he was not aware and had no reasonable grounds for believing that the patent existed. Therefore, marking the products as “Patent pending” serves an important public notice that patent has been applied for and leaves little space for innocent infringement.

Patent pending marking is not restricted to the patent application but also for granted patents in which case the products need to be marked as “patented”. However, a person shall not be deemed to have been aware or to have had reasonable grounds for believing that a patent exists by reason only of the application to an article of the word “patent”, “patented” or any word or words expressing or implying that a patent has been obtained for the article, unless the number of the patent accompanies the word or words in question. That means that mention of patent number is also important to be mentioned if the product in question is patented. For example, in Australia, the preferred marking is "Aust. Pat. App. No. yyyynnnnnn" where "yyyy" is the four-digit year of the application and "nnnnnn" is the six-digit number allocated by the Australian Patent Office.

According to Section 120 of Indian Patents Act, 1970, use of marking, such as “Patent pending” or “patent applied for”, where no patent has been actually applied for is an offense and if any person falsely represents that any article sold by him is patented in India or is the subject of an application for a patent in India, he shall be punishable with fine which may extend to one lakh rupees. The use of words “patent”, “patented”, “patent applied for”, “patent pending” or other words expressing or implying that an article is patented or that a patent has been applied for shall be deemed to refer to a patent in force in India, or to a pending application for a patent in India, unless there is an accompanying indication that the patent has been obtained or applied for in any country outside India".

Even though marking products for which patent has been applied for, care should be taken while using the word "Patented” as it should be used only after grant of the patent. Hence, before grant is accorded, it is advisable to mark products as "Patent Pending" or “Patent applied for”, to indicate that patent application has been filed but patent is not granted yet.

What is a Compulsory License?

By Santhoshi Basuthkar (santhoshi.b.s@gmail.com)

In developing countries like India, where AIDS is spreading widely, access to lifesaving medicines is a dire need. The Indian Pharmaceutical industry is mainly involved in producing generic drugs and there are very few R&D centers in the country that invent new drugs. Thus we mainly depend upon importing those valuable medicines from the developed nations. Several multinational pharmaceuticals use this opportunity to hike up the prices of their drugs when it is being sold to the markets of the developing nations. This prevents the easy access of medicines to the needy patients. Compulsory licensing is one such tool to prevent such dominance of monopoly exhibited by the multinational industries. A compulsory license (CL) to a patented product is granted when the government allows someone to produce the patented product without the consent of the patent owner. It is an involuntary act between a willing buyer and an unwilling seller, enforced by the state.

Patents are granted to encourage the inventors to disclose their inventions and also to grant them monopolistic right to exploit the invention. The objective of patent grant in india is to ensure that the inventions are worked in India on a commercial scale and to the fullest extent without any undue delay. If the patentee is not commercializing the invention and as a result, the reasonable requirements of the public are not met or the patented product is not available to public at reasonable price, the compulsory license is available as a remedy against abuse of patent right.

Many patent law systems provide for the granting of compulsory licenses in various situations. The Paris Convention of 1883 provides that each contracting state may

take legislative measures for the grant of compulsory licenses. The Article 5A (2) of the Paris Convention reads:

"Each country of the Union shall have the right to take legislative measures providing for the grant of compulsory licenses to prevent the abuses which might result from the exercise of the exclusive rights conferred by the patent, for example, failure to work."

Compulsory licensing is one of the flexibilities on patent protection included in the TRIPS (Trade Related Aspects of Intellectual Property Rights) agreement. Article 31 of TRIPS lists a number of conditions for issuing a CL.  India joined the TRIPS agreement in 2005 thereby providing stronger provisions for CL. Today, many countries such as Canada, France, UK, USA, Australia, Zimbabwe, Ghana, Brazil, Equador, Malaysia, and Thailand have provisions for granting CL. Section 84 of Indian Patents (Amended) Act, 1970 states the provisions for granting CL. It mainly deals with three major conditions for granting a CL: a) Reasonable requirements of the public with respect to the patented invention have not been satisfied, b) The patented invention is not available to the public at a reasonably affordable price and c) The patented invention is not worked in the territory of India.

The first Compulsory License in India was granted recently on 9^th Mar 2012, to Natco Pharma for the manufacture of its patented anti-cancerous drug, Nexaver. Natco would sell the drug at 97% lesser rate of its original cost. The grant of the first CL in India has been welcomed with mixed reviews. Undoubtedly, the CL would ease the suffering of the needy patients by getting cheaper access to valuable medicines. However, the pharma giants had to swallow a bitter pill. It takes around 2 billion dollars to innovate a single drug and launch it in the market, grant of such compulsory licenses would shake their product pipeline as the ROI (Return of Investment) for such expensive drugs would not be met. Experts say that such events will also reduce the innovations happening in the pharma sector.  Nevertheless, the main notion of  inventing new drugs is to meet the needs of the patients, hence it would be wise for pharmaceutical companies to come up with new price slabs while launching their product to respective countries.

Copyright notice: Proper format is important

      By Anita Kalia (anita@origiin.com)

Copyright is a right given by the law to creators of works such as literary, dramatic, musical, and artistic as well as producers of cinematographic films. It is important to know that copyright gives protection for the expression of an idea and not for the idea itself. India is a member of the Berne Convention, an international treaty on copyright, under which, registration of copyright is not an essential requirement for protecting the right. It would, therefore, mean that the copyright on a work created in India would be automatic [inherent] and would simultaneously be protected through copyright in all the member countries of the Berne Convention. The moment, an original work is created, the creator starts enjoying the copyright. However, an undisputable record of the date on which a work was created must be kept.

Appropriate notice of copyright in a proper format is important to be included in the work even though there is no statutory requirement to put it. Having copyright notice serves as an identifier placed on copies of the work to inform the world or the third party (ies) of the copyright ownership. While use of a copyright notice was once required as a condition of copyright protection, it is now optional, though it is highly recommended to include it for various reasons. Use of the copyright notice is the sole responsibility of the copyright owner and does not require formal or advance permission from the Copyright Registry. It is interesting to note that copyright notice can be legitimately included in the work such as website, software CD, books etc even without formal registration of the work with Copyright Registry.

The copyright notice should be clear enough to an ordinary user of the work under normal conditions of use and should not be concealed from view upon reasonable examination. Advantages of putting copyright notice are that it:

 ü  informs the public that the work is protected by copyright;

ü  indicates name of the copyright owner;

ü  shows the year of first publication of the work; and

ü  has added advantages in case of copyright infringement.

In the event that a work is infringed by third party, if a proper notice of copyright appears on the published copy or copies to which a defendant in a copyright infringement suit had access, then no weight shall be given to such a defendant's defense based on innocent infringement for the reason that innocent infringement occurs only when the infringer did not realize that the work was protected. With a proper copyright notice, infringer cannot take defense of innocent infringement.

Commonly used format to put copyright notice comprises of following elements:

ü  The copyright symbol © (the letter C in a circle), or the word "Copyright" can be used;

ü  The year of first publication of the work shall be added; and

ü  Further to this, the line such as “All rights reserved” can also be used.

Some of the examples of copyright notice are as below:

Copyright © 2012 Origiin IP Solutions LLP, All right reserved

In case of DVD or CD, usually you may see following format:

Copyright © 2012 XYD entertainment. All right of the produced and owner of the CD content reserved. Unauthorized copying, public performance and broadcasting of this content/recording is prohibited and punishable under Copyright Act, 1957.

Copyright notice on the work is a express notice that work is protected by copyright law. Therefore, even if there is no statutory requirement to have copyright notice on the work, it is wise to include it on the work for various reasons.

Copyright Infringement & Substantial similarity

By Rajitha TR

 Copyright law comprises legal principles and rules envisaging the protection of those who produced intellectual works in the field of literature, music and fine arts including photographs, films and performance of artists. The principle objective of Copyright law is to protect the author’s original work from being reproduced in an un-lawful manner.

Copyright infringement is violation of exclusive rights of the copyright holder, the unauthorized or prohibited use of works under copyright such as the right to reproduce or perform the copyrighted work, or to make derivative works. To establish copyright infringement in court of law, a copyright owner must establish proof of copyright ownership and proof of copying by direct evidence of copying or by indirect evidence showing access to the original work; and "substantial similarity" between the original and allegedly infringing work.

 In case of any copyright infringement, the plaintiff (party who initiates the law suit) must prove that the defendant’s (a person or party against whom an action or claim is brought in a court) work is “substantially similar” to the plaintiff’s work. Hence, the infringement test involves two important components. First, did the defendant actually copy the plaintiff’s work? And secondly whether the copied elements would protect the expression and is sufficiently important to be actionable. In simple words, the aim of the test is to determine if the copying constitute any infringement.

 To prove copyright infringement, infringer shall have access to the plaintiff’s work. In this context, access means whether the infringer had a suitable opportunity to witness the original work or not. Therefore, while determining infringement, the courts often compare all possible elements of both the works created by the plaintiff and the defendant & exclude all public domain elements from work and look only to the key elements that are protectable. Hence, in establishing the protectable elements, the court would distinguish between the idea underlying in the work created and its expression. For that reason the term “substantial similarity” causes confusion in the copyright infringement analysis because the same term has different meanings at two different points in the infringement analysis.

The traditional approach to identify substantial similarity is the “Total concept and feel” test which relies on the visceral response of the ordinary observer or the audience or more appropriately the ‘lay observers’ test. The basis of the test is to determine whether an average lay observer would recognize the alleged copy as having been appropriated from the copyrighted work. The ordinary observer is then taken as a bench mark against the determination of presence or absence of substantial similarity.

The other approach is the “Extrinsic-intrinsic test” which is applicable to most literary works, such as books and scripts, musical compositions and artwork. This test comprises two separate tests firstly the extrinsic test measures whether there was substantial similarity in general ideas of the infringed and the original work and secondly, the intrinsic test which measures the substantial similarity in the protectable expression of both the works.

Yet another approach is the “Abstraction-Filtration-Comparison” or AFC test. AFC test involves three steps in order to determine the substantial similarity of the non-literal elements of a computer program.

Landmark case R.G. Anand v. Delux Films delivered by Indian Supreme court helps in understanding the concept of the substantial similarity.  In this case, the author of the play Hum Hindustani R.G. Anand sued a production company Delux films for making a movie that was allegedly an exact copy of his play. The Supreme Court of India held that despite some similarities, the movie did not infringe the play’s copyright as there some substantial dissimilarities between the two. The dissimilarities were differences in story, theme, characterization and climaxes. Apart from this the Court also held that the copyright cannot be sought for an idea, it’s applicable only for an expression of an idea and not idea itself, as the allegation by Anand was that the defendants violated his copyright by copying his idea which was held invalid.

Therefore, the issue of substantial similarity is a critical element in infringement claims. Even where the fact of copying is conceded, no legal consequences will follow from the fact unless the copying is substantial. Furthermore, the term “substantial similarity” is not defined in the Copyright Act and it is a fact determined by the judge or the jury. Thus the decision rests on the shoulders of the Court to decide which test needs to be applied for which case and give a good justice.

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.