The date of publication of a patent application is of significance. The reason is one’s advantages, as well as rights, start from the date of publication. Although one can’t institute any infringement proceedings until the patent is granted.
Usually, a patent application is published in the Official Patent Office Journal after the lapse of 18 months from the date of filing of the application or the priority claimed date, whichever is earlier. This publication includes all pertinent details related to the application. It includes the title, abstract, application number and name, and address of the applicant. After this publication, a patent application becomes open for public scrutiny.
An exciting concept of a request for early patent publication is also available for the applicant. This can be done when the applicant wants his application to be published before the normal period of 18 months.
Early publication basically stands for making a patent public before the time of its normal publication. This could be of help when one is planning to sell or license the patent or seek investor and related advantages. An early publication of an application is allowed as per Section 11(A)(2) of the Indian Patents Act, on payment of the prescribed fee.
Section 11(A)(2) of the Indian Patents Act mentions:
The applicant may, in the prescribed manner, request the Controller to publish his application at any time before the expiry of the period prescribed under sub‑section (1) and subject to the provisions of sub‑section (3), the Controller shall publish such application as soon as possible.
Once such a request is made, the patent office has to publish the application ordinarily within one month from the date of the request for publication. The applicant may request the controller for the early publication of the patent application before the lapse of 18 months. Such a request has to be made on Form-9– request for early publication.
It is important to note here that a provisional application is never published and it is only the complete specification, which gets published. The pros and cons of early publication of the application are mentioned as follows:
Early Patent Publication – Pros:
1. By default, any publication gets published after 18 months of filing but if one requests for Early Publication, it gets published in 3-4 weeks
2. Patent rights start from the date of publication.
3. The applicants who opt for this request gain qualification and become aware, to use their rights a bit early in the patent grant process.
4. On and from the date of publication of the application for the patent and until the grant of the patent, the applicant has the rights and benefits of the patent holder as if the patent for the invention has been granted to him on the date of publication.
5. When an infringement happens, the applicant can claim damages from the date of publication. Therefore, it forms a major advantage of Early Publication.
6. Another valid reason to opt for early publication is that after the commencement of early publication the applicants have a whole application to show to the potential investors, instead of just an Application number for 18 months.
7. No suit or other proceedings shall be commenced in respect of an infringement committed prior to the date of publication of the application, meaning that publication of the application is critical to initiate any suit or any other proceeding.
8. The period within which the Controller shall refer the application and specification and other documents to the examiner in respect of the applications where the examination request has been received shall generally be one month from the date of its publication or one month from the date of the request for examination whichever is later.
Early Patent Publication – Cons:
1. On publication of the application, the invention becomes prior art. However, the Indian patent act gives a chance to the applicant to withdraw the application within 15 months from the date of filing and such withdrawal makes sure that the confidentiality of the invention is not lost. In such a case, the inventor can further work on the invention and file the patent application again. But if the applicant has opted for early publication, he loses the opportunity to withdraw the application.
2. The pre-grant opposition can be filed by any person upon publication of the application and anytime before granting of the patent if the prescribed examination fee has been paid. Thereby, the early publication certainly gives more time for the opponents for pre-grant opposition.
3. The applicant shall not be authorized to institute any proceedings for infringement until the patent is granted.
4. An Applicant can withdraw his application three months prior to the 18 months in order to avoid publication. But the withdrawal cannot happen in the case, where the applicant has opted for early publication.
Hence it can be concluded that early publication of the patent application, has certain benefits as well as some drawbacks. These points should be taken into account depending on the priorities and conditions of the applicant.