What is Patent:
A patent is granted as an exclusive right by the Government for an invention for a limited period of time in consideration of disclosure of the invention by an applicant. A patentee enjoys exclusive right to prevent a third party from an unauthorized act of making, using, offering for sale, selling or importing the patented product or process within the country during the term of the patent. A patented invention becomes free for public use after expiry of the term of the patent or when the patent ceases to have effect on account of non-payment of renewal fee.
Types of Patent in India:
- Ordinary Application
- Convention application
- Patent of Addition
- Divisional Application
- PCT- International Application
- PCT -National Phase Application
Ordinary Application: The first application for patent filed in the Patent Office without claiming priority from any application or without any reference to any other application under process in the Patent office is called an ordinary application. This is basically a first application filed before patent office.
Convention application: When an applicant files a patent application, claiming a priority date based on the same or substantially similar application filed in one or more of the convention countries, it is called a convention application. To get a convention status, an applicant should file the application before any of the patent offices within 12 months from the date of first application in the convention country.
Patent of Addition: Patent of addition is an application made for a patent in respect of any improvement or modification of an invention described or disclosed in the complete specification already applied for or has a patent. In order to be patentable an improvement, should be something more than a mere workshop improvement and must independently satisfy the test of invention. The major benefit is the exemption of renewal fee so long as the main patent is renewed. A patent of addition lapses with the cessation of the main patent.
Divisional Application: A divisional application is one which has been “divided” from an existing application. The applicant, at any time before the grant of a parent application can file a further application, if he so desires or if an objection is raised by the examiner on the ground that the claims disclosed in the complete specification relates to more than one invention. A divisional application can only contain subject matter in the application from which it is divided (its parent), but retains the filing and priority date of that parent. A divisional application is useful if a lack of unity of invention objection is issued, in which case the second invention can be protected as a divisional application.
PCT- International Application: The Patent Cooperation Treaty or PCT is an international agreement for filing patent applications. However, there is nothing called as a ‘world patent’.
The PCT application does not provide for the grant of an international patent, it simply provides a streamlined process for the patent application process in many countries at the same time. Some of the benefits of the system are:
- It simplifies the process of filing patent applications i.e., an applicant can file a single international patent application in one language with one receiving patent office in order to simultaneously seek protection for an invention in 156+ countries throughout the world.
- It provides internationally recognized priority date, which has an effect in each of the countries designated.
- Delays the expenses associated with applying for patent protection in various countries.
PCT gives 30 to 31 months time to enter into various countries from the priority date or international filing date whichever is earlier unlike the convention method which gives only 12 months time to file for a patent application in the country of interest from the priority date. Hence, the PCT route allows the inventor more time to assess the commercial viability of his/her invention.
- It provides an international search report. The results of this search are very valuable to the applicant. They allow the applicant to make more informed choices early in the patent process, and to amend the application to deal with any conflicting material, before the major expenses of the national phase of the patent process begin.
- Provides an option of an International Preliminary Examination Report that is forwarded to the elected Offices and the applicant, the report containing an opinion as to whether the claimed invention meets certain international criteria for patentability.
- These reports give the applicant a fair idea about the patentability of the invention before incurring charges for filing and prosecution in each individual country.
National Phase Application under PCT: The PCT-national phase must follow the international phase. The applicant must individually ‘enter into the national phase’. i.e. file a National phase application in each county he wishes to enter. The applicant can enter the national phase in 156+ countries within 30-31 months (depends on the laws of the designated countries) from the international filing date or priority date (whichever is earlier). If the applicant does not enter the national phase within the prescribed time limit, the International Application loses its effect in the designated or elected States.
Sections in Patent specification:
There are various sections mentioned in the patent document such as:
- Bibliographic information
- Field of the invention and use of invention
- Prior Art and problem to be solved
- Objects of the Invention
- Summary of the Invention
- Detailed Description of the Invention
- Best Method
Filing of Patent Application:
- When the applicant finds that his invention has reached a stage wherein it can be disclosed on paper, but has not attained the final stage, he may prepare a disclosure of the invention in the form of a written description and submit it to Patent Office as a Provisional Specification which describes the invention.
- A Provisional Specification secures a priority date for the application over any other application which is likely to be filed in respect of the same invention being developed concurrently.
- Immediately on receiving the Provisional Specification the Patent office accords a filing date and application number to the Application.
- An application accompanying a provisional specification is deemed to be abandoned if no complete specification is filed within twelve months from the date of filing of the provisional specification.
- If two provisional specifications filed by an applicant are cognate or if one is a modification of the other, the applicant may file one complete specification covering both the provisional applications. Such a complete specification shall have to be filed within twelve months from the date of filing of the first provisional application. In such cases, date of filing of application is the date of filing of the earliest provisional specification and shall bear the number of that application.
- An applicant may, within twelve months from the filing of a complete specification (not being a convention application or a PCT National Phase Application), convert the same into a provisional specification. Consequently, the applicant has to file a complete specification within twelve months from the date of first filing.
- A provisional specification (i.e. the one filed directly or the one converted from a complete specification) may be post-dated to the date of filing of the complete specification.
Non-Provisional filing (Conventional): A non-provisional or complete application may be filed if the invention is reached at a final stage. A direct complete application or complete after provisional application will be filed. Filing a provisional application in one country and subsequently filing a complete application in another country with one year via conventional route is also possible.
National Phase Entry: As also mentioned above, the applicant must individually ‘enter into the national phase’ i.e. file a National phase application in each county he wishes to enter. The applicant can enter the national phase in up to 148 countries within 30-31 months (depends on the laws of the designated countries) from the international filing date or priority date (whichever is earlier). If the applicant does not enter the national phase within the prescribed time limit, the International Application loses its effect in the designated or elected States.
How to select countries of interest:
It is a very important question to select which countries should be selected to protect the rights in the invention. If you decide not to enter the national phase in an important country, your rights are lost. Accordingly, a patent filing strategy is devised.
It is important to understand that a patent should be sought in any country where you wish to prevent another party from manufacturing, selling or importing your product. This analysis normally leads to the identification of many countries, and the subsequent culling of most due to cost considerations.
Further, it is imperative to have answers to some of the below questions in order to select countries to protect your invention:
- Estimated market size: How big is the market for your invention in a particular country? If the market for the invention is a relatively small one, it may not be worth the expense of filing an application in that particular country.
- Limited funding: It may be more worthwhile to carefully pick just a few countries and spend all your money on getting well-prosecuted, broad patents in those countries rather than getting narrow patents in a lot of countries. Another strategy would be to concentrate all your efforts on the key features of your technology that competitors will need in order to be competitive.
- Manufacturing centers: Certain regions of the world are centers of manufacturing for different industries. For example, the Far East economies of Singapore, Hong Kong, Korea, Indonesia, Thailand, the Republic of China, China (People’s Republic of China), and Japan are important manufacturing countries for the computer and semiconductor industries.
- Competitors filing: Place of filing can be indicative of future business plans. You may want to file in the same countries your competitors are filing in, even if you do not initially plan to manufacture or sell your invention in those countries.