by Dr. Kumar Padmanabh

Dr. Kumar Padmanabh is an expert in the space of IoT, and has worked globally in the research labs of British Telecom, Bosch and Infosys. He has 25 patents under his name from across India and USA.

Intellectual property is a kind of property manifested in the form of an intangible creation of the human intellect. A patent is a special intellectual property created by an individual inventor or a group of inventors. Law gives an exclusive permission to the inventor(s) to make commercial use of the same and prohibits others to use it commercially or otherwise, without the consent of the original inventor. This article explores the intricacies of intellectual properties, especially patents. It also explains how and which ideas could be patented, common laws related to it and patent protection, all of which helps promote the culture of invention. It also explains who should ideally file a patent

Patent is a right provided by law to the inventor(s) or to the assignee of the patent on their scientific invention for a specific period of time. The assignee is an individual or a company that has acquired this right from the inventor. Inventor and assignee apply for the grant of a patent to government agencies. A patent is immensely beneficial for a startup, as it gives it an exclusive right on the technology and hence creates a ‘moat’, an entry barrier for competition. The following section describes the benefit of a patent, technology that could be patented, types of patent applications, the process and its enforcement, infringement and prosecution.

When an idea for a technology is unique or novel, it is highly recommended to get it patented. A startup can benefit through patents in the following ways:

1. Minimize Competition: A patent prevents others to use the same idea. Purposefully or unknowingly if someone uses the same idea to draw commercial benefit, the original startup owning the patent can file a lawsuit and get compensated. A patent can be drafted tactically so that the competition cannot enter into the same business.
2. An alternative source of revenue through License Fee: A startup can allow other companies to do business based on its ideas in lieu of a license fee. A license fee could be a one-time fee or it could be based on a fee on each product sold/manufactured or for every service provided. It often happens that the original company stops business on the same but continues generating revenue based on licenses given out.
3. Funding: Investors generally keep their eyes open for ‘startups with wings’. A patented technology is a definite proof that the idea and technology used is novel. Given that the entry barrier patents create, it also adds to the comfort level for an investor, who would prefer a clear competitive advantage while funding.
4. For better R&D: This is a based more on my practical experience. One invention leads to others, and once the process and intricacies of patents are understood, it leads to companies building a strategy around them. Also, when a startup files a for patent, it is more likely that other patents in the area will also be generated. It, therefore, accelerates and creates a cycle towards stronger R&D.
5. Adds to branding value: A key KPI in a number of innovative companies are the number of patents filed. In the long run, a company which promotes a culture of R&D, and building patents, adds to its brand value by associating itself with ‘innovation’.

A patent could be broadly classified in two ways:

• Based on legal and statutory requirement, and,
• Based on technical content

Based on legal and statutory requirement: As soon as there is an idea it should be filed for a patent just to obtain a ‘priority date’. If a particular domain is a ‘hot sector’, it is likely that a number of researchers/innovators would be working in the domain. It is also likely that someone else could be working on a similar idea. A key point to remember is that the person who files the patent first would get priority worldwide. Hence a patent should be filed – FAST! However, the next key question is the place where it needs to be filed.  If the business is limited to a particular geography the patent should be filed in the corresponding countries. Also, based on future strategy and expansion plans of the product, this should be tweaked further. Following are the types of patent that one can file based on legal and statutory requirement:

1. Provisional Patent: If the idea is very ‘raw’ and it is likely that it will sharpen in the due course of time, then a “provisional patent” is recommended. Most countries give a year to file the final patent. A provisional patent gives a priority date and allows the idea to get matured in the process. It is to be noted that unless the provisional patent is finalized (within the course of the year), grant of the patent is not possible.
2. Conventional Patent: This is a traditional and ordinary style of patent application. It is complete in nature.
3. PCT Application: United Nation has an organizational wing that handles intellectual property, and is known as the WIPO (World Intellectual Property Organization). There is an international treaty known as the patent cooperation treaty and most countries have signed the treaty. This treaty allows international patent applications. Such international patent applications are known as PCT applications. Within a specific time period after filing a PCT application, one can file patent applications in any member countries of WIPO. This is a very helpful strategy for companies that have international expansion plans, but aren’t sure of specific geographies, which is generally case for any new company. Instead of spending money on multiple patents across countries, it makes sense to file a PCT, which gives the company time to expand, understand traction, and then file patents in the required target markets.
4. Patent of Addition: If an inventor discovers something new on top of an existing patent, he/she can add new claims (claims will be described in subsequent subsection). Priority date and time period would remain the same.
5. Divisional Patent: The technology related to an existing patent might get evolved further. There is a provision to divide the original patent into two or more patents. Such patent is known as divisional patent. However, priority dates of patents that spun off from the original one would remain the same as the original patent.

From a Technical Content perspective: It is to be noted that algorithms cannot be patented alone. However, copyright on algorithms is possible. Hence from technical content perspective, patents can be broadly classified into two categories:

1. A system patent: A system patent describes how a system can be built to do specific tasks. It consists of a unique design for the system.
2. A system and method:  When a unique design of a system and a unique operating procedure or method is required to do a specific task, it is known as system and method patent.

1. Preparing Idea Disclosure Document: A patent is a legal document and hence should be drafted by a professional who has experience of drafting patents. There are various law firms who have expertise for filing patents. They need a document called an ‘idea disclosure form’. Typically, an idea disclosure form has the following details: (1) Details of Inventors (2) Title of invention (3) Abstract of Invention (4) Details of the system and method of the invention with fine details including details on design of the system (5) Inventors claim, which is a description of novelty.
2. Patent Application: Based on the idea disclosure, law firms search patent databases and try to establish a unique proposition in the patent. Law firms check whether (i) The idea is unique (ii) That it is not an obvious derivation/deduction from previous ideas (iii) That nowhere in the world, this idea is available in the public domain.If these conditions are satisfied, the law firm/ patent attorney prepares a patent application. It essentially has: (i) inventive steps (ii) design of system and methods (iii) claims.The patent application is written to cover maximum possible application areas. However, the application is written in such a way that any other person with the same scientific understanding can reproduce the system by reading the patent application.
3. Filing of patent applications: The patent application is subsequently filed in the necessary government offices. There is an online mechanism also available. Government charges a fee which is differs from country to country.
4. Publication of Patent: Typically, after approximately 18 months, the patent application is published through the government official publication channel. However, an early publication is possible too in lieu of a fee.
5. Patent Examination: The applicant can initiate examination of patent. A patent attorney or a law firm can do it on their behalf. The patent examiner is an expert in the field and the patent examination is done to check the following aspect of a patent (i) Novelty (ii) Inventive Steps and (iii)the Application.
6. Grant of a patent: If the examiner concludes it as novel and innovative, a patent is granted for a specific period of time.  In a typical case, it could be 20 years. In some of the cases even if patentability is concluded as genuine, the government can deny a patent if it is against the general interest of the nation.
7. Rejection of a Patent: If there is an issue in the novelty, inventorship, steps taken or even the general interest of the nation, the patent examiner can reject a patent.

Some additional key facts about patents:

1. Inventorship: If there are more than one inventors, then there should be a non-ambiguous contribution in invention. If there is an ambiguity in inventorship, then the patent might get rejected even after the grant.
2. Implementation Requirement: Merely an idea is sufficient to file a patent. There is no need to even build a prototype or a product or a system to demonstrate the same.
3. Idea in Public Domain: Once the idea is available in public domain, or it is demonstrated in any exhibition or to a group of people from which it is likely to be in public domain, then it is not eligible for patent. The idea should also not be available in the form of an end product to the end users. The information related to patent should not be available in public domain before its filing. This is often overlooked but an important factor to be considered while filing patents.