Basically, Intellectual Property (IP) is divided into two categories:-

1. Industrial Property:-

Industrial Property again can be divided into two areas;

• One area can be distinctive signs for Trademarks (TM) that distinguish the goods or services of one enterprise or undertaking from those of other enterprises or undertakings.Geographical Indications (GI) that identify a good originating in a place where a given characteristics of the good is essentially attributable to its geographical origin.

• Other areas include Patents, Industrial Designs (IDs), Trade Secrets (TS) for innovation, design and the creation of technology.

1. Copyrights and Rights related to Copyrights deals with;

• Authors’ Literary works (e.g. novels, poems, plays, writings and books), Artistic works (e.g. paintings, sculptures, drawings and photographs), films, computer programs, musical compositions and architectural designs.
• Neighboring Rights include rights of performers (e.g. actors, singers and musicians), broadcasting organizations in their radio and television programs, and producers of phonograms in their recordings.

Intellectual Property Rights (IPR)

Deals with the legal rights granted to protect the creation of the intellect. These rights are same as of other property right. Rights allow creator or owner to get benefits by exploiting their creation.

IPR provides an exclusive right for the limited period of time to the individuals, enterprises and other entities to exclude others from unauthorized use, copy, sell, distribution or license.

Further Intellectual Property Rights are outlined in Article 27 of the Universal Declaration of Human Rights, which talk about the right to benefit from the protection of moral and material interests resulting from authorship of scientific, literary or artistic productions.

The Importance of Intellectual Property (IP) was first recognized in the Paris Convention for the protection of Industrial Property in year 1883 and the Berne Convention for the protection of Literary and Artistic Works in year 1886. Both treaties are administered by World Intellectual Property Organization (WIPO).

Types of Intellectual Property Rights (IPR) are:-

1. Patents
2. Trademarks
3. Copyright
4. Industrial Indications
5. Trade Secrets
6. Industrial Designs
7. Confidential Information
8. Layout- designs of integrated circuits

Before a patent application, it is important to conduct a patentability search in order to determine the invention is patentable or not. Patentability search includes an invention must be Novel, involve Inventive Step, Capable of being Industrial Application and should not be fall under non-patentable subject matter of Section-3 and Section-4 of Patents Act, 1970.

Filing of a patent application is a legal document to obtain a patent in India. A patent application has to be filed in a patent office as per the jurisdiction prescribed.

Who can apply for a patent?

Under Section-6 of the Patents Act, 1970, an application for an invention may be made by any of the following person;

• Any person claiming to be the true and first inventor of the invention;
• Any person being the assignee of the person claiming to be the true and first inventor;
• Legal representative of any deceased true and first inventor or his/her assignee;

Where to file a patent application (Jurisdiction)?

There are four Indian Patent Office (IPO) for the purpose of facilitating the registration of patents in India i.e. Kolkata, Delhi, Mumbai, Chennai.

Jurisdiction of the patent office is to be decided by the following criteria:

• Place of residence, domicile or business of the applicant.
• The place from where the invention actually originated.
• For a foreign applicant, the address for the service in India given by the applicant, when the applicant has no place or domicile in India.

Following are the four patent offices in India with territorial jurisdiction:-

Following types of Patent Applications can be filed:-

• Ordinary Application
• Convention Application
• PCT International Application
• PCT National Phase Application
• Application for Patent of Addition
• Divisional Application

 Patent Application can be filed by the following two ways in Indian Patent Office (IPO):-

• Offline Filing or Physical Filing
• E-Filing

After the identification of patent office, filing needs to be done:-

Forms required at the time of filing:-

• Form 1- Application for grant of patent
• Form-2-Provisional/Complete specification
• Form-3-Statement and Undertaking under Section-8(information pertaining to corresponding foreign applications)
• Form-5-Declaration as to Inventorship
• Form-26-Form for authorization of a patent agent/ or any person in a matter of proceeding under the Act.
• Form-28-To be submitted by a small entity/startup (in case of small entity/startup)

Documents required at the time of filing:-

• Declaration of Inventorship
• Statement and Undertaking
• Proof of right
• Authorization of patent agent
• Priority documents in case of Convention Application, PCT National Phase Application
• Permission from the National Biodiversity Authority if the application pertains to a biological material.

Filing of these two patent applications depends upon various factors which we will discuss later.

So first let’s understand these two patent applications individually, on what situation these two patent application file.

Convention Application:-

If the request for a patent is claiming the priority date of the same or a large extent similar patent application filed in one or more of the Convention countries, then it is called Convention Application.

To claim convention status, an applicant has to file the application within twelve months from the basic application in Indian Patent Office (IPO).

PCT International Application:

PCT stands for Patent Cooperation Treaty which is an international patent law treaty that provides a unified patent application filing platform that protects the invention in all contracting states.

Under PCT filing an applicant can file a single international application for a patent in a receiving office to seek protection at the same time in all the contracting member countries.

It takes approximately 31 months for the applicant to enter into various countries from the date of filing of PCT application.

Comparison of PCT and Convention route:-

PCT application has high filing fee as a comparison to Convention filing and with the same amount applicant cane file more than two to three Convention applications. So, when an applicant has a tight budget and wants to secure patent protection in only a few countries, then it is better to go with Convention Application.

In comparison with Convention Application, PCT application takes time in grant so when an applicant wants to protect his/her invention in very less time than it is better to go for Convention Application.

The need for filing Convention Application arises when an applicant wants to secure his/her rights in non-PCT member countries like in Argentina, Pakistan, Taiwan, Kuwait, Jordan, Kuwait, Saudi Arabia, Ethiopia, Eritrea then can go only with direct filing.

So filing of Convention Application or PCT Application depends upon business strategies, and for fulfilling business strategies applicant generally adopt both filing options as per their need, so it all depend on, where applicant want to protect his/her rights. PCT provides a platform where with a single application applicant can file his/her application in all PCT member countries.

It is often seen that filing strategies are a very complex task so, it is better to consult with the patent attorney and try to communicate about commercial and business planning so that better protection can be made

The inventor or applicants in search of new and better technology which can transform the world are creating new products which have lead human race to make this world a place of heaven with facilities. Patents are playing a prominent and important role in the entire technology life cycle, from initial Research and development to the market introduction stages including licensing, where competitive technologies can be protected with patents and licensed out to third parties to expand financial opportunities are creating a competitive environment around the world. This competition leads to the new invention and by exploitation of the existing technologies, a new and better product with advanced technologies are coming, helping the dire needs of human.

A patent can also be licensed to another party (a licensee), which permits that party to manufacture, use and sell the invention. In return, the licensor usually receives royalty payments from the licensee. The company getting the license to manufacture or sell the product or technology will do their research on particular product and technology and a new product can be expected by investing in research and development. The huge potential in technologies and inventions lead to the in-depth analysis of patents with the prior art and then shaping the future.

The latest trends in the technologies which will lead to the competitiveness among the companies and to introduce the newer and better products in the markets The unavailability of such information is unfortunate from an analytical perspective, since that information could be used to identify the utility of patents and the networks of patent information diffusion and application.

An Example of how the patent has changed the way in which the telephone invented by Graham bell and then got patent in year 1876, and after that how the patent help other inventors or competitive companies or person to think to make it more efficient and to reach maximum people across the globe. The invention of telephone in 1876 leads to the introduction of candlestick in 1900 and then introduction of rotary in 1940 where the function was to rotate the dialand then release but soon this products and technology were lagging behind as the AT&T in 1963, introduces the push-button or touch tone which allowed phones to use a keypad to dial numbers and make phone calls and most important was that a person can make the long distance calls sitting in another region. After this, the answering machine on telephone made the telephone to record the calls. The beginning of 1980 saw the change in the technology and products which lead to the invention where the telephone were replaced by the portable phones and people across the world can call to other one. It was in the year 1984 when first ever mobile phone was launched by Motorola and it actually shapes the world with dire needs to introduce the technology of signals and communications within a phone. Since 1984, the patent tug-of-war between Nokia, Motorola, Samsung, Microsoft, and Apple was there. As having a patent means protection for twenty years and other cannot use without prior permission from the inventor or from the applicant. To use the technology, the license should be granted and after that companies can use the patent and information so as to remain alive in world.

The patented innovation has performance innovation which increases the performance of the addition of functions,   the durable innovation which decrease in damaging effects, an ergonomic innovation which means more ease of use, economic innovation which lowers the costs and made it easy for the end user to reach.

The actual use of Patents in technical, business and legal information for advancement of technology and products can be used for a number of different and broad purposes including;

• Patented and non-patented literature of prior art searches to establish a baseline for technical research and development activities;
• To identify the key patenting trends with respect to technology in the same discipline or in inter-discipline patents and innovation patterns.
• Once patents have expired, the information is freely available for others to use and by way of dissemination of the information the people may reach to a new technology or new products.
• As the information related to Patent is public, patent databases whether paid or non-paid constitute an important source of technological knowledge of patented as well as non-patented literature. At the same time, individual patents are often only the part of a larger technology solution and written in such a way that know-how and other specific knowledge are required to fully deploy the invention to an economically profitable extent with leave a loopholes for new technology to immerse within the sphere.
• Patent trends can be analyzed to identify Research and Development trends with know-how and to forecast innovations. The portfolio analysis which includes number of patent filed in a certain field, the geographicallocation of patent filings, the name of filing organizations, applicants and inventors, the referencing of patents with prior arts and the patent families around the world is used as indicators of innovation. Patent filings are often relevant to markets formation, patent analysis can generate valuable information about market development, such as which fields of technology current businesses intend to enter in the years ahead.
• Patenting of an invention is an indicator of RD&D progress and which will result into key technology which will emerge or be successful in the market.
• Competitive assessments of patent information in combination with information such as GDP and RD&D investments can indicate the technology competitiveness of a country or the economic performance of a company or country.
• Quality patents will ultimately help to increase the marketplace as well as economic growth and will help to enhance further technological innovation.

Intellectual Property refers to assets that are intangible in nature, more particularly known as “creations of mind” that are given exclusive rights of protect for certain duration.  An Intellectual property can be created by business owners, entrepreneurs, creative artists, innovators, etc. The protection of intellectual property is a major question posed by all. The intellectual property can be protected in the following ways:

• Patents: A patent is an exclusive right granted by the government under Patents Act, 1970 over one’s invention for certain amount of time in exchange for full disclosure of the invention. It is granted to the owner of the invention that prevents others from making, using, importing or selling the invention without his authorization. A patentable invention may be a product or a process that provides a technical solution to a problem. The duration of the exclusive right is 20 years from the date of filing the patent. The owner can sell; license the patent to third- parties. For an invention to be patentable, it must satisfy three criteria:

1. Novelty: Under Section 2(1) (l) of the Patents Act 1970, the invention should not be known publicly, in any manner, anywhere in the world.
2. Inventive Step: Under Section 2(1) (ja) of the Patents Act 1970, the invention must be an enhanced technical contribution over the existing state-of-the-art. It must not be obvious to a person skilled in that particular field.
3. Industrial Application: Under Section 2(1) (ac) of the Patents Act 1970, the invention must be useful and capable of industrial application.

• Copyrights: A copyright protection is accorded to original works of authorship, such as literature, music, artistic works, and computer software that are in tangible form. The copyright protection is governed by The Indian Copyright Act, 1957. It protects the expression of ideas, not the idea itself.

The following may be protected under copyright law:

1. Literary works (e.g., written works, source codes of computer programs)
2. Dramatic works (e.g., scripts for films and dramas)
3. Musical works (e.g., melodies)
4. Artistic works (e.g., paintings, photographs)
5. Published editions of the above works
6. Sound recordings
7. Films
8. Television and radio broadcasts
9. Cable programmes
10. Performances

As the holder of the copyright, one has the exclusive right to reproduce, adapt, and distribute the work.  A copyright registration is voluntary in nature since it exists from the moment the work is created.

• Trademarks: Trademarks protect words, names, symbols, sounds, or colours that distinguish goods and services from those manufactured or sold by others. It also helps in indicating the source of goods. The trademarks are governed under The Trademarks Act, 1999. It can be graphically represented in the form of a logo or signature. A trademark, when registered is your property. By registering a trademark, the holder has the exclusive rights to use it, and no one else can infringe upon that right.

• Trade Secrets: Trade secrets are secret information used by a business that derives its value from being secret. There is no specific law in India on Protection of Trade Secrets. Trade secrets are protected in India under Indian Contract Act, 1872, under Section 27 which provides for remedies and also restrict any person from disclosing any information which he acquires at the time of employment or through contract. However, this provision describes only civil remedy and no criminal remedies. According to this section, any information must be highly confidential to be constituted as Trade Secret. Also, no registration procedures are involved for protection of a trade secret, and there is no specified time limit within which the secret may be protected. Information is considered as the trade secret by determining whether there has been a breach of confidence:
  1. The information was confidential to the business/company;
  2. The information has been revealed in breach of a promise of confidence;
  3. The information was used in an improper way that has resulted in financial damage to the business/company.

Important steps to be considered for protecting your idea, before converting it into a product:

1. IDEA WRITING: First important thing is to write your idea into a paper. What are the features of the idea? What is all about the idea is talking about? On a paper, you can write the title, abstract, specification, material used, apparatus used specifically which are required to manufacture it. What future potential you are seeing it after getting a patent? What market is it going to affect?
2. CONSULT ATTORNEY: Consultation with an attorney or advocate might give you insights of how to take a step forward in the market. Experienced attorney will help you doing market research and in patent search as well as convert your idea into the legal language which might help during patent filings so that you will not miss anything.
3. MARKET RESEARCH: After this, you have to conduct a market search that how the product is going to change the market. Few thing to be kept in mind doing the market research. What are the similar products which exist already in the market with same or similar to the idea, and if so, where are they selling and who’s buying the products? Who are your possible competitors? If competitors are already there, then what should be the price of the product so as to be reasonable to the public as compared to others?
4. INITIAL PATENT SEARCH: Initial patent search actually helps the idea protector to give insights about the existing patent for the technology or to the product associated. Based on the location, you can do the Patent search as some of the products might not be available in the same location or in the different locations. Attorneys will help you conducting a prior art search to find any existing worldwide in patented as well as non-patented literature. The freedom-to-operate analysis will help you building a legal opinion as to whether a particular product is considered to infringe any patent(s) owned by an individual or other organizations.
5. MAKE/DEVELOP A PROTOTYPE: Prototype is an individual that exhibits the essential features of a later type. Convert the idea into a diagram or drawing, or any product or professional product so that it can be shown to companies for licensing or to show it to the patent office for working. Make the prototype with the help of latest 3-D printing techniques. Once it is developed, it’s time to start bringing an idea to fruition. This prototype will help you to find the flaws in the product and if something is missed in the product, so it is an early stage to rectify the flaw and make a perfect product for the public. You can show the prototype product to the companies for licensing agreements.
6. CHOOSE BETWEEN MANUFACTURING AND LICENSING: After prototype, carefully choose what actually you want to do to with the product, either to manufacture by yourself or give it to a company to license it so that company has right to manufacture and sell. Well, chose it carefully as once the product is licensed, you will not be able to manufacture it and if you did, then infringement suits will be followed and that will be an extremely costly business. Manufacturing the product will bring question like an office, location with where to manufacture it, where to store raw materials, storage capacity and transportation. These things needed to be addressed as early as they can to avoid any possible future conflict.
7. FUNDING: Funding is an important part after a prototype is developed and you chose to manufacture it by yourself. You can seek help by asking Government to provide funds (Start-up funds in India), collaboration with governmental or non-governmental agencies, various research companies, crowdfunding, bank loans and microloans.
8. LEGAL REQUIREMENTS/STEPS: Legal requirements are going to be a huddle as if you have decided to go either for licensing or for manufacturing of the product, then you have to sign many documents like:
9. Technology transfer or know-how or technical assistant agreement

• Technology transfer or know-how or technical assistant agreement
• Source code escrow agreements
• Design and development agreements
• Settlement agreements
• Franchise agreements
• Royalty agreements
• Marketing agreements
• Distribution and sale representation agreements
• Material transfer agreements

One mistake while signing these documents can lead to a loss of money which you have invested, so be careful.

9. CONFIDENTIALITY: It is the dominant step or at supreme priority as once your idea is leaked, then all the above-mentioned steps are of no use, as everybody knows now what you are planning. Maintaining the confidentiality of your concept or idea is very important. Only tell those people to whom you can trust or better to keep it as a trade secret so no one would be aware of that.

It depends upon various factors on which an inventor can choose the best way for filing a patent application. Both provisional and complete patent applications have there on merits or demerits, which depends on the invention.

Provisional patent application

The Provisional Patent application allows you to file a patent application at the early stage of the invention. If the inventor is working on the initial or intermediate stage of the invention and still needs further experimentation then in this situation, it is better to file a provisional application.

So at this stage of filing a provisional patent application will give you the following benefits:-

• Do not need any formal format.
• Do not need any claim.
• Low filing fee.
• Less expensive.
• Secure priority date from the provisional filing date.
• Give 12 months time for filing complete patent specification.
• No complicated drafting skills needed, can be drafted by an inventor.

Also following are the demerits in filing a provisional patent application:-

• The Provisional patent application has to follow by complete patent specification so a provisional patent application can take a long time in granting a patent.
• Early publication in case of provisional patent application leads to loss of trade secret in the invention.
• Increase in total cost
• Inadequate disclosure risk involved

Complete patent application

Complete or non-provisional patent application allows you to file an application when the invention is in the end stage. when inventor think that there is no need for further experimentation then he/she can go for complete patent application filing.

The Provisional patent application must be followed by complete or non-provisional patent application within 12 months from the date of filing of a provisional patent application.

The Complete patent application involves following requirements:-

• Higher filing fees
• Complex format as per the Act and Rule.
• Claims and complete disclosure of the invention are mandatory.
• Not suitable for the inventors to draft, have to consult experts in this field.
• The patent office will examine the complete patent application.

So, from the above discussion, we can say that provisional or complete patent application should be the choice of the inventor. If the invention is in early stage and further experimentation is needed and if inventor is ready to take some risk then can go for provisional patent filing. But if the invention has high value in market and prototype is ready to make profitable investment in the market then it is better to go for complete patent application filing and should consult with the patent attorney for better preparation of a patent draft.

The statutory fees depend on who the applicant is. The Patent Rules, 2003(Amended in 2016) identifies three categories of applicants:

1. A natural person(s) and/or Startup: Filed by one or more individuals as applicants or by a Startup under Rule 2 (fb) of The Patent Rules, 2003.
2. A small entity, alone or with a natural person(s) and/or Startup: An enterprise under Rule 2(fa) of The Patent Rules, 2003 may qualify as a small entity if the enterprise is engaged in:

• Manufacture and production of goods- The investment in plant and machinery is less than Rs.10 crores.
• Providing or rendering services- The investment equipment is less than Rs. 5 crores.

3. Others, alone with or natural person(s) and/ or Startup and/or small entity

The fee for a natural person(s) and/or Startup is the least. A small entity is charged a fee which is greater than a natural person(s) and/or Startups but lesser than others- except small entity/ startup. The maximum fee is charged from others- except small entity/startup.

The Indian Patent Office allows an applicant to file a patent application in two modes:

1. E-filing
2. Physical Filing

An applicant is supposed to pay fee provided under the First Schedule of the Patent Rules, 2003 if he/she wishes to file a patent application through E- filing mode. The Indian Patent Office charges an additional fee of 10% of the total fee. If the filing is made through physical/hard copy mode, then such fees are also mentioned under the Schedule.

The table below gives a summarised view of relevant forms and fee to be payable at the time of filing a patent application:

Who is an inventor?

An inventor is an individual who has played a role in conceiving the invention or has contributed to the process of reducing the invention to practice. The person must have played a critical role in the process by using his/her ingenuity and creativity. Every person who has played such role gets a right to be mentioned in the patent document as an inventor, even though he might not be entitled to the commercial benefits of the invention.

It has to be noted that a company cannot be called an inventor. It has to be a real individual who has played a significant role.

Contrary to the popular notion, a person who has merely supervised the inventor or has acted under the direction or supervision of the inventor cannot be an inventor.

For example:

1. A person, though in a superior capacity and designation, has not played a role in the conceiving invention or reducing it to practice, cannot claim to be an inventor.
2. A lab assistant or a person maintaining the computer system cannot claim a right to become an inventor.
3. A person doing an internship and working under the guidance and direction of the inventor cannot claim the right to be an inventor.

Who is an applicant?

An applicant is a person who has the right to file a patent for the invention in the patent office. In India, the following persons get the right to file a patent for an invention in the patent office:-

1. The inventor himself
2. The assignee of the inventor
3. The legal representative of any deceased inventor or assignee

The applicant may either make the application in the Patent Office himself or jointly with any other person.

The assignee of the inventor is the person with whom the inventor has entered into a contract and given that person all the rights to deal with the patent. The assignee has all the rights to commercially exploit the invention. Generally, in course of an employment agreement, the employee assigns all patent rights arising out of his/her work to the organization. So the organization can file a patent as an applicant.

In another scenario, the organization in which the invention has been made may assign their patent rights to another organization. So the organization who gets the rights subsequently may file for a patent as an applicant.

A legal representative of a person is the successor of a deceased person. Patent rights are not exhausted with the death of the person holding such right. Their successors may also benefit from such rights till the expiry of the patent term.

Role of Patent Agent

The applicant is generally burdened with various responsibilities of the business. They might miss out on important formalities like filing documents with regards to patent application. These formalities are of paramount importance, as the Patent Office may refuse to grant a patent if they consider the delay to be neglectful and intentional.

Therefore, the applicant, in most cases appoints a patent agent who is a qualified professional for practicing before the Patent Office. It is the duty of the Patent Agent to prepare all documents and transact all business with regards to the patent.

A Patent Agent does not derive any benefit from the commercial exploitation of the invention, except for charging a professional fee for his/her services.

The most challenging task for a startup is to survive in a hostile environment with scarce resources. While for larger businesses funds are available in plenty, it becomes a challenge for an entrepreneur to prioritize and allocate optimal funds to each and every aspect of the business. It is important to remember that not all forms of intellectual capital can be converted to commercially viable intellectual property that suits the needs of the business. With a limited amount of fund, it is an unintelligent exercise to convert all the intellectual capital into intellectual properties, as creating intellectual property is a costly affair.

Therefore, it is important to create a mechanism to separate the wheat from the chaff and create high quality intellectual properties which can maximize the business value. This is the juncture at which there is need of a robust intellectual property strategy.

Further, certain key aspects of integrating useful intellectual property practices in day to day business of an organization is essential for establishing an intellectual property driven culture and securing a high quality intellectual property portfolio.

Intellectual Property Strategy acts as a link between the management of intellectual property and the business objectives. A rational IP Strategy is tailored according to the specific needs and capabilities of the organization and lays down the roadmap which on execution by the management produces an effective and valuable Intellectual Property Portfolio.

Intellectual Property Strategy seeks to achieve the following objectives:-

• Creating a robust system for streamlining worthy ideas which can be converted to Intellectual Property
• Giving support to long-term product development goals, not just ad-hoc innovations
• Setting up a system for analyzing Intellectual Property held by others to gather competitive intelligence that provides an informed understanding about the competitor’s position and strategy and saving yourself from surprises like infringing upon the patents of a competitor
• Saving resources in filing for patents which are not inclined with business objectives
• Standing out amongst other startups and getting the attention of investors who understands and values the sophisticated manner in which Intellectual Property should be handled
• Create awareness amongst employees regarding intellectual property and how valuable IP can be lost if adequate standards of secrecy are not maintained

Key Considerations in formulating an Intellectual Property Strategy

While formulating an intellectual property strategy, any business and a start-up in particular must keep some considerations in mind before they put the draft on the table. The considerations are:-

• Identification of the organizations that are holding the fundamentally important patents in the technological space in which the business is operating.
• The pace at which innovation is taking place in the specific technological area and how are other organizations adapting to that.
• The chances of forming strategic alliance with other organizations to invest or license in the technological space.
• The internal culture of the organization and how to integrate intellectual property as an integral part of that culture.

Role of an intellectual property professional in formulating IP Strategy

Formulating an effective Intellectual Property Strategy requires the expert knowledge of important internal practices which successful corporations follow throughout the world. Further, these practices should be affordable and aligned with the business objectives of the organization which would help the organization in creating a valuable intellectual property portfolio.

It is recommended that for creating a robust intellectual property strategy, the business owner must take the help of an experienced attorney who can help in crafting the perfect strategy which is absolutely in line with the business objectives which the organization wishes to achieve.