Patent Services Spectrum
© Rahul Dutta | August 11, 2022
Introduction
The jurisdiction is the subject of the Sovereign States signifies the independent national laws and emergence of new non-tariff barriers. The independent national laws accommodate the basic framework of their Constitution and the national ethos. The non-tariff barriers create the IP enforcement mechanism for checking the import of the patented product within the nation. For a Product Patent, the following are the exclusive patentee rights:
- right to make,
- right to use,
- offer for sale,
- sale, or importing for these purposes the product in India.
The Process Patent is also a set of exclusive rights that prevents third parties without consent from:
- the act of using the patented process, and
- from the act of using,
- offering for sale,
selling or importing for prohibited purposes the product obtained directly by the patented process.
The IP rights are the rights in rem. Therefore, it is imperative that cross-border (international) trade requires IP due diligence.
The Patent Services Spectrum
The Prior Art Search
For seeking a patent, an invention needs proper demarcation from the existing knowledge. It is just like defining the position of real estate with the help of its surroundings. This is achieved through conducting prior art searches. The prior art searches help in defining the invention spread without breaching a third-party right. It is an essential process for patent specification drafting. The searches also provide inputs for the patentability analysis of inventions.
The Patent Audit and IP Policy
The Patent Audit is a segment of IP Audit. The patent audit is an assessment of the time-bound monopoly in more than accounting respect. Although it is not mandatory by law, it is essential for meeting the objective of the ‘profit maximization’ of an entity. The Patent Audit starts with the inquiry and inspection of the IP Policy of the entity. India has its National IPR Policy. The Confidentiality and Non-Disclosure Agreements with the employees who especially work or are exposed to the Research & Development departments. The audit analyses the complete life cycle of an invention from deciding to research in developing an inventing product. The initiation of R&D requires budget allocation. The next step is to analyze the inventions existing unused. It may be that these inventions may be invented as offshoots of other inventions and do not match the product portfolio. However, by patenting it, it may be licensed to third parties and make it revenue-generating.
Especially in the patents existing in multiple jurisdictions, it may happen that the renewal fee is paid annually without generating any revenue or the license fee is less than the annual renewal fee.
The patent audit also addresses patent licensing including cross-licensing, standard essential patents, and the competitiveness of the entity vis-à-vis its existing portfolio with the competitors’ patent portfolios.
The Patent Audit is a segment of IP Audit. The patent audit is an assessment of the time-bound monopoly in more than accounting respect. Although it is not mandatory by law, it is essential for meeting the objective of the ‘profit maximization’ of an entity. The Patent Audit starts with the inquiry and inspection of the IP Policy of the entity. The Confidentiality and Non-Disclosure Agreements with the employees who especially work or are exposed to the Research & Development departments. The audit analyses the complete life cycle of an invention from deciding to research in developing an inventing product. The initiation of R&D requires budget allocation. The next step is to analyze the inventions existing unused. It may be that these inventions may be invented as offshoots of other inventions and do not match the product portfolio. However, by patenting it, it may be licensed to third parties and make it revenue-generating.
Especially in the patents existing in multiple jurisdictions, it may happen that the renewal fee is paid annually without generating any revenue or the license fee is less than the annual renewal fee.
The patent audit also addresses patent licensing including cross-licensing, standard essential patents, and the competitiveness of the entity vis-à-vis its existing portfolio with the competitors’ patent portfolios.
The Patent Transactions
The Patent is a time-bound monopoly. There are limitations like challenges to the patent in a competent court of law anytime. The infringement actions generally revert to the invalidity of the patent plea from the alleged infringers. Therefore, it is important for the patent transactions to keep the patent portfolio revenue generating. The efforts should be to see that in the balance sheet the patent portfolio should be profit generating. The patents of not use should be licensed. Standard Essential Patents (SEP) have emerged as an essential for an industry to technologically grow with time. So, the SEP provides assured rich royalty. In negotiations, cross-patent licensing becomes easier in cracking a deal.
The Patent Landscape
The Patent Landscape provides an overview of the factors like existing, and emerging entities in a field, like a hydrogen fuel cell. It also describes the patent portfolio size, patent family details, and future market leaders. The patent landscape also provides inputs in understanding the operability and patent licensing for legitimately operating.
Freedom to Operate
The intangibles create invisible trade barriers. The collision with these barriers brings in infringement actions and litigation costs. In the non-generic products, it should have become clear that non-tariff borders exist not only at the national borders but also around the patent portfolios of the entities. The granted patent is no guarantee to exploit the patent monopoly. A standalone patent may not sufficiently protect a product. The patent landscape provides a roadmap for assessing the freedom to operate in the jurisdiction of business interest. To ensure before the launch of a product, it is very important to check the freedom to operate. It helps in lesser apprehensions of inflicting infringement actions.
The Patent Infringement
The breach of any of the patent rights in isolation or jointly is tantamount to patent infringement. The patent infringement word can be used only for the registered patent; otherwise, even for a pending patent, there is a common law remedy known as passing-off. The patentee owns a patent in the form of claims part of the specification. Literally, a patent infringement analysis is a patent claims analysis that is generally conducted using Patent Claims Charts.
Patent Mining or Scouting
In respect, the reverse of Patent Prior Art Search is Patent Mining or Scouting. The Patent Prior Art Search is conducted to ascertain the patentability of an invention. Patent Mining or Scouting is conducted for various objectives to structure a particular technology and its stakeholders into patent portfolio clusters. It provides a visualized map of the technology at various stages, and the current and future dominant stakeholders. It also helps in aspects like decision-making to enter the tech domain, choosing the R&D niche, making licensing and assignment-related decisions, and including merger and acquisition (M&A).
The Patent Assignment and Licensing
The set of five rights known as a patent can be monopolized separately. The Strategy should be the maximization of profit in the patent life.
Difference between Patent Licensing and Patent Assignment
Patent Licensing and Patent Assignment are two distinct contracts that decide the ownership of the patent rights. A patent license may be for a single or a set of patent rights within the right to cancellation of the licensing agreement that remains with the patentee. For example, party A may be given the right to make, and party B may be given the right to offer for sale and sell the production of party A. It may be that the patentee would like to segregate the patent rights among a set of ancillary manufacturing units as a non-exclusive patent licensing strategically.
The Patent Strategy
There are many ifs and buts in making patent-related decisions. A patent is an asset that brings prosperity and wealth. The right decisions yield better financial results. The patent audit, patent mining, understanding the competitors and their jurisdictions, licensing and assignment strategies coupled with the merger and acquisition, all work as the decision-making tools for devising a patent strategy as a core for building business strategy at its foundation.
The Patent Mapping
Simply, patent mapping is the visual representation of patent data in various data representation formats. It helps the management to see the holistic picture of the technology landscape and in analyzing one’s position.
The Patent Invalidity Analysis
The national patent law provides various grounds for patent invalidity. It may be in the form of a ‘non-patentable invention’ or as a legitimate ground for challenging patent invalidity. A third party may invoke the patent invalidity proceedings in the patent prosecution stage, on publication of the patent application.
Patent invalidity is the first defense in defending a patent infringement suit. The patent invalidity may be invoked in the forms of pre or post-grant opposition or later challenging the patent before a competent court of law. The patent validity is challenged when a patent obstructs a third-party technology advancement business interests or clashes with the patent portfolio. It is also used by competitors for forcing the patentee to grant a license or assign a patent.
The Patent Valuation and Monetization
The patent is a monopoly asset. The patentee as a single player may rule the market. Virtually the zero-competition business environment provides a hundred percent market share at a monopolized premium price. The patent valuation predicts the current value of the patent. The current value of the patent means the present value of the future earnings earned through the patent during its life. The patent valuation is an essential part of considering a logical price for patent assignment or negotiating the royalty for licensing to third parties. The patent monetization exploiting the premium revenue generation prowess of patent assets is the primary objective of obtaining and owning a patent.
The Patent Portfolio Development & Management
The Patent Portfolio may be a stand-alone portfolio in a technology or a set of patent portfolios in more than one technology. A patent portfolio is developed by a web of more than one patent, or it is woven around a product or a technical aspect of a product. The pre and post-patent filing procedure, patent prosecution, patent opposition, post-grant annuity payments, collection of royalties, national law compliance, keeping a tab on infringers, and infringement actions in sum-total make the patent portfolio management domain.
The Patent Renewal and Compliance by the Patentee
Economics says monopoly is bad for the economy; it hampers competition. However, IP monopoly is an essential evil, and the contribution of IP monopoly is justified in the economic theories. A Patent requires annual renewal by paying the annual renewal fee. The renewal fee increase with the age of the patent. The Indian Patent law requires compliance with the annual filing of the ‘working of patent’ statement in Form 27. It helps in measuring the contribution of the patent to the economy. It segregates the working and non-working patents. The working of patent data is a very handy tool for compulsory licensing. The non-working of the patent may be a ground for revoking the patent.
The Compulsory Licensing
There is a provision in the Patent law that invokes the Controller of the Patents’ power to provide a compulsory license of a patent. The application for a Compulsory License can be filed after the completion of the first three years of the patent. The applicant may take any of the following three grounds for allowing his compulsory license application:
- The patented invention has not fulfilled the reasonable requirement of the public in India.
- The patented product is not available to the public at a reasonably affordable price.
- The patented invention has not worked in India.