There are a lot of misunderstandings about the ever-greening of the patents. Few think it’s possible to get protection for the same invention repetitively after 20 years, and as a professional, I have an opinion that it’s not possible. Let’s try to understand how the ever-greening of patents can be done, how it can be enforced, and the advantages of ever-greening patents.

India, as a developing country, has defined many inventions as non-patentable. One example quoted by the Indian professional is Novartis. Yes, they tried ever-greening by trying to patent the Beta form of the same molecule. But this patent was refused by the India patent office, and even by Supreme Court stood by the patent office’s decision. The same patent was awarded in 30+ countries. But still, base requirements are there.

Similar things are impossible for engineering inventions.

Section 3 of the Indian patent Act:

Back to the topic:

The technologies related to basic engineering, like mechanical engineering, civil engineering, and electrical engineering have an extended lifespan of more than 20 years; therefore, it becomes crucial for the original inventor to try to protect such inventions beyond 20 years. The patents always get published. The competitors will utilize such published information to launch the same product after the patent expires. Create a barrier to create hindrance all to create an image, or in perception that still there is a patent live on that particular technology, people tend to file several patents with minor modifications.

There are always some modifications in the patent document, specifically in the claims when a new patent application is filed. Some modifications are required to get a grant for the new patent application. It is impossible to get a grant for the same claims again and again.

For example, suppose someone first filed a patent application for the IC engine while drafting a patent application. In that case, the drafter will draft a patent application with the entire construction and working of an IC engine.

If the same applicant/inventor wants to extend protection for the same (identical) IC engine, he cannot get it. Such an application will not be granted (there is no restriction on filing a patent application; all the criteria are for the grant only).

Then the same inventor will try to add some constructional element to the old invention and again file for a new patent. Such patent applications will have the same description and additional few sentences, a paragraph or a page write-up about the new construction features, and an additional sentence in the claim for the new features. Often the readers get confused and assume that it’s the same patent filed again, which is also the invention of the original inventor, to mislead the readers.

If this modification qualifies all 3 requirements of patentability, then it will be granted.

Patentability Criteria:

1. Novelty – Yes, such patent application, if granted, has something new.
2.Non-Obviousness (inventive step) – A patent application will be granted if the examiner fails to cite a document relevant to the inventive step. Owners of such miss-out are disclaimed by all the patent offices globally. So you can blame why they missed or how it got granted.
3.Utility (industrial application) – most inventions qualify this criteria.
While drafting such a patent application, the drafter creates an impression in such a way that it seems like the inventor is repetitively filing the same patent application for the same technology, and it is granted, but when you observe it minutely, you will see minimal differences which will qualify patentability requirements.

Examiner never misses a patent/application filed by the same applicant/inventor. He can miss patents filed by other applicants/inventors if there is a purposeful change in nouns and verbs used to describe the same invention.

Advantages of such patents:

1. The competitor will not sell the product blindly when he knows there are live patents on the product, and if he sells the same product in the market, the original inventor/patentee will take some legal action. Delay due to fear is the first advantage.
2.History of litigation/infringement suits by the original patentee creates more fear.
3.Some competitors may not launch the product ever. That is a complete win for the patentee. This is what he wants.

This is the advantage the original patentee gets by filing several patents on minor modifications he has come up with. Sometimes these modifications may not even use or implemented. It’s just for the sake of profile/fear. The competitors will take more time, spend more money on risk analysis, and always fear while launching the product. So these are the advantages a patentee gets by filing several patents on minor modifications.

I term such activity patent fencing, filing several patents with minor modifications around a technology. Few can be implemented, and few may not. The fencing can be done by the original patentee or by the competitors. The timing of patenting is crucial. Whoever does it first win? It isn’t easy to break such a fence.

The primary purpose of patenting should always be to block competitors and not seek protection. Protection doesn’t fetch money.

In developed countries, people are cautious and are keen to take legal action against the infringers. Things get much more difficult in these countries where the litigation cost also is very high.

If the infringer is a small company where he has not earned any profits, a legal suit may not be logical. Legal Notices can do miracle. The fear works, and it multiplies with such notices.

This is the advantage of patent fencing. Who does it first, wins.

Suneet Sabale

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