Roughly, a patent is a legal right granted by the sovereign (government) to exclude others from performing various acts (making, using, selling, distributing, exercising, etc.) in relation to the patented invention. In other words, a patent does not grant someone the right to make/use the invention. It merely gives one the right to exclude others from making/using the invention. Thus, it may be viewed as a ‘negative right’ (not a positive right).
The rights granted by a patent are generally limited to 20 years from the filing date of the patent application in most countries.
Patents were originally intended to reward the inventors for disclosing to the public the details of making and using the invention. The objective was to encourage public disclosure so that others can build on the knowledge of the inventor. It was felt that the benefit to the public by way of knowledge sharing far exceeds the disadvantages of restraint on trade.
Primarily three business drivers: (1) just compensation for the creativity of the inventor; (2) control over technology; and (3) freedom to design. As to (1), for a simple illustration assume that there is a Rs. 5/unit value (e.g., either due to decrease in manufacturing costs, or higher price supported in the market) due to a patented feature. The patent becomes the instrument by which the inventor or patent owner can secure a portion of that value from anyone else who would want to use that invention. The patent owner either licenses the technology or sues a non-cooperating alleged infringer to secure at least a portion of the benefit. Thus, there is again incentive for someone to invent and bring the technology to the market place (either by him/herself or by licensing the technology to other more established player).
As to (2), especially in the electronics and communications area (including software, hardware), it is often difficult to identify/design a solution, but it is easy to copy (or even implement independently from the knowledge gained from the first inventor’s work). Patent system provides a clear ownership for only that part of the solution that is new/unobvious. The resulting ‘control’ is useful in several scenarios. For example, a small inventor may feel comfortable to enter negotiations with an investor or other potential partners without fear of the technology being ‘stolen’. The investors may require the patents (or applications) to be assigned before feeling comfortable with investing in the business. The business may later license the technology, if that makes sense as noted above.
As to (3), it is not an obvious driver, at least for players new to the patent field. Clearly, patent is a negative right as noted above, and does not directly provide the right to practice the invention. For example, practicing the invention may lead to infringement of several prior patents, and is not an uncommon scenario at all given the large number of active patents in countries such as US. An early stage business is unlikely to draw the attention of owners of such active patents, but once the business matures and becomes a deep pocket, the owners often try to license their patents to the business. Often, an important protection the business can have is by having its own patents, which can be asserted against the owners. This offensive capability provides great leverage in licensing scenarios. Clear illustrations of this point are Cisco (which initially did not file patents for routers technology) purchasing networking related patents from IBM for several hundreds of millions of US dollars merely for the offensive capability against several competitors who attempted to assert patents against Cisco in the late 1990s.
No. Patents are country specific. A patent in one country generally does not cover activities in other countries. Thus, one has to apply for a patent in each country of interest.
That is precisely correct. There is no such thing as a global patent.
One has to eventually apply for and secure a patent in each country of interest. Applying for patents in a lot of countries is an expensive proposition (because of fees to the respective patent offices, the foreign associates who assist with the proceedings, and translation costs in a lot of countries). Thus, a business person has to decide the countries in which patent protection is worthwhile, how soon the protection is desirable, and the cash-flow constraints.
Two most important variables a business person needs to consider are the following: (1) where are the markets; and (2) how production/distribution channels operate. Having patent protection in the countries where markets are enables a patent owner to either enjoy the exclusivity or at least leverage the rights to various types of advantages. Having patent protection in countries of production enables the patent owner to possibly deal with the problem at the source (i.e., with one producer as opposed to possibly several importers/distributors in other countries). One needs to pay close attention to channels (in which the technology is likely to be sold/exploited) to determine whether there is a need for patent protection. For example, if one is providing a component to be integrated into a larger system, it would matter as to who assumes risks of patent suits, indemnification, etc.
9. Assuming one has determined all the countries of interest for patent protection, how does the person go about securing protection in all such countries?
First a competent patent application needs to be prepared. Substantially the same patent application can then be filed in each country of interest while complying with the specific requirements of the country.
The patent applicant needs to filed first in one of the countries of interest at least before the corresponding information goes into the public domain. Most industrialized countries (except Taiwan) are part of various conventions/treaties which allows a patentee to delay the filing of applications in the remaining countries to some extent. The extent to which filing in the remaining countries can be postponed depends on ‘specific procedure’ followed, but roughly the filings in other countries can be delayed up to one year or 30 months from the first filing depending on the procedure followed.
11. Then, how soon can one apply for a patent? Does one need to perfect implementation to file a patent?
The laws do not require one to implement the invention prior to applying for a patent. One needs to merely describe the invention in sufficient detail so as to enable other skilled practitioners to make and use the invention. This is not too hard a standard to meet at least in the communications, computers, software and semi-conductor space. It is fairly common in high technology companies to apply for patents closer to the date of conception of inventions.
One needs to look to the laws of the specific countries to determine the latest date by which the first filing is completed. But, as a general principle, countries are reluctant to grant patents on ideas that are already in public domain (i.e., published, commercially exploited, publicly used). US is the only country that is an exception to this general rule in that a one-year additional time is provided for one to apply for a patent. Thus, if one is interested in non-US patents, it is best to apply before the information enters public domain. If the interest is only US patents, it is permissible to wait longer, but may not desirable.
First, there is a cost to draft the patent application. The drafting cost varies substantially (running into a few thousand dollars at the high end in the cutting edge technologies) in the markets depending on the skill level of the drafter, technology area, complexity of the subject matter. There are additional costs associated with filing in each country. The additional costs are generally fall in the categories of professional charges, patent office fees, translation charges (for many non-English speaking countries), designation fees, claims fees, etc. This additional costs category itself usually costs one to several thousands of US dollars for each country depending on various factors.
Drafting a competent patent application requires an intricate knowledge of both the technology space and the legal space, and is thus considered a very specialized area. Depending on the skill level of the practitioner, the service charges would vary considerably.
There are at least two hurdles that each patent application should overcome: (1) In each patent office (of different countries) to secure a patent; and (2) to withstand scrutiny after the patent is granted. As to (1), the procedure within the patent office prior to grant is an iterative one, with the patent office raising objections and the practitioners providing the appropriate responses. Unless the application is prepared competently, the number of iterations can be high, thereby leading to higher costs later. As to (2), successful enforcement of a patent will require a much greater degree of scrutiny than that undergone in front of the patent office. An alleged infringer is unlikely respect the patent unless there is no ‘design around’, which can be impacted with each word that may be part of the patent application or the assertions made to the patent office while procuring patents. To provide a sense of the amount of scrutiny in a typical litigation, an average litigation (including trial and pre-trial process) in US in high technology area costs not less than US $ 500,000 (about Rs. 2.5 Crores) in legal fees. Thus, at least if the technology has global markets, it may be desirable for the patent application to be prepared competently.
Most countries (including India, but not US) now require a ‘request for examination’ to be filed for the patent application to be actually examined. This step is a fairly simple procedure, and should not be too expensive. After that, there could be zero to several iterations between each patent office and the applicant usually depending on how close the applicant and the patent office are in agreement on the patentability of the subject matter. This component could be substantial especially with respect to patent applications in foreign countries because the costs include service charges of both the local attorney and the attorney of the foreign country. Once there is agreement on the scope of patentable subject matter, the procedure is well-defined, and predictable costs would be incurred.
17. What effect does a decision on patentability in one country have on a decision in another country?
In general, each patent office examines each patent applications according to its own procedures and practice. Often, the scope of protection varies for the same technology depending on the ‘prior art’ (generally referring to the knowledge base as of priority date, which is usually the filing date) that is uncovered and applied by the specific patent office. However, many patent offices give a favorable consideration if a patent has been granted by the more structured/advanced patent offices (such as European Patent Office or US Patent Office).
There are two aspects to it: (1) managing cash-flow; and (2) reducing the total amount spent. On (1), the patent should consider various procedures and devices such as provisional application process, patent cooperation treaty route, deferring request for examination. On (2), try to understand the application content requirements as interpreted by the patent practitioner, and provide as detailed a writeup as possible to the practitioner up-front.
A provisional application is contrasted from a non-provisional (also known as regular) application in that the provisional application need not contain ‘claims’ (which precisely sets forth the scope of the invention) and is not examined by the patent office. The non-provisional application contains claims which are examined by the patent office(s) for patentability.
The provisional application can serve to at least defer costs as explained now. A non-provisional can be filed within one year from the filing date of the provisional application claiming priority from the provisional, and each claim in the non-provisional is granted a priority date (effective filing date) of the provisional application filing date if the claim is adequately supported by the content of the provisional patent application. Thus, a claim can have one of two priority dates, either the filing date of the provisional application or the filing date of the regular application. The difference of the two dates would be important if there is an intervening prior art (e.g., publication) in between the two dates. Assuming the provisional application has sufficient content, an applicant may defer costs by minimizing professional help. This additional time can also help an applicant determine whether efforts for patenting are justified.
The most common way to draft competent applications is to first understand what is to be patented (claimed as new) and then include the supporting disclosure in the application. In a provisional application path, a practitioner may not put in sufficient mental effort to determine what precisely is to be patented (and thus not know clearly whether sufficient disclosure is present) because claims are not required in the provisional application. In addition, the grant of the patent is delayed by choosing the provisional route.
PCT offers an applicant the option of delaying the filing applications in other individual countries up to 30-31 months from the first filings. This serves to merely delay (not avoid) the costs (e.g., translation costs, patent office fees) associated with the procedures of the specific countries. The applicant would be required to file a PCT application and pay the appropriate (extra) fees in a timely manner to avail of this option.
Broadly, the opportunities can be segmented into three primary areas: (1) securing patents; (2) enforcement/licensing of patents; and (3) support activities. As to (1), enforcement/licencing activities will be limited by how strong the markets and patent system we will have within India. The demand for products will continue to accelerate with more globalization and compliance with WTO regulations. At this point, the patent system is not considered that strong from international standards viewpoints. There are going to be substantial opportunities in (1) and (3) for engineers.
24. What are the factors that will be driving the job opportunities related to securing patents in information technology field in India, even though the enforcement regime is considered weak within India?
The way the laws of various countries operate, it does not matter where a product/service is designed. The underlying invention can be patented in any country. Thus, it is common for businesses to design in countries like India, but patent the inventions in the industrialized countries (such as US, Japan, European countries). As the design activities continue to increase in India primarily due to cost/quality advantage, there is going to be increased demand for the corresponding inventions originating in India. In addition, it is generally considered difficult to draft competent patent applications without meeting the inventors face-to-face. Thus, there will be an increased demand for patent practitioners based in India, but the demand at the high end will be driven by need for patents in the more industrialized countries in the short term.
25. Which non-Indian countries are often of interest to secure patents in the information technology area?
US is often the country of primary interest because the initial markets are huge in that country and the enforcement regime is also fairly strong. Japan, China and European countries come next, also due to the huge markets, depending on the specific technology area. Countries such as Taiwan and Korea are also of interest given the presence of the manufacturing bases. However, one needs to carefully look at the requirements of specific business to determine the specific countries that would be of interest to secure patents.
In general, one looks at the commercial value of the idea (method/approach/circuit/architecture) in determining whether to apply for a patent. The value may be based on the feature/utility provided to the users, optimizations (e.g., faster, cheaper, smaller) or improvements. It is common to consider small pieces within a product/service for patenting (as opposed to entire product/service). At the high end, the value is in erecting barriers for potential competitors. While Indian law appears to be written not to allow patents for software based application software (but permitted for system software, which changes the inherent operation of the computer), most industrial countries are permitting patents for system software, application software, business methods, and the like, mostly limited by the nature of characterization. Utility patents for semi-conductor circuits, system architecture, manufacturing processes, and any aspect related to technology, is fairly common in the industrialized countries.
The ideal qualifications include strong technical and legal background, and excellent writing skills. These combination of skills are hard to find in the Indian market place primarily because of absence “infra-structure” (institutions which train and develop the relevant skills). Thus, it is believed that the market will need to work with people with strong technical background and excellent writing skills.
This is generally considered an extremely specialized field and the only way these skills can be acquired (at least to address the high end markets) is by working with and learning from competent practitioners for a fairly long time. Solid training cycles require at least 1-2 years of hard-work. Taking law related classes helps in the long run, but does not help much with the substantive drafting work that needs be performed on a day-to-day basis.
This is a field for people who can deal with a lot of detail in different technology areas only. It is an extremely challenging field even for the best technical people since patents relate to the cutting edge technologies in broad spectrum of technologies. The barrier for entry in this field is high, which means stability for the people who have learned the trade. So long as India attracts high-end design work, the demand will continue to be there. Other back office type models can evolve over time, just as in software development. In addition, the quality of life can be great since most of the work is performed at the desk (possibly at home, once the learning process is over) and only with the engineers locally (thus, no late-night calls!). The work hours can thus be flexible and there may be very little travel involved as well (if one does not want to travel).
30. If one is interested in securing patents, where can one look for a list of patent practitioners for securing patents?
The Indian patent office maintains a list of registered patent agents in India. The patent offices of other jurisdictions (e.g., US and Europe) make similar lists available on the world-wide-web, and can be accessed going through any search engine.
Any citizen of India (of at least 21 years age and being a degree holder) who is an advocate (within the meaning of the Advocates Act, 1961) can become a patent agent by payment of the appropriate fees (and other routine procedure). Non-advocates need to pass an examination conducted by the Indian Patent Office.