The Hindu Business Line : Some patent choices

Applying for patents is an invaluable investment for any up-and-coming business, in any field. High-technology companies are often in the spotlight when it comes to intellectual property and its prosecution thereof.

This article addresses any entity caught in the conundrum of which IP strategy makes the best economic and legal sense. At the outset, one caveat is that one size will never fit all. India, being a signatory to the Patent Co-operation Treaty (PCT ), now offers a variety of paths to companies, big and small, and individuals looking to enhance their intellectual branding through patents.

Participants in process

Several entities participate in a successful patent application, the first and foremost being the individual inventor or the company applying for patent rights on their invention. Second is the entity that is involved in drafting these patents, for submission at the patent offices, backed by a legal firm that prosecutes such an application from end-to-end. Finally we have the patent offices that actually docket these applications and enable efficient patent practices.

Legal rights are granted based on the jurisdiction in which they are applied and filing, prosecuting and obtaining for a patent at the Indian Patent Office affords one rights within India.

The PCT proposes a system of world-wide filing wherein a disclosure is made public, giving the inventor or company a global stage to showcase the invention and claim priority on their ideas. India being a signatory to the PCT implies that patents applied for in India, if converted to a PCT filing within the prescribed time-period, will be afforded priority based on the date on which the patent was filed in India.

This, as opposed to filing a PCT application in the first shot, affords an inventor or a company a slightly lower expenditure while allowing them to fine-tune their ideas before applying for a PCT application.

Common question

The most common question in the minds of inventors and small and medium companies is whether they should simply apply via the PCT route in the first shot, or apply for an Indian patent and then wait to apply for a PCT, or simply rush to the USPTO or the European Patent Office and apply for a patent in what might be a company’s primary market (the US or Europe or wherever, depending on the company).

There are two factors to consider while making these choices and answering the above questions — visibility and cost-effectiveness. Visibility refers to the requirement of the inventor/company for marketing their ideas to venture capitalists, team leads, product managers or potential licensors or companies interested in their patents.

Cost-effectiveness is simply the mileage gained, in terms of bargaining potential, per Rupee and man-hour spent on the patenting process.

Visibility can be maximised in the patenting process by bringing the patent to the stage of publication, either at the local patent office or the World Intellectual Property Office (WIPO) that lodges PCT applications. Publication usually takes 18 months at the WIPO and a little less at the Indian patent office, with options to expedite the same.

Cost-effectiveness is the focus of this proposition and a first-filing in India, for Indian companies, whether they have global or local portfolios, is the best option. A first-filing in India, coupled with a PCT application in due course, optimises both visibility and return on investment (ROI), as far as patents are concerned.

Infringement concerns

Infringement continues to be a big concern in the area of Intellectual Property with the causes being distributed across attrition, competition, unfair trade practices, etc. These patterns are particularly prevalent in the high-technology sectors, accenting the need for IP protection on the home front. An Indian company with a global presence patenting in the US or Europe alone leaves its backdoor pretty wide open.

I have heard several confused arguments about patentability of certain ideas in the high-technology areas, in particular, software. My contention is that Indian Patent Law has kept up with the rest of the world. The realities of patentable ideas have simply been lost in translation.

For example, in 1998, Microsoft Corporation applied for a patent at Kolkata titled ‘Method for integrating a virtual machine with input method editors.’ There exists an urban legend amongst IP practitioners that software is not patentable in India with no further substantiation for the argument.

These advisors might also create an impetus for Indian companies advised by them to rush to the USPTO or the EPO to file for their patents, since these two jurisdictions do “allow” for software patents, whatever that might mean. This is totally unnecessary since filing such an application in India gives a company the most cost-effective starting point to fence its intellectual property at home.

Success stories make strong case

A global IP portfolio is a key differentiator for all companies and research organisations and several success stories make a strong case for such an investment. From an individual’s perspective, the story that I find most endearing is that of Sridhara Benne.

In the early 80s, Benne filed an Indian application titled ‘A Column’ describing a structure to withstand compressive stress. This was followed up with a US application titled ‘Sleeved compression member’ for the same structural concept. A PCT filing by the same inventor was made in 2000 titled ‘A sleeved bracing useful in the construction of earthquake-resistant structures’ with local prosecution of the patent in India and the US.

This individual’s patent portfolio extends past these two key patents but gives us an insight into the paths that are possible for individuals or organisations to take, when considering a global patent portfolio.

A big player in the area of patents, Bajaj Auto has around 25-odd PCT applications but more than twice that number of patent applications worldwide, depending on its regional partnerships, collaborations and interests thereof.

Research organisations such as the Indian Institute of Technology and the Central Food Technology Research Institute regularly file Indian patent applications with follow-throughs based on markets for their technology.

Thus, we see that many paths present themselves, when aspiring for a cost-effective patent portfolio that serves the purpose of providing an individual or an organisation visibility and rights on their intellectual capital. India being a signatory to the PCT offers Indian citizens some time to chalk out a strategy for global patenting by starting with an Indian patent application, which retains their priority date (the date of filing, which is the date from which an idea is granted legal protection). Following through on Indian patent applications with global applications, on the inventions that best characterise the ‘Eureka!’s within an organisation offers global presence and competitiveness.

Fencing a company’s IP at home is imperative to avoid the loss of capital via infringement prevalent in certain sectors. Pitfalls such as a lack of understanding about which inventions Indian Law considers patentable can be avoided by doing a bit of due-diligence and keeping in perspective that the law here has been allowing a lot of technology primaries to patent their ideas, for two decades and counting.

The author is CEO, PatNMarks.

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