Unimarks Legal Solutions, experienced and competent Patent Law firm and IPR Consultants in Chennai comprising a panel of patent attorneys of generally have industry or post doctoral experience in their respective fields of expertise. Our Patent Attorneys are well placed to understand innovative technical concepts and to translate them into patent specifications in a timely and cost effective manner
What is Patent?
A patent is an exclusive proprietary right granted to an inventor for his invention. For grant of patent the invention should clear the following benchmarks.
- Patentability of the Subject matter
- Industrial Application
- Practicability of the Invention
The patent rights allows the inventor to license, assign his rights to third parties or stop others from utilising, making, using, offering for sale or selling the patented invention for a limited period of time. A patent provides protection for the invention to the owner of the patent. The protection is granted for a limited period, generally 20 years.
These patent rights are usually enforced in a court, which, in most systems, holds the authority to stop patent infringement. Conversely, a court can also declare a patent invalid upon a successful challenge by a third party. A patent owner has the right to decide who may – or may not – use the patented invention for the period in which the invention is protected.
The patent owner may give permission to, or license, other parties to use the invention on mutually agreed terms. The owner may also sell the right to the invention to someone else, who will then become the new owner of the patent. Once a patent expires, the protection ends, and an invention enters the public domain, that is, the owner no longer holds exclusive rights to the invention, which becomes available to commercial exploitation by others. Patents provide incentives to individuals by offering them recognition for their creativity and material reward for their marketable inventions. These incentives encourage innovation, which assures that the quality of human life is continuously enhanced.
- Search of patents and technical literature
- Prepare patent specifications
- Filing and prosecuting patent applications
- Conduct infringement searches
- Investigate the validity of patents
- Filing and conducting oppositions to the grant of patents
- Defending applications against oppositions
- Defend against allegations of infringement
- Enforce patent rights against infringers
- Negotiate and settle patent disputes
- Patent watching, monitoring and surveillance
What is Prior Art?
Prior art is any dence which refers to scientific and Technical information already known that exists prior to your invention.
Prior art does not require to exist physically or be commercially available. It is enough that someone, somewhere, sometime previously has described or shown or made something that contains a use of technology that is very similar to your invention. Just because the inventors cannot find a product similar to their invention they shall not presume that their invention must be novel.
The prior art includes any public documents such as; patents, technical publications, conference papers, marketing brochures, products, devices, equipments, process and materials.
What is Prior Art Search?
Prior Art Search discloses the patentability of an invention. A prior art search refers to an organised review of prior art materials available from public sources. The purpose of a patentability search is to determine whether and which of the details of your invention are new. Patents are only granted for new inventions. If a prior patent or patent application discloses each and every detail of your invention then you will generally not be able to obtain a patent on that invention—because the invention is not novel (e.g. new). A search is therefore designed to give you information about whether you are likely to obtain a patent on your invention.
Why Prior Art Search is important?
If the search results reveals similar and existing inventions in the same field then it is to be understood that your invention is not likely granted with patent as each and every detail of his invention is disclosed in a prior patent or patent application. Thus, you can avoid spending money for preparing, filing, and prosecuting the application. In this way, you can think of a search as insurance against the risk of not obtaining a patent after spending money preparing, filing, and prosecuting a patent application.
How Prior Art Search is conducted?
Prior Art Search is conducted based on the worldwide patent system.
- Focus of research area to avoid redundant search
- State of the Art Searches
- Decision of Patent Applications
- Patent Examination Searches
- Validity Searches
- Legal Status of a Patent Application
- Detection of possible infringement
Main Purposes of the Prior Art Search
- To generate ideas for R&D
- To avoid duplicate of research To avoid duplicate of research
- To reduce significantly R&D investment
- To develop new technical solutions to problems
- To evaluate specific technology
- To plan new products
- To identify state of art of technology
- To find legal status of patent applications
- To assess novelty and patentability
- To market for commercialization
- To update new technological trends
- To monitor competitor’s research activities
- To monitor competitor’s research activities
- To prevent infringement actions (validity, ownership etc.)
What is Specification?
The specification otherwise known as the disclosure of an invention in the form of written description of such invention. The patent specification is drafted to comply the written requirements for patentability and to define the scope of the claims. The specification is a written description of an invention, it discloses the manner and process of making and it shall further include with one or more claims specifically identifying and claiming the subject matter of the Invention.
Purpose of Specification
The purpose of a specification is to describe your invention. It should contain as much detail as possible, including:
- the technical features that are essential to the way your invention works
- The best way or ways you know of putting your invention into practice
- Examples or drawings if they help describe the invention
- End with claims that define your invention.
Provisional specification describes the nature of the invention to have the priority date of filing of the application in which the inventive idea has been disclosed. It must be followed by a complete specification describing the details of the invention along with a statement of claims within 12 months after filing of the provisional application. If the complete specification is not filed within the prescribed period, the application is treated as deemed to have been abandoned Language.
Benefits of Provisional Specification
- Lower cost
- Secures priory date for the invention.
- Prior knowledge which is available in the public domain.
- One year time to construct the complete specification
- Confidentiality of patent remains protected
- Immediate Acceptance
Limitations of Provisional Specification
- One year filing deadline
- Additional Cost
- Inaccurate specification affects patent
- No Examination
- False sense of protection
- Too much information might risk the loss of Trade Secret
The Complete Specification is a technical and legal document which describes the invention and specifies the best known methods of working by including one or more “claims” to define the scope of such invention. The complete specification contains two major parts viz., the description which discusses the invention and the claims which defines the monopoly of the inventor.
The patent specification should comprehensively describe the invention. There shall be no room for ambiguity or vague explanation. The patent specification mandates to describe the invention and provide adequate and sufficient information so the skilled person can perform and repeat the invention without inventor’s further inputs.
Contents of the Specification
- Field of Invention
- Background of Invention
- Prior Art Details
- Objects of the Invention
- Statements of the Invention
- Detailed description of the invention
Important forms of Patent Application
- Form 1 – Application for grant of patent
- Form 2 – Provisional/Complete Specification
- Form 3 – Statement/Undertaking under Section 8
- Form 9 – Request for Publication
- Form 18 – Request for Examination
Do I need to search for my invention even when no products in my field are sold in the market?
Yes! The criteria of granting patent is not based on the availability of product in the market. There are so many products which are not available in the market are either granted with patent or pending patent applications. So even if the products are not in the market, it is highly possible that it has already been disclosed in an application filed at the patent office. Therefore, it is advisable to search even when the product is not available or sold on the market.
Can I Do My Own Patent Search?
Yes, you may, however a professional patent attorney who has done more than thousands of search during his practice is expected to achieve better results than you would on your first try. Even so, we encourage our clients to perform the patent search on their own because they may identify relevant patent references which disclose all the features of your invention. However, for concluding the patentability of your invention based on the search result shall be left to the opinion of a patent attorney.
In any event, even if your search results do not reveal any obstacles to seeking a patent, it is best to engage a professional patent searcher, such as a patent attorney or trained patent searcher, to perform a search as a professional patent searcher may uncover results that you did not find given the professional searcher’s experience, access to search tools, and knowledge of searching techniques.
While sometimes the results of a patent search might be apparent from the patent references themselves, often it is necessary to have a patent attorney explain what the patent search results mean. For example, after reviewing the patents and patent applications from a patent search you might come to the conclusion that your idea is not patentable because it is obvious in view of the results. However, the obviousness doctrine under the law is not synonymous with the common meaning of the word obvious and a patent attorney may have a different opinion that your idea could be patentable and may not be found obvious under the law.
My Patent Search has no similar invention in my field, So can I assume the guarantee of patent grant?
Absolutely not. Even if a patent search provides results that show a favorable position for the client to proceed with a patent application, non-public prior-art may still exist which could prevent you from obtaining a patent.
When Should I apply for a Patent?
The patent application shall be filed only when the you realize to have all sufficient information related to the invention. If you observe a short of information or expects to have more details in the near future then you shall explore the options of filing a provisional specification.
Can I apply for Patent even if I do not have the prototype of my invention?
Yes! the patent application can be filed without actually building a prototype. However, it is advisable to develop one later time as the examiner of patent may call for the prototype from the applicant during the examination of such patent.
Can I patent my Software programmes?
Section 3(k) of Indian Patent Act states as follows:
“What are not invention – The following are not inventions within the meaning of this Act, – a mathematical or business method or a computer program per se or algorithms;”
Though the above provision openly negates the possibilities of patent for software programmes, not all software innovations fall under section 3(k). Hence, a wide range of software innovations are patentable in India if the subject matter of such softwares are not just a computer program.
Can I obtain a patent for a product design?
No. It is not possible to obtain patent protection for the mere outward appearance of an article, that is, a shape configuration, pattern or ornamentation. Instead, a design registration may be a more appropriate option.
However, if the outward appearance has a functional application as opposed to a mere visual purpose, it may be possible to obtain patent protection, subject to the patentability requirements of novelty, inventive step and industrial application.
What is Non-Disclosure Agreement and why is it important?
A NonDisclosure Agreement (NDA) or Confidentiality Agreement is a written agreement where one or more parties agree to keep information that is disclosed confidential. Generally a NDA will be used one one party wants to disclose confidential information to a second party. Occasionally, a mutual NDA will be needed if both parties intend to disclose confidential information to each other.
Having an written NDA signed is an important first step before disclosing confidential information to others before a patent application is filed. However, the NDA’s are self-enforcing. Therefore you should endeavour to disclose confidential information only to those who are trustworthy. If the party that you are disclosing to breaches the NDA, you will be forced to hire a lawyer and take action against that person, which can be disruptive and time consuming. Therefore it is generally worth investigating the trustworthiness of anyone you will be disclosing confidential information to under an NDA
Patent Flowchart: http://ipindia.nic.in/Whats_new/Patent_FlowChart_09June2016.pdf
Patent Amendment Rules 2016: http://ipindia.nic.in/IPActs_Rules/Patent_(Amendment)Rules_2016_16May2016.pdf
Scheme for start-ups: http://ipindia.nic.in/Whats_New/statupUps_Scheme_05May2016.pdf
PCT application: http://ipindia.nic.in/iponew/flowChart_PCT_10March2016.pdf