Utility Patent

Utility Patent

© Rahul Dutta | August 6th, 2022

F & Q

What is a Patent?

A patent is a monopoly right. It provides the Patent owner (patentee) a bundle of exclusive rights. The bundle includes the right to make, use, offer for sale, sell or import for the purpose of sale. The patent can be exploited in the jurisdiction of the patent granting country. The patent rights are granted for the patentable inventions. 

In the US a ‘Utility Patent’ taxonomy is used for both a product and a process patent. The term patent is sued for utility, design, and plant patents in the USA.

In India, the patent term is used for either a product or a process patent. A Patent grants five exclusive rights to make, use, offer for sale, sale, or import for the purpose of sale in India.

What are the patent rights?

The Patent, known as Utility Patent in the US, is a monopoly. The patent monopoly is a bundle of five rights, namely the right to make, use, offer to sell, sell or import. An invention that passes the tests of Novelty, non-Obviousness, and Utility is known as a patentable invention. The right of filing a patentable invention can be secured on the basis of ‘first to file’ over ‘first to invent’. India follows the ‘first to file’ rule.

Who can file a patent application?

Both an individual and a legal entity can be a patent applicants. More than an individual can be the joint applicants. In the USA only an individual(s) may be a patent applicant(s). 

Entities sustaining on artificial intelligence (IA) or robots cannot be patent applicants. By an individual, the law means a natural person.

The Patent Applicants’ types and Benefits

The Indian patent law divides legal entities into two categories, i.e. small, and medium size enterprises (SMEs) and Start-up, and other legal entities. The SME and Start-up qualify for the subsidized patent application fee that applies to an individual applicant. The SME and Start-up qualify for opting expedited patent application examination request.

How to File a Patent Application?

A patentable invention is an asset with unlimited prosperity potential. As a valuable asset, an inventor should take due care of it. A patentable invention needs professional care. 

The sharing of invention information between an inventor and a patent attorney/agent should ideally take place electronically. The invention pass through the process of consultation, understanding the applicant’s economic expectations from the investment in patenting.  The patent prior art search is the first step both for accepting the invention for patenting and specification drafting.

How a Patent Application is Prosecuted?

The patentability test pass inventions go through a few rounds of patent specification drafting followed by the patent application filing. This process primarily applies to the basic patent application.

It is followed by a few patent forms filed within a fixed timeline, and mandatory examination request filing within 48 months from the basic/priority application date. 

The patent application gets published after 18 months from the basic application filing/ priority date. The patent application publication opens the pre-grant opposition to all interested persons. The pre-grant opposition can be filed will the patent is granted.

Parallelly, an Examination Report (ER) is issued by the Patent Office. From the ER receipt date, the ER is to be replied to and complied with within 2 months’ time. If the Examiner get satisfied with the reply, the patent application is accepted and granted. Otherwise, the applicant is called for a hearing. On the satisfaction of the replies to the queries in the hearing, the examiner may accept an application. Else the patent application is rejected. The Applicant holds the right to challenge the Patent Controller’s rejection order.

After the grant of the patent, the patent remains open for post-grant opposition.

How much time does it take to get a patent?

In case no pre or post-grant opposition is faced, at the earliest a patent application may be granted in two and a half years’ time. This duration cannot be calculated from the Express Exam Request of SME/Start-up and female individual applicants.

Should I bring my product to the market only after securing a patent?

Soon after filing the basic patent application, the patent applicant should bring the invention to the market. 

How a PCT patent application is filed?

In India, the law says that all applications originating from Indian territory should be first filed in India. An exception to it applies when the applicant does not want to file a patent application in India; in that case, the applicant must seek formal permission to file a patent application outside India. 

If the applicant does not receive any restrictions for filing abroad for six weeks since the filing date, the applicant is free to file either a PCT or a national phase application(s).

Either the PCT or a Paris Convention route can be followed for filing patent applications in foreign countries.

Can a PCT Application be filed as a Basic Application?

Yes, after taking permission from the Indian Patent Office directly a PCT application can be filed. It applies to both the citizen and the foreign inventors who invented that invention in India.

How long can a patent be exploited?

A patent can be exploited for twenty years. In the basic application country, the twenty years are counted from the priority date. For the national phase applications filed through a PCT application, the patent term is counted from the PCT application date.

What is a Global or International Patent?

There is no Global or International Patent. The patents are granted only by the Sovereign States. A PCT application is called an international application. However, it provides only a window for filing the national phase patent applications before the patent offices of WTO Member States.

Does a patent applicant need a prototype to file a patent application?

No prototype is required to file a patent application. However, the invention should be described in the specification such that a third party pertinent to the same art can execute the instructions based on the specification.

What is a Global Patent?

There is nothing like a Global Patent. However, patent rights secured over many countries for an invention by the same applicant may be called a globally exploitable patent.

Can a patent be granted on a Provisional Application?

No. A Provisional Patent application is filed only for seeking priority over others. It is to be followed by a Complete Patent Application within 12 months from the Provisional Application date. Otherwise, a Provisional Application expires yielding no results.

How long a Patent remains Valid?

A patent can be exploited for twenty years. These twenty years are counted since the priority date in the basic application country. In case the national phase applications were filed routed through a PCT application, the term is counted from the PCT application date.

What is a Global or an International Patent?

There is nothing like a Global or an International Patent. The patents are granted only by the Sovereign States. Though a PCT application is called an international application, it provides only a window for filing the national phase patent applications before the patent offices of different WTO member States.

The Patentable Subject Matter

All inventions are not patentable. The inventions that have passed the three patentability tests, i.e. Novelty, Non-obviousness, and Utility are known as patentable inventions. The patents are not granted for the inventions excluded in Section 3. 

It is a mandatory condition to make a complete disclosure of the invention in the complete specification for seeking a patent. The applies to upholding a patent if challenged on the ground before a competent court of law. 

The Priority Date

The first patent application, generally filed before the country of residence patent office, is called as the basic or priority patent application. The filing date of the basic application is known as the priority date. The Patent life in the basic application country is counted from its priority date. As per Indian Patent law, the basic patent application by the Indian residents is to be filed before Indian Patent Office.

The Provisional Patent Application

The race to ‘first to file’ has created two parts of an invention disclosure. The first disclosure is made in a Provisional Patent Application. The Provisional Patent Application secures the ‘first to file’ right is secured. When the invention becomes achievable within the next twelve months, a provisional application is filed to protect its priority. 

The Complete Patent Application

Within 12 months of filing the provisional application, the complete application must be filed. Otherwise, the provisional application becomes abandoned. A complete application can be filed even without filing the provisional application.

The Product and The Process Patent

The International Patent Applications

The Patent Family

A patent family is made by patent applications or secured patents in different jurisdictions for the same invention by the same inventor. It means, that one patent family forms a set of patent rights for the same invention in different countries. Each patent provides rights in the territory of the granting country.

Paris Convention Timeline for entering into the National Phase

Technically for an invention, it is not feasible to file patent applications at the same point of time in different jurisdictions. The Paris Convention provides its signatory Member States twelve months’ time for filing the applications in different jurisdictions from the basic application filing date. A national phase application filed under the provisions of the Paris Convention retains the priority of the basic application for 12 months.

One Invention, many Patents

Based on the basic patent application, the patent applications in different foreign countries within the prescribed time depend on the route taken by the applicant. There are two routes, Paris Convention and Patent Cooperation Treaty (PCT). It is obvious that both the Paris Convention and the PCT are applicable to the signatory countries signatory to these conventions.

The Paris Convention sorted out the technical glitch of filing a patent application in different jurisdictions at the same point in time by providing twelve months for filing the patent applications in the other jurisdictions based on the priority of the basic application.

The patents in Foreign Countries: The Strategic Business Decision

A patent application ultimately results in a product or a process monopoly. The monopoly is going to win business advantage in the market where the patent was granted. Therefore, it is a business decision to file patent applications in foreign jurisdictions. 

The decision to file patent applications in more than one jurisdiction is a strategic business decision that may take time. The time may be more than twelve months provided in the Paris Convention. To enter into the National Phase, the PCT application provides an extended timeline of up to thirty-one months from the priority date. A PCT application is to be filed within twelve months from the first priority date. The PCT Application provides a single window for filing among the member countries within the prescribed time calculated from the basic application filing date. 

The National Phase Applications

The patent applications in the different jurisdictions based on the basic priority date are known as National Phase Patent Applications. Indian Patent law permits the National Phase PCT applications within thirty-one months from the priority date.

The National Phase Patent TimeLine

The timeline of the national phase patent is counted from the PCT application filing date. The international patent law known as the Trade-Related Aspects of the Intellectual Property Rights (TRIPS) Agreement, prescribes twenty years as the minimum duration for the patent monopoly. The Indian patent law prescribes twenty years of patent life. It may be either the basic priority date for the basic application filed in India or the PCT application date for the national phase patent applications. 

The Renewal and the Procedural Compliance on Registration

The patent, post-grant, requires payment of the annual renewal fee. It can be paid annually or for multiple years in a single go. The renewal fee is to be paid throughout the twenty years life span of a patent.

It is also required for the patentees to annually file a statement of the commercialization of the invention in India.

Pros and Cons of a PCT application

There are two routes for filing patent applications in foreign countries. The first is Paris Convention Route. This route provides the member States twelve months’ time to file a patent application without losing the basic application priority. The second route is the PCT route. Within twelve months of the basic application priority date, the PCT application is filed. A PCT application does not provide any patent anywhere. It is merely a single window of the time buying process. The PCT filing provides the right to delay the national phase filing to 31 months.

Patent Life

The life of a patent is twenty years counted from the first filing date. In case the provisional patent application preceded the complete application, the provisional application filing date would be the first filing date. The first filing date is known as the priority date. In the case of the PCT applications resulting in multiple national phase applications, the twenty years would be counted from the PCT application filing date.

After completing the twenty years, the patent expires. Even on non-filing the annual renewal fee, as per the law of the jurisdiction, the patent eventually expires before completing its twenty years of life. The expired patents become a part of the public knowledge domain.