Rustling Section 3(d) in the Novartis (Glivec) case

A lot has been in the news about the Novartis case. This article briefly deals with the case in relation to Section 3(d), the contending section on which the case primarily pivots.

A Brief Background:

The Novartis patent application principally concentrates on formulating the beta-crystalline form of imatinib mesylate. It is to be noted that the renowned anti-cancer drug, Glivec /Gleevec was formulated from the beta-crystalline form of imatinib mesylate and the invention is already patented in nearly 40 countries.

So, why is Novartis facing difficulty in patenting the same invention in India? The short answer to that is Section 3(d) of the Indian Patent Act, 1970 which was inserted by way of an amendment in 2005 of the Act. The section reads-

“(d) the mere discovery of a new form of a known substance which does not result in the enhancement of the known efficacy of that substance or the mere discovery of any new property or new use for a known substance or of the mere use of a known process, machine or apparatus unless such known process results in a new product or employs at least one new reactant.

Explanation.-For the purposes of this clause, salts, esters, ethers, polymorphs, metabolites, pure form, particle size, isomers, mixtures of isomers, complexes, combinations and other derivatives of known substance shall be considered to be the same substance, unless they differ significantly in properties with regard to efficacy”

The object of inserting Section 3(d) was to prevent the “ever-greening” of patents since there were cases wherein applicants tried patenting trivial modifications to current patented inventions to extend its monopoly regime. This section sought to prevent ever-greening by disallowing the patenting of a known substance unless it results in an ‘enhancement of the known efficacy of that substance’.

The case has appeared before the Madras High Court, the IPAB and now, before the Supreme Court, wherein the main point of objection is that the invention is a “mere discovery of a new form of a known substance which does not result in the enhancement of the known efficacy of that substance”.

After being rejected by the Indian Patent Office (Chennai) under Section 3(d), Novartis moved the Madras High Court in 2006 challenging the decision. It challenged the grounds on which the IPO rejected the application as well as Section 3(d) arguing that the Section contravenes TRIPS as well as Article 14 of the Indian Constitution (equality before the law).

The High Court, in 2007, decided to split the two challenges, deciding to continue to deal with the validity of the Indian law but referred the appeal challenging the grounds on which the Indian Patent Office (IPO) rejected the patent application to the Intellectual Property Appellate Board (IPAB).

Before the High Court:

On the matter of constitutional validity, Novartis stated that Section 3(d) violates Article 14 of the Constitution as the terms such as “enhancement of known efficacy” and “differ significantly in properties with regard to efficacy” are not accompanied by guidelines to define its scope, hence rendering the section vague and arbitrary, and as a result, conferring unfettered power to IPAB which violates the concept of equality enshrined in Article 14 of the Constitution.

The High Court, deciding on the validity of Section 3(d) held that Section 3(d) is constitutionally valid. It correctly noted

“The argument that the amended section must be held to be bad in Law since for want of guidelines it gives scope to the Statutory Authority to exercise its power arbitrarily, has to be necessarily rejected since, we find that there are in-built materials in the amended section and the Explanation itself, which would control / guide the discretion to be exercised by the Statutory Authority. In other words, the Statutory Authority would be definitely guided by the materials to be placed before it for arriving at a decision.”
(Para 16)

However, the challenge of it being compliant with TRIPS was held not maintainable since the proper authority to settle this matter would be the WTO dispute settlement panel.

Additionally, as obiter dicta, the Court tried to define the scope of the term “efficacy” and took the aid of a medical dictionary to conclude that “efficacy” would mean “therapeutic efficacy”. This scope of “efficacy” was unclear as to whether bio-availabilty would count as therapeutic efficacy, since bio-availability might mean that a dosage of a certain medicine with side effects is reduced to a smaller dosage with no side-effects, thus making it therapeutically effective. The question was to whether bio-availabity would make the beta-crystalline form therapeutically efficacious was to be decided by the IPAB.

Before the IPAB:

In 2009, when the appeal challenging the grounds on which IPO rejected the application was heard before IPAB, IPAB held that though the claim covering the beta crystalline version of Imatinib Mesylate is both novel and inventive, it failed the test under section 3(d), which requires a demonstration of "significantly enhanced efficacy".

To this, Novartis showed that the beta-crystalline form of imatinib mesylate showed enhancement due to its 30% bio-availabity; however, this evidence was rejected by the IPAB which iterated that the evidence did not conclude the enhancement sought under Section 3(d). It stated that section 3(d) is a heightened inventive step standard and that the only kind of efficacy that would satisfy section 3(d) is therapeutic efficacy. It said that Novartis's beta-crystalline version may possess improved bioavailability, thermodynamic stability, improved flow properties and lower hygroscopicity, but this does not amount to an increase in "therapeutic efficacy". The IPAB did not provide detailed reasons as to why it thought the beta-crystalline form lacked efficacy.

Appeal to Supreme Court: Novartis, in 2009, appealed to the Supreme Court against this decision of IPAB. The case is still being heard before the Supreme Court, the next date of hearing being 28 February 2012.

The case is being closely watched as it is speculated that the Court would define the true scope of Section 3(d) amidst other matters.

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Design Patent in India

"Design" may be obtained to the features of shape, configuration, pattern, ornament, or composition of lines or colours applied to any article. It can be in two or three dimensional, or in both forms by any industrial means or process. It can be manual or mechanical or chemical; separate or combined; but the finished article appeal must be judged solely by the eye, for example- Jewellery, Computer icon, etc. Design does not include any mode or principle of construction. To qualify for a design patent, the subject must be new in the sense that no single, identical design exists in the prior art. It must satisfy the ornamental standards, and it must be original to the inventor/inventors seeking protection. It must not be on the basis of any previously existing design or combination of designs when viewed through the eyes of a designer skilled in the art. It must be issued for an article comprised in the prescribed classes of articles under design law. When your product design gives you a commercial advantage, you should protect your design by filing of design patent.

Salient features of design patent in India are as follows:

1. When a design is registered, the registered proprietor of the registered design has copyright in the design for duration of ten years from the date of registration. It can be extended for another five years from the expiration of the original period of ten years in a prescribed manner
2. Piracy of registered design is illegal by any person during the existence of copyright, only license or written consent of the registered proprietor allows doing anything with the registered design.
3. A registered proprietor can sue to bring a suit for the recovery of damages for any contravention of imitation of a registered design.
4. A registered proprietor can do assignments and transmissions of a registered design and the details of the same is entered in the book of register of design for record.
5. Where a person becomes entitled by assignments, transmission or other operation of law to the copyright in a registered design, he may make application in the prescribed form to the Controller of Design to register his title,
6. The exhibition of a design, or of any article to which a design is applied, does not prevent the design from being registered or invalidate the registration, provided, the exhibitor give previous notice to the controller of design in a prescribed manner. Such application for registration is made within six months from the date of first exhibiting the design or article or publishing a description of the design.
7. The provisions of the Patents Act, 1970 with regard to certificates of the validity of a patent, and to the remedy applies in the same manner in case of a registered design as in the case of patents.

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How to file a patent in Indian Patent Office

(In this article, we discuss the steps of filing a patent in the Indian Patent Office. The entire patent procedure is not covered in this article and only the steps necessary for filing a patent is covered.)

The decision to grant patent protection in a particular country ultimately rests on the Patent Office of that country. Patentee’s rights include the exclusive rights to prevent others from using his patented invention.

Who can file: Patent Application can be filed by an inventor, alone or jointly with others, or his/their assignee or legal representative of any deceased inventor or his assignee.

Where to file: Application is required to be filed according to the territorial limits where the applicant or the first mentioned applicant in case of joint applicants, for a patent normally resides or has domicile or has a place of business or the place from where the invention actually originated.

If the applicant for the patent or party in a proceeding having no business place or domicile in India, the appropriate office will be according to the address for service in India given by the applicant or party in a proceeding. For example, patents can be filed at the Chennai Patent Office where the address for service would be Intepat IP, Bangalore.

The appropriate office once decided in respect of any proceedings under the Act shall not ordinarily be changed.

Types of Patent Application: Different types of Patent Application can be filed. These are-

a) Ordinary Application

b) Application for Patent of Addition (granted for Improvement or Modification of the already patented invention, for an unexpired term of the main patent).

c) Divisional Application (in case of plurality of inventions disclosed in the main application).

d) Convention application , claiming priority date on the basis of filing in Convention Countries.

e) National Phase Application under PCT.

Documents required while filing:

1) Application form in duplicate (Form 1).

2) Provisional or complete specification in duplicate. If the provisional specification is filed, it must be followed by the complete specification within 12 months.(Form 2).

3) Drawing in duplicate (if necessary).

4) Abstract of the invention in duplicate.

5) Information & undertaking listing the number, filing date & current status of each foreign patent application in duplicate (Form 3).

6) Priority document (if priority date is claimed) in convention application,when directed by the Controller.

7) Declaration of inventor-ship where provisional specification is followed by complete specification or in case of convention/PCT national phase application (Form 5).

8) Power of attorney (if filed through Patent Agent).

9) Fees (to be paid in cash/by cheque/by demand draft)

These are the important points to be noted while filing an application at the IPO.

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Cost of Obtaining a Patent in India

It is understood that patenting is an expensive and extensive process. Usually while filing a patent, only the statutory filing fees and the professional fees are disclosed. However, after the filing, there are certain other fees that are to be paid to the Indian Patent Office (IPO). Therefore, it is imperative that one should understand the patent procedure and realize the fee break-up while applying for a patent.

While approaching a patent attorney, a bundled fee consisting of the statutory fees and the professional fees would be disclosed. The professional fees vary from attorney to attorney. Herein, only the statutory fee is disclosed.

Filing- Firstly, while filing a patent application, the status of the applicant- whether a natural person or other than natural person - is considered. ‘Other than natural person’ may include a legal entity; it may also include a legal entity and a natural person jointly. Whereas a natural person’s fee for filing an application is marked at Rs. 1000/-, fees for others is marked at Rs.4000/-.

Specification and Claims- The IPO levies no fees for a specification up to 30 pages and up to 10 claims. However, if the specification exceeds 30 pages, then a fee of Rs. 100/- per page for natural person (Rs.400/- per page in case of ‘other than natural person’) is levied. Similarly, no fee is charged for a maximum of 10 claims. However, if there are more than 10 claims, then a fee of Rs 200/- for natural person (Rs. 800/- in case of ‘other than natural person’) is charged per extra claim.

Early Publication- All patent applications filed are published in the Patent Office Journal after 18 months from date of filing of the application. However, if the publication needs to be hastened, then there is an option of early publication by filing Form-9 and making appropriate payments. The fee for early publication is Rs.2500/- for natural person and Rs. 10,000/- for others. If early publication is opted, the application will be published within one month from the date of request.

Request for Examination- Applications are examined only when the examination fees are paid by the Application; otherwise, the applications are deemed to be abandoned. Fee for examination needs to be paid within a period of 48 months from the date of priority or date of filing of the application. It is to be kept in mind that earlier payment of fees entitles earlier examination, thus hastening the patent procedure. The prescribed fees for examination are Rs. 2,500/- for natural person and Rs. 10,000/- for others.

These are the statutory fees that are most important to keep in mind while filing a patent application. Besides these, there are opposition fees, fees for requesting an extension of time as well as renewal fees.

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Online Certificate Course On Intellectual Property Rights (IPRs)

Federation of Indian Chambers of Commerce and Industry (FICCI) has started an Online Certificate Course on Intellectual Property Rights (IPR). The objective of the Course is to increase awareness about IPR in the Society for the benefit of the Nation at large.

Online Course coverage

Patents and International Filing System, Trademark, Copyright, Design, Geographical Indication, Biodiversity, International Arrangements and IPR Enforcement: Infringement and Remedies.

The study material is all inclusive covering the aspects like overview, prosecution, enforcement, appeals, remedies, best strategies and practices, case studies, Intellectual Property as a collateral, International conventions/treaties/agreements on concerned Intellectual Property etc.

Key Differentiators / Key Features of the Course

• The Study Material has been prepared by well known experts in the area, who are from esteemed organizations/Educational Institutes like Amarchand and Mangaldas, Anand and Anand, Entete Legale, Inttl Advocare and University of Delhi.
• Industry oriented module.
• FORUM to enable participants to raise queries to IP Expert and also to interact with other participants.
• Weekly updates on IPR to registrants.
• One day of Interactive Session for participants with IP Experts for addressing their specific doubts/issues (Not mandatory to attend) at FICCI, New Delhi. Recording of the Interactive Session to be made available online, to all participants.
• Best performers, amongst the Students, in Online Examination will be provided with an opportunity to do internship with FICCI IPR Division.
• Participants from Industry will be provided an opportunity to participate in FICCI-IPR division events.

Who Can Pursue

Students from Law, science and other disciplines, Lawyers, Patent Agents, Professionals from Industry fields like Electrical / Computer / Chemical / Mechanical / Research and Development and other scientific domains, enforcement personnel, etc.

Schedule of conduct of Online Course on IPR

Online Certificate Course on IPR would be conducted twice a year in the months of January – March and July – September.

The registration for the January- March course in 2012 would start in November 2011. The interested applicants may get their seats confirmed by submitting the details.

To know more about the course, please visit at

http://www.ficciipcourse.in/

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Patent searches and their importance

In the grant of a patent, a lot of time, sweat and money are involved. The arena of patents is developing at a fast pace. In 2009-2010, around 40,000 patent applications were filed in India against the 17,500 applications filed in 2004-2005, a leap of 250% in the past five years. However, one should understand that not all patent applications filed are prosecuted successfully. The primary reasons for rejection of an application are either (a) the invention is not novel (b) or it is obvious such that a similar patent already exists.

The Government fees for a patent filing can be anywhere from Rs.14,000 - Rs.20,000. Besides the Government fees, fees to the attorney or agent needs to be considered. On the whole, it is without doubt that patenting is an expensive process and therefore, requires an inventor/assignee to tread carefully in order to successfully prosecute patent applications.

A patent search or a patentability search is a search conducted in patent databases as well as in the literature available to check whether any invention similar to your invention already exists. In other words, it evaluates your chances of getting a patent grant. Therefore, instead of going forth with the filing, if one conducts the patentability search, one can get a clear idea about the patentability of the invention; whether the application should be filed and the strengths and weakness of his invention.

Since patenting is an expensive procedure, it is prudent to conduct a patentability search before filing an application. Besides financial reasons, there are several other compelling reasons for conducting a search before filing an application.

• A patent search would make one realize the patentability or the extent of patentability of an invention. Many a times, inventors are not well-versed with the scope of patentability that law covers. For example, computer programmes, per se, is non-patentable but computer programmes that are manifested in a useful way can be patented. A patentability assessment can help you understand whether your invention is patentable and if so, how far can it be protected.
  
  
• It is important that your patent agent/attorney knows the prior art available in order to draft the patent claims. A patentability search gives an idea of what can be sought patent protection and what falls in the prior art domain. Thus, one can understand from the search report the area of strength of the invention and accordingly draft claims that do not infringe other patents or fall in the prior art.
  
  
• Sometimes, the invention might not be novel and the patentability search might reveal patents/ inventions similar to the invention. In such cases, from reading the prior art literature, one can come up with newer ideas and refine the invention such as to make it patentable.

• By knowing the literature present in the field of one’s invention, one can understand the strength or weakness of the present invention. This, in turn, helps in drafting a stronger patent application and making it less vulnerable to rejections by the Patent Office. On the other hand, it would also help to decide whether one should proceed with the filing of the application or forsake it.

• The patent search can also reveal certain companies who are keen on obtaining patents in the field of technology relating to your invention. In such cases, it gives you the lead on which companies to contact for licensing of your invention.

• Many-a-times, we see existing patents already available in the database, yet they have not been commercialized. Analyzing the patent search may reveal why commercialization was not viable, thereby, helping you decide whether you should proceed with filing the patent application if commercialization is on your mind.

• One should note that while applying for a patent, the applicant needs to describe his entire invention. Even if his patent gets rejected, his application would be considered prior art, open for all to see. This can very often lead to a scenario where his competitors get access to his hard work. To avoid such a situation, a patent assessment would prove helpful. Even if in the eyes of the patent law, your invention is not patentable, yet you can use it as a trade secret and license it to others and gain revenue. A patentability assessment would help the investors realize whether applying for patent would justify the expenses borne.

It is a well-known fact that free patent databases are available over the Internet and anyone can access these databases. However, it is pertinent that a person skilled in conducting searches be given the task. The reason being, patent searches involves tedious, repeated searching through various patent and non-patent literature. An unskilled person would not be able to do justice to the vast amount of literature to be searched. Furthermore, a skilled person understands the importance of the claims of a patent. The claims of a patent are of utmost importance when a similar patent to your invention exists; in such a case, one needs to analyze the patent claims to determine the degree of similarity between the two. Furthermore, a skilled person would be able to counsel on the strength of your patent or on refining your patent so that it does not infringe other existing art. A non-skilled person may not understand these concepts.

Professionals at Intepat understand the realms of patent searches and conduct comprehensive searches in patent and non-patent literature and also provide counseling on management of patents.

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Take part in the Lafarge Invention Awards 2011!

Are you an Indian entrepreneur or new company, engineering consultant, architect, researcher or academic? Do you have an innovative project related to Lafarge building materials (aggregates, cement, concrete and gypsum) and that contributes to sustainable construction? If so, Lafarge can help you make it a reality!

Submit your project

The Lafarge Invention Awards aim to encourage and reward innovative projects related to building materials and contributing to sustainable construction, this year in India. The fast pace of Indian economic and demographic growth is indeed generating immense needs for new infrastructure and housing, which must be met through new, innovative approaches to construction that take into account social, economic and environmental imperatives.

Projects submitted should be based on an invention less than 5 years old. They should involve a new product, industrial process, construction method or service and should have reached at least the prototype phase, ideally demonstrated in a real construction project.

The Awards

• 1^st prize: 1,000,000 INR
• 2^nd prize: 500,000 INR
• 3^rd prize: 250,000 INR

Winners will also be invited on an all-expenses paid visit to the Lafarge Research Center, the world’s leading research facility in building materials.

Key dates

• September 1^st – November 30^th 2011: Submission of projects via the on-line entry form below
• January 2012: Pre-selection of 10 finalists by a panel of Lafarge experts
• March 2012: Presentation by finalists to a Jury of Lafarge executives and renowned experts and selection of the three winning projects

Projects will be judged on:

• their innovative nature,
• their viability and economic impact,
• their technical feasibility (with an existing prototype),
• and their contribution to sustainable construction.

To submit your project, please visit the website http://www.lafarge-inventionawards.com/index_en.html

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Patent For Success

Synopsis- Patenting involves competitive strategies in today’s business world. To build a successful company through protecting its patents, one needs to develop a patent-filing strategy as well as manage their IP assets in a way that would bring revenue to the company. But above all, one should be aware of the pitfalls of the patenting system and learn to combat them efficiently by devising a wholesome, customized patent strategy.

Abraham Lincoln’s words ring true when he said that the patent system is “the fuel of interest to the fire of genius.”

The concept of patenting inventions can be traced back to the 14^th century. The system was introduced to encourage the inventors by awarding them exclusive rights to their inventions for a specific period of time in exchange of public disclosure of the invention once the period of protection was over. During this specific period, the inventor could reap the benefits of his hard-work by exploiting his patent in any number of ways. After such period was over, the knowledge of the invention is dissipated to the public, so that the public can utilize this knowledge.

Patenting, in today’s world, is of a different ball game altogether. Though the basics of patenting remain the same, i.e. exclusive protection for a specific period; today, patents are used to give companies’ leverage against its competitors. Patents can be used to enhance the competitiveness of a business. Patents are used as weapons of defense: to be ahead of others as well as to stop others from overtaking one’s progress. Companies stringently protect their IPs and have IP management portfolio because they realize that a single, novel patent can be the only difference between one’s company leap over others. A single example to exemplify this can be the technology of xerography developed by the Xerox Corporation that created a new industry in itself.

When such a product is invented which is a leap over the existing technologies available, then it is prudent on part of the company to protect such invention. Protection is sought to keep the company ahead of others- so that none can use the patented product/ process. Usually, in a company, the employee(s) who invents the product is the Inventor(s) and the Inventor(s) assign the rights to the company. Patent rules and rights are different in different countries, but in most countries, it includes a right of exclusive use of the patents for a limited period of 20 years.

Rights of the Patentee/ Company:

During this 20 years period, the patentee gets the exclusive rights to

• Enjoy monopoly rights over his invention
• Cease others from making, using, selling, importing, offering for sale or distributing the patented invention without his permission
• Monetize his patent by selling or licensing

From the standpoint of business enterprises, these rights mean that its competitors cannot create similar products that infringe the patent; and if it does so, the patentee company can sue them. Incase the competitors want to use the patented product/ process; it would need to get a license from the patentee company. During this period of 20 years, the R&D team can further improvise on the patent.

Points to be taken care of while patenting:

Though there are definite gains in patenting, yet a company should have a patent strategy in place. One should not patent every invention available. This is because patenting is an expensive procedure and some patents are not worth patenting. Also, as against general notion, patent protection is not international; it is a national process and one should understand the risks involved while choosing jurisdictions. One should also be aware of other’s IP and respect the same to safeguard oneself from unnecessary litigation or royalty payment.

Expensive Procedure and How to combat it:

Although patenting is necessary to create a unique position in the market, often the costs of patenting deter companies from patenting their inventions. In US, as well as in most other countries, attorney fees are charged by the hour and it can be anywhere between $250- $500 per hour. To combat the cost, most foreign companies employ Indian IP firms such as Intepat IP Services to cut costs of patenting while maintaining the quality of their patent applications. Another strategy is to evaluate the inventions and separate the important inventions from the non-important ones and patent the former category only. Also, one should evaluate in which countries the future of the product lies and then file patents accordingly. Filing patents on a whole-wide basis is simply a waste of money.

When should a product/ process be patented:

Though there is fierce competition to patent inventions and gain exclusive rights, one should not patent each and every invention. Sometimes, the product is not worth the money to be invested in order to protect it. To estimate whether your product is worth patenting, the question to be asked is- whether the product would be successful enough that competitors would want to obtain the product. If the product would generate a meager amount of profits, it is not worth patenting. If it would be successful enough to justify legal expenses in defending the product, then you can consider patenting it. You can also consider patenting it if the product is successful enough to create revenues for your company by licensing it to others.

Once you have decided to patent it, there are very many ways of gaining revenue from it. You can license it, mortgage it or market the patent yourself.

Patent Procedure and in which countries should a patent be obtained:

Patents are territorial. As against general notion, a patent is protected nationally and not internationally. There is nothing called International Patent Protection. The only way of protection patents on a global basis is to file patent in each country separately. Many have heard about the PCT (Patent Co-operation Treaty) and have a wrong notion that PCT applications are protected internationally. PCT Applications are preferred only because it gives extra time to the Applicant in deciding in which countries he wants to file national patent application. Deciding the jurisdictions in which to file patent is an important decision. The procedure for obtaining patent is expensive and jurisdictions must be chosen with utmost care. Mostly, in such decisions, countries where the product will not be launched should not be chosen. Countries where the company will be doing business should be chosen. One should realize where the future of the patented invention lies.

Be aware of other’s IP rights:

If your product becomes successful, there might be companies holding patents that can drag you into unnecessary litigation or ask you to pay royalties to the tune of lakhs of rupees. There are companies who patent inventions but do not utilize them. They wait for other companies to develop similar products, and once these products become successful, the patentee companies start suing them or asking for royalties. These companies are Patent Trolls.

The Blackberry case made everyone aware of the perils of patent troll actions. NTP never made or sold anything but strived on licensing its patents to other companies. In early 1990s, it purchased patents relating to wireless e-mails. When Blackberry maker, RIM, started providing wireless e-mail services, NTP sued RIM for infringing its patents. What ensued was a legal battle that resulted in RIM paying NTP a one-time payment of $612.5 million.

To avoid messy situations like the one illustrated above, one should be sure that the product of a company does not infringe any patent. To this end, patent search for freedom to operate can be conducted to confirm that no similar product using the same technology exists. “It is actually better to do a preliminary patent search before delving into the R&D or product developments to avoid investing money in unnecessary avenues”, says Senthil Kumar, Patent Consultant/CEO of Intepat IP Services Pvt Ltd, Bangalore.

Patenting and Success:

Notwithstanding the risks involved, there is a definite correlation between patenting and business success. Companies with patents are four times likely to be successful. The reasons for success, besides the exclusive rights are as follows-

IP Valuation- How it can be helpful in making your business a success

Knowledge is now considered to be an asset and protected vigorously by companies in the form of IP protection. Corporate strategy includes the management and protection of IP assets. The first and foremost step in the strategy is the correct valuation of your company’s IP.

Valuation is important for both licensing and investment options. Moreover, valuation is important for mergers and acquisitions (M&A). For obvious reasons, companies with technological overlap in their patents are more likely to form mergers than ones where there is no overlapping.

Companies perform IP valuation of their assets and usually, segregate the IP assets into three categories:

1. Very valuable patents that are worth defending
2. Moderately valuable patents or patents that are not used or planned to be used, yet are valuable to others, and
3. Patents unlikely to be used and not of value

Dow Chemicals, which had 29,000 patents, classified its patents in the above three classes and the first class was segregated for business growth purposes, the second offered for licensing and the third class was donated or abandoned.

Patents and Investment- How to rope in investors:

Patents can bring in investment to the company. When investing in a company, an investor would want to be assured that his investment would be protected and that he would gain some returns for his investment. When patents are a part of the IP assets of a company, they form an assurance to the investors that the company would gain a unique position in the market due to its protected inventions and there is a possibility of financial gains from the same. Analysts have also found that companies with great patents, i.e., those cited by others in their patent applications, are likely to be a better investment than those holding patents that are never cited ["Follow the Patents," BusinessWeek, 8 January 2007]

While investing, several questions may arise in the mind of the investors- some being- When will the validity for the patent expire? Can the patent be reverse engineered or worked around to make similar inventions? Can it be proved invalid?

These uncertainties in the minds of the investor can be removed by making a patent portfolio wherein a patent search of similar products is done to evaluate your leverage against the current available/ patented products. The patent search report would consist of inventions consisting of similar products and would also cite how your product is different and advantageous from the ones available in prior art.

Patents and Licenses- How it brings revenues

After a patent is granted, the same can be licensed to others in order to create revenue for the company. Some businesses exist solely to collect revenues from the patents they license to others. Licenses can be exclusive- where there is a sole licensee who can use the patent- or non-exclusive- where there are several licensees who can exploit the patent.

The power of licensing to others may be used as a weapon to obtain royalties in cases where there is infringement of your patent. In such infringement scenarios, the patentee company usually sends cease and desist letters and obtains injunctions against the competitor who infringes their patented product. However, if a company is not willing to defend its patents through the expensive and time-consuming process of litigation, specially when they are of the opinion that the patent is not that successful/ worth as to invest money in litigation, it can bargain with the competitor and obtain royalties for the infringing operations of the competitor. More often than not, the infringing party is willing to pay royalties than get tangled in litigation procedures.

Conclusion

Patent strategy when applied in the right way can make your business leap light years ahead of others. For this, a patent-filing strategy and an IP management strategy should be customized according to the needs of the company. If properly executed, these strategies could lead your company to unprecedented success.

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National Phase PCT Patent in India

Patent Cooperation Treaty (PCT)

The PCT is an international agreement that helps to simplify the process of filing patent applications in several countries. PCT has been administered by WIPO (World Intellectual Property Organization). As on 1 May 2011, the WIPO recorded a total of 143 contracting states to the Patent Cooperation Treaty (PCT).

The PCT application has two phases: International and National. The National Phase follows the International Phase and consists of processing the application in the Patent Office of specific countries following the same procedure as processing a national application entry in India .

National Phase PCT Application in India:

Within 31 months from the priority date, the application enters the National Phase.

The National Phase of a PCT Application resembles a national filing in a respective country. The decision to grant patent protection in a particular country ultimately rests on the Patent Office of that country. However, filing of PCT application is much simpler than filing of normal national application since most of the formal requirements are resolved in the international phase itself. Also, the national examiners most often follow the Search Report conducted in the International Phase.

Before entering the National phase, the applicant must furnish the following documents:

• Furnishing of a translation (in English). Required contents of Translation are: Description, claims (if amended, both as originally filed and as amended, together with any statement under PCT Article 19), any text matter of drawings, abstract

• A copy of the international application is required only if the applicant has not received Form PCT/IB/308 and the Patent Office have not received a copy of the international application from the International Bureau under PCT Article 20.

Other Documents required by the Office:

• Name, address and nationality of the inventor if they have not been furnished in the “Request” part of the international application
• Instrument of assignment or transfer where the applicant is not the inventor
• Document evidencing a change of name of the applicant if the change occurred after the international filing date and has not been reflected in a notification from the International Bureau (Form PCT/IB/306)
• Declaration of inventorship by the applicant
• Address for service in India (but no representation by an agent is required)
• Power of attorney if an agent is appointed
• Verification of translation. Verification consists of a simple statement by the Applicant or his agent that the translation is correct and complete.
• International application or translation to be furnished in two copies
• Furnishing, where applicable, of a nucleotide and/or amino acid sequence listing in electronic form
• In case there are corresponding applications in other countries, the applicant must file within six months from the date of entry into the national phase, a statement concerning any corresponding applications filed in other countries. The statement must be made on Form 3.

Where to file a National Phase PCT Application in India:

The application can be filed at any of the four Patent Offices located at Delhi, Kolkata, Chennai or Mumbai, depending on the domicile, business or place of the Applicant. If the applicant for the patent has no business, place or domicile in India, the appropriate Patent office will be the address of service in India. For example, patents can be filed at the Chennai Patent Office where the address for service would be Intepat IP, Bangalore.

Patent Procedure in National Phase India:

Publication: Every patent application is published after 18 months from the date of filing. A request for earlier publication can be made in Form 9 along with a fee of Rs. 10,000. Once published, the application is deemed to have entered the public domain.

Request for Examination: An Applicant should file Request For Examination (RFE) within 48 months from filing. The Controller forwards the documents to the Examiner within a month from the date of publication or one month from RFE, whichever is later. Within a period of 3 months from the time of receiving the documents from the Controller, the Examiner establishes the patentability report. The Controller forwards the Report (also known as First Examination Report, FER) to the applicant or his agent within 6months from the date of publication or from the date of RFE, whichever is later. An applicant has to comply with the requirements imposed on him within a period of 12months from the date on which the FER is forwarded to him, else the application is deemed to have been abandoned.

Grant of Patent: After the instructions/ objections of the Controller are complied with, the application along with the complete specification will be published in the Patent Journal. The application is open to opposition for a period of 4 months or for such further period as prescribed. If no oppositions are filed or if the opposition is successfully overcome, the application will proceed for grant of patent.

Fees:

The official fee for filing a PCT Application is US$350 – 500 approximately. Intepat IP Services provides a host of IP related services, including the filing of PCT Application.

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