INTELLECTUAL PROPERTY RIGHTS

Intellectual Property Rights

Presented by:venkata kumar sahuM.Pharm(Ceutics)Anna University Tirchirappalli.

Intellectual Property

Intellectual Property is a property that arises from the human intellect. It is a product of human creation.

Intellectual Property is the creation of the human intellectual process and is therefore the product of the human intellect or mind.

Why to Protect Intellectual Property?

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Human Intellect Wealth

When secure & protected

Why to Protect Intellectual Property??

Protect investment in time, money or other resources used to create new contribution to technology, commerce and entertainment.

Fosters economic growth Provides incentives for technological

innovation, and

Why to Protect Intellectual Property?

Attracts investment that will create new jobs and opportunities.

Governments encourage Creators to disclose their creations to the public in order to promote the progress of science and useful arts which are the engines of development - investors demand this guarantee

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Intellectual Property Rights are a Collection of Rights

Trademark

CopyrightIndustrial

Design

Geographical Indication

Trade Secret

PatentRight

Integrated Circuits

How to Protect Intellectual Property?

Invention by a patent or as trade secret.

Utility models by a certificate or secret. Industrial Design by a certificate. Trade and Service Mark by a

certificate. Copyright by reducing to a fixed form.

How does a patent system work?Earlier New inventions were

kept close secrets with in family or organization.

No proper documentation.

Handed over others orally.

Society at loss. Sometime secrets were

lost.

Today Inventor share the

knowledge behind the invention in order to get patent.

Patent provided exclusive right to inventer.

After expiration of patent, invention is in public domain for free exploitation and further development.

8Balance betn rights of inventor and utility of invention

Creation New NO

Yes Secret/

PublicSecret

Public

Publish

Patent

Patent /publish

Inventor’s perspective

Patent

-/+

Exclusive Rights

Debar others

Commercial exploitation

License it

Disclosure

Long Wait

Cost of patenting

Cost of renewal

Policing

+-

Inventor’s perspective

Publish

- +

Immediate Recognition

No Cost involved

Preempt Others to get patent rights

No commercial benefit

Camouflage

+-

Inventor’s perspective

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AWARDED BY USPTO(united state patent & trademark office)

TYPES OF PATENT

PATENT DESIGN

UTILITY PATENT

PLANT PATENT

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1.DESIGN PATENT

May be granted to anyone who invents a new,original ornamental design for an article of manufacture

It protects only the apperance of the article but not the structural or funtional features

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FEATURES OF DESIGN PATENT

It protects ornamental ,

Design Improved decorative apperance

Shape of the invention Configuration

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DESIGN OF COKE BOTTLE

FOR IT’S BOTTLE DESIGN

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BICYCLE HELMET

Patented for it’ design

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Patented for it’s design and filed in USPTO-Athlete’s shoe

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US PATENTED EAR RINGS IN 1980 FOR IT’S DESIGN

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Life period:14 YEARFee : $2000-$2500No need for maintanence fee Limitation: only protect the design of the

invention not the idea of invention Merit: *easy to get *less cost than utility patent

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2.UTILITY PATENT

New inventions or functional improvements can get utility patent

It may be a, product machine a process composition of matter Called also as non provisional

patent

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Example

Novel Silicone fatty esters: OH group of

silicone+esters of fatty acid or anhydride

Use: as s good soonthing and lubricating agent in cloths & fibers

Patented on August 4 “1994 for it’ s funtional activity.

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DOVE SOAP-PATENTED FOR IT’S CLEANISING PROPERTY

It’s having sodium cocyl isothionate,stearic acid,coconut oil,sodium tallowate as active ingredients

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PATENED FOR IT’S ANTIDANDROFF ACTIVITY

ZPTO as a main active ingredient,it reduces epidermal turnover and inhibits pityosporum ovale

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Features of utility patent It provides the right to prevent

others from making,using,selling&importing a product

Life period:20 yearsFee structure: $3000- $5000 Maintanance fee should be paid at

the intervals of 31/2.71/2,111/2 yrs to USPTO

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PLANT PATENT

Anyone who has invented or discoveredand asexually reproduced any distinct, new variety of plant including cultivated sports,mutants,hybrids,newly found seedlings other than tuber propagated plant can get this patent

Life period:17 yrs Fee structure:&2000

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EXAMPLE-DIDI SALMON TWO

side perspective view of a flowering plant of 'Didi Salmon Two'.

close-up view of typical flowers and leaves of 'Didi Salmon Two'.

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DESCRIPTION

Not observed in all possible envirnmental conditions

Observed in california Variation in temperature.light

intensity,genotype changes the phenotype of the plant

For commercial purpose: * fibre class covered

green house used during late spring day at 27 degree.c&light level about 2000f.c

* rooted young plants were planted in containers for upto 5 months

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Didi salmon Two A new and distinct

cultivar of Double Impatiens plant named ‘Didi Salmon Two’, characterized by its compact, upright, outwardly spreading and mounded plant habit; freely branching growth habit; dark green-colored leaves; freely flowering habit; and light red-colored flowers that are fully double and positioned above and beyond the foliage.

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HOW WE CAN PROTECT OUR PATENT IN OTHER COUNTRIES?Should file international patent

appilication under the patent co-opearation treaty(PCT)

Delays expense of filing in other countries

Allowing feasibility of the patent in other country

Life period:21/2

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TO know about already patented invention…………

To know the fee structure of various type of patent and other details………

http://www.uspto.gov

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Type of Patents in Pharma

Medicinal Compounds

Medical uses Dosing regimens Combinations Formulations -

delivery systems Metabolites Polymorphs

ProdrugsIsomersSaltsProcess and intermediatesAssays and other research toolsDiagnostic methods

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API Compound& SynthesisPatentProtection

Solvated APIPatent Protection

Trademark

FormulationPatent Protection

Combo w/RTV Patent Protection

Method of TreatmentPatent Protection

Container Design

PATENTING PRROCEDUREDOCUMENT REQUIRED FOR PATENTING Application form in triplicate Provisional or complete specification in triplicate Drawings in triplicate (if necessary) Abstract of invention in triplicate Information and undertaking listing the

number ,filing date, current status of each foreign patent application in duplicate

Priority document if necessary Declaration of inventor ship Power of atony if done through any agent Fee in form of case, cheque , or by demand draft

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Typical Filing Process

Priority

DocumentInternational

Filing via PCT

PCT

National Phase

National and Regional Approvals

0 1 y 2.5 y +/- 6 to 10 y

Country List 1 Country List 2

Publication at 1.5 years

Examination up to issuance

Country List 3

Expires 20 years after PCT filingSubject to paying annuities

Start date for patent term

STEPS IN PATENTING

Application for patenting Application form(7) Specification(9) Priority date Publication of application

Examination Request for examination (11B) Final examination(12)

Opposition to grant Grant and sealing

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Application form One application form is intended for one invention prescribed Must be filled in the patent office The proof of right to make the application must be

submitted(In case where an application is made as assignment) International application under PCT(patent cooperation

treaty) can also consider as an application if a corresponding application if filled before the controller of India

Every application should say The possession of which invention Owner claiming the first invention Site of claim-where applicable or not

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The application must contain a declaration that the applicant believe that the person so named is the true and first inventor

Contain a provisional or complete specification

SPECIFICATIONS Contain the detailed preceding and

disclosure about invention Determines the patentability of the invention Has the technical aspect and scientific

explanation of the invention It is a legal document as it contain the rights

of patentee and the content specification are susceptible to the interpretation of law

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Types of specificationBoth are permanent and independent documentComplete Generally done after the

provisional specification Prepared with greater

details and more accuracy It is submitted with in 12

months of date of application

After that it can be filled up to 15 months provided Request to controller Payment of fees prescribed

Provisional

A more detailed document

States nature of invention and process involved in the invention

Helps to establish the identity of inventor and register the earliest authorship of invention at the patent office

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If two applications are made in the same name may considered as one if one is modification of other and the applicant must submit one complete specification with respect to all such provisional specifications

If application for patent is not applied in conventional one with complete specification it is treated as a provisional specification before acceptance

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PARTS OF COMPLETE SPECIFICATION Title- to the specification and concise but

illustrative it self Opening descriptions-provide preamble to the

invention Prior art reference- previous knowledge of

present invention(not in India) Objective of invention- purpose of invention

and utility aspects Statement of invention-it gives the additional

claim written at below and provide supportive statement

Claims-defines the monopoly rights and state what the invention want to protect in a lucid manner

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Detailed description- illustrative explanation with all pro and cons of invention and must be sufficient enough to enable national skilled persons to put it into practice

PRIORITY DATE It is the date that claim the invention is date

of filling the application

PUBLICATION OF APPLICATION(IIA) Published in the 18 month after application The publication is notified in the official

gazette date of application , number of application, name and address of applicant and abstract

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Examination Procedure Examination by the National or Regional Patent Offices Done in two steps ie request for examination and final

examination Former is done with in 48 months from date of filling and

essentially requires a request from applicant Second one checks

Documents are as per requirement or not For any lawful ground of objection Contain results of search for previous publication or claim

Make report with in 18 months from the date of reference

Examination types- • Formal examination• Substantive examination

Novelty Inventive Industrial Applicable

OPPOSITIO TO GRANT PATENTING Person interested to oppose may notice with

in 4 months of advertisement of acceptance Opposition is based on section 25 GROUNDS OF OPPOSITION

Obtaining wrong fully Prior publication Prior public use or prior public knowledge Obviousness or lack of innovative step Non patentable invention Insufficient description of invention Failure to describe the information related

to foreign inventions If conventional application is not made with

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GRANT AND SEALING Granted if

Complete specification accepted Time specified to oppose is expired Opposed but finally decided in favor of

applicant Sealing requires request with in 6 month

from the date of advertisement of acceptance of complete specification

Else remained pending before the controller or appellate board request is made within prescribed period of final decision on proceedings

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TRIPS-(Trade related aspects of intellectual property rights)

International agreement administered by WTO, sets minimum standards for intellectual property.

Negotiated at the end of Uruguay ground of GATT in 1994

TRIPS is the most important multilateral instrument for the globalization of intellectual property laws.

DOHA declaration- it’s a WTO statement clarifies the scope of TRIPS and to interpret in light of goal “to promote access to medicines for all”

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TRADE RELATED INTELLECTUAL PROPERTY RIGHTS(TRIPS)

TRIPS has 7 parts and 73 Articles Part1(Art1-8)General Provisions and

basic principles Part II standards concerning the

availability, scope and use of IPR (Art 9-40)

Part III Enforcement (Art 41-61) Part IV Acquisition and maintenance of

IPR and inter parties procedures (Art 62)

Trips Cond….

Part V Dispute prevention and settlement (Art 63 and 64)

Part VI Transitional arrangements (Art 65-67)

Part VII Institutional arrangements (Art 68-73)

OBJECTIVES OF TRIPS

Protection and the enforcement of all intellectual property rights

Promotion of technological innovation

Mutual advantage of producers and user of technological knowledge

Conductive to social and economic welfare, to a balance of rights and obligations

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MEMBERS REQURIES

provide strong protection for IPR Distortions reduce and impediments

to international trade and ensure that measures and procedures to enforce IPR, do not themselves become barriers to legitimate trade

Recognizing the need for multilateral frame work of principles, rules and disciplines dealing with international trade in counterfeit goods.

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NATURE AND SCOPE OF OBLIGATIONS

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Members shall give effect to the provision of this agreement and to determine appropriate method of implementing the provisions of this agreement within their own legal system and practice

In respect of the relevant IPR those natural or legal persons that would meet the criteria for eligibility protection provided in Paris Convention(1967) Berne Convention (1971), Rome Convention and Treaty on intellectual property

INTELECTUAL PROPERTY CONVENTION Paris Convention(1967) Berne Convention (1971),

Rome Convention and Treaty on intellectual property in respect of integrated circuits

MOST FAVOURED NATION TREATMENT Deriving from international agreements on

judicial assistance or law enforcement of general nature and not confined to the protection of intellectual property

The entry in to force of WTO agreement are notified to the council for TRIPS and do not constitute an arbitrary or unjustifiable discrimination against nations of other members

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NATIONAL TREATMENT In respect of performers produces

of phonograms and broadcasting organizations applies in respect of rights provided under this agreement

MULTILATERAL AGGREMENT ON ACQUISITON OR MAINTAINANCE OF PROTECTION

The obligations provided in multilateral agreements concluded under auspices of WIIPO relate in to acquisition or maintenance of IPR

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PRINCIPLES OF IPR

In formulating and amending their laws and regulations adopt measures necessary to protect public health and nutrition

Appropriate measures with the provision of this agreement needed to prevent the abuse of intellectual property rights by right holders

The resort to practices which unreasonably restrained trade or adversely affect the international transfer of technology

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POST TRIPS EXPANSIONISM

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Creation of anti-circumvention laws to protect right management systems, achieved by WIPO treaty.

The wording of trips 27 is non-discrimination used to justify an extension of patent system

Restrict the possibility of compulsory licenses for patent in recent bilateral trade agreements.

BENEFITS OF TRIPS The product patent will provide Indian

companies, opportunities to compete against MNC

Encourage innovation and bring efficiencies of global standard

Liberalization and changes in patent regimes, triggered most towards efficiency

As per WTO & TRIPS Agreement ,on expiry of patent term the drugs will open to generic manufacture to produce in market

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TRIPS AGREEMENT FOR PHARMACEUTICALS A twenty year patent form No discrimination between locally

produced and imported products Compulsory licensing of patented

technology is strictly limited and cannot be used as a target to a particular industry

Patent rights must be extended to all fields of technology with out discrimination

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GATT-General agreement on tariff & trade

GATT consist of Provision in GATT annexed to the final act adopted at the

conclusion of the second session of preparatory committee of UN conference in trade and employment

The provision of legal instruments entered in to force under GATT 1947 before the date of entry of WTO agreement

Protocol and certifications relating to tariff concessions Protocols of accession concerning provisional application

and withdrawal Decisions on waivers granted under article XXV of

GATT 1947 Other decision of contracting parties to GATT 1947

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THE UNDERSTANDING SET FORTH BELOW ARE; understanding the interpretation of article-2 in to 1B GATT 1994 Understanding the interpretation of article XVII of GATT 1994 Understanding on balance of payment provisions of GATT 1994 Understanding the interpretation of article XXIV of GATT 1994 Understanding in respect of waivers of obligation under GATT 1994 Understanding the interpretation of article XXVIII of GATT 1994

The Marrakech protocol to GATT 1994

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OBJECTIVESCreating credible & reliable system

of international trade rulesEnsuring fair & equitable treatment

of all participants.Stimulating economic activity

through guar rented policy bindingsPromoting trade & development

through to progressive liberalisation .

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Patent

Patent Is a grant of a monopoly right by an Authority to an inventor/ assignee to use, sell, distribute, license his invention his invention for a limited term in return of complete disclosure that shall be available for public use after the expiry of the term.

A patent provides protection for the invention to the owner of the patent for a limited period, generally 20 years.

HISTORY

The Patent Law of 1856

The Patent and Designs Act, 1911.

The Patents Act, 1970

AMMENDMENTS I Amendment-1999 Mailbox provision

Exclusive Marketing Rights (EMRs)

II amendment-2002 Scope of patentable inventions

Grant of new rights

Extension of the term of protection

Provision for reversal of burden of proof

conditions for compulsory license

III and Final Amendment-2005 Introduction of product patents in the area of

chemicals, pharmaceuticals, agricultural chemicals and

food.

• INVENTIONS NOT PATENTABLE

• APPLICATIONS FOR PATENTS

• EXAMINATION OF APPLICATIONS

• EXCLUSIVE MARKETING RIGHTS

• OPPOSITION TO GRANT OF PATENT

• ANTICIPATION

• PROVISIONS FOR SECRECY OF CERTAIN INVENTIONS

• GRANT AND SEALING OF PATENTS AND RIGHTS CONFERRED THEREBY

• PATENTS OF ADDITION

• Preliminary •

• AMENDMENT OF APPLICATIONS AND SPECIFICATIONS

• RESTORATION OF LAPSED PATENTS

• REGISTER OF PATENTS

• SURRENDER AND REVOCATION OF PATENTS

• POWERS OF CONTROLLER GENERALLY

• USE OF INVENTIONS FOR PURPOSES OF GOVERNMENT AND ACQUISITION OF INVENTIONS BY CENTRAL GOVERNMENT

• APPEALS

• PENALTIES

• INTERNATIONAL ARRANGEMENTS

WHO CAN APPLY Application may be made, either alone or

jointly with another, by the inventor, assignee, legal representative of deceased inventor or assignee.

The inventor is entitled to be mentioned in the patent if he applies to do so.

Application may be made jointly by two or more corporations as assignees.

PATENTABLE INVENTIONS

An invention means any new and useful art, process, method or manner of manufacture; machine, apparatus or other article; or substance produced by manufacture, and includes any new and useful improvement of any of them, and an alleged invention.

WHAT IS NOT PATENTABLE An invention that is frivolous or that claims anything

obviously contrary to well-established natural laws

An invention the primary or intended use of which would be contrary to law or morality or injurious to public health

The A method or process of testing applicable during the process of manufacture mere discovery of a scientific principle or the formulation of an abstract theory

The mere arrangement or rearrangement or duplication of known devices

A method of agriculture or horticulture

Inventions relating to atomic energy.

DOCUMENTS REQUIRED EXAMINATION & PUBLICATION OPPOSITIONS GRANT/ SEALING OF PATENT TERM OF PATENT SALIENTFEATURES OF THE INDIAN

PATENT ACT 1970

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