Cost effective patent protection

Cost Effective Patent Protection

BySomashekar Ramakrishna

BananaIP Counsels

Copyright, BananaIP Counsels, 2014

Cost?

• Indian Patent (from filing to grant)- INR 4,00,000 to INR 6,00,000

• US Patent (from filing to grant)- USD 13,000 to USD 18,000


Save! But How?

• Basic understanding of Patent Process

• Selecting Patent Professional

• Devising Strategy


Basic understanding of Patent Process

• Pre-Filing• Filing• Publication• Examination• Prosecution• Grant


Pre-Filing

• Patent search– Optional but very useful– Identifies relevant prior art– Helps in determining the scope of protection to be sought

• Invention disclosure form– Disclose every aspect of the invention– Disclose what problem does the invention solve– Provide drawings, examples and alternatives to the

invention – Provide the date when the invention will be first disclosed


Filing

• Patent Application– Form of Application

• Provisional Application (Provisional Specification + Filing documents)

• Non Provisional/Complete Application (Complete specification + Filing documents)

• Priority Date- filing date of the first application in a chain of applications

• Combine similar inventions in one application• The product can be marked as “patent pending” immediately

after filing a patent application.


Filing

• Entity• In India– Natural Person (75% reduction in govt. fee); or– Legal entity.

• In US– Small entity (50% reduction in govt. fee);– Large entity; or– Micro entity (75% reduction in govt. fee).


General Specification Contents

• Title• Technical field• Background • Summary• Brief description of the drawings• Detailed description• Claims• Abstract• Drawings


In Specification

• Title– Should embrace all variants of the invention

(apparatus and method)

• Background– Do not criticize the prior art

• Detailed Description– Terms should be consistent– Examples should be present wherever necessary


In Specification

• Claims

– Independent claims covering important broad embodiments

– Having varied scope– One set of claims having narrowed scope covering

the exact invention


Filing

• Application Types• Domestic Application

• Convention Application

• Divisional Application• PCT Application

– International Application– National Stage Application


Filing

• A provisional application was filed on June 20 20131. When can a complete application be filed?2. Can a PCT application be filed on July 20th 2013?3. Can a US application be filed on June 21st 2013?


Publication

• Notice to Public (18 months from the priority date)

• Rights start from the date of publication

• Request for early publication- available both in US and India


Examination

• In India• A Proper request for examination must be filed– Within 48 months from the priority date– By the Applicant– By the interested person (person engaged in or in

promoting, research in the field of the invention)

• In US• A non- complete specification application is

automatically queued up for examination after filing


Examination

• Delay the Process• In India– File Complete specification followed by a provisional

specification at 12th month– File request for examination at 48th month

• In US– File Complete specification/non-provisional application

followed by a provisional specification at 12th month– Request deferral of examination for 3 years


Examination

• Expedite the Process• In India– File Request for Examination along with filing the

application– File request for early publication

• In US– File accelerated examination


Prosecution

• Cost consuming phase

• Inventor participation may reduce the cost involved

• Having claims with varied scope will help reduce the cost


Prosecution• In US– First office action, second office action, final office

action– Request for continued examination – Response to be filed within 3 months from the

mailing date of the office action (can be extended to 6 months by paying extension fee)

– Examiner interviews– Patent office initiatives• Patent prosecution highway• AFCP 2.0


Prosecution

• In India– First Examination Report– Prosecution should be completed within 12

months from the FER– Response may be filed early – Second examination report (if there is time)– Request for a hearing


Grant

• Generally 3-4 years from the date of filing- both in India and US

• To be renewed every year after 2 years from the grant date- In India

• To be renewed at 3.5 years, 7.5 years and 11.5 years from the date of grant- In US


Selecting Patent Professional

• Scientific background match– Basic Technical degree of the patent professional– Does the patent professional understand the invention?– Does the patent professional appreciate the invention?

• Is he/she asking relevant questions?– First disclosure date– Technical questions on the invention (alternatives, prior arts and so

on)

• Personal compatibility– Does the patent professional understand why you want the protection?– Is the patent professional easily accessible? – Correspond with you on a timely manner


Devising strategy

• Objective

• Budget allocated

• Consider the shelf life of the product

• Consider the filing options


Devising strategy

• Company A’s R&D department is in the process of developing a new process and a new apparatus for manufacturing rubber. The R&D department believes that it requires some more time to perfect the invention. Further, it is also believed that the new process and apparatus being developed by the R&D department is set to positively affect the rubber manufacturing process. 1. Should the company file for a patent at this stage?2. If yes, please suggest the cost effective ways for patent protection.


Devising strategy

• Company A (SME) wants to file for patents for two similar inventions which are believed to be path breaking. The company will have to disclose the inventions to public (through exhibition) within next 5 days. What strategy should the company follow?


Devising strategy

• Company B has improved a product (having a shelf life predicted to be not more than 7 months) which is already available in the market. The improvement is not very substantial and is also not patentable. Since the market is crowded, Company B would like to try and keep the competitors away from the market for some time. What should the company do from IP perspective?


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Date post:	17-Nov-2014
Category:	Business
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Cost effective patent protection

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