Secure Your Innovations

I have come up with an idea. Can I get a patent on it?

All ideas cannot be protected as a patent. Some of the ideas may qualify as a copyright and some as inventions. A patent may be granted for only inventions.

Are all types of inventions patentable?

All inventions can’t be granted a patent. In order for an invention to be protected as a patent, it should satisfy the patentability requirements for each country where you seek to protect your invention as a patent.

What are the requirements to get a patent in India?

To get a patent in India, the invention should meet the following requirements:

1. Patentable subject matter - To be a patentable subject matter, the invention should either be categorized either as a product or a process. Also, it should not form part of a list of exceptions provided under the Indian Patent Act.
2. Capable of industrial application – The invention should be capable of being made or used in an industry.
3. Novel – The invention should be new across the world. It should not have been published in any document, used anywhere in the world or otherwise known to public.
4. Inventive step – An invention will be said to have an inventive step if a feature of the invention involves a technical advance as compared to existing knowledge, or has economic significance, or both technical advancement & economic significance.
5. Patent specification – Once, the aforementioned patentability requirements are satisfied, a patent specification has to be drafted and filed with the Indian patent office. The patent specification is the final step in the process and the level of protection which the patent may provide will be dependent on the scoping of the patent application. The claim section of the patent specification holds a lot of importance in case of interpretation of the scoping of the application and should be done extremely carefully, ideally by a patent agent / attorney to ensure optimum protection. Furthermore, care should be taken to satisfy the enablement and best mode requirements while drafting the patent specification.

The following video explains the patentability requirements considering the example of the patentability of the magic 8 ball. Though, the video has a US perspective, the principles are almost the same across the world including India.

Also see: Our blog post on the patent process in India.

How do I assess the chances of getting a patent?

In order to assess the chances of getting a patent in India or in other countries, it is important to determine if the invention will meet each of the requirements as mentioned herein above. Only, if an invention passes through each of the aforementioned requirements, a patent will be granted. Failure to even pass a single requirement will lead to the patent not been granted.

The chances of getting a patent can be compared to cleaning water by passing water through a series of filters (with different size) in a tube. Each filter has a role to ensure sand, waste and other small particles don’t pass through. Similarly, to get a patent, the invention has to pass through each of the five mentioned filters. Only if all the filters are successfully passed, your patent application will be granted a patent.

I am finding it difficult to ascertain if my invention qualifies the patentability criteria. Who can help me?

In case you are finding it difficult to analyze the patentability criteria and the chances of getting a patent, or want to get an honest unbiased opinion on your invention; you should always speak to a qualified patent expert, i.e. a patent agent / patent lawyer.

Patent agents are people who have a technical degree and have passed the patent agent exam and are authorized by the Indian patent office to provide help in drafting, filing and prosecuting patent applications on your behalf.

Many of the experienced and high quality patent agents either have their own patent firms or work directly with law firms. Many of the law firms which specialize in Intellectual Property or Patents may have a lot of patent experts working with them. If you are serious about protecting your patents, such patent law firms may be your best bet. And we at Zatalyst work hard in helping you connect with such premier patent firms and companies.

I have done a search on the internet and still think it is absolutely new. How can I go about protecting it?

If you are confident that nothing similar exists and your invention passes other patentability requirements as discussed above, then the next step would be to draft a patent specification and file it with the patent office.

You can yourself prepare and file your patent application if you are confident about doing so or can seek assistance from a patent expert.

However, keep in mind that the patent application is your representation in front of the patent office and the contents of the specification will determine whether or not your invention gets a patent or the extent of protection your patent application. Hence, it is advisable to get a patent expert to help you with the patent application drafting process. Though, it may be an expensive exercise initially, but more often may be the difference between getting a patent which actually means something or stands in a court of law will outweigh the costs incurred initially.

Think of getting a patent expert like hiring a lawyer for defending a case vis-a-vis doing it yourself. You can argue your case yourself as you have a deep knowledge about your case, however, there is no assurance if you will be able to do a good job or get a favourable order. Similarly, getting a patent expert to do the patent draft may help you get protection on certain aspects which you may willingly surrender or unintentionally give up.

Furthermore, if you think you will not be able to afford the legal service, you can always explore the possibility of consulting an expert and check with them if they can help you review the application drafted by you. Not every patent firm is open to this model but a few IP firms help out budding entrepreneurs to build a rapport. It’s worthwhile to explore this if your financial resources are limited. Moreover, if you are a student, a grassroot inventor, NGO or an organisation dedicated to help small and medium industries you can check out the possibility of qualifying for pro bono support from patent firms. Many of the law firms and companies on Zatalyst have a strong social perspective and are involved in pro bono work to help the society.

I have to make a disclosure of the invention. Should i file a patent application before the disclosure is made?

Highly recommended that you file your patent first. A patent application should ideally be filed before any disclosure is made to the public. In case you are pressed for time, filing a provisional patent application is recommended. This helps you to quickly file and secure the all-important priority date and gives you a 12-month window to file your complete patent application.

In case you have already made the disclosure and are exploring whether you can file a patent application at this stage. Keep in mind that nothing stops you from filing a patent application at any stage. But the question is whether the patent application will be rejected because of your own disclosure.

The Indian patent act provides a set of scenarios under which your own disclosure may not lead to the patent application being rejected:

• If the publication containing the matter was wrongfully obtained from the inventor and the inventor after learning of the publication made a patent application as soon as reasonably possible.
• If the invention has been communicated to the government or to any person authorized by the government to investigate the invention on its merit.
• If the invention has been displayed or used or the description of the invention is published at an industrial or other exhibition, as allowed by the Central Government by a Gazette notification. This exception allows for a maximum period of 12 months from the opening of the exhibition to file for a patent application.
• If the description of the invention is read by the true and first inventor before a learned society or published with his consent in such a society. This exception allows for a maximum period of 12 months from the reading or publication of the paper to file for a patent application.
• If the invention was publically worked in India for the purpose of reasonable trial only and it was reasonably necessary for the working of the invention to be done in public considering the nature of the invention. This exception provides a period of one year within which a patent application for a patent should be filed.

Can I get a worldwide patent protection over my invention?

Yes and No.

Can you get a patent in multiple countries? Yes.

Can you get an international or worldwide patent? No.

Patent laws are territorial in nature. So, if you need to patent an invention, you need to seek patent protection in each of the countries you are interested in. Each country may have their own law but the principles are generally the same as each of the countries follow the international standards laid out under TRIPS.

How can I file my patent application in different countries?

If you are looking at protecting your invention in multiple countries, you can choose to file a patent application directly in that country under the Paris Convention. This approach is well suited if you have decided the list of countries where you seek protection and the list is generally less than 5-7.

As the timeline under convention filings (Paris Convention) for deciding the countries is only 12 months from your original filing date (priority date), any country you decide not to include within the 12 months’ period is excluded from possible protection under patents and you lose the rights to seek protection in such countries later.

However, if you are interested in protecting your invention in more than 5-7 countries or are unsure of the list of countries and wish to keep your options open, you can opt for filing through the Patent Cooperation Treaty (PCT) route. The PCT route provides a simple filing system which reserves your right in 140 odd PCT member countries. Similar to a Paris Convention filing, an international application under the PCT route has to be filed within 12 months from the priority date. However, a single application is required under the PCT system as opposed to multiple applications required under the Paris Convention.

Each of the Zatalyst patent firms are experts in patent filing and can help you strategize the best option for availing protection in multiple countries based on your business needs.

How do I decide which countries to file my patent application?

You have already filed your patent application and are close to your 12-month window of selecting the countries where you need to protect your invention. This a common question which every company faces which is thinking of protection in other countries.

My golden rule when thinking of countries where you need to protect your invention involves the manufacturing-market-competitor present-future rule. You should at least protect your invention in each country where the invention may be manufactured, marketed or your competitors may manufacture and / or market.

Some companies may have manufacturing in a single country and some in many. Similarly, some companies may market in a few countries because of their distribution network. In addition to ensuring that you cover each of these countries, you should also think of the possible future. Since, the life term of a patent is generally 20 years, it is important to think long term and plan accordingly.

Furthermore, it is also advisable to protect your invention in countries where your competitor has their manufacturing or market. Even if you are not going to be present in these countries today or in the future, you can still explore the possibility of having a licensing deal if your competitor is using your invention in their products.

I don't want to file a patent for my invention in India. Can I file directly file for a patent in another country?

Sometimes, you may not be manufacturing or marketing your products in India or your home country and don’t wish to spend money to protect your invention in your base country. Or you are interested in having your first filing in a country like US, Europe, etc. for strategic reasons.

If an invention is made in India, it has to be first filed in India generally. Similar rules apply in other countries as well.

Since, the invention was made first in India, the Indian patent office asks patent applicants to file the invention first in India and wait for a mandatory period of six weeks before filing it outside India. This period is provided to ensure that the patent office can apply secrecy directions, if the invention may be relevant to the defence purposes.

Alternatively, the patent applicant can seek a foreign filing permit for their invention. Once, the patent office is satisfied that the invention is not prejudicial to the defence of the country and no secrecy directions need to be applied, may provide a foreign filing permit. Once, the foreign filing permit is provided, the patent applicant can file their patent application first in a country like US, UK, etc.

Patent professionals are charging a lot for drafting a patent application. Is it worth it?

As they say, “You get what you pay for” holds true in the patent service domain as well. Providing patent services is a challenging and specialized skill which needs strong techno-legal bent of mind and extensive experience.

If you are serious about your invention and want patent experts in your field of technology to work on your inventions and spend 5-10 working days on a single patent draft to provide the best drafting service in the industry, then you should be willing to pay in line with your expectations.

If you are serious about your inventions, then Zatalyst is the right place to find a patent firm for your invention. We are constantly working to ease your pain in finding premier legal service firms having high quality standards.

If you are not too serious about your invention, then spending money on a professionally done patent draft may not be worth the money. In such scenarios, even consider if you need to file a patent application. Does it even provide any value to your business?

It is purely a decision you need to think hard about before deciding to spend money on protecting your invention as a patent. If you need instant information on costing, you should definitely read our cost estimate for patents in India.

The professionals are saying that claims should ideally be written by an expert. What is the big deal about claim writing?

Each patent application has to be accompanied by a patent specification. The patent specification describes the invention in a techno-legal fashion, which is examined by the patent office and eventually a patent is granted or rejected.

Like the patent specification is a crucial part of the patent, the patent claims are the heart and the soul of the invention. The claims define the scope and meaning of the patent.

What is claimed is what is protected by a patent and what is not claimed, even if new is not protected. Further, while drafting your claim you need to ensure that your claims don’t cover the prior art. Hence, it is imperative to draw a balance between what can be protected and what has to be left out.

The art of drafting patent claims is something which takes years of practice and evolves regularly as the law evolves. Patent drafting professionals spend a lot of their time in discussing and debating the scoping of the patent claims to ensure optimum level of protection for client’s invention.

Claim drafting may not seem like much but ask any patent professional and they will tell you that it is an art which takes time to master.

So, you are best advised to seek a patent expert in your area of technology while drafting your patent specification, especially the claims.

Who is allowed to draft a patent specification and file the patent application?

Patent application drafting can be done by the inventors or their authorized patent agent. If you are planning to file and prosecute the patent application yourself, you can do so or can appoint a patent agent. A patent agent is someone who is registered with the Indian Patent office and is licensed to draft, file and prosecute your application in front of the patent office.

What is the difference between a patent agent and a patent lawyer?

Patent agent: To be a patent agent in India, a person should be a citizen of India, be 21 years of age or more, have a degree in science, engineering or technology, and has passed the patent agent exam. Professionals who have worked as a patent examiner for ten years or more may also qualify as patent agent without the need for passing the patent agent exam.

Once a person becomes a patent agent, he / she can practice before the patent controller and act on behalf of patent applicants. The practice of a patent agent includes preparing and filing patent applications, prosecuting patent applications during the examination phase, attending patent hearing in front of the controller, etc.

Patent lawyer: A person who satisfies the patent agent requirement and is also a lawyer is referred to as a patent lawyer.

Patent lawyer = Patent agent + Lawyer