8/7/2019 Inohelp IP - Protecting Our Software Exports

1/2

Indias technology exports have grown considerably over the years.Software exports constitute a lions share of these exports. Accordingto recent NASSCOM reports, the software product exports have

grown by 14.4 percent in the current fiscal year, touching about USD7.3 billion (INR 330 billion). Further, the reports predict the marketto grow exponentially, driven by an increasing number of start-upsoftware product businesses as well as a rapid growth of existingbusinesses.

The growth in software exports have forced software companies tofocus on legally protecting their technologies/products in the coun-

tries of export. This holds true especially for utility software products

developed exclusively to be retailed in foreign markets. One way oflegally protecting technologies/ products may involve securing theintellectual property by means of patents, more often than not com-plimented by copyrights. Trademark protection may also be consid-ered, to protect consumer interests in lieu of counterfeit branding.

However, considering the encompassing and strong nature of patent protection, the focus of the companies shouldbe more on protecting their technologies/products by means of patents than protecting their products through anyother instruments.

For applying patents abroad, the Indian patent laws provide 2 main routes. It should be noted that both the routesrequire utmost caution from the companies as missing any procedural formality or a deadline can be detrimental to

the patent obtaining efforts. The starting point of the patent obtaining procedure is, of course, to prepare a patentapplication, which includes a detailed description of the technology/ product, and most importantly one or more

claims defining the scope of the protection needed. It is strictly advisable to prepare the patent application in a for-mat accepted by, and in accordance with, best practices of the patent offices of the countries where the technology/product is being intended to be exported. This is because the standards of an acceptable patent application in USand Europe differs significantly from the standards acceptable in India. Accordingly, it makes a lot of sense to hire a

patent attorney/agent who has a global exposure in drafting and handling patent applications filed in these jurisdic-tions. Luckily, India has been a hot destination for patent outsourcing for some time now. Therefore, finding tal-ented patent attorneys having global exposure is not a difficult proposition for software companies.

Once a patent application is prepared, the next step is to elect the route through which the patent application is to

be filed in foreign countries. The first route is to file the patent application in India, and follow the patent applicationwith a Patent Cooperation Treaty (PCT) application or with corresponding applications ( Paris conven-tionapplications) in the desired foreign countries, within 12 months from date of filing the patent application in In-

dia. Now, the filing of the PCT application has advantages and disadvantages vis-a-vi filing convention applications

directly in foreign countries. The most important advantage is that the filing of a PCT application provides a com-pany an extended time for selecting the countries to enter. This allows the companies to seriously deliberate uponcountries to apply for patents. Such deliberation is an absolute must as the cost of obtaining a patent in foreigncountries is very expensive, and the process is lengthy and saturating. One of the biggest disadvantages of filing thePCT application is, of course, the expenditure incurred to file the PCT application. For example, filing the PCT appli-cation, and transmitting it to WIPO, the administrative authority of the PCT application, costs (official charges)around INR 12,000 for companies.

The second route, which is much more advisable for software and business method product/technologies, involvesfiling patent applications directly in countries of export, without filing a patent application in India. The advisability ofthis route is attributed to statutory laws, which exclude patenting of few classes of products/technologies, in India.

Protecting Our Software Exports

BUSINESS NAME

http://en.wikipedia.org/wiki/NASSCOMhttp://en.wikipedia.org/wiki/NASSCOMhttp://en.wikipedia.org/wiki/Patent%20Cooperation%20Treatyhttp://en.wikipedia.org/wiki/Patent%20Cooperation%20Treatyhttp://en.wikipedia.org/wiki/Paris%20Convention%20for%20the%20Protection%20of%20Industrial%20Propertyhttp://en.wikipedia.org/wiki/Paris%20Convention%20for%20the%20Protection%20of%20Industrial%20Propertyhttp://en.wikipedia.org/wiki/Paris%20Convention%20for%20the%20Protection%20of%20Industrial%20Propertyhttp://en.wikipedia.org/wiki/Paris%20Convention%20for%20the%20Protection%20of%20Industrial%20Propertyhttp://en.wikipedia.org/wiki/Paris%20Convention%20for%20the%20Protection%20of%20Industrial%20Propertyhttp://en.wikipedia.org/wiki/Patent%20Cooperation%20Treatyhttp://en.wikipedia.org/wiki/NASSCOM

8/7/2019 Inohelp IP - Protecting Our Software Exports

2/2

These classes include typical software products and business method products. Accordingly, it does not make sense

for a company to invest time and money in filing and obtaining a patent in India for software/business method prod-ucts.

However, direct filing in foreign countries, without filing in India, requires a patent applicant to obtain a Foreign FilingLicense (FFL) from the patent office. It should be noted that the penalty of filing for patents in foreign countries incontravention to the FFL levies a penalty, which can even be of criminal nature! Such FFL can be obtained by applying

for the license in prescribed form to the patent office. Usually, the patent office is quick to respond to such licenserequests, and gives the FFL in 6 weeks from making the FFL application.

The Indian software industry is at a point of inflexion. The industry is transiting from essentially a service based indus-try to a development based industry. However, software companies should be careful with legally protecting their soft-ware products, especially in export markets, such as US and Europe, which have strong patenting culture. The Indianpatent laws provide various routes for the software companies to apply for patents in foreign countries. However, the

companies should be careful with respect to meeting procedural formalities at the patent office as any failure to meetthe formalities can be detrimental to efforts of patenting abroad.

About the Author

Kshitij is Managing Director at Inohelp IP. He is a chemical engineer and a patent agent regis-tered to practice at the Indian patent office. He focuses his practice on domestic and interna-tional (PCT) patent prosecution, and intellectual property counseling related to chemical, ma-terial science, mechanical and information technology, with particular interest in the area ofmedical devices, pharmaceutical formulations and fine chemicals. He has prior experiences ofworking with the largest Knowledge Process Outsourcing (KPO) company, a top Legal ProcessOutsourcing (LPO) firm, and a top Indian IP Law firm. During his professional experience hehas interacted with attorneys of leading law firms in US and Europe. Kshitij has drafted vari-

ous patent applications filed with USPTO, EPO and Indian Patent Office (IPO). He has beeninvolved in many patentability and validity opinion projects. He can be reached atkshitij.malhotra@inohelp.com.

Phone: +91-11-43614903Fax: +91-11-43614903E-mail: info@inohelp.com

Primary Contact Info:310, Sector 18 B, DwarkaNew Delhi - 110075, India

Inohelp IPHelping you with your IP

Delhi Mumbai Kolkata

Inohelp is an emerging Intellectual Property (IP) service company that specializes inserving the IP needs of inventors, technology entrepreneurs and business owners byprotecting inventions, designs, trademarks, copyrights, trade secrets, and other valu-able intellectual property assets. Inohelp also work closely in association with foreignIP attorneys, who help us in securing our clients IP in their respective jurisdictions at

an affordable cost.