Patent Registration In India f3e50

Patent Registration

By, Parth Purohit Jinali Mehta

Flow of Presentation  What is IP ? Methods of IP What is Patent ? Patentable Inventions Procedure of Patenting Benefits Different Strategies How to Deal With Competitors ? Damages For Infringement Example of Patent

What is Intellectual Property (IP)… Intellectual Property (IP) is a group of legal rights that provides protection over things people create or invent.

Methods of Protecting IP…  Contracts  Copyrights

 Trademarks  Trade Secrets  Patents

What is a Patent?  Monopoly  Granted by government authority  Limited exclusive privilege that the law allows a patentee in his own invention  Patent is tool of developing nation

Purpose Of Patents  Patents provide library of organized technical information that others may learn from and improve upon  Patent system encourages publication of new scientific and engineering work which can be used to inspire, educate, or inform others to make improvements or new developments

Purpose Of Patents Cont’d  Patent excludes others from making , using or selling your invention  Your patent may not allow you to practice the invention defined therein  No guarantee of Freedom to Operate

Patents- Examples

Patentable Inventions • A patent can be granted for an invention which may be related to any process or product. The word “Invention “ has been defined under the Patents Act 1970 as amended from time to time. • “An invention means a new product or process involving an inventive step and capable of industrial application” • New invention” is defined as any invention or technology which has not been anticipated by publication in any document or used in the country or elsewhere in the world before the date of filing of patent application with complete specification, i.e. the subject matter has not fallen in public domain or that it does not form part of the state of the art;

Patents…  Protects implementation of technical ideas – Article of Manufacture (e.g., light bulb) – System (e.g., cell phone) – Process (e.g., process of making or using) • Microwaving Food (Spencer) • Search engine (Google) • 1-click purchase (Amazon)

 Types of Patents – Utility Patent – Design Patent – Plant Patent

Patents- Time to get  18 months to 5 years from filing of application.  length varies by technology - software patents – up to 5 years  Claims may never issue.

Procedure For Registration  Filing of application – Who can make?  Filing of complete specification after the provisional specification  Preliminary scrutiny of the documents  Publication of application after 18 months  Early publication on specific request  Examination  Opposition to the application – Pre-grant and post-grant opposition

 Grant and sealing of patent  Submission of typed copy of specification  Publication in the official journal

Patent Procedure

Patents… Relatively expensive to obtain Initial filing ~$8,000 - $12,000 Prosecution ~ $10,000+

Limited term of protection 20 years from filing once it dies, it’s dead

Commercial Benefits Exclusivity Monopoly Pricing Licensing

Patents- Duration  20 years from filing  once it dies, it’s dead  but: – continuation-in-part applications

Selecting what to Patent? Business Value: What is the likely value of the technology? Will exclusivity provide a competitive advantage? Does the technology align with your commercial products? Legal Strength: What is the novelty over prior art? Business Methods? Exclusivity: Will competitors have viable design-around options? Can infringement be detected?

Patent Strategy - Benefits from Patents Monopoly Pricing Increase profit margins through exclusionary power Extra Income Generate income through licensing activities Access to Technology Cross-license to access other technologies Business Asset Can be used to assist in securing funding or obtaining desired exit valuations Marketing Tool Chilling effect on competition Demonstrated expertise in a particular field

Patent Strategies Aggressive/Licensing strategy Patent everything Expensive up front, but ensures that you cover everything and eventually provides a revenue stream. Blocking strategy Patent technologies your competitors might use Moderate costs but provides essential protection and crosslicensing opportunities if you can identify the key technologies. Defensive strategy Only patent key technologies Lower initial costs, but you risk missing key technologies.

Dealing with a Competitor’s Patents The right to Exclude A patent gives the owner the right to exclude others… …but a patent does not grant any affirmative rights Blocking Patent Someone else might have a dominant patent Freedom to Operate Knowledge of potentially problematic patents may give rise to an affirmative duty to determine whether or not your product infringes Legal opinion-of-counsel

Damages for Infringement  Injunction  Lost Profits  Reasonable Royalty  Cost of Litigation - $2M+ if case goes to trial

Example: Apple

Patented Technology… Apple holds over 7,000 patents

Control of Peripheral Devices Technology

Computer Input Technology

Data Processing Technology

Computer Test Technology

Programming or Control Technology

Patented Technology… Apple has >200 Patents related to Multi-Touch Technology Visual Indicators Technology

Input Technology