Create an invention which satisfies all the requirements of patentability — non-obviousness, novelty, and utility, in a nutshell — and patent it. Or try to, at any rate. The question, however, for many businesses, is when does one patent such an invention? As soon as it is invented? Once the invention is complete? Once it has begun to take shape? Once one is ready to show it to others? Once it has been shown to others? Once one is ready to commercialise the invention?

A decision regarding whether or not to patent an invention can itself take a considerable amount of research. There are other forms of protection available in many cases, and in some cases, applying for a patent is simply not the best thing to do. For one thing, the invention may not even be patentable. If an invention is not patentable, it makes far more sense not to apply for a patent primarily because 18 months after filing for a patent, the information contained in the application becomes public and not only does the applicant not get patent protection which he is anyway not entitled to in the course of time but he also loses much of the secrecy which he might otherwise have been able to maintain. If it’s possible, it is therefore in the best interest of an applicant to maintain the invention as a trade secret.

There are of course drawbacks to this too. A trade secret is a secret for only so long as it is kept a secret. If, however, a trade secret is kept secret for longer than 20 years. the owner of the secret would, in all probability, wind up with the secret having protection for a longer duration than a patent would have accorded it. Unless the ‘secret’ is ‘discovered’ by someone else who patents it and then initiates infringement proceedings against the owner of the secret.

Assuming that an invention is patentable though, coming back to the question of when a patent should be filed, the best time to file an application would be as soon as an application can be filed. This application need not contain complete specifications of the invention; it can merely contain provisional specifications. The law allows complete specifications to be filed within 12 months after provisional specifications have been filed. It is especially important in a country such as India to file a patent application as soon as possible because India follows a first-to-file system and not a first-to-invent system. This means that if another person invented the same invention later but filed for a patent earlier, he would be granted the patent notwithstanding the fact that he was not the first to invent that invention. This is in contrast to the US patent system which follows a ‘first-to-invent’ rule and grants patents to the first person who has invented an invention.

One of the criteria for patentability is a lack of anticipation. If an invention has been anticipated, it will not be granted a patent. In certain cases, the Controller may simply refuse to accept the complete specification while in others, he may require certain changes to be made. (See Sections 13 and 18 of the Indian Patents Act.) The Patents Act itself has quite a bit to say on the subject of anticipation and provides for some ‘exceptions’ to the general rule in Chapter VI of the Act.

As a result, a good time to file a patent application is as soon as the invention gets one foot out of the laboratory, so to speak. This is so a priority date is established and the applicant does not lose out on a patent merely because by the time he files for a patent, he has lost out on novelty. There is a drawback to this though:  filing an application unduly early means that the applicant may have less information about the invention at hand an will not be able to file for the widest possible scope of protection. The most prudent approach would therefore be to file an application as soon as the applicant has a reasonable amount of information at his disposal.

(This article is by Nandita Saikia and was first published at LawMatters.in.)