Analyzing Patentability of Inventions

Kalyan Kankanala kalyan@brainleague.com Blog: www.sinapseblog.com Books: www.kalyankankanala.com

Brain League IP Service -2007

Patentability requirements
Patentable subject matter Industrial Applicability Novelty Inventive Step Specification

Brain League IP Service -2007

Patentable Subject Matter

Product or Process - Section 2(1)(j)
Computer Program Genetically modified pig Business method Massage technique
Brain League IP Service -2007

Exclusions
Section 3(d)
New form Efficacy New property or use Mere use of known process New product New reactant
Brain League IP Service -2007

Exclusions
Explanation: Salts, Esters, Ethers, Polymorphs, Metabolites, Pure forms, Particle size, Isomers, Mixture of isomers, Complexes, Combinations and other Derivatives of a known substance considered same substance Efficacy Novartis case

Brain League IP Service -2007

Exclusions
Plants, Animals and Parts (Section 3(j)) Computer Programs Per Se (Section 3(k) Medical Methods (Section 3(i)) Traditional Knowledge (Section 3(p))

Brain League IP Service -2007

Example
Kodi identifies and inserts a gene in a hen which leads to the increase in the output of eggs, sixty luminiscent eggs per month). He is interested in getting a patent on his invention.
Can he get a patent and if yes, on what?
Brain League IP Service -2007

Example
Som develops an android application for assessing the mood of the caller. The app has automated systems for rejecting calls of bad mood callers. It also can recognize cold callers.
Patentable?
Brain League IP Service -2007

Example
Kini, a house wife and follower of Baba Ramdev, develops a method of performing yoga that will help astronauts adapt to low gravity environments. She wishes to file for a patent in India.
Will there be any issues with patentable subject matter?

Brain League IP Service -2007

Example
Coconut Nair inherits traditional knowledge with respect to ayurvedic formulations for improving immunity and promoting healthy living from his ancestors. After researching on the formulations, he isolates active ingredients from three of the formulations and prepares tablets for enhancing immunity.
Is his invention patentable subject matter?
Brain League IP Service -2007

Industrial Applicability
Section 2(1)(ac) - Capable of Industrial Application Make Use Repeat
Industry
Brain League IP Service -2007

Industrial Applicability
Neo invents a method of making a dog jump on four legs.
Helen invents a method of eloping based on adverse conditions.

Brain League IP Service -2007

Novelty
Section 2(1)(l) - New Invention
Prior Publication Public Knowledge Public Use On Sale Public Display Public Working Brain League IP Service -2007

Inventive Step
Section 2(1)(ja)
Technical Advance or Economic Significance and

Not obvious to a person skilled in the Art.

Brain League IP Service -2007

Secondary Indicia
Commercial Success Copying Praise by expert Unexpected results Long felt need

Brain League IP Service -2007

Example
Invention
Chair with Wheels Prior Art

Chairs Tables with wheels

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Example
Invention
Stent coated with Taxol Prior Art

Stents Many Anti-cancer agents including Taxol

Brain League IP Service -2007

Specification
Section 10
Written Description Enablement Best Mode Claims Object: Notice and Dissemination Brain League IP Service -2007

Example
The invention relates to a composition comprising Ginger, Radish, Celery and Black seed for enhancing male fertility. Prior art
Independent use of Ginger, Radish, Celery andBlack seed as Aphrodisiac and Spermatogenic in Ayurveda and Unani systems of medicine.
Brain League IP Service -2007

Thank you
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Brain League IP Service -2007