Patent provides an exclusive right to stop others from practicing the patented invention. The exclusivity right is for a limited periods of time, in general it is twenty years. Quid pro quo is the fundamental of patent system. The inventor/ applicant awarded with the limited period of exclusivity for disclosing their invention to the public. Hence, the public can use the disclosed invention upon expiration of patent. Patent has a life cycle which starts much before the creation of Patent Application and moves up to enforcement of Patent until it’s lifetime.
We divide the lifecycle of Patent into three phases:
Pre-filing of Patent Application
This phase refers to the conceptualization of the invention. The conceptualization can be accidental, as many break-through inventions have been; or it can be systematic. However, many times systematic processes for invention creation also lead to accidental inventions. In systematic process many of the research-oriented companies or institutions carry out various activities like, mapping Picture of the Future, Competitive Analysis with respect to a particular technical area, Technology Landscape creation to identify how the technology has evolved in a particular area, White Space analysis to identify area of technology which are less travelled or not yet travelled.
Patent experts at Singhwal have been involving in the preparation of white space analysis of a specific technology and strategically advice our clients to develop the white space and patent the invention. It should be noted that all the white space identified may not work practically. Hence, our expert team advice our client to improve/ modify the white space to make it happen practically. Throughout the process, we hand hold with the client and patent the invention as soon as identified.
In addition to find out the new invention of a specific technology, our expert team review the pipeline product/ technology of the client and advice them regarding the possible improvement of the product/ technology in order to extend the life cycle of the product by patenting the improvement.
Based on various of these systematic approaches, an area of technology is selected for moving in, generally which are less travelled so as to avoid future infringements to the maximum. Further, even state of art searches are done to identify how a particular problem in a technical area used to be solved before. The state of art search provides guidance to structure the research and which eventually results in the invention.
Filing and Prosecution of Patent Application:
Once the invention is conceptualized, it needs to be evaluated for Patentability. For this evaluation, a patentability search is carried out to further identify the point of novelty. If the point of novelty is identified and if it is significant to be added in the patent portfolio, the decision for filing a patent application for said novelty is taken up. Then begins the process of Patent Drafting, where a techno-legal document having claims and specification is drafted.
Patent drafting is an art. It requires a combination of technical and legal expertise. Our team at Singhwal has rich experience in patent drafting. We have experts from different domains such as mechanical, electrical, electronics, computer science, life science, biotechnology, pharmaceutical, chemical, agricultural etc. The patent specification and claim must be drafted in such a way to comply with all the requirements of patent law thereby to avoid lengthy prosecution. In addition, the specification and claim must be drafted while keeping the prosecution and the potential objection from the examiner in mind in order to obviate those potential rejections. The claim must be drafted in broad scope as much as possible in order to easily enforce the patent in view of patent infringement by third parties. Additionally, the claim scope should not allow third parties to design around the claim easily while practicing the invention described in the patent application. Therefore, the claim must be drafted in such a to specifically cover the invention in order to avoid any design around possibilities.
The required translated version of patent documents needs to be submitted at the time of filing a patent application in foreign countries in order to comply with the provision. Further, the application is applied to one or more Patent offices. For applying to different Patent offices, the claims and specification need to be compiled for those specific Patent Offices requirements. The patent is not applied to all the Patent Offices on the same day, rather a filing strategy is generated based on multiple factors, and on that basis, the application is filed in multiple countries using either of the two routes, Patent Cooperation Treaty (PCT) route, or Paris Convention route.
Under Paris convention route, the patent applicant can enter into nation phase of the member countries within twelve months from the earliest filing date without losing the priority. Another option for filing a patent application in foreign countries is PCT route. The PCT approach provides 30/ 31 months timeline to enter into national phase in the desired countries. In addition, the applicant can check the patentability of the invention by means of International Search Report and International Preliminary Examination Report which is optional.
After filing the application, the application is prosecuted in each of the countries of filing and an examination is carried out for the applications. The applicant has to comply with the examination report to get the Patent granted for the application. It is highly advisable to seek a help from a professional like Singhwal patent expert team in order to be successful in patent prosecution. It should be noted that the applicant or less experienced patent attorneys also can prosecute the application and make it granted. However, they would not have realised the impact of their arguments/ amendments made during the prosecution at the time of enforcement of the patent.
Once the patent application is published, any party can oppose the grant of patent as per respective patent office’s provision. The patent examiner, in general, considers the objections raised by the opponent during the examination of patent application.
Patent attorneys at Singhwal strategically plan the prosecution in order to avoid lengthy prosecution and maintain the claim scope in broad, wherever applicable. We always take due care in order to avoid any prosecution mistakes and so far we have maintaining the same in all our prosecution matters.
The patent applicant can’t enforce their right at any time before grant of the application. Patentee can enforce their exclusive rights upon grant of the patent only. However, royalty can be recovered from date of publication of patent application. In general, the patent application is published on/after 18 months from date of filing Therefore, it is highly advisable to request the patent office for early publication of the application as and when required. Patent office like India and US have provision for express/ early publication. The applicant has to pay necessary fees for early publication.
Maintenance and Enforcement of Patent after Grant
Once granted, the patent needs to be maintained by filing maintenance/ renewal fees with the Patent Office. Maintenance fees at the U.S. patent office have to be paid at 3.5 years, 7.5 years and 11.5 years from the date of grant. Yearly maintenance/ renewal fees system is followed by some of the patent office like EPO and IPO. The patent offices like US and IN provide six months extension to pay the renewal fees. In case, the patentee forgets to pay the renewal fees on time, including the extension, period, then he can request the patent office within the prescribed time to restore the patent by paying the necessary fees. One should note that the patentee can’t initiate a patent infringement lawsuit if any third parties practiced the invention during the lapsed period and no royalty would be awarded to the patentee.
Patent portfolio maintenance team at Singhwal constantly monitors the patent renewal status and sends alerts to our client well in advance in order to avoid patent lapse due to non-payment. In addition, we also provide yearly budget estimates to our client in view of the maintenance fees to be paid for their portfolio. Therefore, client can take decision based on their business requirement that what are the patents to be maintained or abandoned.
Once the patent is granted, it can be licensed/ assigned, mortgaged and enforced against the infringer. Singhwal patent team helps our client during out-license of their patent. We also help them during in-licensing of third party’s patent and provide complete patent due diligence support. The patentee would also request the court to grant injunction against the third party’s activity related to the patented invention. Patents are commercial rights, the patent holder has to monitor his/her patent for infringement and government authorities do not intervene for the same. The monitoring is required not just online but also offline and is done through various Search Agencies. If the Patent holder identifies through his monitoring and infringement analysis that a third party is infringing his Patent, than he has to enforce his rights through Legal Notices to the infringer, taking administrative seizure actions at ports, search and seizure processes at the infringer’s location, and further though instituting Infringement suit against the infringer.
The infringer/ third party can challenge the validity of the patent in their counterclaim for infringement. . The infringer must evaluate all the options/ grounds available for invalidation of the claims at issue. It is highly advisable to seek advice from professional during the prior art search and what are the grounds can be relied upon to make the invalidation challenge successfully. Another way of enforcement is to move for licensing against the infringer rather than infringement proceedings. Having a licensing mechanism in place may result in effective commercialization of the Patent.
Additionally, the infringer/ third party also can challenge the validity of the patent before the respective patent office. For example, Indian patent office allows any interested person to challenge the granted patent within twelve months from publication of grant. Likewise, USPTO accepts post grant opposition request within 12 months from grant. Upon completion of PGO proceeding or expiration of twelve months, the patent can be challenged through Inter-partes review (IPR) process. Also, a patent granted by IPO can be revoked under section 64 of Indian patent act.
In US, after the grant, the patentee has an option to request the patent office to re-examine the patent claim. Herein, the patentee would amend the claim and include new claim as per the original specification. The patent expert at Singhwal advice our clients during the re-examination process by considering potential technology/ product from third parties thereby to initiate patent infringement lawsuit or exploring the licensing opportunity.
Patent team, at Singhwal, comprising technical and legal experts work closely with our clients from identifying the invention to filing a patent application to till grant of the patent. We hand holds with inventor to make the invention identified during the white space analysis to be patentable. In addition, we evaluate the pipeline products of our clients and strategically advice to carry out the research and development regarding the improvement of those products and patent those improvements in order to extend the life cycle of those products. Our expert team carefully draft the patent application, avoids lengthy prosecution and do not make any prosecution mistakes. We prepare patent due diligence report in view of license or assignment. Our patent portfolio maintenance team monitors renewal status of the patent and alerts our clients well in advance to avoid lapse of the patent and any consequences thereof.