Analyzing Patentability of Inventions - Presentation by Dr. Kalyan C. Kankanala at UPES School of Law

Analyzing Patentability of Inventions

Dr. Kalyan C. Kankanala

kalyan@bananaip.comProfessional URL: www.bananaip.com

Books: www.kalyankankanala.com

Patentability requirements

• Patentable subject matter

• Industrial Applicability

• Novelty

• Inventive Step

• Specification

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Patentable Subject Matter

Product or Process - Section 2(1)(j)

• Computer Program

• Genetically modified pig

• Business method

• Massage technique

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Exclusions

Section 3(d)

• New form

– Efficacy

• New property or use

• Mere use of known process

– New product

– New reactant

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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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Exclusions

• Plants, Animals and Parts (Section 3(j))

• Computer Programs Per Se (Section 3(k))

• Medical Methods (Section 3(i))

• Traditional Knowledge (Section 3(p))

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Example

• Kodi identifies and inserts a gene in a hen which

leads to the increase in the output of eggs (sixty

luminescent eggs per month). He is interested in

getting a patent on his invention.

• Can he get a patent and if yes, on what?

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Example

• Som develops an android application for

assessing the mood of the caller. The app has

automated systems for rejecting calls of bad

mood callers. It also can recognize cold callers.

• Patentable?

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Example

• Kini, a house wife and follower of Baba Ramdev,

develops a method of performing yoga that will help

astronauts adapt to low gravity environments. She

wishes to file for a patent in India.

• Will there be any issues with patentable subject matter?

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Example

• Koka Nair inherits traditional knowledge with respect to

ayurvedic formulations for improving immunity and

promoting healthy living from his ancestors. After

researching on the formulations, he isolates active

ingredients from three of the formulations and prepares

tablets for enhancing immunity.

• Is his invention patentable subject matter?

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Industrial Applicability

Section 2(1)(ac) - Capable of Industrial Application

• Make

• Use

• Repeat

• Industry

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Industrial Applicability

• Neo invents a method of making a dog

jump on four legs.

• Helen invents a method of eloping based

on adverse conditions.

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NoveltySection 2(1)(l) - New Invention

• Prior Publication

• Public Knowledge

• Public Use

• On Sale

• Public Display

• Public Working

• Single prior art reference

• Inherent anticipation

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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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Secondary Indication

• Commercial Success

• Copying

• Praise by expert

• Unexpected results

• Long felt need

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Example

• Invention

• Chair with Wheels

• Prior Art

• Chairs

• Tables with wheels

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Example

• Invention

• Stent coated with Taxol

• Prior Art

• Stents

• Many Anti-cancer agents including Taxol

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Specification

Section 10

• Written Description

• Enablement

• Best Mode

• Claims

• Object: Notice and Dissemination

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Dr. Kalyan C. Kankanala’s Latest IP Thriller –The Dravidian

ABOUT THE DRAVIDIAN

The Dravidian tribe in the Western Ghats holds the key to

ancient knowledge capable of redefining the fundamentals of

modern medicine. When an army of Bio Pirates descend on

them, the warrior tribe is faced with an adversary that must be

taken down at all costs to avoid complete destruction. The last

weapon in the Dravidian arsenal is Arjun Mamidi, a young,

blind lawyer.

Can Arjun save the Dravidians and their invaluable knowledge

from impending doom? Or will the knowledge and the men

guarding it be lost forever?

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