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Patents

BananaIP Counsels > Patents (Page 57)

Role of Third Parties in your Patent Grant Process

The subject of today’s topic would probably leave a patent applicant feeling a bit like the reigns are slipping. A patent is not a piece of cake to acquire. The right owner of the invention be it an inventor or an applicant has to prove themselves beyond any doubt. It is the basic right of every individual to oppose the grant of any patent, in cases where such a grant would seem detrimental to a third party. Hence, it would be a justifiable opportunity for third parties to intervene in the procedure of patent grant.

Opposition

Under the Indian Patent Law, Opposition can be made twice during the life of a patent application. First is the Pre-grant representation under section 25(1) wherein any person may challenge the application for grant of a patent. Pre-grant opposition acts as a defensive shield to confirm the validity of patent applications before patents are granted. Post grant opposition under section 25(2) may be made only by any person interested at any time after the grant of patent but before the expiry of a period of one year from the date of publication of grant of patent.

Common Reasons for Delay in Grant of Patent

A Patent gives its owner a monopolistic right and protection against unauthorized use of anything under its protection. This is the reason that a patent only gets granted once it passes several levels of stringent scrutiny. This phase is called the examination of the patent application. Examination of the application determines whether the patent application is worthy of a patent grant and thus, unless the application fulfills all patentabilty criteria, it does not receive a grant.

For a patent application to be examined, a specific request has to be filed within a stipulated deadline, in accordance with the laws of the country that the application is filed in and the required fee, if any, has to be paid. Time and again we criticize Patent Offices for not promptly processing applications. Patent Offices, are usually overburdened with applications, since anyone can file as many applications as they please at any time. This has taken a toll on the prompt prosecution of an application. What has to be mulled over here is whether the applicants share any responsibility for the delayed prosecution of applications. Ways to minimize delays in examination of application can be:

Patent Invalidation in the US: The Good, the Bad and the Ugly

After studying citations from patents that were invalidated by US Judges, researchers from the London School of Economics commented, “Patent invalidation has a significant impact on cumulative innovation in the fields of computers and communications, electronics and medical instruments (including biotechnology). We find no such effect in fields involving drugs, chemicals or mechanical technologies.” Let us now take a look at why this discrepancy exists.

What is patent invalidation?

The Patents Act outlines circumstances under which a granted patent can be revoked on certain grounds.

Who is affected by this and how has this come to be?

Start-ups seem especially vulnerable to bad patent policy because they may not have the legal or the economic negotiating power to deal with big business. The researchers commented that when large patentees are involved, bargaining breakdown occurs and small firms are normally less capable of resolving disputes cooperatively, without resorting to the involvement of courts.

The Right Time and Means to Publish a Patent Application

If an invention has been published or publicly displayed, it will not be eligible for patenting except for in certain cases. As part of this post, we will look at an essential stage in the patenting process called Publication. We will also discuss the exceptions, where prior publication may not hinder the patenting of an invention.

In India, once an application for a patent has been made, the application shall be published by the Patent Office for public inspection, before the expiry of 18 months from filing or priority date. Under Section 11A of the Indian Patent Act, 1970 it is mandatory to publish patent applications for public inspection in the Official Gazette. Such publications in the Official e-Journal, shall be published every Friday by the Patent Office.

When is Public Use Considered an Exemption for Patentability?

This post was last published on July 18th, 2014.

 

Today we will take a look at two patentability cases with a very similar premise, the premise being if the public use of an invention bars its patentability. What these two cases have in common is only the premise, and with a little scrutiny, we will see how contrasting the cases actually were.

1. Egbert v. Lippmann, 104 U.S. 333 (1881)

In the year 1855, Samuel Barnes, designed corset springs, i.e., the springs that hold a corset together, for his wife who had expressed her dissatisfaction with the existing corset binders that were not sturdy enough. She had used the newly designed corset springs for over ten years since then. Barnes had also shared this fact about his invention with a friend and later, in 1866, Barnes applied and obtained a patent for the corset springs. A few years later, after the death of Barnes, and Mrs. Barnes had remarried, inheriting the name Egbert, a competitor named Lippman began manufacturing corset springs just like the ones invented by Barnes. This was when Mrs. Egbert, who had inherited the patent from her first husband, sued Lippman for patent infringement.

Keeping Secrets from the Patent Office? Think Again!

The Indian Patents Act, 1970 obligates an applicant under Section 8, Rule 12 to furnish information and submit an undertaking regarding foreign application or foreign filing. Under this section, an applicant has to submit details of the application filed ‘in any country outside India in respect of the same or substantially the same invention’ as required under section 8(1)(a); and an undertaking stating that the Applicant will keep the Controller informed of the application particulars till the time of grant as required under sub-section 8(1)(b). The only guideline available for meeting such an obligation is the time frame of 6 months from the date of filing of such an application outside India, within which the applicant has to inform the Controller [Rule 12 (Patent Rules 2003) as currently amended]. The importance of this section cannot be undermined or negated as it has a direct effect on the grant or even the validity of the patent.

The requirement of informing the patent office regarding the status of foreign filed applications has been prevalent since the time the Patent Act, 1970 came into force. The law (Section 8; Rule 12 of the Patent Act) has made it mandatory to provide details in the form of an undertaking regarding any application filed outside India for the invention. This requirement was simple and, in practice, form 3 had to be filed at the time of filing the Indian application. The Patent (Amendment) Act, 2002, made it mandatory to furnish details regarding every foreign application filed subsequent to the filing of the application in India, but the above section did not prescribe the time limit for furnishing the details. The Patent (Amendment) Act, 2005, clarified that until the grant of the patent, the applicant will be under an obligation to provide the required information.

Patent Filing Essentials: The What, the Who, the When and the Where

When an individual is struck with an idea and an invention follows, it is advisable for them to gain monopoly over the invention’s marketing rights via patent protection through relevant authorities. This write up briefly summaries the essentials of patent filing and protection.

What is an Invention?

An invention is a technological advancement that is not anticipated by publication in any document or used anywhere in the world including the country of the invention, before the date of filing of the patent application i.e., the subject matter of the invention should not have fallen in the public domain nor should it form a part of the state of the art.

Who can apply for Patents?

Section 6 of the Indian Patents Act, 1970 speaks of persons who are eligible to file Patent in India. Accordingly, any person who is the true and first inventor of the invention; or his assignee; or legal representatives of any deceased who before his death was entitled to make such an application, is eligible to file applications for patents.

Claim Drafting – Transitional Phrases

A transitional phrase is a part of the claim that connects the preamble and the body. The Transitional phrase determines as to whether a claim is “Open” “Partially Open” or “Closed.”

Open Claim

An Open claim includes additional unrecited elements i.e., if a claim, which is Open, recites elements A, B, C and D, then an article which includes elements A, B, C, D and E infringes the Open claim irrespective of the fact that the article has an extra element E which is not recited in the Open claim.

The term “comprising” in a claim makes the claim Open.

In, Gillette Co. v. Energizer Holdings, Inc., 405 F.3d 1367 (Fed. Cir 2005), a famous and much talked about case, the claim at issue recited “A safety razor blade unit comprising a guard, a cap, and a group of first, second and third blades. ” The accused infringing product included four blades. The court said that the word “comprising” makes the claim Open and hence, the scope of the claim encompasses all safety razors satisfying the elements set forth in the claim thus concluding that the accused product infringed the claim.

The Non-Obviousness Requirement and its Evolution – Graham vs. John Deere

This post was first published on July 16th, 2014.

 

Today’s special is the case that has set a high precedent in US Patent Law practice, acquiring the status of the highest cited case in subsequent cases decided by several courts, especially the CAFC. Graham vs. John Deere Co. is cited extensively since it clarifies the judicial standing on the requirement of non-obviousness of an invention. William T Graham (Graham) sued John Deere Co. (Deere) for patent infringement.

Details: Graham invented a new shock absorber to add to tractors, essentially a device designed to absorb shock from the shanks of chisel plows as they plowed through rocky soil and thus prevented damage to the plow. Graham obtained a patent (US Patent 2,493,811) on this device.

Shortly thereafter, Graham made an improvement on this device and applied and obtained a patent (US Patent 2,627,798) for the improvement. Only 2 differences existed between the two patents, them being: the stirrup and the bolted connection of the shank to the hinge plate did not appear in 2,493,811 and the position of the shank was reversed, being placed in 2,493,811 above the hinge plate, sandwiched between it and the upper plate.

Permission to File a Patent Application Outside India

This piece of writing tries to convey an important requirement under the Indian Patent law for an applicant residing in India who wishes to file patent applications outside India, directly.

Any inventor or applicant is free to seek protection anywhere in the world. At times priority is given to a foreign country over India when there is less or no market potential to the invention in India or when the invention falls within the non-patentable subject matter in India. In India this privilege is not absolute, because it is necessary for any resident of India who is seeking protection directly in any foreign country or as an international application under PCT, without first filing a patent application in India, to obtain a permit or license from the Indian Patent Office. This mandatory requirement allows India to monitor all inventions in the interest of the nation.

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