Scientists Simplifying Science

Category archive

Sci-IP

Blogs about Intellectual Property and Regulatory Affairs

Entrepreneurship and IP Part III: Trade secrets

in Sci-IP/SciBiz by

Tradesecret blog_final_Lipika

Trade secret can be of any commercially valuable information that gives your business a competitive advantage as it is not known to your competitor or public. It could be a formula, physical device, survey method, idea, recipe (e.g., recipe for Coca-Cola), business plan, pattern, advertising or sales strategy, distribution method, document tracking process, consumer profile, manufacturing process or a little tweak involved in the process, computer algorithm (e.g. Google’s search engine), compilation of information (customer list, suppliers list etc.), financial information, that helps the owner gain a competitive advantage in market place.

Trade secret may have a combination of information available in public domain and information unique to the company. And compilation of such information provides a significant advantage to the owner.

How to protect trade secret?

Typically speaking, for trade secret protection, no registration or no government grant is required. You simply need to maintain secrecy of the information. However, few countries (e.g., US & EU) have formal legislation for trade secret registration. World Trade Organization (WTO) recognizes protection of trade secrets. Member states of WTO and counties that are party to the Agreement on Trade Related Aspects of Intellectual-Property Rights (TRIPS) are obliged to provide trade secret protection. Protection lasts as long as the information is kept confidential. Simply saying information as trade secret will not help, you need to take substantial and reasonable measure to keep the information confidential. Once the information is made available to public or if someone discovers from an independent source, the trade secret protection ends.

Challenges of start-ups:

Trade secret policies differ greatly in an established company and in early stage start-ups. Many start- ups and SMEs (Small and Medium-sized Enterprises) exclusively use trade secret to protect their Intellectual Property (IP). Start-ups have challenges in terms of space – many of them operate from incubation centre, accelerator, shared office space etc. However, they should have some policy documents for trade secret identification and protection. Start-ups should at least address the following:

1) Identifying your Trade secret

Every business has some set of information that can be categorized as trade secret.  First, you should identify such information. Take a through look of your company’s asset. It would be very difficult to prove later that a particular category of information is trade secret if you do not have a hard copy document or electronic format stating the same.

2) Maintenance of Trade secret

Once you have identified your trade secrets, you need to set up policies and procedures to protect them. Trade secrets are considered as the most valuable asset for start-ups. You can consider the following measures to protect your trade secret:

  • Signing non-disclosure agreements (NDA) with your third party development partners and manufacturers. NDA is a contractual agreement between you and the recipient of the information.
  • Signing trade secret assignment with employees, independent contractors and consultants. Writing them down makes it clear to the employee and others that these set of information are trade secrets & they should take effort to keep confidential.
  • Marking documents as confidential, password protection, limiting distribution of password & access to priority documents.
  • Locking important folders and listing who can access the information.
  • Reporting periodic status of the trade secret information. During the process of growth & operation some information might lose the status of trade secret e.g., product launch, patent filing etc. Regular auditing of information is required for appropriate maintenance of trade secrets.
  • Marking emails, attachments etc. as trade secret/private/confidential, specific guidelines for document sharing provision and email usage.
  • Having physical security, locks and limited access to the area/systems having confidential information.
  • You must have clear policies as how you handle visitors coming into your space. Your employees should know what information can/cannot be shared, and also not accessing confidential documents/ keeping off desk in the vicinity when the visitors are around. As the company grows, the policies and procedures expand and will become more robust.

3) Patents or trade secret

For start- ups, filing patents may be too expensive but the technology may be entitled for patent protection. In some cases, you can choose ‘trade secret’ as an alternate mode of protection. Furthermore, patent law requires complete disclosure of your invention in patent application in return for obtaining a 20 year monopoly. Some information/technology that you have developed might be of high value but not appropriate for patent protection. And you may also lose trade secret rights for such information by public disclosure in the process of patent filing. In addition, it might just be a gift to your competitor, as the information could easily be available to them.

If the trade secret is about an innovative product, others may reverse engineer and then entitled to manufacture and use the product. You need to know that, unlike patent law, trade secret does not protect against independent discovery of the information. The decision of keeping information as trade secret or filing a patent depends on technology, valuation, business consideration and evaluation of relative benefits of patent and trade secret.

4)  Employee awareness about trade secrets

Notify your employees about the category of information that are trade secret and routinely remind them.

Your trade secret policy should start to roll on immediately, when an employee comes on board and remain until she/he leaves the company. Employees coming on board can also ‘contaminate’ trade secret information from earlier employer(s), that should not happen. When employees leave, remind them about the non-disclosure documents they had signed and ensure that critical information do not leave with them. It is their duty to maintain the confidentiality of trade secret information of the employer for specified period of time (as mentioned in the trade secret agreement) even after their employment.

5) Trade secrets and misappropriation

When a trade secret is leaked out, unauthorized use of such information by persons/competitors/third parties other than the owner is regarded as an unfair practice and violation of the trade secret. In case of misappropriation, you need to show by record to substantiate, that the said piece of information is trade secret and you took adequate measure to protect the information.

The court will look into following while establishing misappropriation of trade secrets,

  • The information was confidential to company.
  • The information was of commercial value, and use of such information in an improper way results in financial damage to the company.
  • Company took reasonable efforts to keep the information as secret through agreements, trade secret policy and procedures.

Conclusion:

Trade secret is considered as one of the important form of Intellectual Property rights protection for start-ups. Value lies in information what works for your company, as well as what did not work and not spending resource what did not work. Documentation of such wealth of information (not known to your competitor) over time adds tremendous value to your company.

In case of industries, where employee attrition is very high, special measure should be taken. You should maintain record that you developed specific technologies or strategies independently of your competitor.   It will create a good defence in the long term protection of your company’s IP assets.

Finally,  do not loose valuable intellectual property  rights, just because you did not consider entering into a non-disclosure agreement, data encryption, training employees, marking documents as confidential, password protection of accounts, documenting trade secret policies due to lack of time or so.  Trade secrets are extremely valuable, but that value can instantly vanish, if not maintained adequately.

References: 1, 2, 3, 4

Image source: Author

This post is the third in the series of articles on “Entrepreneurship and IP”.

Link to the First part of the series: “Entrepreneurship and IP Part-I: Starting up right”http://www.sciwri.club/?p=871

Link to the Second part of the series: “Entrepreneurship and IP Part II: Patent strategy and business value” http://www.sciwri.club/?p=1174

 

Disclaimer: The materials in the blog are solely for the purposes of informing, assisting and educating the readers and are not in any way a substitute for professional opinion or advice. They do not constitute legal advice or legal opinion or solicitation.

Dr. Lipika Sahoo, Founder & CEO of Lifeintelect Consultancy Pvt. Ltd., a registered Indian Patent and Trademark Agent having 16 years of experience in academia and industry. She holds a PhD from Indian Institute of Science (IISc). She holds triple masters; MSc from Sambalpur University; PGDIPR from National Law School of India University (NLSIU); PGCBM from Xavier Institute of management (XIMB); and advanced certifications from World Intellectual Property Organization (WIPO) in Patents and Patent Drafting.

lipika@lifeintelect.com| https://in.linkedin.com/in/lipikasahoo|

News: The Author will be  conducting a workshop in IIM, Bangalore on IP & Entrepreneurship for start-ups & entrepreneurs associated with IIM ecosystem.

IP_DrLipika_24thAug_emailer

Link to Poster: IP_DrLipika_Poster_24thAug

 

Creative Commons License
This work by ClubSciWri is licensed under a Creative Commons Attribution-NonCommercial 4.0 International License.

A Compendium on Patenting

in Sci-IP by

motorcycle-1515873_960_720

Image source: https://pixabay.com/en/motorcycle-bike-harley-davidson-1515873/

Editor’s Note: If you are interested in taking up Intellectual Property and Patenting as a career in USA, you need to clear the USPTO Patent Bar exam. Syam Anand’s book titled “Index Cards for USPTO Patent Bar Exam and Quick References on US Patent Process” is available on Amazon (https://goo.gl/dMKSvq) which is a set of more than 2000 index cards that he used to ace the USPTO Patent Bar Examination. He has been a regular author on ClubSciWri and has guided several PhD Career Support Group members on issues of patenting.  His regular discussions led him to compile a brief overview and a simplified set of FAQs to help novices understand the patenting process in US and the role of a USPTO agent in helping the inventors understand the legal language of ownership, i.e. Patenting.  

Brief Overview of the Patenting Process in USA

The U.S. Patent and Trademark Office (USPTO) offers different application routes to meet varied goals of inventors and owners of inventions. These are:

  • Provisional Applications
  • Utility Applications (Non-provisional Application)
  • Continuing Applications
    • Divisional Application
    • Continuation Application
    • Continuation-In-Part Application
  • Design Applications (only for ornamental design of a functional item)
  • Plant Applications (only for plants)
  • PCT International Applications

Inventor or owner or assignee of invention can apply. Selecting the right application route is critical for securing the right kind of patent protection for your intellectual property. The following is a brief description of the various routes available and their approximate costs.

Provisional Application

  • Lower cost to file.
  • USPTO filing fee of $260 for a large entity and $130 for a small entity.
  • Patent attorney/agent fees range from $1,500-$2,000 depending on the complexity of the invention.
  • Gives an early effective filing date. Establishing an early effective filing date is critical since this determines what references and other disclosures qualify as prior art.
  • Claims covering the invention are not required.
  • Not examined or published.

Utility (Non-provisional) Application

  • The “actual” patent application filed by the applicant that gets examined.
  • USPTO filing fee of $1600 for a large entity and $730 for a small entity.
  • Patent attorney/agent fees range from $3,000-$5000 depending on the complexity of the invention.
  • Claims priority to the provisional application. Must be filed within one year of the provisional application filing date.
  • Requires the presence of claims covering the invention.
  • Gets published after 18 months from the priority date.

 

Divisional Application

  • Pursues unelected claims of a parent application as a result of USPTO Restriction Requirement.
  • USPTO filing fee of $1600 for a large entity and $730 for a small entity.
  • Patent attorney/agent fees from $1000-2000 depending on the complexity of the invention.
  • Claims priority to the parent application. Must be filed before the parent application abandons or issues.

Continuation Application

  • A continuation application pursuing unclaimed subject matter of the parent application.
  • USPTO filing fee of $1600 for a large entity and $730 for a small entity.
  • Patent attorney/agent fees from $1000-2000 depending on the complexity of the invention.
  • Claims priority to the parent application. Must be filed before the parent application abandons or issues.

Continuation-in-part Application

  • A continuation application filed by the applicant to pursue new matter that is not disclosed in the parent application. The new matter must be closely related to the subject matter disclosed in the parent application.
  • USPTO filing fee of $1600 for a large entity and $730 for a small entity.
  • Patent attorney/agent fees from $1000-3000 depending on the complexity of the invention.
  • Must be filed before the parent application abandons or issues.
  • Preserves priority for the old matter that was shared in the parent application.
  • The new matter gets the priority of the filing date of the continuation-in-part application.

PCT Application (also called “international application”)

  • International Application under the Patent Cooperation Treaty (PCT).
  • USPTO filing fee of $240 for a large entity and $120 for a small entity.
  • USPTO search fee of $2,080 for a large entity and $1,040 for a small entity.
  • USPTO examination fee of $760 for large entity and $380 for small entity.
  • Patent attorney/agent fees from $3,000-$5,000 depending on the complexity of the invention.
  • Standard one format, one language application that can be used as a basis for filing patents in more than 140 member countries of the PCT.
  • USPTO accepts PCT applications in English by a U.S. national or resident.
  • Applicant has 30 months from the effective filing date of the PCT application to enter individual countries and file national stage applications.

Patent prosecution is said to begin once a patent application is filed. The application is eventually taken up for examination. Effective communication with the patent office and with the examiner, with an understanding of the nuances of patent law and the patent language, assists in making prosecution a smooth process resulting in savings of time and money. Some of the prosecution steps that applications invariably go through are briefly described below:

Restriction Requirement

  • Examiner states there are multiple inventions in the patent application being examined.
  • Applicant must elect one of the inventions designated by the examiner. Non-elected inventions can be pursued in a divisional application.
  • No USPTO fees if filed within time period for reply, extensions of time available.
  • Patent attorney/agent fee range from $500-1000.

Non-final Office Action

  • This is the first communication from the Examiner regarding the claims. Examiner raises objections or rejections to claims in view of the prior art.
  • Applicant is required to provide detailed responses to overcome the objections/rejections raised by the examiner. This advances the prosecution towards allowance.
  • No USPTO fees if filed within time period for reply, extensions of time available.
  • Patent attorney/agent fees range from $750-$1500 depending upon complexity of response required to overcome objections and/or rejections stated by the examiner.

Final Office Action

  • Examiner may again raise objections or rejections to claims informing why the response to the non-final action does not place the application in condition for allowance.
  • Applicant is required to provide additional detailed responses to each and every objection and rejection raised by the examiner and advance the prosecution towards allowance.
  • No USPTO fees if filed within time period for reply, extensions of time available.
  • Patent attorney/agent fees range from $750-$1500 depending upon complexity of response required to overcome objections and/or rejections stated by the Examiner.
  • Response either places the application in condition for allowance or Applicant files a request for continued examination (RCE).

Notice of Allowance

  • Informs the applicant that the patent is ready for issue.
  • USPTO issue fee is $960 for large entity, $480 for small entity
  • Patent attorney/agent fees $500.
  • After the application grants, you get 20 years of patent term from the filing date.

Maintenance Fees

  • Fees associated with maintaining the patent in force after issuance, late payment due if payment within 6 months after fee is due
  • 1st fee (due at 3.5 year): $1600 for large entity, $800 for small entity
  • 2nd fee (due at 7.5 year): $3600 for large entity, $1800 for small entity
  • 3rd fee (due at 11.5 year): $7400 for large entity, $3700 for small entity

Glossary of important terms

Abandon                                  Applications are usually abandoned when responses that are due are not submitted in a timely fashion to the USPTO. Abandoned applications cannot mature into patents. Prosecution stops.

Allowance                                A notice of allowance from USPTO informs that the application meets all the requirements for a patent to be granted.

 

Applicant                                 Can be the inventor(s), owner of the invention or assignee of the rights of the invention.

 

Assignee                                  The person(s) who hold rights to the invention, for example, the employer of the inventor(s).

 

Election                                   Choosing one of the inventions in an application for prosecution as a result of restriction requirement by an examiner.

 

Effective filing date                  The earliest filing date that can be claimed for an application. The effective filing date may be (i) actual filing date of the application; (ii) the date of the earlier-filed application to which priority is claimed.

 

Extension                                 Formal requests for extensions of time for filing responses can be obtained for a fee. Cannot exceed more than 6 months.

 

Filing date                               The date when the application is submitted to USPTO.

 

Grant                                      Grant of the patent. This gives rights to an inventor “to exclude others from making, using, offering for sale, or selling the invention throughout the United States or importing the invention into the United States” for a limited time in exchange for public disclosure of the invention when the patent is granted. A bond paper copy of the patent grant is ribboned, sealed, and mailed by USPTO.

 

New matter                              Subject matter not initially disclosed in the application. USPTO does not allow new matter to be added at any time during prosecution.

 

Objection/Rejection                 The examiner issues an office action objecting/rejecting the claims during prosecution, based on prior art. When the office action is issued, the objections/rejections have to be overcome in order to advance the prosecution. A critical and significant portion of patent prosecution.

 

Patent Agent                            A person who has passed the Patent Bar examination administered by USPTO for registration at the USPTO.

 

Prior Art                                 The universe of printed publications, disclosures, talks, and other information that are publically available.

 

Publication                              USPTO publishes all applications around 18 months. The contents of the application are publicly available after this. In certain cases, a request can be made to withhold from publication.

 

Response                                 Formal filing of communications with the USPTO within the required time periods. They have to fully meet the requirements of form and content. A critical and significant portion of patent prosecution.

 

Restriction requirement           Placed on an application when the examiner believes that there is more than one claimed invention in an application. The applicant has to elect one invention for the prosecution to progress.

 

Subject matter                         The subject to which the application and the invention is directed.

 

 

Frequently Asked Questions (FAQs)

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?

Twenty 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.

Can I patent an idea that is just an idea?
No. Ideas that do not describe an identifiable embodiment or do not have any functionality are not patentable.

Who can file a patent application?
Inventors, owners and individuals or organizations with sufficient proprietary interest in the invention can file a patent application for an invention.

When should I file a patent?
Usually when your invention is enabled and before you disclose your invention to public, for example through seminars or trade shows, or even before signing a potential license agreement with a third party.

How do I know that my invention is enabled?
In simple terms, your invention is enabled if it functions as described by you and extensive experimentation is not required to practice it.

Do I have to submit a working prototype of the invention when I am filing a patent application?
No.

I do not know how my invention works, but it works. In other words, I do not know the scientific principle that makes my invention work. Can I file a patent application for the said invention?
Yes.

Why should I file a patent application?
Once a patent is granted, its gives the owner of the patent, rights to exclude others from using/copying, selling, offering for sale and importing the invention from another country.

Why should I file a patent application if my employer owns the rights to my invention?
You may benefit from financial and professional incentives that many employers give for generating intellectual property that adds value to the employer.

My employer owns the invention I wish to patent. How should I go about filing a patent application for my invention?
Please contact your employers. They will guide you. In general, industries have patent liaisons or counsels and academic organizations have technology transfer experts who will guide you.

My employer does not own the invention I wish to patent. How should I go about filing a patent application for my invention?
You can file a patent application all by yourself (called pro se) or with the help of a professional who has knowledge about patent laws.

What kind of professional help should I seek for when I am filing a patent application myself?
Almost all countries have patent agents who are qualified to represent inventors and registered with the country-specific patent office. You may discuss your invention with patent agents or patent attorneys (who are also lawyers) after signing non-disclosure or confidentiality agreements with them.

Am I required to go through a patent agent to file a patent application?
No. In fact, you can file patent applications pro se, that is, by yourself. However, most patent offices recommend that prospective applicants retain the services of a registered patent attorney or patent agent to prepare and prosecute their applications.

Can I take the help of a patent agent in India for representing me at the United States Patent and Trademark Office (USPTO)?
No. Only candidates who pass the USPTO registration examination (also known as the patent bar exam) and registered at USPTO can represent inventors in the US. However, inventors may utilize the expertise of other individuals including patent professionals in other countries to prepare and submit applications. In this scenario, the inventor will be representing himself/herself at the USPTO. Similarly, only candidates who have passed the Indian Patent Agent examination and registered at the Indian patent office to practice Indian patent law can represent you at the Indian Patent Office.

How does the services of a patent agent help in the preparation and prosecution of applications at the USPTO?
When filing an application at a patent office, there are technical and legal requirements to be met. A patent is only as good as what is claimed and how it is described in a patent application. A strong patent protection requires good patent application drafting skills. A good patent helps to prevent others from designing around your invention and prevent others from entering the same market space. An experienced patent attorney or agent brings such skills in drafting patent applications.

In addition, the attorney/agent also helps in prosecuting the application before the patent office. Once an application is examined, the patent office sends out office actions- official communications to the inventor, and may reject or allow based on the merits of the patent application. The attorney/agent, on behalf of the inventor, can present arguments to meet the legal and technical thresholds set by the patent office and help in obtaining a patent. This requires an understanding of the patent law and claim language.

What are the contents of a patent application?
The main contents of a patent application are a written description of your invention called specification, drawings that help to describe the invention and specific claims that you seek exclusive protection for based on the specification. Among other things, it also contains information about the inventor, owner and representative of the invention.

How long does it take to file a patent application?
It takes anywhere from one week to more than a month to file a patent application. The main factor that determines the time taken is drafting a patent application, which usually depends on the nature of the invention. Complex inventions, such as inventions in biotechnology and life sciences take around 2-3 weeks to draft good patent application.

How long does it take to obtain a patent after filing an application?
In the US it may take from 1-3 years depending upon the area and the procedure for examination used. There are accelerated procedures available for an increased fee. In India it takes up to 8 years to obtain a patent.

Where do I file my patent?
You need to file patents in countries in which you wish for patent protection. Many inventors choose to file in United States because United States is one of the largest economies in the world. Other regions that people consider are Europe, Japan, China, Brazil, and India.

I am not a US citizen, but my invention was made in the US. Should I file for patent in the US or the country of my citizenship?
Any person can file for a patent in US. However, if the invention was made in US and the inventor wants to first file a patent outside US, the inventor has to apply for a foreign filing license.

I do not want to obtain a foreign filing license for my invention. What are the consequences?
Not getting a license and still filing outside will cost US patent.

What are the typical initial costs involved in filing a patent application in the US?

Preparing a US patent application can cost anywhere from 1500-10000 US$ depending on nature, complexity of patent application, type of patent application and involvement and nature of patent agent (individual, small firm, big firm) or doing it pro se.

What are the typical initial costs involved in filing a patent application in India?

Preparing an Indian patent application can cost anywhere from 50,000 to 1,00,000 INR depending on nature, complexity of patent application, type of patent application and involvement and nature of patent agent (individual, small firm, big firm) or doing it pro se.

How does one choose a patent agent/firm?

The best way is to get referred to by someone who has used the agent/firm before. If not, look for registered patent attorneys and agents listed in the patent office one wishes to file. Other factors to consider are firm’s expertise with respect to the nature of invention (biology, chemistry, material science, computer software etc), experience, and affordability. Patent firms usually employ patent agents or technical specialists who assist patent agents and they cover most subject areas.

What are the typical steps involved in filing a patent application with the help of a patent agent or patent firm?

Submit an invention disclosure to the agent/firm that describes the invention. This is typically followed by an interview with the agent/firm. The agent/firm may request additional information during the drafting process. Professional drawings also may be required. The completed application is filed by the agent/firm on the behalf of inventor/owner of the invention to the patent office.

Can I obtain an international patent for my invention?

No. There is no such thing as an international patent. Individual countries grant patents.

How can I get patent protection in many countries?
There are two options.
1. One can file separate patent applications in the selected countries.
2. One can file an application under the Patent Cooperation Treaty (PCT). The PCT application acts a common patent application, and can be used as a basis to file country specific patent applications. These country-specific applications are called national stage applications.

What are the advantages of filing of a PCT application or patent applications in several different countries myself versus using a patent agent?

Experienced patent agents/firms will be familiar working with associates/firms in different countries. Without professional assistance, missed deadlines and incomplete responses to office actions originating from many countries at regular intervals may be become overwhelming and more expensive. Keep in mind that in addition to the technical and legal requirements there are language requirements in the different countries.

Can I use a patent agent/firm in US (or in India) for handling the filing of PCT applications?

Yes. PCT applications can be filed in any country that is signatory to the Patent Cooperation Treaty. Once the application enters the national stage in different countries, the primary agent/firm will coordinate with the foreign agents/firms who are registered to practice in the respective countries.

Are the contents of an application held in confidence by a patent agent?

Yes. It is a patent office requirement and there are penalties for not following this.

Can my patent agent disclose the contents of my application to a third party without my permission even if I do not sign a confidentiality or non-disclosure agreement?

No

My patent agent/firm is asking for a power of attorney for filing my application with the patent office. Should I give one?

Yes. The agent/firm requires a recorded power of attorney to communicate with the patent office on your behalf.

Are the contents of an application held in confidence by patent offices?

Yes, until the application gets published by the patent office after a certain period of time after filing of the application. This is 18 months in the USPTO.

Can I prevent publication? How long does it protect against disclosure?

Yes. You may submit a non-publication request in the USPTO. It protects against disclosure until the patent is granted.

What is patent infringement?

Making, using, selling, offering for selling and importing the invention to which one does not hold patent rights is considered infringement.

I have a US patent for an invention. I see that the product covered under the granted patent is sold commercially in India. Do I have the rights to stop this commercial activity?

No. Patents rights are only for the region/country that granted the patent.

I have a US patent for an invention. I see that the product covered under the granted patent is sold commercially in the US. Do I have the rights to stop this commercial activity?

Yes.

I have filed a US patent application for an invention. I see that the product described in the patent application is sold commercially in the US. Do I have the rights to stop this commercial activity?

No. A patent application is just a patent application. You have no rights until it is granted.

I have filed a PCT application for an invention made in the US. I see that the product described in the patent application is sold commercially in India and USA. Do I have the rights to stop this commercial activity?

No. A patent application is just a patent application. You have no rights until it is granted.

 

 

 

Syam

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

 

For more info, get Syam’s book from Amazon https://goo.gl/dMKSvq

Syam Book

Creative Commons License
This work by ClubSciWri is licensed under a Creative Commons Attribution-NonCommercial 4.0 International License.

Entrepreneurship and IP Part II: Patent strategy and business value

in Sci-IP/SciBiz by

Lipika 2

Innovation is the central issue in economic prosperity” -Michael Porter

There are several challenges for a start-up company, including developing a viable product or service, business development, employee recruitment, business value creation, tackling competition from bigger companies and new entrants, technological advancement and also managing legal and regulatory compliances. Typically start-ups are flooded with recommendations and advice from friends, peers, mentors and investors about business challenges and patent strategy they should follow.

One of the expensive mistakes a start-up entrepreneur can make is messing up their intellectual property right policies.  Irrespective of size of the company, effective and diligent IP portfolio management is vital for any emerging company. Bigger companies have the resources to address IP issues with relative ease, but what about start-up company? Are the filing strategies for start-ups different from that of established enterprises? Should start-ups wait for venture capitalists to fund their patent filings? Should they focus on business development or prioritize patent protection? Should they wait for patent protection till they have conducted enough customer discoveries?

Patent rights are important because they create a legal barrier to competition, important drivers of risk reduction, adding value to business and for raising seed or venture funding by licensing or transferring IP rights. A start-up needs to manage its own IP rights while avoiding the IP rights of others.

According to WIPO, “A patent is an exclusive right granted for an invention, which is a product or a process that provides, in general, a new way of doing something, or offers a new technical solution to a problem. To get a patent, technical information about the invention must be disclosed to the public in a patent application.”

First thing we need to understand start-ups usually have a tighter budget to address IP issues. In addition, filing strategies differ for start-ups and bigger companies. The key difference is that, the latter have a validated business model, products in the market, qualified customers and established new product development channels. Whereas, the former should validate the actual paying customers who will buy the product or technology within start-up’s business framework. If the start-up cannot validate the actual paying customers for the innovation, then protecting such innovation is expensive waste of time and resource unless there is an actual customer demand for the start-up’s product or technology. The business value from patents should be measured for it to be managed well. Patenting decision should be backed by data. Once they have established that a strong demand exists they must move quickly and ensure a strong IP protection to restrict competitors.

The second most important point for start-ups is to remember that patenting decisions must go hand in hand with business processes, as opposed to being an event or an output of product development process. Patenting decisions should be integrated into business strategy on an ongoing basis. We always let our clients know the viable option to integrate IP strategy in innovation process. Proactive IP strategies can help overcome patenting mistakes.

There are few important things you need to know as a start-up to address patenting issues efficiently and in cost effective manner.

1. Specifying protective IP provisions in employees, contractors, partners and suppliers agreements/contracts:

Start-ups usually start their business with consultants, suppliers, partners, contractors and employees. If these stake holders develop an invention during their working time with the start-ups, the invention will belong to the start-up if IP ownership clause is covered in the agreement/contract. However, the stakeholder will always retain her/his right to be mentioned as inventor. All stakeholders including owner and executive board members should sign agreement and assign all IP rights to the start-up if generated using start-up’s resources.

2. Accountability for IP process

Large companies have an in house IP counsel who has the knowledge of company’s ongoing innovation process and are often in charge of IP protection. However, for start-ups with limited budget, it does not make any sense to hire full time IP counsel. Start-ups could look for training one of company’s managers in IP processes who could be accountable for IP protection. Another viable option for start-ups could have an external IP strategist who could be part of the innovation team and has access to product development pipeline on a part-time basis.

Accountability of IP process ensures that the IP created are adequately protected and unrecoverable errors that open unwelcome competition are minimized. Furthermore, it reinforces that IP creation and protection are aligned with company’s business processes

3. Protecting valuable innovations with patents

It is true that not all companies create patentable invention, and it is also true that patents can be obtained for simple safety pins to complex automobiles.

Sometimes companies decide not to protect innovations with patent filings for various reasons like; cost factors, strength of protection, time factor or wrongly informed etc. At times these are business decisions.

If you don’t protect your invention, and the product becomes successful, competitors may copy your product. Smaller competitor may sell at lower price as they would not have incurred research and development expenditure. Also, larger organization has the advantage of volume and scale; they can compete for a reasonable market price.

Also, chances are there that someone else may patent same or equivalent invention and could legitimately exclude you from manufacturing or may ask you to pay a licensing fee for the use of invention.

However, you may also consider disclosing your invention to the public without patenting it. Then it becomes prior art for all future applications. This is commonly known as defensive publication. In such scenario, no one (including yourself) can file patent for the same invention due to lack of novelty.

4. Patents are territorial

Patents are territorial rights, granted and enforced by national patent office as per the law of that country. At present, there is no “Universal patent” or “World patent”. However, there are few regional patent offices like, “European Patent Office (EPO)” and the “African Regional Intellectual Property Organization (ARIPO)” that accept regional patent application and grant patent for that region.

Again, if you are seeking patent protection in multiple countries, you may consider filing an international application under ‘Patent Cooperation Treaty (PCT)’. PCT has 148 participating nations; any resident of these nations can initiate a single international patent filing process through PCT. However, the grant and enforcement of patent will be done by national patent office that you will choose.

5. Invention has to be unique universally

Though patents are territorial rights, but the invention has to be unique world wide, in order to be patentable. Before incurring the expense for patent filing, it is highly recommended to conduct a worldwide patent search to identify similar patents, to understand the novelty and inventiveness of the invention.

6. Have cost effective strategies for patent filings

Patent application drafting, filing, prosecution and maintenance can be expensive when you have too many international filings. So it is important to develop good strategies to minimise cost on managing IP assets. Start-ups should work closely with a patent attorney or patent agent and should do some initial work by themselves to save money. They should be actively involved in patenting process and understanding the patent procedures.

7. Patent claim coverage

Patent should provide long term business value and competitive advantage to company. Patent claims should cover more than just the product. It should cover the reason why the customer will buy your product. Patent claims should capture the value of the product. It should cover functional benefits of the product and claims should have sufficient scope to prevent your competition from providing the same value to your customer.

Conclusion

Intellectual property rights, especially patents, help in safeguarding a start-up’s innovation, serve as an indicator for potential VC funding and a guide to discover potential alliance partners.

Innovation to a large extent happens in start-ups, smaller companies, research labs and universities. As company becomes too large, decision-making process becomes slower. Large companies usually do not stay responsive to support a vibrant innovation ecosystem. Most of the times they prefer to buy smaller start-up companies with a thriving innovation process and good IP assets. Without legal ownership of technology, both sides may find it difficult to disclose the invention for the fear of idea or concept being stolen. Therefore, start-ups should have a good patent portfolio to trade with. Patents are tools that can help facilitate a deal with other company that may want part of your right though license or technology transfer. How will you trade the interesting things the other company has to offer if you don’t have anything to trade for?

References: 1, 2, 3

This post is the second in the series of articles on “Entrepreneurship and IP”.

Disclaimer: The materials in the blog are solely for the purposes of informing, assisting and educating the readers and are not in anyway a substitute for professional opinion or advice. They do not constitute legal advice or legal opinion or solicitation.

Dr. Lipika Sahoo, Founder & CEO of Lifeintelect Consultancy Pvt. Ltd., a registered Indian Patent Agent having 16 years of experience in academia and industry. She holds a Ph.D from Indian Institute of Science (IISc). She holds triple masters; MSc from Sambalpur University; PGDIPR from National Law School of India University (NLSIU); PGCBM from Xavier Institute of management (XIMB); and advanced certifications from World Intellectual Property Organization (WIPO) in Patents and Patent Drafting. Dr. Lipika is also an inventor and passionate about technology & innovation; likes music, history & architecture.

lipika@lifeintelect.com | https://in.linkedin.com/in/lipikasahoo |

 

Image source: Google http://bit.ly/1WR16gz

 

Creative Commons License
This work by ClubSciWri is licensed under a Creative Commons Attribution-NonCommercial 4.0 International License.

A BRIEF OVERVIEW OF THE US PATENT PROCESS*

in Sci-IP by

Syam

The U.S. Patent and Trademark Office (USPTO) offers different application routes to meet varied goals of inventors and owners of inventions. These are:

  • Provisional Applications
  • Utility Applications (Non-provisional Application)
  • Continuing Applications
    • Divisional Application
    • Continuation Application
    • Continuation-In-Part Application
  • Design Applications (only for ornamental design of a functional item)
  • Plant Applications (only for plants)
  • PCT International Applications

 

Inventor or owner or assignee of invention can apply. Selecting the right application route is critical for securing the right kind of patent protection for your intellectual property. The following is a brief description of the various routes available and their approximate costs.

 

Provisional Application

  • Lower cost to file.
  • USPTO filing fee of $260 for a large entity and $130 for a small entity.
  • Patent attorney/agent fees range from $1,500-$2,000 depending on the complexity of the invention.
  • Gives an early effective filing date. Establishing an early effective filing date is critical since this determines what references and other disclosures qualify as prior art.
  • Claims covering the invention are not required.
  • Not examined or published.

 

Utility (Non-provisional) Application

  • The “actual” patent application filed by the applicant that gets examined.
  • USPTO filing fee of $1600 for a large entity and $730 for a small entity.
  • Patent attorney/agent fees range from $3,000-$5000 depending on the complexity of the invention.
  • Claims priority to the provisional application. Must be filed within one year of the provisional application filing date.
  • Requires the presence of claims covering the invention.
  • Gets published after 18 months from the priority date.

 

Divisional Application

  • Pursues unelected claims of a parent application as a result of USPTO Restriction Requirement.
  • USPTO filing fee of $1600 for a large entity and $730 for a small entity.
  • Patent attorney/agent fees from $1000-2000 depending on the complexity of the invention.
  • Claims priority to the parent application. Must be filed before the parent application abandons or issues.

 

Continuation Application

  • A continuation application pursuing unclaimed subject matter of the parent application.
  • USPTO filing fee of $1600 for a large entity and $730 for a small entity.
  • Patent attorney/agent fees from $1000-2000 depending on the complexity of the invention.
  • Claims priority to the parent application. Must be filed before the parent application abandons or issues.

 

Continuation-in-part Application

  • A continuation application filed by the applicant to pursue new matter that is not disclosed in the parent application. The new matter must be closely related to the subject matter disclosed in the parent application.
  • USPTO filing fee of $1600 for a large entity and $730 for a small entity.
  • Patent attorney/agent fees from $1000-3000 depending on the complexity of the invention.
  • Must be filed before the parent application abandons or issues.
  • Preserves priority for the old matter that was shared in the parent application.
  • The new matter gets the priority of the filing date of the continuation-in-part application.

 

PCT Application (also called “international application”)

  • International Application under the Patent Cooperation Treaty (PCT).
  • USPTO filing fee of $240 for a large entity and $120 for a small entity.
  • USPTO search fee of $2,080 for a large entity and $1,040 for a small entity.
  • USPTO examination fee of $760 for large entity and $380 for small entity.
  • Patent attorney/agent fees from $3,000-$5,000 depending on the complexity of the invention.
  • Standard one format, one language application that can be used as a basis for filing patents in more than 140 member countries of the PCT.
  • USPTO accepts PCT applications in English by a U.S. national or resident.
  • Applicant has 30 months from the effective filing date of the PCT application to enter individual countries and file national stage applications.

 

Patent prosecution is said to begin once a patent application is filed. The application is eventually taken up for examination. Effective communication with the patent office and with the examiner, with an understanding of the nuances of patent law and the patent language, assists in making prosecution a smooth process resulting in savings of time and money. Some of the prosecution steps that applications invariably go through are briefly described below:

Restriction Requirement

  • Examiner states there are multiple inventions in the patent application being examined.
  • Applicant must elect one of the inventions designated by the examiner. Non-elected inventions can be pursued in a divisional application.
  • No USPTO fees if filed within time period for reply, extensions of time available.
  • Patent attorney/agent fee range from $500-1000.

Non-final Office Action

  • This is the first communication from the Examiner regarding the claims. Examiner raises objections or rejections to claims in view of the prior art.
  • Applicant is required to provide detailed responses to overcome the objections/rejections raised by the examiner. This advances the prosecution towards allowance.
  • No USPTO fees if filed within time period for reply, extensions of time available.
  • Patent attorney/agent fees range from $750-$1500 depending upon complexity of response required to overcome objections and/or rejections stated by the examiner.

Final Office Action

  • Examiner may again raise objections or rejections to claims informing why the response to the non-final action does not place the application in condition for allowance.
  • Applicant is required to provide additional detailed responses to each and every objection and rejection raised by the examiner and advance the prosecution towards allowance.
  • No USPTO fees if filed within time period for reply, extensions of time available.
  • Patent attorney/agent fees range from $750-$1500 depending upon complexity of response required to overcome objections and/or rejections stated by the Examiner.
  • Response either places the application in condition for allowance or Applicant files a request for continued examination (RCE).

Notice of Allowance

  • Informs the applicant that the patent is ready for issue.
  • USPTO issue fee is $960 for large entity, $480 for small entity
  • Patent attorney/agent fees $500.
  • After the application grants, you get 20 years of patent term from the filing date.

Maintenance Fees

  • Fees associated with maintaining the patent in force after issuance, late payment due if payment within 6 months after fee is due
  • 1st fee (due at 3.5 year): $1600 for large entity, $800 for small entity
  • 2nd fee (due at 7.5 year): $3600 for large entity, $1800 for small entity
  • 3rd fee (due at 11.5 year): $7400 for large entity, $3700 for small entity

 

Glossary of important terms

 

Abandon                                  Applications are usually abandoned when responses that are due are not submitted in a timely fashion to the USPTO. Abandoned applications cannot mature into patents. Prosecution stops.

Allowance                                A notice of allowance from USPTO informs that the application meets all the requirements for a patent to be granted.

 

Applicant                                 Can be the inventor(s), owner of the invention or assignee of the rights of the invention.

 

Assignee                                  The person(s) who hold rights to the invention, for example, the employer of the inventor(s).

 

Election                                   Choosing one of the inventions in an application for prosecution as a result of restriction requirement by an examiner.

 

Effective filing date                  The earliest filing date that can be claimed for an application. The effective filing date may be (i) actual filing date of the application; (ii) the date of the earlier-filed application to which priority is claimed.

 

Extension                                 Formal requests for extensions of time for filing responses can be obtained for a fee. Cannot exceed more than 6 months.

 

Filing date                               The date when the application is submitted to USPTO.

 

Grant                                      Grant of the patent. This gives rights to an inventor “to exclude others from making, using, offering for sale, or selling the invention throughout the United States or importing the invention into the United States” for a limited time in exchange for public disclosure of the invention when the patent is granted. A bond paper copy of the patent grant is ribboned, sealed, and mailed by USPTO.

 

New matter                              Subject matter not initially disclosed in the application. USPTO does not allow new matter to be added at any time during prosecution.

 

Objection/Rejection                 The examiner issues an office action objecting/rejecting the claims during prosecution, based on prior art. When the office action is issued, the objections/rejections have to be overcome in order to advance the prosecution. A critical and significant portion of patent prosecution.

 

Patent Agent                            A person who has passed the Patent Bar examination administered by USPTO for registration at the USPTO.

 

Prior Art                                 The universe of printed publications, disclosures, talks, and other information that are publically available.

 

Publication                              USPTO publishes all applications around 18 months. The contents of the application are publicly available after this. In certain cases, a request can be made to withhold from publication.

 

Response                                 Formal filing of communications with the USPTO within the required time periods. They have to fully meet the requirements of form and content. A critical and significant portion of patent prosecution.

 

Restriction requirement           Placed on an application when the examiner believes that there is more than one claimed invention in an application. The applicant has to elect one invention for the prosecution to progress.

 

Subject matter                         The subject to which the application and the invention is directed.

 

*Disclaimer: The above information in only meant to serve as a guideline to understand the complexity of the patent process. It is in no way complete.

 

Syam Prasad Anand, PhD
Founder, Mainline Intellectual Property
Ardmore, Philadelphia, USA.

The different hats of technology transfer officers

in Entrepreneurship/Sci-IP by

business-561387_1920

With the establishment of Bayh Dole Act in 1983, US universities started establishing “Technology Transfer Offices”, whose main job was to evaluate inventions coming out of their laboratories. This helped universities to protect their intellectual property (IP) and license it out to startups or established companies. Technology transfer begins as soon as inventors disclose their technology to technology transfer offices. A technology transfer officer then wears different hats- an inventor’s, an attorney’s, an entrepreneur’s, an industrialist’s or a consumer’s to weigh various aspects of the technology before he/she consents to file a patent. As simple as it sounds, it requires a sound knowledge of the science involved and the rules and laws of patent prosecution. It also requires the business acumen needed to license a technology after filing a patent. Let us go through these steps one by one:

Determining prior art: The first and the most important hat worn by a technology manager is that of a patent agent. He/she asks the most important questions on the disclosed technology that a patent office will also ask: Does the technology have “utility” in the real world? Is the technology “novel”? Given all the previous knowledge or literature in the field, is the technology described by the inventor “obvious”? A patent will be granted by a patent office only if the answer to the first two questions is affirmative, and the answer to the third question is negative. Based on literature and patent database searches for the disclosed technology and judgment from experience, technology transfer officers decide whether to proceed forward with the technology and file a patent.

Freedom to operate (FTO): Wearing an attorney’s hat, the tech transfer officer asks another crucial question: Assuming that a patent is issued for the disclosed technology, can the owner or licensee of the patent practice the invention without infringing upon other patents? In other words, how much “freedom to operate” does the patent actually confer to its inventor/owner/licensee when compared with other patents that have been granted in the same area. A patent that cannot be practiced is as good as not having the patent. It is like investing in a dead technology. No business will buy or license out the technology. Patent prosecution being a very expensive process, a technology transfer officer evaluates the FTO very carefully to decide whether or not to invest university’s money to protect the technology. In my future blog, I will discuss FTO in detail.

Market: The next hat that a technology transfer officer wears is that of a marketing analyst. A tech transfer officer is not only involved in protecting the IP but is also instrumental in supporting the development of the technology. The whole idea of protecting the technology is to incentivize the companies to license out the technology from the university to make it useful to the society. To attract industries to invest in the technology many important questions are asked in advance: 1. What is the current market for the technology? 2. What is the market landscape (what other companies are involved in the technology space?) 3. If the technology enters the market, how much market penetrance will it get? In other words, will the industry see the return of investment if they license the technology from the university? Stage of development: A crucial factor in marketing university-owned technologies is to gauge the stage of development of the technology. Most of the university-based technologies are very embryonic or in other words, very early-stage technologies. Such technologies, especially in biotechnology, need a lot of investment from companies who are licensing it, both in terms of money and product development. Remember, an issued patent has a term of 20 years from the date of filing in

Stage of development: A crucial factor in marketing university-owned technologies is to gauge the stage of development of the technology. Most of the university-based technologies are very embryonic or in other words, very early-stage technologies. Such technologies, especially in biotechnology, need a lot of investment from companies who are licensing it, both in terms of capital and time investment. Remember, an issued patent has a term of 20 years from the date of filing in USA. A technology that requires a long incubation time will eat up the patent term (number of years of the patent rights). Losing the patent term means losing the competitive advantage. Therefore, the technology transfer officer needs to ascertain that there will be sufficient patent term remaining for the company, to recover its invested dollars and generate a considerable return of investment on the product.

Tradeoff analysis: One of the primary objectives of technology transfer offices, as I have already mentioned, is to see the university technology get developed into a product that is directly useful to the society. Therefore, the tech transfer officer evaluates pipeline products of companies, their business and development plans, their market share and capital as well as their past performance in developing the licensed technologies. The question whether the technology is suitable for a startup or an established companies is very crucial. A startup will have a vested interest in developing a technology. Therefore, it will have a focused approach towards the development of the product. In the case of established companies, they will have several products in their pipelines. Therefore, their focus, and hence, the development plan my change with changing priorities that is heavily shaped by the market. At the same time, startups are risky, and their product development pipelines are not as well charted out as an established enterprise. Therefore, an important challenge for tech transfer officers is to do a tradeoff analysis to narrow down the companies that will provide the best opportunity for the technology to get developed into a viable product.

Technology valuation: This is perhaps the most difficult part of the technology transfer process in the universities for which there are no easy answers. In general, the technology transfer officers rely on past deals (also known as comparable deals) for similar technologies and market analysis to come up with a value. There are complex quantitative ways to estimate the cost of the product 5-10 years from the present day for a thorough evaluation. One can easily imagine the difficulty in predicting the market a decade in advance. The two most important aspects of valuation are license issue fee and royalty. The latter is most important for universities, as it is their return of investment for their innovation. It is through royalties that universities can pump back money into the basic research and infrastructure. They can also incentivize inventors by giving them a part of the royalty.

Salesman: A tech transfer officer also needs to be an excellent salesman. Like a prudent salesman the officer has to win the best possible deal (in terms of royalty from the sale of the technology (also known as consideration) and due diligence (DD) terms for the technology development) for the universities. This is the most challenging hat worn by a tech transfer officer. It starts when a company shows interest to license a technology for making, using and selling it as a product. The tug-of-war involved in coming to a perfect term for a licensing deal is a thesis on its own. It will be sufficient to stress that this step requires the wizardry of a technology transfer officer to win a profitable deal for the university to support everything that a tech transfer office stands for. During the negotiation process, the officer always makes sure that the interest of the university and its IP is given the supreme interest. Once, the negotiation is done, the deal is formalized in a license agreement and is then bound by the law of the state.

Police Officer: Following license agreements, tech transfer officers monitor the strict DD terms. DD is very crucial for technology transfer officers, because it acts as an instrument to make sure that the technology gets developed in a timely manner. Breaching DD leads to termination of the license agreement.

The final goal is to see that the technology gets developed and is transferred to the masses for their consumption, thereby advancing the society through cutting-edge science and technology.

Ananda Ghosh

https://www.linkedin.com/in/ananda-ghosh-3238a716

Frequently asked questions about patenting (part 2)

in Sci-IP by

Syam

• Can I patent an idea that is just an idea?
No. Ideas that do not describe an identifiable embodiment or do not have any functionality are not patentable.

• Who can file a patent application?
Inventors, owners and individuals or organizations with sufficient proprietary interest in the invention can file a patent application for an invention.

• When should I file a patent?
Usually when your invention is enabled and before you disclose your invention to public, for example through seminars or trade shows, or even before signing a potential license agreement with a third party.

• How do I know that my invention is enabled?
In simple terms, your invention is enabled if it functions as described by you and extensive experimentation is not required to practice it.

• Do I have to submit a working prototype of the invention when I am filing a patent application?
No.

• I do not know how my invention works, but it works. In other words, I do not know the scientific principle that makes my invention work. Can I file a patent application for the said invention?
Yes.

• Why should I file a patent application?
Once a patent is granted, its gives the owner of the patent, rights to exclude others from using/copying, selling, offering for sale and importing the invention from another country.

• Why should I file a patent application if my employer owns the rights to my invention?
You may benefit from financial and professional incentives that many employers give for generating intellectual property that adds value to the employer.

• My employer owns the invention I wish to patent. How should I go about filing a patent application for my invention?
Please contact your employers. They will guide you. In general, industries have patent liaisons or counsels and academic organizations have technology transfer experts who will guide you.

• My employer does not own the invention I wish to patent. How should I go about filing a patent application for my invention?
You can file a patent application all by yourself (called pro se) or with the help of a professional who has knowledge about patent laws.

• What kind of professional help should I seek for when I am filing a patent application myself?
Almost all countries have patent agents who are qualified to represent inventors and registered with the country-specific patent office. You may discuss your invention with patent agents or patent attorneys (who are also lawyers) after signing non-disclosure or confidentiality agreements with them.

• Am I required to go through a patent agent to file a patent application?
No. In fact, you can file patent applications pro se, that is, by yourself. However, most patent offices recommend that prospective applicants retain the services of a registered patent attorney or patent agent to prepare and prosecute their applications.

• Can I take the help of a patent agent in India for representing me at the United States Patent and Trademark Office (USPTO)?
No. Only candidates who pass the USPTO registration examination (also known as the patent bar exam) and registered at USPTO can represent inventors in the US. However, inventors may utilize the expertise of other individuals including patent professionals in other countries to prepare and submit applications. In this scenario, the inventor will be representing himself/herself at the USPTO. Similarly, only candidates who have passed the Indian Patent Agent examination and registered at the Indian patent office to practice Indian patent law can represent you at the Indian Patent Office.

• How does the services of a patent agent help in the preparation and prosecution of applications at the USPTO?
When filing an application at a patent office, there are technical and legal requirements to be met. A patent is only as good as what is claimed and how it is described in a patent application. A strong patent protection requires good patent application drafting skills. A good patent helps to prevent others from designing around your invention and prevent others from entering the same market space. An experienced patent attorney or agent brings such skills in drafting patent applications.

In addition, the attorney/agent also helps in prosecuting the application before the patent office. Once an application is examined, the patent office sends out office actions- official communications to the inventor, and may reject or allow based on the merits of the patent application. The attorney/agent, on behalf of the inventor, can present arguments to meet the legal and technical thresholds set by the patent office and help in obtaining a patent. This requires an understanding of the patent law and claim language.

• What are the contents of a patent application?
The main contents of a patent application are a written description of your invention called specification, drawings that help to describe the invention and specific claims that you seek exclusive protection for based on the specification. Among other things, it also contains information about the inventor, owner and representative of the invention.

• How long does it take to file a patent application?
It takes anywhere from one week to more than a month to file a patent application. The main factor that determines the time taken is drafting a patent application, which usually depends on the nature of the invention. Complex inventions, such as inventions in biotechnology and life sciences take around 2-3 weeks to draft good patent application.

• How long does it take to obtain a patent after filing an application?
In the US it may take from 1-3 years depending upon the area and the procedure for examination used. There are accelerated procedures available for an increased fee. In India it takes up to 8 years to obtain a patent.

• Where do I file my patent?
You need to file patents in countries in which you wish for patent protection. Many inventors choose to file in United States because United States is one of the largest economies in the world. Other regions that people consider are Europe, Japan, China, Brazil, and India.

• I am not a US citizen, but my invention was made in the US. Should I file for patent in the US or the country of my citizenship?
Any person can file for a patent in US. However, if the invention was made in US and the inventor wants to first file a patent outside US, the inventor has to apply for a foreign filing license.

• I do not want to obtain a foreign filing license for my invention. What are the consequences?
Not getting a license and still filing outside will cost US patent.

Read the first part here

Syam Prasad Anand, PhD
Founder, Mainline Intellectual Property
Ardmore, Philadelphia, USA.

Entrepreneurship and IP Part I: Starting up right

in Sci-IP/SciBiz by

“The best way to predict the future is to create it.” – Peter Drucker

Innovation and entrepreneurship are the most common buzz words today. One can clearly see the energy, enthusiasm of young talents raring to plunge into entrepreneurial ventures in Indian start up ecosystems. Whether it is a post doctoral researcher in IISc thinking about starting a company based on a brilliant idea of 3D printing technology or a fresh engineering graduate fuelling his renewable energy project for his start up, or a yoga therapist ready to go global with her brand, all are proficient in their respective fields. It is a privilege to associate with such diverse, creative and brilliant entrepreneurial ventures. While it is important for an entrepreneur to follow her passion, initiative, commitment to the idea and dedication to her venture, it is also equally important to starting up right. Protection of Intellectual property(IP) is a valuable business asset for a start up. Irrespective of nature of business, IP provides both business value and competitive advantage for a company. IP policy should be ingrained by design into company strategies as the business develops. Succeeding in the marketplace with your idea is a journey- a continuous process. You need to think and follow some strategies for successfully building an enterprise. Here is what you need to know while starting your venture if you are new to the business world.

Choosing a business name:

1) Company name and Trademark: Trademark is a mark capable of being represented graphically and is capable of distinguishing your goods or services from others. A mark could be:  Brand (Example: BPL), Device (refers to pictorial representation. Example: CoCa-Cola), Name (Example: TATA), Letter (Example: IBM, GM), Word (Example: LIFEINTELECT, INFOSYS) and so on. Think long and think deep about your business name. A name that will last long because rebranding is expensive and stressful. Choose a name which will embody your values, stand out and communicate your identity to your consumers. You should avoid generic or descriptive phrases as your company name. For example, “Laptop Service”, ‘The Solar Panel” etc. Arbitrary and coined names are considered as stronger mark and are entitled to greater protection. For example, “Yahoo’ for internet service, “Kodak” for camera etc.

2) Company name for Limited Liability Company: If you are planning for Limited Liability Company, you need to check the availability of names with the Ministry of Corporate Affairs and Registrar of Companies.

3) Your web presence: A company’s website can be a great tool for promoting business. You will need to work with an available web domain and register your company domain name with a web hosting company.

Please note that all these three bodies function independent of each other. So before choosing your company name you need to check the availability of names with all three.

Understand your industry’s best IP practices:

Protecting your intellectual property through patents, trademarks, designs, copyrights, technical know-how and other tactics creates a legal fencing necessary to safeguard your idea, builds a cushion of competitive advantage and helps in fund raising. Despite being expensive, it is necessary to build a strong IP portfolio. And that should be adequately funded and managed well.

Before creating the IP road map for your company, it is imperative to know how your industry deals with intellectual property. For example, in biotechnology, pharmaceutical and telecommunication industry, products stay on the market for decades. That suggests start-ups in these sectors need bulletproof IP and patent protection from the beginning. However, retail industry, consumer device and manufacturing sectors have a shorter product life-cycle. So, the best strategy used by these industries is to file late in the product-development process, and may also benefit from the use of different IP policies such as trade secrets and confidentiality agreements.

Start the IP protection process early:

Whatever may be the IP strategy you follow for your business, you need to understand, plan and execute them from the beginning. If you have a big idea for a product or process, it is always good to know the possible options to protect the idea. Talk to an IP consultant and do some research at an early stage. Believe me, many times it helps a lot in iteration and proof of concept phase, and aid your innovation process. If patenting early is best, search out an IP firm in the beginning. Already years in business but don’t have IP policies to protect your valuable ideas or brand? Get started now. In the present day knowledge economy, IP protection should not be at the bottom of your to-do-list. Additionally know that, for industrial design and patent protection, the subject matter has to be new & novel. So, you need to file for patent protection or design registration before making any public disclosure.

Conclusion:

Every business is different and every industry requirements are different. So an IP strategy of a company depends on technology, funding, consumer base, product life cycle and stages of company. Success in market place depends on several factors, and if you don’t plan for success from the beginning you are almost certainly planning to fail. You should have immediate, short-term, intermediate and long-term strategies for IP protection and innovation.

References: 1, 2, 3

— Lipika Sahoo

 

–This post is the first in an upcoming series of articles on “Entrepreneurship and IP”.–

Disclaimer: The materials in the blog are solely for the purposes of informing, assisting and educating the readers and are not in anyway a substitute for professional opinion or advice. They do not constitute legal advice or legal opinion or solicitation.

Dr. Lipika Sahoo, Founder & CEO of Lifeintelect Consultancy Pvt. Ltd., a registered Indian Patent Agent having 16 years of experience in academia and industry. She holds a Ph.D from Indian Institute of Science (IISc). She holds triple masters; MSc from Sambalpur University; PGDIPR from National Law School of India University (NLSIU); PGCBM from Xavier Institute of management (XIMB); and advanced certifications from World Intellectual Property Organization (WIPO) in Patents and Patent Drafting. Dr. Lipika is also an inventor and passionate about technology & innovation; likes music, history & architecture.

lipika@lifeintelect.com| https://in.linkedin.com/in/lipikasahoo|

 

(image source:  http://blog.internationalstudent.com/wp-content/uploads/2017/10/game-design.jpg)

 

Creative Commons License
This work by ClubSciWri is licensed under a Creative Commons Attribution-NonCommercial 4.0 International License.

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

Creative Commons License
This work by ClubSciWri is licensed under a Creative Commons Attribution-NonCommercial 4.0 International License.

The Bayh-Dole Act- How it revolutionized US University inventions

in Sci-IP by

business-561387_1920

The Bayh-Dole Act or Patent and Trademark Law Amendments Act, proposed by two visionary senators: Birch Bayh and Bob Dole, was adopted in December 1980, leading to the establishment of intellectual property (IP) rights arising from federally funded research. It was one of the most challenging legislations in United States. However, the seed for the protection of intellectual property rights was planted as early as 1945 by Vannevar Bush’s excellent report entitled “Science-The Endless Frontier”. This report encouraged the then United States’ President Franklin D. Roosevelt, to create a system to support scientific research “essential to national security, health, jobs, and a higher standard of living”. This subsequently led to the development of National Science Foundation (NSF) and National Institute of Health (NIH), the two most prominent funding agencies in the US that revolutionized the science and technology, post-World War II.

The Result

Prior to its implementation, the inventions, if they resulted from the funds given by the federal funding agencies and grant systems, was wholly owned by the federal government. The Bayh-Dole Act, as a result, transferred the ownership to the respective universities, non-profit organizations and small businesses. This provided enormous incentives to the universities to market their products, and encouraged the industries to invest in high-risk ventures coming out of university system. The act not only encouraged university-based inventions by providing a part of the earned royalty to the inventors, but also helped schools to generate funds for its research and development (R&D) activities.

After the Bayh-Dole Act

Soon after the Act, US universities started to establish major offices namely the Tech Transfer Offices (TTO). The primary role of these offices was to manage and aid commercialization of the inventions and its associated intellectual property, thus acting as a liaison between the industry and the academia.

The fact that a part of the royalty earned would go back to the inventors and their laboratories, started a renewed interest in R&D and in protecting inventions which were emerging from the labs.

As a comparison, prior to the implementation of the Act, there were roughly 200 inventions per year coming out of US universities. This number now runs to about 2000 per year. Also, some of the significant developments in the present day Biotechnology and Pharma industries were a direct consequence of this Act which we shall address in detail in the future series. A good measure of how the Bayh-Dole Act catalyzed the economic development would be to analyze the revenue generated by TTOs, which in 2013, in the US alone was around 5.8 billion dollars. In addition, the TTOs have also been instrumental in revolutionizing the start-up scenario in the US. Future series will address how the Bayh-Dole Act via TTOs promoted the start-up revolution.

March-In Rights

Even though the Act encourages innovation by giving ownership rights to the universities, this ownership is subject to government’s right to the usage of the technology. By enforcing “march-in rights”, the government can force the university to license the technology to a third party if it feels that such an act would be beneficial to the public, particularly in public health related inventions.

Conclusion

This significant paradigm shift in the transfer of technology and intellectual property rights has been made possible because of two visionaries: Birch Bayh and Bob Dole. A single Act altered, bolstered and catapulted the United States into an indisputable leader in science and technology, the fruits of which are being reaped far beyond its boundary.

12575746_10153662122465910_930109089_n

Ananda Ghosh

Edited by: Sitharam Ramaswami (https://www.linkedin.com/in/sitharam-ramaswami-ram-a0ab0660)

References

  1. https://www.nsf.gov/od/lpa/nsf50/vbush1945.htm
  2. Willardsen al. Technology Transfer and Entrepreneurship, 1, 132-137 (2014)
  3. A guide to Royalty rates in pharmaceutical licensing deals (2006)

This article is the first of the series of articles on Technology Transfer and Economic and Scientific Development in the US.

A chance with IPR in India

in Sci-IP by

Reetu_SciWri

Back in 2003, when becoming an engineer or doctor was the dominant trend , I too desired to be one of those. Just after finishing my XII grade , I took the medical entrance exam but could not get through a good college and my scores qualified only for dental courses. Since I was so ridden by the conventional trend of pursuing MBBS, that too from one of those cream colleges I declined both the management seat offered for medicine, and the dental degree. Parallely I had also applied for bachelors courses (microbiology and biochemistry) in Delhi University. With a good CBSE score I comfortably got through both of these courses and opted for B.Sc Microbiology. At the time of taking admission I remember really well, the HOD (head of department) of microbiology heard me telling someone that microbiology is a good option that the field could offer a bright future ahead. Later sometime, the HOD called me, and recalling my overheard conversation said “this field may not offer the future you are expecting. What could be more likely in the future is that you may find yourself researching in a lab, away from the world of business or sitting in the position where you see me today”. I overlooked her words then, as I was overly convinced about the bright road that lay ahead. Time in DU really flies and at the end of a balanced, fun and academic 3 years (tipping more towards fun) I had the degree in my hand.

Graduation was over and next was the default, as none of the seniors I knew had got decent jobs after graduation. I decided to join M.Sc Genetics, again from Delhi University. My decision was based on, the advice I had sought from experts. I spoke to some of the best doctors in the country and I don’t remember any one of them discouraging me or showing me any negative side of the career Genetics could offer. Forget negative, each one of them of insisted that Genetics, had immense future and current scope was the future. They were convinced of a near future in which genes would be used to make tailor made babies, alter genetically running diseases etc and that, researchers geneticists would be in huge demand, giving specialized advice to clinicians and doctors. As I still had that liking to be associated with medicine, I decided to give it shot.

Honestly I had keen interest in the analytics part of mendelian genetics, population genetics, quantitative genetics. I found these branches more logic orientated, compared to the other courses taught. Other subjects like developmental genetics, biochemistry I was not too fond since these involved retaining and cramming skills .

Second year of masters, students start applying to all the good institutes for all sorts of different fellowship and PhD programs. Somewhere at the back of my mind I had a belief that research was not something I wished to seek as a career option, but had not accepted this though whole heartedly. I spoke to some seniors and professors in college about what next to do and suggestion that came in do a PhD, you have no other way to succeed.

A lilttle Gyan: Here is my two cent advise to all those of who wish to go the unconventional way, beyond research. Your seniors and professors perhaps may be confined within the academic research boundaries, so it may be very useful to hear diverse advice and interact with people with varied backgrounds. Given the lifetime professors devote to their work, their opinion may be ridden with passion and biaseness for the type of work they have been doing, which is completely understandable. In life whatever is your calling and if you do not find yourself treading on that path, find the relevant people to talk to, seek their advice, read up their work explore possibilities in this small interconnected world though linkedin, google etc. There will be many things to your rescue. I can tell you from my experience, that one should not hesitate in approaching, make the first move, like how a love struck boy would pursue his girl. There are plenty of nice humble people that do respond. I realized this late, but as they say better late than never. The sooner you start to explore, the greater is the chance that possibilities covert into reality. The hearing people in the corporate and the private sector made me realize that the realm of science, that too a niche filed like genetics was also relevant in the business world. The corporate community and industries requires our specialization in ways more than our laboratory skills. Management consultant in setting up science based industries, subject matter experts in patents are a few areas to name. I am glad IISc career support group is there now and hope that this forums opens up the plethora of opportunities to students, makes them connect to the right people early on .

Coming back to my decision to go ahead with research. I was naive then about exploring opportunities and reaching out to people. Also I was swayed by the opinion of the professors around me and therefore took the obvious next step of doing a PHd. Vola! It was DU hatrick, I joined the Genetics department for my PhD. First two years were absolutely great, I had the opportunity to be creative. Experiments failed but trouble shooting was fun. The chance of structuring each experiment into small steps and identifying at which step experiment could have gone wrong was interesting. Not only I was involved in doing analysis for my own experiments but was also helping other lab members in theirs. Discussions, debates, arguments over positive and negative controls, experiment planning, work organization all of it kept us occupied and consumed. However gradually my interest started to decline. I just wished to get done with the PhD, there was hardly any supervision or guidance, my experiments kept failing and my trouble shooting approach was also not helping. I started introspecting and contemplating why this is happening and realized that work was getting monotonous. Time really is a luxury, as research projects and experiments move at their own pace. It was slow for my liking. Challenges were there but I was facing the same challenge every time. Nothing new was coming my way, I longed for something different, a change in atmosphere, changes in challenges too, not wanting to fight the same devil every day. Finally what I always suspected, I came to accepting it. Research was not my cup of tea. Even though data analysis, strategy making, experiment organization, trouble shooting was good but the conducting that actual experiments was not me.

In 5 long years, I managed to finish my research. Research was not my thing but I was grateful that I was armed with the knowledge of science. I was sure of not doing a post doc, but had no clue about how I could use my hard earned PhD in work that would excite me.

To the surprise of my supervisor I was the only student who did not request for a reference letter for higher research. I explained to her that I did not wish to continue with research. I was glad to learn that she did not encourage me otherwise. She was happy to know the clarity of my thought and said that “I would have been happy had you continued with research, but I am sure that whatever you will take forward you will do well” .

Then began the real struggle. I started researching on the internet about alternate career options after doing PhD. In particularly two career choices caught my fancy, management consulting and the field of IPRs. Fortunately a professor in the department had contacts to help me get connected to people in both these fields. Management consulting ones indicated that even though it was a popular trend in the west, for firms to hire PhDs, such a trend was not much prevalent in India, especially if you hold a PhD in life sciences. Management consulting “people in India were skeptical of the abilities of a PhD candicate to do real world business. I was also being considered over qualified. A few said, people with PhD in life science are not good with numbers, I had to fight pre-conceived notions.

I turned to my next option, which was fairly easier considering the direct relation of Intellectual Property Rights to science, but not completely science as there is as much a legal side to it. I spoke to a lady, an alumni of IISc who introduced me to the patent world. She was really kind, gave me a fair idea about the scenario of Intellectual Property Rights in India. She said that as a technical expert you will provide a support system to lawyers who practice IP, but decision making lies in the hands of lawyers, unless you pursue law.

I started to look out for jobs in this field and was fortunate enough to get myself a job in a reputed law firm, which has an IPR wing. It been close to 8 months working with this law firm as a subject expert on life science, and here are some observations I made.

Before I pen down my observation of IP in India, I’ll put down some basic IP concepts. Three parameters which determine the patentability of an invention is Novelty, Inventive Step and Utility.

When anyone applies for a patent you claim a priority which holds a huge significance. This priority date signifies who filed for the patent application first, hence in situation where two or more applicants have the same invention then the person holding a earlier priority date gets the right (basically it is the early bird, which gets the worm). As patent are territorial, you can apply for a patent in multiple countries or you may just stick to one country. After a patent application is filed, it has to be published before it undergoes examination by the Examiner/Controller. After the application is published, the examiner puts his objection (which is similar to comments the reviewer gives for a research article). Now the objections are the grounds on which the Examiner thinks the patent should not be granted. The objections can be divided in two parts technical (science related) and non technical (which are more of procedural formalities). The technical objections are raised under Section 2, 3, and 10 of the Indian Patent Act. To the Office Action/First examination report a response has to be filed. The response filed is examined and the decision of grant or rejection of a patent application is taken. I have simplified the process for explaining, but that is not the case. It takes a minimum of 7-8 yrs from date of filing the patent application to the final decision.

Now let me move to some of the observations I have made in the brief period of my patent work experince .

  1. Section 3 of the India Patents Act describes what is not a patentable subject matter in India. Anything falling within the ambit of Section 3 cannot be patented. In life sciences, since most of the research is related to cells, living material naturally occurring it is hard to get a patent. For instance method of diagnosis, disease prevention cannot be patented. Similarly animal and plant cell cannot be patented. Proteins, genes, stuff naturally occurring cannot be patented. Section 3c, 3i, 3j, 3h determine what is non patentable subject matter in India. Section 3 is very conservative, hence getting a patent application in Life Science is not easy. There are more patent application for Chemistry and Engg, and significantly less for biology.
  2. If a patent application is filed in many countries, Indian Controllers/Examiners mostly cites the same objections in the examination report as given for the same patent application in Europe or US patent office.
  3. Compared to the west, where universities apply for patents, the scenario in India is not that bright. University must understand the significance of patent, the new generation of researchers should be made aware of patenting. Researchers in India still do not understand IPR. India still lacks behind when it comes to understanding commercial value of a patent. We really need that IPR in India is practiced by people who understand science.
  4. The way science is read by a researcher is very different when a lawyer reads it. At times there are situation that the researcher within may not agree to the argument what a lawyer puts forward, and the lawyer may not understand your logic. At times it is frustrating and sometimes ita amusing. India really needs people who understand science and they practice Intellectual property rather than putting it in hands of people who do not understand the subject or have limited knowledge on the subject.
  5. Intellectual property is not completely science, and for a researcher who has just practiced science for all his life it does get difficult in the start, but once you get hang of it its exciting. But if you enjoy debating, arguing, can think out of the box, can provide logical reasoning, are spontaneous in your thoughts, enjoying reading, can think of multiple ways of interpreting the same stuff but each interpretation has a different meaning from the other Intellectual property is a good option to consider.

It was back in 2003 when that HOD warned me of the options available to PhDs, I am glad I made a breakthrough. Even though, still there are not that many options compared to the west, but if you can create one do it because nobody will do it for you. Ultimately all us did falter somewhere during our PhDs, still we went on to complete it, if we could do it then surely it can be done after a PhD also.

I’ll just concluded in the end for all those pursuing research/PhDs/post-doc do something which you are passionate about. Its important for everyone to know academics is not the only option after PhDs, alternate career options do exist but you have to figure out what works for you. Breaking out of academics to that alternate option may seem hard initially as that first step is the hardest. In the job market, your research articles are really not that important, but yes in the academic world they are an asset. The rigorous training given during PhDs, lets you become an independent and persistent worker apart from the additional skills gained, and that persistent worker within will go a long way Its important to grow in knowledge not only vertically but also have that horizontal expansion, not to restrict oneself to one option, network outside speak to people to know what else exists. The IISc Career Support group is one such platform please use it as much as you can.

 

About the author: Reetu Mehta did her PhD in microbial genetics, to determine the genetic mechanism determining enteric production. Currently, she is utilizing her scientific training in analysing intellectual property and works for a law firm providing subject expertise https://www.linkedin.com/in/reetu-mehta-32b6111a

Photo source: Abhinav Dey

Creative Commons License
This work by ClubSciWri is licensed under a Creative Commons Attribution-NonCommercial 4.0 International License.

Go to Top