FREQUENTLY ASKED QUESTIONS ABOUT PATENTING

in Sci-IP/That Makes Sense by


(These are not definitions, but helpful pointers)

    •  What is a patent?

    A patent is an exclusive right for a limited time for an invention.

    • What are the exclusive rights for?

    The rights are excluding others from making, using, selling, offering for selling and importing the invention.

    • For how long is a patent valid?

    20 years from the application filing date.

    • What is an invention?

    An invention is a novel and non-obvious useful tangible solution to a problem. Notable exceptions are design patents that cover external appearance of objects.

    • What is novel?

    In simple terms anything that is new, man-made, and does not exist previously and has not been disclosed before.

    • What is non-obvious?

    In simple terms anything that is not an incremental improvement (i.e. obvious improvement) over previously known product or process.

    • Can I patent anything and everything that meet the criteria of utility, novelty and non-obviousness?

    No, you cannot. There are country-specific rules on what is and what is not patentable.

    • Can I patent, if I publish?

    In the US, you may, within one year of publishing and obtain rights in the US. In all other countries you loose your rights if you publish before submit a patent application.

    • Can I patent, if I disclose?

    In the US, you may, within one year of disclosing your invention. In all other countries you loose your rights, if you disclose your invention before submitting a patent application.

    • What kinds of disclosures affect the prospects of patenting?

    In general, any public disclosure as opposed to disclosure within a confidential meeting (for example lab meeting) or disclosures protected by non-disclosure agreements.

    • Do I have to file a patent to practice my invention?

    No. You are not required to file a patent to practice your invention. But without patent protection, you risk your invention being copied by others.

    • Can a person or entity that has already obtained a patent on the same invention, stop me from practicing the invention?

    Yes. A patent gives the owner of the patent, exclusive constitutionally bestowed rights to stop others from practicing the invention described in the patent. This falls under patent infringement.

    • I have an idea that could be patentable, what should I do first?

    The first question to ask is, who owns the idea. An easy way to answer this question is to ask yourself, what are your obligations to your employer.

    • I work in a lab and my idea is related to the project I work on for my employer. Do I own the rights to the idea?

    In general, no. Your employer owns the right to the idea. Contact your technology transfer office/center. They will guide you.

    • I work in a lab and my idea is independent of the project I work on for my employer. But I used materials and equipment in the lab for testing and perfecting my idea. Do I own the rights to the idea?
    • I work in a lab and my idea is independent of the project I work on for my employer. Also, I did not use materials or equipment from my employer and instead used my own funds for testing and perfecting my idea. Do I own the rights to the idea?

    Yes.

    • My employer decided not to pursue my invention. Is this a dead end for my invention?

    No. They could give you the ownership rights for the invention for free or a cost. They could also license for free or a cost. Where federal funding is involved, even the federal government can give you the rights for free or a fee.

    • What are the things to remember when deciding whether to patent an invention or not on my own?

    Two things to contemplate are money and time. Obtaining a patent costs money in terms of filing fees, maintenance fees, and attorney fees. It is up to the inventor to evaluate the cost benefit of filing and maintaining a patent.

    • I am good at generating ideas but not good at perfecting them. Can I file a patent application for an imperfect idea?

    In fact yes, if the idea is not completely abstract and can be described adequately to convincingly prove that it can work as described.

    • I am good at generating and testing ideas and even perfecting them. But I do not have the experience or inclination to manufacture or market my invention. Is this worthwhile to pursue a patent application?

    Yes. Patents can be sold or licensed to others who are interested buyers. They are a form of intellectual property.

Authored by Dr Syam Anand, PhD (Indian Institute of Science, IISc; Post-Doctoral research, University of Pittsburgh School of Medicine; Faculty, University of Pittsburgh School of Medicine, Founder and US Patent Agent, Mainline Intellectual Property LLC, Ardmore, Philadelphia USA). Syam has over 20 years experience in diverse areas of Science with domain knowledge in Life Sciences and Intellectual Property. Dr. Anand is also an inventor and budding entrepreneur. A rationalist, Dr. Anand enjoys science at all levels and advocates the use of scientific methods for answering all questions and solving all problems and make common people curious and interested in understanding their worlds.

https://www.linkedin.com/in/syamprasadanand

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11 Comments

  1. This is excellent! Just SO informative. I guess the FAQs comprehensively cover most queries which a 1st timer (like me) might ask..
    Cheers!

  2. This is an excellent basic primer, but it needs to have two corrections, 1 In India just like US you can patent within 1 year of public disclosure or publication. 2 you cannot patent an idea, but only an “expression of idea”, this is called idea- expression dichotomy. You can patent the form in which Idea is presented or expressed.
    I also wish if you put a flowchart of the patent application to grant process. Many scientists are discouraged/frustrated by the time taken. It would be good to prepare them mentally for the long haul by providing the information beforehand.

    • Hi Kaushal,
      Thank you for your comment. My understanding is that India’s grace period is NOT “just like US”. If the publication had the consent of the inventor, it does not protect against anticipation.
      http://ipindia.nic.in/IPActs_Rules/updated_Version/sections/ps29.html

      Public display or use (other than for experimentation) also amounts to anticipation in India. I agree that there are some wrinkles. What I can do is have some India-specific issues covered by an India-expert in another series of FAQs for the benefit of India filings.

      About ideas- I have stated that abstract ideas are not patentable. I will clarify it further in the next set of FAQs. Anyway, I want to thank you for pointing out these things.

      A flow chart is a great idea. Will work on one. Thank you again!

      Syam.

  3. Hi Kaushal,
    It is not like the US. The reason is this: In the US, the one grace period covers disclosures without restrictions like India Patent act does. If you read the conditions in the link you gave, it excludes ONLY industrial exhibitions and disclosures in front on societies and then appearing in gazettes or transactions of such societies. The publication in Indian patent law is not any publication but a restricted publication such as the transaction of a learned society. Also, the earlier link I gave for publication clearly tells that the grace period applies ONLY if the publication takes place without the consent of the inventor. That is not a one-year grace period that is like the US.
    Also, I have checked the same with Indian patent agents who gave the opinion that in practice the examiners NEVER allow a one-year grace period and Indian patent agents always ask inventors to file before they disclose.

  4. That is completely contradictory to what is the information given by teachers at NLSIU, as well as many of IP agents and attorneys that I have interacted. I will again try to confirm this.

    I have also not come across any case of rejection by examiners due to prior publication in a journal before filing the patent, disregarding the 1 year grace period. Any example of such would help improve my understanding as well as clear this issue. I would greatly appreciate this.

    Regarding file before disclose, that is something that is prudent and is advised by IPAs, but is very frequently disregarded by scientists and I have come across quite a few cases where such patents were filed after publication, though I am not aware of their final outcome. It is an unofficial standard practice due to greater importance given to publications over patents. I hope this discussion will help clear the air and help our friends and readers be well-informed about patent filing.

    I too believe that “File before disclose” is the right way, but I have to concede that it looses out to the fact that many papers can be published with lot less data than a patent and therefore they are. Patenting is also a recent trend in India post TRIPS and there are many myths and misconceptions.

    I must also say that the US law regarding innovation has greatly benefited from people like Benjamin Franklin being one of the founding fathers, and a lot flows from there. You can clearly see how innovators are well protected by the US Constitution. And therefore even minor issues like restrictions on disclosures are not present.
    That said, my current knowledge is that such restrictions are not applied to Indian patent applications.

    • Hi Kasushal,
      Thank you again for your comments. You should discuss this more with India patent agents and the teachers at NLSIU. When you are satisfied, please share your comments again for the benefit of everyone here.
      There are some other countries also that claim to have grace periods ranging from six months- one year. You might come across such info on the web. But, for all practical purposes and as far as I know, US is the one which gives a blanket one-year grace without preconditions that you can totally depend on. This is what we advise our clients too.
      Best wishes.

  5. But why would patent applicants disclose such extensive information about their inventions? The reason is that the patent system balances the exclusive rights granted to a patent holder over an invention with the obligation to publicly disclose information about the newly developed technology.

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