dr. w.m. dhumane senior joint controller of patents & desings, patent office, mumbai e-mail:...
TRANSCRIPT
Dr. W.M. DHUMANE SENIOR JOINT CONTROLLER OF PATENTS & DESINGS,
PATENT OFFICE , MUMBAI
e-mail: [email protected]
IPR ADVANTAGE :
Recent Advances
Creation of Human Intellect
IPR- A Key component for success in Business
INTELLECTUAL PROPERTY
Knowledge Assets – Tradable Commodities - capital
IPR - “New wealth of Nations
Tool for Competitiveness
INTELLECTUAL PROPERTY
• Not just a tool of exploitation, but a tool of empowerment
• Knowledge-based economy Characterized by
creation, possession, utilization and proliferation
of knowledge assets • Countries which pay adequate attention to
innovation and protection of IPRs win in international competition;
• Knowledge assets are fast gaining importance over physical assets in Industry
INTELLECTUAL PROPERTY
• There will be no self-relied innovation without protection of IPRs.
• To protect IPRs is necessary for inspiriting domestic self-relied innovation
• To protect IPRs is to respect work, respect knowledge, respect talents and respect creation
• IPR is to encourage technological innovation and improve IP awareness of the whole society
Legislative Framework
Department of IP &P covers
Patents Act, 1970 (as amended in 2005);
Patents Rules, 2003(amended in 2006)
Designs Act, 2000 ; Designs Rules, 2001
Trade Marks Act 1999; Trade Marks Rules 2002Geographical Indications of Goods Act, 1999;
Geographical Indications of Goods Rules, 2002
The Protection of Plant Varieties and Farmers’ Rights Act, 2001 & Rules 2003
Department of Education covers
Copyrights Act 1957 (amended in 1999)
AREASAREAS
• PATENTS:- Inventions-Technical Solution to a Technical problem
• INDUSTRIAL DESIGNS:
- External features appealing to an eye- New Shape, Pattern or Configuration
• TRADE MARK:- A Visual Symbol as Word, Name, Logo,
Label etc- Applied on Article of Manufacture or Service - To indicate the origin of
manufacture/service.
• COPYRIGHT-
Artistic creation Proprietary right comes into existence as soon as the work is created
• GEOGRAPHICAL INDICATIONS
Identifies agricultural,natural or manufactured goods originating from a definite territory in India possessing special quality or reputation based upon unique characteristics of the geographical location
What is a Patent ?
• New (novel), if it does not form a part of state of the art
• Inventive Step -
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
• Capable of industrial application means- invention is capable of being made or used in any kind of industry
• A new product or process• involving an Inventive Step
and • capable of Industrial
application
• Patent is an exclusive monopoly right -
granted by Government of India for an Invention to the Inventor or his Assignee as a Territorial Right In lieu of Disclosure of invention to the Government Term of Patent: 20 years from date of filing
“ Arth Karicheye Vidhya’ (create wealth from knowledge) – Chanakya
“ Patents add fuel of interest to the fire of genius’ - Abraham Lincon
“Patents are like knowledge check posts on the Innovation Highway
Patent System - Objectives • To encourage inventions • Patents to be worked in India on commercial
scale and to the fullest extent without undue delay • Benefits to be available to the public at affordable price• Not granted merely to enjoy right for Importation• Not to impede protection of Public Health and Nutrition• Not to prohibit Govt to Protect Public Interest, specially in
sectors of vital importance for socio- economic and technological development of India
• Not to be abused by a patentee and to ensure that the patentee does not resort to practices which unreasonably restrain trade or adversely affect international transfer of Technology
• To give Mutual Advantage to Producers and Users• To ensure Balance of Rights and Obligations
INVENTIONS – NOT Patentable ( S. 3 & 4 )
• (a) An Invention Which is frivolous or which claims anything obviously contrary to the well established Natural Laws
• (b) Primary or intended use or commercial exploitation of which could be Ccntrary to Public order or morality or
which causes serious prejudice to human, animal or plant life or health or to the environment
• (c ) Mere Discovery of a Scientific Principle or Formulation of an Abstract Theory or discovery of any living thing or discovery of non–living substance occurring in nature
• (d) The mere discovery of a new form of a known substance which does not result in the enhancement of the known efficacy of that substance
INVENTIONS – NOT Patentable ( S. 3 & 4 )
• OR the 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
3 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.
• (e) A substance obtained by mere admixture resulting only in the aggregation of the properties of the components thereof or a process for producing such substance
• (f) Mere arrangement or re-arrangement or duplication of known devices, each functioning independently of one another in a known way
• (h) Method of Agriculture or Horticulture• (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
j) Plants & animals in whole or any part thereof other than micro- organisms, but including seeds, varieties and species and essentially biological process for production or propagation of plants & animals
(k) A mathematical method or a business method or algorithms or a computer programme per se
(l) A literary,dramatic, musical or artistic work or any other aesthetic creation including cinematographic work and television productions
( m) A mere scheme or rule or method of performing mental act or method of playing game
n) Presentation of information
O) Topography of integrated circuits.
p) An invention which, in effect, is the
Traditional Knowledge or an aggregation or duplication of known properties of traditionally known component or components
Section (4) : Inventions relating to atomic energy falling within the section 20(1) of the ATOMIC ENERGY ACT, 1962.
Patent Grant ProcedurePatent Grant Procedure
Filing of patent application
Early Publication Publication after 18 months
Opposition By Third Party Representation ( Pre Grant
Opposition) Request for examination
Examination: Grant or Refusal
Publication of Grant of patent
Opposition to the patent (Post Grant Opposition)
Decision By Controller
NOVELTY
RELATIVE NOVELTY
ANTICIPATION
[MEANS CHALLENGE TO NOVELTY OF CLAIMED INVENTION ]
PRIOR PUBLICATION PRIOR CLAIM PRIOR
worldwide in India PUBLIC USE in India
PATENT LITERATURE
NON-PATENT LITERATURE
The invention should be new [novel] to the public on the date of filing the application or on a priority date
NO ANTICIPATION
NO ANTICIPATION, if the invention is :• Published in pursuance of application filed
before 1-1-1912 OR
• Obtained from the applicant and published without his consent OR
• Communicated to the Govt for investigation purpose OR
• A) Displayed / exhibited /used with the consent of inventor at an industrial or other exhibition, notified by Govt and / or
published as a consequence thereof OR
B) RESEARCH PAPER on invention read by the inventor before a learned society and/ or published with the
consent of the inventor in transactions of such society
Andthe application for patent is filed
within twelve months from such display / exhibition / reading / publication
• Prior Use-
• if publicly worked in India only for the reasonable trial
which was reasonably necessary and
• An application for patent is filed within one year from the date of such trial
• Used/published in India or elsewhere after filing Provisional /Conventional Application
Inventive Step
• When the invention is just an automatic or obvious extension of Prior Art, the invention lacks in inventive step.
• To judge the inventive step, the question to be answered is-
“ Would a person with ordinary skills in the art have thought of the alleged invention?
• If the answer is No, then the invention is non- obvious
• The question -“ Is there an inventive step “? arises only if there is novelty
Inventive Step
• It is not enough that the invention is novel i.e.,difference exists over the state of art, but that this difference must be substantial and significant
• For constituting an Inventive Step, Prior Art as a whole is to be considered.
Thus, the subject matter is compared with combination of publications or other disclosures , unlike in novelty
Single Inventive Concept
• Patent is granted for - A single invention or group of inventions , linked so as to form a single inventive concept and there is a technical relationship among those inventions
• There may be number of independent claims in the same or different categories
• The common Single technical feature must be inventive enough to fulfill the requirement of non-obviousness
Sufficiency of Disclosure
• Application must disclose the invention
as a whole,
in a sufficiently clear and complete manner, to enable the person skilled in the art, to whom the
invention relates , to make and use the invention
• The skilled person may use his common general knowledge to supplement the invention
• He is not expected to carry out comprehensive search to obtain further details and
• He should be able to reproduce the claimed step using information given in the application without any inventive efforts
INDIAN PATENT SCENARIO
Pre- Modernization Scenario:
• Legislative limitations, Limited Scope for patenting ,
• Limited Patent Term• Patent Act not in tune with global scenario• Lack of proper search facility• Long Delay in Processing and Grant • Processing totally Manual• Lack of Trained Manpower • Lack of proper Infrastructure and Logistic• Lack of computerized environment • Low awareness• Low Filing
Patenting …Now
Patent Act totally revamped:Running the Race Successfully
• Patentability Criteria• Publication & Examination• Processing simplified; No of forms reduced• Patent Term• Compatibility in global atmosphere• Meeting rights and Obligations
Patents Act ( As amended), 2005 - Salient Features
Enacted w.e.f.1-1-2005
Both product and process patent provided.
Publication of applications after 18 months with facility for early publication.
Examination on request.
Both pre-grant and post-grant opposition.
Fast track mechanism for disposal of appeals.
Provision for protection of bio-diversity and traditional knowledge.
Term of patent: 20 years
Substantially reduced time-lines.
Safeguards for Users and Society in Patents Law (1)
• Concerns : Public health, national security and
public interest
• No ever greening: No patent for a new use of a known drug
or substance (Section 3):
• Compulsory licences (Section 84) : Availability of
products at reasonable price ensured
• Special Provision of Compulsory license during
national emergency, extreme urgency or public non-
commercial use (section 92) to ensure availability of
drugs at reasonable prices.
Safeguards for Users and Society in Patents Law(2)
• Government use of Patents for public purpose : Compensation by mutual agreement between the Government and patent holder failing which by the High Court (Section 102)
• Revocation for Patent for non-working of the patented invention ; not being available to the public at reasonably affordable price (Section 85).
• Revocation of Patent by the Government in public interest (Section 66)
• Bolar provison (Section 107). : facilitates availability of generic version of the patented product at competitive prices immediately on expiry of the patent.
• Patent can be revoked in the interest of security of India (Section 157 A).
BENEFITS OF PATENTS TO PANTENTEE - BENEFITS OF PATENTS TO PANTENTEE - II
• Exclusive Right-
to make, use, exercise, sell or distribute an Invented Article or Process in India.
• Right can be shared , licensed or sold • Right to initiate Legal Proceedings against Infringement.
• The Invention can be commercially exploited without fear of copying,imitation or unauthorised use during Term of Patent.
BENEFITS OF PATENTS- IIBENEFITS OF PATENTS- II
Published patent specifications: An ocean of scientific Knowledge and technological information
Patented inventions - Open to public for free use after the term expires or ceases to be in force
Avoids duplication of Research and acts as a stepping Stone for further Research.
“You need not reinvent the wheel”
Patents give valuable guidance for- Planning R & D Planning strategic protection for IP- assets Forging strategic alliances Identifying possible collaborators /competitors
Benefits of PatentsBenefits of Patents III
• Helps industry to improve existing technology to give cheaper and better products
• Identifies emerging technologies, research areas
and business opportunities • Patent Portfolio- Measure of Company’s Success
• Tool for increasing negotiating power
• Establishes as a Pre-eminent Player in the market
• Patent - A Tool for International Trade
Modernization of IPOFocus
• Physical infrastructure Development • Human resources Strengthening • Computerization • RE-engineering of IP-procedures• IP Promotion & Awareness• Updating Search Facilities; Patent Databases • Dissemination of IP data• IP- Manuals being finalized• Updating basic Services• IPO-functioning transparent, user-friendly and speedy.
Patent Office
RECS
IPOJRMID
E&G GPMGPM
Tech G-4
Tech G-3
Tech G-2
Tech G-1
RMID-4
RMID-3
RMID-2
RMID-1
RECS-3
RECS-2
RECS-1
GPM-3
GPM-3
GPM-2
GPM-2
GPM-1
GPM-1
New Patent Office Procedure
Comparative Trends of IPRs Granted/Registered
34
Year2004-05 2005-06 2006-07 2007-08 2008-09
Patents
1911 43207539 15316 16061
Designs
3728 41754250 4928 4772
Trade Marks
45015 184325
109361 100857 102257
G.I.R.3 24 3 31 45
Patenting Activity In India
• Myths about patents• Concept- knowledge is not a tradable commodity• Insufficient institutional infrastructure • Inadequate focus during project planning and
execution • Pro-reverse engineering mindset • General complacent attitude• Temptation to acquire short term gains • Professional and financial insecurity • Major part of R&D being in Govt sector• Less emphasis on IPR- oriented research in PROs• Lack of Public awareness
Must Do…• Promote Cultivation of IP Culture• Increase Capacity to Create IPRs• Encouraging IP- Commercialization and Utilization• Expediting Development of Legal System for IP• Strengthening IP- Administration, examination and
registration• Formulate and implement region and industry-specific
strategies on IP• Strengthen IP-information dissemination and
international cooperation• Enhance professional training so as to raise the
competence
Strong Academia - Industry partnership
• Leads to Economic value addition to S&T• Academia ought to unlock the innovation potential of its
knowledge base• Academia-industry should move to long term trust-
based relationship• Collaboration should address the gaps between R & D
and market ; undertake cooperative programs with industry
• Industry should be involved at an early stage in Technology Development and R&D project implementation
• Successful Enterprises should integrate R&D (in-house / outsourced) in their long term corporate strategy
www.ipindia.nic.in
Vision
“To transform Indian IPO by 2012 into a World class Organization through adoption of transparent, automated, customer friendly procedures
assuring time bound quality services”