A brief introduction to patenting and the steps involved in filling a patent in India

1. Anand Madhavan, SES, CUSAT

4. Definition of Intellectual Property
• In the common sense intellectual property
is a product of mind.

5. Definition: IPR
Intellectual Property Rights (IPR) grants exclusive rights
to an author for utilizing and benefiting from their
creations.

6. Typesof IPRs
Intellectual Property
Industrial Property Copyrights and related rights
Industrial
Designs
Patents Trademarks Trade Secrets
Service marks
Geographical
Indications
Layout Designs of
Semi Conductor ICs
Plant varieties &
Farmer’s rights
® ©
™

7. 2009WORLD IP DAY

8. If youdon’t seeaproblem with this question,
youneedthisclass!

9. Patent: A contract with the government
• You give the public an invention they have
never seen before.
• The government gives you a limited monopoly
(The PATENT)

10. History of Indian Patent system

11. Notable Events in US Patent History
• 1790: 1st US Patent Act entitled “An act to
promote the progress of useful arts”
• 1850: Introduction of the concept that an
invention must be non-obvious as well as new
and useful
• 1978: Patent Cooperation Treaty put into effect;
allows single worldwide filing
• 1980: Bayh-Dole Act – Universities retain title to
results of Federally funded research

12. Patent in nutshell
• It is astatutory right to the inventor
• It is for the limited period of time.
• It is granted in lieu of sufficient disclosure to
the patent offices.
• It is only territorial right.
• It is anegative right.

13. Why Patent an Invention?
• Source of recognition for the inventor(s)
• Incentive to develop a commercial
product
–License to an existing company
–Start up a new company
• Protection against imitators

14. Publishing v. Patenting
Traditional distinction

16. Importance of patents
• Important sourceof scientificandtechnical
literature
• Atreasure-house of scientificinventions
• Avoidsduplication
• Paveswayforfurtherdiscoveries
• Identifiesemergingtechnologies,emerging areas

17. What does apatent do?
• Protects intellectual property for 20years
– no one else canmanufacture the product
– some one can pay you royalties
– you canblock competitors
• After 20 years, technology goesto public
domain

18. 18
Benefits of Patenting
• Stop re-inventing the wheel
• Know what is already patented
• Patent leads to Collaboration/ Money /
Fame/ Name/ etc………

19.  JAIPUR: Drawing
inspiration from scientist
Stephen Hawking, a
wheelchair-bound nine-
year-old boy here has
invented a game of six-
player circular chess.
The boy,
Hridayeshwar Singh
Bhati has got the
game's design patented
in his name.

20. TostartwithPatenting
• Becurious but do not discloseyour
invention
• Keepabound notebook to provewhen
you got the idea
• Develop the idea and produce amodel
• Write why your invention is needed,
what the existing products are in the
market, your new product, and whatis
unique about yourproduct

21. • Essential before filing patent application
• To draft the complete specification,
particularly in prior art portion.
• To justify the invention novel and
non obviousness.
• To face the future opposition, if entered.
Patent Search

22. Access to Technical Information
 Non-Patent Literature Search
 Patent Search
Where to get Search Materials ?
 Books, Journals, Patent Specifications
 Electronic Database in CD-ROMs
 Website of different foreign Patent Offices
 Website of Indian Institutions e.g. TIFAC, CSIR etc.

23. Prior Art
 Prior knowledge from the publication both in Patent and
Non- patent literature
 Required to establish novelty and non-obviousness of invention
 Information given in prior document must be sufficient to
enable the instructed reader to perceive and understand
discovery without making further experiments
 Not mandatory in specification
 Advantage :
 Better understanding of invention by way of finding out
lacuna in Prior Art
 Setting up the invention by removing the defects
 Improvements over Prior Art

24. Filing should be made immediate after the invention is
developed for commercial working
Delay in filing may involve certain risks
 Other invention of substantially same nature may
take the advantage of priority, depriving the true and
first inventor
 An inadvertent publication of invention by inventor
or others may damage the novelty of invention
Patent should be filed before any kind of publication or
commercial using or communication to others
When to File a Patent Application ?

25. FILING OF PATENT APPLICATIONS
There are two types of Patent Applications:
1. Provisional.
2. Complete.
A provisional application for Patent can be filed
at the Patent Office to claim priority.
A Complete specification has to be filed within 12
months from the date of filing of the
Provisional Application. The filing fee of a
Provisional/Complete Application is Rs.1000/- for
individuals and Rs.4000/- for non-individuals.

26. How to file apatentapplication?
• Documents canbe filed in the patentoffice
 through online( e-filing)or
 www.ipindiaonline.gov.in/online
 through post or
 canbe submitted byhand

27. Jurisdiction for Filing Patent Applications
Head Office (Kolkata)
Branch Office (Delhi) Branch Office (Mumbai) Branch Office (Chennai)
Haryana, Punjub, Delhi,
Himachal Pradesh (HP)
Jammu & Kashmir (J&K)
Rajasthan, Chandigarh (UT)
Uttar Pradesh (UP),
Uttarakhand
Maharashtra, Gujarat,
Madhya Pradesh (MP)
Goa, Daman & Diu (UT)
Dadar & Nagar Haveli (UT),
Chattisgarh,
Andhra Pradesh (AP), Kerala, Tamil
Nadu, Karnataka, Pondicherry
(UT), Laccadive, Minicoy &
Amindivi Island (UT)
Rest of States
and Union Territories (UT)
Kolkata

28. Who grants patents?
National patent office .
Regional office.
The WIPO-administered Patent Cooperation Treaty
(PCT) provides for the filing of a single international
patent application which has the same effect as
national applications filed in the designated
countries.
Through WIPO, an applicant seeking protection may
file one application and request protection in as
many signatory states as needed.

29. What Can Be Patented?
• Must be:
– Novel: not previously known or used by others
– Useful: have a known use or produce a concrete and
tangible result
– Non-obvious:
• Is it obvious to PHOSITA (Person Having Ordinary Skill In The Art)?
• Can not be found in a single or reasonable combination of patents
that would yield a predictable result
• Can not be:
– Idea
– Law of Nature
– Scientific Principle

30. What is an Invention?
Sec.2(1)(J)
“Invention” means a new product or
process involving an inventive
step and capable of industrial
application

31. Patentable subject matter
Invention must
relates to a Process or Product or
both
be new (Novel)
involves an inventive step
be Capable of industrial application
not fall under Section 3 and 4

32. “NEW”
MEANS
Invention must not be
Published in India or elsewhere
In prior public knowledge or prior public use with in
India
Claimed before in any specification in India

33. Inventive step
A feature of an invention that
involves technical advance as compared to
the existing knowledge or
have economic significance or both and
makes the invention not obvious to a person
skilled in the art

34. Industrial application means
Invention is capable of
being made or used in
any kind of industry

35. Section 3 exclusions
Section 3(a)
• Frivolous inventions
• Inventions contrary to well established
natural laws
Examples
 Machine that gives more than 100%
performance
 Perpetual machine

36. Section 3 exclusions
Section 3(b)
Commercial exploitation or primary use of
inventions, which is
Contrary to
public order or
Morality
Examples
– Gambling machine,
– Device for house-breaking ,

37. Section 3 exclusions
Section 3(b)
Commercial exploitation or primary use of
inventions , which
Causes serious Prejudice to
 health or
 human, animal, plant life or
 to the environment
Examples
 Biological warfare material or device,
weapons of mass destruction
 Terminator gene technology,
 Embryonic stem cell

38. Checks and Balances
Section 3(b)
Excludes patents on
• GMOs – exploitation of which could be
contrary public order or morality or prejudicial
to human, animal or plant life or health or to
the environment
Effect: Only genetically modified micro-
organisms (GMOs) which do not fall under
section 3 (b) are patentable.

39. Section 3 exclusions
Section 3 ( c )
• Mere Discovery of a Scientific Principle or
• formulation of an Abstract Theory or
• discovery of any living thing or
• discovery of non–living substance occurring in nature
Examples
Newton’s Laws
Superconducting Phenomenon as such
Property of certain material to withstand mechanical
shock
Discovery of micro-organism
Discovery of natural gas or a mineral

40. Checks and Balances
Section 3(c)
Excludes patents on
•Naturally occurring Micro-organisms
Effect
Genetically modified microorganisms (GMOs) are
however, patentable.

41. Section 3 exclusions
Section3 (d)
The mere discovery of a new form of a
known substance which does not result
in the enhancement of the known efficacy
of that substance

42. Section 3 exclusions
Section3 (d) Explanation
For the purposes of this clause,
• salts, esters, ethers, polymorphs,
• metabolites, pure form, particle size,
• isomers, mixture of isomers,
• complexes, combinations and other derivatives of known
substances
shall be considered to be the same substance, unless they
differ significantly in properties with regard to efficacy.
Examples
– Crystalline forms of known substance

43. Checks and Balances
Section 3 (d) Explanation
Effect
Salts, esters, ethers, polymorphs, metabolite, pure forms,
particle size, isomers, complexes, combinations and
derivatives of a known substance with enhanced efficacy
are patentable

44. Section 3 exclusions
Section3 (d)
Mere discovery of any new property or new
use for a known substance or of the mere
use of a known process, machine or
apparatus, unless such known process
results in a new product or employs at least
one new reactant.
Examples
– New use of Aspirin for heart ailments,
– Mere new uses of Neem

45. Section 3 exclusions
Section 3(e)
Substance obtained by mere admixture resulting
only in the aggregation of the properties of the
components thereof or a process for producing such
substance
Examples
 Combiflam [Paracetamol (Antipyretic) + Brufen (analgesic)]
 Solution of sugar and color additives in water to form a soft drink
However,
A mixture resulting into synergistic properties of mixture
of ingredients however, may be patentable - Soap,
Detergents, lubricants etc

46. Checks and Balances
Section 3 ( e )
Effect
 Substance obtained by mere admixture resulting
only in the aggregation of the properties of the
components thereof or
 a process for producing such substance
are not patentable
However
Synergistic formulations are patentable

47. Section 3 exclusions
Section 3 ( f )
Mere arrangement or re-arrangement or
duplication of known devices, each
functioning independently of one another in
a known way
Examples
A Bucket fitted with torch,
An Umbrella with fan
A Clock and radio in a single cabinet
A flour-mill provided with sieving

48. Section 3(h)
Method of Agriculture or Horticulture
Examples
Cultivation of algae ,
Producing new form of a known plant,
Preparation of an improved soil
However,
Agricultural Equipment's are patentable
Section 3 exclusions

49. Section 3(i)
Any process for medicinal, surgical, curative, prophylactic,
diagnostic, therapeutic or other treatment of human beings or a
similar treatment of animals to render them free of disease or to
increase their economic value or that of their products
Examples
 Removal of cancer tumor
 Removal of dental plaque and carries
 Surgical processes
 Processes relating to therapy
 Method of vaccination,
 Blood transfusion
Section 3 exclusions
However ,
Treatment performed on tissues or fluids permanently removed from the body
Surgical,therapeutic or diagnostic Apparatus or instruments
are patentable

50. Section3 exclusions
Section 3(j)
Plants & animals in whole or any part
thereof other than micro- organisms, but
including seeds, varieties an d species and
essentially biological process for production
or propagation of plants & animals

51. Checks and Balances
Section 3(j)
Excludes patents on
• Plants and animals in whole or any parts thereof,
…… including seeds, varieties and species and
essentially biological processes for production or
propagation of plants and animals
Examples
– Clones and new varieties of plants
– A process for production of plants or animals if
it consists entirely of natural phenomena such as
crossing or selection
– Essentially biological Process

52. Section 3(k)
* mathematical method or
* business method or
* algorithms or
* computer programme per se
Examples
– Computer program by itself or as a record on a carrier
However
– New calculating machine
– combination of hardware and software
is patentable
Section 3 exclusions

53. Section 3(l)
A literary, dramatic, musical or artistic work
or any other aesthetic creation including
cinematographic work and television
productions
These subject-matters fall under the
copyright protection
Section 3 exclusions

54. Section 3(m)
A mere scheme or rule or method of performing mental act or
method of playing game
Examples
•Scheme for learning a language
•Method for solving a crossword puzzle,
•Method of learning a language
•Method of teaching /learning
However,
•Novel apparatus for playing game or carrying
out a scheme is patentable
Section 3 exclusions

55. Section 3 (n)
Presentation of information
Examples
 Any manner or method of expressing information
whether by
spoken words
Visual display
symbols
diagrams
Information recorded on a carrier
Section 3 exclusions

56. Section 3 (o)
Topography of integrated circuits.
Examples
Mask works - circuits layout
Section 3 exclusions

57. Section 3 (p)
Inventions which are
Traditional Knowledge or an aggregation or duplication of known
properties of traditionally known component or components
Examples
Traditional Knowledge already in public domain
- Wound healing property of Haldi
However,
Any value-addition using Traditional Knowledge leading to a
new process or product ,which is novel with inventive step and
industrial applicability,
Extraction of Azadirachtin from Neem
can be patented
Section 3 exclusions

58. Section 4
Inventions falling within Section 20(1) of the
Atomic Energy Act, 1962 are not patentable
Effect
Inventions relating to compounds of Uranium,
Beryllium, Thorium, Plutonium, Radium, Graphite,
Lithium and more as notified by Central Govt. from
time to time.
Non Patentable inventions

59. What are the Parts of a Patent?
• Abstract
• Background of the Invention
• Summary of the Invention
• Figures with brief descriptions
• Detailed description or “specification”
– Fully discloses what the invention is
– How it is made?
– How it can be used?
• Claim(s): sets the legal boundaries of protection
– Independent
– Dependent

60. Patent Grant in INDIA
Conceptualizing an invention
Filing of application
With provisional specification
Publication u/s 11A (early or
post 18-months )
Filing complete within
12 months after
provisional YES
If NOT
Application
ABANDONED
REQUEST for EXAMINATION
on Form-18 within 48 months
from date of priority.
Pre-grant opposition U/s 25(1)
EXAMINATION [for
patentability &
other requirements
F.E.R. Issued.
With complete specification

62. F.E.R. ISSUED
• Re-Examination of amended documents
• Controller offers a hearing to the applicant.
• Application is to be put in order within 12 months from issue
of FER
Objections not met
within 12 months
ABANDONED Grant of Patent u/s 43 and
publication of grant
Post grant opposition u/s 25(2)
Objections met within 12
months
34