Patent Application Filing Strategy for Individual Inventors

First Publication Date: 31st October 2009
More often than not, most of the companies, be it mid size or large, and in some cases even start-ups, seem to have some strategy or the other when it comes to filing patent applications for their invention. These companies would have identified the markets in which they want to protect their invention, and they also would be aware of the various methods of monetizing their invention/patent. More importantly, these companies would be ready to infuse funds to realize their objectives. However, the scenario is not quite the same with individual inventors.The phrase individual inventor refers to an inventor whose invention is owned by him and not by the company he is employed in. Such inventors generally would like to monetize their invention by acquiring a patent for their invention and later sell or license out the patent to a third party. Further, such inventors would have limited funds to protect their invention. I have often observed that individual inventors are often confused about the strategy they want to adopt for protecting their invention.
An inventor can adopt one among the various options listed below, to protect their invention:

  1. File a complete or provisional (if provisional is filed, a complete patent application has to be filed within one year from the provisional application filing date) application in the Indian Patent Office
  2. File a complete or provisional patent application in one of the Paris convention countries other than India (India is also a convention country), where the inventor feel there is a market for his invention (most of the inventors say it is the US)
  3. File a PCT application

While each of the above options has its own advantages, I would recommend the first option to start with to an inventor with very limited funds.
The inventor can file the patent application in the Indian patent office (IPO) to start with, because the statutory fee (INR 1000) for filing is less when compared to statutory fee of patent offices in the US and other developed countries. After filing the application in the IPO, he can start searching for investors/buyers for his patent pending invention. Remember, even if the inventor has filed the application in IPO, he can still search for buyers who are interested in buying patent rights in countries (US, UK, etc.) other than India. The inventor has the option of filing patent application for the same application in other convention countries within 12 months from the date of filing the application in India.
Further, if he thinks that his invention has potential of being sold in other countries also, then he can file a PCT application. The filing of PCT application will give him 30/31 months time from the date of filing the application in the IPO, to file patent application in the PCT countries. The 31 month period will allow the inventor to find buyers in the PCT countries, and then he can file patent applications in countries (PCT countries) where the response is positive.
The above strategy might suit an inventor whose objective is to monetize his invention by selling or licensing out his patent right. One could consider tweaking the above strategy to suit the objective of the inventor on a case to case basis.

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