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.

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:

• E-filing
• 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 summarized view of relevant forms and fee to be payable at the time of filing a patent application:

Generally, there are three requirements for an invention to be patentable:

1. Novelty :

An invention is said to be novel under Section 2(1) (l) of the Indian Patents Act 1970 if it is not known to public i.e., anticipated in any manner, anywhere.

2. Inventive Step :

An invention is said to constitute an inventive step under Section 2(1) (ja) of the Indian Patents Act 1970 if the invention involves a technical advance as compared to the state-of-the-art and has economic significance or both. Also, it must not be obvious to a person skilled in that particular field of invention.

3. Industrial Application :

An invention is said to be useful if it is capable of being used in industrial setting under Section 2(1) (ac) of the Indian Patents Act 1970.

A patentability search report includes analysis of an invention based on the aforementioned patentability criteria. A patentability search must be conducted in the early stages of the drafting of the patent application to assess whether the invention should be further proceeded with or not. An inventor is expected to provide a detailed description of the invention including figures, images, and any other information that helps in understanding the invention, a set of draft claims and invention disclosure statement to perform a patentability search.

A patentability search has the following benefits:

1. Helps in determining the strength of the invention as compared to the prior arts.

2. Saves prosecution time: An invention disclosure statement contains references in the form of prior arts which have been already addressed by the invention and during patentability search, thus reducing the prosecution time.

3. Helps in the better understanding of the invention and the prior art, thereby increasing the chances of better scoping of claims.

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 :

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.

In a country like India, where to meet the needs of the huge population, the manufacturing sector is growing at a rapid speed, and people needs to have more employment based on their qualification and interest of the area. The main idea to develop a Start-up is to work towards innovation, development, deployment or commercialization of new products, processes or services driven by technology or intellectual property. The start-up can become a lifeline of India as Indian has an enormous potential regarding great minds as well as in workforce.

The need of start-up in India is to give skilled person a chance to bring inventions and innovations into the lifeline. The Start-up means an entity, incorporated or registered in India which is not older than five years and whose annual turnover does not exceed INR 25 crore in any preceding financial year.

Action Plan for Start-up with IP insights :

• To provide Legal support and Fast-tracking Patent Examination at Lower Costs :

  The primary objective is to access to high-quality Intellectual Property services and resources, including fast-track examination of patent applications and rebate in fees. The value of the patent is tremendous once it has been realized that it can become a blockbuster drug or product or process. The timeline for existing patent examination stage is six months, but for start-up, the prosecution should be fast-tracked so that the start-up can realize the value of inventions and innovations and able to commercial it and reap the benefits out of it.

• Patent Facilitators :

  These will be the person who will help the start-up to:

  • For providing general advisory on different IPRs :

    The work is to give advice to the individual who is opening start-up on various types of IPR and how to use these IPR to secure the rights.

  • Information on protecting and promoting IPRs in other countries :

    This includes to help in facilitating and give advice to clients for filing patents in multiple countries either through Paris Convention (1883) or via Patent cooperation treaty (PCT) where an inventor or applicant can file the Patent application in various countries. It also focuses on providing information on the laws of different countries with their patent prosecution stages and what needs to be done at each and every stage.

  • Assist in filing and disposal of the IP applications related to patents, trademarks, and designs under relevant Acts :

    The work of facilitator is to give a hand to start-ups in filing as well as in disposal of IP application to the stage of a grant by advising them upon various stages to that no important dates should be missed.

  • To appear on behalf of Start-ups at hearings and contesting opposition, by other parties, till the final disposal of the IPR application :

    As start-up is not experienced in handling complex matters related to the hearings before controller or before the IPAB, Chennai and also in different Courts, it is the Patent facilitator who will appear with start-up to teach them:

    1. How should legal and patent documents be prepared?
    2. How to appear before controller?
    3. How to put argument before the controller or before the judge?

• Government to bear facilitation cost :

  Under this start-up scheme the Central Government will carry the entire fees of the facilitators for any number of patents, trademarks or designs that a Start-up may file, and the Start-ups shall bear the cost of only the statutory fees payable. The bearing of facilitation cost is the important for the amateur start-up to no to worry about cost as they have just to pay the legal fees related to filing documents or any fees associated with the IP prosecution at different stages. A 10,000 crore rupees has sanctioned to serve the purpose.

• Rebate on the filing of application :

  The government will provide an 80% discount in the filing of patents vis-à-vis other companies to different start-ups.

A report published under title of “Achievements of ‘Start-up India’ Action Plan” by Ministry of Commerce & Industry, Government of India providing information that Panel of over 422 facilitators for Patent and Design and 669 facilitators for Trademarks applications and, 104 applications have received rebate of up to 80% rebate on patent fees and also received legal assistance. This data shows that within one year, the number of people opening start-up and seeking legal and IP assistance is increasing and will help in building the nation high.

Mobile application patents are same as of software patents except that they run on a mobile hardware and interacting with various users. Now the important question here arises that can we get a patent on mobile applications.

Criteria for getting mobile Application Patents: A patent for any mobile application patented around the world, need to fulfill the basics criteria, which are:

Novelty :

The invention must be novel and for that, verify that there are no prior patents on an invention same or similar invention. A patentability report based on prior art or a patent search will confirm the novelty of patent applications. The invention should not be anticipated, i.e. published anywhere before or available in some other public forum of display or use.

Obviousness :

Inventive step is a crucial step, which means there has to be an element of innovation in your invention. An inventor cannot get a patent for mobile applications for an obvious invention.

Needs to have utility :

It includes capable of an industrial application so that invention has some features of being useful even.

In the United States, the patent has become a method of protection for software or mobile application. A patent is an exclusive right granted to an inventor for an invention, which comprises of either a product or process. The invention must follow the patentability criteria which includes novelty, non-obviousness, and utility.

The United States patent office have been granting patents to the computer implemented inventions or software related inventions based on the technical solution provided to the technical problem, known as the “technical character.”

The U.S. patent statute section 101, broadly defines patent-eligible subject matter as “any new and useful process, machine, manufacture, or composition of matter” and any improvements. But investors cannot patent laws of nature, natural phenomena, or abstract ideas. In 2014, the US Supreme Court in Alice Corp. v. CLS Bank International decided essential guidelines for determining patent eligibility for software.

The two-test for patent eligibility on abstract ideas is to identify :

• Whether the patent claim contains an abstract idea, such as an algorithm, method of computation, or another general principle; if not, the claim is potentially patentable.
• Whether the patent claims embodies an “inventive concept.”

The Court held that ordinary and customary use of the general-purpose digital computer is not enough—”merely requiring generic computer implementation fails to transform an abstract idea into a patent-eligible invention.” Further the exclusion of “abstract ideas,” the Court stated that the principle undergirding these exclusions is “pre-emption,” and which it related to the notion that patent law does not inhibit further discovery by improperly tying up the future use of these building blocks of human ingenuity.

In Europe, under Article 52 states that “programs for computers” shall not be regarded as inventions. In Europe, the main objection for the patent examiner is for inventive step. Article 56 states that “An invention shall be considered as involving an inventive step if, having regard to state of the art, it is not obvious to a person skilled in the art.” In Europe, the main objection given by examiner is for inventive step. If an inventor or applicant, overcome the inventive step criteria as well as technical character issues then mobile applications can be easily patents.

In India, section 3(k), states that Computer program per se is not patentable. In 2016, Indian Patent office came up with guidelines for Computer-related inventions (CRI) in which it clearly states that the computer program in itself is never patentable. If the contribution lies solely in the computer program, deny the claim. If the contribution lies in both the computer program as well as hardware, proceed to other steps of patentability. If the contribution lies only in mathematical method, business method or algorithm, deny the claim. If the contribution lies in the field of the computer program, check whether it is claimed in conjunction with a novel hardware and proceed to other steps to determine patentability on the invention. The writing of claims can also be the important criteria for getting a computer program to patent

From above information, it can be evidently concluded that mobile patent application are patentable around the different Patent office if the fit into the patentability criteria as well the recent case decision help the examiner to examine the mobile patent application and grant mobile 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:

• 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
• A lab assistant or a person maintaining the computer system cannot claim a right to become an inventor
• 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 :

• The inventor himself
• The assignee of the inventor
• 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.

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 an 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.

A patent is an exclusive or negative right given by a sovereign state to the inventors for their inventions to exclude others from making, using, offering for sale, selling or importing the product or process(s) for the limited period of time.

Patent provides a temporary monopoly for the product or process to the inventor for the limited period of time in the exchange of full disclosure of the invention with enablement, the best mode and know how requirements.

Patent protection is a territorial right, means if an inventor is taking protection in a particular country, he/she cannot extend his/her rights to other jurisdictions. If inventors want to extend his/her protection in other jurisdictions then inventors must file a patent application in each country where they want to protect their inventions.

Every country has their own laws or rules regarding the patent but the basic requirements are almost same.

In India patent is governed under :

• The Patents Act, 1970
• The Patents Rule, 2003

The term which is granted under the patents, Act 1970 is for 20 years from the date of filing of a patent application in a patent office as per the manner prescribed under the Act or Rule, but the patent rights are enforceable from the date of grant of a patent.

The patented invention deals with the following requirements :

Under Section 2(1)(m) “patent” means a patent for any invention granted under this Act.

The Requirement of Invention is defined under Section 2(1)(j) which says “invention” means a new product or process involving an inventive step and capable of industrial application.

So, the invention must be a new product or process, and having inventive step and also capable of industrial application.

The Requirement of inventive step and capable of industrial application is also defined under The Patents, Act 1970.

Inventive step under Section 2(1)(ja) says “inventive step” means a feature of an invention that involves technical advance as compared to the existing knowledge or having economic significance or both and that makes the invention not obvious to the person skilled in the art.

Capable of industrial application under Section 2(1)(ac) says “capable of industrial application” in relation to an invention, means that the invention is capable of being made or used in an industry.

One top most or can say first requirement of patented invention is “Novelty“, novelty as such not defined under the Act but it can be refer from New invention which is defined under Section 2(1)(l) says that “new invention” means any invention or technology which has not been anticipated by publication in any document or used in the country or elsewhere in the world before the date of filing of patent application with complete specification, i.e. the subject matter has not fallen in public domain or that it does not form part of the state of the art

So, for the patentable invention, a product or process must satisfy all the above three requirements i.e. Novelty, Inventive step and capable of industrial application requirements.

In addition, an invention also should not fall under the non patentable subject matter given under Section 3 and Section 4 of The Patents, Act 1970.

The inventor or applicants in search of new and better technology which can transform the world are creating new products which have the 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 the 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 another 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 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 the number of patents filed in a certain field, the geographical location 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 in 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