India Trademarks

I have received a few questions. I will post the questions and answers in the blog so every one can view it and if they have the same doubts get clarified.

Please see below for the first questions received Karthickeyan.M.

My sincere thanks to Karthi for initiating this interactive process of questions and answers. I will answer all questions that are sent to me.

1)In 35 U.S.C.102 A person shall be entitled to a patent unless the invention was the subject of an inventor’ s certificate? - Plz Explain this.

Please see 35 USC 102 pasted below.

35 U.S.C. 102 Conditions for patentability; novelty and loss of right to patent.

A person shall be entitled to a patent unless -

(a) the invention was known or used by others in this country, or patented or described in a printed publication in this or a foreign country, before the invention thereof by the applicant for patent, or

(b) the invention was patented or described in a printed publication in this or a foreign country or in public use or on sale in this country, more than one year prior to the date of the application for patent in the United States, or

(c) he has abandoned the invention, or

(d) the invention was first patented or caused to be patented, or was the subject of an inventor’s certificate, by the applicant or his legal representatives or assigns in a foreign country prior to the date of the application for patent in this country on an application for patent or inventor’s certificate filed more than twelve months before the filing of the application in the United States, or

(e) the invention was described in - (1) an application for patent, published under section 122(b), by another filed in the United States before the invention by the applicant for patent or (2) a patent granted on an application for patent by another filed in the United States before the invention by the applicant for patent, except that an international application filed under the treaty defined in section 351(a) shall have the effects for the purposes of this subsection of an application filed in the United States only if the international application designated the United States and was published under Article 21(2) of such treaty in the English language; or

(f) he did not himself invent the subject matter sought to be patented, or

(g)(1) during the course of an interference conducted under section 135 or section 291, another inventor involved therein establishes, to the extent permitted in section 104, that before such person’s invention thereof the invention was made by such other inventor and not abandoned, suppressed, or concealed, or (2) before such person’s invention thereof, the invention was made in this country by another inventor who had not abandoned, suppressed, or concealed it. In determining priority of invention under this subsection, there shall be considered not only the respective dates of conception and reduction to practice of the invention, but also the reasonable diligence of one who was first to conceive and last to reduce to practice, from a time prior to conception by the other.

Your doubt is on 35 USC 102(d)

A person shall be entitled to a patent unless -

(d) the invention was first patented or caused to be patented, or was the subject of an inventor’s certificate, by the applicant or his legal representatives or assigns in a foreign country

prior to the date of the application for patent in this country

on an application for patent or inventor’s certificate filed more than twelve months before the filing of the application in the United States,

Though written in a legal language and so confusing, the idea is simple only.

Please read the topic on Convention application and priority date. Understand them first before coming to this answer.

1. If you file in any country a patent application, you get a priority date. O.k

2. Then to gain the patent rights in another country you have to file a convention application within 12 months of the date of filing of the first application for patent. Or you must file a PCT application within 12 months.

3. If the application for patent in the US is filed after 12 months from the priority date, then no patent will be issued.

The position is the same all over the world. Timeliness is critical to protect your patent rights.

You should read the section like this.

A person shall be entitled to a patent unless -

(d) the invention was first patented or caused to be patented on an application for patent

or was the subject of an inventor’s certificate,

by the applicant or his legal representatives or assigns

in a foreign country

prior to the date of the application for patent in this country i.e., United States.

and that application or inventors certificate was filed in that foreign country

more than twelve months before the filing of the application for patent or inventors certificate in the United States

What is not bold above is implied in the section.

Got it!!!. Now read my explanation again and see what this section conveys. You are studying Law friend!!!

1. If you file in any country a patent application, you get a priority date. O.k

2. Then to gain the patent rights in another country you have to file a convention application within 12 months of the date of filing of the first application for patent.

3. If the application for patent in the US is filed after 12 months from the priority date, then no patent will be issued.

What is Inventors Certificate? Since this is not available in India I did not cover it to avoid confusing the students. But you get it here.

http://www.uspto.gov/web/offices/pac/mpep/documents/0200_201_13_a.htm

United states had an option called Document Disclosure Program. But that has been withdrawn now. See

http://www.uspto.gov/web/offices/pac/disdo.html

I’m trying to give only what is needed to understand the subject and avoid technical discussions that are of historical importance only.

2)In Section.13, Point no.2 talks about a situation where someone files after you,but claims a priority date earlier than yours by virtue of connected applications filed prior to your patent.What are those connected applications?

Please study Patent of addition. Also go to Wikipedia and find out the scope and content of Continuation Patent and Continuation in Part patent applications. I have dealt with this topic already in Lesson 7. Please read the entire Lesson 7 once more.
3)According to Section.33,If I disclose the invention after obtaining the priority date,will it brings any prejudicial effect on application which has to be patented?

Let me know if you still have doubts.

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