When a patent application is made public before 18 months from the date of filing, it is called an early publication of patent application. In the Indian patent office it can be done by requesting for an early publication. Early publication of a patent application has advantage to help stop competitors, signal to investors, and raising funds against IP. It also has disadvantages like, chances of pre-grant opposition, inability to make changes in the application, and the inability to withdraw the application.
Usually, a patent application filed at the Indian Patent Office (IPO) gets automatically published after 18 months from the date of filing. Or the date from which priority is claimed, whichever is earlier.
The publication of patent applications is done every Friday in the Official Gazette of the Indian Patent office. It may also be periodically published in the Official Patent Office Journal, where it is open for inspection by the public. This includes specifications of the patent such as the title, abstract, application number, name of the applicant and address.
On publication, the patent applicant's rights and advantage over competitors come into action. This rights can be exercised once the patent is granted. Think of patent publication as a signal to competitors to stop attempting to copy the invention claimed the patent application.
To publish the patent before the standard period of 18 months, the Indian Patent Law has the provision to expedite the publication of patent application called the request for early publication.
Upon receipt of the request for early publication, the patent application gets published within a month of the date the request was made instead of 18 months. A request for the early publication of a patent application is helpful if the applicant plans to sell or license the patent/invention or seek investors. Since a patent publication is evidence that the inventor filed a patent application, the inventor can get details for the applied patent early.
How to request Early Publication of patent application?
The provision for early publication is given under Section 11A(2) of the Indian Patents Act, 1970. This section states that "The applicant may, in the prescribed manner, request the Controller to publish his application at any time before the expiry of the period prescribed under subsection (1)1 and subject to the provisions of subsection (3)2, the Controller shall publish such application as soon as possible".
Under rule 24A, an applicant may request the IPO for early publication by filling out Form 9. An additional fee over and above the normal publishing fee must also be paid. This fee depends on whether the applicant is:
a) Natural person/start-up: INR 2500
b) Small entity: INR 6250
c) Other than natural person/start-up or a small entity: INR 12500
A natural person is an individual applying for the early publication. In the case of multiple applicants, the other categories are considered.
Advantages of early publication of a patent application
The advantages of an early publication of the patent application make it a helpful tool. Some of these advantages are:
Faster Prosecution
A typical patent application would automatically be published 18 months after receipt of an application by the IPO. An early publication makes this happen within one month.
Expedited Examination
The early publication is a critical requirement for an expedited examination. As per the Indian Patents Act, a patent cannot be granted within six months from the date of the publication. Therefore, early publication enables the applicant to get an earlier grant of the application.
Rights of the patent applicant
Patent rights begin from the date of publication. Therefore, the patent applicant or patentee can make use of his/her rights much earlier than 18 months.
An earlier claim to infringement damages
In case of an infringement, the applicant, with the help of early publication, can claim damages from the date of publication earlier than a regular date of publication.
Extra time for infringement suits
Any infringement proceedings can only be commenced from the date of publication of the patent application. An early publication thus benefits the applicant by giving "extra" time for which damages may be claimed from potential infringers.
Monetary Benefits
An early publication helps the applicant reach investors for licensing the invention. Also, the applicant can show the complete specification to the potential investors rather than the serial number alone.
Advantage over competitors
Early publication may be beneficial when there is cut-throat competition. The applicant gets his invention before competitors, increasing the chances of successful licensing.
Disadvantages of early publication of patent application
A request for early publication is accompanied by some drawbacks as well. Some disadvantages of publishing early are:
Inability to make changes to the patent application
The patent application remains confidential until it is published. Amendments can be made to the application, if any, until the patent application is made public. The inventor can file these amends at a later stage as allowed by the Indian Patent Law. However, the opportunity of converting a provisional application to non-provisional with the complete specification is lost in the event of early publishing.
Withdrawal of patent application not possible
The applicant may withdraw his/her application 15 months from filing to avoid publication and maintain confidentiality. When a request for early publication has been made, this withdrawal is not possible.
Risk of pre-grant opposition
Any other person/applicant may file a pre-grant opposition once the patent application gets published until the time the patent is granted if the examination fee has also been paid by the applicant. So, an early publication gives the opponents more chances and more time for filing pre-grant opposition.
Deciding to make an early publication request
The final call for making an early publication request lies with the patent applicant. The advantages of publishing the patent application earlier must be weighed against the disadvantages. In a competitive scenario, it may be a game-changer. In other instances, it might cause you to miss out on certain specifications. Therefore these points should be considered before requesting for an early publication in the Indian Patent Office.