LEGAL ASPECTS OF PATENTS
An overview
R.KUMARAVENKATESAN B.Pharm., M.L (IPR)
Owned by a person
Registered under an authority
Claimed / prevent others from claiming
Assignable, transferable, mortgageable
PROPERTY
TANGIBLE PROPERTY MOVABLE PROPERTY IMMOVABLE PROPERTY INTANGIBLE PROPERTY RIGHT TO INDIVIDUL REPUTATION INTELLECTUAL
PROPERTY
PROPERTY
INTELLECTUAL PROPERTY RIGHT
INTELLECTUAL- CAPACITY,CREATIVITY,IDEA,KNOWLEDGE,
PROPERTY- OWNED,REGISTERED,POSSESSED RIGHT- CLAIMED,EXERCISED,EXPLOITED
THE RIGHT ASSOCIATED WITH THE IDEA OR CREATION OF MIND WHCH IS APPLIED,
OWNED AND EXPLOITED BY A PERSON
1. Patent2. Trade marks3. Design4. Copyright5. Integrated circuits and layout designs6. Geographical indications7. Plant varieties and farmers rights8. Trade secrets and confidential information
INTELLECTUAL PROPERTY RIGHTS
5
INTELLECTUAL PROPERTY CLASSIFICATION
INDUSTRIAL PROPERTY
LITERARY PROPERTY PATENTS
TRADE MARKS
DESIGNS
INTEGRATED CIRCUITS AND LAYOUT DESIGNS
COPY RIGHTS
NEIGHBOURING RIGHTS
PERFORMERS RIGHTS BROADCASTING
REPRODUCTIONRIGHTS
6
Knowledge of patents- WHY
Enhances my employment opportunity
i. I can register my own invention
ii. I can commercially exploit my own patent
iii. It is an official record of my inventor ship
iv. It shows my intellectuality to the world
v. It is a record of my achievement or success
vi. It differentiates me and distinguishes me.
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)
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.
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
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
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
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
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
Rights of patenteeAn 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
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
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
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
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
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
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.
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
PATENTING IN COMPUTER SCIENCES
COMPUTER BASED INVENTIONS
SOFTWAREPROGRAMMES
SOFTWARE APPLIEDSYSTEM/MACHINE HARDWAR
E
NEEDS TO BE DISCUSSED PATENTABLE PATENTABLE
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.
Filing of patent applicationApplication 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.
Provisional specificationBrief 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
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.
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
PROVISIONAL SPECIFICATION
COMPLETE SPECIFICATION
PUBLICATION
REQUEST FOR EXAMINATION
FIRST EXAMINATION
REPORT
RESPOND TO OFFICE
ACTION
FURTHER EXAMINATIO
N REPORT
WITHIN 12 MONTHS FROM PROVISIONAL SPECIFICATION
AFTER 18 MONTHS FROM PROVISIONAL
WITHIN 48 MONTHS FROM THE PROVISIONAL
WITHIN 6 MONTHS FROM THE DATE OF REQUEST WITHI 12 MONTHS
FROM THE FER
PATENT PROSECUTION STAGES
EARLY PUBLICATION (OPTIONAL)
PRE GRANT OPPOSITION IF ANY
PATENT GRANTED
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 governmentII. Public displayIII. Public workingIV. Use and publication
Anticipated known invention not patentableNot anticipated new invention patentable
In general anticipated inventions are not patentable, but exceptions are there.
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 searchInfringement searchCompetitor wise searchPatent family searchlandscape analysis, validity search
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
THANK YOU FOR YOUR KIND RECOGNITION