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Sunday, March 06, 2011

Patent Strategy for Indian Companies in the environment of MNC threats

Recently we carried out two interesting studies (purely technical studies)

1. Patent Infringement study
2. Patent Invalidation study

Scenario: - An MNC has a patent that expired in 2010 in multiple countries but it was not filed in India. Around half-life period the MNC filed another patent which was a slight extension of the base patent - but this time through PCT route they filed in India as well. The new patent was granted - they cited the base patent as prior art and created some mumbo-jumbo the way people who draft these applications know so that the new application looks like an invention over prior art.

The patent was granted in India as well.

No one opposed/ no one knew in India as they "interested parties" in India are relatively small firms (will come under SMEs).

The MNC sent the letter to one of the big SME's saying their product infringes the patent - hence they should stop production and sales.

The Indian company really was not aware of the patent and what actions to take.

Solution: After months of struggle, they found us. We suggested that

(a) Let us look at the extent of infringement
(b) let us look at the validity of the patent

In a week of study, we were able to prove that on technical grounds

Patent is not valid (purely on Technical grounds)

(a) Insufficient disclosure of how to exercise the invention
(b) Prior art - the old expired patent was the main patent - and the extension was some sort of small extension
(c) Prior use - there was a product existing in the market since 1980s which clearly shows that invention described in the patent is not Novel.

Key lessons

(a) Maintain a continuous patent watch in your industry
(b) As you see a patent for which you have a prior art or prior use - immediately raise a pre-grant opposition in Indian Patent office (this is much less costly)
(c) If someone threatens with a patent - please do the following

1. verify the extent of infringement -
many times infringement may be very small or negligible
2. Check the validity of patent -
given the pace of patent apps and lack of sufficient availability of manpower in patent offices - many patents are granted with very low level of assessment - 30-40% of patents will be invalid on various grounds

(d) If there is an infringement and patent is valid

1. get into carrying out a Technology Alternative Studies (TAS) on the patent. To know more about TAS - please look at the LINK on Crafitti

2. Get into a discussion/negotiation with the MNC

Please understand the extent of threat that your company, your field is facing due to patent system becoming more pronounced and India becoming a Big Globally lucrative market.

Our defence is in our hands.

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