Patents

What is INNOVATION?
1. A New Idea, Method or Device
2. The Introduction of Something New
(Encyclopedia Britannica)

Technology-Push Linear Model of Innovation

Basic Research
Applied Research
Invention
Development
Production
Marketing

Innovation
To innovate may be expensive
(investments in R&D)
High degree of uncertainty and risk
associated to the innovation process
Requires skilled labour

Innovation
But:
Prevents technological dependence
Research to meet actual needs
Process innovation: to save capital
and/or labour, gains in productivity
Product innovation: introduction of
new (better, more efficient) products

What is a patent
Exclusive Right that is granted to an
inventor for an invention that is new,
involves an inventive step and is
capable of industrial application.
Exclusive right to prevent or stop
others from making, using, offering
for sale, selling or importing a product
or a process

 Valid for 20 years from the date

of filing
Territorial right
Disclose the invention
detailed, accurate and complete
written description

Patentability Criteria

Novelty
Inventive Step
Industrial Applicability
Patentable Subject Matter

Types Of Patents

Product patents

Process patents

Some famous Patents

Patent No.: US
223,898. Edisons
electric bulb
Patent No.: US
174,465.
Alexander Graham
Gells telephone

 Nine months before their successful

flight in December 1903, the Wright
Brothers filed patent application for
their flying machine

Patents for simple low/tech products

The inventor licensed the system for
opening Coca-Cola cans at 1/10
of a penny per can. During the period
of validity of the patent the inventor
obtained 148,000 UK pounds a day on
royalties.
Post-it notes: invented by chance, initially
ignored by inventors but valued by the
manager

What can be patented

The claimed invention:
Consists of a patentable subject matter
Is new (novelty requirement)
Is capable of industrial application
(Utility requirement)
Is disclosed in a clear and complete
manner

How is invention new

If it does not form part of the prior art
Prior art any technical knowledge
available to public anywhere in the world
patents, patent applications and nonpatent literature
Publication in a scientific journal,
presentation in a conference, use in
commerce or its display in a companys
catalogue
Prevent accidental disclosure

Inventive step
It is non obvious to a person
skilled in the art, i.e., the same
technical field; involves technical
advance as compared to existing
knowledge; has economic
significance or both

Capable of Industrial
application
Cannot be a mere theoretical
phenomenon
Must be useful and provide some
practical benefits

Disclosure requirement
Sufficiently clear and complete to
be carried out by a person skilled in
the technical field.
The inventor must disclose the best
mode for practicing the invention.
In biotechnology inventions,
microorganisms have to be deposited
at a recognized depository institution .

Scope of Patentability
Under
The Patents Act

Section 3 exclusions
Section 3(a)
Frivolous inventions
Inventions contrary to well
established natural laws
Examples
Machine that gives more than 100%
performance
Perpetual machine

Section 3 exclusions
Section 3(b)
Commercial exploitation or primary
use of inventions, which is
Contrary to
public order or
Morality
Examples
Gambling machine,
Device for house-breaking

Section 3 exclusions
Section 3(b)
Commercial exploitation or primary use
of inventions , which
Causes serious Prejudice to
health or
human, animal, plant life or
to the environment
Examples
Biological warfare material or
device, weapons of mass
destruction
Terminator gene technology
Embryonic stem cell

Checks and Balances

Section 3(b)
Excludes patents on
GMOs
(genetically
modified
microorganisms) exploitation of which could be
contrary public order or morality or
prejudicial to human, animal or plant life or
health or to the environment
Effect: Only genetically modified microorganisms (GMOs) which do not fall under
section 3 (b) are patentable.

Section 3 exclusions

Section 3 ( c )
Mere Discovery of a Scientific Principle or
formulation of an Abstract Theory or
discovery of any living thing or
discovery of nonliving substance occurring
in nature

Examples :
Newtons Laws
Superconducting Phenomenon as such
Property of certain material to withstand
mechanical shock
Discovery of micro-organism
Discovery of natural gas or a mineral

Checks and Balances

Section 3(c)
Excludes patents on
Naturally occurring Micro-organisms
Effect
Genetically modified microorganisms
(GMOs) are however, patentable

Section 3 exclusions
Section3 (d)
Mere discovery of any new property
or new use for a known substance
or of the mere use of a known
process, machine or apparatus,
unless such known process results
in a new product or employs at
least one new reactant.
Examples
New use of Aspirin for heart
ailments,
Mere new uses of Neem

Section 3 exclusions
Section3 (d) Explanation
For the purposes of this clause,
salts, esters, ethers, polymorphs,
metabolites, pure form, particle size,
isomers, mixture of isomers,
complexes, combinations and other
derivatives of known substances
shall be considered to be the same
substance, unless they differ significantly in
properties with regard to efficacy.
Examples
Crystalline forms of known substance

Section 3 exclusions
Section 3(e)
Substance
obtained
by
mere
admixture
resulting only in the aggregation of the
properties of the components thereof or a
process for producing such substance
Examples
Combiflam
[Paracetamol
(Antipyretic)
+
Brufen (analgesic)]
Solution of sugar and color additives in water
to form a soft drink

However, A mixture resulting into synergistic

properties of mixture of ingredients however,
may be patentable
- Soap, Detergents,
Lubricants etc

Section 3 exclusions
Section 3(f)
Mere arrangement or re-arrangement
or
duplication of known devices,
each functioning independently of
one another in a known way
Examples
A Bucket fitted with torch,
An Umbrella with fan
A Clock and radio in a single cabinet
A flour-mill provided with sieving

Section 3 exclusions
Section 3(h)
Method of Agriculture or Horticulture
Examples
Cultivation of algae
Producing new form of a known plant,
Preparation of improved soil
However,
Agricultural Equipments are patentable

Section 3 exclusions
Section 3(i)
Any process for medicinal, surgical,
curative,
prophylactic,
diagnostic,
therapeutic or other treatment of
human beings or a similar treatment of
animals to render them free of disease
or to increase their economic value or
that of their products

Examples
Removal of cancer tumor
Removal of dental plaque and carries
Surgical processes
Processes relating to therapy
Method of vaccination
Blood transfusion
However,
Treatment performed on tissues or fluids
permanently removed from the body
Surgical, therapeutic or diagnostic apparatus
or instruments are patentable

Section3 exclusions
Section 3(j)
Plants & animals in whole or any
part thereof other than microorganisms,
but
including
seeds,
varieties and species and essentially
biological process for production or
propagation of plants & animals

Checks and Balances

Section 3(j)
Examples
Clones and new varieties of plants
A process for production of plants or
animals if it consists entirely of natural
phenomena such as crossing or
selection
Essentially biological process

Section 3 exclusions
Section 3(k)
* mathematical method or
* business method or
* algorithms or
* computer programme per se
Examples
Computer program by itself or as a record on
a carrier
However
New calculating machine
combination of hardware and software is
patentable

Section 3 exclusions
Section 3(l)
A literary, dramatic, musical or artistic
work or any other aesthetic creation
including cinematographic work and
television productions
These subject-matters fall under the
copyright protection

Section 3 exclusions
Section 3(m)
A mere scheme or rule or method of performing
mental act or method of playing game
Examples
Scheme for learning a language
Method for solving a crossword puzzle,
Method of learning a language
Method of teaching /learning
However,
Novel apparatus for playing game or carrying
out a scheme is patentable

Section 3 exclusions
Section 3 (n)
Presentation of information
Examples
Any manner or method of expressing
information whether by
spoken words
visual display
symbols
diagrams
Information recorded on a carrier

Section 3 exclusions
Section 3(o)
Topography of integrated circuits

Examples
Mask works - circuits layout

Section 3 exclusions
Section 3(p)
Inventions which are Traditional
Knowledge or an aggregation or
duplication of known properties of
traditionally known component or
components

Examples
Traditional Knowledge already in public
domain
- Wound healing property of Haldi
However,
Any
value-addition
using
Traditional
Knowledge leading to a new process or
product ,which is novel with inventive step
and industrial applicability,
Extraction of Azadirachtin from Neem - can
be patented

Non Patentable inventions

Section 4
Inventions falling within
Section 20(1) of the
Atomic Energy Act, 1962 are not patentable

Effect
Inventions relating to compounds of Uranium,
Beryllium,
Thorium,
Plutonium,
Radium,
Graphite, Lithium and more as notified by
Central Govt. from time to time.

Patent or not to patent

Strictly a business decision
Is there a market for your invention
What are the alternatives to your invention, and how do
they compare with your invention
Are there any potential licensees or investors
How valuable will be invention to your business and your
competitors
Is it easy to `reverse engineer your invention
Do the expected profits from exclusive position justify the
costs of patenting
What aspects of the invention can be protected by one or
more patents
Will it be easy to identify violation of patent rights enforce

 Surface Processing Limited surface

technology to remove grease, paint or
rust on metallic components
Trade Secret for a long time
UK market stagnates
Apply to plastic as well
Global market license negotiations patents

How to get a patent

Prior Art Search 40 million patents,
millions of printed publications serious
risk that some reference may render your
invention non-novel or obvious.
Prior Art patentability search can prevent
from wasting money and time on a
patent application
Patent information is a unique source of
classified technical information
Useful for strategic business planning
Patent database available online

 Importance of patent databases:

The R & D activities of current and future competitors
Current trends in a given field of technology
Technologies for licensing
Potential suppliers, business partners or researchers
Possible market niches at home and abroad
Freedom to Operate your products do not infringe
others
Relevant patents that have expired and technology
that has come into the public domain
Possible new developments based on existing
technologies

Procedure for registration of

Patents in India
Types of patent applications in
India

Ordinary Application
Application for patent of addition
Divisional Application
Convention Application
National Phase application under PCT
(Patent Cooperation Treaty)

Filing and Prosecution

Territorial Limits Delhi, Calcutta,
Mumbai & Chennai
Right of priority
Publication
The application is published after 18
months of filing. Provisional Rights
from the date of publication
Can request for early publication
Request for examination within 48
months of filing or priority date

 First Examination Report (FER) issued

by the Controller
Objections to be met with, within 12
months of FER
Patent granted
Opposition
Pre-grant - after publication
Post- grant Within one year of grant

Filing Abroad
Two Options
Convention Application within 12
months of filing in India, can file the
same application in as many
convention countries
Signatories to the Paris Convention
for the Protection of Industrial
Property

PCT (Patent Cooperation

Treaty) Applications
Administered by WIPO
Around 140 countries are
members
Begins with International
Phase and ends with National
Phase

International Phase of a PCT

application:
Apply with priority of an Indian
Application, within 6 weeks to 1 year
of filing;
or directly with India as receiving
office;
or directly to International Bureau (IB)

 International Bureau (IB) issues an

International Searching Authority
(ISA) within 9 months issues
International Search Report
Written opinion Patentibility:
novelty, inventive step & industrial
applicability
Application published by the
International Bureau at 18 months along
with the ISR.

 Request for examination to

International Preliminary
Examining Authority and get an
International Preliminary
Examination Report (IPER) within 22
months of date of filing
IB issues an International
Preliminary Report on Patentability
(IPRP) based on ISR or ISR and IPER.

National Phase
Entry into `regional offices where the
applicant wishes to register a patent
At 30/31 months from filing or
priority date
Follow the patent procedure of the
respective country

 Advantages:
With one application one can file in
nearly 141 countries.
Get time of 30/31 months to explore
markets.
IPRP gives a fair idea of chances of
getting patent in other countries.
Saves a lot of expense.

Rights Granted by Patents

Right to exclude others
Not `freedom to use maybe overlap
with other patents - need to obtain a
license
Other clearances may be required for
commercializing
The person who conceives the invention is
the inventor, whereas the person (or
company) that files the patent, is the
applicant, holder or owner of the
patent

 Employee Inventions
Most countries the rights are
automatically assigned to the employer
Employment contract
The inventor may retain the rights to
exploit the invention, but the employer is
given a non-exclusive right to use for
internal purposed (shop rights)
Independent Contractors
Independent contractors hold the rights,
unless a written agreement to the
contrary

 Joint Inventors
More than one person contributes in a
significant way to the conception and
realization of an invention, they are joint
inventors
Joint owners
Co-owners have 100% share each in the
invention, but no single co-owner may
license or sue third parties for infringement
without the consent of the others

Cost factors
Depends on the nature of invention, its
complexity, attorneys fees, the length of the
application and objections raised by the patent
office
Prior art search
Official filing fees
Patent agents fees patentability opinion, draft
the patent application, prepare the formal
drawings and correspond with the patent office
Maintenance or renewal fees
Filing abroad relevant filing fees, translation
costs and costs of using local patent agents
Deposit of the micro-organism or biological
material fees for filing, storage and viability
testing of the deposited material

When to file
As soon as you have all information required for
drafting
Patents granted on first - to - file basis, except USA
first to invent
Applying early useful if you are seeking financial
support or wish to license your invention
However not to file in a rush
It is important not to disclose the invention before
filing
Sign a non disclosure agreement
Some countries allow a `grace period of 6 12
months disclosed in an exhibition, trade show,
published in a technical journal or company catalogue
Provisional application

Structure of a patent
application
Determines the legal scope of the invention
Describes the nature of the invention,
including instructions to carry it out
Gives details of the inventor, the patent
owner and legal information
Consists of background of the invention,
description, claims, drawings (if necessary)
and an abstract. It could be anywhere from
a few pages to a few hundred pages
It takes normally 2 5 years to obtain a
patent

Date of protection
Rights effectively begin on the date it is
granted
In some countries, sue the infringer after
grant if infringement occurred between
the dates of publication and grant
Can claim reasonable compensation
Label with `Patent Pending or `Patent
Applied For
Protection for 20 years from the date of
filing

Powertex, integrates
solar cells
into
textiles

Process patent for

making thermoplastic
polyester

US 6,887, 806, cut

resistant fabric for
protective textiles
elongated steel

BUZZ OFF
Insect shield garments
Synthetic version of a natural insect repellent
Permethrin woven into the fabric
Lasts for 25 washings
Can be ironed, starched, pressed but not dry
cleaned
Patent pending

IPR Legal Remedies in

India
Patent Infringement
Suit can be filed in High Court for infringement
Patentee, licensee, assignee and co-owners
may sue
The person who infringes (manufacturers,
importers and dealers, their agents), who
threatens to infringe, consignee, directors of a
company, joint tort feasor may be sued
Reliefs (a) Injunction (b) either damages or
an account of profits or grant any other relief
the infringing goods may be seized or
destroyed

Patent Revocation
Can be revoked on a petition by a
person or the Central Government
to the Appellate Board
On a counter claim in a suit for
infringement of the patent by the
High Court

 Ergonomic garments more three

dimensional fit than conventional garments
US Patent No. 6421831
Inventor : Korff Rikke
Assignee: Levi Strauss & Co.

 GRINDI SRL. an Italian Anna Grindi seamstress

invented Suberis an innovative fabric made
of cork which is soft, scratch resistant, water
proof, heat insulator, fire resistant, colorable,
printable fabric now used for clothing,
footwear and sportswear

 Rohner Textil AG Swiss textile

manufacturer with green design Guru
William McDonough created Climatex
Lifecycle a fabric `good enough to
eat