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One of our long time readers, Dr. V. Shankar, has sent us this nuanced guest post on some of the oft-ignored legal & policy issues regarding the registration of title of an Indian patent especially in its pre-grant avatar. By way of introduction, Dr. Shankar is a materials engineer and a registered Indian patent agent with Maxval-IP, a company that provides services and solutions to optimize patent lifecycle management. Maxval is head-quartered in Los Altos, USA and has operations in Coimbatore and Chennai.
I would once again like to remind our readers that they are free to send in guest posts of similar quality to any of our bloggers and we will be happy to run them on the blog. I’m tired of hearing Indian IP practitioners complain constantly about the system without really taking the time out to at least register their protests in public.
Ownership and Assignment of Indian Patent Applications
By. Dr. V. Shankar,
Registration of Ownership of Patents
Indian patent law recognizes a patent as having the character of an asset with laws applicable according to any “movable property” (section 50 (5)). Section 67 details that the ownership particulars of patents are to be maintained in the “register of patents”. “Patent” is defined in section 2 (1) (m) as any patent granted under the Patents Act. Thus ownership information on granted patents is maintained in the register of patents. However, in the case of published patent applications, there is no provision to record assignment or ownership, except at the time of filing the application when the inventors declare the ownership of the invention by their “assignee”, in case of inventions filed on behalf of a non-individual legal entity. In the published application the “assignee” is referred to as “applicant” and appears on the face of the published application. It would be helpful if recordation of ownership is provided, especially in the period between application filing and its grant as a patent.
Technology Acquisition and Licensing of Patent Assets
Any new technology that starts out as a patent application is disclosed first when it is published at the patent office. The publication serves as notice to the public of the existence of the technology for recognized public objectives and enables the inventor to proceed with obtaining commercial benefit for the invention. The inventor could then attract the notice of potential buyers, investors or licensees of the technology and give notice to potential infringers who could be approached after grant of the patent. A very important part of the strategy of companies is to keep an eye on the latest patent publications in the jurisdiction of interest, to be aware of competitor innovations as well as to identify potential opportunities for acquisition/licensing from academic or other potential sources of innovation and technology.
Any promising new technology therefore would reach the public when either an established player picks up the technology or the inventor takes it further for commercialization himself. For reasons ranging from technological to commercial and according to domain, the lifetime of any viable technology could vary widely from a few years to beyond the statutory 20 years and is independent of the statutory validity of the patent protecting it. Within this period, a considerable fraction, say, 3-5 years may be spent as a published application.
There arise questions that bear on this period such as:
· How will a third party verify independently, whether an IP asset in the form of a patent application is indeed owned by the original inventor or applicant?
· What happens when technology changes hands more than once before grant? Where will that information be recorded, if not in the “register of patents”?
In case of ownership change, a potential buyer of the technology has to contact the inventor(s) or the present assignee to confirm ownership. In case the applicant changes and a power of authority is executed in favor of a new owner, that document would be accessible through the Application Status tab on the Patent Office Website.
Information Provided by the IPO on Ownership of Patent Assets
Information regarding patent ownership is provided on enquiry under section 153, and rule 134 (1) (a) to (k) in respect of “patents and applications” as to when certain actions have taken place with reference to a patent or application. Specifically, rule 134 (k) states that information “as to when any application is made or action taken involving an entry in the register (of patents)”. Another way to obtain information on assignment is to request a certified copy of the register of patents as provided for in section 72. However, the certified copy would only include those items of information that are part of “public record”, and hence both the section 153 and 72 provisions exclude information on ownership prior to grant.
In other jurisdictions, UK patents act (1977) section 32(2)(a) provides for “registration of patents and published applications for patents”, the US MPEP refers to ownership and assignment of patents in section 301 and cites 35 USC 261 on ownership and assignability of “applications for patent, patents, or any interest therein” and to recordation of such “interest”. However, registration of assignment is not mandatory for applications. Section 72 EPC and rule 22 provide for recordation of applications for patent, which is again not mandatory. Thus ownership of technology represented in a patent application seems to be recognized by global patent regimes and is made available to the public from the date of publication.
The current practice in India is to obtain information relating to a patent or patent application under section 153 or 72 by sending a letter with stipulated fee by regular post for each item of information requested, to the appropriate patent office pertaining to a patent filing (e.g. for xxx/CHE/2008 the applicant or agent needs to write to the Patent Office at Chennai). The time taken for the patent office to respond to the request could vary from at least a month to between two to three months or even longer and may require frequent phone calls and personal visits. There is no provision at the present time to file a service request electronically. Further, there is no commitment on the side of the patent office as to when a service request will be acted upon. To be useful to businesses patent related information must be made available instantaneously or at least within hours or days. With improvement in a) availability of information online from the Patent Office website and b) the quality of that information through automation and online filing, formal information requests under section 153, rule 134 may lose relevance, except when required for court submissions. It is hoped that the forthcoming developments at the Indian Patent Office planned according to the Results Framework Document and slated for release by 2013 will address many of the above issues relating to availability of patent related information.