Optimizing Innovation: The Role of IP Search Firms in the Digital Age

In the fast-paced digital age, Intellectual Property (IP) rights have become the cornerstone of fostering innovation and protecting creators. IP search firms play a pivotal role in navigating the complex landscape of patents, ensuring that businesses and individuals can innovate freely while respecting existing IP rights. Services like FTO (Freedom to Operate) patent search, invalidation patent search, and patent infringement search are essential tools in the arsenal of creators and innovators, providing clarity and security in their endeavors. 

FTO Patent Search: Navigating the Path to Innovation 

Freedom to Operate (FTO) searches are crucial for any entity looking to launch a new product or service. Conducted by IP search firms, these searches help ascertain that the proposed offerings do not infringe on any existing patents. By identifying potential IP barriers early on, FTO searches enable businesses to make informed decisions, avoiding costly legal disputes and fostering a smoother path to market entry. 

Invalidation Patent Search: Challenging Monopolies, Promoting Progress 

Invalidation patent searches are another critical service offered by IP search firms. These searches aim to identify prior art that could potentially invalidate existing patents, thus challenging unjust monopolies and promoting a more competitive and innovative marketplace. By uncovering evidence that a patent should not have been granted, invalidation searches provide a means to contest restrictive IP claims that can stifle innovation and competition. 

Patent Infringement Search: Safeguarding Innovations 

To protect investments and innovations, conducting a patent infringement search is essential. This detailed examination helps determine if a product or service infringes on the patents of others. IP search firms specialize in these searches, providing expertise and insight that can help avoid infringement disputes, which are often time-consuming and expensive. By ensuring that new inventions or services do not encroach on existing patents, businesses can safeguard their innovations and focus on growth and development. 

Conclusion 

IP search firms are indispensable partners in the digital age, providing services that are critical for innovation and competition. Through FTO patent searches, invalidation patent searches, and patent infringement searches, these firms empower creators and businesses to navigate the complex IP landscape confidently. By leveraging these services, innovators can protect their creations, respect others' IP rights, and contribute to a thriving, competitive marketplace. The strategic use of these searches not only minimizes legal risks but also underscores the importance of diligent IP management in promoting sustainable innovation and progress.

Digital Transformation and its Impact on Intellectual Property and Patent Strategies

Introduction 

The digital transformation era presents unique challenges in Intellectual Property (IP) and patent law, including issues of patent infringement, the necessity of conducting thorough patentability searches, and the importance of strategic patent portfolio management. This article explores how these aspects are increasingly vital in the context of digital advancements. 

IP Challenges in the Digital Age 

Digital transformation has intensified concerns about patent infringement, especially as digital content and software become more prevalent. The ease of replication and distribution of digital goods has made it crucial for IP owners to be vigilant against infringement and to employ robust strategies for protecting their rights online. 

Patent Strategies for Software and Digital Innovations 

In the realm of software and digital innovations, conducting a patentability search is essential. This process determines whether an innovation meets the legal criteria for patent protection, crucial in a field where the distinction between a novel invention and an incremental update can be subtle. Effective patentability searches help in formulating strategies that protect genuine innovations while navigating complex legal landscapes. 

Impact of Data and AI on IP Strategies 

Data management and AI have become central to digital business models, necessitating a reevaluation of patent portfolio management strategies. As AI-generated data and insights become increasingly valuable, companies must ensure their patent portfolios are robust enough to protect these assets. This involves regular reviews and adjustments to cover new inventions and to mitigate risks associated with evolving technologies. 

Global Collaboration and Harmonization 

The borderless nature of digital technology underscores the importance of harmonized approaches to patent infringement and portfolio management across jurisdictions. Global collaboration can lead to more standardized processes for patentability searches, ensuring that innovations meet international patent criteria. 

Ethical and Legal Considerations in Digital IP 

Finally, ethical and legal considerations, particularly in relation to patent portfolio management, are becoming increasingly prominent. Companies must balance the aggressive protection of their portfolios with ethical considerations, such as the impact of their patents on consumer rights and privacy, especially in the digital and AI domains. 

Conclusion 

Digital transformation demands a rethinking of traditional IP and patent strategies. Key elements such as safeguarding against patent infringement, conducting comprehensive patentability searches, and effective patent portfolio management are crucial in navigating this new landscape. As digital technologies continue to evolve, so too must the strategies to protect and manage intellectual property in this dynamic environment.

Overview of Patent Filing Procedures and Its Cost in India

A patent is a legal right provided by government to an inventor for limited period of time. It is a form of intellectual property and you can prevent other to use your inventions without your permission. With the help of Patentability search it would be easier to patent your idea.

Patent filling is essential if you want to protect your inventions and for detailed information about its procedure and cost in India please read below:

Patent Office and Branches

Office	Territorial Jurisdiction
Patent Office Branch, Chennai	The States of Andhra Pradesh, Karnataka, Kerala, Tamil Nadu and the Union Territories of Pondicherry and Lakshadweep
Patent Office Branch Mumbai	The States of Maharashtra, Gujarat, Madhya Pradesh, Goa and Chhattisgarh and the Union Territories of Daman and Diu & Dadra and Nagar Haveli.
Patent Office Branch, New Delhi	The States of Haryana, Himachal Pradesh, Jammu and Kashmir, Punjab, Rajasthan, Uttar Pradesh, Uttaranchal, Delhi and the Union Territory of Chandigarh.
Patent Office, HO Kolkata	The rest of India

Provisional/Complete Specification and International Applications under PCT

Provisional Application:

A provisional application is a priority application, which is filed when the invention is not finalized and is still under experimentation. A provisional application includes a specification, i.e. a description, and drawing(s) of an invention (drawings are required where necessary for the understanding of the subject matter sought to be patented), but does not require formal patent claims, inventors' oaths or declarations, or any information disclosure statement (IDS). A provisional specification is usually filed to establish priority of the invention or filing date of the invention.

Complete Specification:

Complete specification is the document where all the details of the invention for which patent protection is desired are disclosed. It is filed within twelve months from the date of filing of provisional specification or priority document.

Fees for Provisional/Complete Specification/Convention/PCT national

Particular	Natural person (INR)	Small Entity	Other than natural person and small entity(INR)
For filing patent application	1600	4000	8000
For each sheet of specification in addition to 30	160	400	800
For each claim in addition to 10	320	800	1600

International Applications under PCT:

A PCT application is an international application governed by the Patent Cooperation Treaty, and can be validated in upto 142 countries.

Advantages of filing a PCT Application:

A single international patent application can be filed in order to seek protection for an invention in upto 142 countries throughout the world.

1) The priority date obtained by filing a PCT application is internationally recognized, and has an effect in each of the countries designated.

2)  It gives the application 30/31 months from the international filing date or the priority date, to enter into various countries, and therefore gives the applicant more time to assess the viability of the invention.

3) Delays the expenses associated with applying for a patent in various countries

4)  Provides an International Search Report citing prior art, which gives an indication to the applicant whether the invention is novel and innovative.

5) Provides an option for requesting an International Preliminary Examination Report, the report containing an opinion on the patentability of the invention.

6) The International Search Report and International Preliminary Examination Report, allows the applicant to make more informed choices early in the patent process, and to amend the application to avoid any conflicting material before the major expenses of the national phase begin. It also gives the applicant a fair idea on the patentability of the invention before incurring charges for filing and prosecuting the application in each country.

PCT National Phase Application:

When an international application is made according to PCT designating India, an applicant can file the national phase application in India within 31 months from the international filing date or the priority date (whichever is earlier).

Fees for Filing International (PCT) Application as an Indian applicant:

1) Transmittal Fee: Rs. 17,600/-

2)   Fee for priority document: Rs. 4000/- each for ONP

3) International Fee: $ 1363 for 30 pages

4)   Fee for each page in addition to 30 pages: $ 15

5) ISR: Applicant can choose from India, China, US, Europe, Austria, Australia, Sweden

What are inventions and what are not inventions

Patentable Subject Matter:

Sec 2(ac)- "capable of industrial application", in relation to an invention, means that the invention is capable of being made or used in an industry

Sec 2(ja)-  "inventive step" means a feature of an invention that involves technical advance as compared to the existing knowledge or having economic significance or both and that makes the invention not obvious to a person skilled in the art

Sec 2(l) - "new invention" means any invention or technology that has not been anticipated by publication in any document or used in the country or elsewhere in the world before the date of filing of patent application with complete specification, i.e. the subject matter has not fallen in public domain or that it does not form part of the state of the art.

Non-Patentable Subject Matter (Section 3 and Section 4):

1) an invention which is frivolous or which claims anything obviously contrary to well established natural laws;

2) an invention, the primary or intended use or commercial exploitation of which could be contrary to public order or morality or which causes serious prejudice to human, animal or plant life or health or to the environment;

3)  the mere discovery of a scientific principle or the formulation of an abstract theory [or discovery of any living thing or non-living substances occurring in nature;

4)  the mere discovery of a new form of a known substance, which does not result in the enhancement of the known efficacy of that substance or the mere discovery of any new property or new use for a known substance or of the mere use of a known process, machine or apparatus unless such known process results in a new product or employs at least one new reactant. Salts, esters, ethers, polymorphs, metabolites, pure form, particle size, isomers, mixtures of isomers, complexes, combinations and other derivatives of known substance shall be considered to be the same substance, unless they differ significantly in properties with regard to efficacy;

5) a substance obtained by a mere admixture resulting only in the aggregation of the properties of the components thereof or a process for producing such substance;

6) the mere arrangement or re-arrangement or duplication of known devices each functioning independently of one another in a known way;

7) a method of agriculture or horticulture;

8) any process for the medicinal, surgical, curative, prophylactic [diagnostic, therapeutic] or other treatment of human beings or any process for a similar treatment of animals to render them free of disease or to increase their economic value or that of their products.

9) plants and animals in whole or any part thereof other than micro-organisms, but including seeds, varieties and species and essentially biological processes for production or propagation of plants and animals;

10)  a mathematical or business method or a computer program per se or algorithms;

11) a literary, dramatic, musical or artistic work or any other aesthetic creation whatsoever including cinematographic works and television productions;

12) a mere scheme or rule or method of performing mental act or method of playing game;

13) a presentation of information;

14)  topography of integrated circuits;

15) an invention which in effect, is traditional knowledge or which is an aggregation or duplication of known properties of traditionally known component or components.

Patent Filing Procedure:

Filing of patent application:

File an application for patent

1) With one of the patent offices based on territorial jurisdiction of the place of office or residence of the applicant/agent

2) Pay the required fee

Documents required for filing of a patent application

1. Covering letter- indicating the list of documents;

2. Application for Grant of Patent in Form 1 [section 7, 54 & 135 and Rule 20(1)] in duplicate;

3. Complete/Provisional specification in Form 2 in duplicate [Section 10; Rule 13]

4. Statement and Undertaking in Form 3 [Section 8; Rule 12];

5. Power of Attorney in Form 26 (in original) (Rule 3.3 (a) (ii)); (if filed through attorney)

6. Declaration of Inventor-ship in Form 5  (only in case of an Indian Application; (Rule 4.17);

7. Certified true copy of the Priority document (in case priority is claimed);

8. Requisite Statutory fees (cheque/DD).

Publication after 18 months

A patent application will be published automatically in the official journal after expiry of 18 months from date of filing or date of priority of the application containing title, abstract, application no. and name of applicant[s] and inventor[s]. Application is kept secret for a period of 18 months from the date of filing. In 19^th month, the application is published in the official journal – this journal is made available on the website weekly.

Early Request for Publication:

To expedite the process of grant of patent, a request for publication under Section 11(A)(2) can be made in Form 9, any time after filing of the application. Upon such request, the application will be published in one month from the date of such request.

Fees for Request for Early Publication for Natural person is Rs. 2,500

Fees for Request for Early Publication for small entity is Rs. 10,000

Fees for Request for Early Publication for Other than natural person and small entity is Rs. 20,000

Pre-Grant Opposition:

Upon publication, but before the grant of patent, any person based on grounds as mentioned in Section 25 (1), any person may file a pre grant opposition against the grant of patent. However, the opposition will be taken by the patent office only after the filing of Request for Examination. Opportunity of hearing the opponent is also available. After examining the opposition and the submissions made during the hearing, controller may either reject the opposition or accept the opposition and modify/reject the patent application.

Request for Examination:

Request for examination can be made either by the applicant or by a third party. A request for examination can be filed within a period of 48 months from the earliest priority date.

Statutory Fees for Request for Examination for Natural person is Rs. 2,500

Statutory Fees for Request for Examination for small entity is Rs. 10,000

Statutory Fees for Request for Examination for other than natural person and small entityis Rs. 20,000

First Examination Report (FER):

The controller will issue a first examination report that triggers a period of 12 Months from the date of issue of the FER to get the grant of the patent application. It is the duty of the applicant to overcome all objections raised in the FER and get the patent granted. Patent granted is published in the official journal.

Post-grant Opposition:

Within one year after the grant of a patent any interested person, based on grounds mentioned in Section 25 (2), may file a post grant opposition in Form 7 to the controller to cancel the grant of patent.

Statutory Fees for Notice of Opposition for Particular Natural person is Rs. 2,400

Statutory Fees for Notice of Opposition for small entity is Rs.6,000

Statutory Fees for Notice of Opposition for other than natural person and small entityis Rs. 12,000

Renewal/Maintenance Fee:

To keep a patent in force, the renewal fees shall be payable at the expiration of the second year from the date of the patent or of any succeeding year and the same shall be remitted to the patent office before the expiration of the second or the succeeding year.

	Natural Person(s) Per Year (INR)	Small Entity Per Year (INR)	Other than small entity Per Year (INR)
Up to 6 years	8,00	2,000	4,000
7-10 years	2,400	6,000	12,000
11-15 years	4,800	12,000	24,000
16-20 years	8,000	20,000	40,000

Disclaimer: The information provided in this article is for general informational and educational purposes only and does not constitute or purport to render legal advice or legal opinions. The material is intended but not guaranteed to be up-to-date and should in no way be taken as an indication of future law and practice.

Why software patents are not fixable

In my efforts to educate myself on the patent system, I’ve learned about the requirements for getting a patent, and what sorts of ideas are patentable. One of these requirements is novelty:

 An invention is not patentable if the claimed subject matter was disclosed before the date of filing, or before the date of priority if a priority is claimed, of the patent application. A patent must also not be obvious to a person of ordinary skill in the field that the patent pertains:

 A patent may not be obtained though the invention … if the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains. But as we’ve seen, time and time again, the U.S. Patent and Trademark Office enforces these (and other) rules extremely poorly, resulting in thousands of patents being issued that most people knowledgeable in their field would immediately recognize as invalid.

 And that’s not new. Bogus patents have been issued for decades. The USPTO has repeatedly shown that they cannot and will not do their job to prevent most invalid patents from being granted. In the field of software, their negligence seems especially egregious. With the rise of patent litigation due in no small part to the “we don’t sue people” Intellectual Ventures and their shell companies (that only sue people), the number of patent applications is likely to increase dramatically over time.

If the USPTO is granting bogus patents because they’re just slipping past overworked patent examiners, it’s only going to get worse. Invalid patents aren’t just funny government slip-ups. (“Oh look, someone patented toast and linked lists! Stupid patent office!”) Since the economics of civil lawsuits, especially patent lawsuits, prevent most cases against small defendants from ever getting near a court, the potential cost to society of issuing an invalid patent is massive.

 If someone threatens your small business with a patent lawsuit, it doesn’t matter whether the patent is valid. Because for you to prove that it’s invalid would take far more time and money than you probably have. The only sensible course of action, the path taken by almost everyone threatened by patent litigation, is to settle with the patent-holder as quickly as possible for whatever amount of money they demand.

Benefits of obtaining a patentability search prior to filing

Although not required by law, a patentability search is extremely helpful.  For about 25%-50% of the cost, this type of search can assist the client and practitioner in assessing the likelihood of obtaining a patent on their idea, and thus is a valuable and necessary step in the patent process.

When the USPTO Examiner receives a non-provisional patent application, the examiner will perform a patent search on the invention as described in the claims, to determine its novelty.  If the practitioner drafts the application without performing an initial search, there is no way to anticipate what is already in the public domain, or what the examiner will discover.

There are two main benefits to obtaining a patentability search prior to filing.  First, it allows the client to research information that is currently in the public domain prior to preparing, filing, and prosecuting a patent application on an invention.  If the information in the public domain completely anticipates the invention, then the patentability search will save the client thousands of dollars spent on drafting, filing, and prosecuting an application for which a patent would not likely be granted. The second benefit to obtaining a search is that it allows the practitioner to draft a stronger application for the client, thus increasing the chances of success in obtaining a patent.

Usually patentability searches are done by a reputable third party or possibly in house at larger firms.  A description of the novel (new) aspects of the invention are clearly described, and depending on the scope and depth of the search, patents, publications, and all other types of prior art are searched via the USPTO, web and many other databases.  Patentability searches can range from a basic knockout search to a comprehensive patentability search.   The basic knockout search is the least expensive and covers the federal databases for patents and printed publications.  The comprehensive search is more in depth (and expensive) and covers prior art references that either alone or in combination are material to the patentability of an invention. The comprehensive search results may include published applications and issued patents, both US and foreign, as well as non-patent literature such as scientific journals and papers.

Once the search results are received, the practitioner can review the information to determine whether the invention created by the client is actually new.  A patent will only be granted for a new invention.  Therefore, if an existing piece of prior art anticipates each and every aspect of the invention, patent protection will not be granted. A search will identify existing prior art in the field and help to determine if the invention is new.  If the patentability search results show that another piece of prior art completely anticipates the invention, then the client will avoid spending money for preparing, filing, and prosecuting the application.

If the search results reveal that not all of the aspects of the invention are known in the prior art references, then the results can assist the practitioner and client in determining the next step moving forward.  The results of the search can be analyzed to determine the scope of protection afforded to the idea and whether it would make financial sense to move forward with the drafting and filing of the patent.  If it is determined that it makes sense to file the patent, then the practitioner can use the results of the search to draft an even stronger application, in essence, reducing the chance of several expensive office actions and possible denial of the patent.

Provisional patents explained

A provisional patent application is a type of interim utility patent filed with the USPTO. You can file for a provisional patent without including any formal patent claims, oath or declaration, or any information disclosure (prior art) statement. The keyword in provisional patent application is "provisional". A provisional patent application only gives one year of protection.

After that you must file for a non-provisional patent or abandon your patent. The USPTO created provisional patent applications as a means to establish an early effective filing date for a non-provisional patent application, which helped balance American patent law with the patent laws of other countries. It also allows the term "Patent Pending" to be used.

There is a great misunderstanding among many inventors and entrepreneurs regarding what many simply refer to as a “provisional patent.” The first thing that needs to be said is that there is no such thing as a “provisional patent.” Instead, what you file is called a provisional patent application. Like any other patent application, a provisional patent application is effective to stop the clock relative to so-called statutory bars and immediately upon filing a provisional patent application you can say you have a “patent pending.”

Why provisional patent applications a good idea One reason I like to suggest starting with a provisional patent application as a way to initiate the patent process is because they are cheaper to prepare (because there are no formal requirements) and the filing fee due to the United States Patent Office at the time of filing is only $130 for small entities (i.e., individuals, universities and companies with 500 or fewer employees), which saves you several hundreds of dollars compared to the filing fees for a non-provisional patent application. Indeed, the filing fee is even less — just $65 — if you qualify as a small entity.

Many patent attorneys and patent agents will question whether you can really prepare a provisional patent application while spending less time than preparing a nonprovisional patent application. I am here to tell you that it is not only possible but I do it all the time and so do other attorneys at my firm and many other attorneys that I know at other firms. Describe whatever you can, file a provisional patent application and work toward perfecting the invention and seeing if there is a market.

Essential Elements of Patentability

Usually whenever an inventor discusses his invention with patent attorney, the most important elements looked up or analyzed by attorney for determining patentability involves

1. Novelty

2. Inventive step or non-obviousness

3. Capable of industrial application or utility

Along with the above parameters the invention should also be falling under the patentable subject matter and should not form a part of "Invention which are not patentable"

1. Novelty

Novelty (etymologically means either novice/new) is the quality of being new and hence it should not form part of state of art or prior art. It means that the invention should not be anticipated/disclosed in any publication, prior claimed in any invention, used anywhere in the world before the date of filling or the date of priority.

The state of art comprises all matter (published document, prior claims, and use of invention in certain part of world) available to the public before the date of priority. And during evaluation of anticipation by publication, the degree of dissemination is not taken into concern so a single published document or its distribution to a single personnel constitute part of state of art/ prior art.

The test for anticipation from prior art documents is a litmus test for determination of novelty and is also a rigorous one, which involve that prior art document must be entirely contained in a single document & hence cumulative effect of all prior art references available at the date of priority is not allowed.

2. Inventive step or non- obviousness

Once novelty is confirmed, an invention is evaluated for non-obviousness, which involves that the inventive step of an invention should not be obvious to a person skilled in the art, wherein skilled person is an ordinary practitioner aware of common general knowledge in art and has access to everything in state of art.

Inventive step have been dealt in detail in section 2 (1)(ja) of Indian patent act, which set forth that in order to prove inventive step either the invention should be having technical advancement as compared to the existing knowledge available or it should have economic significance as compared to the prior art available.

So an invention is said to be obvious if the prior art provides motivation for invention and by combining the teachings of different prior art available on the date of priority it would lead to the formation of inventive step in claimed invention which is obvious to the person skilled in the art.

Obviousness is a significant hurdle and is highly fact based and the patent office employs numerous indicators in order to access inventive step which comprises of:

1. Complexity of work normally not carried out by research personnel.

2. Invention claim to satisfy a long felt need in the industry.

3. Failure of others to find a solution to the problem in hand.

4. Cheaper & more economical product.

3. Capable of Industrial application or utility

Capable of Industrial application is a common notation for European & Indian patent law, whereas utility is normally considered by patent examiner of USA. Industrial applicability means that the invention is capable of being made or used in an industry, where industry is something which involves any useful or practical activity as distinct from intellectual or aesthetic activity.

On the other hand for determining credibility of a utility patent, application must express a specific, credible and substantial utility.

And in considering the requirement of utility for patents, there are three main factors to review:

1. Operability of the invention;

2. Beneficial use of the invention;

3. Practical use of the invention;

These elements for patentability are essentially the same across all major patent law unions, convention countries and form an important component in determining the fate of an invention during prosecution.