Just to clear apprehensions of few people who wrote to me, asking to justify the investments made on the patenting affair. I would like to say that, a patent is not simply a testimony of achievement but is a ‘proud list’ of your accomplishments; it is also and most importantly a resource to be developed, protected and used for the maximum benefit of the company.

Filing a patent is an indicator of innovation and any investor or customer will be more impressed with bunch of innovators.

Yes I do understand that how the cash-strapped startups strive hard to pay for IP legal work at this penny-pinching stage in their evolution. But now with the new breed of specialized patent research firms, they should pull off their worries.

All the Best
-Dilip

I have personally talked and met patent examiners in India. Truth be told, they are very helpful and co-operative. They encourage inventors to get patents.

We have been assisting corporates and individual inventors for their patent drafting needs for quite some time now. We have been appreciated for our understanding of technology domains and acumen for patent laws.

Please feel free to contact GreyB for your ‘cost-effective’ IP needs.

Chakshu Kalra
Founder – GreyB
chakshu.kalra@greyb.com
http://www.GreyB.com

I agree, it is really important for a company (especially startups) to justify their spending on IP protection.

Applying for a patent just to gain publicity may not be a good approach for a startup or any company for that matter.

Kartik
kartik.puttaiah@brainleague.com
Brain League

I agree that, a good attorney wth ‘expertise’ in your field could be an asset in a major way for drafting/defending IPR.
But for Indian ’startups’ it is very necessary to look whether the ‘effort’ is really worth it considering the cost. Coz some times, you might not have any major advantage than a bit of publicity. Indian system is to blame for that.

Let me address your first query regarding “Freedom to Operate” (FTO) using an example. Let’s say you want to launch a product in US. Now, you will have to determine if there are any patents in US which cover your product features/elements. If there are no such patent, then you have a FTO in US. However, if there are patents existing that do cover your product features/elements then some of the options that you have to avoid infringement are:

1. Design your product in such a way that it does not infringe on the claims of the relevant patent (I personally like this approach)
2. Invent around the relevant patent and apply for patents (time consuming). This could help you in cross licensing
3. Acquire the relevant patent or take a license from the patent holder

To determine FTO in India, you need to identify Indian granted patents/patent applications which are relevant to your product. However, unlike determining FTO in US, determining FTO in India is difficult, as Indian patent database is not easily searchable.

Regarding your second query, your understanding is right. If a person has a patent over his invention in US and not in India, then he cannot stop any one from copying his invention in India. However, he can definitely stop the product which is based on the copied invention from being imported into US.

Regards,
Kartik
kartik.puttaiah@brainleague.com
Brain League

Allow me to answer your question.

Before that I would like to highlight that patent rights are territorial in nature. Accordingly, a patent in the US will grant exclusive rights in the US only.

Coming to your points:
1. Freedom to operate searches help to identify whether a product may possibly be infringing on a patent. Before the launch of a product in a specific jurisdiction (or worldwide), companies generally get a jurisdiction-specific (or worldwide) Freedom-to-Operate search conducted for all the features of the product to avoid any legal hassles of infringement after launch.

In a Freedom-to-Operate study, the active patents in jurisdictions where the product is desired to be sold are searched. The claims of the identified patents are then analyzed to check if they might restrict the Freedom-to-Operate of the product in a particular geography.

2. As mentioned above, patent rights are territorial in nature, so if you have a patent in US, then someone can copy your invention and profit by it in India.

And yes, it does imply that you can commercialize an invention in India, if it is patented in the US but not in India. However, you must still do a thorough FTO in India before launching any product (even while copying a US invention) as there might be other patents covering various aspects of your product.

You can read more about IP services at (http://www.sagaciousresearch.com/index_files/Our_Services.htm ).

Hope this answers your question. I will be glad to address any other concerns that you might have.

Tarun
tarun.bansal@sagaciousresearch.com
+91-9313872266
http://www.sagaciousresearch.com

The point I want to make is that such start-ups need not limit their patenting efforts to India only, when their inventions have the potential of being used globally.

An exemplary case why start-ups should get their inventions patented:
I have a classic example here, and it relates to the most popular search engine worldwide – yes probably the same through which you searched this blog. And this example is not about how that big company made billions due to their patents, rather it is about how it had to pay for using a start-ups patented technology.

This search engine’s founders (SEF) were looking about ways to make money through advertising, but not by banner ads. But they were not able to get any clue how to do that, until they met IdeaLabs founder (ILF) who told them about his keyword-specific advertising idea. SEF walked away without any conclusion, but developed an advertising system based on ILF’s idea in a few days. Thankfully, ILF’s idea was patented and hence he was able to make money (and plenty of it) out of this misuse (theft) of his seemingly very simple idea. Just imagine, most of the revenue of this search engine are earned through this technology. And now imagine the money that ILF is making out of it. What made it happen was ‘just one patent’.

And believe me, most of the inventions of Indian start-ups are better than the one explained above. So, now you can estimate their worth. Is it not worth investing some initial amount for patenting.

Addressing Leo’s concerns, I would like to hint the following few points:
1. Indian Patenting Scenario: Government is taking very aggressive steps in promoting Intellectual Property Awareness and Enforcement. So, there are chances that the time required for getting a grant may reduce. Although, it is just a speculation at this moment.
2. Patent filed by Leo: I agree with Kartik that no good attorney/ agent in India will charge so less for patent drafting. And that is probably the reason for those multiple iterations.
3. Patenting in Foreign Countries: Regarding patenting in foreign countries, I agree that patenting in foreign countries might be costly but would specifically like to mention that Sagacious has international collaborations through which we have helped several start-up companies in filing excellent quality foreign patent applications, very cost effectively (saving more than 50% of the total amount while utilizing firms with more than 5-10 years of IP experience).

Sagacious have developed a nice and informative presentation that explains the whole process, costs involved and its benefits for start-ups, which I will be glad to share via email.

4. Not patenting everything: I perfectly agree with Leo that one should not blindly invest in patenting all their ideas. A thorough research should be conducted to identify the ideas that are worth patenting before investing into the patenting process. Again, even this research should be done in a cost-effective manner using experienced people. Sagacious has developed a methodology especially suited the budget of a start-up for quick filtering of ideas, and finally identifying ideas worth-patenting.

In nutshell, it is important for Start-ups to get their inventions patented but only after a thorough research. This is much like doing research that you generally do before making any huge investments.

Hope that the above discussion is helpful in highlighting the importance of INTELLIGENT patenting. I will be glad to address any concerns related to patenting, including ‘What to patent?’ and ‘How to do it cost effectively?’.

Tarun
tarun.bansal@sagaciousresearch.com
+91-9313872266
http://www.sagaciousresearch.com

Could you elaborate on 2 points you had mentioned,
1)’Freedom to Operate’ (FTO)
2) If you hold a patent in, lets say US and not in India, then any one can copy your invention in India

Does it imply that you are free to commercialize any product which is patented in US and not in India ? Cant the innovator company in anyway block you from doing so ?

Regards,
Kartik
kartik.puttaiah@brainleague.com
Brain League

1)Indian patent search done by most of the ‘Authorized patent attorneys’ in India, can’t guarantee a perfect report. This is primarily due to lack of a unified database where you get details about published/applied patents, like in case of US patents. Also as patents could be filed in various patent offices across the country, you might end up applying for a patent which is already been applied by someone else with an earlier priority date.

2) Indian patents takes a very long time to be granted. You better file it and forget it. If so, why file it ?

3) International patents do give an advantage, but is a very very expensive procedure involving atleast Rs.3-5 lakhs (+ extra charges for lawyer representation)per patent. Also even after PCT implementation, others can still copy cat the product and commercialize in India…if it is not granted a patent in India.

4) A very interesting thing about patent lawyer fee. For an individual to file a provisional patent in India, the official fee is just Rs. 1000. Where as the lawyer charges anywhere between Rs. 10000 to Rs.25000 for the same. Even then, I ended up correcting many times, the patent document they generated.

5) My opinion is that, it is better for Indian startups to concentrate on other barriers of entry such as ‘tie-ups, suppliers, distribution networks, brand etc…and don’t DEPEND on IP protection in India.

6) I have seen startups proudly displaying ‘PATENT PENDING’ in their presentations, even when they have just filed a provisional patent application which has no value other than getting priority date. Many investors also donot understand this.