LEGAL ASPECTS OF
PATENTS
An overview
 Owned by a
person
 Registered under
an authority
 Claimed / prevent
others from
claiming
 Assignable, transf
erable, ...
INTELLECTUALPROPERTYRIGHT
 INTELLECTUAL-
CAPACITY,CREATIVITY,IDEA,KNOWLEDGE,
 PROPERTY-
OWNED,REGISTERED,POSSESSED
 RIG...
1. Patent
2. Trade marks
3. Design
4. Copyright
5. Integrated circuits and layout designs
6. Geographical indications
7. P...
5
INTELLECTUALPROPERTY
CLASSIFICATION
INDUSTRIAL PROPERTY LITERARY PROPERTY
 PATENTS
 TRADE MARKS
 DESIGNS
 INTEGRATED...
6
PATENT-Industries concerned, a few
Device, apparatus, process, method of manufacture, or composition
of matter concerning ...
Patent definition
Latin term patere, "to lay open" (i.e., to make available for public
inspection), In English term letter...
NEED FOR THE PROTECTION OF
PATENTS
 Encouragement
 Inducement
 Reward
 Transfer and dissemination of technology
 Comm...
Patent right
 Exclusive right(monopoly)
 Granted for a limited period of time
 Territorial in nature
 Assignable, lice...
I P LEGISLATIONS IN INDIA
1. PATENTS ACT , 1970
2. TRADE MARKS ACT, 1999
3. COPY RIGHT ACT , 1957
4. DESIGNS ACT , 2000
5....
Need for the protection of Patents
 Encouragement
 Inducement
 Reward
 Transfer and dissemination of technology
 Comm...
Persons entitled to apply for patents
 True and first inventor
 Assignee of the true and first inventor
 Legal represen...
Rights of patentee
An exclusive right over the patented product / process to;
a) Manufacture
b) Use
c) Offering for sale, ...
Inventions patentable includes..
 Art(technology), Process, Method of manufacturing;
 Machine, apparatus, instrument or ...
Patentability
Patentability is the ability / character of the invention to make itself eligible for a grant of
patent by t...
Patentability - novelty
 it does not form the state of the art
 it has not been described orally
 it has not been publi...
Patentability-inventive step
 Technical advance as compared to the existing
knowledge or
 Having economic significance o...
 Frivolous or obvious and contrary to natural laws
 Contrary to public order or morality or prejudicial to
human, animal...
Inventions not patentable
 Mere arrangement / rearrangement or duplication of known
devices functioning independently in ...
Inventions not patentable
 literary, dramatic and musical works and aesthetic creations
including cinematography and tele...
PATENTING IN COMPUTER
SCIENCES
22
SOFTWARE
PROGRAMMES
PATENT AGENT
23
A Patent agent is a registered person with Indian Patent Office
whose name is entered in the patent agent ...
Filing of patent application
Application for grant of patent in Form 1;
Complete patent specification in Form 2;
Two sets ...
Provisional specification
Brief description of the invention
Claims are not necessary
To establish the earliest ownership ...
COMPLETE SPECIFICATION
26
A typical patent specification has the following sections:
1.Title of invention;
2.Field of inve...
Patent prosecution - Stages
I. FILING OF APPLICATION under section.7 or 54 or 135 or 7(1A)
II. REQUEST FOR EARLY PUBLICATI...
PROVISIONAL
SPECIFICATION
COMPLETE
SPECIFICATION
PUBLICATION
REQUEST FOR
EXAMINATION
FIRST
EXAMINATION
REPORT
RESPONDTO
OF...
Anticipation
Anticipation: state of the art, already known to the
public, already published, subject in use or practice in...
Patent searching
Systematic collection of available information and
literature including specification and other details p...
 Invention wrongfully obtained by the applicant
 Previously published
 Previously claimed in another specification
 Kn...
Patents the legal aspects
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Patents the legal aspects

  1. 1. LEGAL ASPECTS OF PATENTS An overview
  2. 2.  Owned by a person  Registered under an authority  Claimed / prevent others from claiming  Assignable, transf erable, mortgage able PROPERTY  TANGIBLE PROPERTY  MOVABLE PROPERTY  IMMOVABLE PROPERTY  INTANGIBLE PROPERTY  RIGHTTO INDIVIDUL REPUTATION  INTELLECTUAL PROPERTY PROPERTY
  3. 3. INTELLECTUALPROPERTYRIGHT  INTELLECTUAL- CAPACITY,CREATIVITY,IDEA,KNOWLEDGE,  PROPERTY- OWNED,REGISTERED,POSSESSED  RIGHT- CLAIMED,EXERCISED,EXPLOITED THE RIGHT ASSOCIATED WITHTHE IDEA OR CREATION OF MIND WHCH IS APPLIED, OWNED AND EXPLOITED BY A PERSON
  4. 4. 1. Patent 2. Trade marks 3. Design 4. Copyright 5. Integrated circuits and layout designs 6. Geographical indications 7. Plant varieties and farmers rights 8. Trade secrets and confidential information INTELLECTUALPROPERTYRIGHTS
  5. 5. 5 INTELLECTUALPROPERTY CLASSIFICATION INDUSTRIAL PROPERTY LITERARY PROPERTY  PATENTS  TRADE MARKS  DESIGNS  INTEGRATED CIRCUITS AND LAYOUT DESIGNS  COPY RIGHTS  NEIGHBOURING RIGHTS PERFORMERS RIGHTS BROADCASTING REPRODUCTIONRIGHTS
  6. 6. 6
  7. 7. PATENT-Industries concerned, a few Device, apparatus, process, method of manufacture, or composition of matter concerning to  All the fields of engineering and technology  Fertilizers, chemicals, bulk drugs, drug formulations  Food products and nutritional supplements  Software with hardware, architectural works  Products of biotechnology (subject to exceptions)
  8. 8. Patent definition Latin term patere, "to lay open" (i.e., to make available for public inspection), In English term letters patent, royal decree granting exclusive rights to a person. Patents in the modern sense originated in 1474, in the Republic of Venice A patent is a form of intellectual property. It consists of a set of exclusive rights granted by a government to a true and first inventor or their assignee for a limited period of time in exchange for the public disclosure of an invention. Patent is an exclusive right granted to a person who has invented a new and useful article or an improvement over an existing article.
  9. 9. NEED FOR THE PROTECTION OF PATENTS  Encouragement  Inducement  Reward  Transfer and dissemination of technology  Commercial exploitation by the inventor  Preventing others from exploiting the right  Healthy competition  Development of a nation  Reveal the intellectual capability of the inventor 9
  10. 10. Patent right  Exclusive right(monopoly)  Granted for a limited period of time  Territorial in nature  Assignable, licensable, transferable and mortgageable right  Proprietary right  Legally enforceable  Registrable before a competent authority  Commercially exploitable
  11. 11. I P LEGISLATIONS IN INDIA 1. PATENTS ACT , 1970 2. TRADE MARKS ACT, 1999 3. COPY RIGHT ACT , 1957 4. DESIGNS ACT , 2000 5. SEMICONDUCTOR INTEGRATED CIRCUITS AND LAYOUT DESIGNS ACT, 2000 6. GEOGRAPHICAL INDICATIONS OF GOODS (REGISTRATION AND PROTECTION) ACT,1999 7. THE PROTECTON OF PLANT VARIETIES AND FARMERS RIGHTS ACT,2001
  12. 12. Need for the protection of Patents  Encouragement  Inducement  Reward  Transfer and dissemination of technology  Commercial exploitation by the inventor  Preventing others from exploiting the right  Healthy competition  Development of a nation  Reveal the intellectual capability of the inventor
  13. 13. Persons entitled to apply for patents  True and first inventor  Assignee of the true and first inventor  Legal representative of any deceased person who immediately before his death was entitled to make such application
  14. 14. Rights of patentee An exclusive right over the patented product / process to; a) Manufacture b) Use c) Offering for sale, selling or importing in to India for sale d) Prevent others from make, use, sell, import the patented product / product directly obtained through that patented process and commercially exploiting the patent. e) Assign, transfer and issue license f) Surrender the patent and Sue in case of infringement g) Claim remedies upon proving the infringement
  15. 15. Inventions patentable includes..  Art(technology), Process, Method of manufacturing;  Machine, apparatus, instrument or other Articles;  Substances, compositions or formulations produced by Manufacturing process;  Computer Software to be applied in a Technical application to Industry or programmed in a hardware  Food products / Chemicals / Medicines and bulk drugs/ fertilizers
  16. 16. Patentability Patentability is the ability / character of the invention to make itself eligible for a grant of patent by the patent offices. The criteria of eligibility includes; 1. Novelty 2. Inventive Step 3. Industrial Applicability 4. Utility and in addition 5. The invention should not fall under the category of inventions ‘INVENTIONS NOT PATENTABLE’ mentioned under Sections 3 and 4 of the Patents Act,1970
  17. 17. Patentability - novelty  it does not form the state of the art  it has not been described orally  it has not been published before the date of filing the patent application  It has not been used before the date of filing the patent application Patent can be granted for a A NOVEL PROCESS FOR A KNOWN PRODUCT-PROCESS CLAIM A NOVEL PRODUCT BY A KNOWN PROCESS- PRODUCT CLAIM A NOVEL PRODUCT BY A NOVEL PROCESS-PRODUCT PROCESS CLAIM
  18. 18. Patentability-inventive step  Technical advance as compared to the existing knowledge or  Having economic significance or  Both technical advance and economic significance and  All the above mentioned features makes the invention non obvious to a person skilled in the art.” Besides the above features the invention  can able to be manufactured in an industry and  It must possess utility ( usefulness) to the mankind
  19. 19.  Frivolous or obvious and contrary to natural laws  Contrary to public order or morality or prejudicial to human, animal or plant life and health or to the environment.  Mere discovery of the scientific principle or the formulation of an abstract theory or discovery of any living thing or non-living substances occurring in nature  Mere discovery of new form of known substance without any enhancement in the efficacy new property or mere new use for known substance or the mere use of a known process, machine or apparatus-unless the known process results to new products or employs atleast one new reactant.  Mere admixtures of substances. Inventions not patentable
  20. 20. Inventions not patentable  Mere arrangement / rearrangement or duplication of known devices functioning independently in a known way.  Method of agriculture and horticulture;  Any process for the medicinal or surgical, curative prophylactic, diagnostic, therapeutic or other treatment of human beings, animals to render them free of disease or to increase their economic value or that of their products;  Plants and animals in whole or any part thereof other than micro-organisms but including seeds, varieties and species and essentially biological process for production or propagation of plants and animals;  A mathematical or business method or algorithms.
  21. 21. Inventions not patentable  literary, dramatic and musical works and aesthetic creations including cinematography and television production.  Method for performing mental act or playing game.  Presentation of information.  Topography of Integrated Circuits.  Invention which in effect, is traditional knowledge or which is an aggregation or duplication of known properties of traditionally known components.  Inventions relating to Atomic Energy.(Sec.4)
  22. 22. PATENTING IN COMPUTER SCIENCES 22 SOFTWARE PROGRAMMES
  23. 23. PATENT AGENT 23 A Patent agent is a registered person with Indian Patent Office whose name is entered in the patent agent register after being declared qualified the patent agent examination conducted by the patent office and who is entitled— (a) to practice before the Controller; and (b) to prepare all documents, transact all business and discharge such other functions as may be prescribed in connection with any proceeding before the Controller under this Act. Knowing the invention inside and out does not qualify the inventor to write and prosecute an effective patent application.
  24. 24. Filing of patent application Application for grant of patent in Form 1; Complete patent specification in Form 2; Two sets of the drawing figures, if any, Duly stamped power of attorney in Form 26 authorizing the agent; Declaration of the inventorship signed by the applicant in Form 5;(where provisional specification is followed by complete specification or in case of convention application.) The Statement and Undertaking regarding foreign filings in Form 3; Abstract of the invention Proof for the applicant’s right to apply for patent and the priority details. (if priority is claimed) and Fee in cash/by local cheque/by demand draft.
  25. 25. Provisional specification Brief description of the invention Claims are not necessary To establish the earliest ownership to the invention To obtain priority date for the invention Allows a period of 12 months to file the complete specification (Any modification , addition or improvements to the invention can be made within the period of 12 months after the filing of provisional specification) Not applicable in case of convention application and PCT application
  26. 26. COMPLETE SPECIFICATION 26 A typical patent specification has the following sections: 1.Title of invention; 2.Field of invention; 3.Background of invention 4.Object of invention; 5.Statement of invention; 6.A summary of invention; 7.A brief description of the accompanying drawing; 8.Detailed description of the invention 9.Claim(s); and 10.Abstract.
  27. 27. Patent prosecution - Stages I. FILING OF APPLICATION under section.7 or 54 or 135 or 7(1A) II. REQUEST FOR EARLY PUBLICATION under section.11A(2) PUBLICATION AFTER 18 MONHS under section.11A III. REQUEST FOR EXAMINATION under section.11B IV. EXAMINATION under section under section12 V. SEARCH FOR ANTICIPATION BY THE EXAMINER under section.13 VI. CONSIDERATION OF ‘FER’ BY CONTROLLER under section.14 VII. REFUSAL / AMENDMENT OF THE APPLICATION under section.15 VIII. ANTICIPATION PROCEEDINGS IF ANY under section.18 IX. OPPOSITION PROCEEDINGS IF ANY under section.25 X. SECRECY DIRECTIONS IF ANY under sections.35 to 42 XI. GRANT OF PATENTS under section.43
  28. 28. PROVISIONAL SPECIFICATION COMPLETE SPECIFICATION PUBLICATION REQUEST FOR EXAMINATION FIRST EXAMINATION REPORT RESPONDTO OFFICE ACTION FURTHER EXAMINATION REPORT WITHIN 12MONTHS FROM PROVISIONAL SPECIFICATION AFTER 18 MONTHS FROM PROVISIONAL WITHIN 48 MONTHS FROM THE PROVISIONAL WITHIN 6 MONTHS FROM THE DATEOF REQUEST WITHI 12MONTHS FROMTHE FER EARLY PUBLICATION (OPTIONAL) PRE GRANT OPPOSITION IF ANY PATENT GRANTED
  29. 29. Anticipation Anticipation: state of the art, already known to the public, already published, subject in use or practice in the public domain before the priority date of the present application for patent. Modes of anticipation: I. Previous communication to the government II. Public display III. Public working IV. Use and publication Anticipated  known invention  not patentable Not anticipated  new invention  patentable In general anticipated inventions are not patentable, but exceptions are there.
  30. 30. Patent searching Systematic collection of available information and literature including specification and other details published by the patent offices world wide relevant to the invention in hand or proposed patent application for evaluation, analysis and further progress of the invention for grant of patent. Search includes; State of the art search Novelty/patentability search Infringement search Competitor wise search Patent family search landscape analysis, validity search
  31. 31.  Invention wrongfully obtained by the applicant  Previously published  Previously claimed in another specification  Known public use before the priority date  Lack of inventive step in the invention  Not an invention according to the act  Coming under ‘inventions not patentable’ category  Not sufficiently described in the specification  Failure of the applicant in disclosing the information under sec.8  Wrong mention of the source of the biological material  Already known to the knowledge of local indigenous community of India or elsewhere. Grounds of opposition

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