Patents

 

The first company to capitalize on a new innovation enjoys a lead-time advantage in setting manufacturing, marketing, and distribution channels in place. These advantages, unfortunately, are only temporary. A patent helps establish strong and effective monopoly rights for your business by erecting legal barriers preventing competition. Without adequate patent protection, it is only a matter of time before existing and new competitors enter your market, steal your idea, and drive down prices.

We at Gudwil & Goodwill provide services in preparing and filing patent applications for registration. We can provide our clients with comprehensive knowledge in drafting descriptive specifications and claims. We also provide services for conducting patent search, paying annuities, preparing and filing written arguments and appeals, patent administration, and infringement litigation.

 

DEFINITIONS AND BASIC QUESTIONS

  • What is a patent?
  • Who can apply for a patent?
  • What is patentable invention?
  • Whether a Foreign National is competent to file patent application?
  • Can a Firm or a Company apply for a patent ?
  • Whether the prior sale can be made before filing patent application?
  • What are the stages for obtaining a patent ?
  • How long does it take to grant patent ?
  • What is a specification ?
  • What is meant by term of a patent?
  • What are the documents to be accompanied in the patent application ?
  • Is it possible to take legal action for infringement of patent during the pendency of a patent application ?
  • What is an alternative remedy in case if the invention is pirated or copied during the pendency of patent application?
  • Whether the common law remedy passing off is available during the pendancy of Patent Application?
  • Definitions

 

What is a patent?
A patent is a monopoly right granted by the government to a person who has invented a new useful articles or an improvement of an article or a new process of making an article.It consists of an exclusive right to manufacture the new article invented or manufacture an article according to the invented process for a limited period.After the expiry of the duration of patent, anybody can make use of the invention

Who can apply for a patent?
   i) Any person being the inventer of an invention or his assignee can apply alone or jointly with any other person.
  ii) Applicant of a application in a basic convention country can apply by himself or through his assignee.
  iii) Applicant of a basic application in a basic convention country can apply by himself or through his assignee.

What is a patentable invention?
 As per the Indian Patents Act ,1970 invention means any new or useful -
  i) art , process , method or manner of manufacture
  ii) machine ,apparatus or other article.
  iii) Substance produced by manufacture and includes any new and useful improvement of any of them and alleged invention .

Whether a Foreign National is competent to file patent application in India?
Yes .A Foreign National residing abroad is not prohibited from making an application and obtaining the grant of patent in India.

Can a Firm or a company apply for a patent ?
Yes. A Partnership firm , a Private or Public Ltd company or a Corporation can apply for a patent .But they cannot invent and therefore cannot be termed as inventor.Hence such bodies can apply for patent as the assignee of the inventor under the Indian Patents Act,1970.

Whether the prior sale can be made before filing patent application?
 No.The invented article must not be put in the market for sale or be physically sold under the invoice before filing patent application in the patent office. Otherwise the invented article or process will loose novelty to create sufficient grounds for invalidating the chances of getting a patent. Hence the novelty in the invention is lost if the article is demonstrated , worked or sold .Therefore it is advisable not to commence the commercial marketing of an invented article before applying for patent.

What are the stages for obtaining a patent ?
 i) Submission of application accompanied by either a provisional or complete specification.
 ii) Examination of applciation .
  iii) Advertisement and acceptence of complete specification in the Patent Gazette.
  iv) Opposition to the grant of patent , if any.
  v) Grant and sealing of the patent..

How long does it take to grant patent ?
At present on an average it takes about 4-5 years from the date of filing application .It may be reduced in future because of computerisation of Patent offices.

What is a specification ?
A patent specification is a technical document describing the invention. A specification may be either provisional or complete.Provisional specification gives the initial description of an invention when the application is filed .A complete specification gives full and sufficient of an invention.

What is meant by term of a patent?
The term of the patent is meant for duration of the validity of the patent.
i) The term of patent will be FIVE years for food, drug,medicine cases from its sealing date of seven years from the date of patent whichever is shorter.
 ii) The term of patent in respect of other inventions will be FOURTEEN years from the date of patent (i.e. date of filing complete specification).

What are the documents to be accompanied in the patent application ?
Application for patent is made on the prescribed form alongwith the following documents.
  i) Power of Attorney in favour of a person acting as a Patent Agent ( this is not necessary in case if the application is filed by the applicant himself /themselves.
 ii) A PROVISIONAL or COMPLETE specification in triplicate describing the invention.
 iii) Drawings in triplicane (if any)

 Is it possible to take legal action for infringement of patent during the pendency of a patent application?
No. It is not possible to initiate legal action against the infringers during the pendency of patent applciation patent is a statutory right granted by the government .It will take minimum of 4 to 5 years for examination of patent appliacion and then only it will be decided whether to grant a patent or not.Till then it will be called as invention only.Until the statutory right is conferred upon the applicant for his invention, the question of infringement will not arise.Further there is no common law rights like that of passing off in trademark matters for the patent applicants.

What is an alternative remedy in case if the invention is piratred or copied during the pendency of patent applcaition?
The drawings which accompanied the patent specification will play an important role in such cases.Copyright can claimed by the applicnt for such patent drawings.Hence it is advisable to initiate legal action for infringement of copyright in the Industrial or Engineering drawing accompanied the patent specification on the basis that the pirator has applied the principle of reverse engineering by stripping down and dismantling the inventors article and then made sketches of the relevent parts and recording dimensions making working drawings from sketches and then making the pirated article from such working drawings and such reverse engineering constitutes infringement of copyright in the engineering drawings which accompanies the patent specification.


Whether the common law remedy passing off is available during the pendancy of Patent Application?
No, the common law remedy of  passing off is not available to the Inventor/Applicant whose patent application is pending for final registration.
 The Concept of passing off is common law remedy and it is available for a trademark or a trade name only on the basis of  prior user status. Further trademark  rights are inheritable rights and such rights can be enjoyed till user, of the trademark. But patents are granted for limited periods only and after the expiration of the said period, it will be public juris i.e., become public. It means anybody is entitled to use the lapsed patent after the expiration of the period. Therefore the common law remedy for passing off will not be available for patent pending for registration under the Patents Act,1970.

 

Registration of a trade mark is not compulsory. But for better protection it is advisable to register a trade mark.