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Patent Application outside India

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PATENT COOPERATION TREATY APPLICATION

An Indian applicant can file a PCT International application in the following manner:

a) Filing in the Indian Patent Office acting as Receiving Office. In such cases, it is advisable that the application be accompanied by permission for foreign filing granted u/s 39 by the Controller through Form 25. If such permission is sought along with the application, there is a probability that the permission may be deferred and the application may be referred to DRDO / Department of Atomic Energy for their directions.

· An international patent application can be filed in Indian Patent Office as a Receiving Office, in request form (PCT / RO / 101) in triplicate, which can be obtained free of charge from the Receiving Office or from the International Bureau of WIPO or can be downloaded from WIPO website.

· In this case, the applicant shall make request for permission under Section 39. After the grant of such permission, the Indian Patent Office shall transmit the patent application to the IB. Applicant has to pay the prescribed transmittal fee in addition to the International Application fee and search fee.

b) Filing directly in the International Bureau of WIPO after taking permission u/s 39 from the Indian Patent Office.

· An international patent application can be directly filed in IB along with the prescribed fee, in request form (PCT / RO / 101), in duplicate. Permission u/s 39 is required for filing directly in IB. Such an application may also be filed electronically.

c) After filing a patent application in India, anytime before the expiry of 12 months from the date of filing, file an international in IB of WIPO or in Indian Patent Office as Receiving Office. However, if the international filing is within 6 weeks from the date of filing in India, such filing shall be made after taking permission u/s 39 from the Indian Patent Office.

· An international patent application can be filed within twelve months from the filing of patent application in India, in the Indian Patent Office, as a Receiving Office. However, if such an application is filed before the expiry of 6 weeks from the date of filing in India, permission u/s 39 is required. Applicant has to pay the prescribed transmittal fee in addition to the International Application fee and search fee.

· An applicant has another option to file an International Application within twelve months from the filing of patent application in India, directly in IB, claiming the priority of the previously filed Indian Patent Application along with the prescribed application fee. A certified copy of the Indian Patent Application may be filed with the International application within sixteen months from the date of priority.

Many companies operating from India cater to foreign markets, especially US. Hence, such companies are keen on filing patent applications outside India. Such companies generally contemplate adopting two options:

1. File patent applications in foreign countries without filing a patent application in India

2. File a patent application in India, and soon after, file patent applications in foreign countries

1. File patent applications in foreign countries without filing a patent application in India

When the first option is adopted, patent applicants have to complete a formality with the Indian Patent Office (IPO) before proceeding with patent application filing outside India. This formality has to be completed if one or more inventors in the patent application are residents of India. The formality requires the patent applicant to request the IPO to grant permission to apply for patent outside India. The IPO grants the permission within 21 days from the date of making the aforementioned request. Permission may be rejected by the IPO if the subject matter is relevant for defence purposes and atomic energy.

2. File a patent application in India, and soon after, file patent applications in foreign countries

When the second option is adopted, patent applicants should not, immediately after filing the Indian patent application, apply for patent outside India. If the patent applicant wishes to file patent applications as soon as possible, then permission shall be sought from the IPO. On the other hand, patent applicants can wait for six weeks from the date of filing the Indian patent application, and thereafter proceed with foreign patent applications filing, if a notification has not been issued by the IPO in those 6 weeks to the contrary. This formality has to be completed, if one or more inventors in the patent application are residents of India.

Once the IPO grants permission or 6 weeks have passed since the filing of the Indian patent application, patent applications can be filed in one or more countries outside India.

FOREIGN FILING LICENSE:

When an inventor or a company who is a resident in India, desires to file a patent application directly in a foreign country, it is necessary to obtain an FFL from the Indian Patent Office.

In 2002, the foreign filing license requirement was introduced in the Indian Patents Act of 1970. This requirement provided that any inventor who is a resident of India should file or cause to be filed a patent application for his/her own invention first in India; and only after a period of six weeks after the date of filing of the patent application, a filing could be done in a country outside India. Alternatively the inventor was required to obtain the Controller’s permission for filing the patent application outside India. The scope and applicability of section 39 did not create much of a stir among inventors in India, but there has been a lingering confusion over the definition and coverage of the term “residence” provided in section 39. Since the written permission takes time resulting in a loss of priority, filing an application first in India is the preferred way of complying with these provisions.

Prima facie, the text of the Section 39 seems to mandate that a foreign filing license must be obtained before the filing of a PCT application, this would cause a detriment to every applicant filing a PCT application via the Registered Office. In such cases, the international filing date would only be granted after the Section 39 clearance is obtained. On the other hand, an applicant who first files for an application domestically, would have the right to claim initial filing date as the international filing date. This approach seems to discriminate between the two methods for filing a PCT application under the Act. Any applicant pursuing a PCT route should be aware of the fact that filing a PCT application by way of Section 39 clearance may lead to a waste of, in many cases, extremely precious days, with regard to the international filing date.

Violation of the above requirement results in criminal liability under section 118 of the Indian Patent Act of 1970, in which the term of imprisonment may extend to 2 years or a monetary fine imposed on the inventor, in addition to abandonment of the patent application or revocation of the patent even if it is already granted. Hence it very important to abide by the mandatory requirements stated in the section 39 of the Indian Patent Act of 1970, to fortify oneself from the ramification of Section 118 of the said Act.

Opposition Proceedings under the Indian Patents Act

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Under the Indian Patents Act 1970, third parties are given an opportunity to file oppositions against the grant of any patent. There is a specific duration specified in the act for the same. Section 25 of the Act deals with Opposition .The opposition period involves two stages- pre-grant and post-grant.

Pre-grant opposition (sec. 25(1)):

The Pre grant opposition can be made at any time after the patent application has been published but before the grant of patent. Ordinarily, a patent application is published only after a period of 18 months from the date of filing the application or date of priority whichever was earlier. Any person may, in writing to the controller, contest the grant of a patent. The controller then on his discretion and after considering the evidences and statements submitted by the Patent applicant, decide to grant the patent or refuse it or require amendment to the complete specification to his satisfaction.

Post-grant opposition (sec.25 (2)):

The post grant opposition can be made at any time after the grant of patent but before the expiry of 1 year from the date of publication of grant of patent. Any ‘interested person’can give a notice to the controller for post grant opposition. The person desiring to give the notice of opposition shall state the nature of his interest in the matter. Person interested includes a person engaged in, or in promoting research in the same field as that to which the invention relates. It may be an organization that has a manufacturing or trading interest in the goods connected with the patented article or which has a financial interest in manufacturing such goods or which possesses Patents relating to the same subject. The Controller constitutes an Opposition Board comprising of 3 members who conduct the examination of the Patent and submit their report to the controller. After hearing both the parties and upon consideration of the recommendations of the Board, the controller shall decide upon the opposition and inform the parties about the same with reasons thereof. The parties if not satisfied with the decision can appeal to the Appellate Board.

Grounds for Opposition:

The grounds for both the pre grant and post grant oppositions are the same. The Act enumerates eleven grounds on which opposition can be made. They include:

• Wrongful obtaining of the invention; • Anticipation in view of prior publication in India or elsewhere; • Anticipation in view of prior claiming in India;• Anticipation in view of prior public knowledge or public use in India;• Obviousness or lack of inventive step in view of prior publication in India or elsewhere, or prior public use in India;• Not being an invention or not being patentable under the act;• Insufficiency and lack of clarity of description of the invention;• Failure to disclose information or provision of false information pertaining to related foreign filing patent application;• Failure to file a convention application within 12 months of filing the first application in a convention country;• Failure to disclose or wrongful mention of the source and geographical origin of the biological material used for the invention; and • Anticipation in view of traditional knowledge of a community (oral or otherwise) anywhere in the world.

Procedure:

Pre Grant:

The Pre grant opposition is made by way of ‘representation’ to the Controller of Patents within a period of three months from the date of publication or before the grant of patent whichever is later. The representation must include a statement of case; evidence, if any, in support of the representation; and a request for a hearing, if desired.

However, the Controller shall consider the representation only when the request for examination of the application has been filed. The Indian patents regime provides that a request for examination can be filed, even by an interested person, if he or she can provide evidence of his or her interest. After considering the representation, the controller notifies the Patent applicant with a copy of the representation. Usually, alongside such notification, the controller also issues an examination report, citing his or her observations based on the examination of the application for compliance with the act, and the patentability of the invention. The applicant is required to respond to the notification with a statement and evidence (if any) in support of the application within three months of the date of the notice. If on the perusal of the representation, the Controller is of the opinion that the application for the grant of the patent should be refused or the application should be amended, he shall give a notice of the opposition to the applicant. The applicant has one-month time from the date of the receipt of the notice to file statement and evidence supporting the application. After considering the representation and submission and hearing the parties, the controller shall simultaneously either reject the representation and grant the patent or accept the representation and grant the patent. The Controller is required to deliver his decision ordinarily within a period of one month from the date of completion of the proceedings.

Post Grant:

The post grant opposition is made by way of ‘notice of opposition’. The opponent must give the notice of opposition in the prescribed form to the Controller of Patents in duplicate. Along with the notice, opponent shall send a written statement in duplicate setting out the nature of his/her interest, the facts on which he/she bases his/her case, the relief that he/she seeks and evidence (if any) and shall deliver a copy thereof to the patentee.

Upon receiving the notice, the Controller shall constitute an ‘Opposition Board’that consists of three members and shall nominate one of the members as the Chairman. The examiner who has dealt with the impugned patent application at the time of the grant is disqualified from being a member. The Opposition Board would examine the notice of opposition and shall forward a report to the controller within a period of three months from the date on which the documents were forwarded to it.

If the patentee desires to contest the notice of opposition, he/she shall leave the reply statement setting out fully the grounds upon which the opposition is contested and evidence within a period of two months from the date of receipt of the opponent’s written statement and notice. The patentee shall also forward a copy of his statement and evidence to the opponent. The opponent has the opportunity to rebut the case of the patentee. He/she may within a period of one month of the receipt of the patentee’s reply statement and evidence leave evidence strictly in reply confined to matters in the patentee’s evidence. After this stage evidence cannot be delivered except with the leave of the Controller. With respect to further evidence filing, either party shall do so before the Controller‘s notification on the fixation of the date of hearing

After the completion of presentation of evidence and after receiving the recommendations from the Board, the Controller shall fix a date for hearing. Both the parties shall be given a notice of not less than 10 days of such hearing. If either of the party desires to be heard, it shall give a notice along with the prescribed fee to the Controller. The Controller may refuse to hear any party which has not given such notice and fee. The Controller may require the members of Opposition Board to be present in the hearing. After hearing both the parties the controller shall give a reasoned decision.

The Proposed Patent (Amendment) Rules 2015

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The draft Patent (Amendment) Rules 2015 have been published recently for public comments. The Patent Amendment Rules 2015 propose certain amendments to be made to the Patent Rules 2003. Now that digitalization has grown tremendously, the Patent rules 2015 focuses on incorporating these developments in the field of IPR as well. Many rules employing electronic transmission of applications and e-filing have been proposed. Moreover certain additional forms have been added to allow expedited examination for International Applications and for withdrawing applications. The amendments also tend to recognize the electronic communication devices. The fee structure has been varied a little to comply with the newly inserted Rules. Moreover, the formats of all the forms have also been changed to render it fit for electronic transmission. The proposed amendments have been tabulated hereunder for better understanding.

RULE NO.	PATENT RULES 2003	PATENT (AMENDMENT)RULES 2015
2		Clause (ca) inserted to define electronic transmission duly authenticated.
5	Requires patentee to furnish to the controller an address for service in India.	Requires patentee to furnish to the controller a postal address for service in India and an e-mail address and also a mobile number provided by a service provider in India.
6	(1) Includes courier service (2) Written communication addressed to the patentee at his address. (3) Courier service included (4) Courier service included	(1) Courier service omitted (1A) inserted after sub rule (1) which allows patent agent to send documents through electronic transmission duly authorized. (2) Written communication addressed to the patentee at his postal address or e-mail (3) Courier service omitted (4) Courier service omitted After sub rule (5) sub rule (6) inserted – controller may condole the delay in case of war or natural calamity.
7	(2)(a)fee may be paid in cash or sent by bank draft or cheque. (4)	(2)(a) fee may be paid in cash or through electronic means or sent by bank draft or Banker’s cheque. (2)(b) omitted (4) further adds - if controller is satisfied that during online filing process, fee is paid more than once for one proceeding, additional fee shall be refunded. If any amount in excess of requisite fee is paid for any proceeding- not refundable. (4A) inserted- fee paid for request for examination may be refunded to the extent prescribed in First Schedule.
8	(2) where no form specified for any purpose- applicant may adopt any form in 2^nd Schedule.	(2) where no form specified for any purpose- applicant may use form30 of 2^nd Schedule.
13	(4)….referred to in detail, in the specification. Proviso- claims as those left with the provisional specification. (7)(b) abstract to contain a summary of technical field,technical problem and solution and physical use or uses of the invention.	(4) …..referred to in detail, in the description and claims and the features illustrated by a drawing shall be followed by the reference sign in parenthesis used in that drawing. Proviso- claims as those left or filed with the provisional specification. (7)(b) abstract to contain a summary of technical field, technical advancement as compared to existing knowledge and principle use of the invention excluding speculative uses. (8) (9)&(10) substituted.
14		Substituted – page incorporating amendments shall be retyped and submitted to form a continuous document.
20	Form 1	Form 1A
24B		Clause (1A) inserted – request for examination may be withdrawn in Form 29. (5) Controller shall dispose of the application within 6 months
24C	not included	Inserted – expedited examination in Form 18A For PCT application only through electronic transmission (also specifies the grounds to apply).
24D	Not included	Inserted – opposition proceedings
26	Request for withdrawing application under section 11B- no form prescribed (in writing)	Prescribes Form 29A
28		Sub rule (6) inserted to allow hearing to be conducted through video conferencing or other communication devices.
55	(4)applicant shall file his statement and evidence if any within 3 months from the date of notice. (5).…require the complete specification to be amended….. (6)……the Controller shall proceed further simultaneously either rejecting the representation and granting the patent or accepting the representation and refusing the grant of patent on that application, ordinarily within one month from the completion of above proceedings.	(4) applicant shall file his statement and evidence if any within 3 months from the date of notice with a copy to the opponent. (5)).…require the complete specification and other documents to be amended….. (6)…..the controller shall decide on the representation, ordinarily within one month from the completion of above proceedings.
71		Clause (3) inserted- for inventions relating to defence or atomic energy- period of 21 days shall count from the date of receipt of consent from the Central Government.
93	Issue certificate of the payment.	Issue certificate of renewal of the patent.
103	(2)(ii) has at least 15yrs,Practical or research experience.	(2)(ii) has at least 15yrs, technical, practical or research experience.
103A	Not included	Inserted –disqualifications for inclusion in Roll of Scientific advisers
104	Furnishing his bio-data	By furnishing his bio-data
108		Further added- details of their renewal of registrations.
109		Further added-after notification of such examination and within the period as specified in the notification.
116		Inserted clause (e)- if he ceases to be a citizen of India.
129A	Not included	Inserted – Adjournment of hearing . · request if there exists a reasonable cause- at least 5 days before date of hearing · not adjourn for more than 3 occasions · Each adjournment not to be for more than 15 days.
133		Inserted clause (2)- certified copies can be obtained expeditiously within 1 week
135	Authorization of an agent shall be filed in Form 26 or in the form of a power of attorney.	Authorization of an agent shall be filed in Form 26 or in the form of a power of attorney at the time of filing of documents/applications or within a period of 3 months from the date of filing such application/ document, failing which no action shall be taken on such application/documents for further processing.
138	Power to extend time prescribed- 3 months	Power to extend time prescribed- 1month
Schedule 1		· clause(iii) inserted in Entry 1 for listing of nucleotide and amino acid. · Clause (ii) and (iii) inserted in Entry 4 for time extension under Rule 24B and 24C. · Entry 9A inserted for filing representation opposing grant of Patent. · Entry 14A and 14B inserted for expedited Examination. · Additional entries inserted from Entry 50-54.
Schedule 2	Heading – FORMS	Heading –LIST OF FORMS · Form 18A inserted for expedited examination. · Form 29 inserted- request for withdrawal of request for examination and request for withdrawal of application for Patent. · Form 30 inserted- Used when no other form is prescribed.

*The formats of all forms are also changed in the Patent (Amendment )Rules 2015.

INVENTIONS NOT PATENTABLE IN INDIA

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INVENTIONS NOT PATENTABLE IN INDIA

A novel and non obvious innovation that has an industrial application is patentable in India. The Indian Patent Act does not provide any definition of the term “patent”. Instead it has only provided for inventions which are not patentable as under Chapter III of the Act. Any invention regardless of satisfying the Novelty, Utility and Non obviousness test, if falls within any criteria under Section 3 and 4, is not patentable. Section 3 specifically mentions sixteen exclusions which cannot be patented in India.

A frivolous invention or the one contrary to established natural laws is not patentable. A perpetual motion machine or a machine that gives more than 100% performance cannot be patented according to this clause. An invention whose commercial exploitation is contrary to public order and morality or which causes serious prejudice to human, animal, plant or the environment is not patentable. Thus, a device for house breaking or a gambling machine cannot be granted a patent. An application which helps one hacking into email accounts of others can also not be patented. A terminator gene technology cannot be patented as it poses a serious threat to the animal and plant life as well as to the environment. Only genetically modified micro-organisms which do not fall under section 3 (b) are patentable.

The mere discovery of a scientific principle or the formulation of an abstract theory or discovery of any living thing or non-living substance occurring in nature is not patentable. This means the discovery of an existing phenomenon like a natural gas, or an element cannot be patented. It is for the simple reason that the discovery of the phenomenon or the theory is not an invention i.e. neither a new process nor a new product but a mere finding. Similarly, the mere discovery of any new form of a known substance which does not result in the enhancement of the known efficacy of that substance or mere discovery of any new property or new use for a known substance or of the mere use of a known process, machine or apparatus unless such process results in a new product or employs at least one new reactant cannot be patented. The crystalline forms of known substance cannot be filed for a patent grant under this exclusion. New uses of the plant neem cannot be patented as per this clause. However, salts, esters, ethers, polymorphs, metabolite, pure forms, particle size, isomers, complexes, combinations and derivatives of a known substance with enhanced efficacy are patentable. Clause (e) excludes substances obtained by mere admixture resulting only in the aggregation of the properties of the components is not patentable nor is the process by which such substance is obtained. However, Synergistic formulations are patentable. It means an admixture where one drug increases the other's effectiveness will be considered an innovation to be patented under the Act. A novel synergistic herbal formulation for diabetes cure comprising extracts from selected Indian medicinal herbs was granted the patent number 239060 in 2010.

Mere arrangement or re-arrangement or duplication of known devices, each functioning independently of one another in a known way is exclusion under clause (f). Thus, a torch attached to a bucket or a clock and a radio in a single closed cabinet cannot be patented as they work independently of each other. But, if such an arrangement results in a different use of the combined product then it is patentable.

A method of agriculture or horticulture, for example a new type of soil, or a new method of cultivating wheat cannot be patented. But this clause does not exclude filing for a patent of a new, better working agricultural equipment.

Any process for the medicinal, surgical, curative, prophylactic diagnostic, therapeutic or other treatment of human beings or any process for a similar treatment of animals to render them free of disease or to increase their economic value or that of their products for example process of carrying out a surgery or blood transfusion is not patentable. It is important to note that processes in this case are not considered inventions. However, systems and apparatuses are still considered as patentable subject matter. Plants and animals as a whole or parts thereof other than micro-organisms but including seeds, varieties and species and essentially biological processes for production or propagation of plants and animals is another exclusion under clause (j). Examples of it includes Clones of animals and new varieties of plants, a process for production of plants or animals if it consists entirely of natural phenomena such as crossing or selection, essentially biological process etc.

A mathematical method or business method or algorithms or computer programme per se is not patentable under clause (k). This exclusion about computer programmes per se has raised variety of questions about software patentability in India in the growing technological and digital world. Therefore, a computer program code in itself can be given protection under the Copyrights Act as a “literary work” but is not patentable. However a new calculating machine or combination of hardware and software is patentable.

A literary, dramatic, musical or artistic work or any other aesthetic creation whatsoever including cinematographic works and television productions comes under the Copyrights Act protection and therefore is left out of the purview of Patents Act. A mere scheme or rule or method of performing mental act or method of playing game example method of learning a language, or solving a crossword puzzle etc is excluded from Patent Law application. However, novel apparatus for playing game or carrying out a scheme is patentable. Presentation of information in any manner or method by spoken words, visual display, diagrams or symbols are not be covered under the Patent Act.Topography of integrated circuits is also not patentable. They can only seek protection under Semiconductor Integrated Circuit Lay-out Designs Act. Inventions which are of traditional knowledge or an aggregation or duplication of known properties of traditionally known component or components are not patentable. However, any value-addition using traditional knowledge leading to a new process or product, which is novel with inventive step and industrial applicability, can be patented, for example the extraction of a natural insecticide Azadirachtin from Neem.

Section 4 excludes inventions relating to atomic energy falling within Section 20(1) of the Atomic Energy Act, 1962. It says that no patents shall be granted for inventions which in the opinion of the Central Government are useful for or relate to the production, control, use or disposal of atomic energy or the prospecting, mining, extraction, production, physical and chemical treatment, fabrication, enrichment, canning or use of any prescribed substance or radioactive substance or the ensuring of safety in atomic energy operations. This exclusion clearly makes it evident that public interest if of prime importance to our patent law makers. This exclusion ensures that any invention out of atomic energy, if patented, can result in disastrous effect for the public at large.

The failure of the parliament to define the term “patent” and specifically providing for inventions which are not patentable has been largely criticized. Section 3 of the act has been in question for various ambiguities, especially in the cases of computer program patentability and pharmaceutical industries. The IP authorities in India did realize the growing need to define computer programmes per se and its patentability and published its “Guidelines for Examination of Computer Related Inventions” in the year 2013 on its website. The law makers must address this lacuna in the act to avoid further confusions and contradictions.

COMPULSARY LICENSING IN INDIA

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Patents are granted to encourage inventions and grant certain rights to the patent holder for his innovation. Patent restricts others to make, use, offer for sale, sale or import the patented product. Patent right locks the functionality aspect and restricts the rights to the patent owner. Patent is a time limited monopoly which is granted from the date of the first filing for twenty years. The Patent Act in India ensures that this monopoly does not harm the competitive structure of the market so that no harm is caused to public welfare. This is done through Compulsory Licensing by the government enshrined in Section 84 of the Indian Patent Act, 1970. Any interested person can make a request to the Controller, after the expiry of three years from the date of grant of patent, on three grounds. First, the reasonable requirements of the public with respect to the patented invention have not been satisfied. Second, the invention is not available to the public at an affordable price. Lastly, the patented invention does not work in the territory of India.

Compulsory licenses are generally defined as "authorizations permitting a third party to make, use, or sell a patented invention without the patent owner's consent. Compulsory licensing should be considered as a last resort and it is required that the applicant should first make an attempt to get voluntary license from the patentee itself. When the applicant is not able to procure the same within the prescribed period (6 months) then the applicant can file for compulsory licensing. In the BDR Pharmaceuticals International Pvt Ltd case against BMS, Controller General (CG) unequivocally said that before going to the merits of the case the threshold requirement of establishing a prima facie case must be satisfied. CG held that BDR had not really made any credible attempt to procure a license and therefore could not be said to have satisfied the statutory requirement that the applicant must have negotiated in good faith for 6 months at least. Pursuant to section 87 of Indian Patent Act, 1970, on receiving the application, the Controller should consider the evidence therein to determine whether a prima facie case is made out on the basis of the facts disclosed in the application. The landmark case of Natco v. Bayer in 2012 is the first where a compulsory license was granted. The case opened a plethora of questions with regard to India's patent policies. The decision of the case, which came in less than 6 months, reflected that instead of having very strict IP protection regime, the interest of public at large will be of paramount importance. However, the decision also encountered severe criticism from the large segment of multinational companies internationally. It was alleged that despite being a member of the WTO and an important global trading partner, India has systematically failed to interpret and apply its IP laws in a manner consistent with recognized global standards. In addition to this, potential investors also see growing trend of anti-IP developments in India which is creating a significant uncertainty in the market.

The main objective of Patent law in India is to encourage inventions and incentivize innovation. But this does not mean that the patent holder can monopolize the market structure with his innovation. It is therefore important to determine whether compulsory licensing takes away the rights of the patentee. The Indian patent law gives the patentee 3 years to exploit his innovation in his own way. But, the interest of public at large is given paramount importance in such exploitation. Thus, compulsory licensing in India is looked at very seriously and critically. It is also required to ponder upon some ancillary issues related to compulsory licensing. In case any patentees tries to go scot-free by taking the defense under section 61 of Competition Act, 2002 , some provisions under the Patent Act should be there in order to prevent them from such easy lee-way. The provision should be interpreted in a manner which will make the act of entering into anti-competitive practice culpable under Patent Act. India is in its nascent stage, however the amount of development going around in the concerned area is reflective of the fact that India is trying to fulfill all its International Commitments. It will take some time to establish India's firm stand in international scenario but as of now the growth in the field of compulsory licensing is unprecedented.

Software Patentibility in India

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The American approach is very liberal towards patenting softwares. It follows the “Machine or Transformation Test” wherein inventions in relation to softwares are patentable as long as it is capable of transforming the input into a useful output. On the other hand, Europe and UK follow practice the “Contribution Approach” to determine whether a software is patentable based on its technical contribution. If yes, the novelty and inventive step would follow. The image processing software by Vicom(1984) was patent granted. Similarly the sound processing software by Toshiba in 2014 was also granted.

Indian Position

India has as conservative approach as that of the English and European union. In India, a software can be given protection as “literary works” under the Indian Copyrights Act but the concept of it is not patentable, which forms the core part of its commercial value. Software patents are a potent threat to both open standards as well as FOSS. While in India, pure software patents i.e., a patent over a "computer programme per se" are not allowed, still software patents are to be reckoned with. The draft patent manual prepared by the Patent Office in 2008 seemingly goes against section 3(k) of the Patents Act, and allows partially for software patents. It states that “a mathematical or business method or a computer programme per se or algorithms are not inventions and hence not patentable.” Patent applications, with computer programme as a subject matter, are first examined with respect to mathematical process, business process or algorithms. If the subject matter of an application does not fall under these categories, then, the subject matter is examined with a view to decide whether it is a computer programme per se. If the claimed subject matter in a patent application is only a computer programme, it is considered as a computer programme per se and hence not patentable. Claims directed at computer programme products are computer programmes per se stored in a computer readable medium and as such are not allowable. Even if the claims, inter alia, contain a subject matter which is not a computer programme, it is examined whether such subject matter is sufficiently disclosed in the specification and forms an essential part of the invention. If the subject matter of a patent application is not found excluded under the foregoing provisions, it shall be examined with respect to other criteria of patentability.

While there has been substantial discussion on how patents will affect the pharmaceutical sector, there has been little debate about its implications on the software industry. However, with a growing software industry which is trying to spread its indigenous roots, the issue becomes an important one. The Indian Parliament scrapped its ordinance in 2005 that said “software in combination with hardware”. The patentability of a software driven invention is very ambiguous and controversial.

Boehmert & Boehmert's Annual IPR Training Course

2014-02-24T15:25:00.002+05:30

Boehmeret & Boehmert annual IPR Training Course:Obtaining, Enforcing and Evaluating

Intellectual Property Rights in Europe at Munich,Germany from 26 June-5 July 2014. Detailed program can be downloaded from:

http://www.boehmert.com/news-notes/dates-events-workshops/training-course-patent-law-and-trademark-law-from-26th-june-to-5th-july-2014.html

This course has been shaped to introduce important aspects of obtaining, enforcing and evaluating, particularly licensing Intellectual Property Rights in Europe, providing both an overview on the fundamental strategies of patent and trademark protection as well as insights into the practice of Intellectual

Property Professionals. The first week of the seminar deals with the use of trademarks, copyright and the unfair competition law for protecting industrial property, whereas the second week is dedicated to the protection of technology and innovations by patents, utility models and designs. This course addresses in-house lawyers, corporate patent and trademark managers as well as other intellectual property professionals.

This program has acclaimed faculty comprising Patent attorneys from major European IPR firms, EPO experts, Patent judges etc.

Scores of IPR practitioners from India have benefited from this program and so can you. If you have any further queries, please write togoddar@boehmert.de.

Intepat launches IPLogBook, a comprehensive web-based real-time IP Portfolio Management Solution

2012-08-09T08:00:00.000+05:30

Bangalore: Intepat IP Services Pvt Ltd (“Intepat”) today announced the launch of IPLogBook as a value-added service for its clients in India. This web-based Intellectual Property (IP) Portfolio Management Solution would empower users by providing them with real-time systemic information on their portfolio status and also alert them of critical deadlines. The cloud-based solution has been created with state-of-the-art technology, to ensure data security.

In today’s global marketplace, the existence of dynamic interplay between businesses, legal and technical issues cannot be undermined. The protection of Intellectual Property (patents, trademarks, copyrights) has thus become an important cornerstone, which determines an organization’s go-to-market strategy and business growth prospects.

Safeguarding of intellectual property is a time-critical process that involves filing of applications, patent examination, payment for annuity fees, renewals, compliances and several other procedural intricacies.

Indian enterprises have made their mark in key sectors such as IT, electronics, telecommunications, and energy sources. These companies carry out a wide range of research and development projects on a regular basis. Unfortunately, often their efforts come to naught as overseas companies challenge innovations and new developments on the grounds of patent and copyright laws.

The primary reason being, Indian enterprises are not well versed with the patent / copyright laws and there is an absence of a comprehensive intellectual property management solution.

IPLogBook enables users to check current status of their IP Portfolio, provides them with a complete file history with relevant dates and serves as a comprehensive document management system.

The solution incorporates comprehensive features to enable registration - all filing details, uploading documents, email notifications for change in status, tracking application status, notification on renewal notice, alerts based on the various timeline set, systematic reminders based on various alerts timeline, forum for question & answer, support on various IP matters through ticketing and generation of reports amongst others.

Intepat’s IPLogBook solution would be immediately available to the Company’s existing clients as a value-added service. However the Company has plans to offer the solution to other Indian enterprises as well in the near future.

“As we are always innovating the way we provide our services, IPLogbook is a unique and effective solution that would enable our clients to ensure/comply with legal issues related to their intellectual property. Our customized approach has enabled our clients to transform their ideas and innovations, into business opportunities.”

About Intepat IP Services Pvt Ltd

Intepat IP Services Pvt Ltd (“Intepat”) is a niche Intellectual Property (IP) services Company that provides a broad range of customized services in Intellectual Property matters, that includes patents, trademarks and design. Our clients, from Fortune 500 to SME’s to Individual Inventors, are active in a broad variety of technical and scientific areas such as mechanical engineering, electrical engineering, physics, electronics, communication, computer science and material science. For more details, please visit www.intepat.com

Intepat’s Services

· Patent Search Services (Patentability Search, Infringement / Freedom to Operate Search, Validity / Invalidity Search, Technology Landscape Studies, Patent Watch Search)
· Patent Preparation Services (Patent Drafting, Patent Filing & Prosecution, PCT Application in India, Patent Illustration)
· Patent Support Outsourcing (Patent Searches, Patent Drafting and Prosecution, Patent Analytics, Patent, Litigation Support)
· Trademark Services (Trademark Search, Trademark Filing & Registration, Trademark Renewal, Trademark Watch)
· Industrial Design Services
· Copyrights Services

USPTO and NIST Launch Online Intellectual Property Awareness Assessment Tool

2012-04-07T13:24:00.001+05:30

Intellectual property (IP) is the creation of the human mind. It can include unique technological innovations, works of art, brand and concept names, symbols, logos, design and other ideas made real and tangible by creative individuals. Yet many businesses and individuals may not realize that they regularly create and use valuable IP assets in their workplace—assets which they need to protect and keep from being exploited or appropriated by competitors. To better serve the independent inventor and small business communities, the United States Patent and Trademark Office (USPTO) and the National Institute of Standards and Technology (NIST) have released a free online tool that will allow creators of intellectual property to recognize when they have an asset that can give them a competitive edge in the marketplace and when they should seek IP protection.

The USPTO and NIST developed the IP Awareness Assessment Tool as a way to educate innovators about these rights and encourage growth in the marketplace.

Check your IP awareness at http://www.uspto.gov/inventors/assessment/assessment.html

Rustling Section 3(d) in the Novartis (Glivec) case

2011-12-08T13:37:00.002+05:30

A lot has been in the news about the Novartis case. This article briefly deals with the case in relation to Section 3(d), the contending section on which the case primarily pivots.

A Brief Background:

The Novartis patent application principally concentrates on formulating the beta-crystalline form of imatinib mesylate. It is to be noted that the renowned anti-cancer drug, Glivec /Gleevec was formulated from the beta-crystalline form of imatinib mesylate and the invention is already patented in nearly 40 countries.

So, why is Novartis facing difficulty in patenting the same invention in India? The short answer to that is Section 3(d) of the Indian Patent Act, 1970 which was inserted by way of an amendment in 2005 of the Act. The section reads-

“(d) the mere discovery of a new form of a known substance which does not result in the enhancement of the known efficacy of that substance or the mere discovery of any new property or new use for a known substance or of the mere use of a known process, machine or apparatus unless such known process results in a new product or employs at least one new reactant.

Explanation.-For the purposes of this clause, salts, esters, ethers, polymorphs, metabolites, pure form, particle size, isomers, mixtures of isomers, complexes, combinations and other derivatives of known substance shall be considered to be the same substance, unless they differ significantly in properties with regard to efficacy”

The object of inserting Section 3(d) was to prevent the “ever-greening” of patents since there were cases wherein applicants tried patenting trivial modifications to current patented inventions to extend its monopoly regime. This section sought to prevent ever-greening by disallowing the patenting of a known substance unless it results in an ‘enhancement of the known efficacy of that substance’.

The case has appeared before the Madras High Court, the IPAB and now, before the Supreme Court, wherein the main point of objection is that the invention is a “mere discovery of a new form of a known substance which does not result in the enhancement of the known efficacy of that substance”.

After being rejected by the Indian Patent Office (Chennai) under Section 3(d), Novartis moved the Madras High Court in 2006 challenging the decision. It challenged the grounds on which the IPO rejected the application as well as Section 3(d) arguing that the Section contravenes TRIPS as well as Article 14 of the Indian Constitution (equality before the law).

The High Court, in 2007, decided to split the two challenges, deciding to continue to deal with the validity of the Indian law but referred the appeal challenging the grounds on which the Indian Patent Office (IPO) rejected the patent application to the Intellectual Property Appellate Board (IPAB).

Before the High Court:

On the matter of constitutional validity, Novartis stated that Section 3(d) violates Article 14 of the Constitution as the terms such as “enhancement of known efficacy” and “differ significantly in properties with regard to efficacy” are not accompanied by guidelines to define its scope, hence rendering the section vague and arbitrary, and as a result, conferring unfettered power to IPAB which violates the concept of equality enshrined in Article 14 of the Constitution.

The High Court, deciding on the validity of Section 3(d) held that Section 3(d) is constitutionally valid. It correctly noted

“The argument that the amended section must be held to be bad in Law since for want of guidelines it gives scope to the Statutory Authority to exercise its power arbitrarily, has to be necessarily rejected since, we find that there are in-built materials in the amended section and the Explanation itself, which would control / guide the discretion to be exercised by the Statutory Authority. In other words, the Statutory Authority would be definitely guided by the materials to be placed before it for arriving at a decision.”
(Para 16)

However, the challenge of it being compliant with TRIPS was held not maintainable since the proper authority to settle this matter would be the WTO dispute settlement panel.

Additionally, as obiter dicta, the Court tried to define the scope of the term “efficacy” and took the aid of a medical dictionary to conclude that “efficacy” would mean “therapeutic efficacy”. This scope of “efficacy” was unclear as to whether bio-availabilty would count as therapeutic efficacy, since bio-availability might mean that a dosage of a certain medicine with side effects is reduced to a smaller dosage with no side-effects, thus making it therapeutically effective. The question was to whether bio-availabity would make the beta-crystalline form therapeutically efficacious was to be decided by the IPAB.

Before the IPAB:

In 2009, when the appeal challenging the grounds on which IPO rejected the application was heard before IPAB, IPAB held that though the claim covering the beta crystalline version of Imatinib Mesylate is both novel and inventive, it failed the test under section 3(d), which requires a demonstration of "significantly enhanced efficacy".

To this, Novartis showed that the beta-crystalline form of imatinib mesylate showed enhancement due to its 30% bio-availabity; however, this evidence was rejected by the IPAB which iterated that the evidence did not conclude the enhancement sought under Section 3(d). It stated that section 3(d) is a heightened inventive step standard and that the only kind of efficacy that would satisfy section 3(d) is therapeutic efficacy. It said that Novartis's beta-crystalline version may possess improved bioavailability, thermodynamic stability, improved flow properties and lower hygroscopicity, but this does not amount to an increase in "therapeutic efficacy". The IPAB did not provide detailed reasons as to why it thought the beta-crystalline form lacked efficacy.

Appeal to Supreme Court: Novartis, in 2009, appealed to the Supreme Court against this decision of IPAB. The case is still being heard before the Supreme Court, the next date of hearing being 28 February 2012.

The case is being closely watched as it is speculated that the Court would define the true scope of Section 3(d) amidst other matters.

Design Patent in India

2011-11-24T15:02:00.001+05:30

"Design" may be obtained to the features of shape, configuration, pattern, ornament, or composition of lines or colours applied to any article. It can be in two or three dimensional, or in both forms by any industrial means or process. It can be manual or mechanical or chemical; separate or combined; but the finished article appeal must be judged solely by the eye, for example- Jewellery, Computer icon, etc. Design does not include any mode or principle of construction. To qualify for a design patent, the subject must be new in the sense that no single, identical design exists in the prior art. It must satisfy the ornamental standards, and it must be original to the inventor/inventors seeking protection. It must not be on the basis of any previously existing design or combination of designs when viewed through the eyes of a designer skilled in the art. It must be issued for an article comprised in the prescribed classes of articles under design law. When your product design gives you a commercial advantage, you should protect your design by filing of design patent.

Salient features of design patent in India are as follows:

When a design is registered, the registered proprietor of the registered design has copyright in the design for duration of ten years from the date of registration. It can be extended for another five years from the expiration of the original period of ten years in a prescribed manner
Piracy of registered design is illegal by any person during the existence of copyright, only license or written consent of the registered proprietor allows doing anything with the registered design.
A registered proprietor can sue to bring a suit for the recovery of damages for any contravention of imitation of a registered design.
A registered proprietor can do assignments and transmissions of a registered design and the details of the same is entered in the book of register of design for record.
Where a person becomes entitled by assignments, transmission or other operation of law to the copyright in a registered design, he may make application in the prescribed form to the Controller of Design to register his title,
The exhibition of a design, or of any article to which a design is applied, does not prevent the design from being registered or invalidate the registration, provided, the exhibitor give previous notice to the controller of design in a prescribed manner. Such application for registration is made within six months from the date of first exhibiting the design or article or publishing a description of the design.
The provisions of the Patents Act, 1970 with regard to certificates of the validity of a patent, and to the remedy applies in the same manner in case of a registered design as in the case of patents.

How to file a patent in Indian Patent Office

2011-11-09T11:39:00.004+05:30

(In this article, we discuss the steps of filing a patent in the Indian Patent Office. The entire patent procedure is not covered in this article and only the steps necessary for filing a patent is covered.)

The decision to grant patent protection in a particular country ultimately rests on the Patent Office of that country. Patentee’s rights include the exclusive rights to prevent others from using his patented invention.

Who can file: Patent Application can be filed by an inventor, alone or jointly with others, or his/their assignee or legal representative of any deceased inventor or his assignee.

Where to file: Application is required to be filed according to the territorial limits where the applicant or the first mentioned applicant in case of joint applicants, for a patent normally resides or has domicile or has a place of business or the place from where the invention actually originated.

If the applicant for the patent or party in a proceeding having no business place or domicile in India, the appropriate office will be according to the address for service in India given by the applicant or party in a proceeding. For example, patents can be filed at the Chennai Patent Office where the address for service would be Intepat IP, Bangalore.

The appropriate office once decided in respect of any proceedings under the Act shall not ordinarily be changed.

Types of Patent Application: Different types of Patent Application can be filed. These are-

a) Ordinary Application

b) Application for Patent of Addition (granted for Improvement or Modification of the already patented invention, for an unexpired term of the main patent).

c) Divisional Application (in case of plurality of inventions disclosed in the main application).

d) Convention application , claiming priority date on the basis of filing in Convention Countries.

e) National Phase Application under PCT.

Documents required while filing:

1) Application form in duplicate (Form 1).

2) Provisional or complete specification in duplicate. If the provisional specification is filed, it must be followed by the complete specification within 12 months.(Form 2).

3) Drawing in duplicate (if necessary).

4) Abstract of the invention in duplicate.

5) Information & undertaking listing the number, filing date & current status of each foreign patent application in duplicate (Form 3).

6) Priority document (if priority date is claimed) in convention application,when directed by the Controller.

7) Declaration of inventor-ship where provisional specification is followed by complete specification or in case of convention/PCT national phase application (Form 5).

8) Power of attorney (if filed through Patent Agent).

9) Fees (to be paid in cash/by cheque/by demand draft)

These are the important points to be noted while filing an application at the IPO.

Cost of Obtaining a Patent in India

2011-11-03T13:43:00.004+05:30

It is understood that patenting is an expensive and extensive process. Usually while filing a patent, only the statutory filing fees and the professional fees are disclosed. However, after the filing, there are certain other fees that are to be paid to the Indian Patent Office (IPO). Therefore, it is imperative that one should understand the patent procedure and realize the fee break-up while applying for a patent.

While approaching a patent attorney, a bundled fee consisting of the statutory fees and the professional fees would be disclosed. The professional fees vary from attorney to attorney. Herein, only the statutory fee is disclosed.

Filing- Firstly, while filing a patent application, the status of the applicant- whether a natural person or other than natural person - is considered. ‘Other than natural person’ may include a legal entity; it may also include a legal entity and a natural person jointly. Whereas a natural person’s fee for filing an application is marked at Rs. 1000/-, fees for others is marked at Rs.4000/-.

Specification and Claims- The IPO levies no fees for a specification up to 30 pages and up to 10 claims. However, if the specification exceeds 30 pages, then a fee of Rs. 100/- per page for natural person (Rs.400/- per page in case of ‘other than natural person’) is levied. Similarly, no fee is charged for a maximum of 10 claims. However, if there are more than 10 claims, then a fee of Rs 200/- for natural person (Rs. 800/- in case of ‘other than natural person’) is charged per extra claim.

Early Publication- All patent applications filed are published in the Patent Office Journal after 18 months from date of filing of the application. However, if the publication needs to be hastened, then there is an option of early publication by filing Form-9 and making appropriate payments. The fee for early publication is Rs.2500/- for natural person and Rs. 10,000/- for others. If early publication is opted, the application will be published within one month from the date of request.

Request for Examination- Applications are examined only when the examination fees are paid by the Application; otherwise, the applications are deemed to be abandoned. Fee for examination needs to be paid within a period of 48 months from the date of priority or date of filing of the application. It is to be kept in mind that earlier payment of fees entitles earlier examination, thus hastening the patent procedure. The prescribed fees for examination are Rs. 2,500/- for natural person and Rs. 10,000/- for others.

These are the statutory fees that are most important to keep in mind while filing a patent application. Besides these, there are opposition fees, fees for requesting an extension of time as well as renewal fees.

Online Certificate Course On Intellectual Property Rights (IPRs)

2011-10-24T01:51:00.000+05:30

Federation of Indian Chambers of Commerce and Industry (FICCI) has started an Online Certificate Course on Intellectual Property Rights (IPR). The objective of the Course is to increase awareness about IPR in the Society for the benefit of the Nation at large.

Online Course coverage

Patents and International Filing System, Trademark, Copyright, Design, Geographical Indication, Biodiversity, International Arrangements and IPR Enforcement: Infringement and Remedies.

The study material is all inclusive covering the aspects like overview, prosecution, enforcement, appeals, remedies, best strategies and practices, case studies, Intellectual Property as a collateral, International conventions/treaties/agreements on concerned Intellectual Property etc.

Key Differentiators / Key Features of the Course

The Study Material has been prepared by well known experts in the area, who are from esteemed organizations/Educational Institutes like Amarchand and Mangaldas, Anand and Anand, Entete Legale, Inttl Advocare and University of Delhi.
Industry oriented module.
FORUM to enable participants to raise queries to IP Expert and also to interact with other participants.
Weekly updates on IPR to registrants.
One day of Interactive Session for participants with IP Experts for addressing their specific doubts/issues (Not mandatory to attend) at FICCI, New Delhi. Recording of the Interactive Session to be made available online, to all participants.
Best performers, amongst the Students, in Online Examination will be provided with an opportunity to do internship with FICCI IPR Division.
Participants from Industry will be provided an opportunity to participate in FICCI-IPR division events.

Who Can Pursue

Students from Law, science and other disciplines, Lawyers, Patent Agents, Professionals from Industry fields like Electrical / Computer / Chemical / Mechanical / Research and Development and other scientific domains, enforcement personnel, etc.

Schedule of conduct of Online Course on IPR

Online Certificate Course on IPR would be conducted twice a year in the months of January – March and July – September.

The registration for the January- March course in 2012 would start in November 2011. The interested applicants may get their seats confirmed by submitting the details.

To know more about the course, please visit at

http://www.ficciipcourse.in/

Patent searches and their importance

2011-10-21T17:34:00.003+05:30

In the grant of a patent, a lot of time, sweat and money are involved. The arena of patents is developing at a fast pace. In 2009-2010, around 40,000 patent applications were filed in India against the 17,500 applications filed in 2004-2005, a leap of 250% in the past five years. However, one should understand that not all patent applications filed are prosecuted successfully. The primary reasons for rejection of an application are either (a) the invention is not novel (b) or it is obvious such that a similar patent already exists.

The Government fees for a patent filing can be anywhere from Rs.14,000 - Rs.20,000. Besides the Government fees, fees to the attorney or agent needs to be considered. On the whole, it is without doubt that patenting is an expensive process and therefore, requires an inventor/assignee to tread carefully in order to successfully prosecute patent applications.

A patent search or a patentability search is a search conducted in patent databases as well as in the literature available to check whether any invention similar to your invention already exists. In other words, it evaluates your chances of getting a patent grant. Therefore, instead of going forth with the filing, if one conducts the patentability search, one can get a clear idea about the patentability of the invention; whether the application should be filed and the strengths and weakness of his invention.

Since patenting is an expensive procedure, it is prudent to conduct a patentability search before filing an application. Besides financial reasons, there are several other compelling reasons for conducting a search before filing an application.

A patent search would make one realize the patentability or the extent of patentability of an invention. Many a times, inventors are not well-versed with the scope of patentability that law covers. For example, computer programmes, per se, is non-patentable but computer programmes that are manifested in a useful way can be patented. A patentability assessment can help you understand whether your invention is patentable and if so, how far can it be protected.
It is important that your patent agent/attorney knows the prior art available in order to draft the patent claims. A patentability search gives an idea of what can be sought patent protection and what falls in the prior art domain. Thus, one can understand from the search report the area of strength of the invention and accordingly draft claims that do not infringe other patents or fall in the prior art.
Sometimes, the invention might not be novel and the patentability search might reveal patents/ inventions similar to the invention. In such cases, from reading the prior art literature, one can come up with newer ideas and refine the invention such as to make it patentable.

By knowing the literature present in the field of one’s invention, one can understand the strength or weakness of the present invention. This, in turn, helps in drafting a stronger patent application and making it less vulnerable to rejections by the Patent Office. On the other hand, it would also help to decide whether one should proceed with the filing of the application or forsake it.

The patent search can also reveal certain companies who are keen on obtaining patents in the field of technology relating to your invention. In such cases, it gives you the lead on which companies to contact for licensing of your invention.

Many-a-times, we see existing patents already available in the database, yet they have not been commercialized. Analyzing the patent search may reveal why commercialization was not viable, thereby, helping you decide whether you should proceed with filing the patent application if commercialization is on your mind.

One should note that while applying for a patent, the applicant needs to describe his entire invention. Even if his patent gets rejected, his application would be considered prior art, open for all to see. This can very often lead to a scenario where his competitors get access to his hard work. To avoid such a situation, a patent assessment would prove helpful. Even if in the eyes of the patent law, your invention is not patentable, yet you can use it as a trade secret and license it to others and gain revenue. A patentability assessment would help the investors realize whether applying for patent would justify the expenses borne.

It is a well-known fact that free patent databases are available over the Internet and anyone can access these databases. However, it is pertinent that a person skilled in conducting searches be given the task. The reason being, patent searches involves tedious, repeated searching through various patent and non-patent literature. An unskilled person would not be able to do justice to the vast amount of literature to be searched. Furthermore, a skilled person understands the importance of the claims of a patent. The claims of a patent are of utmost importance when a similar patent to your invention exists; in such a case, one needs to analyze the patent claims to determine the degree of similarity between the two. Furthermore, a skilled person would be able to counsel on the strength of your patent or on refining your patent so that it does not infringe other existing art. A non-skilled person may not understand these concepts.

Professionals at Intepat understand the realms of patent searches and conduct comprehensive searches in patent and non-patent literature and also provide counseling on management of patents.

Take part in the Lafarge Invention Awards 2011!

2011-09-12T21:00:00.003+05:30

Are you an Indian entrepreneur or new company, engineering consultant, architect, researcher or academic? Do you have an innovative project related to Lafarge building materials (aggregates, cement, concrete and gypsum) and that contributes to sustainable construction? If so, Lafarge can help you make it a reality!

Submit your project

The Lafarge Invention Awards aim to encourage and reward innovative projects related to building materials and contributing to sustainable construction, this year in India. The fast pace of Indian economic and demographic growth is indeed generating immense needs for new infrastructure and housing, which must be met through new, innovative approaches to construction that take into account social, economic and environmental imperatives.

Projects submitted should be based on an invention less than 5 years old. They should involve a new product, industrial process, construction method or service and should have reached at least the prototype phase, ideally demonstrated in a real construction project.

The Awards

1^st prize: 1,000,000 INR
2^nd prize: 500,000 INR
3^rd prize: 250,000 INR

Winners will also be invited on an all-expenses paid visit to the Lafarge Research Center, the world’s leading research facility in building materials.

Key dates

September 1^st – November 30^th 2011: Submission of projects via the on-line entry form below
January 2012: Pre-selection of 10 finalists by a panel of Lafarge experts
March 2012: Presentation by finalists to a Jury of Lafarge executives and renowned experts and selection of the three winning projects

Projects will be judged on:

their innovative nature,
their viability and economic impact,
their technical feasibility (with an existing prototype),
and their contribution to sustainable construction.

To submit your project, please visit the website http://www.lafarge-inventionawards.com/index_en.html

Patent For Success

2011-07-22T00:34:00.003+05:30

Synopsis- Patenting involves competitive strategies in today’s business world. To build a successful company through protecting its patents, one needs to develop a patent-filing strategy as well as manage their IP assets in a way that would bring revenue to the company. But above all, one should be aware of the pitfalls of the patenting system and learn to combat them efficiently by devising a wholesome, customized patent strategy.

Abraham Lincoln’s words ring true when he said that the patent system is “the fuel of interest to the fire of genius.”

The concept of patenting inventions can be traced back to the 14^th century. The system was introduced to encourage the inventors by awarding them exclusive rights to their inventions for a specific period of time in exchange of public disclosure of the invention once the period of protection was over. During this specific period, the inventor could reap the benefits of his hard-work by exploiting his patent in any number of ways. After such period was over, the knowledge of the invention is dissipated to the public, so that the public can utilize this knowledge.

Patenting, in today’s world, is of a different ball game altogether. Though the basics of patenting remain the same, i.e. exclusive protection for a specific period; today, patents are used to give companies’ leverage against its competitors. Patents can be used to enhance the competitiveness of a business. Patents are used as weapons of defense: to be ahead of others as well as to stop others from overtaking one’s progress. Companies stringently protect their IPs and have IP management portfolio because they realize that a single, novel patent can be the only difference between one’s company leap over others. A single example to exemplify this can be the technology of xerography developed by the Xerox Corporation that created a new industry in itself.

When such a product is invented which is a leap over the existing technologies available, then it is prudent on part of the company to protect such invention. Protection is sought to keep the company ahead of others- so that none can use the patented product/ process. Usually, in a company, the employee(s) who invents the product is the Inventor(s) and the Inventor(s) assign the rights to the company. Patent rules and rights are different in different countries, but in most countries, it includes a right of exclusive use of the patents for a limited period of 20 years.

Rights of the Patentee/ Company:

During this 20 years period, the patentee gets the exclusive rights to

Enjoy monopoly rights over his invention
Cease others from making, using, selling, importing, offering for sale or distributing the patented invention without his permission
Monetize his patent by selling or licensing

From the standpoint of business enterprises, these rights mean that its competitors cannot create similar products that infringe the patent; and if it does so, the patentee company can sue them. Incase the competitors want to use the patented product/ process; it would need to get a license from the patentee company. During this period of 20 years, the R&D team can further improvise on the patent.

Points to be taken care of while patenting:

Though there are definite gains in patenting, yet a company should have a patent strategy in place. One should not patent every invention available. This is because patenting is an expensive procedure and some patents are not worth patenting. Also, as against general notion, patent protection is not international; it is a national process and one should understand the risks involved while choosing jurisdictions. One should also be aware of other’s IP and respect the same to safeguard oneself from unnecessary litigation or royalty payment.

Expensive Procedure and How to combat it:

Although patenting is necessary to create a unique position in the market, often the costs of patenting deter companies from patenting their inventions. In US, as well as in most other countries, attorney fees are charged by the hour and it can be anywhere between $250- $500 per hour. To combat the cost, most foreign companies employ Indian IP firms such as Intepat IP Services to cut costs of patenting while maintaining the quality of their patent applications. Another strategy is to evaluate the inventions and separate the important inventions from the non-important ones and patent the former category only. Also, one should evaluate in which countries the future of the product lies and then file patents accordingly. Filing patents on a whole-wide basis is simply a waste of money.

When should a product/ process be patented:

Though there is fierce competition to patent inventions and gain exclusive rights, one should not patent each and every invention. Sometimes, the product is not worth the money to be invested in order to protect it. To estimate whether your product is worth patenting, the question to be asked is- whether the product would be successful enough that competitors would want to obtain the product. If the product would generate a meager amount of profits, it is not worth patenting. If it would be successful enough to justify legal expenses in defending the product, then you can consider patenting it. You can also consider patenting it if the product is successful enough to create revenues for your company by licensing it to others.

Once you have decided to patent it, there are very many ways of gaining revenue from it. You can license it, mortgage it or market the patent yourself.

Patent Procedure and in which countries should a patent be obtained:

Patents are territorial. As against general notion, a patent is protected nationally and not internationally. There is nothing called International Patent Protection. The only way of protection patents on a global basis is to file patent in each country separately. Many have heard about the PCT (Patent Co-operation Treaty) and have a wrong notion that PCT applications are protected internationally. PCT Applications are preferred only because it gives extra time to the Applicant in deciding in which countries he wants to file national patent application. Deciding the jurisdictions in which to file patent is an important decision. The procedure for obtaining patent is expensive and jurisdictions must be chosen with utmost care. Mostly, in such decisions, countries where the product will not be launched should not be chosen. Countries where the company will be doing business should be chosen. One should realize where the future of the patented invention lies.

Be aware of other’s IP rights:

If your product becomes successful, there might be companies holding patents that can drag you into unnecessary litigation or ask you to pay royalties to the tune of lakhs of rupees. There are companies who patent inventions but do not utilize them. They wait for other companies to develop similar products, and once these products become successful, the patentee companies start suing them or asking for royalties. These companies are Patent Trolls.

The Blackberry case made everyone aware of the perils of patent troll actions. NTP never made or sold anything but strived on licensing its patents to other companies. In early 1990s, it purchased patents relating to wireless e-mails. When Blackberry maker, RIM, started providing wireless e-mail services, NTP sued RIM for infringing its patents. What ensued was a legal battle that resulted in RIM paying NTP a one-time payment of $612.5 million.

To avoid messy situations like the one illustrated above, one should be sure that the product of a company does not infringe any patent. To this end, patent search for freedom to operate can be conducted to confirm that no similar product using the same technology exists. “It is actually better to do a preliminary patent search before delving into the R&D or product developments to avoid investing money in unnecessary avenues”, says Senthil Kumar, Patent Consultant/CEO of Intepat IP Services Pvt Ltd, Bangalore.

Patenting and Success:

Notwithstanding the risks involved, there is a definite correlation between patenting and business success. Companies with patents are four times likely to be successful. The reasons for success, besides the exclusive rights are as follows-

IP Valuation- How it can be helpful in making your business a success

Knowledge is now considered to be an asset and protected vigorously by companies in the form of IP protection. Corporate strategy includes the management and protection of IP assets. The first and foremost step in the strategy is the correct valuation of your company’s IP.

Valuation is important for both licensing and investment options. Moreover, valuation is important for mergers and acquisitions (M&A). For obvious reasons, companies with technological overlap in their patents are more likely to form mergers than ones where there is no overlapping.

Companies perform IP valuation of their assets and usually, segregate the IP assets into three categories:

Very valuable patents that are worth defending
Moderately valuable patents or patents that are not used or planned to be used, yet are valuable to others, and
Patents unlikely to be used and not of value

Dow Chemicals, which had 29,000 patents, classified its patents in the above three classes and the first class was segregated for business growth purposes, the second offered for licensing and the third class was donated or abandoned.

Patents and Investment- How to rope in investors:

Patents can bring in investment to the company. When investing in a company, an investor would want to be assured that his investment would be protected and that he would gain some returns for his investment. When patents are a part of the IP assets of a company, they form an assurance to the investors that the company would gain a unique position in the market due to its protected inventions and there is a possibility of financial gains from the same. Analysts have also found that companies with great patents, i.e., those cited by others in their patent applications, are likely to be a better investment than those holding patents that are never cited ["Follow the Patents," BusinessWeek, 8 January 2007]

While investing, several questions may arise in the mind of the investors- some being- When will the validity for the patent expire? Can the patent be reverse engineered or worked around to make similar inventions? Can it be proved invalid?

These uncertainties in the minds of the investor can be removed by making a patent portfolio wherein a patent search of similar products is done to evaluate your leverage against the current available/ patented products. The patent search report would consist of inventions consisting of similar products and would also cite how your product is different and advantageous from the ones available in prior art.

Patents and Licenses- How it brings revenues

After a patent is granted, the same can be licensed to others in order to create revenue for the company. Some businesses exist solely to collect revenues from the patents they license to others. Licenses can be exclusive- where there is a sole licensee who can use the patent- or non-exclusive- where there are several licensees who can exploit the patent.

The power of licensing to others may be used as a weapon to obtain royalties in cases where there is infringement of your patent. In such infringement scenarios, the patentee company usually sends cease and desist letters and obtains injunctions against the competitor who infringes their patented product. However, if a company is not willing to defend its patents through the expensive and time-consuming process of litigation, specially when they are of the opinion that the patent is not that successful/ worth as to invest money in litigation, it can bargain with the competitor and obtain royalties for the infringing operations of the competitor. More often than not, the infringing party is willing to pay royalties than get tangled in litigation procedures.

Conclusion

Patent strategy when applied in the right way can make your business leap light years ahead of others. For this, a patent-filing strategy and an IP management strategy should be customized according to the needs of the company. If properly executed, these strategies could lead your company to unprecedented success.

National Phase PCT Patent in India

2011-07-21T18:03:00.008+05:30

Patent Cooperation Treaty (PCT)

The PCT is an international agreement that helps to simplify the process of filing patent applications in several countries. PCT has been administered by WIPO (World Intellectual Property Organization). As on 1 May 2011, the WIPO recorded a total of 143 contracting states to the Patent Cooperation Treaty (PCT).

The PCT application has two phases: International and National. The National Phase follows the International Phase and consists of processing the application in the Patent Office of specific countries following the same procedure as processing a national application entry in India .

National Phase PCT Application in India:

Within 31 months from the priority date, the application enters the National Phase.

The National Phase of a PCT Application resembles a national filing in a respective country. The decision to grant patent protection in a particular country ultimately rests on the Patent Office of that country. However, filing of PCT application is much simpler than filing of normal national application since most of the formal requirements are resolved in the international phase itself. Also, the national examiners most often follow the Search Report conducted in the International Phase.

Before entering the National phase, the applicant must furnish the following documents:

Furnishing of a translation (in English). Required contents of Translation are: Description, claims (if amended, both as originally filed and as amended, together with any statement under PCT Article 19), any text matter of drawings, abstract

A copy of the international application is required only if the applicant has not received Form PCT/IB/308 and the Patent Office have not received a copy of the international application from the International Bureau under PCT Article 20.

Other Documents required by the Office:

Name, address and nationality of the inventor if they have not been furnished in the “Request” part of the international application
Instrument of assignment or transfer where the applicant is not the inventor
Document evidencing a change of name of the applicant if the change occurred after the international filing date and has not been reflected in a notification from the International Bureau (Form PCT/IB/306)
Declaration of inventorship by the applicant
Address for service in India (but no representation by an agent is required)
Power of attorney if an agent is appointed
Verification of translation. Verification consists of a simple statement by the Applicant or his agent that the translation is correct and complete.
International application or translation to be furnished in two copies
Furnishing, where applicable, of a nucleotide and/or amino acid sequence listing in electronic form
In case there are corresponding applications in other countries, the applicant must file within six months from the date of entry into the national phase, a statement concerning any corresponding applications filed in other countries. The statement must be made on Form 3.

Where to file a National Phase PCT Application in India:

The application can be filed at any of the four Patent Offices located at Delhi, Kolkata, Chennai or Mumbai, depending on the domicile, business or place of the Applicant. If the applicant for the patent has no business, place or domicile in India, the appropriate Patent office will be the address of service in India. For example, patents can be filed at the Chennai Patent Office where the address for service would be Intepat IP, Bangalore.

Patent Procedure in National Phase India:

Publication: Every patent application is published after 18 months from the date of filing. A request for earlier publication can be made in Form 9 along with a fee of Rs. 10,000. Once published, the application is deemed to have entered the public domain.

Request for Examination: An Applicant should file Request For Examination (RFE) within 48 months from filing. The Controller forwards the documents to the Examiner within a month from the date of publication or one month from RFE, whichever is later. Within a period of 3 months from the time of receiving the documents from the Controller, the Examiner establishes the patentability report. The Controller forwards the Report (also known as First Examination Report, FER) to the applicant or his agent within 6months from the date of publication or from the date of RFE, whichever is later. An applicant has to comply with the requirements imposed on him within a period of 12months from the date on which the FER is forwarded to him, else the application is deemed to have been abandoned.

Grant of Patent: After the instructions/ objections of the Controller are complied with, the application along with the complete specification will be published in the Patent Journal. The application is open to opposition for a period of 4 months or for such further period as prescribed. If no oppositions are filed or if the opposition is successfully overcome, the application will proceed for grant of patent.

Fees:

The official fee for filing a PCT Application is US$350 – 500 approximately. Intepat IP Services provides a host of IP related services, including the filing of PCT Application.

Why and what should you patent?

2011-04-25T18:59:00.002+05:30

The basic reason why inventors/ companies go for patent protection is for the exclusive right that they hold over their invention for a specific period. But besides this obvious reason, there are other reasons why an inventor/ assignee would want to patent his invention.

Before we discuss the other reasons, let us first look at what rights do the term “exclusive right” of the inventor encompasses. Exclusive rights means the inventor wields monopoly rights over his invention, such that he can stop others from using his invention without his permission. This, interpreted in another sense, would mean he can gain royalties from persons who use his invention. Royalties is one reason why many inventors/ companies want to patent.

Besides this privilege of exclusivity, many companies use the patent system as a weapon of defense also, i.e. they patent to stay ahead of others besides being able to stop others from overtaking their progress.

Sometimes, a single novel invention is all it takes for a company to leap light years ahead of others. In extreme cases, a single patent had started up entire industries- like the xerography technology started by the company, Xerox Corporation.

As a start-up company, having a patent brings an advantage of the company’s ability to rope in investors. Investors would always look for signs of growth, of knowing that his investment would be protected in a company and he would get some returns out of it. Companies with strong patents would always have a unique position in the market. This would in turn rope in investments to your company.

Nowadays, most companies understand the importance of IP valuation and have IP portfolios to manage their IP assets. Valuation is important for investment- to show the investors the strength of the company’s IP; and also for licensing and Mergers & Acquisition- to realize the full potential of the patents.

As seen, there are compelling reasons why you should patent your inventions but the next important question is: Should one try to patent any invention that one comes across? In other words, what should be patented?

The one major hurdle in the patent procedure is that patenting is an expensive affair. It becomes an even more expensive affair when you want to patent in several countries; since, unlike the general notion, patents are territorial and are not protected internationally.

Hence, one should identify in which inventions to invest money and which to forsake. To estimate whether one should go for patenting or not, the question to be asked is- how successful will the patented product be? If it is successful enough to be wanted by the competitors, then it is worth protecting. If it can give a reasonable profit by licensing it to others, then also it is worth protecting. However, if it gives a very meager amount of profits, then there is no point in investing money trying to patent it.

Though patenting might give your company very many advantages, yet before going forth, you should fully realize the value of your patent, the equation of your investment to the value you will receive from your patent; and once sure of the value of your patent, go forth investing in it.

Frequenty Asked Question on Indian Patent System

2010-12-18T00:43:00.001+05:30

EPO website published information on Indian Patent System, Following questions are answered shortly, which will be good for who want to know about patent system in India, how to file patent in India, patent search database in india etc.,

What types of industrial property rights exist in India?

Is India a member of the PCT?

Must a foreign applicant appoint a professional representative?

India has four filing offices. Which one should I file with?

Does India grant pharmaceutical product patents?

What is the current term of protection of Indian patents?

What was the term of protection before 2003?

Can priority be obtained in India?

What do I need to do to get a filing date in India?

What is a provisional specification?

Can applications be filed in English in India?

Are Indian patents subjected to substantive examination?

How soon after filing an application must the request for examination be filed?

Can Indian applications be published earlier than 18 months from the application date?

Can an application be withdrawn before publication?

What is a patent of addition?

Does India allow divisional applications?

Are third-party observations possible in India?

How long does it take until the first office action is issued?

How long is the period for putting an application in order for grant?

Do SPCs (supplementary protection certificates) exist in India?

When are renewal fees payable in India?

Does India allow a grace period for the payment of annual renewal fees?

Can a lapsed patent be restored?

Where can I find information about patent fees in India?

How do you challenge a granted patent in India?

Are Indian file histories open to public inspection?

Where can I find information about patent agents in India?

Is there anywhere I can search Indian patent information in English?

PCT Filing Trends

2010-12-17T00:05:00.006+05:30

After India became a Patent Cooperation Treaty (PCT) contracting state on 7 December 1998, since when it has been possible to designate India in international patent applications filed via the PCT route, and since 1999 the number of PCT filing shown in the graph reflects increase trend, however when we compare with other countries like china, India far behind them in filing PCT Application.

In WIPO, you can get free publications which would be really helpful for those who want to file & protect their patent in Abroad. Following are some of the publications available, which will take through the basis of invention, patent, patent search, filing patent etc.,

1. Inventions and Patents

2. Protecting Your Invention Abroad

3. Finding Technology using Patents

4. Inventing The Future

5. Patent Information Services for Developing Countries

Conference on Intellectual Property Rights: Challenges and Way Forward for Pharmaceutical Industry

2010-12-12T18:11:00.005+05:30

The Tamil Nadu Technology Development & Promotion Center of CII is organizing a one day “Conference on Intellectual Property Rights: Challenges and Way Forward for Pharmaceutical Industry” on 15th December 2010 at Hotel Le Royal Meridien, Chennai.

The conference attempts to bring an in-depth knowledge of the existing scenario in the Pharma industry post the introduction of product patents in Patent Ordinance and also on the survival strategy and the best practices through case studies of the Pharma companies for enhancing their competitiveness. This forum will pave a way for Industry-institute collaboration by means of technology transfer, licensing of the inventions which will shape the future of the Pharma sector both domestically and internationally.

The objectives of the conference are to understand the impact of the introduction of the Product Patents on the Pharma market post TRIPS era; to discuss the recent developments in Pharmaceutical Patenting; to disseminate information about best practices in IP Protection for enhancing competitiveness; Platform for Industry and Institutes to collaborate and commercialize; to establish linkages and partnerships with IP professionals and researchers in the Country to strength the IP system

The conference would deal with the following sessions:

· Indian Pharma Industry post TRIPS: Patentability and its exceptions and ways to overcome them

· Impact of TRIPS-PLUS Rules in Pharmaceutical Patenting

· Drug Marketing Approval- Patent Linkages

· Way Forward to the Pharmaceutical Industry

Prominent speakers from Biocon Limited; Dr Reddy's Laboratories; Novartis India Ltd; Strides Arcolab Limited; Lupin Limited; Abbott India Ltd; Pfizer Ltd.; Wyeth Ltd; Aventis Pharma Ltd; Associated Capsules Pvt. Ltd; Bayer Pharmaceuticals Pvt. Ltd; Panacea Biotec Ltd; Ranbaxy; Cadila Healthcare Limited; Matrix Laboratories Limited; DST, Government of India; GlaxoSmithKline Pharmaceuticals Ltd; Johnson & Johnson Ltd.; Merck Ltd.; MSD Pharmaceuticals Pvt. Ltd.; Novo Nordisk India Pvt. Ltd.; Solvay Pharma India Ltd. have been invited to make presentations at this conference.

You can contact at following address to participate in the conference.

Tamil Nadu Technology Development & Promotion Center

Confederation of Indian Industry

98/1, Velacherry Main Road

Chennai - 600 032, INDIA

Ph : +91-44 42 444 530 / 555 Fax : +91-44 42 444 510

Email: tntdpc@cii.in

Website: www.tntdpc.com / www.cii.in

WIPO Lex

2010-12-12T17:55:00.001+05:30

WIPO Lex is a one-stop search facility for national laws and treaties on intellectual property (IP) of WIPO, WTO and UN Members. It also features related information which elaborates, analyzes and interprets these laws and treaties. It provides streamlined access to reference material of key importance for optimal information on the global IP System.

China Companies Favor China IPOs

2010-12-06T19:39:00.005+05:30

China’s ever-growing international presence is evident in more ways than one, but its integration with and presence in developed capital markets around the globe is undoubtedly a dramatic example. In 2009, 183 Chinese companies raised US$50.4 billion in public equity markets, representing 45% of worldwide Initial Public Offering (IPO) volume, indicating that where Chinese companies choose to list is having an increasing impact on foreign exchange IPO activity.

The statistics behind the country’s momentous capital market growth foretell a promising future for Chinese IPOs. Listing on a developed foreign country’s exchange has long been an aspiration of Chinese companies; 38% of all Chinese companies listed in the past five years have done so overseas. The prestige and publicity seemingly outweigh the costs and accounting complexity associated with foreign public offerings.

But as China’s capital market continues to mature, exemplified through the launch of the Growth Enterprise Market in late 2009 and the State Council’s pledge to transform Shanghai into the world’s financial center by 2020, the allure of listing in international markets is beginning to taper off.

This proposition prompted Evalueserve, a global research and analytics firm, to conduct a survey with 150 Chinese companies to gain insights on their IPO preferences and reasons behind their decisions. The survey targeted private Chinese companies that have the intention of raising capital in public markets over the next few years and Chinese publicly-listed companies that have raised capital via an IPO in mainland China or overseas. Respondents varied widely in terms of size and industry. The findings revealed:

A higher proportion of domestic listings can be expected. Over the past five years, 62% of Chinese IPOs listed on a domestic exchange, but 76% of private companies surveyed indicated an interest in a domestic listing versus an overseas listing.

Local listings are likely to transfer from the Shenzhen Exchange to the Shanghai Stock Exchange. In the past five years, 92% of all domestic IPOs were listed on the Shenzhen Exchange. Evalueserve’s survey indicates that over 62% of private companies will lean towards listing on the Shanghai Stock Exchange within the next five years.

Chinese companies may prefer domestic exchanges even over the neighboring Hong Kong exchange. Throughout the past five years, 18% of Chinese IPOs were listed in Hong Kong. Around 9% of surveyed respondents expressed interest in a Hong Kong IPO.

In addition to Hong Kong, U.S. and Singapore exchanges will continue to be the main contenders for overseas listings. Survey respondents indicated little or no interest in other areas of the world, in line with past trends. Over the past five years, less than 4% of Chinese IPOs were listed outside mainland China, Hong Kong, Singapore and the U.S.

Contrast to recent history, investor capital in the west has been limited during the past two years and IPO valuations in general have been low. Not surprisingly, over half (54%) of the respondents in Evalueserve’s survey revealed that prolonged market weakness is a deterrent to listing overseas, as IPO price-to-earnings multiples are far less attractive.

But beyond temporary valuation weakness, a more powerful and sustainable motive is at the forefront of this transition. While prestige remains an enticing feature for companies to list overseas – 46.8% of private companies surveyed indicated it would be a driving factor for leaning towards an overseas IPO – the sense of prestige and global recognition that was once sought after in overseas markets is becoming more attainable through domestic listings as the world spotlight is shining brightly on China.

The government’s effort to reform the country’s markets in line with globally developed economies may be a slow and steady process, but it’s rapidly encouraging Chinese companies to tap their own markets for capital rather than to look overseas. Evalueserve’s survey revealed that nearly three-quarters of Chinese businesses cite increased financial reforms as a reason for preferring a domestic IPO, despite a longer wait period due to regulations set by the China Securities Regulatory Commission. Even companies with mainly international customers stated they are leaning towards a domestic IPO. Over 65% of respondents with a global customer base suggested they were interested in a domestic IPO.

Exemplified by the recent listing of the world’s second-largest IPO, Agricultural Bank of China, on the Shanghai and Hong Kong stock exchanges, Chinese companies are increasingly preferring to raise capital close to home. For the first half of 2010, the Shenzhen and Shanghai exchanges were the first and fourth busiest in the world, raising US$22.6 billion and US$8.2 billion respectively.

A major reason Evalueserve’s survey respondents applied for an overseas listing was prestige and global brand expansion, but that notion is losing ground. Of the companies surveyed with overseas listings, 38% said they would turn to domestic markets if additional capital was necessary. Over 80% of companies already listed in China stated they would consider tapping the domestic market again for additional capital.

Like the overall economy, underlying factors necessary to maintain China’s IPO trends are heavily reliant on the government’s commitment to reforms. Persistent sophistication of the domestic financial market is essential as Chinese capital markets are still in an infancy stage. However, a conclusion can be drawn from Evalueserve’s survey that Chinese companies believe the country’s capital market development is on the right path.

Author : Frank Yazdi, Head of Investment Research for Evalueserve China