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PATENTING
STRATEGIES FOR
IT/ITES DOMAINS
By, Arun Narasani
Founder, ipMetrix Consulting Group
1
Arun Narasani
Founder, ipMetrix Consulting Group (www.ipmetrix.com)
 10 years experience in IP
 5 years experience as a ...
Outline
2 International patent process
1 Patent process basics
3 Provisional patent
4 Role of inventor
5 Example
3
Outline
2 International patent process
1 Patent process basics
3 Provisional patent
4 Role of inventor
5 Example
4
Why patent?
• Patent provides the right to stop others
• Defensive
• Publication
• Neutral
• Patent application with narro...
When to file a patent application?
• As soon as possible (ideally)
• Earlier priority date is important in a “first-to-fil...
India patent process – timelines
7
File Patent
Application
(1M)
Optional
Search
Publication
(18M)
FER
(42M)
RFE
Deadline
(...
Important steps in the patent process
• Search
• Specification drafting and application preparation
• Filing
• Request for...
Understanding wait time
Two options to reduce wait time:
- Early RFE
- Early publication: Reduce publication time
9
Wait t...
What application to file?
• Types of applications
• National application
• Provisional
• Non-provisional
• International a...
What are the typical costs?
• Indian patent costs anywhere between 1 L to 4 L
• US patent costs anywhere between USD 5000 ...
How to reduce costs?
• Look for government schemes
• Funding for researchers in academic setup (DST): Research and
patent ...
Tips
13
Never wait to file RFE; file along with application
File request for early publication
Explore government funding ...
Outline
2 International patent process
1 Patent process basics
3 Provisional patent
4 Role of inventor
5 Examples
14
Myth
File for one patent and that patent is applicable all over the
globe
• Reality
• Patent law and other IP laws are lik...
PCT Stages
• International stage
• International application through receiving office
• International search report
• Inte...
International application process
17
Source: HANDBOOK OF BEST PRACTICES; © 2007. AM Schneiderman.
International filing strategy
• File a national application
• If US is one of the countries, then file US application sepa...
How to choose countries?
• Primarily driven by market
• General pointers:
• Key markets for ICT: US, EU
• Huge markets and...
Tips
20
Go for PCT if protecting in 4 or more countries
Use PCT to delay decision process
File US application before PCT w...
Outline
2 International patent process
1 Patent process basics
3 Provisional patent
4 Role of inventor
5 Examples
21
What is a provisional application?
• Provisional application allows for “booking” priority date
without filing the full ap...
Myth
File a quick and dirty application without the secret sauce,
and figure out the rest in 12 months
• Reality
• Provisi...
When to file a provisional?
• Technology is evolving and the final shape is not clear
• Commercial viability of technology...
What are the benefits?
• Delay the commitment to the process and cost
• Reduce upfront costs
• Adds to the overall costs b...
Best practices
• Think of provisional application as a non-provisional
application without the boundaries defined
• Secret...
Tips
27
Get a detailed provisional application done
Use provisional only when necessary
Outline
2 International patent process
1 Patent process basics
3 Provisional patent
4 Role of inventor
5 Examples
28
Myth
Just talk to the expert and the expert will figure out
everything for you
• Reality
• No one understands the inventio...
Role of the inventor
• Providing clarity on where the novelty lies
• Helps patent professional to start on the right note
...
Tips
31
Reset your expectations for an outside counsel
Make it a collaborative process
Outline
2 International patent process
1 Patent process basics
3 Provisional patent
4 Role of inventor
5 Examples
32
Caselet 1:
• Invention: method for sending an SMS automatically
transliterated based on user preferences
• Claim options:
...
Caselet 2:
• Invention: method for CPU cache management for better
performance of applications on handheld devices
• Claim...
WWW.IPMETRIX.COM/WEBINARS
35
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Patenting strategies for Startups in IT and ITES domains Slide 1 Patenting strategies for Startups in IT and ITES domains Slide 2 Patenting strategies for Startups in IT and ITES domains Slide 3 Patenting strategies for Startups in IT and ITES domains Slide 4 Patenting strategies for Startups in IT and ITES domains Slide 5 Patenting strategies for Startups in IT and ITES domains Slide 6 Patenting strategies for Startups in IT and ITES domains Slide 7 Patenting strategies for Startups in IT and ITES domains Slide 8 Patenting strategies for Startups in IT and ITES domains Slide 9 Patenting strategies for Startups in IT and ITES domains Slide 10 Patenting strategies for Startups in IT and ITES domains Slide 11 Patenting strategies for Startups in IT and ITES domains Slide 12 Patenting strategies for Startups in IT and ITES domains Slide 13 Patenting strategies for Startups in IT and ITES domains Slide 14 Patenting strategies for Startups in IT and ITES domains Slide 15 Patenting strategies for Startups in IT and ITES domains Slide 16 Patenting strategies for Startups in IT and ITES domains Slide 17 Patenting strategies for Startups in IT and ITES domains Slide 18 Patenting strategies for Startups in IT and ITES domains Slide 19 Patenting strategies for Startups in IT and ITES domains Slide 20 Patenting strategies for Startups in IT and ITES domains Slide 21 Patenting strategies for Startups in IT and ITES domains Slide 22 Patenting strategies for Startups in IT and ITES domains Slide 23 Patenting strategies for Startups in IT and ITES domains Slide 24 Patenting strategies for Startups in IT and ITES domains Slide 25 Patenting strategies for Startups in IT and ITES domains Slide 26 Patenting strategies for Startups in IT and ITES domains Slide 27 Patenting strategies for Startups in IT and ITES domains Slide 28 Patenting strategies for Startups in IT and ITES domains Slide 29 Patenting strategies for Startups in IT and ITES domains Slide 30 Patenting strategies for Startups in IT and ITES domains Slide 31 Patenting strategies for Startups in IT and ITES domains Slide 32 Patenting strategies for Startups in IT and ITES domains Slide 33 Patenting strategies for Startups in IT and ITES domains Slide 34 Patenting strategies for Startups in IT and ITES domains Slide 35
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Intellectual Property (IP) is the most important asset for technology companies. However, protecting IP can be very tricky due to the fact that laws and procedures vary from one country to another. For example, something that is patentable in US may not be patentable in India. Also, some patents are more valuable than others. For example, under most circumstances, a US patent is valued more compared to a corresponding Indian patent. And, protecting IP can be a tedious and costly process.

The complexities in the process of IP protection present inventors and owners with the unenviable task of making difficult choices. And, needless to say, it is important for companies, especially those that have very limited resources like start-ups, to choose the right strategy so that they get the maximum value out of their investments in protecting IP. This session is aimed at helping owners and inventors in making those important choices.

Take Aways:

I. Overview of Patent process.

Overview will cover:
- basics of patenting process

II. Strategies for maximizing return on investment.

Strategies include:
- strategies for obtaining maximum protection with minimum cost
- strategies for obtaining strong protection for a technology?
- considerations for deciding on the countries for patenting an invention
- strategies for effectively protecting inventor interest and business interest at the same time

III. Case Studies.

Through case studies speaker will bring out:
- the importance of claim writing and a strong patent application
- the key steps where an applicant's attention is absolutely required throughout the patenting process

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Patenting strategies for Startups in IT and ITES domains

  1. 1. PATENTING STRATEGIES FOR IT/ITES DOMAINS By, Arun Narasani Founder, ipMetrix Consulting Group 1
  2. 2. Arun Narasani Founder, ipMetrix Consulting Group (www.ipmetrix.com)  10 years experience in IP  5 years experience as a software engineer  Vast experience in writing and prosecuting applications  Registered patent agent  Certified Valuation Analyst  Certified TRIZ Practitioner  Published journal articles in technology and law  Co-authored a book on Indian Patent Law  B.Tech, IIT Madras  PGPEM, IIM Bangalore Speaker Bio 2
  3. 3. Outline 2 International patent process 1 Patent process basics 3 Provisional patent 4 Role of inventor 5 Example 3
  4. 4. Outline 2 International patent process 1 Patent process basics 3 Provisional patent 4 Role of inventor 5 Example 4
  5. 5. Why patent? • Patent provides the right to stop others • Defensive • Publication • Neutral • Patent application with narrow boundaries • Offensive • Patent portfolio covering a broad scope 5
  6. 6. When to file a patent application? • As soon as possible (ideally) • Earlier priority date is important in a “first-to-file” world • Plan around critical events • Publication • grace period available for publication in a journal or disclosure before any learned society or published by applicant • Public display or use • No grace period • Public display in events notified by central government are exempt • Public use for trial purposes is exempt • Sale • No grace period 6
  7. 7. India patent process – timelines 7 File Patent Application (1M) Optional Search Publication (18M) FER (42M) RFE Deadline (48M) Optional Early Publication Request Grant (54M) File RFE Under normal Circumstances Spec Drafting (3 weeks) Optional hearing
  8. 8. Important steps in the patent process • Search • Specification drafting and application preparation • Filing • Request for examination (within 48 months from priority) • Publication (18 months from priority) • Examination reports and responses (starts at about 24 months after application is queued) • Hearing • Grant (12 months from first examination report) 8
  9. 9. Understanding wait time Two options to reduce wait time: - Early RFE - Early publication: Reduce publication time 9 Wait time = Queuing + FER + Examination Normal wait time = 1.5 Yr + 2 Yr + 1 Yr = 4.5 Yr Reduced wait time = 3 Weeks + 2 Yr + 1 Yr = 3.1 Yr
  10. 10. What application to file? • Types of applications • National application • Provisional • Non-provisional • International application • Patent Cooperation Treaty (PCT, 148 members) • Convention application • Paris convention (173 members) • National phase application • Follow up application to an International application 10
  11. 11. What are the typical costs? • Indian patent costs anywhere between 1 L to 4 L • US patent costs anywhere between USD 5000 to USD 25,000 • European patent costs are dependent on the number of countries chosen from European union • EPO patent costs about USD 10,000 • Protection in specific countries in EU requires “validation” process and may also require “translation” (if local country patent office does not accept English applications) 11
  12. 12. How to reduce costs? • Look for government schemes • Funding for researchers in academic setup (DST): Research and patent funding • Funding for SMEs (DIT): funding for international patents • Upto 15 L or 50%, whichever is lesser • Patent information support for SMEs(TIFAC): patent search and filing support • Many state level technology development initiatives also provide support to SMEs in specific niche areas • Explore different engagement models with patent firms • Reduce initial cost by engaging experts only for review 12
  13. 13. Tips 13 Never wait to file RFE; file along with application File request for early publication Explore government funding schemes
  14. 14. Outline 2 International patent process 1 Patent process basics 3 Provisional patent 4 Role of inventor 5 Examples 14
  15. 15. Myth File for one patent and that patent is applicable all over the globe • Reality • Patent law and other IP laws are like any other law; they are restricted to a country/territory • What is patentable varies from country to country • Global patent does not exist • There exists a single window filing process for multiple countries • enabled by an international treaty called Patent Cooperation Treaty (PCT) 15
  16. 16. PCT Stages • International stage • International application through receiving office • International search report • International preliminary examination (optional) • National stage • National stage application must be filed subsequent to the International application • National offices will examine applicantions like they do with the national applications 16
  17. 17. International application process 17 Source: HANDBOOK OF BEST PRACTICES; © 2007. AM Schneiderman.
  18. 18. International filing strategy • File a national application • If US is one of the countries, then file US application separately from PCT • US applications are examined faster • Follow it up with the International application claiming priority from the earliest national application • When invention not patentable in India, you have two options: • Obtain foreign filing permit and file abroad (ex: US) • File provisional and file subsequent applications outside India in one or more convention countries 18
  19. 19. How to choose countries? • Primarily driven by market • General pointers: • Key markets for ICT: US, EU • Huge markets and economies: China, Japan, and India • Large markets and economies: South Korea, Brazil, Russia, and Mexico • Regions where translation is not required: Canada, Australia, and South Africa • Proximity to region of interest • US: Canada, Mexico, Brazil • India: SAARC nations • Manufacturing driven technology: China • Software and ICT technologies: India 19
  20. 20. Tips 20 Go for PCT if protecting in 4 or more countries Use PCT to delay decision process File US application before PCT when applicable
  21. 21. Outline 2 International patent process 1 Patent process basics 3 Provisional patent 4 Role of inventor 5 Examples 21
  22. 22. What is a provisional application? • Provisional application allows for “booking” priority date without filing the full application • Provisional application does not result in patent rights • Must follow up with a “complete” patent application within 12 months 22
  23. 23. Myth File a quick and dirty application without the secret sauce, and figure out the rest in 12 months • Reality • Provisional application written too narrowly will result in losing of priority date other subject matter • Example: • Provisional application: Method to make orange juice (27th May 2012) • Non-provisional application: Method to make juice from citrus fruits (20th May 2013) • Priority date applicable only to the methods of making orange juice • As a result, some claims will have 2012 priority date and some 2013 date 23
  24. 24. When to file a provisional? • Technology is evolving and the final shape is not clear • Commercial viability of technology is not clear • Funding is a constraint • Technology is not patentable in India 24
  25. 25. What are the benefits? • Delay the commitment to the process and cost • Reduce upfront costs • Adds to the overall costs by a small percentage • Earlier priority date 25
  26. 26. Best practices • Think of provisional application as a non-provisional application without the boundaries defined • Secret sauce need not be disclosed in a specification, if it cannot be reverse-engineered 26
  27. 27. Tips 27 Get a detailed provisional application done Use provisional only when necessary
  28. 28. Outline 2 International patent process 1 Patent process basics 3 Provisional patent 4 Role of inventor 5 Examples 28
  29. 29. Myth Just talk to the expert and the expert will figure out everything for you • Reality • No one understands the invention better than the inventor • However good the expert is, the inventor must spend time in ensuring that all the relevant details are provided • Entrepreneurs tend to “outsource” writing part • External counsel is different from an internal counsel • Ideally “expert” should be spending more time on claim and strategy 29
  30. 30. Role of the inventor • Providing clarity on where the novelty lies • Helps patent professional to start on the right note • Providing inputs on protection goals of the organization • Helps patent professional is writing effective claims • Providing information on the various alternative implementations (whether minor or major changes) • Helps patent professional in writing detailed specifications that can provide broader scope to claims • Providing inputs on commercial environment and how the technology will actually be transacted • Help patent professional target potential infringers in writing the claims and specification 30
  31. 31. Tips 31 Reset your expectations for an outside counsel Make it a collaborative process
  32. 32. Outline 2 International patent process 1 Patent process basics 3 Provisional patent 4 Role of inventor 5 Examples 32
  33. 33. Caselet 1: • Invention: method for sending an SMS automatically transliterated based on user preferences • Claim options: Method: • Method for transliterating SMS messages • Cover transmitter side and receiver side together • Method for transliterating messages • Cover only the transliteration of messages (one of transmitter or receiver) • Method for automatically transliterating content based on an event (two claims – one for server and one for device) • Cover transliteration of content (one of transmitter or receiver) Apparatus: • System for transliterating SMS messages • A device for sending a transliterated SMS • A device for transliterating content based on an event 33
  34. 34. Caselet 2: • Invention: method for CPU cache management for better performance of applications on handheld devices • Claim options: • Method: • Method for enhancing performance of applications on a computing device • Method for managing cache in a CPU • Apparatus • Device claim directed to the handheld • Device claim directed to CPU 34
  35. 35. WWW.IPMETRIX.COM/WEBINARS 35
  • VidhyaBharani

    Oct. 24, 2021
  • Mirdhula98

    Sep. 20, 2017

Intellectual Property (IP) is the most important asset for technology companies. However, protecting IP can be very tricky due to the fact that laws and procedures vary from one country to another. For example, something that is patentable in US may not be patentable in India. Also, some patents are more valuable than others. For example, under most circumstances, a US patent is valued more compared to a corresponding Indian patent. And, protecting IP can be a tedious and costly process. The complexities in the process of IP protection present inventors and owners with the unenviable task of making difficult choices. And, needless to say, it is important for companies, especially those that have very limited resources like start-ups, to choose the right strategy so that they get the maximum value out of their investments in protecting IP. This session is aimed at helping owners and inventors in making those important choices. Take Aways: I. Overview of Patent process. Overview will cover: - basics of patenting process II. Strategies for maximizing return on investment. Strategies include: - strategies for obtaining maximum protection with minimum cost - strategies for obtaining strong protection for a technology? - considerations for deciding on the countries for patenting an invention - strategies for effectively protecting inventor interest and business interest at the same time III. Case Studies. Through case studies speaker will bring out: - the importance of claim writing and a strong patent application - the key steps where an applicant's attention is absolutely required throughout the patenting process

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