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DO’S & DON’TS BEFORE FILING A PATENT APPLICATION

December 2, 2021

By Renu Bala and Johny Soloman Raj

A patent, in essence is an exclusive right conferred by the Government to an applicant for an invention for a period of 20 years. When a product is patented, the patentee shall have the exclusive rights to prevent third parties from the act of making, using, offering for sale, selling or importing the patented invention. A patent not only provides a competitive advantage to the patent holder but also helps in monetization of the invention and also helps in claiming damages if a third party infringes a granted patent. Therefore, it is highly beneficial to get monopoly over an invention by filing a patent application.

It is important for an applicant/inventor to understand the patent process so that they can safeguard their invention. Therefore, let us understand the do’s and don’ts that an applicant/inventor should consider before filing a patent application.

DO NOT DISCLOSE ANY DETAILS OF THE INVENTION BEFORE FILING A PATENT APPLICATION FOR IT

For any invention to be patentable, novelty is one of the most, if not the most crucial feature. An invention is considered as novel or new if it has not been disclosed. The novelty of an invention is destroyed if it is anticipated by prior publication, prior use or prior public knowledge. Therefore, it is imperative to file application for patent with the Patent Office before launching/ selling/ disclosing the invention in any form (media, lectures by academia/staff/students, exhibition or technical fair, website publication). When novelty is destroyed the chances of getting a grant for your patent application is minimal!

GO FOR A PATENTABILITY SEARCH
Do conduct a patentability search to ascertain the patentability of the invention i.e. if the invention is new and is non-obvious before filing the patent application. A patentability search report provides you the insights related to the idea such as whether the idea is patentable or not. If there is something similar then you can make modification in your invention so it can be different and have novelty. Moreover, it is always better to know the patentability of the invention before investing time, money and other resources in the process of filing the patent application.
FILE PATENT APPLICATION AS EARLY AS POSSIBLE PREFERABLY PROVISIONAL APPLICATION
Most of the patent offices are working on “first to file” principal, including India. If two people are working on same idea then the one who files the application first will get the advantage of priority over the other one. Therefore, it is advisable to secure the priority date by an early filing.

Worry not, your invention need not be finalized or you need not have the final prototype prior to filing of the patent application. You can always file a “provisional application” if your invention is not fully developed so as to get an earliest filing date. This provisional application can be filed quickly and without any claims. Then you can utilize the time provided by the respective patent office, the time is 12 months in India to file the complete specification along with claims after filing the provisional specification with the complete details of the invention. Thus, there is no need to fret and avoid filing an application, if the invention is not yet been fully figured out!

 

HAVE PROPER NON-DISCLOSURE AGREEMENT/ EMPLOYMENT AGREEMENTS SIGNED

The rights associated with the patents plays a very important role when it comes to monetization of the invention. Improper assignment agreements or no agreements can lead to a plethora of issues, which can undermine a patent with good potential.

If you are an organization and your employees are working on an invention, make sure you have a proper written contract/agreement with them, enumerating the obligations related to the IP developed by them during the tenure of their employment in the organization, so that all rights of the patent/IP can be enjoyed by your organization and not be vested with the individual inventors.

If you are an individual and working with co-inventors, it is advisable to have a specific written contract about the rights of each person to avoid any clashes in future.

 

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