Early publication beneficial
Indian patent office provides facility of early publication of the patent application (on payment). & many applicants are requesting for early publication. Is early publication beneficial to applicant? If it is, in what sense?
Answers (6)
Hi Vishwas,
I am a patent litigator with private practice in The Netherlands. In my answer I will focus on European Patent practice although I am pretty sure similar regimes apply on the other continents.
Under article 54(1) EPC, an invention shall be considered new if it does not form part of state of the art. This rule will sound familiar to you.
State of the art, according to 54(2) EPC, is all that is made available to the public prior to the date of filing of the relevant application. However, in addition, patent applications that have been filed previously, but have not yet been published are also part of the prior art. We refer to such a previous application as being a colliding application (under 54(3) EPC). So, basically, a previous application although not yet published, is indeed part of the prior art, however, for the purpose of assessing novelty only. As regards inventive step, another ground for invalidity of a patent, those colliding applications are not to be taken into account.
In a typical situation, an inventor may have filed a patent application, discussed its contents with e.g. a manufacturer to which the inventor would wish to license its invention, and then discover that this manufacturer has soon after filed its own application but a number of slight amendments/improvements. Under 54(3) EPC the previous application will be considered prior art for the subsequent manufacturer-application. Since, however, the manufacturer made some amendments, the manufacturer-application will survive the novelty test. And with respect to inventive step - although the manufacturer-application might contain limited to no inventive step - the previous inventor-application is not to be taken into account!
Here you see the big advantage of pre-publishing an application right after filing. It is just to make sure that the inventor-application is ordinary prior art instead of colliding art only.
Hope this satisfactorily answers your query.
Best regards,
Francis
Yes, I do agree with Francis. Early publication of your patent application will make your invention public earlier (much before 18 months of procedural publication) and would render it as prior art to any patents filed after your filing date. This gimmick could help obstructing other parties claim on the same suject matter.
Less importantly, the same publication can be used to enhance your/companies profile to attract investors, VCs, licenses/collaborations etc.
Clarification added March 3, 2008:
The early publication may be called 'defensive publication'. Defensive publications can also be made in well-recognized technical journal so that the patent examiner would locate it while carrying out prior art searches. But publication in journals would not give you claim advantage and many a times, the publication may not happen as early as the (early) patent publication as the journal publication may be delayed because of revisions required by the journal before acceptance. Filing a patent application and publishing it earlier is like getting your cake and eating it too..as filing an application would give you priority date, may give you IP rights if it gets granted later on and early publication (which does not require revision or additional reviewing) makes it public which becomes prior art for other patent applications.... I trust the issue is more clear now..
Clarification added March 6, 2008:
The early publication of your invention also would get your competitors know about the published patent application and although not granted one, with the speculation of getting granted, have to stop practicing or working on the invention or find a way out of the potential infringement (provided that he has not filed any provisional/complete application before you). The publication will at least make the competitor to put some efforts on finding non-infringement or freedom to operate opinion or way out. Thus the earlier publication could help in delaying entry of the competitor's product to the market... I trust it is ;more n more' clear now..
Gaurav G
Registered Patent Agent at Jackson Walker LLP
Best Answers in: Intellectual Property (1), Quality Management and Standards (1), Small Business (1)
I agree with the other answers that early publication can be an effective defensive strategy. However, there are other considerations. If your disclosure is highly detailed and provides DIY instructions to your competition, you may be giving the market a head start on copying or working around your invention. This is particularly true if the invention is a trivial improvement or readily implemented, as the vast majority of software / methods truly are. So the concerns of a mechanical or pharmaceutical invention are very different compared to many IT and computer arts. Some technology cannot really be reverse-engineered to determine if it contains your published invention.
Even if you do not publish, you are free to submit your application privately to whomever you wish.
Ashutosh S
PGP Participant, IIM Indore
Best Answers in: Intellectual Property (3), Property Law (2), Web Development (1)
Hi Vishwas,
Another very important point to consider while going for early publication is the kind of protection you get during the pre-publication, post publication and post grant stages. For most countries, there is almost zero protection during the pre-publication stage (i.e. if someone infringed your invention in the pre-publication stage, you cannot sue him for that period of infringement.) during the post publication stage you get some protection (mostly a right to get reasonable royalty rates from the infringing party). Post grant is full fledged protection (where you can claim damages)
Now for fast moving technologies like software, electronics, etc. the chances of someone infringing during the 18 months period is high. So folks go for early publication so that they may get some royalty from the infringer.
Also, in India, early publication can be used as a tool to speed up the examination procedure (A first examination report along with the application and specification
shall be sent to the applicant or his authorised agent ordinarily within
six months from the date of the request for examination or six months from
date of publication whichever is later.)
Hope this was useful.
Best regards,
Ashutosh
Hi Vishwas,
The major benefit of an early publication is for small inventors. This kind of a publication gives them more leverage while negotiating with VCs and other investors.
Other than that it would also extend the time of actual patent coverage. In the sense that, before a application is published, use of the invention by someone else would not count as infringement.
ashish N
Engagement Manager at Evalueserve
Best Answers in: Intellectual Property (1), Change Management (1), Manufacturing (1), Biotech (1)
It's actually a double edged sword:
1. you get the benefits mentioned in earlier posts
2. might work against if you plan to file in foreign countries, many of whom would consider this a prior art against the invention itself....even if the foreign application is filed within one year of priority date.
