How do I go about a patent tech transfer enquiry from India? 4 Answers as of April 28, 2011I have been awarded an Indian patent for a design. I Wish to approach some major companies in America for either tech transfer or royalty based movements. Should i apply for a patent first in the USPTO and then approach the multinational companies? I was told That a grace period of one year is given in America. Since i already have the Indian patent rights, can I take a chance? Help Please.
Devon & Associates | Marcia A. Devon
I recommend that you immediately contact an experienced patent attorney to determine whether it is too late to file a U.S. application. An inventor cannot be granted a patent in the U.S. if the invention was published more than one year before the U.S. application is filed. Your Indian patent is considered "a publication." Therefore, if it is more than one year since your Indian patent was granted, it is probably too late to obtain a U.S. patent. [You should also determine whether your application in India was published before your Indian patent was granted. which happens in some countries.] You can sell or license your Indian patent, if you can find buyer, regardless of whether you have a U.S. patent. However, your Indian patent would not prohibit anyone from selling your invention in the U.S. If you disclosed your invention to a U.S. company, they would be free to sell the invention in the U.S. without paying you anything unless you obtain a U.S. patent. If it is too late for U.S. patent protection, you may be able to require (in exchange for your disclosure of your invention to them) that the U.S. company sign an agreement, prepared by your patent attorney, which would prohibit the U.S. company from selling your invention in the U.S. without your permission. However, it is better for you to obtain the U.S. patent, if it is not too late.
Answer Applies to: California
Malhotra Law Firm, PLLC | Deepak Malhotra
The grant of an Indian patent is unfortunately not going to impress any US venture capitalists or companies. Venture capitalists like to see at least one US patent plus profits from sales. Angel financing is how a lot of startups get their initial funding. Multinationals are generally not interested in hearing about inventions unless you have a champion inside a company or you have an existing US patent that they infringe. The grant of a foreign patent terminates your ability to file in the US unless you are within one year of the Indian filing date. See 35 USC 102. If you are past the one year, you could file in the US on an improvement. Then later seek contingency fee enforcement if infringement takes place.
Answer Applies to: Washington
DANIEL NESBITT | Hasse & Nesbitt
At the outset, if a granted (filed, examined and allowed) Indian Patent has been issued, which has an Indian filing date more than one year ago, the invention is barred from patenting in the US. See 35 USC 102(d). Hopefully you only have an Indian *application* filed. I suggest you see a patent attorney to assess your situation carefully. Good luck.
Answer Applies to: Ohio
Handal & Morofsky LLC | Anthony H. Handal
By design, I understand you to be referring to an ornamental design. I would recommend filing the design in the U.S. Patent and Trademark Office, being careful to include good drawings. Please also be careful to check if the Indian patent application was published before the grant. This would start the one year time period running. If the Indian application was done to standard, and cost is an issue, you could try to file it yourself and that is likely to be better than not filing. However, it is always better to get professional help to make a filing.
Answer Applies to: New York