“Should you get your idea patented the moment it arises?” Well, let us firstly understand the ‘First-to-File’ (FTF) principle of India’s patent filing and registration process. It represents a paradigm shift in patent regimes after the enforcement of the Trade-Related Aspects of Intellectual Property Rights (TRIPS) providing protection for patents encouraging innovations while tackling the complexities of patents in India. In other words, FTF principle is applicable when a person who files first for a patent for an invention is eligible for grant of patent completely disregarding the date at which the invention was made. It was adopted by India in 2005 through the Patents (Amendment) Act. On the other hand, ‘First-to-Invent’ (FTI) principle is commonly seen in countries like United States. It is applicable when multiple people file a patent for same invention and the patent is granted after determining who was the first person to invent it. The patent rights are granted to the person who files for the patent first as per the FTF principle, encouraging early registration of inventions and the dynamism of patent regime.

Moreover, Section 3(d) of the Indian Patent Act is a very important part of the patenting process. It requires the inventions to show substantial increase in efficiency over known products to be eligible for grant of patent registration, thereby introducing an added layer of scrutiny to applications. For filing a patent application in India, it is a strategic decision for inventors and businesses by maintaining a balance between securing early protection for inventions as well as avoiding premature disclosure of information risks. The complexity of Indian patent law as per the Patents Act of 1970 and its further amendments, presents a key strategic issue in making patent filings. Therefore, a critical question arises: “How early is too early to file a patent application in India?”

Advantages of Early Filing:

The filing of a patent application at the right time is a critical strategic decision in India as the timing affects both, the strength of the patent rights and one’s ability to protect, refine, and commercialise their invention. Therefore, the benefits of early patent filing are the creation of a priority date, which is important for establishing the novelty and non-obviousness of an invention. Obtaining an early priority date can protect inventors from possible competitors who may try to use similar ideas without patenting. Further, the first-to-file system signifies that the early filer inventor who applies for a patent would usually be awarded exclusive rights on the invention, further highlighting the need to submit filings at early stages. Early filing is especially important in fields like as medicine and biotechnology, where competing patent ownership holdings may have a significant influence on market status and profit margins.

Thus, there are certain advantages attached to early priority dates in filing a patent application. Some of these advantages can be understood as following;

First Mover: Filing a patent application early, secures the priority date associated with that patent, which is crucial in India’s First-to-File (FTF) system to ensure that the rights associated with the first filed patent, are protected even if another party files a similar application after the priority date of the aforesaid patent.

Protection against Conflicting Claims: An early filing date associated with a patent locks the invention’s novelty by preventing the later filings from being considered as prior art and safeguarding the aforesaid patent’s claim against competing inventors.

Strategic Global Filings: Early priority of a patent enables the use of international treaties such as the Paris Convention, Patent Cooperation Treaty, etc, to expand the rights attached with the aforementioned patent on global levels with a unified timeline and cost efficiencies.

Time for Refinement: Filing a provisional application for patent, provides you a window of 12 months to develop and improve the invention before submitting a complete specification without losing the early priority.

Market Associations: This abovementioned period of 12 months allows assessing the commercial viability and refining business strategies before incurring greater costs.

Legal Security & Portfolio Strength: Early priority claims enhance defensibility of the patent in disputes and make the IP portfolio more attractive for licensing and investments.

Risks of Premature Filing:

However, late submission has its own set of concerns. Early disclosure of an invention may result in a variety of effects, including dilution of patent claims and rejection owing to inadequate evidence to demonstrate grounds of originality and inventive step. Also, an early filing can subject inventors to difficulties over the sufficiency of early disclosure, which can undermine future patent rights in cases where the invention develops further or changes substantially before a complete commercialization process. Indian patents undergo rigorous examination procedures, particularly with the addition of Section 3(d) of the Indian Patents Act, which prohibits granting patents for trivial variations of known substances. This affects pharmaceutical firms that might want to obtain patents for incremental innovation.

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These legal requirements do have implications that make a patent filing requirement adequately prepared with complete information to prove the stated benefits of the innovation compared to alternative solutions. A hasty filing that has weak evidence could result in delay, rejection, or costly re-examination, taking resources away from product development to litigation. Additionally, the Indian pharma industry has seen patent filings fluctuating after TRIPS compliance, with a significant percentage of filings being withdrawn or abandoned, reflecting a conservative attitude towards patent strategy. Examination of current patent applications also shows that companies are increasingly adopting “watchful waiting” strategies, holding back filings until they are sure of extensive data presentation and market preparedness.

Therefore, there are certain risks involved with premature filings of patents. Some of these risks can be understood as following;

Incomplete Disclosure: Filing a patent too early before the invention is fully developed or before all the embodiments are understood, can result in a patent application that lacks sufficient details ending up with rejections, narrow claims, or unenforceable patents as well.

Loss of Flexibility: After filing the complete specification, no new matter can be added to the patent application filed, thus, requiring fresh and separate patent applications to be filed for any significant improvements made.

Premature Publication Risks: Early publication exposes the invention to competitors sooner, which increases the risk and window for pre-grant oppositions, delaying or blocking the patent grant. Further, if early publication is requested, then the ability to withdraw the aforesaid application is lost, which means that the invention can no longer be kept as confidential, if the same was considered as a business strategy. In addition, once the publication is done, the invention becomes a prior art which can affect future filings and limit the ability to refine the IP strategy.

Financial & Strategic Costs: Filing the patent even before the invention is ready may result in additional costs if any new or divisional application was to be filed to cover any improvements or corrections in the patented invention.

Balancing the Timeline:

Thus, in assessing the strategic timelines to file patents, consideration must also be given to the necessity for an iterative development of the technology. Innovations which undergo numerous iterations of refining will be benefited by timely filings of patents tied to well-specified technology displays and commercialization streams. Early adopters are usually favoured, but need to weigh this against being featured prematurely and opening the way for competitors to profit from their advances before waiting for innovative elements to come of age. The risk of others basing work on an invention without paying rises in proportion, as does the eventual market effect when the innovation comes into public consciousness.

Therefore, to understand the balance between the early filing advantages with the risks involved in the process, the following points should be looked upon;

Too Early: When the invention is not fully enabled, which means that there is not enough detail for a skilled person to practice the invention, then the filing of the patent application is too early which can undermine the value and enforceability of the patent.

Optimal Timing: When the invention is sufficiently developed to support a robust patent application, you can file the patent but before any public disclosure or commercial activity as it could jeopardise its novelty.

Provisional Application Strategy: When further improvements are anticipated, a provisional application can be filed to secure the priority date while keeping a time frame of 12 months to refine the invention and prepare a complete specification.

Consider Early Publication Carefully: Early publication should only be requested if there is a need to assert rights quickly such as imminent commercialisation or licensing, and can take risks of exposure and opposition for the same.

Therefore, the strategic timing of patent filing in India is a balance between the need to secure an early priority and the risks associated with premature filing. To conclude, the best practise is to file when the invention is sufficiently developed to support strong application using provisional filings and careful publication strategies to maximise the legal and commercial gains without weakening your invention’s patentability.

Author :-Devanshi Chaudhary, in case of any query, contact us at Global Patent Filing or write back us via email at support@globalpatentfiling.com.

References:

 https://blog.ipleaders.in/first-to-file/

 https://ijournalse.org/index.php/ESJ/article/view/338

https://journals.plos.org/plosone/article/file?id=10.1371/journal.pone.0194714&type=printable

 https://thelawcodes.com/article/priority/

 https://ipindia.gov.in/writereaddata/Portal/Images/pdf/Final_FREQUENTLY_ASKED_QUESTIONS_-PATENT.pdf

 https://www.arcticinvent.com/blog/what-is-an-early-publication-of-a-patent-application

 https://www.intepat.com/blog/early-patent-publication-india/

 https://www.iiprd.com/early-publication-patent-application-indian-patent-law-system/

 https://ipindia.gov.in/writereaddata/portal/ev/sections/ps3.html

 https://www.traskbritt.com/when-is-it-too-late-to-file-a-patent-application/

 https://www.clfip.com/ip/blog/first-to-file-vs-first-to-invent/