First-mover advantage: patent could go to first applicant

First-mover advantage: patent could go to first applicant
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First Published: Mon, Jul 23 2007. 01 20 AM IST
Updated: Mon, Jul 23 2007. 01 20 AM IST
In the age of globalization, patents and intellectual property assume great significance. To help readers grasp issues around intellectual property, Mint introduces an occasional column on the subject.
Is patent granted for every novelty?
No. A patent is granted for an invention. The word “invention” under the Patent Act is defined as something which is new, novel and useful. It must not be within the public domain, which means public knowledge. The patentable invention must be useful and marketable.
An idea, however great and inventive, is not patentable; only that which can be translated into a concrete object is patentable. For an example of things being in the public domain, take the case of the ballpoint pen. Its inventor thought he had invented a very easy and useful tool for writing. He manufactured a few pens and distributed them for free to schoolchildren. When he subsequently applied for a patent, he was refused the grant on the ground that the technique or idea of the ballpoint pen was already known and the invention can’t be treated as new.
Should the inventor keep the invention a secret till he files the application for patent?
Yes. The whole invention and its project shall remain secret till an application is made for patent. But there is an exception. The inventor can reveal the invention at a professional meeting of scientists on condition of confidentiality, so that somebody else working in the same area does not claim priority over his application.
If a person doing research on the same subject applied for a patent after the invention was finalized, who will get the patent?
The one who arrived at the invention first will be granted the patent. But it is very much the first-mover advantage. Even if a person arrived at the invention first, the person who applies for the patent first could get it. So the idea is to apply for a patent immediately.
How does one determine which of two inventors arrived at the invention first?
For this purpose, the scientist or researcher must maintain a diary of experiments and record the different stages of progress. Moreover, the diary entries need to be attested by some colleagues. Examining this record, the Controller of Patents decides as to who was the first inventor entitled to patent.
If the inventor is employed in a company, who gets the patent, the employer or the employee inventor?
In such cases, the law is very clear: The employer will get the patent. The assumption here is that but for the availability of instruments of research provided by the employer, the employee could not have succeeded in arriving at the invention. If the employee wanted that he alone shall be entitled to patent, there should be an agreement to that effect between the employer and the employee. Without such agreement, the employer will only be granted the patent.
If the scientist is funded for his research or is financially supported by a financier, who will get the patent?
Here, the scientist will be granted the patent. The role of the financing agency and the financier was limited to the supply of funds and not to any assistance in research.
If the invention is joint, can a joint patent be given?
Yes, joint patents are granted. Unless one of them recognizes the other as the first inventor, that other person alone cannot claim the patent.
If the inventor dies before he made the application for a patent, who is entitled to claim the patent?
All the successors can jointly claim the patent but the name of the inventor shall be stated in the application. His name will also be noted in the patent document.
Is a partnership, company or any other corporate body entitled to claim a patent?
Yes. In all the grants so awarded, the name of the true and first inventor who made the invention shall be noted.
Who is the “true and first” inventor?
Invention requires the application of mind, specialized knowledge, experience and genius. Therefore, he who exercises his mind and skill in inventing a new and novel thing for the first time is called the true and first inventor and such inventor who applies first for the patent is termed as the first inventor. If two persons independently make an invention and only one of them applies for the patent, the one who applies is the true and first inventor. It may be noted here that the person who obtains knowledge about the invention from the inventor or the importer of the invention from abroad is neither the true nor the first inventor.
Can a person who purchased the right to apply for the patent from the inventor obtain a patent?
The purchaser of the invention is called the “assignee of the right to make application for patent”. In such an application, it must be specifically stated that it is an application for joint patent by the true and first inventor and the assignee.
Can a licensee under the inventor make an application for a patent?
He can do so only as a joint applicant with the first inventor.
Can an Indian citizen who invented something abroad make an application for patent in India?
Yes. But he should furnish the Controller of Patents his local address. For the purpose of patent, an invention is an invention whether it is made abroad or within India.
Can a foreigner make an application for a patent in India for an invention made in his country?
Yes. He can make such an application provided he makes an application for patent in his own country. In case he wants to make an application for patent for the same invention in India, he shall have to file the application not with provisional specification but with a final specification. He shall keep the Controller of Patents in India informed of the progress of his application made in his own country.
N.K. Acharya is an intellectual property rights attorney specializing in patents, trademarks, copyrights and design. Queries are welcome at
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First Published: Mon, Jul 23 2007. 01 20 AM IST