BASICS of PATENTS

Tulika Rastogi
Associate
SKS Law Associates
 Presentation Map
Basics of a patent

Criteria of Patentability

What is not patentable

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 Basics of Patent

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 Need for Patent
Provides incentives to inventors – encourage innovation
By offering recognition
Material reward for marketable inventions
Currency for negotiations

 Transfer and dissemination of technology

Knowing the market

Knowing the internal strength

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 What is a Patent?
S. 2(1)(m) of the Patents Act, 1970

“A patent for any invention granted under this Act”

Granted for an invention – a product or process that

provides a new way doing something, or offers a new

technical solution to a problem.
Provides protection for the invention to the owner

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 Contd…
Exclusive right – granted by the Government in

exchange of sufficient disclosure of the invention

Protection for limited period - 20 years from the date

of filing/priority, whichever is earlier

Territorial protection

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 What is an Invention?
S. 2(1)(j) of the Patents Act, 1970 –

“means a new product or process involving an inventive

step and capable of industrial application”
Technical solution to a technical problem

Not necessarily a complex item

o Safety Pin – solved an existing “technical” problem.

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 Patents: Some Examples

Patents that have changed the world:

• Edison’s electric bulb - Patent number: US 223,898.
• Velcro® - Patented in 1951, when Swiss Engineer
George de Maestral took his dog for a walk.

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 Contd….
Patents for simple technologies:

o Post-it notes: invented by chance. Glue used in it was a

failure, however, creative use by the manager, made the
company change its portfolio from mining and
manufacturing to stationary

o 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.

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 Novelty

Inventive step
Criteria of
Patentability

Industrial
Applicability

Patentable Subject matter (r/w S.3,

4, 10(4)(d)(ii)(D))

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Patents Act, 1970

S.3, S. 4, S. 10 INVENTIONS
•Plants and animals
•Methods of treatment of
animals and humans
•Traditional Knowledge
•Computer program per se
•Business Methods
•New use of a known substance
Criteria of Patentability
•New form of a known substance

S.(2)(1) – invention
2(1)(ja) – inventive step
INNOVATIONS 2(1)(ac) – capable of industrial
application
 Novelty
New Characteristic

Not part of existing knowledge in the technical field

Not defined explicitly in Act

S. 2(1)(l) of The Patents Act, 1970 –

“new invention means any invention or technology which
has not been anticipated by publication in any document or
used in the country or elsewhere in the world before the date
of filing of patent application with complete specification,
i.e., the subject matter has not fallen in public domain or
that it does not form part of the state of the art”;

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 Contd…
Absolute Novelty - not published and used

anywhere
Relative novelty - not published anywhere and not

used in the country

Territorial novelty - not published and used within

the country eg. Bangladesh, Nepal

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 Exceptions
Invention published without the consent of inventor

(S.29)
Previous communication to govt. (S.30)

Display in an exhibition notified by the central govt.

Reading the paper before the learned society – grace

period 12 months (S.31)

Public working for reasonable trials (S.32)

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 Inventive Step (Non-obviousness)
S. 2(1)(ja) of The Patents Act, 1970 –

“means a feature of an invention that involves technical

advance as compared to the existing knowledge or
having economic significance or both and that makes
the invention not obvious to a person skilled in the art”

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 Contd…
A new characteristic of invention that could not be

easily presumed by an average person of that technical

field.
 Should overcome-long felt need.

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 Industrial Applicability
S. 2(1)(ac) of The Patents Act, 1970 –

“Capable of industrial application, in relation to an

invention, means that the invention is capable of being
made or used in an industry”

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 Contd…
Invention can be made or used in any kind of industry

Must have a practical use

Cannot be just an idea or theory

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 What are not inventions ?
Frivolous invention or which claims anything obviously

contrary to well established natural laws (S. 3 (a))

Invention contrary to public order or morality or causes

serious prejudice to human, animal or plant life or

health or environment (S. 3(b))
Mere discovery of a scientific principle or formulation

of abstract theory or discovery of any living or non-

living thing in nature (S. 3(c))

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 Contd…
 Mere discovery of new form of known substance or mere discovery of

any new property or new use for a known substance or new use of a
known process, machine or apparatus unless it results in a new product
or employs at last one new reactant (S.3 (d))
 Mere admixture or process for producing such substance (S.3 (e))
 Mere arrangement or rearrangement or duplication of known devices

each functioning independently of one another in known way (S.3 (f))

 Method of agriculture/ horticulture (S.3(h))

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 Contd…
Method of treatment of human beings or animals (S.3(i))
Plants and animals in whole or any part thereof excluding

micro-organisms and essentially biological processes for

production or propagation of plants and animals (S.3(j))
Mathematical or business method or computer program

per se or algorithms (S.3(k))

Literary, dramatic, musical or artistic work or any other

aesthetic creation (S.3(l))

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 Contd…
Mere scheme or rule or method of performing mental

act or method of playing games (S.3(m))

Presentation of information (S.3(n))

Topography of integrated circuits (S.3(o))

Invention which is traditional knowledge or which is

an aggregation or duplication of known properties of

traditionally known components (S.3(p))

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 Inventions Not Patentable
Inventions relating to atomic energy (S.4)

Referred to the Department of Atomic Energy

Decision is final

No appeal lies on the order passed by the

Department of Atomic Energy

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 Thank you
tulika@skslaw.org

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