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What is a Patent, a Document or a Technology?

Just to start with, patent drafting can cost you from INR 40,000/- to INR 1,50,000/- in India, USD 4,000/- to USD 10,000/- in Europe, USA, Canada, and most of the developed countries outside. Drafting and prosecution cost is much high than the government fees, WHY? Can a non-patent professional draft a patent, YES. then why to spend so much. This question brings us back to the basics:

What is patent? As a layman I can say, my technology is protected by a patent, correct. So what is protected? Technology or the document containing the technology? Basically it starts with the technology, the patent document is drafted to protect the technology in such a way that:

1. No one copies your technology,

2. No one can get around your technology by doing minor modifications, and

3. To create an infringement trap for other, border the claims border the trap.

Yes, the patents are drafted for protecting the invented technology, but the patent documents submitted in black and with the patent office cover border area, protecting things beyond your technology. Now its no more a technology, its a document defining what is protected and what is not. Therefore, drafting of a patent is totally different from drafting a technology description. Some practitioners falsely refer to the patent drafting as an art of writing technology in complex way. Rather I would say, the patent document should be written in such a way that any person with ordinary skills in the domain should understand it just by reading.

This is also one of the requirement of the patent act’s globally, which is referred as “Enablement”. According to the Indian Patent Act, “The details of invention described should enable a person skilled in the art to reproduce the invention into practice without further experimentation.”

Mostly in India patents are rejected due to:

1. Incomplete disclosure;

2. Missing our inventive elements;

3. Non-including of test results in case of biotech and chemical invention;

4. No proper diagram or diagram with legends; and

5. Other compliance required of the respective patent offices.

Valuable invention are lost due to such mistakes. As ever patent application gets published in the patent journal, there is no scope left to refile the invention again for patenting. If the patent application is not granted due to some drafting mistakes, this invention becomes public property, you cannot stop any one from using it. All the efforts along with the money are wasted. Some people know few requirements of the patent document, therefore they draft and file it on their own. In most of the cases such drafts are narrow enough to just protect their invention giving ample opportunity for other to bypass the patent by doing minor modifications. Narrower the claims, easier to get a grant for a patent and more is the opportunity for other to get around the patented invention. Many practitioner also tend do this mistake due to lack of understanding of the technology and drafting skills.

At such instance, many inventors get demotivated, when they find that even after getting grant, the patent document falls short in effectively stopping competitors. Many international companies understands the value of the patent drafting and hire firms accordingly. These selections are based on quality and not on lowest cost. Its unfortunate, that still many domestic entities don’t view this as an investment but as an expenditure. Patent numbers are high but value is less. To avoid such disappointments, inventors and/or applicant should make sure that the patent consultant understands the invention correctly.

Once both are on same page the patent consultant can start drafting. Thereafter, inventors and/or applicant should review the document to check specifically claims and description. Claims should be broad enough to give wider scope of protection, more broader claims may also fail to claim novelty. Its very tactical to decide to what extent the claims should be broad so that it does not fall into prior-art. Description should describe the entire invention and should include all the contents provided by you. For assigning or licensing the patent, the patent document is checked for its coverage and not the technology.   Broader the coverage more is the value of the patent, lesser the coverage lesser is the value of the patent.

Selling or Licensing a Patent (Invention)

This is a long discussed issue. Many of my clients and friends have asked me about how to License or sell a patent to get bigger monitory gains. Everyone finds it little difficult to start manufacturing or assembling the product on their own and then selling it. As we all know the pains of manufacturing industry. Yes, it is easiest way of commercializing of the invention/patent. But the success rate is as low as 2-5% even below. In last few years I have seen many companies listing services like “commercialization of IP” promising inventors that they will help them to sell or license their patent application/patent. How many of such patent have licensed. ? It’s a big question. Most of the big companies do licensing and selling regularly, the problem I am trying to address is of independent individuals or small companies.

Most of the inventors/applicants tend to develop inventions based on their understanding and their perception, without considering any external factors which means they are providing a solution, which may not be relevant or may not be what a company is thinking to do in near future.

For Example: Many patents are being filed by MIT – Massachusetts Institute of Technology through their students. What they do with these number of patents. Are most of the patents licensed, sold. MIT helps its students to form a company around these patents which means inventors themselves manufacture and sell their patented products. This is the best tried and tested way. The vision with which the product is invented is best known by the inventor. He is the right person who can convince the advantages of his product and influence the market to buy the product. This vision mostly cannot be transferred and cannot be equally convincing for others. Does that mean patent licensing is a myth? Certainly not. We have also seen many inventors doing it successfully for more than one technology. If you have decided that, you don’t want to manufacture and sell the product that you intend to patent and want to license or sell it out. Then you need to do a little homework first, even before thinking about the invention.

Following the given steps may maximize your possibilities to sell or license your patent/technology:  

1. Do a general research, which industry, more specifically which company (based on our research abilities) you want to license your invention;

2. Try to find out what kind of products company had launched, if you are able to find all the patent filed by the particular company, that would be great. Patent will give insight to the products that are about to be launched in near future;

3. Based on the most recent product either filed for patent or launcher, try to identify problem and technical solutions to the same. Even you can come-up with some other product, which the company may like.

4. Restrict your research area around the products of the company. If it is possible, you can meet the R&D head or concern person well in advance and ask him, if the solution or the product that you have thought of is of their interest or not. To be on a safer side, file a provisional specification before discussing this with the company, just to safe guard your interest.

5. Thereafter, start inventing your time in further research and finalize the product.

6. If you think your product development is complete and the final product is ready, draft a complete (non-provisional) specification and file it with respective office, if you think your product has international value, then filing PCT application before demonstrating the actual product would be recommended. Most of the inventors think good product can generate good value. True, you can get a good deal cracked. But when it comes to patent, your product is no more considered for valuation, but the patent document is considered. Stronger and wider the protection, more is the value. If the patent document is too narrow, the company or any other competitor may easily get away with your invention, even if you have patent. This not what any buyer would like. Therefore, get at least correct value, the patent document should be correctly drafted with wider scope. This will prevent competitors from design around your patent by doing minor modifications. Granted patent has more value than applied one. Now, you are ready to get your product licensed.   Following these steps will maximize your chances of getting your product licensed or even sold at good value.