Can a Provisional Patent be Licensed in India?

 Patent Rights are exclusive rights granted by the concerned government authority or Patent Office to the inventor of a novel and original innovation, essentially providing a technical solution to an existing problem. Other than the inventor owning the exclusive patent rights, any other individual or entity is forbidden from manufacturing, distributing, selling, importing, or monetizing the patented invention.

However, with due authorization sanctioned by the rightful patent owner, a third party is allowed to manufacture, distribute, sell, import, or monetize a patented invention - and this process is called Patent Licensing. In simple terms, it refers to permitting some third party to extract benefits from a patented innovation by its proprietor. The third party involved, in return, has to pay a stipulated amount, as agreed upon by both parties, also called the royalty fee, to the patent proprietor. Consequently, the third party obtains the license to manufacture, distribute, sell, import, or monetize the patented invention in exchange for a royalty fee.

As mandated by the Patents Act of 1970, the terms and conditions of a patent license are to be duly written and signed over an agreement or contract. The owner of the patented invention is the licensor, and the third party to whom it gets licensed is the licensee. The patent license agreement usually mentions the duration the licensee can enjoy the patented invention.

Licensing a Provisional Patent

Although a patent owner would be willing to use and commercialize his patented invention for personal benefits, it is common to license it out to another individual or entity in exchange for a royalty fee. Patent licensing is carried out legally through a licensing agreement or contract with specific terms and conditions based on the consensus of the parties involved. Although patent licensing agreements are drafted after the invention has been patented, the question of whether or not a provisional patent can be licensed is pretty striking. The simple answer to the said question is a yes. Licensing out a provisional patent is possible. However, whether licensing out a provisional patent can be profitable to the parties involved might vary from one case to another.

There are no stringent timelines in India that can be adhered to when we talk about patenting an invention; it might take around 03 years or so. Or if the inventor decides to file through the expedited route, it might take at least 1.5 to 02 years to get an invention patented.

In many circumstances, the back-to-back office actions and the delay in filing responses by the inventors lead to severe backlogs. Therefore, it makes sense for the patent applicant or inventor to try every possible way of commercializing the invention while it is still with the concerned authorities or patent office awaiting its fate.

 

After filing the provisional patent application, the applicant or inventor attaches the tag of 'Patent Pending' to the product and starts commercializing it. Doing the same helps notify other competitors that the product can't be infringed upon and that it shall soon be patented.

Provisional Patent Application for Products

Why should licensing products not be possible if marketing the products after filing the provisional patent application is possible? The onus in this scenario is on the patent applicant or the prospective owner to convince the licensee that Patent Protection over the product shall be obtained soon and that the product is worth the royalty even before the patent gets granted.

It is imperative to note that the chances of licensing a provisional patent are pretty high when the patent applicant has a prototype, if not the real product. Furthermore, the fact that a provisional specification in itself doesn't constitute a patent must be remembered.

There might be a situation where the patent might get rejected, and it should be taken into consideration while drafting the patent licensing agreement based on the provisional patent application. In such circumstances, the obligation of the licensee to pay the royalty ceases.

Another way the patent applicants can license a provisional patent application successfully, without being affected by the drawback mentioned above, is by giving the licensee access to the technical know-how and trade secret of the invention while stating that a patent would only be an added advantage to the other two, i.e., the technical know-how and trade secret.

The patent licensing opportunities of a provisional patent undoubtedly depend on the value of the invention in question. Moreover, an invention can be licensed as a trade secret before filing a provisional patent application.

While a provisional patent application can be licensed, one has to keep in mind that it is not a patent per se. Therefore, the patent applicant has to draft the provisional application in harmony with the patent claims that shall eventually be drafted in the full patent specification.

Tips & Tactics to Ensure the Success of Your Patent Application Process

 The process of obtaining Patent Protection by filing a Patent Application may involve multiple obstacles, many of which may lead to the application being rejected. These may be because of a lack of research to support the patentability requirements or from the poor communication abilities of the patent applicant, leading to confusing arguments for the innovation's validity. Irrespective of different circumstances, let us discuss a few tips and tactics to ensure the complete success of your patent application procedure.

 

1.Ensure the Patentability of Your Innovation

You must verify beforehand whether your innovation or invention qualifies for obtaining patent protection. In the scenario where some other inventor or innovator has already invented or innovated the same thing, you would lose your individuality at the beginning. It would undoubtedly be a sheer waste of time, money, and effort to go through the entire patent application process. There are many resources available online for performing a Patent Search. Many law firms specializing in Patent Law can also help you verify your patentability criteria in a better manner.

2.Set Up Your Budget

The patent application filing process is a pretty expensive affair. It is always better to set up your budget well in advance to avoid any discontinuation in the middle of the patent application process. The high costs are because of the government processing and legal assistance charges. For instance, the patent professionals and attorneys would charge you to determine the patentability of your invention or innovation and for drafting the patent application. Furthermore, there are filing fees and examination fees for patent applications. Therefore, it is highly recommended that you set up a budget on time for your overall process.

3.Create a Timeline

Obtaining patent protection after filing the patent application is a time taking task. As per the patent experts in the industry, you may require waiting 02 to 03 years to get your hands on a fully working patented invention or innovation. The patent experts, therefore, suggest creating or establishing a patent timeline at the beginning to meet the due dates for every phase in the process.

Moreover, the earlier you start, the better it will be, as procrastination may lead to a comparable invention or innovation being launched by another inventor and safeguarded by a patent before you would be able to execute it in the market.

4.Document Every Single Detail Minutely

You must work as hard and sincerely as you can on the patent draft to ensure that you don't overlook even a minute detail in your patent later on. Always have your invention's written, audio, and visual documentation in place. Time-stamped files in soft and hard copies will be the icing on the cake. Such aspects shall help build your authority in the patent application process. The records shall help establish the chronological history of your innovation in the event that another innovator demonstrates a similar innovation at the same time as you do.

5.File a Provisional Patent Application before the Actual Patent Application

If you are unable to fulfill the requirements of time, money, and effort for getting your invention patented in its first version, you may consider filing a provisional patent application. Filing a provisional patent application is a time-saving and cost-effective solution to safeguard your innovation from theft or violation. It gives you 01 year to collect all the necessary and essential resources to file the actual patent application.

Any invention protected by filing a provisional patent application is given the tag of "pending for a patent." It implies that even though your invention isn't fully patented yet, the patent law still protects your ownership of it.

6.Create a Prototype

The government authorities or Patent Office will require a detailed explanation of the invention you wish to protect when you submit a patent application. The patent officer in charge will also question you to evaluate your confidence in your invention's development. Creating a working prototype for your invention is one of the best ways to demonstrate it properly.

The prototype refers to the model of the original invention and should be capable of imitating it. Consequently, a working prototype shall convince the concerned authorities that the concept is unique in its industry. It is also imperative to attach a written explanation of every element of the invention and how it works with the prototype.

7.Seek Assistance from Professionals

Sometimes a patent application gets rejected just because the filer or inventor couldn't explain the purpose of his invention effectively. In this scenario, seeking assistance from patent professionals can save you. The most critical aspect of a successful patent application is choosing the right Patent Attorney who is well acquainted with your invention, its underlying technology, its business point of view, and your short-term and long-term goals. Hiring a Patent Lawyer with the required training and expertise shall lay the groundwork for effective communication to explain your invention appropriately.