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Hiring an Indian Patent Attorney? Key Questions to Ask

Hiring an Indian Patent Attorney? Key Questions to Ask

Engaging the services of a proficient Patent Attorney is necessary for securing a patent. The Patent Attorney, (or patent agent as referenced in the Indian Patents Act of 1970), must not only be capable of completing the legal filings/compliances as required in law, but also, should also be well oriented with the business consequence of these filings. These subtleties distinguish a Patent Attorney from an excellent Patent Attorney.

To make an informed decision about the Patent Attorney, it is essential to ask the right questions. This article elucidates essential points to consider when hiring a Patent Attorney to ensure a successful and effective defence of the patent application.

Conflict of Interest Policies

The conflict of interest policies in a law firm is important criteria when it comes to patents. In fact, the way issues related to conflict of interest are handled by a law firms speak volumes about the professionalism of the firm. There are several ways to handle conflict of interest, For example through conflict checks and exclusion, confidentiality measures, separation of responsibilities, ethical walls etc. A patent applicant must clear these issues at the outset for the smooth functioning of the work, during legal proceedings/litigation.

Experience in Indian Patent Law

Understanding your attorney’s experience in Indian patent law is crucial. In some jurisdictions, the Patent Attorneys are very specific to the technology background they hold. This may not be true for jurisdiction, like India. In India, it can be a difficult undertaking to look for a Patent Attorney with a specific technology qualification. For example, a Patent Attorney with the background in Mechanical Engineering is capable to prosecute a patent application related to the field of Piston Design Engineering. In India, there are scenarios wherein the qualification of Patent Attorney has not influenced the grant of the patent, as the attorney is experienced enough to handle hearings, to satisfy the Controller on the legal requirements of grant of the patent. Therefore, more than the qualification of the Patent Attorney, it is important to see the Attorney’s understanding of the law and his understanding of the undercurrents of patent drafting.

Patent Searching Before The Drafting Complete Specification

Prior art searches are essential to assess the novelty and non-obviousness of your invention. Inquire about your attorney’s strategy for conducting thorough prior art searches, including databases and resources they utilize, to ensure that your invention meets the patentability requirements. Also, enquire how he handles a prior arts which in substance discloses part of invention? If possible, have an opinion on the invention and ask for the “search strategy”, as also patentability report from Patent Attorney. The strategy, for example, queries run and keywords, gives broad idea of the thinking process of the attorney for making a patent search.

Strategy to Draft Patent

Patent claims are core to the patent application. It is important to have devised the patent claim keeping in mind the wide strategy of the Applicant. Drafting a patent application merely on the basis of on technical information is not a complete strategy. A Patent Attorney must take into consideration the wider picture in the future in order to guarantee the Applicant gets the the most protection, while also preventing vulnerabilities. Patent claims play a crucial role in defining the scope of protection for your invention. Ask your attorney about their approach to drafting patent claims. It must be bore in mind that the claims have to be comprehensive, clear, and aligned with the requirements of both the Indian patent office and your busines.

Examination Reports And Reply Thereto

Understanding how your attorney responds to office actions from the Indian patent office is crucial. Inquire about their approach to analyzing and addressing the objections or rejections raised by the patent examiner, as well as their success rate in overcoming these challenges. It is helpful to have list of broad objections that are listed by the Indian Patent office handy for the complete assessment.

Ask average time they take to prepare a reply and time they provide draft reply to FER to the client for inputs and review.

Number of Patents Handled And Granted In India

Inquire about the attorney’s track record of successfully obtaining patents in India. This will give patent applicant confidence in attorney’s ability to navigate the Indian patent office’s processes, handle potential challenges, and increase the chances of a favourable outcome for the patent application. It is also important to ask specific questions, as to how may patents he has drafted and how many hearings has he attended? How hearings are handled? What kind of objection Patent Attorney attend to in India? This would reflect the depth of the practice the Patent Attorney has in the field.

Knowledge About Nitty Gritty of Indian Patent System

A knowledgeable Patent Attorney should be able to explain the Indian patent application process in a clear and concise manner. Ask them to outline the different stages, including preparing the patent specification, filing the application, and handling the examination and prosecution process in India. In addition, it is also important to assess the Attorney’s understanding of the way patent hearings and conducted and questions the bench asks to the patent applicant. A reference guide with response to commonly asked questions by the Controller can strengthen the patent applicant’s case during the hearing.

Knowledge About Timelines Before The Indian Patent Office

Discuss the expected timeline for the patent application process in India. While it can vary, having a general idea will help you plan accordingly. Inquire about any factors that may impact the timeline, such as potential delays at the Indian patent office or the need for additional documentation.

Familiarity With The Patent Cooperation Treaty

If you plan to seek patent protection outside India, ask your attorney about their experience and expertise in international patent filings, particularly through the Patent Cooperation Treaty (PCT). Familiarity with international filing procedures will ensure a smoother process for obtaining global patent protection.

Number of Cases Handled Before The Court

Within Indian legal boundaries, patents are exposed to a variety of challenges during their duration, including opposition, revocation, and compulsory licenses. The Indian court system provides the Defendants with the opportunity to challenge the patent’s legitimacy after a patent infringement suit is filed. The “preponderance of probability” standard under Indian law can often create difficulties for patentee/patent applicant regardless of how remote or relevant grounds for opposition are to a judicial mind. It is essential that the Patent Attorney selected is knowledgeable of the relevant issues and is capable of resolving any potential problems during the patent prosecution process.

Confidentiality And Attorneyclient Privilege

Confidentiality is crucial when discussing your invention with a Patent Attorney. It is important to understand the checks and balances placed by the attorney to handle confidential issues while handling multiple patent application, which sometimes may include the patent application of your competitors. Inquire about the attorney’s policies and procedures for maintaining confidentiality and attorney-client privilege to ensure that your intellectual property is protected throughout the process

Costs And Estimation

Understanding the potential costs associated with the patent application process is essential for budgeting purposes. Discuss the attorney’s fees, as well as any additional expenses that may arise, such as official fees, translation costs, or fees for responding to office actions.

Conclusion

Choosing the right Patent Attorney in India is essential to ensure a successful and effective patent application process. By asking the right questions, you can assess their experience, knowledge of Indian patent law, track record, and strategies for handling various aspects of the patent application process. Remember to consider factors such as industryspecific expertise, communication style, and cost transparency. Selecting a qualified and reliable Patent Attorney will greatly enhance your chances of securing robust patent protection for your invention in India.

About Author

Vivek Ranjan

Vivek handles litigation, prosecution, regulatory prong of Singh & Singh Law Firm. His expertise spans over fifteen years in the areas of Patents, Standard Essential Patents, Trademarks, Copyright, Licensing, Contracts, Arbitration, and Drug Regulatory issues. He has been part of various landmark judgments related to Patent Infringement, Standard Essential Patents, and writ jurisdiction of the Delhi High Court and Supreme Court of India. He can be reached at [email protected].