QUESTION

How do I go about a patent tech transfer enquiry from India?

Asked on Apr 26th, 2011 on Patents - Washington
More details to this question:
I 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.
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2 ANSWERS

Internet Attorney serving New York, NY at Handal & Morofsky, LLC
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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.
Answered on Apr 27th, 2011 at 10:53 AM

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Intellectual Property Attorney serving Spokane, WA at Malhotra Law Firm, PLLC
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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.
Answered on Apr 27th, 2011 at 7:52 AM

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