What does a patentee do once a patent has been granted? Often this question is neither asked nor answered by most first-time patentees. The focus is on getting the patent, and in the case of startups, getting on with the business. But one should be aware that getting a patent granted is not an end in itself. Some startups want to have a patent in their name as a means of attracting investors and increase the valuation of the company, for example. So, this article provides an awareness of the requirements from a patentee and what else can be done once a patent has been obtained.
This is a short cut among Indian patent professionals for “Statement of Working of Patents in India”. The Indian patents act requires every patentee to file a statement about the effort a patentee has made to “reduce the patent to practice”. For many startups it is an easy task. You may get more information about it here.
Once the patent has been granted, the patentee is required to periodically pay a fee to the patent office to keep the patent in force. If this is not done in time, the patent is said to lapse. The patent act and rules allow a patentee to revive a lapsed patent by paying a fee but also sufficient reasons to show that the non-payment was an oversight and was due to unavoidable circumstances. But one should not take recourse to this since there is always a possibility that the controller is not convinced that the reasons provided are genuine or that the circumstance were not unavoidable.
Defend a patent against post grant opposition.
The patent act allows a person, referred to as a person interested, give notice of opposition to the Controller, within a year of the date of publication of grant. Here the term person interested isdefined as a person engaged in, or in promoting, research in the same field as that to which the invention relates. Even though this happens rarely, a patentee must be aware that such an opposition is possible. If such an opposition is indeed filed, the patentee must show the controller reasons why the opposition is not valid.
A patentee might obtain a patent for broadly two different reasons. These are termed offensive and defensive purposes. A patent obtained for defensive purposes is meant to protect a first patentee being accused of infringing a second patentee’s patent. Whereas a patent obtained for offensive purposes is meant to enable a patentee to stop unauthorized persons infringing on the patentee’s patent.
It may be impossible to predict if anyone is going to accuse one of infringement, when you have a defensive patent. However, a patentee who has obtained a patent for offensive purposes has to be vigilant to detect if the patent is being infringed. Thus, it would be a good idea to periodically check new product literature of competitors and studytheir products and their features.
If a suspected infringement is found a deeper study may be required to confirm infringement. If an infringement is indeed detected there are various courses of action available and one must act based on the advice of experts in the field.
This may be treated as an umbrella term for deriving revenue from a patent. Let us explore each of them briefly.
Reducing the patent to practice.
The most direct method of monetization is to put the patent into practice, sell the product for instance and derive revenues. For example, if the patent enables the patentee to offer something of value to the user and because of the monopoly given by the patent, if a premium price is charged, monetization of the patent may be higher.
Licensing the patent
If a patent is valuable and others, including the patentee’s competitors, are interested in using the patented invention, the patent may be licensed to others. The license could be an exclusive (only one licensee gets the exclusive right to use the patented invention) one or a non-exclusive one – licensed to more than one licensee. In an exclusive license, even the patentee is excluded from using the patented invention. In both cases the agreement may be for a predetermined fee or a predetermined percentage of the turnover of the licensee, of the product using the patent.
Sell the patent
A patent may be sold to an interested buyer. Sometimes this is referred to as an outright sale. The name of the assignee of the patent may also be changed in the records of the patent registers and so on.
Standard essential patent
One of the best ways of monetizing a patent is to include it in an international technical standard. Of course, this easier said than done. But it is good to consider it for completeness. Any international standard mandates many specifications to be met by all products manufactured to conform to that standard. If a specification can only be met by using a patented invention, then all manufacturers who plan to make products that conform to that standard will be obliged to use that patented invention thus assuring the patentee a consistent revenue stream.
Earlier in this article a mention was made about the maintenance fees being paid periodically. We will revisit that here with a different perspective. One must note the as time goes, the maintenance fee increases. This it becomes more expensive to maintain a patent. So, it is a good practice to assess whether to continue maintaining the patent for the next period. Especially with newer technologies, which have a shorter life or become obsolete quickly, this question needs to be addressed periodically.
Creating a patent portfolio
As mentioned earlier, getting a patent granted is not an end in itself. Especially in the present knowledge economy, there is an ever-present demand for offering new features for existing products, offering new products to users, reduce costs, improve quality, and so on. Each one of them presents an opportunity to develop new solutions that may be patentable. This is what keeps an entity in business and, also, grow. So, every patentee must endeavor to be inventive and grow the number of patents around a given patent. Such a group of patents is called a patent portfolio.
It is a fact that a patent portfolio is of greater value to a buyer or a licensee than a single patent. This is because, a portfolio represents a more complete solution than a single patent.
And the question of patent maintenance above because there is a greater number of maintenance fees to be paid. So, a regular system of portfolio maintenance must be instituted.
As can be seen many of the actions mentioned above need expertise and a patentee may need the assistance of professionals to handle them.
Article by Anil Kumar, 1st published in Legal Era