INTELLECTUAL

PROPERTY RIGHTS
By: Sharon.R.D’souza (QA-06)
Contents:
International patenting requirement procedures and
cost
Rights and responsibilities of a patentee
Practical aspects regarding maintaining a patent file
Patent infringement meaning and scope
 Patent Cooperation Treaty (PCT)

• The Patent Cooperation Treaty (PCT) assists applicants in seeking patent

protection internationally for their inventions, helps patent Offices with
their patent granting decisions, and facilitates public access to a wealth of
technical information relating to those inventions.

• By filing one international patent application under the PCT, applicants can
simultaneously seek protection for an invention in a very large number of
countries.
 PCT (Cont.)
• The PCT is an international treaty with more than 150 Contracting States.

• The PCT makes it possible to seek patent protection for an invention

simultaneously in a large number of countries by filing a single
“international” patent application instead of filing several separate national
or regional patent applications.

• The granting of patents remains under the control of the national or

regional patent Offices in what is called the “national phase”.
 International patenting requirement
procedures
 Filing: you file an international application with a national or regional
patent Office or WIPO, complying with the PCT formality requirements, in
one language, and you pay one set of fees.

 International Search: an “International Searching Authority” (ISA) (one

of the world’s major patent Offices) identifies the published patent
documents and technical literature (“prior art”) which may have an
influence on whether your invention is patentable, and establishes a written
opinion on your invention’s potential patentability
 International patenting requirement
procedures
• International Publication: as soon as possible after the expiration of 18
months from the earliest filing date, the content of your international
application is disclosed to the world.

• Supplementary International Search (optional): a second ISA identifies,

at your request, published documents which may not have been found by
the first ISA which carried out the main search because of the diversity of
prior art in different languages and different technical fields.
 International patenting requirement
procedures
• International Preliminary Examination (optional): one of the ISAs at
your request, carries out an additional patentability analysis, usually on an
amended version of your application.

• National Phase: after the end of the PCT procedure, usually at 30 months
from the earliest filing date of your initial application, from which you
claim priority, you start to pursue the grant of your patents directly before
the national (or regional) patent Offices of the countries in which you want
to obtain them.
 Costs associated with international patentee

• PCT applicants generally pay three types of fees when they file their
international applications:
• (a) an international filing fee of approximately US$1100 (with a fee
reduction for filing electronically online or via other electronic media)
• (b) a search fee which can vary from approximately from US$200 to
US$2100 depending on the ISA chosen, and
• (c) a small transmittal fee which varies depending on the receiving
Office.i.e. around US$300
• (d) The applicant can also elect to file a demand (request) for
international preliminary examination of the application, which entails an
additional fee of approximately US$600 to US$750.
 Costs associated with international patentee

• Because an international patent application is effective in all

PCT Contracting States, you do not incur, at this stage in the
procedure, the costs that would arise if you prepared and filed
separate applications at national and regional Offices.
 Costs associated with international patentee

• The fees you will need to pay as you enter the national phase
represent the most significant pre-grant costs.
• They can include fees for translations of your application,
national (or regional) Office filing fees and fees for acquiring
the services of local patent agents or attorneys.
• In several Offices however, national filing fees are lower for
international patent applications than they are for direct
national applications in recognition of the work already done
during the international phase.
• You should also remember that in the case of all granted
patents, whether or not the PCT is used to obtain them, you
will need to pay maintenance fees in each country in order to
keep the patents alive.
• PCT filing consolidates and delays patent prosecution costs
• Filing a patent application under the PCT consolidates or
eliminates the duplication of costs associated with multiple
filings in multiple countries and enables the applicant to
submit a single patent application in a single language and in a
format that conforms to the requirements of all the national
patent (or regional) offices of PCT contracting states.
• The added burden and expense of translating the application
and of filing it in a particular format for a particular national
patent office is thus avoided.
 Rights and responsibilities of a patentee

• Where the patent is for a product or a process, the exclusive rights to

prevent 3rd parties ,who do not have his consent, from act of making, using,
offering for sale, selling or importing for those purposes that product in
India.
Rights and responsibilities of a patentee(cont.)

If the rights to a patent are elaborated then it is as follows:

• Right to exploit the patent-exclusive rights of patentee to make, use ,sell or
import the product or process being patented.
• Right to grant license
• Right to surrender-the patentee upon his own discretion has the right to
surrender the patent at any time by giving notice to the Controller. This
happens when patentee apprehends his non performance of patent in the
future.
• Right to sue for infringement-the patentee has the right to institute
proceedings for infringement of the patent in a District Court having
jurisdiction to try the suit.
 Patent infringement

• If any person exercises the exclusive rights of a patent holder without

permission within the country of patent grant and during the patent term.

• A person is liable for infringement if his product or process is same as the

patented invention.
 Types of Patent Infringement:

• Direct Infringement- literal and equivalence infringement.

• Indirect Infringement
 Direct Infringement:

• It directly states that the third party has wilfully or intentionally stolen the
technology from the inventor without his prior permission
• It occurs when someone directly makes, uses or sells the patented
invention within the country
 Indirect Infringement

• It occurs, for instance, when a device is claimed in a

patent and a third party supplies a product which can
only be reasonably used to make the claimed device
• If a person induces, encourages or instigates another
person to infringe a patent
• Intension is the important factor in determining
indirect infringement.
 References

 http://www.wipo.int/pct/en/
 http://lex-warrier.in/2013/05/rights-and-obligation-of-patentee-a-negative-
right/
 https://www.slideshare.net/SathyajithRavi1/patentinfringement73201910?fr
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