Streamlining the Patent Process in Startups: A Pressing Priority

India has leveraged the startup ecosystem by offering a conducive environment to make them powerhouses of innovation. According to the Economic Survey 2021-22, the number of new recognised start-ups increased to over 14,000 in 2021-22 up from 733 in 2016-17. The survey further emphasized that intellectual property (IP), notably patents, was the key to a robust knowledge-based economy.

Similar to any other business undertaking, startups interact with various stakeholders, including employees, who regularly exchange ideas and develop key IP. Hence, business operations that significantly rely on IP exchange need an optimized and watertight structure of intellectual property rights protection, especially when they aspire to cater to international markets. In line with the growing importance of startups and IP, the government of India has launched the “Start-up India, Stand-up India Scheme” to support early-stage startups.

 

Recognition as a ‘Startup’

 

Entities to qualify as a ‘startup’ need to be recognized by the competent authority under the START-UP INDIA initiative and fulfil all the criteria for the same. For the sake of more clarity, the Department of Promotion of Industry and Internal Trade issued a notification in 2019[1] according to which an entity incorporated as a private limited company, a partnership firm, or a limited liability partnership in India can be considered a startup for up to ten years if its turnover since its incorporation has not exceeded one hundred crore rupees.

Further, such an entity should be actively working towards “innovation, development or improvement of products or processes or services, or if it is a scalable business model with a high potential for employment generation or wealth creation.” Notably, an entity formed due to restructuring or splitting up an existing business cannot be deemed a startup.

A foreign entity can also be considered a start-up if it fulfils the criteria of turnover and specified period of incorporation/registration and submits a valid declaration to substantiate the requisites as per the provisions of the START-UP INDIA initiative.

 

Minding the IP of Business

 

An important criterion for getting startup registration is that the entity should be working to innovate, develop or improve products, processes or services. To protect technical innovation, patent registration is crucial, especially for startups, where the start-up’s success is tied to the novelty of their product and process. The DPIIT has recognised a total of 69,492 startups to date. In addition, startups have filed a total of 6000+ patent applications.7

A product or process with patent protection helps create a solid business model, enabling them to earn a good market reputation, a return on investment (ROI), and access new opportunities for expansion and generate funds.

To this effect, businesses can undertake the following best practices to optimise their inventions and ideas:

  1. Build an IP culture that drives innovation in the organization. For instance, implementing rewarding ownership strategies, implementing IP incentive schemes, encouraging teams to research and identify areas where valuable IP protection can be secured, etc.
  2. Foster IP awareness within the organization.
  3. Build an IP protection system that is driven by strong policy and practice. Organisations should focus on structuring agile protection strategies that prevent knowledge leaks. Undertaking regular IP audits and compressive risk analysis should be the focus.
  4. Once the IP is protected, its commercialization should be the focus. Additionally, organisations should be aware of their IP infringement and take proactive measures to enforce their rights effectively.

 

Gaining Traction with DPIIT Recognition

 

Benefits from Intellectual Property Rights (IPR)

 

A startup recognised by the DPIIT is eligible for tax breaks on:

  • Prior Turnover
  • Prior Experience
  • Earnest Money Deposit

DPIIT recognised startups can now get listed as sellers on the government e-Marketplace.

Self-certification Under Labour & Environment Laws

  • Startups are allowed to self-certify their compliance with nine labour and three environmental laws for 3 to 5 years from the date of incorporation.
  • In respect of three environmental laws, units operating under 36 white category industries (as published on the website of the Central Pollution Control Board) do not require clearance under three Environment-related Acts for three years. Hence, startups can focus on their core business and keep compliance costs low.

Fund of Funds for Startups (FFS)

  • The government has set up a corpus fund of INR 10,000 Cr. INR 5409.45 cr has been committed to 71 VC firms. In total, INR 5811.29 Cr was invested in 443 startups. 

Faster Exit for Startups

  • As per the Govt Notification, startups are now notified as “fast track firms”, enabling them to wind up the operations of their startups in 90 days.

Seed Fund Scheme

  • Grant up to INR 20 lakh to validate proof of concept, prototype development, or product trials.
  • Grant up to INR 50 lakh for market entry, commercialisation, or scaling up.

Tax Relief

  • Recognised startups are exempted from Income Tax for 3 consecutive years out of the 10 years since incorporation.
  • Startups incorporated on or after April 1 2016, but before April 1 2022, can apply for an income tax exemption under Section 80-IAC of the Income Tax Act.

 

Patent Incentives for Start-ups in India

 

Patent Facilitators

 

The government has identified over 226 local patent facilitators[2] to extend their expertise to DPIIT-recognised startups. The government would reimburse these facilitators for their services.

Patent facilitators are responsible for:

  • Providing general advisory services on a pro bono basis
  • Providing pro bono assistance with IPR filings
  • Assisting with the filing and disposal of IP applications at the National IP offices under CGPDTM
  • Drafting specifications (provisional and final)
  • Preparing and filing responses to examination reports and other queries, notices or letters by the IP offices
  • Appearing at hearings as may be scheduled
  • Contesting opposition, if any, by other parties
  • Final disposal of the IP application. 

 

Fee

 

The government has provided 80% rebate on the patent filing fee to make the process more attractive.

 

Expedited patent registration process:

 

Expedited Examination can be made by filing Form 18A accompanied by Form 9 (Publication). A request filed under a Regular Examination request via Form 18 (rule 24B) can be converted to an Expedited Examination by submitting Form 18A and Form 9.

The IPO has significantly reduced the duration of the patent timeline.

  • Publication: Within 1 month from the date of filing of Form 9.
  • Issuance of the First Examination Report (FER) to the Applicant: Within one month, but no more than two months, from the date the patent application is assigned to the Examiner; and within 45 days from the date, the Examiner submits the FER to the Patent Controller.
  • Response to the First Examination Report by Applicant: Within 6 months of receiving the FER from the IPO.
  • Disposal of the First Examination Report (FER) by the Controller: Within 3 months from the receipt of the last reply from the Applicant.

 

Conclusion

 

The objective of innovation and promoting patent filing by startups is simple, i.e., a patent is directly related to innovation and contributes to significant economic growth for a startup. The upsurge of startups has also led to massive employment generation, with over 5,60,000 jobs in 2016-2020. Hence, it is imperative to have an enabling ecosystem where entrepreneurs are encouraged to file more IPs seamlessly. While launching incentivized schemes and actively working towards reducing the compliance burden for new businesses when filing IP applications is a step in the right direction, there is still a pressing need to address the issues of procedural delays and complex patent processes to tap into the intellectual prowess of the country.

The objective of innovation and promoting patent filing by startups is simple, i.e., a patent is directly related to innovation and contributes to significant economic growth for a startup. The upsurge of startups has also led to massive employment generation, with over 5,60,000 jobs in 2016-2020. Hence, it is imperative to have an enabling ecosystem where entrepreneurs are encouraged to file more IPs seamlessly.

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The Nuts and Bolts of Foreign Filing Licence (FFL) In India

Like any other IP right, a patent is also a jurisdictional right confined to the jurisdiction where the application is filed, and the rights granted. A patent is also considered a negative right, which enables the patentee to prohibit others from manufacturing, using, selling, and distributing the patented goods and services. If the invention is not protected in a specific jurisdiction, it can be used by any third party without restrictions. Hence, the applicants must choose jurisdictions carefully to safeguard their inventions in those countries.

Given that a patent is a valuable asset that can aid international business expansion, businesses must develop a foreign filing strategy. The strategy could be based on specific parameters like potential markets, manufacturing centres, competitors, emerging markets, and licencing opportunities to decide where to seek protection for their invention.

Apart from the specific parameters outlined above, the applicant must be aware of particular provisions of the Patents Act, 1970, which forbid Indian residents from filing patent applications outside India without first filing in India.

It is pertinent to note that, as an exception, a patent application can be directly filed outside India by an individual (Indian Resident) by seeking prior approval from the Indian Patent Office. This is referred to as a Foreign Filing Licence (FFL), as envisaged under Section 39 of the Indian Patent Act, 1970.

 

What is the objective of providing the option of a Foreign Filing Licence?

The primary objective of FFL is to analyse patent applications for sensitive technological information or subject matter to prevent the unauthorised export of valuable knowledge to foreign countries. The FFL assists the Indian Patent Office/government in determining the patent application’s sensitive subject matter (pertaining to defence or atomic energy). Once it is ascertained that there are no issues with disclosing the details of the invention to a foreign country, the Indian Patent Office usually grants the Foreign Filing Licence within 21 days of receiving the request.

When the applicant is not required to seek a Foreign Filing Licence
  • When the applicant is not a resident of India, and the invention was created outside of the country.
  • If the applicant is a resident of India who filed a patent application in India six weeks before filing a patent application in another jurisdiction.
When the applicant is required to seek a Foreign Filing Licence
  • When the applicant or inventor is a resident of India.
  • When the applicant does not wish to file a patent application in India before filing a patent application outside of India.
  • When the applicant is a resident of India, a patent application has been filed in India, but the six-week term has not yet expired.

It is important to note that if the invention is related to nuclear energy or defence, the Indian Patent Office may not issue the FFL without the prior consent of the Central Government.

 

Statutory provisions governing Foreign Filing Licence in India

Rule 71 of the Patent Rules, 2003 describes the procedure and mandates seeking permission to file a patent application outside India.  

Rule 71: Permission for filing patent applications outside India under section 39.

“(1) The request for permission to submit a patent application outside India shall be made on Form 25.

(2) The Controller must respond to a request made under sub-rule (1) within twenty-one days of the request being filed.

Provided that in the case of inventions relating to defence or atomic energy, the period of twenty-one days shall be counted from the date of receipt of consent from the Central Government.”

 

Requirements for Seeking a Foreign Filing Licence

Since the main objective of FFL is to examine the nature of inventions and technologies in the nation’s best interest, an applicant must sufficiently disclose the invention’s details, including the title, description, and drawings (if any). In addition to the above information, the applicant must submit the following forms with all required data.

Form-25[1]: to request permission to make a patent application outside India. Form 25 must include:

  • Title of the invention
  • Name, address, and nationality of inventors who are “resident in India,”
  • Name and address of the applicant if rights have been assigned to the applicant.
  • Names of foreign countries where the application will be submitted once the Foreign Filing Licence is issued.
  • Reason for making such an application.

Form-26[2]: Power of Attorney (POA) from the inventor(s) or applicant residing in India and appointing a patent agent to represent them.

 

Can a Foreign National Apply for a Patent in India?

As outlined above, an Indian Foreign Filing Licence is not applicable for foreign nationals filing a patent application in India. A foreign national may apply for a patent in India by following one of the two routes mentioned below:

  1. Paris Convention Route: Under the Paris Convention for the Protection of Intellectual Property, a foreign national of a convention country can use the convention route to file a patent application in India. Any invention filed in their home country may also be filed for patent protection in India within 12 months by claiming priority from the earliest filed application in their home country.
  1. Patent Cooperation Treaty (PCT) Route: A foreign national may also file a patent application in India under the PCT route.

However, if they intend to file a patent application directly in India, they must follow their country’s patent law to confirm if there is a similar requirement in their jurisdiction.

Even though FFL enables Indian residents to file patent applications directly in a foreign country without filing the first application in India, inventors and the applicants (who are Indian residents) must strictly comply with the requirements of the FFL discussed above to avoid serious consequences, including imprisonment for a term of up to two years, or a fine, or both.

Even though Foreign Filing Licence (FFL) enables Indian residents to file patent applications directly in a foreign country without filing the first application in India, inventors and the applicants (who are Indian residents) must strictly comply with the requirements of the FFL discussed above to avoid serious consequences, including imprisonment for a term of up to two years, or a fine, or both.

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Anticipation of Invention: Patent and Latent Threats

A patent is representative of a quid pro quo arrangement and on the basis thereof patentees are granted a monopoly over their inventions. However, the process of securing such a monopoly can be complicated by ‘anticipation.’ Any invention anticipated in a prior art is most likely to be invalidated or made ineligible for a patent grant. This is because anticipation signifies a lack of ‘novelty’ in the claimed patent.

The concept of anticipation varies across jurisdictions, generally differing on the offering of the grace period. For instance, in the US a one-year grace period is provided to an individual for filing a disclosure in the event of obtaining the confidential subject matter of the invention directly or indirectly by the inventor or the joint inventor. Here, the principle of relative novelty governs the consideration of anticipation. Whereas in Europe, only a six-month grace period is provided, only in cases where the information is obtained by deceit or has been made public through an official international exhibition.

The law in India has taken an alternative route. The Indian Patent Act, of 1970 has identified conditions in which the grace period is afforded to evaluate anticipation. The Act defines what does not constitute anticipation under sections 29-34.

This article aims to provide the reader with a better understanding of the concept of anticipation under the Indian Patent Act, 1970.

 

What Amounts to Anticipation for Patents in India?

 

As highlighted above, the term anticipation is not defined in the Indian Patent Act,1970 however, the Act specifies what is not considered anticipation under Chapter VI, Section 29-34.

In the case of M. C. Jayasingh vs Mishra Dhatu Nigam Limited,[1] the Madras High Court while examining the provisions pertaining to “Anticipation” under the Indian Patents Act 1970, observed inter alia, “Though Section 13(1) refers repeatedly to “anticipation”, the expression “anticipation” is not defined in the Act. But, Chapter VI, containing Sections 29 to 32, deals with anticipation by previous publication. Here again, there is an element of confusion. Sections 29 to 32 do not stipulate as to what constitutes anticipation by publication. Rather, these sections merely point out what would not constitute anticipation. While Section 29 indicates what is not anticipation by previous publication, Section 30 indicates that a mere communication of the invention to the Government may not constitute anticipation. Similarly, Section 31 indicates when a public display would not constitute anticipation, and Section 32 indicates when the public working of a patent would not constitute anticipation.”

The Court proceeded to observe that a conclusive meaning of anticipation could be deciphered by examining the expression “new invention” under section 2(1)(l). Hence, the anticipation by publication would simply mean “that the subject matter had either fallen into the public domain or had become part of the state of the art.” This understanding of anticipation is further circumscribed by the exclusions mentioned under Sections 29 to 32.

It is pertinent to note that the concept of anticipation does not necessarily prevent an inventor from doing something purely because it would be an obvious/anticipated extension of what had been known in the art before the priority date. It rather demands a deep deliberation and analysis of what would have been obvious or already in use at the priority date to an individual skilled in the art who had access to what was known in the art at that date.

Anticipation by Previous Publication (Section 29)

 

This section provides that any publication of the invention made in India or abroad without the prior consent of the applicant or patentee is not considered anticipation and the ground for rejection of the patent. The patentee must establish that he filed an application for the patent as soon as he found out about the publication. This section does not mention about the time period of filling the application after such a publication.

The law on anticipation by prior publication has been summarised by Sachs LJ in the case of General Tire & Rubber Company v. The Firestone Tyre and Rubber Company Limited And Others,[2] as, “If the prior publication contained a clear description of, or clear instructions to do or make, something that would infringe the patentee’s claim if carried out after grant of the patentee’s patent, the claim would be anticipated. If, on the other hand, the prior publication contained a direction which was capable of being carried out in a manner which would infringe but would be at least as likely to be carried out in a way which would not do so, the patentee’s claim would not be anticipated, although it might fail on the ground of obviousness. To anticipate the claim, the prior publication had to contain clear and unmistakable direction to do what the patentee claimed to have invented.”

 

Anticipation by Previous Communication to the Government (Section 30)

 

Any disclosure of the invention to the government prior to the filing date of a patent application for the purpose of the investigation is not considered anticipation.

Moreover, in Shogun Organics Ltd. Vs. Gaur Hari Guchhait & Ors[3], the Delhi High Court clarified that the language of Section 30 now makes it clear that the disclosure to a government department or to any other authority, not just of the patentee, but by any other person, would not constitute prior publication. The language is person-neutral. It cannot be said from a reading of the provision that only disclosure by the patentee/applicant is covered under Section 30. 

 

Anticipation by Public Display (Section 31)

 

 An invention that has been displayed or published publicly is not eligible to be patented on the account of lacking novelty. However, under certain circumstances, a publicly displayed patent can be considered ‘novel’ in the following cases:

  1. The display or use of invention at an industrial or other exhibition is notified by the Central Government in the Official Gazette;
  2. Publication of any description or portion thereof as a result of the exhibition’s display or use of the invention;
  3. Usage of the invention by anyone, after the aforesaid display in exhibition, other than the inventor or a person deriving title from him; and
  4. Description of the invention in a paper read by the inventor before a learned society.

It is important to note that, an application for a patent can only be granted in the abovementioned circumstances if it is filed within 12 months of such public display/publication.

In Ralph M. Parsons Co (Beavon’s) Application[4], it was observed that learned societies would disseminate the relevant learning without consideration of economic gain. Thus, a learned society would normally be a non-commercial body of people and would not typically be associated with commercial exploitation. For a publication to be regarded as a “transaction” of a learned society, it must be published under the auspices of and finally be the responsibility of the learned society. Therefore, a publication that occurs via a third party, such as a reporter who is present at the conference, would not be regarded as a publication by society. Moreover, the publication by a society of an abstract of a paper is considered to be a publication of a paper.[5]

 

Anticipation by Public Working (Section 32)

 

An invention filed in a patent application is not considered to be anticipated due to the working of the invention in public by the patentee or person deriving title from him or any person authorized by him, subject to the meeting of the following criteria:

  1. The working of the invention should not be public prior to 1 year from the date of filing of the patent application; and
  2. The working of the invention in public is performed for the purpose of reasonable trial.
  3. The nature of the invention needs the invention to be worked in public.

Hence, the 12 months time period mentioned in the provision can be regarded as the ‘grace period’ for the inventor to file an application for the grant of the patent after public use. This is an opportunity for the inventor to apply for the grant of patent in an event of him mistakenly or in good faith using the invention in the public domain.

It is pertinent to note that, the section draws a significant distinction between public use and mere public publication.

In the case of Poysha Industries Ltd v. Deputy Controller of Patents and Designs[6], the Calcutta High Court adjudicated upon the issue of distinction between public use and public knowledge. The issue was whether the invention was publicly used or publicly known in a part of India. The Appellants, in support of their contention, stated that the method used by them to crimp the top portion of the containers did not require special skills or techniques. The said containers had been supplied by the appellants to M/s Zandu Pharmaceuticals and another company since 1960. However, the appellants failed to establish that the invention was publicly used and known, hence the appeal failed.

The same has been further clarified in Monsanto Co v. Coramandal Indag Products (P) Ltd.[7] by the Supreme Court, wherein it was held that, “It is clear from the facts narrated by us that the Herbicide CP 53619 (Butachlor) was publicly known before Patent Number 125381 was granted. Its formula and use had already been made known to the public by the report of the International Rice Research Institute for the year 1968. No one claimed any patent or any other exclusive right in Butachlor. To satisfy the requirement of being publicly known as used in clauses (e) and (f) of [s 64(1)], it is not necessary that it should be widely used to the knowledge of the consumer public. It is sufficient if it is known to the persons who are engaged in the pursuit of knowledge of the patented product or process either as men of science or men of commerce or consumers. The section of the public who, as men of science or men of commerce, were interested in knowing about herbicides which would destroy weeds but not rice, must have been aware of the discovery of Butachlor. There was no secret about the active agent Butachlor as claimed by the plaintiffs since there was no patent for Butachlor, as admitted by the plaintiffs. Emulsification was the well-known and common process by which any herbicide could be used. Neither Butachlor nor the process of emulsification was capable of being claimed by the plaintiff as their exclusive property. The solvent and the emulsifier were not secrets; they were admittedly not secrets and were ordinary market products. From the beginning to the end, there was no secret and there was no invention by the plaintiffs. The ingredients, the active ingredient, the solvent and the emulsifier, were known; the process was known, the product was known, and the use was known. The plaintiffs were merely camouflaging a substance whose discovery was known throughout the world and trying to enfold it in their specification relating to Patent Number 125381. The patent is, therefore, liable to be revoked.

Therefore, for information to be publicly known, it is not essential that it should be used widely or be in the knowledge of the general public only. It would satisfy the legislative purpose if the information was known to individuals engaged in the research of the patented product or operating within the same industry or science.

 

Anticipation by Use and Publication after Provisional Specification (Section 33)

 

The objective of this section is to clarify that the information disclosed in public or the invention worked in public is not considered for anticipation between the filing of:

  1. A patent application with a provisional specification and a complete specification (within 12 months from the provisional filing); or
  2. A priority application in a convention country and a convention application in India.

This means that if the invention is used or published after the provisional application is filed, a complete specification filed later is not deemed to have been anticipated. Therefore, the Controller cannot refuse to grant a patent, revoke or invalidate it by citing that the subject matter of the provisional specification was used or published in India or in another jurisdiction at a time after the filing of said specification.

It is important to note that the provision applies only if the complete specification of the patent is filed within 12 months of the provisional specification.

Further, in cases where the complete specification has been filed in pursuance of a convention application, the Controller cannot reject the grant of patent on the grounds that the subject matter of the application was filed for protection in India within 12 months from the date of priority application filed in the convention country.

This section essentially seeks to safeguard the interests of the inventors between the periods of filing of provisional and complete specifications, and between the periods of filing the priority application in the convention country and the filing of the complete specification in India, in an event where the subject matter of the invention is placed in the public domain.

 

The Doctrine of Inherent Anticipation

 

The doctrine of inherent anticipation refers to a kind of anticipation wherein anticipation is found even in the absence of appropriate disclosure in a prior art reference.

In general, anticipation can be of two types: explicit anticipation and implicit anticipation (i.e., the doctrine of inherent anticipation). The term explicit anticipation refers to anticipation wherein each technical element disclosed in the claim is disclosed in a single prior-art document. According to the explicit anticipation, a claim is rejected by the patent office if all the technical features are found in a single prior art document. According to the doctrine of inherent anticipation (i.e., implicit anticipation), a claim is rejected by the patent office even if all the technical features are not disclosed in a single prior art subject to the presence of the missing technical features inhere in the prior art. 

Generally, there are two accepted tests to appropriately understand the doctrine of inherent anticipation. According to the first test, a check is performed to determine that the inherency of anticipation is not established only based on the probabilities or possibilities. A technical feature is considered to be inherent only if said technical feature is the “natural result flowing from” the invention description and invariably leads to the outcome. According to the second test, a check is performed to determine that an accidental or unintentional outcome, not appreciated as inherent to the claim by a person of ordinary skill in the art, does not constitute anticipation.

The IPAB in Enercon (India) Limited vs. Aloys Wobben[8] held that “patent is invalid for anticipation if a single prior art reference discloses each and every limitation of the claimed invention. The prior art reference may anticipate without disclosing a feature of the claimed invention if that missing characteristic is necessarily present, or inherent, in the single anticipating prior art. It is not necessary that inherent anticipation requires that a person of ordinary skill in the art at the time would have recognised the inherent disclosure. But it is necessary that the result be a necessary consequence of what was deliberately intended in the invention.”

 

Overcoming Anticipation Rejection

 

In view of the above, it is always advisable to file a patent application before placing it in the public domain. If the nature of the invention requires the invention to be placed in the public domain or worked in the public domain, the inventor(s) must ensure compliance with the requirements outlined in Section 29-30 in order to maintain the novelty of the invention and avoid patent rejection due to anticipation.

References:

[1] Civil Suit No.562 of 2007

[2] [1972] R.P.C. 457

[3] CS (COMM) 201/2017: (14.08.2019 – DELHC):MANU/DE/2598/2019: 2019 SCC OnLine Del 9653:Delhi High Court

[4] [1978] FSR 226

[5] Ethyl Corporation’s Patent [1963] RPC 155

[6] AIR 1975 Cal 178

[7] AIR 1986 SC 712

[8] ORA/6/2009/PT/CH ,ORDER (No. 18 of 2013)]

 

 

Image Credits: Photo by JESHOOTS.COM on Unsplash

Anticipation can be of two types: explicit anticipation and implicit anticipation (i.e., the doctrine of inherent anticipation). The term explicit anticipation refers to anticipation wherein each technical element disclosed in the claim is disclosed in a single prior-art document. According to the explicit anticipation, a claim is rejected by the patent office if all the technical features are found in a single prior art document. According to the doctrine of inherent anticipation (i.e., implicit anticipation), a claim is rejected by the patent office even if all the technical features are not disclosed in a single prior art subject to the presence of the missing technical features inhere in the prior art. 

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Demystifying the Inventorship Rights of an AI System in India

In this age of technological advancement, Artificial Intelligence (AI) has taken a giant leap from undertaking more straightforward tasks to originating marvellous inventions. Can an AI system be considered an inventor? This question has been beguiling jurisprudence across the globe for a considerable time. However, through the recent decision of Thaler v. Commissioner of Patents, the Australian Federal Court has forced jurisdictions across the world to re-think the inventive capacity and the role of AI in the contemporary ecosystem of innovation.

Through this article, we have tried to determine the implications of the Thaler decision and examine the position of the Indian legislation on the inventorship rights of an AI.

Factual Matrix

Dr. Stephen Thaler designed the Device for Autonomous Bootstrapping of Unified Sentience (DABUS). DABUS is an artificial intelligence system that pioneered the creation of an optimised beverage container and a flashing light for use in emergency circumstances. In the persistence of such a creation, Dr. Thaler filled patent applications worldwide, including in Australia, Canada, China, Europe, Germany, India, Israel, Japan, South Africa, the United Kingdom, and the United States.

“The Deputy Commissioner” rejected Dr. Thaler’s patent application in Australia, which named DABUS as the inventor. The matter was contested and finally, the Federal Court of Australia determined that the AI could be recognised as an inventor under the Australian Patent Act. According to the Court, the patent would be owned by Dr. Thaler, the developer, owner, and controller of DABUS. The Court determined that the legislative intent was to encourage innovation and that nothing in the Patent Act expressly or implicitly forbids AI from being named as an inventor.

Indian Stance: Inventorship Rights of an AI

In India, recently, the Controller General of Patents recorded objections to recognising an AI as an inventor in the matter of patent application numbered 202017019068, citing the provisions under Section 2 and Section 6 of the Patents Act 1970 (“Act”). The term “inventor” has not been defined under the Act. However, Section 6 states that, among other things, a patent application can be filed by any person claiming to be the true and first inventor of an invention.[1]

A bare reading of the provisions indicates that a natural person is distinguished from others. One can also observe that anyone other than a natural person will be unable to claim inventorship. Consequently, a natural person who is true and first to invent, and who contributes his originality, skill, or technical knowledge to the innovation meets the criteria to be acknowledged as an inventor in India.

In the case of V.B. Mohammed Ibrahim v. Alfred Schafranek, AIR 1960 Mysore 173, it was held that a financing partner cannot be an inventor, nor can a corporation be the sole applicant that claims to be an inventor. The Court, through this decision, emphasised that only a natural person (who is neither a financing partner nor a corporation) who genuinely contributes their skill or technical knowledge towards the invention shall qualify to claim inventorship under the Act.

In the light of this judgement, it can be perceived that an AI can also contribute its skill or technical knowledge to an invention and become an inventor. However, a reference to Som Prakash Rekhi vs Union of India & Anr, AIR 1981 SC 212, clarifies the qualification of a legal ‘person’ under Indian law. The Supreme Court observed that ‘personality’ is the sole attribution of a legal person. Such a ‘personality’ is an entity that has the right to sue or can be sued by another entity. An AI is not capable of using such rights, nor can it perform the required duties of any juristic personality independently. For instance, it cannot enter into an agreement or transfer or acquire patent/patent application rights. It would also be impossible for an AI to oppose or revoke a patent application. Hence, an AI falls short of the standards for being deemed an inventor in India.

Furthermore, the legislative intent behind the Indian Patent Act as found in the Ayyangar Committee report of 1959[2] suggests that inventors are mentioned in a patent application as a matter of right. Whether or not the actual deviser has a proprietary claim on the innovation, he has a moral right to be acknowledged as the inventor. This confers reputation and boosts the economic worth of the inventor. The inventor may give up his ownership interest in a particular patent due to a contract/agreement in law, but he retains his moral right.

An examination of legislative purpose and current public policy reveals a desire to protect the rights of the inventor/natural person who creates IP and can use his moral rights. On the other hand, AI cannot be granted moral rights nor appear to enjoy the benefits intended by legislation or public policy. Given this, designating AI as an inventor/co-inventor under current Indian rules seems impossible until explicit revisions are made.

Role of AI and Economic Growth in India

The Parliamentary Standing Committee “(“Committee“”) constituted under the Dept. of Commerce, analysed the current landscape of the IPR regime in India and observed its contribution to promoting innovation and entrepreneurship in the country in its report titled “Report 161: Review of the Intellectual Property Rights Regime in India” presented in the Rajya Sabha on  July 23rd, 2021. In particular, it examined the challenges that exist in the current legislative structure including the inventorship rights of an AI.

The Committee acknowledged the relevance and utility of AI-based cutting edge technology and machine learning, particularly in current times, significantly affected by the pandemic, in which digital technology proved to be instrumental in responding to the global crisis. Further, the Committee placed reliance on a report released by Accenture titled “How AI Boosts Industry Profits and Innovation” which estimated AI to inject US $ 957 Billion into the Indian Economy by 2035, if used optimally, to understand further the impact and role of AI and technology in the contemporary landscape and its relationship with Intellectual Property. 

Therefore, the Committee recommended a review of the relevant provisions of the Indian Patents Act, 1970 [Section 3(k)] and the Copyrights Act, 1957 on a priority basis to afford inventorship rights to AI in India. The Report also stated that “The Committee recommends the Department that the approach in linking the mathematical methods or algorithms to a tangible technical device or a practical application should be adopted in India for facilitating their patents as being done in the EU and U.S. Hence, the conversion of mathematical methods and algorithms to a process in this way would make it easier to protect them as patents“. Thereby including algorithms and mathematical processes under the ambit of patent law.

The Committee concluded that the legislative framework amendments would protect the works of an AI (either autonomously or with assistance/inputs from a human), incentivize pioneering inventions and R&D in the country, and maintain an enabling ecosystem for the protection of human intelligence innovations. The Committee maintained that the embargo placed on the inventorship rights of an AI would dissuade significant investments in the sector since such AI induced innovations would not be protected in the country.

Conclusion:  A Way Forward for Inventorship Rights of an AI System 

The decision would have a favourable impact on the holder of an AI. However, commentators have expressed concerns regarding the difficulties that may arise due to the extending of patent protection to AI-generated concepts, such as:

  • Impact on the Copyright law: A result of such a decision may lead the courts to re-examine the subject of AI authorship and regard AI as a creator of AI-generated works, which will open a Pandora’s box of judicial conflicts.[3]
  • It could potentially raise the bar for innovation or fundamentally alter the definition of a ‘person skilled in the art,’ making it more difficult for human innovators to obtain patent protection.
  • Accepting inventorship to include AI systems would elevate AI to the status of a legal person, allowing it to hold and exercise property rights.
  • It raises concerns about who has the right to use or own the AI-created product. As the AI system is not a legal body, it cannot enter into agreements allowing it to transfer its inventorship rights.

The ability of an AI to be an inventor under patent law will be determined by the specific language in each jurisdiction’s patent laws. To explicitly incorporate and recognise AI-generated ideas, legislative changes and amendments may be required in nations where plain statutory wording needs an inventor to be a natural person. In places where the statutory language is less explicit, such as Australia, the courts may have additional freedom to consider purposeful statutory interpretation and policy considerations.[4] We anticipate that all IP offices adopt a unified approach to successfully address the emerging difficulties posed by inventions by AI.

References: 

[1] Section 6, the Patents Act, 1970.

[2] Shri Justice N. Rajagopala Ayyangar, Report on the revision of the patents law, 1989.

[3] Rita Matulionyte, Australian court says that AI can be an inventor: what does it mean for authors? Kluwer Copyright Blog (September 2021).

[4] Lam Rui Rong, Can Artificial Intelligence Be an Inventor Under Patent Law? Australian Federal Court Says ‘Yes’ but U.S. District Judge Says ‘No’, SKRINE (September 2021).

Image Credits: Photo by Gerd Altmann from Pixabay 

The ability of an AI to be an inventor under patent law will be determined by the specific language in each jurisdiction’s patent laws. To explicitly incorporate and recognise AI-generated ideas, legislative changes and amendments may be required in nations where plain statutory wording needs an inventor to be a natural person. In places where the statutory language is less explicit, such as Australia, the courts may have additional freedom to consider purposeful statutory interpretation and policy considerations.

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Small Entity Status- Can Foreign Companies Claim It?

The government of India has been aggressively pushing for the development and promotion of entrepreneurship in the country. In the Intellectual Property Domain, various concessions have been made for small and upcoming entities. Organizations claiming a ”small entity” status or a “start-up” status while applying for registration are entitled to some additional benefits pertaining to fees and filing requirements.  Here, we briefly look upon the small entity status as per the Indian patent and design rules. 

Intellectual Property Related Government Initiatives to Encourage Small Entities & Startups

In 2020, the Scheme for Facilitating Start-ups Intellectual Property Protection, was launched as an experimental initiative to encourage start-ups to develop and protect their intellectual property, which was extended for a period of three years (April 1, 2020 – March 31, 2023).

Further, the Patent (Amendment) Rules, 2020[1] were notified on October 19, 2020 to simplify the procedure of submitting priority applications and their translations and filing of working statements under form 27. These changes were introduced in consequence to the Delhi High Court’s order in the case of Shamnd Bashir v UOI[2], that resulted in a stakeholder’s consultation.

On November 4, 2020 the Ministry of commerce and Industry[3], notified Patents (2nd Amendment) Rules, 2020[4], making additional filing and prosecution concessions for start-ups and small entities.  The status of start-ups was discussed critically, extending their life for up to ten years. These amendments are set to make protection of intellectual property affordable to every category and class of business. Finally, the government also notified Design Amendment Rules 2021,[5] which recognized start-ups as applicants. The current Locarno classification system[6] and simplified fee structure were introduced specifically to benefit small entities.

 

Categorization of ‘Entities’

 

1.1 Natural Person

Under the Indian Patent Act, natural person includes an individual human being. In this context, the patent application can be filed in the name of one or a group of individuals. Here, the inventorship and ownership lies solely with the inventor and he is entitled to:

  1. Sell
  2. Transfer
  3. License, or
  4. Commercialize their patent as per their want.

1.2 Small Entity

The Indian Patents Rule, 2003 under Rule 2(fa)[7] define ‘small entity’ as:

  • in case of an enterprise engaged in the manufacture or production of goods, an enterprise where the investment in plant and machinery does not exceed the limit specified for a medium enterprise under clause (a) of sub-section (1) of section 7 of the Micro, Small and Medium Enterprises Development Act, 2006 (27 of 2006); and
  • in case of an enterprise engaged in providing or rendering of services, an enterprise where the investment in equipment is not more than the limit specified for medium enterprises under clause (b) of sub-section (1) of Section 7 of the Micro, Small and Medium Enterprises Development Act, 2006 (27 of 2006).

In calculating the investment in plant and machinery, the cost of pollution control, research and development, industrial safety devices and such other things as may be specified by notification under the Micro, Small and Medium Enterprises Development Act, 2006 (27 of 2006), shall be excluded.

1.3 Start up:

A start-up is an entity recognized as a ‘startup’ by the competent authority under the Startup India initiative and fulfills all the criteria for the same.

A foreign entity shall fall under the category of start-up if it fulfills the criteria of turnover and specified period of incorporation/registration, and submission of a valid declaration to that effect as per the provisions of Start-up India initiative. (In calculating the turnover, reference rates of foreign currency of Reserve Bank of India shall prevail.)

As per the Notification of Department of Promotion of Industry and Internal Trade[8], an entity is considered a start-up  

  1. Up to a period of ten years from the date of incorporation/ registration, if it is incorporated as a private limited company (as defined in the Companies Act, 2013) or registered as a partnership firm (registered under section 59 of the Partnership Act, 1932) or a limited liability partnership (under the Limited Liability Partnership Act, 2008) in India.
  1. Turnover of the entity for any of the financial years since incorporation/ registration has not exceeded one hundred crore rupees.
  2. Entity is working towards innovation, development or improvement of products or processes or services, or if it is a scalable business model with a high potential of employment generation or wealth creation.

Provided that an entity formed by splitting up or reconstruction of an existing business shall not be considered a ‘Startup’.

How to apply for Small Entity Status in India:

 

Any business can apply for the status of small entity under the MSME Development Act, 2006 at udyamregistration.gov.in. Subsequent to a successful registration the business shall be issued a Udyam registration certificate, that can be furnished as proof for availing various government subsidies and benefits. 

A foreign company can also register as an MSME on the same government portal. However, as a preceding step such a company shall register itself as per the provisions of the Companies Act, 2013[9].

Any Indian entity wishing to declare themselves as small entity for the purpose of Patent registration has to furnish the following documents:

  1. Form 28 of the Indian Patent Act:
  2. Proof of Registration Under MSME Act 2006 (Micro, small and medium enterprise development Act, 2006).
  3. Form 1 of the Indian Patent Act (if Fresh Patent Application is being filed).

Any Indian entity wishing to declare themselves as small entity for the purpose of Design registration:

  1. For an Indian entity to claim the status of small entity, it must be registered under the MSME Development Act, 2006.
  2. To file an application as a start-up, the entity should be recognized as startup by a competent authority under the Union government’s Start-up India Initiative.

 

Can a Foreign Company claim Small Entity Status in India?

On a plain interpretation of the requirements under the Patent rules and Design rules, it is clear that a foreign enterprise can claim the status of a small entity or a start-up, provided it is registered and incorporated in India and is engaged in the manufacture of goods and services as specified in the first schedule of the 2006 Act.[10]

Under the MSME Development Act, 2006 an enterprise is defined as:

enterprise” means an industrial undertaking or a business concern or any other establishment, by whatever name called, engaged in the manufacture or production of goods, in any manner, pertaining to any industry specified in the First Schedule to the Industries (Development and Regulation) Act, 1951 (55 of 1951) or engaged in providing or rendering of any service or services;[11]

With an objective to incentivize the incorporation of OPC (One Person Companies), the Ministry of Corporate Affairs amended the Companies (Incorporation) Rules. The move empowers OPCs to grow without any restrictions on paid up capital and turnover, thereby facilitating their conversion into any other type of company at any time. Additionally, reducing the residency limit for an Indian citizen to set up an OPC from 182 days to 120 days and also allowing Non-Resident Indians (NRIs) to incorporate OPCs in India has paved the way for foreign entities to enter Indian markets[12] [13].

 

Application Process for Small Entity Status in India? (Foreign Company):

Patent Rules

A foreign applicant seeking the status of ‘small entity’ for the purpose of filing patent in India, has to submit duly filled Form 28[14], along with the requisite documents of proof.

As per the requirements of Form 28, a foreign applicant has to attach evidentiary documents that verify their status as ‘small entity’ for the want of Rule 2 (fa) of the Patent Rules, 2003. For this purpose, the said documents can include a certified copy of financial statement from a Chartered Accountant, that proves that the investment in plant and machinery and the annual turnover of the entity on the date of filing the application does not exceed the limitations specifications under the MSME Development Act, 2006.

Design Rules

For the purpose of recognitions as a start-up the foreign entity should satisfy the following criteria:

  1. The entity must be a private limited company, limited liability partnership, or partnership firm.
  2. Its turnover at any point during the course of its business (from inception) should not exceed INR 100 crores (approximately USD 13.7 million as on date)
  3. The entity would be considered a start-up only for a period of 10 years from the date of incorporation.
  4. An entity formed by splitting up or reconstruction of an existing business shall not be considered a “Start-up”

For a foreign entity to claim the benefit of being a start-up, an affidavit (which under Indian practices would need to be notarized, although this has not been explicitly mentioned in the Amendment Rules) along with supporting documents must be submitted at the time of filing the application[15], to be submitted with Form 24[16] of the Designs Rules.

References:

[1] https://pib.gov.in/Pressreleaseshare.aspx?PRID=1668081

[2] writ petition No. WPC- 5590

https://www.scconline.com/blog/post/2020/10/28/patents-amendment-rules-2020-patentee-would-get-flexibility-to-file-a-single-form-27-in-respect-of-a-single-or-multiple-related-patents/

[3] https://ipindia.gov.in/writereaddata/Portal/Images/pdf/Patents__2nd_Amendment__Rules__2020.pdf

[4] https://ipindia.gov.in/writereaddata/Portal/Images/pdf/Patents__2nd_Amendment__Rules__2020.pdf

[5] https://www.foxmandal.in/wp-content/uploads/2021/08/Indian-Designs-Amendment-Rules-2021.pdf

[6] https://www.wipo.int/classifications/locarno/locpub/en/fr/

[7] https://ipindia.gov.in/writereaddata/Portal/IPORule/1_70_1_The_Patents_Rules_2003_-_Updated_till_1st_Dec_2017-_with_all_Forms.pdf

[8] https://dpncindia.com/blog/wp-content/uploads/2019/02/DIPP-Notification-dated-19-Feb-2019.pdf

[9] https://www.indiacode.nic.in/show-data?actid=AC_CEN_22_29_00008_201318_1517807327856&sectionId=185&sectionno=2&orderno=2

[10] https://www.startupindia.gov.in/content/sih/en/bloglist/blogs/How-a-foreign-national-from-China-can-start-and-register-company-in-India.html

[11] https://www.indiacode.nic.in/show-data?actid=AC_CEN_46_77_00002_200627_1517807324919&sectionId=9884&sectionno=2&orderno=2

[12] http://164.100.117.97/WriteReadData/userfiles/Notification%201.pdf

[13] http://164.100.117.97/WriteReadData/userfiles/Notification%202.pdf

[14] https://ipindia.gov.in/writereaddata/Portal/IPOFormUpload/1_40_1/form-28.pdf

[15] https://www.foxmandal.in/wp-content/uploads/2021/08/Indian-Designs-Amendment-Rules-2021.pdf

[16] https://www.ipindia.gov.in/writereaddata/Portal/IPOFormUpload/1_109_1/Form_24.pdf

Image Credits: Photo by Startup Stock Photos from Pexels

 

On a plain interpretation of the requirements under the Patent rules and Design rules, it is clear that a foreign enterprise can claim the status of a small entity or a start-up, provided it incorporates itself under the relevant schemes and statutes and is able to furnish documents for proof to the same effect

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Why filing of Provisional Patent Application keeps you ahead in the Patenting race?

With an additional focus to build an Innovation based entrepreneurial eco system, innovation is happening at the drop of a hat. However, the floodgate of invention around the race does not seem to be limited to an ingenious mind but also requires a go-getter attitude. As we know, Patent protection works on a “first to file” basis and not on “first to invent” which means it is granted to the one who files the Patent application first, subject to fulfilling other patentability criteria.

A Patent application has to be filed along with certain Specifications (details/working of the invention). These specifications are of two types i.e. Provisional and Complete. Therefore, the application can be filed along with the Provisional or Complete Specification. If filed with Provisional, the Complete specification needs to be filed within 12 months.

 

Provisional Specification is very basic in nature and does not require details about the invention, unlike Complete Specification. Perhaps the difference between the two specifications is clear from the preambles of the specifications itself i.e.:

Preamble of the Provisional Application: “The following specification describes the invention”.

Preamble of the Complete Specification: “The following specification describes the invention and the manner in which it is to be performed.”

 

Even though, the Provisional Specification does not require claims, detailed descriptions, drawings etc., however, due care needs to be taken to ensure that the specification is broad enough so the objectives of the invention is covered as Complete Specification cannot be broader than what was disclosed in the Provisional.

 

Many times, during the office action as well as during the infringement or revocation attack, it is the provisional specification, which is first scrutinized to check if the invention was covered clearly. Therefore, even though it is provisional, taking professional guidance while drafting would be advisable to avoid possible mishaps in the future.

 

In order to stay ahead in the competition of technological advancement, R&D companies and other IP sophisticated companies around the globe, work on new inventions and file applications with the bare minimum information to get a priority date for their inventions. This is done before deep diving into specifics such as looking at the prior art or doing the feasibility test for the product/process etc.

 

Ideally, if an inventor comes up with an invention, she should not wait for the invention to be fully developed or for the feasibility test to be done. Needless to mention, millions of researchers around the globe are working on similar subjects and one never knows who might be coming up with similar invention in some part of the world and perhaps may be moving faster to file the patent application to claim priority.

 

Post filing of a Patent Application along with the Provisional Specification, an inventor has 12 months’ time to complete the research and file the Complete Specification. Since this option has been provided under the Patent law, availing it to claim the priority date would be a wise thing to do rather than wait for the research to complete where one would be running the risk of losing everything if someone else files before them. 

 

Ideally these 12 months period are given so one can carry out the patentability/ prior art search, which help the inventors tremendously in working around similar inventions.  Further, the Companies/inventors could also use the (provisional) Patent Application number to discuss the invention with potential investors, partners, licensee, etc. with due caution. 

 

In a situation where the inventor is unable to file the Complete Specification within the due date due to unavoidable circumstances, there is an option to file a request to post-date the application for a maximum period of six months subject to non-disclosure of the invention in the public domain.  

 

Considering these obvious advantages, filing a Patent Application along with a Provisional Specification could and would prevent a genuine effort from being a day late and a dollar short.

 

 

 

Image Credits: Photo by Med Badr Chemmaoui on Unsplash

Post filing of a Patent Application along with the Provisional Specification, an inventor has 12 months’ time to complete the research and file the Complete Specification. Since this option has been provided under the Patent law, availing it to claim the priority date would be a wise thing to do rather than wait for the research to complete where one would be running the risk of losing everything if someone else files before them. 

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A Brief Analysis of the Patents (Amendment) Rules, 2019

The Government of India, Ministry of Commerce and Industry (Department for Promotion of Industry and Internal Trade) vide its notification dated September 17, 2019, has published the Patents (Amendment) Rules, 2019[i] (hereinafter the “Rules”) amending the Patents Rules, 2003 (hereinafter the “Principal Rules”). The amendment came into force from the date of notification.

 

The Government of India, Ministry of Commerce and Industry (Department for Promotion of Industry and Internal Trade) vide its notification dated September 17, 2019, has published the Patents (Amendment) Rules, 2019[i] (hereinafter the “Rules”) amending the Patents Rules, 2003 (hereinafter the “Principal Rules”). The amendment came into force from the date of notification.

 

The highlights of the amendments are as follows:

 

  1. Rule 6: Leaving and serving documents

 

The amended Rules substitute Rule 6 (1-A) with the following:

“Notwithstanding anything contained in sub-rule (1), a patent agent shall file, leave, make or give all documents only by electronic transmission duly authenticated:

Provided that any document, if asked to be submitted in original, shall be submitted within a period of fifteen days, failing which such documents shall be deemed not to have been filed.”

 

Analysis: This amendment is brought to reduce the burden of submission of scanned copies of original documents subsequent to the filing of the same online. The amendment clarifies that the original copies are required to be submitted only when requested by the Indian Patent Office, within 15 days from the date of request.

 

  1. Rule 7: Fees

 

The amended Rules substitute the second proviso of Rule 7(1) with the following:

“Provided further that in the case of a small entity, or startup, every document, for which a fee has been specified, shall be accompanied by Form-28.”

 

Analysis: Again, this amendment is merely clarificatory in nature with respect to the filing of Form 28 along with documents that specify fee. In the principal rule, the provision existed only for small entities and the word ‘startup’ was not expressly mentioned. However, it was already in practice i.e. the patent office required Form 28 to be submitted with documents requiring fee even for startups.

 

  1. Rule 24-C: Expedited examination of applications

 

The amended Rules substitute Rule 24C(1)(b) with the following:  

“(b) that the applicant is a startup; or

(c) that the applicant is a small entity; or

(d) that if the applicant is a natural person or in the case of joint applicants, all the applicants are natural persons, then the applicant or at least one of the applicants is a female; or

(e) that the applicant is a department of the Government; or

(f) that the applicant is an institution established by a Central, Provincial or State Act, which is owned or controlled by the Government; or

(g) that the applicant is a Government company as defined in clause (45) of section 2 of the Companies Act, 2013 (18 of 2013); or

(h) that the applicant is an institution wholly or substantially financed by the Government;

Explanation:- For the purpose of this clause, the term ‘substantially financed’ shall have the same meaning as in the Explanation to sub-section (1) of section 14 of the Comptroller and Auditor General’s (Duties, Powers and Conditions of Service) Act, 1971(56 of 1971); or

(i) that the application pertains to a sector which is notified by the Central Government on the basis of a request from the head of a department of the Central Government.:

 Provided that public comments are invited before any such notification; or

(j) that the applicant is eligible under an arrangement for processing a patent application pursuant to an agreement between Indian Patent Office and a foreign Patent Office.

Explanation: – The patentability of patent applications filed under clause (j) above will be in accordance with the relevant provisions of the Act.”

 

Analysis: The Principal Rules had provision for expedited examinations only in case of startups and international applications where India was a competent searching/examining authority, however, that has been amended to include additional categories of applicant such as small entity, natural person(s) having at least one female applicant, institution or department of Government or controlled by Government. Also, Government companies, institutions wholly or substantially financed by the Government, sectors notified by the Government and applicants eligible under an agreement with a foreign patent office can also file for expedited examination. This amendment will motivate other categories of applicants to have fast track examination of patent applications for early grant of patent.

 

Further, in order to accommodate the said categories, the corresponding Form 18A has been amended.

 

  1. First Schedule: Transmittal Fee & Certified copy fee towards filing an International Patent Cooperation Treaty (PCT) application

 

The amended Rules add:

  1. If the PCT application is filed online, the applicant is not required to pay any fee towards the Transmittal fee. Earlier applicants were required to pay fees ranging from 3200 to 16000. The fees for physical filing remain unchanged.
  2. If a request is filed for preparation of a certified copy of priority document and sharing the same via e-transmission through WIPO DAS, the applicant is not required to pay any fee for the same. Earlier applicants had to pay fees ranging from 1000 to 5000. The fees for physical filing remain unchanged.

 

The amendment in the Rules, especially the expansion of the expedited examination system, would augment the government’s patent prosecution highway (PPH) program that intends to harmonize the patent examination standards and encourage the filing of patent applications in India. In September 2018, after the Second JPO- DIPP Review Meeting in August 2018, the Japan Patent Office (JPO) and the Department of Industrial Policy and Promotion (DIPP) had agreed in principle, to start a bilateral PPH program on a pilot basis in certain identified fields of inventions in the first quarter of fiscal year 2019.[ii] The amendment seems to be a result of the agreement and the intention of improving the overall IP environment of the country. Additionally, the waiver of the transmittal and certified copy fees would also increase the filing of PCT applications and facilitate the ease of doing business in India.

The amendment in the Rules, especially the expansion of the expedited examination system, would augment the government’s patent prosecution highway (PPH) program that intends to harmonize the patent examination standards and encourage the filing of patent applications in India. In September 2018, after the Second JPO- DIPP Review Meeting in August 2018, the Japan Patent Office (JPO) and the Department of Industrial Policy and Promotion (DIPP) had agreed in principle, to start a bilateral PPH program on a pilot basis in certain identified fields of inventions in the first quarter of fiscal year 2019

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Quality Drafting: Key to the Success of Patents

Increased IP awareness and the consequent surge in the rate of patent filings have failed to deliver on the effectiveness quotient of IP enforcement in the market. This has necessitated thorough scrutiny by the Indian Patent Office (IPO) to deter applicants from getting a grant on inventions that might not be able to stand a trail in the Court of Law if its discussed. Therefore, drafting a patent application (specification) plays a crucial role in the success of an invention. From acceptance to infringement actions, the content and quality of the draft determine the fate of the invention. An inventor may know his invention well but might not be able to explain it in a manner compliant to the requirement of the patent office. In such a scenario, professional assistance from an experienced patent practitioner is sought and it is expected of them to understand the technical complexity of the invention at hand and have the desired foreseeability to help the invention survive the various tests.

Impact of drafting the patent specifications having broader scope:

The broader you cover the invention, the broader is your scope of the invention protected. Drafting the patent specifications broadly, covering related future developments, would restrict competitors to a possible extent from claiming similar invention with slight modifications. Therefore, in drafting the specification, the patent expert should avoid using phrases such as “the invention is…” instead they could use phrases like “in an embodiment of the invention.” This will ensure that patent claims receive the broadest interpretation possible.[i] Moreover, broadly drafted patent specification still provides the chance to the applicant to narrow down the specification at the worst case and proceed further to put the application in order of grant. However, care must be taken to limit the breadth so as not to go beyond the invention. Too broad description, without precise details and proper drafting in view of the existing prior arts, might lead to rejection of claims or increased susceptibility to complex patent prosecution.

 

Impact of having various embodiments in patent specifications:

While drafting patent specifications, various embodiments should be provided in order to ensure better clarity in terms of the scope of the patent application. Multiple embodiments should disclose all the possible methods of performing the invention and different combinations of structural components that are involved to achieve the objective of the invention including alternatives. The embodiments disclosed could effectively restrict competitors from claiming a scope similar to the applicant’s invention with slight modification. Additionally, varying embodiments assist in identifying the means that one could employ to avoid infringement and those means must be incorporated to protect the invention from future actions. However, the best patent claims will protect the “invention” itself so that no physical embodiments of the invention can be made, used or sold by anyone without infringing the claims.

 

Impact of having an effective background section in patent specification:

The background section should disclose the existing state of the art to which the invention relates to and the areas of improvement as well as the limitations of such existing art. It must also state the need for the present invention and provide a solution to the problem associated with the state of the art. Care must be taken so as not to limit the scope of the invention to a particular state of the art and if possible, its application to other fields should be hinted.

 

Impact of using appropriate terminologies in patent specifications:

Drafting of patent application in a precise and clear manner, using appropriate terminologies, enable applicants to claim the scope of the invention to the maximum possible extent. Terminologies utilized in the patent specifications have a substantial importance in protecting the scope at the time of patent prosecutions/enforcement. Say, for instance, using the terminology specifically like “selfie” in an invention related to image capturing would limit the scope of the invention to selfies only. Whereas using a broad term such as “image” would protect the invention not only for “selfies” but also for other images. However, the best practice is to use only the appropriate terminologies that are applicable/relevant to the invention. Further, the terminology used in claims should have proper enablement/support in the patent specification. Similarly, inconsistencies must be avoided as it may limit the extent of protection and could render the claim objectionable. Finally, negative limitations and disclaimers should generally be avoided because they do not provide the elegant and artful claim language that offers the best protection for inventions.

 

Impact of claiming the invention in various perspectives and categories:

Claiming the invention in all possible perspectives and categories enables the inventor to protect the scope of the invention entirely. For instance, claiming the invention only in transmission perspective provides a chance to the competitor to exploit the rights of the applicant’s invention in reception perspective with minor changes. Similarly, claiming the invention in all possible categories under a single inventive concept would enable the inventor to completely protect the invention. Else claiming only in one particular category provides a chance to competitors to exploit the rights.

 

Conclusion:

The best practice is to draft patent specifications with utmost care to extract maximum benefits. Patent Practioners need to identify how best to protect their clients’ invention and achieve their clients’ business objectives. It is essential that novelty, utility, and non-obviousness of the invention are adequately represented in the application. Apart from the above-mentioned observations, certain key points such as precision and brevity of claims, lack of repetition, noting essential features and elements of the invention, and going from broadest claim to the narrowest would help in proper drafting.

 

References 

[i] https://www.wipo.int/edocs/pubdocs/en/patents/867/wipo_pub_867.pdf

 

 

Image Credits:  Daniel McCullough on Unsplash

The best practice is to draft patent specifications with utmost care to extract maximum benefits. Patent Practitioners need to identify how best to protect their clients’ inventions and achieve their clients’ business objectives. It is essential that the novelty, utility, and non-obviousness of the invention are adequately represented in the application.

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