The e Book On Ip by DR - Manjula Sandirigama

Intellectual Property
A Quick Guide
For Scientists &
Technologists
Manjula Sandirigama.
Google Image.
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INTELLECTUAL PROPERTY:
A Quick Guide
for Scientists and Technologists
Manjula Sandirigama
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Reviews
One ingredient for a successful IP system is education. Individual engineers, scientists and other innovators need to know how the IP system
works. In this way, individual innovators can learn how to use the IP system to their own benefit and ensure they are properly rewarded for their
contributions. Properly done, everyone benefits as individual innovative
contributions eventually fall into the public domain for everyones use. To
that end, this work provides an important underpinning of the IP system.
It goes a long way to achieving the important goal of teaching how the IP
system works on a practical, day-to-day level that is accessible to individual innovators, without hiding behind the sometimes lofty world of law.
Well done. I hope you enjoy reading this as much as I have.
T. Andrew Currier, BSEE, LLB, P.Eng., Barrister and Solicitor (Ontario), Patent Agent, Trademark Agent, co-author
with Stephen Perry of the forthcoming textbook Canadian
Patent Law from Butterworths.
This is an admirable effort to educate engineers in the ways of intellectual property, in an accessible and understandable way.
Conor McCourt, J.D., Canada
At the present stage of development, knowledge on the IP systems becomes important as new innovations and findings of individuals and organizations become commercially attractive and valuable. It is the IP rights
that give the proper incentive for them to go on with more and more new
creations. In this context, it is timely that a textbook be available for the
education of IP aspects. This book will shed light on these relevant areas
for all sectors of society, including scientists, technologists, innovators and
even the ordinary citizens. The book covers most of the aspects that are
of importance to students on IP systems. I congratulate the author and
would like to share this valuable information with everyone.
Sarath Seneviratne, Senior Lecturer in Mechanical Engineering, University of Peradeniya, Sri Lanka
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About the Book

This book is the outcome of my teaching Intellectual Property (IP)
for engineering undergraduates in the Faculty of Engineering, University of Peradenya and some other universities and institutes in
Sri Lanka. The teaching to them necessitated a text book which
they could use during the conduct of the course and thereafter as a
regular quick reference.
The intended target group obviously are the science and technology undergraduates, but anyone who wish to get an overall picture
of IP, their protection, and how IP systems work will find this a
very useful reference. The book covers all the areas from conceptual
ideas to commercialization of such conceptual ideas.
Simplicity is my philosophy, even in teaching. The facts are
presented with simplicity in terms of contents and language as I
strongly believe the science and technology personnel and innovators
who make the world comfortable for everyone should know their
rights in simple terms without seeking advice in lofty world of law,
as mentioned by a reviewer.
Wish you an enjoyable and informative reading.
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Acknowledgments
The students, by and large, have been the greatest driving force in
writing this text. I thank them for making a platform for practicing
and furthering my knowledge.
Roshan Ragel, my colleague at my department who himself is an
author, gave his valuable comments very promptly and in detail on
the initial draft. I thank him for building my confidence in completing the work, and doing the final proofreading before publication.
I also wish to thank the reviewers Andrew Currier, Conor McCourt, Sarath Senevratne and Asanka Perera for giving valuable
reviews and comments.
I thank Amila Wijeratne for formatting the cover page and the
figures in the text.
Last not but least, my gratitude to my wife Anoma for encouraging me to get the best use of my knowledge and capabilities and
being with me when things go wrong.
Manjula Sandirigama
PhD, M.Sc., B.Sc.in Engineering, Attorney-at-Law (Sri Lanka)
Senior Lecturer, Department of Computer Engineering, University of Peradeniya, Sri Lanka
IP Consultant
To my mother and father who encouraged

me in my studies
Contents
1 Intellectual Property
1.1 Introduction to Intellectual Property (IP) .
1.2 Protection of IP Rights . . . . . . . . . . .
1.2.1 The Need for Protecting IP Rights .
1.2.2 Title Deeds of Intellectual Property
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2 Different Types of IP and Their Protection

2.1 Patents . . . . . . . . . . . . . . . . . . . . .
2.2 Copyrights . . . . . . . . . . . . . . . . . . .
2.3 Trademarks . . . . . . . . . . . . . . . . . . .
2.4 Industrial Designs . . . . . . . . . . . . . . .
2.5 ICT (Integrated Circuit Topographies) . . . .
2.6 Geographical Indications . . . . . . . . . . . .
2.7 Proprietary Databases . . . . . . . . . . . . .
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3 Patents
3.1 The Meaning of a Patent . . . . . . . . . . .
3.2 The Duration of a Patent Validity . . . . . .
3.3 The Effective Geography of a Patent Validity
3.4 Patents Vs. Trade Secrets . . . . . . . . . . .
3.5 Commercialization . . . . . . . . . . . . . . .
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CONTENTS
4 Acquiring Patent Rights

4.1 Patentable Subject Matter . . . . . . . . . . .
4.2 Sufficient Disclosure of the Invention . . . . .
4.3 Patent - An Inventive Subject Matter . . . .
4.4 Patentability Testing . . . . . . . . . . . . . .
4.4.1 Patentability requirement case study:
Beloit Vs. Valmet Oy . . . . . . . . .
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5 Patent Prior Art Searches

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5.1 The Meaning and the Need of Prior Art Searches . .
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5.2 Scope of Prior Art Search . . . . . . . . . . . . . . .
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5.3 Prior Art Search on Patent Databases . . . . . . . .
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5.3.1 Prior Art Search on Online Patent Databases
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5.3.2 Prior Art Search: An example . . . . . . . .
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5.4 Different Types of Prior Art Searches . . . . . . . . .
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5.4.1 Name Search . . . . . . . . . . . . . . . . . .
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5.4.2 State of the Art Searches . . . . . . . . . . .
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5.4.3 Technological Activity Search . . . . . . . . .
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5.4.4 Legal Status Search . . . . . . . . . . . . . .
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5.4.5 Infringement Search (Freedom to Operate Search) 42
5.4.6 Patentability Search . . . . . . . . . . . . . .
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6 Patent Drafting
6.1 Structure of a Patent
6.1.1 Title . . . . .
6.1.2 Abstract . . .
6.1.3 Description .
6.1.4 Claims . . . .
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7 Application for a Patent

7.1 Making a Local Application . . . . . . . . . . . . . .
7.2 Making a Foreign Application . . . . . . . . . . . . .
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CONTENTS
8 Patent Examination and Granting Process

8.1 Revision of Applications . . . . . . . . . . .
8.2 Examination of Applications . . . . . . . .
8.3 Patent Maintenance Fees . . . . . . . . . . .
8.4 Appeals Against Examiners Decisions . . .
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9 Post Patent Issues

9.1 Commercialization . . . . .
9.1.1 Exploitation . . . . .
9.1.2 Assignment . . . . .
9.1.3 Licensing . . . . . .
9.2 Potential Legal Implications
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10 A Sample Patent
10.1 US Patent 7,161,651 . . . . . . . . . . . . . . . . . .
10.1.1 Title: Method of resizing a liquid crystal display
10.1.2 Bibliographical Data . . . . . . . . . . . . . .
10.1.3 Abstract . . . . . . . . . . . . . . . . . . . . .
10.1.4 Claims . . . . . . . . . . . . . . . . . . . . . .
10.1.5 Description . . . . . . . . . . . . . . . . . . .
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CONTENTS
Chapter 1
Intellectual Property
1.1
Introduction to Intellectual Property

(IP)
People own different kinds of property. Conventionally, such properties have a value in their physical characteristics. Examples of such
properties are lands, buildings, vehicles, houses, furniture etc.. Traditionally, those properties are divided into two categories, namely,
movable and immovable. Immovable properties mean that their location cannot be moved. Examples are lands and building. The
locations of movable properties could be changed as desired. Examples are vehicles, furniture etc..
There is another categorization of property, namely tangible and
intangible properties. Tangible properties mean that the property,
movable or immovable, that can be touched and felt. All the conventional movable or immovable properties fall into this category.
Intangible properties, on the other hand, are the properties that
cannot be touched and felt. Intellectual property falls into the intangible category. The value of such property is not generally in their
physical characteristics but in the creativity and innovativeness one
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CHAPTER 1. INTELLECTUAL PROPERTY
has put into the creation of such properties.

A key characteristic of intellectual property is that such properties were not in existence before the creation or they are not made
by already known processes. WIPO (World Intellectual Property
Organization) defines intellectual property as creations of mind: inventions, literally work, marks, symbols, designs etc..
Another key characteristic of intellectual property is that the
property is just an idea of creation, and there is no tangible value
in them. For example, when we buy a book, there is tangible value
in the amount of papers which is not significant; more value is in
what is written in the book. When we buy a car, if we consider
the tangible value, it is in the amount of steel and plastic which
is not very significant; more value is in the mechanisms of driving,
electronic fuel system, anti-lock brake system all of which are ideas
of creation of someone. When we pay for a book or car, we mostly
pay for the intangible idea in them which are intellectual property.
We may buy books or cars for our use but we cannot copy and
make them for our own commercializations. The creator is protected
by governments by offering the creator what are known as intellectual property rights. Once Intellectual property rights are given to
someone, others cannot break them meaning that others cannot use
the same idea to produce duplicates, and if they do, the creator can
take legal action and claim compensation.
As obvious, these intellectual property rights are negative, in the
sense that it excludes others from doing something copying in case
of intellectual property.
Just like people could claim traditional properties of their own by
possessing a document like a deed, ownership certificate, intellectual
property also can be owned by possessing a special document which
will be described later.
Ownership of traditional properties are perpetual subject to a
way of disposal such as a sale or transfer, but ownership of intellectual property is generally limited for some time, and intellectual
property could also be disposed by way of sale or transfer. The
reason of such limited ownership will be discussed later.
1.2. PROTECTION OF IP RIGHTS
It is important to mention a word about the difference of a (new)

creation and a discovery. Both discoveries and new creations are new
revelations to the world, but if the new revelation is something that
has been existing in the nature, it is a mere discovery. For something
to be a new creation, a new feature has to be added to the existing
thing so that it is made something that has not been existing in the
nature. For an example, if a scientist finds a new bacteria, it is a
mere discovery, but after the discovery, if he adds his knowledge and
skill to make the bacteria usable to treat some disease, then there is
a new creation and he could claim intellectual property rights for it.
In the technologically advanced world of today which is growing
by leaps and bounds, IP rights play a major role and it is very
essential for science and technology students to know what their IP
rights are when they do research and development. Although the
key players of intellectual property are scientists and technologists,
like in other properties, regulation of intellectual property rights is
looked after by the legal system.
The next chapter describes different types of intellectual property
and how such properties are protected.
1.2
1.2.1
Protection of IP Rights
The Need for Protecting IP Rights
It is a reasonable question to ask by a novice why we need to protect

IP rights. The simple answer is all what we enjoy today food,
medicine, transport, communication, entertainment are available
to us because there has been protection of IP rights. What does this
mean?
Creation of Intellectual Property consumes considerable amount
of time and money. Somebody has to develop his ideas by way of
research or otherwise to make his idea into a product, process, or a
piece of literature. In fact, the amount of time and money may far
exceed the amount of time and money one has to spend to acquire
a physical property such as a land or a building. For example, to

develop a medicine, one has to do several years of research that
costs lot of time and money. To write a book, one may have to
spend several years.
After the research is done or the book is written, they become
known to the public, and if there is no protection by the system of
the country to protect the ownership rights of the people who spent
their time and money on this work, others will simply copy it and
they will try to make money from those research work or books.
Consequently, people will not feel secure and they will lose their
motivation to do research or to produce literally work. There will
be no progress in the society then, and we wouldnt have had the
comforts and entertainment that we enjoy today.
When the protection is given for the new revelations in exchange
of revealing the knowledge, the revealer will reveal his/her knowledge, and the society can use the same knowledge to make improvements. All what we enjoy today have been improvements of what
had been exiting in the past.
1.2.2
Title Deeds of Intellectual Property
As we know, conventional property ownerships are guaranteed by

deeds or ownership certificates. If the property is a land or a building, the ownership is protected by a deed of ownership, or a rental/lease
agreement in case of temporary ownership. If it is a vehicle, the ownership is protected by a ownership certificate, or a rent or a lease
agreement in case of temporary ownership. If the property is furniture, electronic equipment etc., the ownership is guaranteed by the
receipt of the payment made at the time of the purchase.
Similarly, intellectual property also has a title document (like a
deed, and ownership certificate) that protects the ownership. Different types of intellectual property have different kinds of ownership
certificates.
In the next chapter, such ownership documents are described after providing a brief description of what different kinds of intellectual
1.2. PROTECTION OF IP RIGHTS
properties are, namely patents, copyrights, trademarks, Integrated

Circuit (IC) topographies, geographical locations and proprietary
databases.
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Chapter 2
Different Types of IP and

Their Protection
2.1
Patents
Patents are the intellectual property rights granted by the state for
inventions.
An invention means a creation of a new product or a process that
has not been known to the public or has not been in existence in the
nature. Simple examples of such product inventions are a pen, a tool,
a machine, a medicine etc.. Examples of such process inventions are
extraction of salt from sea water, process of manufacturing a drug,
a process of making a tool etc.. There can be some inventions which
fall into both product and process inventions like making a drug.
The process as well as the product are inventions.
When we buy such a product, we not only pay for the mere
physical value of them, but also for the creativity that is embedded in
the product. For example, when we buy an electronic equipment, the
physical value may be very low, but the purchase price is determined
by the added value for the creativity and innovativeness of putting
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12CHAPTER 2. DIFFERENT TYPES OF IP AND THEIR PROTECTION

the electronic elements together.
Such inventive ideas are protected by a document known as a
patent. A patent is granted on application. Detailed descriptions of
patents will be covered in the later part of the book.
To get a patent right, one must make an application to the relevant national office, and the right is given for a limited period of
time, generally 15-20 years depending on the legal provisions of the
relevant country.
Trade secrets, which are also inventions, have similarities as well
as differences compared to patents. They will be described when
patents are discussed in a following chapter.
2.2
Copyrights
Copyright is an ownership right one gets when a literary work is

done. The literary work does not merely mean a writing. There
is a wide range of literary work, both conventional and modern.
Conventional copyrights include writings (novels, poems, technical
literature etc.) and other literary works such as paintings, sculpture,
carvings, plays, and dramas. Modern copyrights include electromagnetic signals (television signals, radio signals etc.), music and movie
disks and computer programs. (Note that computer programs fall
both into patents and copyrights. The method of the solution in
the program is the patentable part whereas the program alone is the
copyrightable part.)
Copyright simply means that the right of copying is restricted
and unauthorized copying is prohibited. Most of you may have noc the phrase Copy Rights
ticed this right on the book by seeing or
Reserved.
There is what is known as the Fair Use of copyrighted material. This means that one can copy copyrighted material for mere
personal, educational or research work. Fair Use prohibits the copying of the material for commercial use.
Unlike patents, copyright is gained by mere creation of the work
2.3. TRADEMARKS
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and one does not need to make a special application to the national
office. However, by registering such work in the relevant national
office, one could get a stronger legal claim for the work, specifically
in case of a dispute.
According to Berne convention, for which most countries are signatories, copyright is limited to 50 years after the death of the author.
2.3
Trademarks
Trademark is a design of a word, an image or a combination of

them that is used to distinguish a product or a service of one person/company from that of another. Such marks are useful marketing
tools because the customers always want to buy dependable products or services that have a good track record, and a trade mark is
a unique identification of such track records.
Unlike patents and like copyrights, to get protection, trademarks
need not necessarily be registered in the national office. The mere
prolonged usage is sufficient to establish ownership to a trademark.
However, like copyrights, by registering trademarks in the relevant
national office, one could get a stronger legal claim for it, specifically
in case of a dispute. Such registrations are valid for a certain period
(for example, it is 15 years in Canada) and renewable. Registered
trademarks carry the symbol "R" whereas unregistered trademarks
carry the symbol TM.
Examples of such marks are Bata, TATA, Coca Cola, KFC (Kentucky Fried Chicken), Toyota etc..
2.4
Industrial Designs
An industrial design means the exterior outlook of an article, product, billboard or even a building. The exterior outlook may be the
shape, pattern, configuration or a combination of these features. The

subject design is a tangible object and could range from a shape of a
tool to a shape of an automobile. For example, different car manufactures own industrial propriety rights for the shape of the car they
have designed.
A certificate of ownership of the design could be obtained from
the national intellectual property office on application.
2.5
ICT (Integrated Circuit Topographies)
This is a recent addition to intellectual properties. Integrated circuit

is a layout of enormous amount of electronic components inside what
is known as a chip. These components are combined to form a circuit
that does a specific function, Under Integrated Circuit Topography
category, these circuits can be owned by the designers.
A certificate of ownership of the circuit topography could be
obtained from the national intellectual property office on application
2.6
Geographical Indications
This is also a recent addition to intellectual property where as the

manufacturer of some products could attribute a geographical location to them to increase the value of the product. For example,
wines made in specific geographical locations are better than other
locations of manufacture due to climate and the method of manufacture, so the manufacturers can attribute different geographical
location to wines, such as French wine. Another example is Ceylon
Tea which where a value addition is done by the word "Ceylon" to
tea, and nobody in any other country could make Ceylon Tea.
A certificate of ownership of the geographical location could be
obtained from the national intellectual property office on application
2.7. PROPRIETARY DATABASES
2.7
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Proprietary Databases
This is a very recent addition to intellectual property. As the information technology developed over the last few decades, data has
become an integral and important part of information technology
systems. People and companies spend enormous amount of time to
collect, process and compile such data. The data could range from
the names and addresses of customers to geographical information
systems. Developers of such data have an intellectual property right
to them.
The Rest of the Book
In the following chapters of the book, intellectual property rights
relating to patents are discussed.
Chapter 3
Patents
For scientists and technologists, what is of importance is patents
intellectual property rights for inventions. The aim of this book is to
give a basic understanding of patents, patent application and granting process, and post patent implications for scientists and technologists. From here onwards, intellectual property rights relating to
patents will be discussed.
3.1
The Meaning of a Patent
A patent is a document that is given by the government endorsing

the inventorship of an invention. An invention is defined by patent
laws of different countries. The following are some of them:
Sri Lanka: Intellectual Property Act No. 36 of 2003
62. (1) For the purposes of this Part, invention means
an idea of an inventor which permits in practice the solution to a specific problem in the field of technology.
(2) An invention may be, or may relate to, a product or
process.
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CHAPTER 3. PATENTS
India: Patent Act 1970
S(2) "invention" means any new and useful art, process,
method or manner of manufacture; machine, apparatus
or other article; substance produced by manufacture
USA: Consolidated Patent Laws
Invention is defined as any new and useful process, machine, manufacture, or composition of matter, or any new
and useful improvement thereof
Canada: Patent Act
S(2) "invention" means any new and useful art, process,
machine, manufacture or composition of matter, or any
new and useful improvement in any art, process, machine, manufacture or composition of matter
Irrespective of the different definitions of inventions by different

legal systems, there are some universal key elements that are necessary for a revelation to be an invention. They will be discussed in a
later section. If the revelation satisfy those criteria, the person who
revealed it can get a patent right to it.
The patent is similar to a deed of a conventional property. Just
like a deed describes the biographical data (name, address etc.) and
the description/ boundary of land or a building, a patent describes
the biographical data of the invention, description of the invention
and the boundary of the invention (known as the claims that will be
described in detail later in the book). By possessing the patent, one
could prove the ownership of the invention.
Once the patent is granted, the knowledge involved in the invention becomes a public property. This does not mean that the public
can copy the invention. It only means that the knowledge is known.
In fact, after some period (the duration of the patent), anybody can
use the knowledge to make the same product, or use the knowledge
to make improvements before the patent is expired. The idea of
3.2. THE DURATION OF A PATENT VALIDITY
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granting the patent is the revealing of the knowledge to the public

for the betterment of the society.
Thus, a patent can be regarded as a bargain between the state/
society and the inventor. A bargain literally means that two parties compromise on something. The bargain involved in a patent is
that the state/ society gives protection of IP rights to the inventor
in exchange of his knowledge to be used for the betterment of the
society.
3.2
The Duration of a Patent Validity
Unlike conventional property which are owned indefinitely subject to

alienation by sale or otherwise, patent rights are limited for a specific
period of time. The reason for this limit is that, if there is no limit,
the inventors could own it indefinitely like conventional property,
and there is no opportunity for the public to use the knowledge to
make the product for ever or even to add improvements to the base
product. It then becomes an unfair monopoly to the inventor, and
consequently there is no transfer of knowledge to the society.
The validity of a patent, therefore, is limited to specific period
of time. This period varies depending on the county but in most
countries, it is 20 years.
3.3
The Effective Geography of a Patent

Validity
Patent validly is limited to countries where patent applications are

made, and subsequently granted. There is nothing called an international patent, and one must apply in separate countries if they
wish to obtain patent rights in those countries. There are however
a patent application mechanisms known as Paris Convention and
PCT (Patent Cooperation Treaty administered by WIPO - World
Intellectual Property Organization) to facilitate patent application
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CHAPTER 3. PATENTS
in multiple countries. Those systems will be discussed in detail in

later chapters.
In spite of the fact that there is nothing called an international
patent and the effective geography of a patent is local, to obtain
patent in any country, the invention should be an invention internationally meaning that the invention should be first in the world.
This fact will be discussed in the patentability requirement section.
3.4
Patents Vs. Trade Secrets
Finally, it is worth mentioning what trade secrets are. Trade secrets could be new revelations or not, but it is another way of monopolizing knowledge. While a patent gives a protected monopoly
by the state for a definite period of time, one can also keep the
monopoly by keeping the knowledge as a secret, and they are known
as Trade Secrets. Obviously, secrets maybe kept for ever, and if
so, the monopoly can be eternal. However, there is no guaranteed
protection for trade secrets by the state, so if the secret leaks out
by some chance by breaching a confidentiality agreement by an
employee the secret will be known by the public and there is no
redress given to the holder of the secret by the courts. However, one
can ask for damages if the secret was made public by a breach of
contract, but that will be a civil law suit between the secret holder
and the breacher and the compensation may be minimal. In contrast, when a patent is granted, a limited time monopoly is granted
by the state in exchange of knowledge that other people can use
after the expiry of the patent term. A good example of a trade secret is the recipe of Coca Cola, so no one will ever be able to make
identical Coca Cola unless and until the trade secret is leaked out
by someone. That is very unlikely to happen since no one may know
the complete composition of ingredients.
3.5. COMMERCIALIZATION
3.5
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Commercialization
The purpose of an ownership is to get some return on investment.

This is true with intellectual property too. Once the patent is
granted, the inventor has to make a profit from his invention. Government will not do it for him, and all what the government does is
give the inventor a right to exclude others from copying and making
duplicates. The inventor himself has to find ways to make a profit
and it is called commercialization of patents and will be discussed
towards the end of the book.
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CHAPTER 3. PATENTS
Chapter 4
Acquiring Patent Rights

To get a patent, the new revelation should satisfy some requirements.
Despite the fact this requirements are defined with slight variations
by different countries legislation, the requirements are uniform as
described below.
1. The revelation should be a patentable subject matter.
2. The revealer should provide sufficient information so that
public will know all about it.
3. The revelation should be an invention.
The following discussion of the above mentioned requirements
are based on Sri Lanka National Intellectual Property Act (2003)
but as mentioned above, these are uniform requirements in all the
countries.
4.1
Patentable Subject Matter
Patentable subject matters are defined in every countrys national

legislation. Generally, patentable subject matters are defined negatively, meaning that what is defined is the subject matters that
are not patentable. So if the new revelation is not falling into the
23
24
CHAPTER 4. ACQUIRING PATENT RIGHTS
defined categories, then the subject matter is presumed patentable.

Though all the countries legislations are not worded in exact
wordings, they are almost the same. According to section 62(3) of
Sri Lanka National Intellectual Property Act, the following subject
matters are not patentable.
62. (3) The following, notwithstanding they are inventions within the meaning of subsection (1), shall not be
patentable
(a) discoveries, scientific theories and mathematical methods ;
(b) plants, animals and other micro organism other than
transgenic micro organism and an essentially biological
process for the production of plants and animals other
than non-biological and microbiological processes : Provided however, that a patent granted in respect of microorganisms shall be subject to the provisions of this Act;
(c) schemes, rules, or methods for doing business, performing purely mental acts or playing games ;
(d) methods for the treatment of the human or animal body by surgery or therapy, and diagnostic methods practiced on the human or animal body : Provided
however, any product used in any such method shall be
patentable;
(e) an invention which is useful in the utilization of special nuclear material or atomic energy in an atomic weapon
;
(f) any invention, the prevention within Sri Lanka of the
commercial exploitation of which is necessary to protect
the public order, morality including the protection of human, animal or plant life or health or the avoidance of
serious prejudice to the environment.
4.2. SUFFICIENT DISCLOSURE OF THE INVENTION
25
Similar or the same provisions exist in other jurisdictions and an

interested reader may verify them by referring to them.
There are reasons why these subject matters are not patentable,
but such explanations are beyond the scope of this book.
4.2
Sufficient Disclosure of the Invention
A mentioned earlier, the whole idea of grating patent rights by the

state to individual is the dissemination of knowledge to the society
for its betterment. In this light, it is necessary that the patent
document describes the invention in full with sufficient details so
that someone could make the same product after reading the document. This does not mean that people can copy what is in the
document during the validity of the patent. In fact, after the expiry of the patents, others can copy it exactly, and this is what is
done by generic drug manufacturers. They wait until the patent is
expired, and as soon as it is expired, they make copies. During the
validity of the patent too, people can use the knowledge by way of
making improvements to what is mentioned in the revelation, and if
the improvement is not obvious, as will be explained in subsequent
sections, the improvement can be patented.
4.3
Patent - An Inventive Subject Matter
There are 3 core requirements for a revelation to be inventive. These

are also defined and described in national legislations. The words
used in different legislation vary slightly, but they are uniform and
same in terms of their meaning.
What constitutes inventions, according to section 63 of Sri Lankan
National Intellectual Property Act, are the revelations satisfying the
following three requirements:
63. An invention is patentable if it is new, involves an
inventive step and is industrially applicable.
26

They are described in the act as follows:
64. (1) An invention is new if it is not anticipated by
prior art.
65. An invention shall be considered as involving an
inventive step if, having regard to the prior art relevant
to the patent application claiming the invention, such
inventive step would not have been obvious to a person
having ordinary skill in the art.
66. An invention shall be considered industrially applicable if it can be made or used in any kind of industry.
These requirements are explained by using an example in the

following section.
Synonyms used by other legislations are novelty, non-anticipation
(for new), non-obviousness, inventiveness (for inventive step), and
utility, usefulness (for industrial applicability) and as mentioned
above, their meanings are the same.
4.4
Patentability Testing
Having described the patentability criteria, it is now possible to

explain patentability testing.
When a patent is applied by someone, patent examiners in the
national intellectual property office carry out these tests to ascertain
that the revelation is patentable. Even the inventors who apply for
patents do these tests in order to make sure that their revelation
is patentable because patent application to granting process is quite
expensive and people want to make sure, to the best of their reach to
knowledge, that they will not loose the money by a patent rejection
by an examiner in the examination process.
Firstly, one has to make sure that the revelation does not fall into
subject matter that are not patentable. After doing so, it should
be obvious at the end of the reading of the document, that the
4.4. PATENTABILITY TESTING
27
revelation is described in full with sufficient details. These are two

straightforward requirements.
The core requirements test has to be done next.
The most straightforward core requirement is utility or industrial applicability. What this means is that the revelation should
have some use. Mere ideas are therefore not patentable. In fact, a
patent examiner is allowed to ask the inventor for a prototype in the
examination process if the examiner does not feel that the revelation
is practical and has some use.
The next requirement is the novelty (new, non-anticipatory) requirement. This simply means that the revelation should be new
meaning that it has to be the first in the word. People cannot get
a patent for what was existing before even if no one has claimed
patent rights for them. To ascertain novelty, the inventors and examiners have to do what is known as a prior art search (described
later). By doing a prior art search, all the related knowledge (patent
literature, scientific journals, newspaper articles, exhibitions, product launches, and in short whatever that was in the public domain
known to the public) is researched. After the research, it should
be clear that the revelation is not already known. This is not very
straightforward but somewhat an easier to decide requirement than
the non-obviousness requirement described in the next paragraph.
Non obviousness or inventiveness is the most complicated and
difficult to decide requirement. As obvious, most of the things that
are in use today are not totally new, but they are improvements of
earlier products and knowledge. So when an improvement is done
to what has been known, it is new because it was not earlier there
but the question arise whether the improvement made is significant
enough to warrant a patent. For example, there maybe a product
already in use which is made in some shape, and if another product is
made with a different shape, is the new one patentable? The answer
is No and Yes. It is not patentable if the new shape does not serve a
particular purpose which was foreseen by the earlier inventor, and it
is patentable if it serves a purpose unforeseen or over sighted by the
earlier invention. For example, the new shape maybe a shape where
28
a user has easy operability that make the product more marketable.
Similarly, a drug which has been patented to cure a certain disease
can be patented again for curing another disease. In legal jargon, this
requirement is described as "not being obvious" to a person skilled
in the art. (Skilled in the art means that there is basic knowledge
of the sciences encompassing the subject matter.)
The decision of this test is subjective and is the main cause of
patent invalidating, which will be described later.
A legal case study in the following section gives a better understanding of novelty, and non obviousness requirement.
4.4.1
Patentability requirement case study:

Beloit Vs. Valmet Oy
This was a legal case based on a dispute of two parties Beloit (herein
after called A) and Valmet Oy (herein after called B) in Canada.
The case involved both novelty and non-obviousness issues. The
following is the background of the case.
The case was with regard to a press section of a paper manufacturing machine. The paper manufacturing process basically involves
four stages as follows:
Making a slurry
Pressing the slurry
Pulling the pressed slurry
Drying the pressed slurry
The economy of production greatly depends on the pressing stage
where the water in the slurry is removed. An efficiency of the pressing make the pulling stage faster thereby increasing the productivity.
In this case, both A and B had invented two different pressing
mechanisms and both of them obtained patent right to their respective invention. At a later stage, the party which invented the
pressing stage first (party A) tried to invalidate the patent right of
4.4. PATENTABILITY TESTING
29
B (who invented the second mechanism) on the ground of novelty

and obviousness.
The pressing is achieved by rotating rollers through which the

wet slurry passes through. The above figure depicts the mechanisms
of pressing stages of A and B.
The mechanism of party A (labeled as prior art: bi-nip) has
three rollers that provides two pressing stages while the mechanism
of party B (labeled as claimed invention: tri-nip) has four rollers
providing three pressing stages. The additional pressing stage in
Bs machine makes the pulling process faster thereby increasing the
productivity. Both A and B got patent rights to their respective
mechanisms.
Eventually, Bs machine became more marketable, and then A
sued B alleging that B was infringing on the patent rights of A in
consequent to their argument that Bs mechanism was not inventive
on the grounds of novelty and obviousness thereby saying that Bs
patent was invalid. The case was argued in Canadian courts of law.
At the trial, the trial court judge took the arguments of B citing
that a mere addition of a roller in an obvious improvement anybody
30
could do. The judge also took the view that it is not even novel because there was enough literature published by different parties that
the manufacturing process can be made faster by faster pressing.
B then appealed against the decision of the trial court judge.
The appeal court judge reversed the decision of the trail court judge
and stated that Bs invention with an additional roller was also inventive. The argument of the judge with regard to the novelty of the
invention was that if one makes a machine by referring to different
existing inventions and literature, the composite machine can still be
inventive (in terms of novelty) and just because that the composite
invention is composed of already patented inventions, the composite
invention cannot be invalidated on the grounds of novelty.
The appeal judges argument with regard to the obviousness was
that even if it was true that it was a mere addition of another roller,
but that addition made the machine more productive (about 25 pc
increase of production speed) and the machine became a market
success. If it were very obvious to those skilled in the art, why
wasnt it that someone else did it before.
Along these arguments, the appeal court judge stated that Bs
patent was also valid and there was no infringement of As patent
rights.
The gist of the case is that novelty and obviousness do not have
straightforward answers, and they are subjective decisions and the
decision has to be made after considering all the encompassing facts
and wisdom.
With this knowledge, it is possible to study another important
area of IP known as prior art search.
Chapter 5
Patent Prior Art

Searches
5.1
The Meaning and the Need of Prior

Art Searches
It is clear from the previous chapter that it is necessary to look at

the previous work done with respect to a revelation when deciding
its patentability. Previous work in intellectual property jargon is
known as prior art. Prior art search hence means the search of
previous work. There are different types of prior art searches one
could perform for various purposes, and the discussion on them will
be done at the end of this chapter.
Prior art is defined in Sri Lanka National Intellectual Property
Act as follows:
64. (1) An invention is new if it is not anticipated by
prior art.
(2) Prior art shall consist of
31
32
CHAPTER 5. PATENT PRIOR ART SEARCHES

(a) everything disclosed to the public, anywhere in the
world, by written publication, oral disclosure, use or in
any other way, prior to the filing or, where appropriate,
priority date of the patent application claiming the invention ;
(b) the contents of patent application made in Sri Lanka
having an earlier filing or, where appropriate, priority
date than the patent application referred to in paragraph (a), to extent that such contents are included in
the patent granted on the basis of the said patent application made in Sri Lanka.
5.2
Scope of Prior Art Search
As mentioned above, to get a patent, despite the fact that the patent
rights enforceability is local, the revelation has to be internationally
new. This condition is tested by referring to everything known to
the public prior to the potentially patentable revelation. Everything
in the public domain means already patented inventions, research
literature, newspaper publications, exhibitions, or any other public
disclosure. It could even be a leaking out of information by a research
mate or a company employee.
However, it is practically impossible to search on all these areas,
and generally the search is done on patent databases of different jurisdictions and research articles. After passing the test of patentability by referring to patent material and research article, it does not
still mean absolutely that it was not in existance before there but it is
generally the case. If someone finds that a patented invention is not
patentable due to some publicly known thing, he/she can challenge
the validity of the patent. Traditional knowledge is a best example
for this. Someone can formulate a new compound using traditional
knowledge (herbal recipes etc.) and get a patent, but another one
can invalidate the patent if he/she could prove that it was already
known to our ancestors.
5.3. PRIOR ART SEARCH ON PATENT DATABASES
33
The prior art searches are mainly done at two stages. One stage
is where the search is done by the inventors or their agents prior to
lodging a patent application in the government office. This is done
in order to get a sufficient confidence that the revelation is inventive
and does not get rejected by government examiners in the examination process; the patent application to granting process, which
is known as patent prosecution, is costly and if the application is
rejected, the applicants loose lot of money and time. This search
by inventors or their agents is done on free online patent databases
hosted by respective countries because unless the inventor or the
agent is a specialized person in the area, they may not be having
access to subscribed research literature.
The second stage of prior search is done at the government patent
office by examiners in the examination process. This examination is
rigorous and done carefully since after the examination, a patent application is allowed (patent grant) or rejected (patent reject). This
decision can, of course, be challenged by other parties (in case of a
grant) or by the applicant himself (in case of a reject) in courts of
law, but the grant or reject decision may be matter of millions and
billions of money if the application is with regard cutting edge technology and research. Generally, the government office has access to
subscribed scientific research literature other than free public patent
literature.
In the following section, prior art search on a patent databases
is discussed.
5.3
Prior Art Search on Patent Databases
Each country has a national intellectual property office responsible

for intellectual property related matters. In case of patents, this
office administers the patent related matters, and hosts a free public
patent database where public can search. This is similar to a land
registry where the estate titles are kept for public search.
As we all know, before the explosion of ICT (Information and
34
Communication Technology), we did not have the luxury of accessing

remote data. When it is necessary to refer to some data, we had to go
where the data is kept. Patent offices are no exception. Until about
few decades ago, people had to go to the patent office to do some
reference, and finding what you want in that heap of information was
even more exhausting. However, there were different classifications
available in order to carry out manual searches easily. International
search was next to impossible then; who will go to a foreign country
to do a patent search spending significant amount money.
Thanks to ICT, we can now search all the databases even from
our hand held device from anywhere in the globe.
5.3.1
Prior Art Search on Online Patent Databases
As mentioned above, when one wants to determine the patentability

of a revelation, he/she has to search all the literature. But since
this is not possible, generally search is limited to online databases.
Even searching on online databases in all the countries is very time
consuming and may not be worth the effort. It is therefore sufficient
to search in the specific countries (or regions) when one want to do
a prior art search. The selection of countries greatly depends on the
potential invention. For example, if one knows that particular research similar to the potential invention is done in a specific country,
he/she may search only in that country.
The following are the generally searched patent databases.
WIPO (World Intellectual Property Organization): www.wipo.org
EU (European Union): www.epo.org
USPTO (United States Patent and Trademark Office):
www.uspto.gov
CIPO (Canadian Intellectual Property Office): www.cipo.gc.ca
KIPO (Korean Intellectual Property Office): www.kipo.go.kr
JIPO (Japanese Intellectual Property Office): www.jpo.go.jp
IP Australia (Australian Patent Office): www.ipaustralia.gov.au
35
All these databases are interfaced with search engine and a user
interface. Below is a snapshot of the search engine user interface of
WIPO.
As obvious, various searches can be done on various fields, namely,

Inventor Name, Applicant Name, Application Number, Publication
Number etc..
These are straightforward search tools and are useful if specific
information is known about a patent.
Most of the time, specific details are not known. All what an
inventor or the agent knows is some key words relating to the invention and the task is to find whether similar work has been done
elsewhere.
Key words can be of different formats and order. For an example,
if the search is relating to a robotic arm for cleaning drains, one could
36
write the invention as, A robot for cleaning drains and another
could write it as A robotic drain cleaning arm. When the search
is done, the best yield will be given if the search can find all these
possibilities. We can use search grammar to make composite search
phrases to catch almost all these possibilities.
There is different grammar used in different search engines and
they are described in help pages of the search interface. Most important of these are Boolean operators and wildcards. Boolean operators are simple logical operation of OR and AND, and the key
words can be joined by these so that the order of the key words in
the text does not matter. Wildcards are used to catch synonyms of
words. For an example, if the search is done for robo* (some search
engines use ? instead of *), the words robot, robotic, robotically etc.
will be detected.
Key words combined with different operators can be used in anywhere in the patent document. As will be described later, a patent
document mainly has an abstract description of the invention, detailed description of the invention and what are known as claims.
The most effective and economical place to search is in the abstract
because abstract contains almost all about the invention.
In the next section, a demonstration of a prior art search is illustrated.
5.3.2
Prior Art Search: An example
Let us suppose that we have designed a new machine to extract oil

from oil deposits in sand and soil. We now want to patent it, and
before doing so, we have to make sure that no one has ever made
such a machine and if a similar one has been made, we want to make
sure that our one is not obvious when compared with what is already
made. We want to do this by doing a patent prior art search.
For a product like this, it is necessary that we have to do the
search in all the countries having oil deposits because similar research maybe going in almost all of those countries. If the products
usability is restricted to a particular country or a region, it is suffi-
37
cient to look at only those databases. For an example, if the potential

invention is a new snowmobile design, it is not necessary to look at
tropical countries like Sri Lanka.
A prior art search on Canadian patent database on oil extraction
from oil deposited sand is illustrated below.
Extraction of petroleum oil from oil sands is an economical industry in Alberta, Canada. One method of extracting oil from oil
mixed sand is by adding hydrogen peroxide to the oil slurry. Suppose
that a person has manufactured a machine where this process is improved and he wants to determine the patentability of his potential
invention by doing a prior art search.
As mentioned earlier, the best place to do a search is on the
abstract. The search key words and how they are connected have to
be decided first and the search could then be done on the abstract.
The words hydrogen peroxide has to be there necessarily. They
can be used as hydrogen peroxide as one phrase, but to be on safe
side, it can be used as hydrogen AND peroxide to detect abstracts
where the word hydrogen and peroxide are separately used for
some reason.
Then the words that can be used for the word oil have to be
selected. One such word is oil itself. The other are the word petro
and gas but they can be used as petroleum, gasoline etc. as well, so
we have to use wildcards to detect all the possibilities. Accordingly,
they can be formed and joined as oil OR petro* OR gas*.
Following are the results obtained when the search is done using
this keyword combination on Canadian patent database.
Query Submitted: ((hydrogen AND peroxide <IN> ABSTRACT) <AND> (gas* OR oil OR petro*<IN> ABSTRACT))
533 documents out of 2,084,695 matched your query.
Click on its number to view the details of the document.
The above results show that there are 533 patent documents in
the whole database of more than 2 million documents. Are we to
38
read all these 533 and is it really worth the effort? No, we have to
look at the ones that are relevant to our invention only.
Visual filtration by looking at the title has to be done now. Let
us look at the first 10 results.
1. Patent Number 2627218 - ACTIVATED PEROXIDE
SOLUTIONS AND PROCESS FOR THE PREPARATION THEREOF
2. Patent Number 2578119 - VAPOR STERILIZATION
USING A NON-AQUEOUS SOURCE OF HYDROGEN
PEROXIDE
3. Patent Number 2310839 - A LARGE INTEGRATABLE HYDROGEN PEROXIDE INTERMEDIATE STAGE
OR STAND ALONE TANK FOR THE PURPOSE OF
PURIFYING FUELS USING HIGH STRENGTH HYDROGEN PEROXIDE IN FUELS
4. Patent Number 2253975 - METHOD FOR MEASURING THE CONCENTRATION OF HYDROGEN PEROXIDE VAPOR
5. Patent Number 2280941 - STERILIZING METHOD
FOR MEDICAL STERILIZATION PACKAGING AND
INJECTION PACK
6. Patent Number 2465081 - STERILIZATION SYSTEM AND METHOD
7. Patent Number 2465078 - METHOD OF RELEASING GAS OR VAPOR FROM A SOLID MATERIAL
8. Patent Number 2350387 - METHOD FOR RAPIDLY
DETERMINING THE ACCEPTABILITY OF LOADS
TO BE STERILIZED
9. Patent Number 2235941 - VAPOR STERILIZATION
USING INORGANIC HYDROGEN PEROXIDE COMPLEXES
39
10. Patent Number 1144180 - PROCESS AND APPARATUS FOR PREPARATION OF PHENOLS
By inspection, we can conclude that 3 and 7 only are relevant.
This exercise has to be done for the whole list of 533 documents
(which can be done in less than an hour). This is left as an exercise.
The second filtration has to be done by looking at the abstracts
of the documents keeping the invention in mind.
Let us look at the above two (3 and 7) abstracts.
A LARGE INTEGRATABLE HYDROGEN PEROXIDE
INTERMEDIATE STAGE OR STAND ALONE TANK
FOR THE PURPOSE OF PURIFYING FUELS USING
HIGH STRENGTH HYDROGEN PEROXIDE IN FUELS
This 50-30,000 barrel tank is a facility to Oxidize and Purify a variety of fuels using Hydrogen Peroxide (in 30-99
pc purity) before the fuel is sent to market. The attachments and scheme are designed in an open air fashion
so that the Hydrogen Peroxide can not cause a pressure
buildup as it performs its oxidation process on the fuel.
The roof is designed to protect the contents of the tank
from weather, and, hold sealed lighting for the work area.
The Grid Iron work area is of sufficient size ( covering
about 25
METHOD OF RELEASING GAS OR VAPOR FROM
A SOLID MATERIAL
A method of releasing hydrogen peroxide vapor from a
solid hydrogen peroxide complex capable of releasing the
hydrogen peroxide vapor so as to sterilize an object is described. The solid hydrogen peroxide complex is sealed
within a gas permeable material. The solid hydrogen
peroxide complex is heated to thereby release the hydrogen peroxide vapor through the gas permeable material.
The object is contacted with the vapor.
40
By reading the abstracts on the computer screen itself while keeping the abstracts of the invention in mind, irrelevant abstracts can
be ruled out. Finally, we will end up with relevant documents to our
invention, and such documents have to be read and compared with
the invention more closely.
Generally, on a search, few patent documents are obtained as
relevant ones. Then it is necessary to read them carefully after
downloading the whole document.
While reading, we have to see whether the new revelation is inventive, that is whether it is new and non-obvious with regard to
the prior art.
The primary purpose of prior art search is to ascertain the patentability and it is called a patentability search. There are other types of
searches as well, but basically searching is the same, but the filtration is done with a different motive. The next section discusses
different kinds of searches.
5.4
Different Types of Prior Art Searches
The basic purpose of prior art searches is to find out what has been
done with regard to the technological activity done by the inventor.
However, the overall purpose of the search maybe different with
regard to what the purpose of the search is, and basic search can be
customized according to the need.
Following are some important searches one could perform to fulfill a specific need.
Name Search
State of the Art Search
Technological Activity Search
Legal Status Search
Infringement Search (Freedom to Operate Search)
Patentability Search
5.4. DIFFERENT TYPES OF PRIOR ART SEARCHES
5.4.1
41
Name Search
This is a search done when specific information of the patent is

known to the searcher. For an example, if the inventor, assignee or
the application country is known, a searcher can perform a search on
what the specific inventor has patented, what the specific company
has patented or whether a patent application or a patent is available in the specific country with regard to the work the searcher is
interested in knowing.
5.4.2
State of the Art Searches
This type of search is done to learn the present state of the art technologies available. Such information is useful if one wants to avoid
reinventing the wheel because if the searcher is going to do the
same invention, it is going to be a complete wastage if someone has
already claimed for the invention. This search is also useful if one
is interested in doing improvements for what is in existence. State
of the art search is very useful to researches who embark on new research activities, and by knowing the present state of the technology,
they can do their research more economically and effectively.
5.4.3
Technological Activity Search
This is similar to state of the art search. The specific purpose of technological activity search is to find the active competitors or countries
where some new technology research is being done.
5.4.4
Legal Status Search
Legal status search is to find the present legal status of a patent. The
main concern in this search is to find out whether the patent has been
lapsed after the expiry of the patent monopoly or abandoned. This
information is very useful for companies that make generic products of the patented invention after the patent is lapsed, and very
common in generic drug production.
42
5.4.5
Infringement Search (Freedom to Operate

Search)
Infringement search or freedom to operate search is done in order to

see whether an infringement of a patent right is done by engaging in
the research or the production of a certain product. Such information is useful when making new things (specifically drugs) because
if someone else later sues and proves of an infringement being done,
compensation could be very costly.
5.4.6
Patentability Search
Patentability search is done in order to ascertain whether a new invention is patentable by fulfilling the requirements of novelty and
non-obviousness. This is the most widely done search by patent applicants and patent examiners. The search is more time consuming
and rigorous than any of the earlier mentioned searches. Synonyms
to this search are pre application search, novelty/non obviousness
search.
Chapter 6
Patent Drafting
After the prior art search is done and if the inventor or his agent
is of the opinion that the new revelation is inventive and therefore
patentable, the invention has to be written according to a standard
document. This is called patent drafting. A discussion of patent
drafting follows.
As mentioned earlier, the whole idea of the government (society)
for granting a patent right (a monopoly) is to make the inventor
reveal the invention so that any other person skilled in the art should
be able to use it after the expiry of the patent or do improvement
while the patent is valid. To do so, this invention has to be written
in full and clear so that anybody can read and make it.
A patent document is written in separate sections. It is almost
similar to the structure of a standard research paper except that the
patent document also has a section known as Claims.
6.1
Structure of a Patent
The following are the sections of a patent document.

Title
43
44
CHAPTER 6. PATENT DRAFTING

Abstract
Description: Background of the invention, Present state
of the technology, Disclosure of the invention
Claims
Drawings
These requirement are described in patent laws and rules of a

country, and in Sri Lanka, they are mentioned in Section 71 of National Intellectual Property Act, No. 36 of 2003
6.1.1
Title
The title is the briefest description of the invention. It has to be

complete and should not be misleading. By looking at the title, one
should be able to know what the invention is. Some examples are:
"Solar Powered Drain Cleaning Robot, Nano Fibres for Manufacture of Textiles etc..
One main purpose of giving a complete and concise title is to be
able to extract them when a search is done.
6.1.2
Abstract
The abstract is a brief description of the invention. Similar to the

main purpose of the title, a main purpose of the abstract is to search
effectively. Other than this requirement, it should also be possible
to read the abstract and filter it, and therefore it should tell all
about the invention in the shortest possible way. Some legislation
limit the number of words in the abstract. For example according
to Canadian patent rules, it is 150 words.
The following are some sample abstracts extracted from Manual
of Patent Office Practice, CIPO (Canadian Intellectual Property Office).
6.1. STRUCTURE OF A PATENT

Sample 1: A heart valve with an annular valve body
defining an orifice and having a plurality of struts forming a pair of cages on opposite sides of the orifice. A
spherical closure member is captively held within the
cages and moved by blood flow between open and closed
positions in check valve fashion. A slight leak or backflow
is provided in the closed position by making the orifice
slightly larger than the closure member. Blood flow is
maximized in the open position of the valve by providing a convex profile on the orifice-defining surfaces of the
body. An annular rib is formed in a channel around the
periphery of the valve body to anchor a suture ring used
to secure the valve within the heart.
Sample 2: Amides are produced by reacting an ester of
a carboxylic acid with an amine, using as catalyst an
alkoxide of an alkali metal. The ester is first heated to
at least 75 degrees Celsius under a pressure of no more
than 500 mm. of mercury to remove moisture and acid
gases which prevent the reaction, and then converted to
an amide without further heating.
Sample 3: Process for the production of semiconductor
devices, wherein a silicon oxide film is formed on a surface
of a semiconductor substrate, followed by deposition of a
layer of lead on the film. This combination is then heated
at 500-700oC. for at least 10 minutes in an oxidizing atmosphere, whereby a passivating film forms, consisting
essentially of silicon oxide and lead oxide. The temperatures employed are substantially lower than those conventionally used, and prevent deterioration of the device.
Sample 4: Wool is heated at 50-65 degrees Celsius for less
than 15 minutes in an aqueous dispersion of 0.1-2 percent
calcium hydroxide, washed, and then acidified to render
45
46

it receptive to dyestuffs without adversely affecting the
physical properties of the wool.
6.1.3
Description
Description is composed of three sections, namely, background, the

present state of the technology, and the disclosure of the invention.
This can be thought of as a chronologically ordered story of the
invention. We first start by the need of the invention (background)
and secondly, what has been done so far to fulfill the need (present
state) and finally, tell about the potential invention and justify its
patentability by comparing it with what has already been done. This
is a very logical way of looking at the patent description or a research
paper.
The following extract from the Canadian Patent Office Practice
Manual gives overview requirements of a description.
The description must provide a clear and complete disclosure of the invention such that the person skilled in
the art:
(1) can unambiguously identify what has been invented;
and
(2) is enabled to practice this invention.
As mentioned earlier, the purpose of granting a patent right is
in anticipation that the inventor reveals his/ her knowledge to the
society so that the public can use it after the expiry of the patent or
do improvements while the patent is in force. This has to be done
by someone by looking at the description.
The following extract from the Canadian Patent Office Practice
Manuals quotation of a judges view in a legal case emphasizes this
requirement.
In Consolboard Inc. v. Macmillan Bloedel (Saskatchewan)
Ltd., Dickson J. noted that the inventor must, in return
47
for the grant of a patent, give to the public an adequate

description of the invention with sufficiently complete
and accurate details as will enable a workman, skilled
in the art to which the invention relates, to construct or
use that invention when the period of the monopoly has
expired. The description must be able to answer the
questions What is your invention?: How does it work?
such that when the period of the monopoly has expired
the public will be able, having only the specification, to
make the same successful use of the invention as the inventor could at the time of his application.
The requirement of a proper disclosure are described in patent
legislation of different countries. There may be slight variations in
different jurisdictions but the main features are uniform in all the
countries.
According to Canadian Patent Act subsection 27(3):
The specification of an invention must
(a) correctly and fully describe the invention and its operation or use as contemplated by the inventor;
(b) set out clearly the various steps in a process, or the
method of constructing, making, compounding or using a
machine, manufacture or composition of matter, in such
full, clear, concise and exact terms as to enable any person skilled in the art or science to which it pertains, or
with which it is most closely connected, to make, construct, compound or use it;
(c) in the case of a machine, explain the principle of the
machine and the best mode in which the inventor has
contemplated the application of that principle; and
(d) in the case of a process, explain the necessary sequence, if any, of the various steps, so as to distinguish
the invention from other inventions.
48
Sample disclosures are too long to quote here but an interested

reader can easily find examples by accessing an online patent database.
A complete sample patent is also found at the end of the book for
quick references.
Illustrative drawings may be included to the description, however
they have to be drawn on separate sheets and no wording should
be included. This is done for the effective automatic translation
purposes.
6.1.4
Claims
The most significant part of a patent as far as the inventor is concerned is what is known as the claims. Claims can basically be
defined as the boundary of the invention just like a boundary of the
land one is owning. What one can enjoy in case of a land is what
is enclosed in the boundary, and so as in case of a patent; what one
can legally enjoy as his own is what is enclosed in the patent claim.
Just like one has to enclose the physical boundary of a land securely
so that others cannot encroach, patent claims have to be drafted so
that others cannot creep though them and use the invention without
any infringement. Patent drafting is a professional work that needs
significant amount of expertise.
Patent legislations define claims more formally, and according to
Canadian Patent Act, the claims must define distinctly and in explicit terms the subject matter of the invention for which protection
is sought (section 27(4) of the Patent Act).
Claims should necessarily contain what is invented but should
not contain what was already in the public domain. All what is
claimed has to be justified in the disclosure where the invention and
what was already known could be cited for comparison purposes.
General Structure of Claims
A claim essentially is composed of three parts as follows:
Preamble or introductory phrase
49
Transitional phrase
Body
Preamble is kind of an introduction to what follows. This introduction is what is already in the public domain. What the preamble
does is to state that what follows is related to what is mentioned in
the preamble.
Examples:
A bottle opener . . . . . . ..
A robot for cleaning drains . . . . . . . . . .
A composition for decomposing oil spills on water . . . . . . . . . .
By looking at the preamble, one can say that the invention is
related to a bottle opener, a drain cleaning robot and an oil spill
decomposing composition where such equipment, robots and compositions are already available and the present invention is about
a new opener, a drain cleaning robot, and an oil spill decomposing
composition hitherto unknown to the public.
The preamble is connected to the following body the inventionby a transitional word/phrase of a language. In English, some such
transitional words/ phrases are: comprising, composed of, consisting
of, which comprises, made of, including, having etc.. All what the
transition word/phrase does is the transition from the preamble to
the body, the connection, or the division of what is in the public
domain and what is the invention.
The body of the claim describes the invention clearly and completely. It may contain what is already known to the public but the
composite body should be not known to the public before. What
this means is that an invention may contain things that are already
known but the composite invention should be new in the existing
public domain knowledge. However, no legal right is given to the
inventor for what is already known, and the protection is only given
to the parts that are new.
50
As an example, let us suppose that someone invents an explosive

triggering device by sending and SMS using a mobile phone. Let
us also assume that mobile phones and a short message (SMS) usage are already known to the public but explosive triggering using
SMS is not yet known. The claim can be worded as An explosive
triggering device comprising a mobile phone and a SMS gateway".
The inventor does not have any legal right to either mobile phones
or SMS gateway but only for the triggering device composed of a
mobile phone and a SMS gateway.
The invention could be a product or a process. In case of a product, the claim is with respect to the parts or components of it. If
the invention is a process, it is the process and sub processes of the
invention. There can also be claims that claim both the product
and process. The best example is the new drug and its manufacturing process. Both the drug and the process of manufacture are
patentable and can be claimed as a legal right.
We will now see some examples of claims. These are extracted
from Canadian Intellectual Property database.
Sample 1 (Extracted from CIPO database) Title: An
Electroluminescent Device
Claim: An electroluminescent device comprising a transparent substrate for facing a viewer in front of said substrate; a transparent electrode disposed behind said substrate on a side of said substrate opposite from said
viewer; a partially-absorbing layer disposed behind said
electrode; an electroluminescent emitting layer disposed
behind said partially-absorbing layer; a reflective rear
electrode disposed behind said emitting layer, said emitting layer being made from a material operable to emit
light towards when a potential is applied between said
electrodes; said partially absorbing layer and said emitting layer each being made from a material and having a
thickness that are chosen to cooperate with said reflective rear electrode such that at least a portion of ambient
51
light incident on said device is reduced.

The invention is about an electroluminescent (devices emanating
luminance when an electric current is applied to the terminals) device which are already known. The inventive part is a new way of
making them by combining different layers of material with different
thickness to form a composite unit that has contrast enhancement
capability. Some of these layers maybe already known but the composite unit is new.
Outer Wall Cleaning Robot Claim: An outer wall cleaning robot comprising: an arm pivotable about a first rotation axis that extends in a substantially horizontal direction in approximately parallel relation to an outer wall
surface of a building; an arm driving mechanism for driving said arm; a rotational body supported by said arm
in such a manner that said rotational body is pivotable
about a second rotation axis extending in parallel with
said first rotation axis; a rotational-body driving mechanism for driving said rotational body independently of
driving of said arm by said arm driving mechanism; a
wiping-squeegee mounting mechanism attached to said
rotational body; and a wiping squeegee attached to said
mounting mechanism.
The invention is about outer wall cleaning robots which are already known. The inventive part is a new way of making an outer
wall cleaning robot by combining different components. Some of
these maybe already known but the composite unit is new.
Sample 3 (Extracted from CIPO database) Title: Well
Treatment Compositions and Methods of Utilizing Nano
Particles
Claim: A method of cementing comprising: introducing a cement composition into a subterranean formation,
52

wherein the cement composition comprises cement, water, and at least one nano particle selected from the group
consisting of particulate nano-silica, nano-alumina, nanozinc oxide, nano-boron, nano-iron oxide, and combinations thereof
The invention is about a method of cementing wells which is

already known. The invention is a new way of doing so using a
special compound. Some of these maybe already known but the
composition is new.
What are mentioned above are independent claims which are also
known as main claims. Most of the time the content of this claim is
the same as what is in the abstract.
For an example, the abstracts of the above claims are as follows:
Sample 1 (Extracted form CIPO database) Title: An
Abstract: An aspect of the invention provides an electroluminescent device that incorporates a partially-absorbing
layer which is disposed in front of an emitting electroluminescent layer and a reflective rear electrode. The
thickness and material of the partially-absorbing layer
cooperates with the thickness of the electroluminescent
layer to cause at least some reduction in ambient light
incident of the display.
Outer Wall Cleaning Robot
Abstract: An outer wall cleaning robot includes an arm
pivotable about a first rotation axis and a rotational
body supported by the arm for pivotal movement about a
second rotation axis. The rotational body can be driven
independently of a pivotal movement of the arm. To the
rotational body are attached respective mounting mechanisms for a wiping squeegee and a receiving squeegee.
53

Particles
Abstract: Disclosed embodiments relate to well treatment fluids and methods that utilize nano-particles. Exemplary nano-particles are selected from the group consisting of particulatenano-silica, nano alumina, nano-zinc
oxide, nano-boron, nano-iron oxide, and combinations
thereof. Embodiments also relate to methods of cementing that include the use of nano-particles. An exemplary
method of cementing comprises introducing a cement
composition into a subterranean formation, wherein the
cement composition comprises cement, water and a particulate nano-silica. Embodiments also relate to use of
nano-particles in drilling fluids, completion fluids, stimulation fluids, and well clean-up fluids.
There are also what are known as dependent or sub claims. As
the name implies, these dependent claims are dependent on the independent claim, and make a reference to the independent claim
as as claimed in (independent claim) and emphasizes on a special instance of the independent claim. In fact, what the dependent
claim claims is special cases of the claimed subject matter of the
independent claim.
The inter relation of dependent and independent claims can be
depicted as a Venn diagram where sub group fall inside a group.
The necessity for dependent claim is that just in case of an invalidation of the independent claim on the ground that the independent
claim being too broad, there is still a fall back option for the inventor to claim dependent claims. If there is no dependent claim, the
inventor would be left with nothing if the main independent claim
becomes invalid.
As an example, if the invention is about fabrication of semiconductor devices using Silicon or Germanium, with sufficient justification in the disclosure as to the potential use of other elements
54
in the same column in the Periodic Table of Elements, he/she can

draft the independent claim as . . . . . . . . . . . . . . . . . . . . . using any material in the fourth column of Periodic Table of Elements and claim
the device made of Silicon or Germanium by writing the dependent claim as . . . . . . . . . . . . . . . .the device as claimed in (independent
claim) wherein the element is Silicon or Germanium. If by some
chance, someone challenges that the use of Carbon (in the forth column of the Table) in making the device had already been known to
ancient Romans, the inventor can at least fall back to the present
day with Silicon or Germanium !
Following are dependent claims relating to the above mentioned
example. It will be noticed that some dependent claims refer to
many dependent or independent claims.
Sample 1 (Extracted form CIPO database) Title: An
Dependant Claims:
The device according to claim 1 wherein said transparent
front electrode is made from ITO.
The device according to claim 1 wherein said rear electrode is made from Aluminium.
The device according to claim 1 wherein said electroluminescent layer is made from a material selected from
the group consisting of ZnS:Mn, Alq3, PPV.
Outer Wall Cleaning Robot
Dependant Claims: An outer wall cleaning robot as defined in claim 1 which further comprises a receivingsqueegee mounting mechanism pivotably supported relative to said rotational body, a receiving squeegee attached to said receiving-squeegee mounting mechanism
so as to be positioned below said wiping squeegee, for receiving soiled water resultant from cleaning of the outer

wall, a clutch mechanism for connecting or disconnecting
said receiving squeegee to or from said rotational body,
and a stopper mechanism for preventing said receiving
squeegee from pivoting downward from a predetermined
position.
An outer wall cleaning robot as defined in claim 1 or 2
wherein said arm mounting mechanism and said rotationalbody driving mechanism are provided separately from
said arm.
An outer wall cleaning robot as defined in claim 2 wherein
said receiving-squeegee mounting mechanism includes a
slider base, a slider mounted to said slider base for sliding
movement along said slider body in a forward and rearward direction, and drive means for driving said slider,
and wherein said receiving squeegee is fixed to said slider.
Particles
Dependant Claims:
The method of claim 1, wherein the introducing the cement composition into the subterranean formation comprises introducing the cement composition into a space
between a pipe string and the subterranean formation
and allowing the cement composition to set in the space.
The method of claim 2, comprising running the pipe
string into a well bore penetrating the subterranean formation.
The method of claim 1, wherein the method comprises
allowing the cement composition to set in the subterranean formation.
55
56
Unity of Invention
There is what is known as unity of invention in claims. As the phrase
implies, it means that the claims should be a unit of invention. What
this means is that one patent document should contain only one
inventive subject matter.
The relevant legal provision in Sri Lanka in this regard is as
follows:
74. An application shall relate to one invention only or
to a group of inventions which are so linked to each other
so as to form a single general inventive concept.
As stated in the legal provision, unity of invention does not mean
that the claims should be focused on one product or a process. Many
products and processes could be joined if they form one well related
composite invention.
For an example, in a drug manufacturing process, the main product as well as the by products could be claimed if they satisfy
patentability requirements. Similarly, the main process as well as
the sub processes of the manufacturing process could be claimed in
the same application if they are satisfying the patentability requirements.
Scope of Claims
As mentioned above, the claims are the ones that give legal protection to inventors and therefore of importance to them. Claims
is the point to start drafting the patent document because rest of
the documentation depends on the claims. The abstract is kind of
a summarization of claims, and the description is an expansion of
claims with justification including the background and the prior art.
Just like people try to expand their boundaries of physical lands
duly or unduly, inventors try to get protections as broad as possible, and in the examination process, examiners make it justifiably
narrow. Even after the patent is granted, if someone can find that
57
the inventor has encroached into what is already known, he/she can
invalidate the claim to the extent of encroachment.
58
Chapter 7
Application for a Patent

After the patent is drafted, the next step is to lodge the document
with a petition (a standard form containing bio graphical data of
the applicant and some facts regarding the invention) in the national
patent office of the country. An exception is that when an applicant
makes a PCT application where the applicant makes the application
in a depository known as PCT; PCT will be explained later.
Before making the application, care should be taken not to make
any public disclosures because if someone can prove that the invention was known to the public before the application date, the patent
right can be invalidated. Exception is available in some countries
where an applicant himself may reveal the invention but still can
make the application within a certain period. For an example, in
United States, the applicant can enjoy a grace period of one year
after the disclosure before making the application. However, it is advisable that no disclosure is done because it might affect the patent
right when applying in other countries where such exceptions are
not allowed.
It maybe, however, necessary to discuss the invention with other
stakeholders like researchers and market personnel. Such discussions
should be done after signing a Non-Disclosure Agreement (NDA)
59
60
CHAPTER 7. APPLICATION FOR A PATENT
(also known as Confidentiality Agreement) binding the other party

not to leak out the information. A breach of the agreement maybe
compensated, but the amount of compensation may not be sufficient
to cover the cost of the damages caused.
In United States, there was a system earlier where first to invent
was given priority over first to file. Due to practical difficulties in
proving the first to invent, this system has become obsolete.
7.1
Making a Local Application
As mentioned above, a national or a PCT application has to be made

to get a patent grant. The legal requirement of making the application is described in legislation. According to Sri Lanka legislation,
it is as follows:
71. (1) (a) An application for the grant of a patent shall
be made to the Director General in the prescribed form
and shall contain
(i) a request for the grant of the patent ;
(ii) a description of the patent ;
(iii) a claim or claims ;
(iv) a drawing or drawings, where required ;
(v) an abstract ;
(vi) date and number of any application for a patent
filed by the applicant abroad (hereinafter referred to as
the foreign application), if any, relating to the same,
or essentially the same invention as that claimed in the
present application ;
(vii) a declaration that the applicant or his predecessor
in title has not obtained a patent abroad before the application was filed relating to the same or essentially the
same invention as that claimed in the application.
7.2. MAKING A FOREIGN APPLICATION
61
When the application is lodged in the national patent office, a

filing date is assigned and this proves that the invention was filed on
that particular date, and inventors may reveal the invention thereafter without any risk. The inventor could also use the phrase
Patent Pending even though the patent right is not yet granted, in
order to warn others that copying may result in patent infringement.
The filing date could be transferred to other applications that
maybe filed in other countries and therefore it is also known as the
priority date. The concept of priority date will be discussed later.
After the application is lodged, office actions will follow and they
will be discussed the next chapter.
How this initial filing date will be carried forward to other countries will be discussed in the next section.
Revisions of Applications
Patent applications maybe revised if the new subject matter is not
included. Following is the legal provision in Sri Lanka in this regard.
75. (1) An applicant may amend the application, provided that the amendment shall not exceed the limits
of the disclosure in the initial application. (2) (a) An
applicant may divide the application into two or more
applications (hereinafter referred to as divisional applications) provided that each divisional application shall
not exceed the limits of disclosure in the initial application.
7.2
Making a Foreign Application
As mentioned above, the patent enforcement is local which means

that once a patent is granted, its application or enforceability is
restricted to only that jurisdiction. (Note here that to get a patent
in any jurisdiction, the invention should be new in the world). Does
it mean that one could get a patent only in one country. No, he/she
62
can get patents in other countries too. But then, when an application
is made in a different country, will he/she get a patent because he has
revealed it in another country (where the patent was granted). One
might think that if simultaneous applications are made in different
countries, this problem is solved. It is theoretically true but cannot
be implemented practically.
The inventor can get a patent in different countries if he/she
carries the original filing date (in the country where it was granted)
to the new country where he/she is seeking patent rights. So there
has to be some internationally accepted mechanism to carry the
filling date of one country to another. When the filing date is carried
to another country in this fashion, original filing date is known as
the priority date because the applicant is claiming a priority on an
earlier application.
Paris convention is such an accepted international treaty. Almost
all the countries in the world are signatories to this convention, and
all those signatories can use the convention in patent application
matters. According to the convention, an inventor can make a foreign application within one year of the original application and still
claim the original priority (as a priority date). Accordingly, if someone files an application on January 1, he can make an application
till December 31, and still claim that his application be considered
to have been filed on January 1.
There is another international treaty called PCT (Patent Cooperation Treaty administered by WIPO World Intellectual Property
Organization). This treaty is augmenting Paris convention and make
the system more flexible, and almost all the countries in the world
are signatories to it. According to this convention, if one makes a
PCT application with WIPO, he/she can make local application in
any signatory countries within 30 months (31 months in some countries) of the original application. If the applications are not made
within these time periods, the inventor looses the right to make applications in other countries.
It is also possible to get the combined effects of Paris convention and PCT. Accordingly, one can make a local application in one
7.2. MAKING A FOREIGN APPLICATION
63
country, and make a PCT application within one year (according to

Paris Convention) and then make local applications (according to
PCT) within 30 months of the original application. As an example,
if one make a original local application in June 2010, and makes
a PCT in December 2010, he can make local application in PCT
signatory countries till December 2012.
As a real life example, lets look at the data in the below snapshot
taken from CIPO database.
This application was originally made in United States on 200208-28. Subsequently, a PCT application was made on 2003-06-06
which is within a year of the original United States application.
Finally, it has entered into Canada on 2005-02-16, which is within
30 months of the original Unites States application.
The legislature of a country makes provisions for Paris Conven-
64
tion and PCT. Following is the relevant section in Sri Lanka Intellectual Property Act.
76. (1) An application may contain a declaration claiming the priority, pursuant to the Convention, of one or
more earlier national, regional or international applications filed by the applicant or his predecessor in title in
or for any State party to the said Convention.
According to section 28 of Canadian Patent Act,
An applicant for a patent in Canada may request priority
in respect of the application on the basis of one or more
previously regularly filed applications.
Once the application is made, the applicant may wish to revise
the document subject to the condition that no new subject matter
is introduced.
The relevant legal provisions according to Sri Lanka Intellectual
Property Act are as follows:
75. (1) An applicant may amend the application, provided that the amendment shall not exceed the limits of
the disclosure in the initial application.
(2) (a) An applicant may divide the application into two
or more applications (hereinafter referred to as divisional applications) provided that each divisional application shall not exceed the limits of disclosure in the
initial application. (b) Each divisional application shall
be entitled to the filing, or where applicable, priority,
from date of the initial application.
After an application is made, in most countries, the office will
keep the documents confidentially till 18 months and publish them
thereafter for public inspection. An applicant may however request
early publication.
Chapter 8
Patent Examination and

Granting Process
8.1
Revision of Applications
On receiving the application, the patent will office will check the
application for consistency. If the application is not in order, the
office will request the applicant to do necessary revisions within a
time period.
The relevant legal provisions according to Sri Lanka is are follows:
78. (1) The Director-General shall examine the application and shall satisfy himself as to the fulfillment of the
following :
(a) where applicable, the requirements of paragraph (b)of
subsection (1) of section 71 ;
(b) the requirements of paragraph (a) of subsection (2)
of section 71 ;
(c) where applicable, the requirements of paragraph (b)
of subsection (2) of section 71 ; (Note: Section 71 de65
66CHAPTER 8. PATENT EXAMINATION AND GRANTING PROCESS

scribes the requirements for completeness of the application)
(d) the description, the claims and where applicable,
the drawings, which comply with the prescribed requirements ;
(e) the essential elements of the invention claimed in
the application have not been unlawfully derived from
a patent already granted in Sri Lanka ;
(f) the application contains an abstract ;
(g) the search report referred to in section 73 has been
submitted.
78.(2) Where the Director-General finds that the conditions referred to in subsection (1) are not fulfiled he
shall request the applicant to file the required correction
within a period of three months from the date of such
request ; where the applicant fails to so comply the application shall, subject to the provisions of subsection (3),
be rejected.
78.(3) Where no correction is provided in response to a
request under subsection (2), the Director-General shall,
on payment of the prescribed fee within the prescribed
period, include the corrections into the application and
if the prescribed fee is not paid within the prescribed
period the application shall be rejected.
78.(4) Where the Director-General finds that the essential elements of an invention claimed in an application
are unlawfully derived from a patent already granted in
Sri Lanka, such application shall be rejected.
78.(5) The Director-General shall notify the applicant of
any decision under subsections (2), (3) and (4) and any
decision taken to reject the application shall be in writing
stating the reasons for such rejection.
8.2. EXAMINATION OF APPLICATIONS
8.2
67
Examination of Applications
Within 4 years of the original application date (in most countries),

the inventor has to request the examination of the patent document.
If no request is made, it will be abandoned, and nobody in the world
can make an application for the same invention ever.
When the examination is requested, the examiners will test the
revelation against the patentability requirements industrial applicability, novelty and non-obviousness and if they decide that the
revelation is inventive, the patent is granted. The following are the
relevant legal provisions in Sri Lanka.
79. (1) The grant of a patent shall not be refused and
a patent shall not be invalidated on the ground that the
commercial exploitation of the claimed invention is prohibited by any law except where the prevention of the
commercial exploitation of the claimed invention is necessary in order to protect public order, and morality including the protection of human, animal or plant life or
health or for the avoidance of serious prejudice to the
environment.
79.(2) Where the applicant fulfills the requirements of
subsection (1) of section 78 to the satisfaction of the
Director- General, he shall grant the patent, and shall
forthwith (a) record the particulars relating to patent
in the Register of patents required to be maintained in
accordance with the provisions of section 80 ;
79.(b) issue a certificate to the applicant in respect of
the grant of a patent together with a copy of the patent
documents including the search report :
Consequently, the inventor will enjoy patent rights for his invention for 20 years form the date of application. In some countries, the
time limit is 15 years. Following is the legal provision in Sri Lanka
in this regard.

83. (1) Subject and without prejudice to the other provisions of this Part a patent shall expire twenty years after
the filing date of application for its registration.
8.3
Patent Maintenance Fees
Upon receiving the patent, the inventor is required to pay an annual maintenance fee to keep the patent in force. If the payment is
not made, the patent will become invalid. In certain countries, even
before the patent is granted, a maintenance fee has to be paid in
order to keep the application valid. The patents and patent application so becoming invalid will become public knowledge and nobody
anywhere in the world could make a patent claim for the relevant
subject matter. The legal provisions with regard to maintenance
fees are as follows:
83. (2) Where a patentee intends at the expiration of
the second year from the date of grant of the patent to
keep the same in force he shall, twelve months prior to
the date of expiration of the second and each succeeding
year during the term of the patent, pay the prescribed
annual fee:
8.4
Appeals Against Examiners Decisions
If the patent examiner is not satisfied with the inventiveness of the

subject matter or there are other defects in the document, they will
send what is known as Office Actions to the applicant. The applicant
may respond to them within a specified time limit. Upon receiving
the responses, the examiners will redo the examination and grant
the patent if they are satisfied.
It is also possible for examiners to reject the patent for defects in
the application or non-fulfillment of patentability requirements. The
defects maybe rectified. But if the subject matter is not fulfilling the
8.4. APPEALS AGAINST EXAMINERS DECISIONS
69
patentability requirements, nothing can be done and the examiners

will reject the patent application.
It is possible to appeal against the decisions of the examiners to
a patent appeal board (in some countries) in the patent office itself,
and further appeals can be done in courts of law.
Chapter 9
Post Patent Issues

When a patent is issued, the inventor can prevent others in the
countries where the invention is patented from using the invention
without the permission of him/her.
However, people in the countries where the invention is not patented
can use the invention without the permission from the inventor (the
owner of the patent). The inventor can also prevent others from importing the patented invention manufactured in a country where it
is not patented in to the countries where the invention is patented.
Patent right, therefore, is a negative right that prevents others
from using the invention. But nobody will take action in order to
make any economical gain for the inventor. Inventor himself has
to do something in order to gain an economical gain. Using the
patent for such economical gains is known as commercialization. A
discussion on commercialization follows.
Similar to conventional property, there maybe legal disputes as to
the authenticity and the trespass/ unlawful gaining of the property
in case of intellectual property. In intellectual property, those issues
are known as validity and infringement. A discussion on validity and
infringement follows.
71
72
CHAPTER 9. POST PATENT ISSUES
9.1
Commercialization
Following are three ways an inventor can commercialize a patent.

1. Exploitation
2. Assignment
3. Licensing
These provisions are available in Section 84 of Sri Lanka Intellectual Property Act.
84. (1) Subject and without prejudice to the other provisions of this Part, the owner of a patent shall have
the following exclusive rights in relation to a patented
invention:
(a) to exploit the patented invention ;
(b) to assign or transmit the patent ;
(c) to conclude license contracts.
9.1.1
Exploitation
Exploitation means that the inventor manufactures the invention by

himself or collaboratively with the collaborative agreement and the
provisions are given in Section 84(3).
84.(3) For the purposes of the this Part exploitation of
a patented invention means any of the following acts in
relation to a patent :
(a) when the patent has been granted in respect of a
product: (i) making, importing, offering for sale, selling,
exporting or using the product ; (ii) stocking such product for the purpose of offering for sale, selling, exporting
or using ;
73
(b) when the patent has been granted in respect of a process: (i) using of the process ; (ii) doing any of the acts
referred to in paragraph (a), in respect of a product obtained directly by means of the process ; (iii) preventing
any person using that process or using, selling or importing any product obtained directly by means of that
process unless such person is authorized to do so.
The risk factor is very high in exploitation because all the marketing and profit making lie in the hands of the inventor.
9.1.2
Assignment
Assignment of patent rights means that the inventor assigns his/her

right to someone else for a consideration; consideration in legal terms
means something one gets in return for another.
The legal provisions in Sri Lanka are follows:
88. (1) A patent application or patent may be assigned
or transmitted and such assignment or transmission shall
be in writing signed by or on behalf of the contracting
parties.
The person giving the assignment is called the assignor and the
person receiving the assignment is called the assignee.
Assignment can be forced by an employment agreement or voluntary.
Voluntary assignment is where the inventor by his/her own wish
sell the patent right to someone else for a lump sum.
Assignment is forced when the inventor is an employee of an
organization, and the invention is as a result of the employment, the
patent rights belong to the employer. Such provisions are included
in modern day employment agreements. However, as an incentive to
employees there can be a separate IP (Intellectual Property) policy
between the employer and the employee where the economical gains
are shared by them.
74
There is no risk factor in assignment but the inventor will not

get anything more than the sale price if the manufactured product
becomes a huge revenue earner.
9.1.3
Licensing
Licensing is giving limited rights to another person just like a rent

or a lease of tangible properties. This is kind of an agreement and
the person giving the license agreement is called the licensor and the
person receiving the license is called the licensee. When a license is
given to a licensee, he/she can do some limited work in a limited
area during a limited time; these conditions form vital parts of the
license agreement. For an example, a patent holder can give a license
to someone else to manufacturer in China one hundred thousand
number of components in during year period.
Following are the legal provisions in Sri Lanka in regard to licensing.
90. For the purposes of this Part license contract means
any contract by which the owner of a patent (hereinafter
referred to as the licensor) grants to another person or
enterprise (hereinafter referred to as the the licensee) a
license to do all or any of the acts referred to in paragraph
(a) of subsection (1) and subsection (3) of section 84.
91. (1) A license contract shall be in writing signed by
or on behalf of the contracting parties. (2) Upon a request in writing signed by or on behalf of the contracting
parties, the Director-General shall, on payment of the
prescribed fee, record in the register such particulars relating to the contract as the parties thereto might wish
to have so recorded : Provided that the parties shall not
be required to disclose or have recorded any other particulars relating to the said contract.
75
92. In the absence of any provision to the contrary in

the license contract, the licensee shall (a) be entitled to
do all or any of the acts referred to in paragraph (a) of
subsection (1) and subsection (3) of section 84 within
the territory of Sri Lanka, without limitation as to time
and through application of the patented invention ; (b)
not be entitled to assign or transmit his rights under the
license contract or grant sub-licences to third parties.
Licensing lies in between exploitation and assignment in terms
of both risk factor and profit factor.
There are three kind licensing agreements, namely exclusive, sole
and non-exclusive.
Exclusive licensing means licensing to some entity with exclusive
rights in certain aspects. For an example, it can be a geographically
exclusive, where the license is given to manufacture in one particular country. The inventor has freedom to give licenses for other
countries.
When a sole license is granted, the licensor as well as the licensee
has rights to the patent.
Non-exclusive licensing means licensing is done without any restriction on the usage of the patent, and the inventor could grant as
many licenses as he wish.
Depending on the manufacturing cost, marketability of the product and other circumstances, one could decide the best licencing
model.
There is what is known as a compulsory license where the patent
holder is forced by the government to issue licenses. This situation
arises when the inventor wants to make an undue monopoly of his
invention. If the government (or any other interested party) feels
that the patented invention is something of great social benefit, government (or the interested party) through the patent office could ask
the inventor to licence his invention so that many people can make
the product, and as a consequence, society will benefit more than if
it were only done by inventor himself. For an example, if the inven-
76
tion is a cure for cancer, inventors would not want to license because
of the huge potential profits, but due to the benefit the society will
get, government will make compulsory licences so that inventor cannot make huge undue profits and the drug could be manufactured
in competition and will be freely available.
9.2
Potential Legal Implications
When a patent is granted, it does not give any guarantee that the
government will actively protect the rights of the inventor. If any
infringement of patent rights occur, it is only the duty of the inventor to take remedial action. If the inventor does not take remedial
action, the infringer will enjoy the patent without being a guilty
party.
Infringement of patent rights means the copying of the invention without inventors permission. It is basically stealing, in case of
tangible property. In case of a tangible property theft, the government will take criminal action against the stealer because stealing
is considered a wrong doing against the whole society. In case of
stealing intellectual property, it is basically a civil dispute between
two parties, but it can also be considered a criminal offense.
Infringement can usually defended by invalidating the patent.
Invalidating a patent means that the validity of the patent is disputed due to time lapses (expiry of the patent) or that the invention
is not patentable in view of patentable requirements of novelty and
non- obviousness.
When a patent is invalidated by courts after looking at the circumstances of the case, the invention becomes public knowledge and
anybody can use it without the permission of the inventor.
In the case study Beloit Canada Vs. Valmet Oy, the case was
regarding infringement and validity. One party alleged the other by
saying that the other party infringed their patent right by invalidating the patent the other party had obtained.
Generally, infringement and validity go hand in hand because
9.2. POTENTIAL LEGAL IMPLICATIONS
77
when someone alleges of infringement, the best defense one can take
is that the allegers claim is invalid or the one used by him is also
inventive.
78
Chapter 10
A Sample Patent
Following is a patent extracted from United States Patent and Trademark Office (USPTO) database.
10.1
US Patent 7,161,651
10.1.1
Title: Method of resizing a liquid crystal

display
10.1.2
Bibliographical Data
Inventor:Smovzh; Anatoliy (Oakville, Canada)

Assignee:Luxell Technologies Inc. (Mississauga, Canada)
10.1.3
Abstract
A method of resizing a liquid crystal display connected to at least

one flex board, wherein the liquid crystal display has multiple layers
including a liquid crystal layer contained between a pair of glass substrates and a pair of polarizers on opposite sides of respective ones of
79
80
CHAPTER 10. A SAMPLE PATENT
the glass substrates. The method comprises applying pressure sensitive tape for protecting the polarizers, dicing through the layers,
including the polarizers, using a dicing wheel with predetermined
diamond particle size to a specified depth and width of groove, cutting through the flex board using a UV laser, breaking off unwanted
portions of the liquid crystal display and flex board defined by the
dicing and cutting operations, and sealing remaining portions of the
liquid crystal display.
10.1.4
Claims
What is claimed is:

1. A method of resizing a liquid crystal display connected to
at least one flex board, said liquid crystal display having a liquid
crystal layer between a pair of glass substrates and a pair of polarizers on opposites sides of respective ones of said glass substrates, the
method comprising: applying pressure sensitive tape for protecting
said polarizers; dicing through said layers, including said polarizers,
to a specified depth and width of groove using a dicing wheel of predetermined diamond particle size; cutting through said flex board;
breaking off unwanted portions of said liquid crystal display and
flex board defined by said dicing and cutting; and sealing remaining
portions of said liquid crystal display.
2. The method of claim 1, wherein said predetermined diamond
particle size is in the range of 40 70 microns.
3. The method of claim 1, wherein said specified width is approximately 10 mils.
4. The method of claim 1, wherein said specified depth is approximately 30 40
5. The method of claim 4, wherein said breaking off unwanted
portions of said liquid crystal display and flex board comprises applying a breaking force to said one of said pair of glass substrates.
6. The method of claim 1, wherein said sealing comprises applying a UV curable adhesive to said remaining portions of said liquid
crystal display.
10.1. US PATENT 7,161,651
10.1.5
81
Description
BACKGROUND OF THE INVENTION

1. Field of the Invention
The present invention is directed to liquid crystal displays, and
more particularly to a method of resizing a liquid crystal display
without first removing the polarizer.
2. Description of the Related Art
Liquid crystal displays (LCDs) are well known in the electronic
arts for displaying images and data to a user (e.g. avionics, computer
displays, cellular telephones, etc.) A liquid crystal cell is typically
provided with two glass substrates having thin transparent ITO (indium tin oxide) layers evaporated on the inner surfaces thereof (referred to herein as the TFT glass and the color filter glass, respectively). Polyimide layers (or any homogenous alignment material
such as silane, evaporated silicon monoxide, etc.) are coated on top
of the respective ITO layers for aligning the liquid crystal molecules
within the cell. Thus, for a left-hand twisted cell, the polyimide
layer on the bottom substrate is rubbed along the 0.degree. direction (Cartesian coordinates), while the top polyimide layer is rubbed
along the 90.degree. direction (according to the right hand rule in
Cartesian coordinates). The glass substrates are bonded together
to form a cell using epoxy or thermoplastic material. Next, the cell
is filled with liquid crystal by either vacuum filling or by a capillary method. After filling, the cell is sealed and uniform pressure is
applied over the cell to improve the uniformity of the cell gap. Bottom and top polarizers are laminated with respective transmission
directions perpendicular to the rub directions of the bottom and top
polyimide layers. Finally, a reflective layer is deposited on the top
polarizer.
Conventional LCDs are available in standard sizes that, in some
cases, do not fit the intended application. For example, human factors and space limitations may dictate a smaller than conventional
LCD be used for avionics display in the cockpit of an aircraft (military or civilian). Methods are known in the art for resizing LCDs
82
to fit an intended application.

U.S. Pat. No. 6,204,906 (Tannas) discloses a method of changing the physical shape of an electronic display, wherein the display
comprises a front plate, a back plate, and a perimeter seal spacing apart the plates, and wherein the image-generating medium is
sealed in an area between the plates and within the borders of the
perimeter seal. The method comprises cutting the display along desired dimensions, resulting in a target display portion and an excess
display portion, thereby breaking the perimeter seal of the display.
A seal is applied between the plates along an exposed edge of the
target display portion, wherein the seal includes an adhesive having
mechanical properties for preserving cell spacing between the front
and back plates.
WO 99/19765 (Marconi Avionics (Holdings) Limited) sets forth
a method of resizing an LCD having a liquid crystal sealed between
first and second parallel transparent plates forming an operative
area of the display. In its broadest aspect, the method comprises
removing an excess region of the display by cutting through the first
and second plates to isolate the excess region of the first and second
plates and to expose cut edges along the operative areas of the first
and second plates.
U.S. Pat. No. 6,509,949 (Lu et al) sets forth a method of resizing a liquid crystal display comprising the removal of any tape
automated bonding strips (TABs) and flex circuits corresponding
to undesired portions of the LCD. Any circuit boards, or portions
thereof, corresponding to the undesired portion of the LCD are then
cut and removed. The display panel is cut to remove a portion of
the display panel corresponding to the undesired portion of the LCD
and, finally, the cut edge of the display panel is sealed.
Each of the foregoing prior art LCD resizing methods also specifically includes removal of the polarizer before cutting, which adds
to the processing costs and time required to resize the display. Also,
the prior art is silent on any preferred approach to flex PCB (printed
circuit board) cutting.
10.1. US PATENT 7,161,651
83
SUMMARY OF THE INVENTION

It is an aspect of the present invention to provide a method
of resizing an LCD that does not require removal of the polarizer
before cutting. Another aspect of the invention is to provide flex
PCB cutting that minimizes conductor short circuits.
The above aspects can be attained by a method that includes
dicing through the polarizer and other LCD layers using a dicing
wheel with specified diamond particle size, as well as specified depth
and width of groove, followed by UV laser flex PCB cutting.
These together with other aspects and advantages which will be
subsequently apparent, reside in the details of construction and operation as more fully hereinafter described and claimed, reference
being had to the accompanying drawings forming a part hereof,
wherein like numerals refer to like parts throughout.
BRIEF DESCRIPTION OF THE DRAWINGS
FIG. 1 is a flowchart of a method for resizing an LCD, according
to the preferred embodiment.
FIG. 2 is scanned electron microscope images of an LCD cut
using the method of FIG. 1.
FIG. 3 is a scanned electron microscope image of a flex PCB
board trimmed according to the preferred embodiment of FIG. 1.
DETAILED DESCRIPTION OF THE PREFERRED EMBODIMENTS
FIG. 1 is a flowchart showing the steps in a preferred embodiment
of the LCD resizing process. First, at step 1, an initial functionality
test is performed consisting of illuminating the LCD and verifying
optical performance. Next, at step 2, a determination is made as to
the desired size of the display, based on the intended application. At
step 3, pressure sensitive tape is applied to the tops of both polarizers
for protection against glass particles generated during dicing.
According to an important aspect of the invention, at step 4, a
dicing wheel is used to cut through all layers of the LCD, including
the polarizers. The result of this cutting operation and consecutive
breaking is shown in FIG. 2, discussed in greater detail below. Contrary to the teachings of the prior art, the inventor has discovered
84
that by careful selection of the diamond particle size of the cutting

wheel, an appropriate depth and width of the groove are provided
which does not damage the polarizers or cause delaminating of the
LCD layers, thereby eliminating the prior art requirement of first
removing the polarizers.
According to a successful implementation, the cutting step 4 was
performed using a KandS 7100 dicing saw with a 10 mils thick diamond wheel. It was determined that diamond particles size should
be in range 40 70 microns. The use of lower particle size leads to
dicing wheel clogging and overheating of the LCD in the vicinity of
the cut. Diamond particles greater than 70 microns give rise to an
increase of the chip-out region.
Depth of cutting depends on glass thickness and mechanical
properties. It was determined that in order to achieve mechanical rigidity of the diced LCD panel for secure handling and easy
breaking, the depth of dicing should be different for the TFT and
color filter glass layers of the LCD. This result is achieved under
conditions that one of the glasses is diced to 30 40
Next, at step 5, UV laser cutting is performed for trimming the
PCB flex board. Normally, flex board is made of PVA materials
bearing densely populated narrow (.about.10 mils) copper conductive lines. A UV laser is used in the preferred embodiment to avoid
short circuits due to copper spreading during mechanical trimming
(i.e. machining of PVA requires UV irradiation).
At step 6, the sections of unwanted LCD and flex board are
broken and separated. In order to facilitate panel separation, it is
preferable that the breaking force be applied to the glass having the
shallower groove.
The remaining LCD is sealed with UV curable adhesive at step 7.
An additional UV curable sealant may also be applied for protection
against moisture. A final functionality test is performed at step 8,
similar to the initial test discussed above in connect ion with step 1.
The results of dicing and breaking of the LCD (steps 4 and 6)
are shown in FIG. 2 which depicts a vertical cross-section through
the cut LCD, from which there will be noted an absence of polarizer
10.1. US PATENT 7,161,651
85
and the other film residues on the diced areas of both glasses. Some
polarizer residues are evident sticking to the polarizer. However, the
presence of these residues does not affect LCD performance after
resizing
FIG. 3 is an image of a flex PCB board trimmed using a Spectraphysic.RTM. SSDP laser at 5 W power and 246 nm wavelength,
according to the preferred embodiment. Resistivity between two adjacent conducting lines after laser trimming was measured in excess
of 20 Megaohms.
The many features and advantages of the invention are apparent from the detailed specification and, thus, it is intended by the
appended claims to cover all such features and advantages of the
invention that fall within the true spirit and scope of the invention.
Further, since numerous modifications and changes will readily occur to those skilled in the art, it is not desired to limit the invention
to the exact construction and operation illustrated and described,
and accordingly all suitable modifications and equivalents may be
resorted to, falling within the scope of the invention.
86

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Intellectual Property

About the Book

To my mother and father who encouraged

2 Different Types of IP and Their Protection

4 Acquiring Patent Rights

5 Patent Prior Art Searches

7 Application for a Patent

8 Patent Examination and Granting Process

9 Post Patent Issues

Introduction to Intellectual Property

CHAPTER 1. INTELLECTUAL PROPERTY

has put into the creation of such properties.

1.2. PROTECTION OF IP RIGHTS

It is important to mention a word about the difference of a (new)

It is a reasonable question to ask by a novice why we need to protect

CHAPTER 1. INTELLECTUAL PROPERTY

a physical property such as a land or a building. For example, to

Title Deeds of Intellectual Property

As we know, conventional property ownerships are guaranteed by

1.2. PROTECTION OF IP RIGHTS

properties are, namely patents, copyrights, trademarks, Integrated

CHAPTER 1. INTELLECTUAL PROPERTY

Different Types of IP and

12CHAPTER 2. DIFFERENT TYPES OF IP AND THEIR PROTECTION

Copyright is an ownership right one gets when a literary work is

Trademark is a design of a word, an image or a combination of

14CHAPTER 2. DIFFERENT TYPES OF IP AND THEIR PROTECTION

ICT (Integrated Circuit Topographies)

This is a recent addition to intellectual properties. Integrated circuit

This is also a recent addition to intellectual property where as the

2.7. PROPRIETARY DATABASES

16CHAPTER 2. DIFFERENT TYPES OF IP AND THEIR PROTECTION

The Meaning of a Patent

A patent is a document that is given by the government endorsing

Irrespective of the different definitions of inventions by different

3.2. THE DURATION OF A PATENT VALIDITY

granting the patent is the revealing of the knowledge to the public

The Duration of a Patent Validity

Unlike conventional property which are owned indefinitely subject to

The Effective Geography of a Patent

Patent validly is limited to countries where patent applications are

in multiple countries. Those systems will be discussed in detail in

Patents Vs. Trade Secrets

The purpose of an ownership is to get some return on investment.

Acquiring Patent Rights

Patentable Subject Matter

Patentable subject matters are defined in every countrys national

CHAPTER 4. ACQUIRING PATENT RIGHTS

defined categories, then the subject matter is presumed patentable.

4.2. SUFFICIENT DISCLOSURE OF THE INVENTION

Similar or the same provisions exist in other jurisdictions and an

Sufficient Disclosure of the Invention

A mentioned earlier, the whole idea of grating patent rights by the

Patent - An Inventive Subject Matter

There are 3 core requirements for a revelation to be inventive. These

CHAPTER 4. ACQUIRING PATENT RIGHTS

These requirements are explained by using an example in the

Having described the patentability criteria, it is now possible to

4.4. PATENTABILITY TESTING

revelation is described in full with sufficient details. These are two

CHAPTER 4. ACQUIRING PATENT RIGHTS

Patentability requirement case study:

4.4. PATENTABILITY TESTING