BUSINESS BRIEF: INDIA
of more than 30 sheets, a fee of INR 100 ($2.20) per sheet for each extra sheet has to be paid.
• Additional cost for additional number of claims—Te IPO accepts a patent specification which has up to 10 claims (no limitation on independent claims) without charging any extra fee. However, for a specification having more than 10 claims, a fee of INR 200/claim ($4.50) for each extra claim has to be paid.
• Opposition proceeding—A person may
defend a patent by either initiating opposition proceeding (Form 7—INR 1500 [$33] or contesting the opposition (INR 2500 [$54]) either prior to or post grant of patent.
Is there anything unusual about the patent law that companies should be aware of? What are the most common mistakes businesses make?
India, like most of the world, has a ‘first to file’ patent system as the law. Businesses or inventors must watch out for the following common mistakes:
1) No publication of inventions in newspapers or scientific and technical journals and/or on the Internet before applying for the patent.
2) Non-filing of request for examination that is, Form 18, within 48 months from the date of priority in India could lead to abandonment of the patent application.
3) Payment of annuity regularly (Fee of INR 500-5000 [$10-100] for a natural person varying for each year of 20 years), aſter patent is granted.
4) Working of patent certificate has to be filed annually (Form 27). Tis has been recently notified to be enforced. Te fine for non-filing may extend up to INR 10,00,000 ($20,000).
What are the key threats to patent owners, and what is the best strategy if you suspect someone is infringing your patent?
A major threat to any patent owner is that of
www.worldipreview.com
infringement by employees, ex-business partners and/or any third party.
As a patent owner, the onus is on the patentee to identify any third parties that may be infringing their patent rights. Tus, the patentee is advised to adopt measures such as:
• Monitoring competitors; • Monitoring the likely trade channels; and •
Reviewing regularly relevant scientific journals or the Internet.
What are the best strategies for dealing with the problem?
If you suspect someone is infringing your patent, the strategy to be adopted could either be conceptual or competitive:
Conceptual strategy • A series of related inventions to build a ‘fort’ around a product/technology. Tis facilitates in using them as a tool against competitors;
• Number of patents in a technology that will fit together like a jigsaw puzzle;
• Filing of successive patents to maintain some type of continuity of monopoly or exclusivity of the patent. However, evergreening of patent applications should be avoided, as observed by the Supreme Court of India in the case of Novartis AG v Union of India. Te court in this case refused to allow Novartis to patent a new version of its cancer drug Glivec. Te court observed that Novartis failed to establish its eligibility for patenting under Section 3(d) for the beta crystalline form of imatinib mesylate, whereas an earlier patent for the same medicine existed for its salt form. Te court verdict goes on to say that: “It will be a grave mistake to read this judgment to mean that Section 3(d) was amended with the intent to undo the fundamental change brought in the patent regime.”
Competitive strategy: ‘come and infringe’ • Monitor the competition to identify potential infringers;
•
Certain companies allow their soſtware to be infringed so that they can force that company to license their product.
industry,
Te best strategy in the event your patent is infringed will depend on the product, that is, whether the viability of
licensing (eg, soſtware). In the event the product is infringed by a close competitor, the option of cross-licensing should be explored before litigating.
Mahua Roy Chowdhury is a partner of Solomon & Roy, a boutique IP firm in India. She can be contacted at:
mahua@solomonandroy.com
the product is in
Mahua Roy Chowdhury is a qualified advocate and a registered patent attorney with more than 17 years of experience. She holds a LLM in IP from Franklin Pierce (now the University of New Hampshire), US. Roy Chowdhury has draſted and prosecuted more than 250 patents. She is known foremost for her experience and expertise in negotiating commercial agreements in relation to joint technology developments, technology transfer, patent assignments and licensing relating various technologies.
to World Intellectual Property Review Annual 2013 121
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