Patent: Concepts related to Patentability / A Presentation at NALSAR Hyderabad - Somashekar Ramakrishna Contact Us for Intellectual Property Services BananaIP Counsels Regd Office No.40,3rd Main Road,JC Industrial Estate, Kanakapura Road,Bangalore – 560 062. Email: contact@bananaip.com Telephone: +91-80-26860414 /24/34

1. By
Somashekar Ramakrishna
Brain League IP Services Now BananaIP
© Brain League IP Services Pvt. Ltd Now BananaIP

2. Industrial applicability/Utility

3. Industrial Applicability/Utility
 Industrial Application The invention is capable of being made or used in an industry Sec
2(1)(ac)
 No Industrial applicability
 If vague and speculative possible objectives are indicated (MPPP Sec 3.25.3)
 For processes or articles alleged to operate in a manner contrary to well-established
physical laws (MPPP 3.25.5)
 For method of treatment of the human or animal body by surgery or therapy or of diagnosis
practiced on the human or animal body (MPPP 3.25.6)
 For parts/pieces of the human or animal body to be used in transplants (MPPP 3.25.6)
e.g. Scheme for exchanging all or part of a prison sentence for corporal punishment Lacks
Industrial Applicability Melia’s Applicaton (BL O/153/92)

4. Anticipation

5. Anticipation
 (l) “new invention” means any
invention or technology which has not
been anticipated by publication in any
document or used in the country or
elsewhere in the world before the
date of filing of patent application with
complete specification, i.e. the subject
matter has not fallen in public domain
or that it does not form part of the
state of the art;

6. Anticipation
Invention Prior Art

7. Anticipation
 Prior Art
 Prior Publication
 Public Knowledge and Public Use
 Public display
 On sale

8. Anticipation
 Prior Publication
Date of
filing of CSIndian Patent application
Publication
Section 13(1) a
Indian Patent application
Publication
Section 13(1)b
Publication in India or
elsewhere in any document
Section 13(2)
No limit on the age of the
disclosure

9. Anticipation
 Prior Publication
 if ‘X’ files a patent application on 25th
September, 2009 relating to an invention and if
Y’s application relating to the same invention,
which was filed on 25th September, 2007, is
published on 25th October, 2009, the invention of
X will not be novel.

10. Anticipation
 Exceptions/No Anticipation by Prior
Publication if
 1) the patentee proves:
a) Wrongful Obtainment; and
b) Application for patent was filed as soon as
reasonably practical after learning about the publication (Sec
29 (2) (a) and (b))
e.g. if ‘X’ takes information relating to an invention from Y’s lab and
publishes it without Y’s knowledge, such publication will not
anticipate the invention provided Y files a patent application after
learning about the publication within a reasonable period of time.

11. Anticipation
 2) a complete specification was filed by a person and
thereafter the invention is published or used by
contravening the rights of the true and first inventor
or any person deriving rights from him. (Sec 29(3))
○ e.g. if ‘X’ is the true and first inventor of an invention
and if ‘Y’ his colleague files for a patent over the
invention without informing X and permits ‘A’ to use it,
Y’s application when published or use of the invention
by A will not anticipate the patent application filed by
X

12. Anticipation
 3) the invention is communicated to the
Government or to any person authorized by the
Government to Investigate the invention or its
merits (Sec 30)

13. Anticipation
 4) If the invention in a paper is read by the true
and first inventor before a learned society or
published with the inventor’s consent in the
transactions of such a society IF
if an application for a patent relating to the
invention is filed within twelve months (12) of the
date of publication (Sec 31 (d))

14. Anticipation
• Public Knowledge and Public Use
 Knowledge already in the public domain or
knowledge easily accessible to the public.
Exception
If the use of the invention was by way of imposing
secrecy then it is not a public use .

15. Anticipation
 Public Display
 Public Display of an invention before the filing date
of the patent application will anticipate the invention.
 Exception
However, if an invention is displayed by the inventor at
an exhibition notified by the Central Government in
the official gazette, such a public display or use of
the invention at the exhibition or publication of
details of the invention as a consequence of the
exhibition will not anticipate the invention
provided a patent application is filed within twelve
(12) months from the date of such public display

16. Anticipation
 On Sale
○ If an invention is on sale or is commercially
worked in India by the applicant…. before the date
of the patent application, it will not be considered
to be novel.
(Exception) However, if the invention was on
reasonable trial, it will not be anticipated. Section
29(2)(b), Section 31(1)(a) and (b),

17. Anticipation
 On Sale
 e.g. if the inventor sells his novel road roller to the
government, he cannot get a patent over it as the sale
negates novelty of the invention.
 However, if the inventor tests the functioning of a Road
Roller in public under a government contract, such a
test will not anticipate the invention.

18. Anticipation
 Subject Matter in the Prior Art
 Thumb Rule: A Prior publication will
anticipate…….ONLY if it contains …..ALL
the features of the invention Farbewerke Hoechst Aktiengesellschaft
vormals meister Lucius &Bruning a Corporation etc. Vs. Unichem Laboratories and Ors MANU/MH/0064/1969
 The anticipatory disclosure must be entirely
contained within a single document. (MPPP 3.3.4)

19. Anticipation
Example
A chair
 4 legs
 Each leg is provided with a wheel
Prior Art 1
chair with 4 legs
Prior Art 2
wheels in toy chair.

20. Anticipation
Invention
Prior Art

22. Inventive Step
 Inventive step –
○ 1) Technically advanced in the light of the prior
art or should have economic significance ; and
○ 2) The invention should be non-obvious to a
person skilled in the art
 “inventive step” means a feature of an invention that
involves technical advance as compared to the existing
knowledge or having economic significance or both
and that makes the invention not obvious to a person
skilled in the art; Sec 2(ja)

23. Inventive Step
 Person skilled in the art
 Presumed to be an ordinary practitioner
aware of what was common general
knowledge in the art at the relevant date (MPPP
3.51.2)
 A notional skilled person who would perform
a transfer of technology from a neighboring
field to his specific filed of interest, if this
transfer involved routine experimental work
comprising only routine trails (MPPP 3.51.3)

24. Inventive Step
 Some Issues Involved in determining
Inventive step
 What was the problem which the patented
development addressed?
 How long had that problem existed?
 How significant was the problem seen to be?
 How widely known was the problem and how
many were likely to seeking a solution?.........

25. Inventive Step
 Indicators of inventive step
 Distance- b/n the Subject matter and the
prior art
 Unexpected effect
 Long felt need
 Failure of others
 Commercial success

26. Inventive Step
 Lack of Inventive step
 Invention provides equivalent
 Prior art is incomplete and the invention lies
in filling the gap which would readily occur to
a person skilled in the art
 New use of a known material

27. Inventive Step
 In determining Inventive Step
 Mosaicing multiple documents is permitted
 All information in any set of documents can
be combined provided they are all in the
same art (analogous)
 No hindsight should be employed (taking the
solution and working backwards)

28. Inventive Step
 Biswanath Prasad Radhey Shyam Vs. Hindustan Metal
industries, AIR 1982 SC 1444
Patent:
Means for holding utensils for turning purposes
Prior Art:
Lathe (tailstock)
 To be patentable the improvement or the combination
must produce a new result, or a new article or a better or
cheaper article than what was already existing
 Improvement or combination should be something
more than the mere workshop improvement

29. Inventive Step
Haberman and another v. Jackel International Ltd
(1999) FSR 683
 Patent:
 ANWY CUP, a trainer cup for toddlers
 Had a valve fitted to the lid
 Would open when baby sucked and closed when it stopped
 Immediate commercial success.
 Defendant: launched rival product: ‘super-seal”
 Suit for infringement: claim of obviousness.

30.  Justice Laddie:
 ‘ though involved a very small and simple
step, it is sufficiently inventive. It had solved
a problem (that is the long-felt need for a
spill-proof cup)’

31. Inventive Step
 Garewall ropes Ltd. Vs. Mr. Anant Kanoi
MANU/GJ/8265/2006
 Patent:
 Prefabricated collapsible gabion product made
from synthetic ropes
 Gabions are well known (since 7000 years)
 Rope gabions and polymer gabions were being
used in Maharashtra since 1991 and in Bihar
since 1987
Held: Substituting elements of common
knowledge in a product would not give rise to
inventive step

32. Inventive Step
 Example:
 Device for manually collecting the
agricultural produce has
container (Plastic) open at the top and
closed at the bottom
wall of the container has a contour adapted to
proximate the back of a human body
Straps and buckles for securing the container to
the individual
 Traditional product made out of
bamboo.

33. THANK YOU!
© Brain League IP Services Pvt. Ltd Now BananaIP