A patent is a form of Intellectual Property, which provide exclusive rights to the patent holder to protect scientific and technological inventions. Simply put, a patent is an exclusive right conferred by the Government on an inventor, to prevent others from exploiting the patent without his permission. Therefore, it is beneficial to file a patent application to get an exclusive of the invention. Let us go through the following do’s and don’ts for the consideration before and after filing for patent applications.
Do’s before filing a patent application
It is advisable to file a patent for a single invention or multiple inventions having ‘unity of invention‘. For an invention to be patentable, it needs to fulfill three essential criteria. First, the novelty of the invention that is the invention must be new. Second, it should involve an inventive step and be non-obvious wherein the technical value added to the product. Third, it should have a use or any application in the industry (Industrial Application). If the invention satisfies the above these three requirements, the inventor can apply for a grant of a patent. However, the invention should not fall under subjects that are non-patentable such as laws of nature, traditional knowledge, inventions related to atomic energy, etc.
Before filling the patent, the applicant may also conduct a patentability search to ensure that similar inventions do not exist that would hamper the application process. The true and first inventor, his assignee, or their legal representative can file a patent application for the invention. The inventor must also file for the right kind of patent and the right type of protection to fully utilize the protection offered.
Further, before filing a patent application, it is advisable to determine whether one wants to submit a provisional patent application or a non-provisional patent application [NPA] either online or manually. The inventor must also decide where he would want to file for the patent as patent laws may vary across various jurisdictions. The inventor can submit the patent application at the earliest possible date as India has a “first to file” system. Under this system, the first person who applies gets a grant of the patent.
Don’ts before filing a patent application
It is also imperative that the inventor neither publishes nor discloses his invention in newspapers or scientific journals before applying the patent application. The publication could constitute prior art, thereby acting as an obstacle for a patent even if the inventor did the publication. It is necessary that all the steps and examples of the invention are accurately recorded and mentioned in the patent specification to ensure that it enables the public to reproduce the invented product or process.
An inventor must also be careful not to use their inventions for fundraising as may be required by many startups. It is advisable to disclose only after applying for a patent as it can otherwise result in misuse. Further, even filing for a provisional application would ensure that there is no infringement from competitors, and if there were, the invention would not warrant protection.
It would be beneficial that the inventor does not wait for the invention to fully completed and then file an application. This provisional application is favorable for the invention that is not fully developed, and for providing a complete specification that is not practically possible. A provisional specification is required to give only the critical novelty and inventive aspect of the invention without claims. However, the inventor must also ensure that no infringement of a third party right. Further, the inventor must even not bank on copyright protection, as the copyright protection would not protect an invention.
Do’s after filing a patent application
Depending upon the type of application filed, the applicant needs to fulfill further process requirements that may vary. In case of a provisional application, ensure to submit a complete specification within 12 months from the date of provisional filing; otherwise, the patent application would lapse. After applying for the grant of a patent, the applicant can mention “patent-pending,” wherever using that invention. In case multiple provisional specifications were filed for associated inventions, the same can be combined to form a single complete specification.
Once submitting the patent application, in general, the publication of complete patent specification happens after 18 months. Otherwise, a request for early publication needs to send to the patent office to get before publication. The applicants should note that the examination of the application has to be requested and would not be undertaken automatically, like the publication. The applicant may even ask for a fast track examination along with the prescribed fee.
Don’ts after filing a patent application
Once the first examination report [FER] is sent to the patent applicant and also uploaded online for the general public, the applicant must acknowledge and respond to the FER, and any other examination reports post that. An applicant may also convert a complete specification into provisional specification within twelve months from the filing of the complete specification provided that it is not a convention application or a PCT national phase application.
When filing the complete specification, one should carefully ensure the scope of the patent claims fall within the specification drafted and to cover all the aspects of the protection sought, while simultaneously distinguishing the prior art from the claimed invention. The applicant must keep in mind that the claims are not too broad to embrace more than what the applicant has invented to ensure that the claims do not infringe upon information or matter that already exists in the public domain. However, it must also not be too narrow either, as it would reduce the scope of protection.
Conclusion
There are various requirements and technicalities, which the applicants ensure fulfill before obtaining the grant of a patent. To ensure that this procedure does not hamper the protection that an invention can get, applicants must take into consideration the various fundamental and salient aspects of patent process. The same can also achievable by looking into details from the Manual of Patent Office: Practice & Procedures, published by the Office of the Controller General of Patents, Designs & Trademarks.
