In the fast-evolving landscape of innovation and technology, the realm of Intellectual Property (IP) holds a unique and crucial place. It’s a field where cutting-edge ideas meet the legal safeguards that protect and promote them.
I have the privilege of introducing you to Krishnaja, a dedicated Patent Agent. Today, we will explore how Krishnaja empowers researchers to protect their innovations, bridging the gap between research and intellectual property in a dynamic and ever-evolving landscape.
Krishnaja’s remarkable odyssey takes us from the halls of academia to the bustling offices of law firms. Her story serves as an enlightening guide for researchers, research scholars, undergraduates, and postgraduate students who share a deep fascination for innovation, patents, and the protection of intellectual creations.
In this exclusive interview, we’ll delve deeper into Krishnaja’s experiences, insights, and the intricacies of her profession. Her story is a testament to the power of education, passion, and dedication, serving as an invaluable source of inspiration for those who aspire to bridge the gap between science, technology, and the law.
Join us as we explore the world of patents, innovation, and the ever-evolving landscape of Intellectual Property through the eyes of Krishnaja.
1. Introduction and Importance of Patents:
Vijay: Hello Krishnaja, it’s wonderful to have you here. To get things started, could you please introduce yourself and share a bit about your journey and experiences as a patent agent? Our audience is eager to learn about your background and the path that led you to your current role.
Krishnaja: Hello Vijay, thanks for your invitation to the interview. To start with, I have a background in Biotechnology Engineering, having completed my M. Tech in Industrial Biotechnology from the National Institute of Technology, Karnataka (NITK). I was first introduced to the field of IP during my Bachelor’s at Sahrdaya College of Engineering and Technology, Kerala, wherein IP was included in our course curriculum.
I have had the opportunity to connect with the alumni network of the college few of whom were already practicing as Patent Attorneys in other countries, who later became the source of guidance to steer my career towards IP. Post my Masters at NITK, I took up my second Masters (MSc degree) from Queen Mary University of London, specialising in Intellectual Property.
I took my patent Agent examination in the year 2018 and since then working as a registered Patent Agent, moving between different firms in Delhi and Kolkata. I now work with a boutique law firm based out in Mumbai as Deputy General Manager, overlooking their Patent Department.
Having worked with a spectrum of clientele spanning from individual inventors, research institutions, start-ups, MSMEs to FMCGS and pharma giants, I have had the opportunity to work on different types of inventions.
My typical day as a patent agent involves scheduling interviews with inventors, to understand their inventions. Thereafter, we prepare a typical 30-page patent application, which sufficiently discloses the invention for filing a patent. Beyond these, a few days may vary. On some days we attend hearings before the Patent Office on other days we prepare responses to office actions issued by the Patent Office with respect to the patent applications filed. The best part of being a patent agent is every other day you are introduced to a myriad of technologies and you get to read and learn a lot new things and sometimes brush up your past knowledge.
Vijay: Why is patenting important for researchers and innovators?
Krishnaja: Researchers and Innovators they take a lot of effort and time in investing in developing a technology. I believe one way of acknowledging this effort is through Patents. From view viewpoint of academic researchers, patenting their inventions may help in securing necessary funds and grants that may eventually lead to more research in the particular field of work, thereby continually encouraging innovation, while protecting them from third parties who may copy their work, thereby providing a competitive edge.
Further, the commercialisation prospects of Patents are not to be ignored. Collaborating with potential licensees and business partners, even if the researcher does not have a manufacturing or scale-up facility, shall provide a return on investment for the time, effort and cost involved in developing the invention
Vijay: What are the key benefits of obtaining a patent for one’s research or innovation?
Krishnaja: Firstly, the patent system provides exclusive rights to the owner to prevent a third party from making using, selling or importing your invention, without the owner’s consent for a specific period of time. Patenting your invention will also help you to establish a foothold further than your competitors. Since third parties are barred from using your invention directly or indirectly, patents can deter competitors.
Secondly, monetisation benefits arise from patenting the invention. The researchers or academic institutions can commercialise the invention, license or sell it to third parties. I have been working with various technology transfer cells in institutions of National importance wherein. These cells are specifically dedicated to identifying the invention/patent of commercial importance arising and is actively involved in licensing the technology/invention arising from academic research.
2. Role of Patent Agents and Patent Attorneys:
Vijay: What role does a patent agent play in the patenting process?
Krishnaja: Patent Agents play a crucial role in the patenting process. As you may be aware, while researchers may be aware of the technical features of their invention, the legal aspects of patenting the invention may not be easily identifiable by the researchers. Patenting an invention involves a combination of science and law, which is why hiring a patent agent in your patenting process is very important.
For instance, under the Indian Patent Law, methods of treatment of disease on humans and animals are not patentable. Therefore, the researcher may not be aware of how to circumvent this legal aspect and to present their invention in such a way that the patent may be granted.
Most importantly, it is to be noted that the patent office examines the claims of the invention and its scope. Objections in the office actions are mostly directed towards the claims of the patent specification. Drafting of claims such that it provides the broadest scope to the invention whilst satisfying the requirements of the Patent Law comes through years of experience. A patent agent will assist you in providing the broadest scope of protection in the claims such that it will bar your competitors from copying your invention or even circumventing your invention to not infringe the patent.
I have had several experiences where inventors draft the applications themselves and have to pay additional fees for amendments at a later stage due to the numerous objections thrown at the claims during the examination stage. If you are quite unlucky, sometimes, you may not be able to add important features at a later stage due to specific requirements of the extant Patent Laws.
Further, you may be quite surprised to know that there are several procedural aspects to be considered while drafting a patent application which are as minute as the margin of the page, the format of the figure etc. That is why hiring a patent agent is very important for obtaining a patent for your invention.
We patent agents are committed to providing a smooth experience to our clients and assist our clients in all matters related to the handling of patents from searching for prior arts, drafting, filing patent applications responding to examination reports, attending hearings on behalf of the client, handling grant of patents and post-grant matters, timely payment of necessary fees and filing of necessary forms.
Vijay: How can researchers find and select a suitable patent agent for their needs?
Krishnaja: Researchers can approach various law firms for handling their patent applications, or otherwise, several patent agents provide individual services. The first and foremost factor to consider is that the expertise of the patent agent matches with the technological domain of the invention, and has a track record of handling successful patent applications. Having said that, I have seen several clients being adamant and requiring a patent agent with expertise in a very specific field for instance Monoclonal antibody technology. Even examiners who examine such patent applications pertaining to monoclonal antibody at the Patent Office hold a degree in a broad field of the technology domain such as a B. Pharm degree or any degree in life science or allied fields.
Secondly, you can also verify the credentials of the patent agent at the Indian Patent Office website regarding the registration status by simply providing the name of the agent.
Patenting an invention is an expensive process. The third important factor that needs to be considered by academic researchers and individual applicants, is cost involved in hiring a patent agent. Nevertheless, when it comes to obtaining a successful patent, it is important give weightage to the quality of service rendered by the patent agent rather than the cost incurred. I generally share a rough schedule of professional fee and official fee that may be incurred from handling the patent application from filing upto grant of the patent. Usually, flat fees are applicable to most of the services however certain fees such as responding to office action issued from Patent Office etc shall vary depending on the complexity of the case.
Vijay: Could you please clarify the distinction between a patent agent and a patent attorney, including the differences in their qualifications and the scope of services they provide in the patenting process?
Krishnaja: In India, the term Patent agent and Patent Attorneys are usually used interchangeably. However, from the literal interpretation a patent agent is a professional having a background in Science and have their name entered in the register for patent agents after being declared qualified in the patent agent examination conducted by the patent office. A patent agent is involved in handling your patent application from search, drafting, and grant of the Patents.
While Patent Attorneys may have been registered as patent agents by the Patent office after qualifying the patent agent examination, they hold an additional law degree. Further, they may be involved in matters specifically related to litigation, appearing before the Court, providing legal advice for Infringement, Licensing or Commercialization of your Patent and related Agreements.
3. Confidentiality and Disclosure:
Vijay: How can researchers ensure the confidentiality of their ideas during the patent application process?
Krishnaja: It is important for the researchers to not to disclose their invention to a third-party before applying for a patent. In general, any invention that is made public before the patent application is filed, is considered prior art. Prior arts refer to information that made been made public anywhere in the world in written or verbally before the filing date of the Patent application. Once the invention is disclosed before filing the patent application, the invention falls into public domain and it is no longer new. In case, researchers are running short of time, it is advisable to sign a non-disclosure agreement with parties involved in discussions related to the invention. Further, in case of exigent circumstances, researchers can leverage from the benefit of filing provisional specifications to secure the priority date before disclosing their invention to the public.
Usually the Patent Agent, by virtue of the ethics of the profession maintains strict confidentiality of your invention. However, the researchers may enter into a non-disclosure agreement with the agents prior to disclosing the invention. In my personal experience, there are very few clients who enter into non-disclosure agreements with us, as the profession in itself inherently attracts maintenance of confidential details of the client.
Vijay: What are the implications of disclosing their work before filing a patent application?
Krishnaja: Disclosure of work before the patent application is prejudicial to the interest of the Applicant. I have come across several instances, especially Phd scholars submitting their thesis prior to filing a patent application. Later, when examination report is issued, the thesis that has been published on the university website may be cited as a prior art affecting the novelty of the invention and may even result in the refusal of the Patent Application.
Though there are grace periods offered in several countries upto a period of one year from disclosing your invention publicly to file a patent, in certain circumstances prescribed by the law in each country, it is imperative for the researchers/inventors to file at least a provisional application to secure the priority date before disclosing your invention publicly. Further, researchers may exercise caution as publicly disclosing the work before filing a patent application may allow third parties to build upon your work or publish your work between the time period of disclosure and filing patent application.
4. Assistance in Patent Search:
Vijay: How do you as a patent agent, assist researchers in conducting patent searches to determine the novelty of their work?
Krishnaja: Patenting an invention is an expensive process. Therefore, conducting a prior art search before filing a patent application is a crucial step to make a decision whether you should proceed with the patent application or not and to determine the scope of the invention in light of the prior arts mined out during the search.
Usually, we conduct interview with our clients to understand the novel and inventive technical features of the invention. Thereafter, based on the description provided by the client we mine out the keywords of the invention, duly agreed by the client, based on which the novelty search is conducted through the database. Once the prior arts are obtained based on the keywords, we sort out the relevant prior arts corresponding to the invention and prepare a detailed report comparing the technical features of the disclosure of the client with the features of the prior art, based on which the client can make an informed decision towards filing a patent application.
Vijay: What steps do you take to ensure that prior art is thoroughly evaluated?
Krishnaja: We conduct exhaustive search through paid database using both key words and also patent classification search. We also conduct search for patent and non-patent literature on various freely available database and the results are interpreted and compiled in the form of prior art report. Apart from analysing the novelty of the invention, non-obviousness and other aspects pertaining to the patentability of the invention are also mentioned in the report. We determine how close the concept in the prior art is to your invention so that we can identify ways to modify the invention thereby saving cost and time during examination stage of the patent applications.
Of course, any search does not guarantee hundred percent accuracy as for instance there may be prior arts in the form of patents that may have been filed but not yet published by the Patent Office.
5. Drafting and Filing Patent Applications:
Vijay: Could you walk us through the process of drafting and filing a patent application with your assistance?
Krishnaja: Drafting of patent application is the most crucial step in the entire patent process. If not done right, the entire time, effort and cost involved in the filing of Patent may go in vain.
Usually, when a client approaches us for filing a patent application, we first share an invention disclosure form that contains specific questions directed towards the information required for drafting a patent specification. The client is required to submit each and every information regarding the invention in the IDF. Specifically, the client should be able to formulate the objective technical problem that the invention has identified and how the features of the invention provide the solution to that problem.
Further, there are certain specific requirement under the Indian Patent Law known as sufficiency of disclosure. It requires the Applicant to fully and completely disclose the invention. Therefore, we always advise our clients to provide the invention in as elaborate manner as possible with all the necessary data or examples.
We also advise our client on whether to file a provisional or complete application depending on the stage of research. Sometimes, our clients explicitly request for a prior art search report, otherwise before drafting a patent application we do conduct a preliminary search to ascertain the novelty of the invention.
Post-review of the IDF, we conduct an inventor interview to discuss further on the novel and inventive aspects of the invention. Thereafter, a first cut draft of the specification is shared with the client. Upon approval, the specification is finalised and the application is filed with the requisite forms and fees before the Patent office.
Vijay: What level of involvement do researchers typically have during this stage?
Krishnaja: Researchers play a crucial role during drafting and filing of the patent application. While elaborating their invention it is pertinent to clearly point out the novel and inventive technical feature of the invention. The researchers are required to provide relevant figures and working examples to draft the specification. Also, it is very important that researchers/applicants provide all the information related to their invention and not to hold anything back anything as this is crucial for ascertaining the scope of patent application. Specifically, while drafting a patent application the following requirements are necessary:
- Field of invention
- Problem statement
- Detailed description of invention along with reference to relevant drawings if any.
- Working of the invention
- Test results
Further, each field of invention may require certain additional inputs from the researchers, such as details of microbial depository if the invention uses a microbial resource, provide necessary information for requesting approval from National Biodiversity Authority, if the invention uses biological material from India.
6. Collaboration with Other Professionals:
Vijay: Do you work in collaboration with other professionals, such as attorneys or experts in specific technical fields, to provide comprehensive patenting assistance to researchers?
Krishnaja: Yes, we do. In certain instances, when the invention spans over multi -technology domain usually a group of patent attorneys/agents with corresponding expertise are involved in drafting and filing of the patent application. Also based on the specific service required by the researchers, we collaborate with other patent attorneys involved in commercialisation strategies, providing technical assistance to Attorneys in filing of an appeal before the court, involving with the team conducting invalidation searches etc
7. Challenges and Considerations:
Vijay: What are some common challenges researchers might encounter during the patenting process and how can these challenges be mitigated or overcome?
Krishnaja: There are few major challenges encountered by the researchers while filing a patent application. While there is a world-wide requirement to comply with novelty, inventive step and utility requirements for an invention to be patented, there are certain varying specific requirements for patentability in each jurisdiction. For example, in India computer related inventions, inventions pertaining to pharmaceuticals, life science and biotechnology sectors may face the hurdle of overcoming Section 3 of the Indian Patents Act, that bars certain inventions from patentability. Therefore, seeking service from a patent agent who is aware of both the technical subject matter and legal aspect of patent is pertinent.
Second challenge is the time taken by the Patent Office in grant of Patent especially in India compared to foreign jurisdictions. In the past few years, the patent office has taken over 5 to 7 years to dispose patent applications in India. However, due to administrative changes at the Patent office such as accretion of more human resources, amending the rules taking into consideration the interest of the Applicants and stakeholders, the patent office is ensuring that examination timelines are reduced and fast disposal of the applications.
Cost has been always an issue researcher in institutions. However, the Government has now implemented reduced fees, i.e. about eighty percent fee concession, to educational institutions, for the entire lifecycle of patent applications starting from filing to payment of annuity fees of patents to encourage and foster academia-based research and innovation. Further, the government has expanded the expedited examination category. Now institutions and female researchers as applicants can avail for expedited examination of the patent applications before the Indian Patent Office.
8. Timeline and Costs:
Vijay: How long does the patenting process typically take from start to finish?
Krishnaja: In India unless it is through expedited examination (applicable only for certain category of applicants) the entire process from filing upto grant of patent application without significant backlog may take anywhere between two to three years. However, via expedited route of examination, there are application which are disposed within a year.
Vijay: What are the associated costs researchers should be aware of?
Krishnaja: Usually, official fees are incurred during the following stages of filing and prosecution in India:
(i)Filing of patent application- May include additional costs for additional pages of the specification and extra claims
(ii) Request for examination- In case the Applicant requests for early publication along with request for expedited examination official fee shall be higher.
(iii) Maintenance of Patent – Payment of renewal fee/ annuity fee for maintaining the patent for 20 years from date of filing of the patent application.
Apart from the above patent agents may charge for specific services rendered such as prior art search, responding to office action and the like. Additional official fee may also be incurred depending on case-to-case basis.
9. Filing of International Patent Applications- An overview
Vijay: What are the considerations for researchers looking to file international patents?
Krishnaja: In most cases, researchers prefer filing an international patent application either due to potential commercialisation prospects of the invention in particular foreign jurisdictions or if the subject matter of the invention is non-patentable as per the extant Indian Patent Law.
There are three specific routes that the Applicant may prefer based on their requirements, for filing an international patent application:
- PCT route: If the Applicant wishes to obtain patent in multiple jurisdictions, then the PCT route is recommended. PCT applications are filed within 12 months from date of filing of the priority application. One the PCT Application is filed, the Applicant may choose the countries in which they intend to obtain patent, an may enter national phase within the prescribed time period in each country from the date of filing the PCT Application.
- Paris convention route: Usually preferred when the Applicant desires to file in very few foreign countries (one or two). The Applicant can first file in India and thereafter within 12 months file in the foreign country of their choice claiming priority from the Indian Patent application.
- Direct filing in foreign country: In case the Applicant intends to first file in a foreign jurisdiction without filing an Indian Application the Applicant is required to obtain a foreign filing license from the Indian Patent Office.
The costs for handling a patent application varies depending on each jurisdiction and some jurisdictions may require translation into their official language (shall be provided by the patent agents, upon request) whilst filing a patent application.
10. Maintenance and Enforcement:
Vijay: What responsibilities do patent holders have after obtaining a patent?
Krishnaja: Subsequent to the grant of Patent, the patentees have to periodically comply with the following requirements, specifically in India:
- Annuity payment: Payment of renewal fee for maintain the patent over a period of term of protection of the patent is important. Non payment of renewal fee may result in the cessation of rights of the patentee
- Submission of commercial working statement: Patentee is required to file commercial working statements each year (excluding the financial year in which patent has been granted) within the prescribed time for the previous financial year, indicating whether the patent has ‘worked’ or ‘not worked ‘in India.
Vijay: How can researchers enforce their patent rights if they believe their intellectual property is being infringed?
Krishnaja: Patent rights are usually enforced before the Courts once the researchers believe that their intellectual property is being infringed. Recently the High Court of Delhi and Madras has instituted the Intellectual property Division to address matters related to Intellectual property including infringement of Patents.
11. Advice for Researchers:
Vijay: What advice would you give to researchers who are considering patenting their work for the first time?
Krishnaja: In my past experience working with Phd scholars and academic researchers, we have encountered few major aspects of patents that researchers are not aware of:
(i)Not providing enough information/Holding back information: Usually researchers provide us with one-page write-up and when specifically requested for working examples that demonstrate the invention caters to the objective it tries to achieve, the inventors are often reluctant to provide such examples mentioning that examiners might not read in such detail while examining the application. Researchers should be aware that such working examples are important to comply with the sufficiency of disclosure requirement and patentability requirements under the extant Patent Laws and it does not matter that whether the examiner shall actually review the entire specification.
(ii)Write-up for Research publications and Patent specification are different: Researchers should be aware that drafting a patent specification includes more legal aspects and should demonstrate novelty, inventive step and utility of the invention via its claims and description in comparison to a research paper wherein theoretical concepts are to be elaborated.
Vijay: Are there any common misconceptions about the patenting process that you’d like to address?
Krishnaja: The following are the few misconceptions arising from first-time inventors:
(i) Abstract idea may not be patentable: While filing a patent application, usually inventors come with mere idea. Patenting a product or process is more that an abstract idea. It is important to disclose in the patent application what are the technical features of the invention, how the product or process invention works, how the technical features render novelty and inventive step over the existing state of art.
(ii) Universal/ World-Wide/ International Patents are not-existent: Patents are territorial rights. A patent is valid only in the jurisdiction you have applied for the patent and you can never obtain a single patent for all the jurisdictions across the world via filing a single patent application. International Patent Application exists (PCT), however international Patent does not exist.
(iii) Inventions cannot be kept as secret via patenting the invention: It is mandatory as per the Patent laws existing worldwide to fully disclose your invention to obtain a patent. Further, post filing of the patent application, the applications are published by the Patent Office after a certain period according to the extant patent law in each country and is available to the public.
12. How to Contact?
Vijay: If researchers or individuals are interested in seeking your assistance as a patent agent, could you please share the best way for them to reach out to you or your agency? Do you have specific contact information or a preferred method of communication that you recommend for initiating a conversation about their patenting needs?
Krishnaja: Should you wish to seek services in handling your patent applications or any matters pertaining to Intellectual property you may contact me via e-mail ‘[email protected]’.
Further, you may also look up my profile on LinkedIn: https://www.linkedin.com/in/krishnaja-saseendran-88bb8b143
13. Resources and Further Information:
Vijay: Can you recommend any resources or references that researchers can consult to learn more about the patenting process?
Krishnaja: Researchers can look upto the FAQs 2020 issued by the Indian patent office to obtain an overview of the Patents. Further, Manual of Patent Office practice and procedure is issued by the Patent Office elaborating on the specific requirements while applying for a patent . For domain specific information, guidelines for patenting an invention related to a specific technology field, such as computer related inventions, pharmaceutical inventions etc are available for reference on the Indian Patent office website.
For general information on International PCT Patent Applications, the Applicants can access the information on the official website of World Intellectual property organisation.
Vijay: Thank you, Krishnaja, for sharing your valuable insights and experiences with us today. Your journey as a patent agent is not only fascinating but also incredibly inspiring. We appreciate the time and knowledge you’ve shared with our audience. Your expertise in the world of intellectual property has shed light on a dynamic and evolving field. We look forward to seeing your continued success and wish you all the best in your future endeavours.
Krishnaja: Thank you Vijay for the platform provided for sharing my views on Patents.
Before We Conclude…..
As we wrap up this insightful conversation with Krishnaja, I’d like to leave you with some key takeaways. Intellectual Property is a vast and ever-evolving field where science, innovation, and the law converge. Krishnaja’s journey, from her educational roots in Biotechnology Engineering to her current role as a seasoned Patent Agent, serves as a shining example of how passion, dedication, and a commitment to learning can lead to a rewarding career.
Her experiences working with a wide range of clients, from individual inventors to industry giants, highlight the versatility of a career in IP. It’s a field where every day brings new challenges and opportunities for growth, making it an exciting path for those interested in the intersection of technology and law.
Krishnaja’s story reminds us that the world of patents and intellectual property is not just about protecting ideas; it’s about fostering innovation and ensuring that creators are recognized and rewarded for their contributions. We hope her journey has inspired you and provided valuable insights into this dynamic field.
We’d like to extend our sincere thanks to Krishnaja for taking the time to share her experiences and expertise with us. It’s been a pleasure, and we look forward to more exciting conversations in the future. Stay curious, stay inspired, and keep exploring the world of innovation and intellectual property.