Frequently Asked Questions

How Can We help?

  • Basic FAQs
  • Advanced FAQs

What protection is covered by a patent?

The patent holder gets a bundle of exclusive rights. The patent owner can prevent others from using, selling, or offering for sale the patented invention selling or importing a product that infringes the patent, for a limited amount of time. This limited amount of time is 20 years in India as stated under the Indian Patent Act, 1970.

What should be kept in mind before filing a patent application?

A patentability search is the utmost important step to be taken care of before filing a patent application. This prior art search helps in finding out whether there is an already existing technology in the same domain of invention. The patent law in India requires an invention to satisfy the below conditions to get a patent:

  • Patentable Subject matter (Covered by Section 3 and 4 of the Indian Patent Act, 1970)
  • Novelty (Defined under “New Invention” under Section 2(1)(l))
  • Inventive Step (Defined under Section 2(1)(ja))
  • Specification.

The specification contains complete information about the invention and defines the scope of the invention. There are two types of specifications, namely, Complete specification and provisional specification. The latter is usually filed to get a priority date on the invention and to block others to file a patent for the same invention. It must be noted that a provisional patent application must be followed by complete specification and should be filed within twelve months from the date of filing of the provisional application, failure to do so will lead to the abandonment of the application.

Can a patent be amended?

Yes, A patent application or even a granted patent may be amended by the patent owner at any time during the lifetime of a patent by filing an application for amendment of patent (Form 13). Although, such amendment will not be permitted if a proceeding related to that particular patent or patent application is pending before the IPAB or the Court for infringement or revocation of the patent.

How are patents relevant to my business?

It’s true that not all enterprises develop patentable inventions. It’s a wrong concept that patents only apply to complex physical or chemical processes or that they are only useful to large organizations. Patents can be obtained for any area of technology from paper clips to computers.
Moreover, when we think of patents, what come in our minds are major scientific inventions like Edison’s first electric lamp or large corporations investing in R&D. But in fact, most patents are not granted for extraordinary scientific breakthroughs, but rather for inventions that make improvements to existing prior arts or existing inventions. For example, subsequent generations or versions of an existing product or a process, that is more cost effective or efficient.

Why should I consider patenting my invention?

• Exclusive rights: Patents provide you with an exclusive right to stop others from commercially exploitingan invention for 20 years from the date of filing the patent application in favor of public disclosure of the invention.
• Return on investments (ROI): It becomes fruitful for patent holders to establish themselves as the pre-eminent player in the market and to obtain higher return on investments after investing a considerable amount of money and time developing the product or a process.
• Opportunity to license or sell the invention: If you choose not to exploit the patent commercially yourself, you may sell it or license the patented invention to another enterprise, which could then be a source of income for you or your company.
• Increase in negotiating power: If your company is in the process of acquiring the rights to use the patents in question through a licensing contract, your patent portfolio will enhance your bargaining power. So as to say, your patents may prove to be of considerable interest to the organization with which you are negotiating and you can enter into a cross licensing agreement which will lead to offensive blocking patent strategy.
• Positive image for you and your enterprise: Business partners, investors and shareholders may perceivepatent portfolios as a sign of high level of expertise, specialization and technological capacity within your company which may eventually prove useful for raising funds, finding business partners and raising your company’s market value.

What happens if I don’t patent my inventions?

Competitors may well take advantage of it, if you don’t patent your invention. If your product or process becomes successful, then firms or your competitors will be tempted to make the same product by using your invention without even seeking your permission. Larger enterprises may take advantage of economies of scale to produce the product more cheaply and compete at a more favorable and affordable market price which may considerably reduce your product’s market value and market share. Even small competitors and small enterprises may be able to produce the same product, and often sell it at a much cheaper price as they would not have to recoup the original research and development costs incurred by you or your company.
But that’s not all. If you don’t patent your invention, the possibilities of licensing, selling or transferring technology would be severely hindered. Without intellectual property rights, transfer of technology would become difficult if not impossible. The transfer of technology lies on the very fact that one or more parties have legal ownership of a technology which can only be effectively obtained through appropriate intellectual property (IP) protection. Without IP protection for the product or process in question, you will always have fear in your mind that the other side may “run away with the invention”.
Finally, there will be a possibility that someone else may patent your invention first. The first person to file for the patent will be entitled for the right to the patent.
However, to ensure that no one else is able to patent your invention, instead of filing for the patent, you may disclose the invention to the public so that it becomes prior art for any patent application that will be filed after your publication, thereby placing it in the public domain commonly known as defensive publication. But then at the same time if you disclose your invention before filing, you limit your possibility of obtaining a patent protection on your invention. Hence it is always a better option to have your invention patented.

How do I go about licensing my patent to a third party?

Every situation is unique, hence there is no correct way of licensing a patent. In some countries the intention of licensing a patent to a third party is published in a public gazette. You will have to get in touch with your regional IP office to know more about it.
Generally, you need to prepare diligently if you intend to license your patent. Before you negotiate with a potential licensee, you should be well informed about the current market and the future prospects of the technology.
Moreover, you should know about the commercial state of a potential licensee and the financial value of your patent, etc. You should think about your own business objectives and carefully consider how the licensing agreement will fit into your short- and long-term business strategies.

Are utility models and trade secrets good alternative to patent protection?

In many cases, where an enterprise has merely improved an existing product and the said improvement is not sufficiently inventive, then utility model could be a good alternative, only if it is available in that country. On occasions it may be advisable to you to keep your innovations as trade secrets, which will require in particular, that sufficient measures are taken to keep the information confidential.
Alternative strategy is to disclose it in public domain so that no one is able to patent your invention which is known as defensive publication. However, you should be careful on using this strategy, since if you disclose your invention before filing the application you may limit your scope of getting you patent granted. The application on that note should be filed, within 12 months from the disclosure of the invention in the public domain.

My employee has invented a new product: Who will own the patent right?

In most countries it is considered as a ‘work for hire’ and the invention will belong to the enterprise. To avoid confusion and possible disputes, employers often mention issues of IP ownership in the employment contracts. The employ may, however, have a right to equitable remuneration in accordance with the legislative provisions or the employment contract on case-to-case basis. In any of the above cases, the employee will retain the right to be mentioned as the inventor, unless he expressly relinquishes the rights.

Can I obtain a patent and keep my invention secret?

No. patents are granted by patent offices in favor of a full disclosure of the invention. Generally, the details of the invention are then published and disclosed to the public at large. In some countries, the patent document is only published after the grant of the patent. In other countries, patent applications are generally published 18 months from the filing date./p>

Can I discuss details of my invention with a potential investor before filing a patent?

It is important to file an application prior to disclosing your invention in details. Generally, if any invention is made public before an application is filed would be considered “prior art.
If you can not avoid disclosing your invention before filing a patent application, for example to a potential investor or a business partner, then any disclosure should be accompanied by a confidentiality or a non-disclosure agreement. It is always advisable that applying early for patent protection will definitely be helpful when seeking financial assistance to commercialize an invention.

What investors consider before investing?

Investors often look for unique innovations that can be protected and monetized. Investors typically assess an invention using the following criteria before investing:

You have a solid IP strategy:All you need to know is that what IP you need to protect and how to protect that IP. You should have a clear-cut idea so as to how your IP fits into your overall business strategy and how it will be monetized.

A solid IP strategy that is aligned with your business goals includes a forward-looking plan for capturing valuable IP in your industry.
As for an example, you might plan to develop a market for your product or a process, stop others from copying it and dominate the market. Or you might plan to develop strategic partnerships and license your patents to other companies.

As a part of your plan, make sure to have a solid IP counsel to help execute your strategy. Investors very well know that a competently drafted patent application always hold up to scrutiny in a litigation context and IPR proceedings.

If your invention seems to be relevant in foreign market, you will need to plan ahead to protect your international rights. There is a limited timeline to protect your patent outside, hence you will have to make sure to incorporate foreign protection into your plan.

Your competition:How does your invention fits into the market with respect to existing and potential competitors? IP protections demonstrate your thought process about whether your product is viable into the market and how to distinguish your product in the market. IP assets are valuable and independent of your business operations. IP assets work for you even without your notice at times.

For example, they reduce and deter industry competition which makes your competitors think thousand times before taking a risk of infringing your IP by entering into the market.

IP assets also protects you from accusations of patent infringements by your competitors. You will be able to use your patent portfolios to resolve and avoid litigation by cross-licensing strategy to use your competitor’s technology.

What else investors keep in mind before funding a patent?

Owning a patent: Prior to attracting venture capitals for funding, it is critical to own the IP for your technology strategically. You should be free from obligations to competitors and other third parties. Properly document ownership of your patent applications and issued patents. Have strong invention disclosure records, non-disclosure agreements and non-compete agreements.

Additionally, you should refrain from signing any ill-advised agreements that could compromise your IP ownership, such as agreements granting broad license to your competitors.

You should always be handy with catalogue of documents that establish ownership of your patent.

Strength of your IP:Investors will always be interested in the value and strength of your IP. Your patent application must be able to hold up firm under close scrutiny. If your patent application claims are pretty broad, your application may land up in nearly endless number of prior art references cited against it. And at the same time your patent claims should not be too narrow, which may make an easy way for your competitors to design around your patent.

Investors look into your track record and might be wary of businesses that have dropped a high number of applications. More importantly, if an investor does not have a prior experience with patents, they may just kick the tires during due diligence to make sure that there are no major issues in the patent application or issued patent before investing. If, however you are going for a significant funding round, then the investors will likely to do an in-depth review. Hence, make sure that you are well prepared to withstand their scrutiny before investing.