Patents

Patent, known as Utility Patent in the US, is a monopoly. The monopoly is a bundle of five rights, namely the right to use, make, offer to sell, sale or import. It is granted for a patentable invention. 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’.

Provisional and Complete 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 with the object of winning the ‘first to file’ right. The provisional patent application is filed when the invention becomes achievable within twelve months. The twelve months is the time limit to file the Complete Patent Application based on the provisional patent application. Otherwise, the provisional patent application expires. Patent life is counted from its complete application filing date.

Product and Process Patent

A patent application can be filed for an invented product or a process to reach a tangible product. The first patent application, generally filed before the country of residence patent office, is called the basic or priority patent application. The filing date of the basic application is known as the priority date.

As per Indian Patent law, the basic patent application by the Indian residents is to be filed before Indian Patent Office.

Technically it is difficult to file patent applications, for the same invention, in different jurisdictions at the same point in time. This is sorted by providing twelve months’ time from the basic application filing date for filing the applications in different jurisdictions without losing the priority of the basic application.

The International Patent Applications

The patent applications in different jurisdictions for the same invention disclosed by the same inventor(s) form one patent family. It means, one patent family is patent rights for the same invention in different countries. The patent rights limits to the national territories, so there is nothing like an international patent.

Although there is nothing like an international patent, there is of course a term an international patenting application. The patent applications in different foreign countries based on the basic patent application within the prescribed time depends on the route taken. [Paris Convention]. There are two routes, Paris Convention and Patent Cooperation Treaty (PCT). It is obvious that both the Paris Convention and the PCT are applicable for the signatory countries’ residents.

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

A patent application ultimately results in a product or a process monopoly. A monopoly that is going to win some business in the market. Therefore the filing of the patent application(s) in different jurisdictions is a business decision. The decision to file patent applications in tens or more than a hundred jurisdictions is a strategic business decision that may take time more than twelve months. It was sorted out by the PCT application. A PCT application, within twelve months from the basic application, provides a single window for filing in the chosen or all the other member countries with the prescribed time from the basic application filing date. The patent applications in the different jurisdictions based on the basic application priority date are known as National Phase Patent Applications. Indian Patent law permits up to thirty-one months to receive the National Phase PCT applications.

The lifeline of the national phase patent is counted from the PCT application date and lasts with the duration prescribed in the respective national laws. The international patent law, in black and white, known as the Trade-Related Aspects of the Intellectual Property Rights (TRIPS) Agreement, prescribes twenty years as the minimum duration of the patent monopoly. In India, the law prescribes twenty years of patent life from either the priority date for the basic applications or the PCT application date for the national phase patent applications.

Renewal and 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.

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