Retaining inventorship of abandoned provisional patent of India (even if rights are foregone)

Question

I have a provisional patent regarding an electronic device (with outline of software black boxes as software alone cannot be patented in India). It is about to expire in sometime (12 month period).

Initial plan was to file non-provisional patent within 12 months. However, due to change in circumstances, we have decided to drop the patent (as I may/may not be physically present in India for sometime).

Now, the question is regarding what could be done regarding this patent if second inventor and I have to retain the inventorship. (We are ready to forego the rights of inventorship as many organisations including AST do not consider Indian patents. We tried to sell during this 12 month period and have already disclosed this provisional patent online and offline.)

I checked Indian Patent Act of 1970. In that, according to section 9, subsection 1, abandoned provisional patents are never published. The priority date is lost after 12 months if non-provisional patent is not filed.

What could be done regarding this patent if second inventor and I have to retain the inventorship for 20 years or the stipulated period (even if we forego the rights)? We are ready to publish it as a whitepaper in some reputed patent journal or so.

Any help will be greatly appreciated.

Answer 1

- to retain the inventorship -

This has two aspects. Your claim to be an inventor (moral right) and ownership right to an invention. From your discourse, it appears you are more and probably only interested in the first part.

In simplest and briefest of terms, you are not recognized as an inventor for a particular patent application if it is not published.

In context of Indian Patent Office, you have to submit your complete specification/ convert your provisional application to complete specification. No additional fees required if there is no addition to pages and claims and you are doing this all by yourself (permitted by Indian Patent Office for individual applicants i.e. natural persons). For early publication you have to submit form 09 and fees, which IMO is useless as it is due for publication free of cost on completion of 18 months from priority date and I suppose, you are in no hurry.

Name of inventor entered on a patent application remains forever from date of publication of application but patent right is enforceable for twenty years (+adjustment period) from the date of grant of patent.

So, only to have your name as inventor on a published patent application, take another step without any additional cost and then you have enough time (48 months from priority date to apply for examination and another five to six years for process of examination to start) to think and decide what to do with your application.

Hope, by that time you will be in a position to take advice from a patent attorney which is highly desirable and always advised here.

Especially since you have 'already disclosed this provisional patent online and offline' (supposedly without 'non-disclosure agreement'), you have shut all other possible ways.

May refer [1] for bird's eye view of time line and [2] for fees and form Nos.

"publish it as a whitepaper in some reputed patent journal or so".

Patent applications are published in journals of respective patent offices after due process e.g. as described above. There is no such thing as white paper in patent process. Research papers are published in various journals of respective fields after peer review. Both domains (patent and non-patent) of course refer to one another as prior art in patent parlance and reference paper in non-patent publications.

Answer 2

Yes, software as such is not patentable in India according to the section 3(k) which states

a mathematical or business method or a computer programme per se or algorithms; cannot be patented.

There are instances where patents has been granted in India after Delhi high court had adjudicated in TELEFONAKTIEBOLAGET LM ERICSSON Vs. INTEX TECHNOLOGIES (INDIA) LIMITED, I.A. No. 6735/2014 in CS(OS) No.1045/20 2014 and has held that any invention which has a technical contribution or has a technical effect is patentable, overriding various objections under sections 3(k) of the Patents Act, 1970 (as amended) including objections under “algorithms” and “a computer programme per se” prongs of section 3(k).

please consult an experienced patent attorney who are familiar with such matters they may help you in processing patent for you.

Initial plan was to file non-provisional patent within 12 months. However, due to change in circumstances, we have decided to drop the patent (as I may/may not be physically present in India for sometime).

Your presence in India does not matter as you can give power of attorney to patent attorney and the process would int impact.

We are ready to forego the rights of inventorship as many organisations including AST do not consider Indian patents.

Though Indian patents are not considered you can claim priority to the an Indian patent application and file same patent in other countries using PCT.