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PATENTING STRATEGIES FOR IT/ITES DOMAINSBy, Arun NarasaniFounder, ipMetrix Consulting Group

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Arun NarasaniFounder, ipMetrix Consulting Group (www.ipmetrix.com)

10 years experience in IP 5 years experience as a software engineer Vast experience in writing and prosecuting applications

Registered patent agent Certified Valuation Analyst Certified TRIZ Practitioner

Published journal articles in technology and law Co-authored a book on Indian Patent Law

B.Tech, IIT Madras PGPEM, IIM Bangalore

Speaker Bio

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Outline

2 International patent process

1 Patent process basics

3 Provisional patent

4 Role of inventor

5 Example

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Outline

2 International patent process

1 Patent process basics

3 Provisional patent

4 Role of inventor

5 Example

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Why patent?

• Patent provides the right to stop others

• Defensive• Publication

• Neutral• Patent application with narrow boundaries

• Offensive• Patent portfolio covering a broad scope

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When to file a patent application?

• As soon as possible (ideally)• Earlier priority date is important in a “first-to-file” world

• Plan around critical events

• Publication• grace period available for publication in a journal or disclosure before any

learned society or published by applicant

• Public display or use• No grace period• Public display in events notified by central government are exempt• Public use for trial purposes is exempt

• Sale• No grace period

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India patent process – timelines

File PatentApplication

(1M)

OptionalSearch

Publication(18M)

FER(42M)

RFE Deadline

(48M)

OptionalEarly Publication

Request

Grant(54M)

File RFE

Under normal Circumstances

SpecDrafting

(3 weeks)

Optional hearing

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Important steps in the patent process

• Search• Specification drafting and application preparation• Filing• Request for examination (within 48 months from priority)• Publication (18 months from priority)• Examination reports and responses (starts at about 24

months after application is queued)• Hearing• Grant (12 months from first examination report)

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Understanding wait time

Two options to reduce wait time:- Early RFE- Early publication: Reduce publication time

Wait time = Queuing + FER + Examination

Normal wait time = 1.5 Yr + 2 Yr + 1 Yr = 4.5 Yr

Reduced wait time = 3 Weeks + 2 Yr + 1 Yr = 3.1 Yr

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What application to file?

• Types of applications

• National application• Provisional• Non-provisional

• International application• Patent Cooperation Treaty (PCT, 148 members)

• Convention application• Paris convention (173 members)

• National phase application• Follow up application to an International application

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What are the typical costs?

• Indian patent costs anywhere between 1 L to 4 L

• US patent costs anywhere between USD 5000 to USD 25,000

• European patent costs are dependent on the number of countries chosen from European union• EPO patent costs about USD 10,000• Protection in specific countries in EU requires “validation” process

and may also require “translation” (if local country patent office does not accept English applications)

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How to reduce costs?

• Look for government schemes

• Funding for researchers in academic setup (DST): Research and patent funding

• Funding for SMEs (DIT): funding for international patents• Upto 15 L or 50%, whichever is lesser

• Patent information support for SMEs(TIFAC): patent search and filing support

• Many state level technology development initiatives also provide support to SMEs in specific niche areas

• Explore different engagement models with patent firms

• Reduce initial cost by engaging experts only for review

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Tips

Never wait to file RFE; file along with application

File request for early publication

Explore government funding schemes

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Outline

2 International patent process

1 Patent process basics

3 Provisional patent

4 Role of inventor

5 Examples

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Myth

File for one patent and that patent is applicable all over the globe

• Reality• Patent law and other IP laws are like any other law; they are

restricted to a country/territory• What is patentable varies from country to country

• Global patent does not exist

• There exists a single window filing process for multiple countries• enabled by an international treaty called Patent Cooperation Treaty

(PCT)

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PCT Stages

• International stage• International application through receiving office• International search report• International preliminary examination (optional)

• National stage• National stage application must be filed subsequent to the

International application• National offices will examine applicantions like they do with the

national applications

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International application process

Source: HANDBOOK OF BEST PRACTICES; © 2007. AM Schneiderman.

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International filing strategy

• File a national application• If US is one of the countries, then file US application separately

from PCT• US applications are examined faster

• Follow it up with the International application claiming priority from the earliest national application

• When invention not patentable in India, you have two options:• Obtain foreign filing permit and file abroad (ex: US)• File provisional and file subsequent applications outside India in

one or more convention countries

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How to choose countries?

• Primarily driven by market

• General pointers:• Key markets for ICT: US, EU• Huge markets and economies: China, Japan, and India• Large markets and economies: South Korea, Brazil, Russia, and

Mexico• Regions where translation is not required: Canada, Australia, and

South Africa• Proximity to region of interest

• US: Canada, Mexico, Brazil• India: SAARC nations

• Manufacturing driven technology: China• Software and ICT technologies: India

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Tips

Go for PCT if protecting in 4 or more countries

Use PCT to delay decision process

File US application before PCT when applicable

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Outline

2 International patent process

1 Patent process basics

3 Provisional patent

4 Role of inventor

5 Examples

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What is a provisional application?

• Provisional application allows for “booking” priority date without filing the full application

• Provisional application does not result in patent rights• Must follow up with a “complete” patent application within

12 months

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Myth

File a quick and dirty application without the secret sauce, and figure out the rest in 12 months

• Reality• Provisional application written too narrowly will result in losing of

priority date other subject matter

• Example:• Provisional application: Method to make orange juice (27th May

2012)• Non-provisional application: Method to make juice from citrus

fruits (20th May 2013)• Priority date applicable only to the methods of making orange juice• As a result, some claims will have 2012 priority date and some

2013 date

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When to file a provisional?

• Technology is evolving and the final shape is not clear

• Commercial viability of technology is not clear

• Funding is a constraint

• Technology is not patentable in India

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What are the benefits?

• Delay the commitment to the process and cost

• Reduce upfront costs • Adds to the overall costs by a small percentage

• Earlier priority date

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Best practices

• Think of provisional application as a non-provisional application without the boundaries defined

• Secret sauce need not be disclosed in a specification, if it cannot be reverse-engineered

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Tips

Get a detailed provisional application done

Use provisional only when necessary

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Outline

2 International patent process

1 Patent process basics

3 Provisional patent

4 Role of inventor

5 Examples

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Myth

Just talk to the expert and the expert will figure out everything for you

• Reality• No one understands the invention better than the inventor• However good the expert is, the inventor must spend time in

ensuring that all the relevant details are provided

• Entrepreneurs tend to “outsource” writing part• External counsel is different from an internal counsel• Ideally “expert” should be spending more time on claim and

strategy

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Role of the inventor

• Providing clarity on where the novelty lies• Helps patent professional to start on the right note

• Providing inputs on protection goals of the organization• Helps patent professional is writing effective claims

• Providing information on the various alternative implementations (whether minor or major changes)• Helps patent professional in writing detailed specifications that can

provide broader scope to claims

• Providing inputs on commercial environment and how the technology will actually be transacted• Help patent professional target potential infringers in writing the

claims and specification

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Tips

Reset your expectations for an outside counsel

Make it a collaborative process

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Outline

2 International patent process

1 Patent process basics

3 Provisional patent

4 Role of inventor

5 Examples

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Caselet 1:

• Invention: method for sending an SMS automatically transliterated based on user preferences

• Claim options:Method:• Method for transliterating SMS messages

• Cover transmitter side and receiver side together

• Method for transliterating messages• Cover only the transliteration of messages (one of transmitter or receiver)

• Method for automatically transliterating content based on an event (two claims – one for server and one for device)• Cover transliteration of content (one of transmitter or receiver)

Apparatus:• System for transliterating SMS messages• A device for sending a transliterated SMS• A device for transliterating content based on an event

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Caselet 2:

• Invention: method for CPU cache management for better performance of applications on handheld devices

• Claim options:• Method:

• Method for enhancing performance of applications on a computing device

• Method for managing cache in a CPU

• Apparatus• Device claim directed to the handheld• Device claim directed to CPU

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