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.

Debunking Top Eight Copyright Myths

 There have always been many inquiries concerning the number of common misunderstandings and misconceptions about Copyright Law. This article attempts to debunk the top eight copyright myths.

#Myth1 - Copyright Can Safeguard Your Ideas

Copyright Protection applies to recorded works; it doesn't apply to something intangible such as an idea. Within some specific areas (like inventions), it may be possible to file a Patent Application. Since copyright protection applies to recorded works, such as artwork, music, documents, etc., if a competitor uses your copyrighted work (by copying, adapting, or stealing your creative work to promote their product or service), it would fall under Copyright Infringement. In such a scenario, you can undoubtedly take action against the infringer; however, it is essential to note that there is nothing much you can do to prevent an individual or entity from creating their work based on a similar idea as long as they are not copying or stealing your work to do so.

#Myth2 - Everything on the Internet Lies in the Public Domain and is Free to Use

It highlights the most common misconception about the term 'public domain' when used concerning copyrighted works. Creative works become a part of the public domain only after their copyright expires, which is generally many years after the owner's or author's death. Kindly note that creative works posted on the Internet may be publicly accessible, but they are certainly not in the public domain.

#Myth3 - Any Work Without a Copyright Notice isn't Safeguarded

Copyright protection shall apply whether or not there is a copyright notice attached. In the United States, a copyright notice was needed to retain copyright protection on creative works published before 1^st January 1978; however, it was the exception and not a standard and is certainly no longer the case. Besides, when the United States became a signatory to the Berne Convention for the Protection of Literary and Artistic Works, the copyright law in the nation was amended, and the use of a copyright notice on creative works published from 1^st March 1989 became optional.

#Myth4 - You Can Copy 10% of a Creative Work Without Causing Copyright Infringement

Such is not the case. Any unauthorized use of copyrighted work can potentially lead to legal action from its owner or holder unless it is explicitly permitted under fair use or fair dealing rules.

When we talk about using extracts or quotes, there exists no percentage or magic figure that could be applied since every case must be viewed on its merit. What is clear from the cases that have come to trial is that it is the perceived importance of the copied content instead of simply the quantity that counts. What we advise is to always seek permission from the copyright holders before using their creative works.

#Myth5 - If You Change Someone Else's Work, You Can Claim it as Your Own

Adapting or copying some individual's or entity's work is a restricted act. In legal terms, any adaptation is regarded as a derived work. Therefore, if you adapt the creative work of others, it shall still very much be their work, and they will own the right to object you from publishing such a work when they haven't given you any permission to do so. Additionally, they are entitled to reclaim any money you make from selling their creative works.

The safest option in this aspect is to create something not copied or adapted from the creative work of others or seek permission from the copyright holder (for which you should expect to pay a fee or royalties). The creative works of others can undoubtedly inspire you; however, when it comes to your creative works, have a fresh start and don't copy what others have already done.

#Myth6 - You Can Copyright a Title or Name

Copyright laws are indeed very restrictive; they don't apply to titles and names that may be legitimately used in unrelated instances or duplicated coincidentally. There exists no reason from a copyright perspective why two creative works can't have the same title. No infringement occurs as long as the content of the creative works isn't adapted or copied. However, it doesn't imply that there isn't any protection on the name since it may be covered by other laws. If the name holds Trademark Protection or it could be proved that the title's use confuses or misleads the general public (known as passing off), there can be issues. While copyright protection holds from the point a creative work comes into being, passing off is based on the general public perception of what the name means (i.e., one gets a clear idea of what to expect to be given if he asks for Coca-Cola).

#Myth7 - It's Difficult to Prove Copyright Infringement

Such isn't the case since copyright law is principally civil and not criminal. Civil law needs a lower burden of proof, thereby making it easier to prove copyright infringement. In a civil case, a plaintiff requires convincing the tribunal or court that his claim is valid and that it is likely that the defendant is guilty on the balance of probability. On the other hand, a defendant in a criminal case is innocent until, beyond any reasonable doubt, proven guilty.

#Myth8 - Confusion over Copyright Protection in the Music Industry

A sound recording has separate copyright protection from the underlying musical composition. It implies that a new sound recording of an old piece of music shall still very much be copyright protected even if the copyright protection in the original musical recording has expired.

What Impact Does a Patent Race have on Innovation?

 When we talk about patents, timing undoubtedly matters. In case two inventors are working on the same invention, then the one who reaches the Patent Office first holds the upper hand. The best example of a patent race is - Elisha Gray and Alexander Graham Bell filing the Patent Application for the telephone on the same day. Bell received the patent, started a successful company, and is now synonymous with the telephone; on the other hand, only a few people remember Gray. For quite a while now, economists have been using patent races as a classic example of how firms innovate in a highly competitive environment. Let us now gain more valuable insight into the role of a patent race in the real world.

Winning the Patent Race

It is a matter of fact that yes - a patent office keeps the patent applications secret for sometime after they are filed. The same implies that two companies or firms may end up filing a patent application for the same innovation while not realizing that the other also filed. As per various reports and surveys conducted, a patent race has a significant impact on innovation both in terms of magnitude and direction. Winners, in this aspect, do 14% more follow-on innovation, and losers, in contrast, are near about three times as likely to abandon their innovation. The ones that keep going have to invent around and find some other technical paths to overcome or avoid the patent coverage of the winner.

If we consider the importance of winning a patent race, it won't be surprising to learn that firms in highly contested technology areas (where a patent race is frequent) do more R&D and file many patent applications. Furthermore, they usually patent in smaller steps instead of waiting until bigger milestones are achieved.

Who all are running in the Patent Race?

The patent racing behavior is surprisingly frequent - with somewhere around 10-11% of all the patents becoming a part of the race. In a few technology areas, a patent race occurs even more frequently; for instance, 13% of the patents in communications are in a patent race and 16% in computing, while, in comparison, only 5% of the patents in biotechnology are there in a patent race. There are various reasons, which explain the frequency of patent racing in these areas. In general, the patents in communications and computing are considered weaker, in contrast to the ones in biotechnology. Moreover, companies in fields like biotechnology avoid entering a patent race by either collaborating with the competitors or researching the already existing areas to minimize the risk of paying for expensive medical trials. To be specific, they don't wish to end up without patent coverage.

Bottom Line

All the points mentioned above prove that a patent race is indeed prevalent in the real world and is crucial for innovation. Without any second thoughts, winning a patent race protects the innovators, which, in turn, enables them to take their research agenda to the next level. On the other hand, a patent race deflects the losers, causing them to do less follow-on work and having to 'invent around' the winners.

Ref: https://www.kashishworld.com/blog/what-impact-does-a-patent-race-have-on-innovation/ 

The Importance of Patent Search before Filing the Patent Application

Though quite often overlooked, a Patent Search is indeed a valuable tool that can help the inventors and innovators to a great extent in saving money, time, and effort and avoiding the common pitfalls involved in patent prosecution. Under the United States Patent Law, the invention has to meet the patent requirements for even the Patent Application to be considered. The invention has to be non-obvious, useful, new, and subject-matter eligible. After coming up with their innovations, the inventors wish to dive straight into the patent application process. They believe that since the invention isn't there in the market yet, it automatically meets the said requirements. Unfortunately, this isn't the scenario. With somewhere around 40 million patent documents already published across the globe and a million more added to this number every year - only a small fraction of these inventions end up reaching the market. The reasons behind the same may vary, with the most general one being the inventor failing in addressing the issues at the stage of patent research, disclosure, evaluation, protection, marketing, or licensing. Additionally, there is an increase in the number of patent applications filed as well. As per the reports issued by the World Intellectual Property Office (WIPO), in 2017, international patent applications had increased by 4.5% to 2, 43,500.

Not all the applications filed are successful in receiving a patent grant. The journey beginning from the conception of a unique idea to getting the patent registered can be a costly, time-consuming, and arduous affair. Therefore, it is highly advisable to be on the right track since the starting and conduct a patent search to get a clear idea of what kind of technology already exists. Undoubtedly, it will help the inventor in ensuring whether investing any further in his or her invention would prove to be fruitful in the long run or not. Furthermore, it is also imperative to make sure that your innovation is not infringing upon any already existing IP.

AVOID EXPENSIVE INVESTMENT DECISIONS

Without any second thoughts, filing a patent application, at the beginning itself, costs a lot more than conducting an adequate patent search beforehand. Going ahead with filing the patent application without knowing whether your invention meets the patentability criteria or not - makes no business sense at all. The consequences can be harsh in the long run, due to which, the inventors must analyze the results of the patent search before it is too late.

IMPROVE THE PATENT APPLICATION

By becoming a lot more familiar with the literature available in the field of inventions and innovations, the inventors can use the knowledge to their advantage and further implement strategies to draft the patent application. It will help the inventors by increasing the chances of getting the patent registered and also make the invention "litigation-proof" in the future.

GAIN A COMPETITIVE EDGE

One of the most intriguing benefits of conducting a patent search is investigating the already existing patents and the pending patent applications. By doing the same, inventors can gain useful insights into their competitors' corporate strategies and offerings and then accordingly make the business decisions. Technology maps, created as per the data obtained via the patent search, are specifically useful in this sense as they provide a precise visualization of the R&D expenditure and diversification of the competitors.

FINAL THOUGHTS

It is quite evident now that patent search has a significant role to play in the IP Protection puzzle. Despite the initial investment made, an inventor can save quite a lot of headaches down the road. Moreover, even if the inventor is an expert in this field and believes that his or her invention is unique and original in all aspects, there are still any great ideas that have been disclosed in patents and are not yet known to most of the people around the world.

Ref- https://www.kashishworld.com/blog/the-importance-of-patent-search-before-filing-the-patent-application/

Activists Urge Narendra Modi to Protect Drug Patent Rules

In India, the patients' rights advocates have recently asked Prime Minister Narendra Modi to decline any US proposal put forward to dilute the country's Patent Protection and price control regulations. The advocates argued by saying that such proposals may pose a serious threat to India's ability to provide affordable medical treatments, devices, and medicines to its people. Ahead of Modi's planned visit to the United States, he received a letter on September 20, 2019, from these public health groups, which also asked him to protect the Indian government's right to impose price caps on medical equipment and medicines. The letter shows the concern among the patients' rights advocates and public health groups regarding India's discussions of a possible trade agreement with the US, which may lead to changes to India's price control mechanisms and drug control regulations on medical devices and drugs.

The Patent Law in India allows the manufacturers to produce quite inexpensive generic versions of several drugs, ranging from anti-viral medications for HIV infections to anti-cancer medicines. The letter has further highlighted that India’s health ministry, state governments, and millions of its people are highly dependable on the affordable generic medicines, vaccines, and devices, which are domestically produced, and prevent and cure both communicable and non-communicable diseases. The signatories to the letter include the Cancer Patients’ Aid Association, the All India Drug Action Network, the Jan Swasthya Abhiyan (People’s Health Movement), and various other non-government organizations in the health sector. In 2017, the Modi government had imposed price caps on hip implants and coronary stents, which angered many sections of this industry that were demanding differential prices as per the characteristics and features of the medical devices.

The health groups also stated that various sections of the US industry are urging India to replace such price caps with rules and regulations that curb trade margins. The All India Drug Action Network said that the attempt to protect trade margin rationalization is a backdoor attempt to neutralize the price caps, which shall prove to be the most effective way of making critical medical devices and treatments accessible to the patients in the country.

In response to a US move to withdraw quite a few trade benefits to Indian exporters earlier this year, the Indian government had safeguarded its right to protect the public interest. The government stated that India would always uphold its national interests, like the US and other nations, and they aspire for better standards of living by keeping in mind the development imperatives and concerns of people. The public health groups have urged Narendra Modi to uphold this stand on a serious note.