India: Patents-in-waiting
Patenting can sometimes be time-consuming. As of today, the Indian patent office, (IPO), can take three to four years to grant a patent under the regular examination process, so what can an applicant do when a competitor starts copying an invention before the grant of a patent, ie, while a patent application for the same invention is pending with IPO for disposal?
It can be annoying to see competitors copying an invention while a patent application is pending for grant. It is pertinent to note that the product for which a patent has been applied, or the product made by a process for which the patent has been applied, can be marked as “patent pending” to notify that a patent has been applied for but not yet granted. The marking serves as an express notice to notify potential infringers that they may be liable for seizure, damages, and injunction once the patent is issued.
In India, the right to stop third parties infringing an invention claimed in a patent application and/or the right to claim damages, start only when the patent is granted. The underlying rationale is that the act of infringement is adjudicated based on the scope of a granted claim, and not based on a claim in the pending patent application.
Indian patent law also safeguards the interests of patent applicants during the period for which the patent application is pending, except that an infringement suit cannot be initiated until the patent is granted.
Warning letters
Patent applicants in India enjoy the privileges and rights of the holder of a granted patent, effective from the date of publication of the patent application. Thus, during the pendency of the patent application, the applicant can send a warning letter to potential infringers that the invention used by them is the subject of a pending patent application, and that once the patent is granted, they would be liable for infringement and therefore liable to pay damages to the patentee for the unauthorised use of the invention from the date of publication.
At the same time, the applicant should also investigate whether any other IP apart from patent—eg, trademark, copyright, or design—is being infringed so that the same can be included in the warning letter to make the applicant’s case stronger and the damages paid by an infringer, greater.
