LEGAL ASPECTS OF PATENTS

An overview

R.KUMARAVENKATESAN B.Pharm., M.L (IPR)

Owned by a person

Registered under an authority

Claimed / prevent others from claiming

Assignable, transferable, mortgageable

PROPERTY

TANGIBLE PROPERTY MOVABLE PROPERTY IMMOVABLE PROPERTY INTANGIBLE PROPERTY RIGHT TO INDIVIDUL REPUTATION INTELLECTUAL

PROPERTY

PROPERTY

INTELLECTUAL PROPERTY RIGHT

INTELLECTUAL- CAPACITY,CREATIVITY,IDEA,KNOWLEDGE,

PROPERTY- OWNED,REGISTERED,POSSESSED RIGHT- CLAIMED,EXERCISED,EXPLOITED

THE RIGHT ASSOCIATED WITH THE IDEA OR CREATION OF MIND WHCH IS APPLIED,

OWNED AND EXPLOITED BY A PERSON

1. Patent2. Trade marks3. Design4. Copyright5. Integrated circuits and layout designs6. Geographical indications7. Plant varieties and farmers rights8. Trade secrets and confidential information

INTELLECTUAL PROPERTY RIGHTS

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INTELLECTUAL PROPERTY CLASSIFICATION

INDUSTRIAL PROPERTY

LITERARY PROPERTY PATENTS

TRADE MARKS

DESIGNS

INTEGRATED CIRCUITS AND LAYOUT DESIGNS

COPY RIGHTS

NEIGHBOURING RIGHTS

PERFORMERS RIGHTS BROADCASTING

REPRODUCTIONRIGHTS

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Knowledge of patents- WHY

Enhances my employment opportunity

i. I can register my own invention

ii. I can commercially exploit my own patent

iii. It is an official record of my inventor ship

iv. It shows my intellectuality to the world

v. It is a record of my achievement or success

vi. It differentiates me and distinguishes me.

PATENT-Industries concerned, a few

Device, apparatus, process, method of manufacture, or composition of matter concerning to All the fields of engineering and technology Fertilizers, chemicals, bulk drugs, drug formulations Food products and nutritional supplements Software with hardware, architectural works Products of biotechnology (subject to exceptions)

Patent definition Latin term patere, "to lay open" (i.e., to make available for public

inspection), In English term letters patent, royal decree granting

exclusive rights to a person. Patents in the modern sense originated

in 1474, in the Republic of Venice

A patent is a form of intellectual property. It consists of a set

of exclusive rights granted by a government to a true and first inventor

or their assignee for a limited period of time in exchange for the public

disclosure of an invention.

Patent is an exclusive right granted to a person who has invented a

new and useful article or an improvement over an existing article.

NEED FOR THE PROTECTION OF PATENTS

Encouragement Inducement Reward Transfer and dissemination of technology Commercial exploitation by the inventor Preventing others from exploiting the right Healthy competition Development of a nation Reveal the intellectual capability of the inventor

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Patent right

Exclusive right(monopoly) Granted for a limited period of time Territorial in nature Assignable, licensable, transferable and mortgageable

right Proprietary right Legally enforceable Registrable before a competent authority Commercially exploitable

I P LEGISLATIONS IN INDIA

1. PATENTS ACT , 1970

2. TRADE MARKS ACT, 1999

3. COPY RIGHT ACT , 1957

4. DESIGNS ACT , 2000

5. SEMICONDUCTOR INTEGRATED CIRCUITS AND LAYOUT DESIGNS ACT, 2000

6. GEOGRAPHICAL INDICATIONS OF GOODS (REGISTRATION AND PROTECTION) ACT,1999

7. THE PROTECTON OF PLANT VARIETIES AND FARMERS RIGHTS ACT,2001

Need for the protection of Patents Encouragement Inducement Reward Transfer and dissemination of technology Commercial exploitation by the inventor Preventing others from exploiting the

right Healthy competition Development of a nation Reveal the intellectual capability of the

inventor

Persons entitled to apply for patents

True and first inventor

Assignee of the true and first inventor

Legal representative of any deceased person who immediately before his death was entitled to make such application

Rights of patenteeAn exclusive right over the patented product / process to;

a) Manufacture

b) Use

c) Offering for sale, selling or importing in to India for sale

d) Prevent others from make, use, sell, import the patented

product / product directly obtained through that patented

process and commercially exploiting the patent.

e) Assign, transfer and issue license

f) Surrender the patent and Sue in case of infringement

g) Claim remedies upon proving the infringement

Inventions  patentable includes.. Art(technology), Process, Method of manufacturing;

Machine, apparatus, instrument or other Articles;

Substances, compositions or formulations produced by Manufacturing process;

Computer Software to be applied in a Technical application to Industry or programmed in a hardware

Food products / Chemicals / Medicines and bulk drugs/ fertilizers

Patentability Patentability is the ability / character of the invention to make itself eligible for a grant of

patent by the patent offices. The criteria of eligibility includes;

1. Novelty

2. Inventive Step

 3. Industrial Applicability

4. Utility and in addition

5. The invention should not fall under the category of inventions ‘INVENTIONS NOT PATENTABLE’ mentioned under Sections 3 and 4 of the Patents Act,1970

Patentability - novelty

it does not form the state of the art it has not been described orally it has not been published before the date of filing the patent

application  It has not been used before the date of filing the patent application

Patent can be granted for a

A NOVEL PROCESS FOR A KNOWN PRODUCT-PROCESS CLAIM

A NOVEL PRODUCT BY A KNOWN PROCESS- PRODUCT CLAIM

A NOVEL PRODUCT BY A NOVEL PROCESS-PRODUCT PROCESS CLAIM

Patentability-inventive step Technical advance as compared to the existing

knowledge or Having economic significance or Both technical advance and economic significance and All the above mentioned features makes the invention

non obvious to a person skilled in the art.”

Besides the above features the invention can able to be manufactured in an industry and It must possess utility ( usefulness) to the mankind

 

Frivolous or obvious and contrary to natural laws Contrary to public order or morality or prejudicial to human,

animal or plant life and health or to the environment. Mere discovery of the scientific principle or the formulation of

an abstract theory or discovery of any living thing or non-living substances occurring in nature

Mere discovery of new form of known substance without any enhancement in the efficacy new property or mere new use for known substance or the mere use of a known process, machine or apparatus-unless the known process results to new products or employs atleast one new reactant.

Mere admixtures of substances.

Inventions not patentable

Inventions not patentable

Mere arrangement / rearrangement or duplication of known devices functioning independently in a known way.

Method of agriculture and horticulture;

Any process for the medicinal or surgical, curative prophylactic, diagnostic, therapeutic or other treatment of human beings, animals to render them free of disease or to increase their economic value or that of their products;

Plants and 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 and animals;

A mathematical or business method or algorithms.

Inventions not patentable

literary, dramatic and musical works and aesthetic creations

including cinematography and television production.

Method for performing mental act or playing game.

Presentation of information.

Topography of Integrated Circuits.

Invention which in effect, is traditional knowledge or which is an

aggregation or duplication of known properties of traditionally known

components.

Inventions relating to Atomic Energy.(Sec.4)

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PATENTING IN COMPUTER SCIENCES

COMPUTER BASED INVENTIONS

SOFTWAREPROGRAMMES

SOFTWARE APPLIEDSYSTEM/MACHINE HARDWAR

E

NEEDS TO BE DISCUSSED PATENTABLE PATENTABLE

PATENT AGENT

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A Patent agent is a registered person with Indian Patent Office whose name is entered in the patent agent register after being declared qualified the patent agent examination conducted by the patent office and who is entitled—

(a) to practice before the Controller; and(b) to prepare all documents, transact all business and

discharge such other functions as may be prescribed in connection with any proceeding before the Controller under this Act.

Knowing the invention inside and out does not qualify the inventor to write and prosecute an effective patent

application.

Filing of patent applicationApplication for grant of patent in Form 1;

Complete patent specification in Form 2;

Two sets of the drawing figures, if any,

Duly stamped power of attorney in Form 26 authorizing the agent;

Declaration of the inventorship signed by the applicant in Form 5;(where provisional specification is followed by complete specification or in case of convention application.)

The Statement and Undertaking regarding foreign filings in Form 3;

Abstract of the invention

Proof for the applicant’s right to apply for patent and the priority details. (if priority is claimed) and Fee in cash/by local cheque/by demand draft.

Provisional specificationBrief description of the invention

Claims are not necessary

To establish the earliest ownership to the invention

To obtain priority date for the invention

Allows a period of 12 months to file the complete specification (Any modification , addition or improvements to the invention can be made within the period of 12 months after the filing of provisional specification)

Not applicable in case of convention application and PCT application

COMPLETE SPECIFICATION

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A typical patent specification has the following sections:

1.Title of invention;

2.Field of invention;

3.Background of invention

4.Object of invention;

5.Statement of invention;

6.A summary of invention;

7.A brief description of the accompanying drawing;

8.Detailed description of the invention

9.Claim(s); and 10.Abstract.

Patent prosecution - Stages

I. FILING OF APPLICATION under section.7 or 54 or 135 or 7(1A)

II. REQUEST FOR EARLY PUBLICATION under section.11A(2) PUBLICATION AFTER 18

MONHS under section.11A

III. REQUEST FOR EXAMINATION under section.11B

IV. EXAMINATION under section under section12

V. SEARCH FOR ANTICIPATION BY THE EXAMINER under section.13

VI. CONSIDERATION OF ‘FER’ BY CONTROLLER under section.14

VII. REFUSAL / AMENDMENT OF THE APPLICATION under section.15

VIII. ANTICIPATION PROCEEDINGS IF ANY under section.18

IX. OPPOSITION PROCEEDINGS IF ANY under section.25

X. SECRECY DIRECTIONS IF ANY under sections.35 to 42

XI. GRANT OF PATENTS under section.43

PROVISIONAL SPECIFICATION

COMPLETE SPECIFICATION

PUBLICATION

REQUEST FOR EXAMINATION

FIRST EXAMINATION

REPORT

RESPOND TO OFFICE

ACTION

FURTHER EXAMINATIO

N REPORT

WITHIN 12 MONTHS FROM PROVISIONAL SPECIFICATION

AFTER 18 MONTHS FROM PROVISIONAL

WITHIN 48 MONTHS FROM THE PROVISIONAL

WITHIN 6 MONTHS FROM THE DATE OF REQUEST WITHI 12 MONTHS

FROM THE FER

PATENT PROSECUTION STAGES

EARLY PUBLICATION (OPTIONAL)

PRE GRANT OPPOSITION IF ANY

PATENT GRANTED

Anticipation Anticipation: state of the art, already known to the

public, already published, subject in use or practice in the public domain before the priority date of the present application for patent.

Modes of anticipation:I. Previous communication to the governmentII. Public displayIII. Public workingIV. Use and publication

Anticipated known invention not patentableNot anticipated new invention patentable

In general anticipated inventions are not patentable, but exceptions are there.

Patent searching

Systematic collection of available information and literature including specification and other details published by the patent offices world wide relevant to the invention in hand or proposed patent application for evaluation, analysis and further progress of the invention for grant of patent.

Search includes;

State of the art search Novelty/patentability searchInfringement searchCompetitor wise searchPatent family searchlandscape analysis, validity search

Invention wrongfully obtained by the applicant Previously published Previously claimed in another specification Known public use before the priority date Lack of inventive step in the invention Not an invention according to the act Coming under ‘inventions not patentable’ category Not sufficiently described in the specification Failure of the applicant in disclosing the information under sec.8 Wrong mention of the source of the biological material Already known to the knowledge of local indigenous community of India

or elsewhere.

Grounds of opposition

THANK YOU FOR YOUR KIND RECOGNITION