We are all aware of the four formal requirements for patenting an invention in India. They are a) the invention must not be in the ambit of Section 3 (What are not inventions) or Section 4 (Inventions relating to atomic energy), b) novelty, c) inventive step or non-obviousness, and d) capable of industrial application. While satisfying these requirements is mandatory, the decision by a prospective patentee to patent an invention or not depends on other considerations too.

A decision to apply for a patent depends on factors such as:

           Is the invention relevant to the core of our business?

           Does it give us a competitive edge?

           Is it likely to be of interest to our competitors or others so that we can license the patent?

           Will the patent, when granted, help us defend ourselves against charges of infringement?

           Can we stop others from infringing our rights?

           Is it a standalone patent or does it fit into and augment a portfolio?

           Does it offer return on investment?

What is often not considered is, if our intellectual property right is infringed, can we detect it? Why is this important? Let us consider the process of patenting, in brief. Patent specifications are submitted to the patent office. After eighteen months, the specifications are published by the patent office. With this, the contents of the patent specifications are open to the public.

Patent specifications contain one or more claims and a detailed description of the invention. The claims mark the boundaries of the invention on which the patentee has a right - a right to stop others from practicing the patented invention without the patentee’s permission. The claims must be supported by the detailed description that precedes the claims. Here, the term ‘support’ means that there are enough details in the detailed description that enable a person skilled in the art to practice the invention without undue experimentation. Thus, we have revealed our invention to the world.

             This process gives rise to two important questions:

             What happens if the specifications are published and the patent is not granted?

             If the patent is granted and if someone infringes it, can we find out?

It is essential that we consider these questions as a part of the process of deciding whether to patent the invention on hand or not. Whereas the first question can be treated as a question of business risk - the risk of revealing our invention so that others can use it with impunity - the second question is a technical one and requires serious consideration. Let us consider the second question and its implications in greater detail, with a couple of examples.

Assume that the patented invention relates to a method of testing. The practice of the invention provides competitive advantage in that testing time is reduced, it costs less money and resources, and hence the cost of producing the product is reduced, leading to better profits. But, such an invention is likely to be practiced (infringed) in our competitor’s laboratory or test bay and we have no access to either of them. The method of testing leaves no traces even in the final product when it reaches the market. That means, we cannot detect infringement and stop it. In other words, we have passed on the benefits of our invention to our competitors for free and lost the competitive advantage that we would have otherwise gained.

Let us now consider a product which implements a patented invention through software. Such a product may be analyzed to find out if it uses the patented invention. Infringement may be revealed by the speed of execution or the accuracy of the results and so on. For example, if the invention involves improving the clarity of a displayed image, the very clarity of the image on the competitor’s product may indicate that it uses the patented invention. A further study may reveal that it in fact practices the patented invention and hence infringes our rights. This, at least, must be possible. Otherwise, patenting the invention is not beneficial.

The question can have further implications too. Even if we are convinced that the product infringes our rights, how difficult is it to prove, or is it even possible to prove, that infringement has occurred? We have to remember that we have to prove it to the satisfaction of a judge in a court of law - if the case enters that stage.

The brief examples above make it clear that we need to consider the following points before deciding to apply for a patent.

            An invention should not only be patentable but its infringement should also be detectable.

            Even if detectable, it should be possible to prove infringement in an unambiguous way - beyond reasonable doubt.

            Even if we can so prove, it should not require unreasonable amounts of resources and effort.

If, after considering these questions, we decide not to apply for a patent, it may be advisable to publish some details of the invention so that others cannot patent it. Alternatively we must make sure that the invention remains secret and within the organization.