The document discusses the requirements for patentability in India, including patentable subject matter, industrial applicability, novelty, inventive step, and specification requirements. It provides examples of inventions and analyzes whether they meet the requirements. Specifically, it examines inventions related to genetically modified animals, computer programs, massages, medical methods, compositions, machines, and other products. Throughout it emphasizes the need to ensure an invention is novel and non-obvious to be considered for patent protection in India.

1. Copyright, BananaIP (BIP) Counsels, 2020
Patentability Requirements
Dr. Kalyan C. Kankanala
BananaIP Counsels
contact@bananaip.com

2. Patentability Requirements
• Patentable subject matter
• Industrial Applicability
• Novelty
• Inventive Step
• Specification
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3. Patentable Subject Matter
• Product or Process - Section 2(1)(j)
• Computer Program
• Genetically modified pig
• Business method
• Massage technique
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4. Exclusions
• Section 3(d)
• New form
– Efficacy
• New property or use
• Mere use of known process
– New product
– New reactant
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5. Exclusions
Explanation: Salts, Esters, Ethers, Polymorphs,
Metabolites, Pure forms, Particle size, Isomers, Mixture
of isomers, Complexes, Combinations and other
Derivatives of a known substance considered same
substance
• Efficacy
• Novartis case
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6. Exclusions
• Plants, Animals and Parts (Section 3(j))
• Computer Programs Per Se (Section 3(k)
• Medical Methods (Section 3(i))
• Traditional Knowledge (Section 3)
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7. Example
Aamir identifies the gene responsible for skin colour in
sheep. He modifies the gene sequence to produce
luminisence when the sheep is ready for slaughter. He
inserts the gene using standard techniques, and
produces sheep including the modified gene
sequence.
Patentable Subject Matter?
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8. Example
Rakesh conceives and develops an application for
assessing the mood of the customer calling the help
desk of a business. The call is routed to a person with
appropriate experience and temperament based on
the mood of the caller. Bad mood callers are either
disconnected or kept on hold for a given period of
time.
Patentable Subject Matter?
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9. Example
Raghu develops a method of massaging by integrating
traditional Thai sequences, Yoga practices, meditation
methods, and tailor made music to enhance wellness,
reduce stress, and relieve pain.
Patentable Subject Matter?
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10. Example
Deva develops a love making product and process that
enhances libido and pleasure based on information
and knowledge in ancient texts.
Patentable Subject Matter?
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11. Industrial Applicability
Section 2(1)(ac) - Capable of Industrial Application
• Make
• Use
• Repeat
• Industry
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12. Industrial Applicability
A method of enhancing quality of life of cattle and
poultry by not keeping them in captivity, and leaving
them free within a large, natural enclosure.
Color smeared glasses to see the world in different
colors.
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13. Novelty
Section 2(1)(L) - New Invention
• Prior Publication
• Public Knowledge
• Public Use
• On Sale
• Public Display
• Public Working
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14. Inventive Step
Section 2(1)(ja)
• Technical Advance or Economic Significance and
• Not obvious to a person skilled in the Art.
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15. Secondary Indicia
• Commercial Success
• Copying
• Praise by expert
• Unexpected results
• Long felt need
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16. Example
Invention
• Chair with Wheels
• Prior Art
• Chairs
• Tables with wheels
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17. Example
Invention
• A composition for treating Rabies. The formulation includes
jack fruit extract, coconut oil and powdered banana leaf.
Prior Art
• Banana Leaf is known to have anti-viral properties.
• Jack fruit is used to treat delirium and other mental conditions.
• Coconut oil is used to treat open wounds.
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18. Specification
Section 10
• Written Description
• Enablement
• Best Mode
• Claims
• Object: Notice and Dissemination
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19. Example
Invention
• Lead Pencil with a Rubber Head. The rubber has a hole into
which the pencil can be inserted.
• Prior Art
• Lead Pencils
• Indian Rubber
• [RUBBER-TIP PENCIL COMPANY v. HOWARD., October Term,
1874, Supreme Court of the United States (87 U.S. 498).]ee
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20. Example
Invention
Sausage making machine with two portions: Mincing portion and
Filling portion.
Prior Art
Mincing Machine
Filling Machine
[WILLIAMS V. NYE, Reports of Patent, Design and Trade Mark
Cases, Volume 7, Issue 5, 19 February 1890, Pages 37–41.]
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21. Example
Invention
• Door Knobs made of potter's clay or porcelain
• Prior Art
• Door knobs made of metal or wood
• [Hotchkiss v. Greenwood, 52 U.S. (11 How.) 248 (1851).]
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22. Take the Inventive Step to Patent
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The Strategic Inventor® Application helps, enables and facilitates you to
draft patent specifications on your own. It is an application and platform for
drafting and generating patent specifications easily.
Advantages
• You can draft patent specifications in easy and simple
steps
• The application is User Friendly
• Strategic Inventor® is a FREE application/platform and
there is no cost involved
• You can draft and file multiple patent applications on
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• The application has step wise instructions and videos to
help you
• You may seek patent attorney support or advice, for a
fee, at any point with just a click
https://www.strategicinventor.com

23. Download Dr. Kalyan’s books
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24. Thank You
Contact us
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Bangalore – 560062.
Email: contact@bananaip.com
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