Law

Lab

Market

1. 2007 brand value Reliance Industries Rs. 26801 Crores TCS Rs. 19592 Crores Indian Oil Corporation Rs. 17987 Crores. IOCLs brand value formed 40% of the companys total value. 2. 2010 brand value of Google US $114250 Mn. Its brand is its strongest barrier to entry of competitors. 3. Nestles balance sheet 2009 discloses: Property, plant and equipment US $ 21 599 Mn Goodwill and intangible assets US $ 34 160 Mn

4. Pfizers balance sheet 2009 discloses: Property, plant and equipment US $ 22 789 Mn Goodwill and intangible assets US $ 110 391 Mn

Agricultural Economy

Industrial Economy

Knowledge Economy

Creative Economy

Producers and consumers

corporations

Flat world Big corporations Skilled People

Niche-driven Green Expertise

Producer
As Consumer

Mass consumption
struggle for better share of benefits Segmented markets

Aggregation of Apex consumers

Aggregation of larger communities of consumers

Network society (or social networks?) PROSUMER

Social networks

Information society

"If you don't make things for your own surprise, you become like a baker, everyday making the same round bread to sell." Dasarath Patel, Co-founder of National Institute of Design, Ahmedabad

Thats not what we think design is. Its not just what it looks like and feels like. Design is how it works NYT, The Guts of a New Machine, 2003
In most peoples vocabularies, design means veneer. Its interior decorating. Its the fabric of the curtains of the sofa. But to me, nothing could be further from the meaning of design. Design is the fundamental soul of a human-made creation that ends up expressing itself in successive outer layers of the product or service. Fortune

core

peripheral

Secondary Results of R&D

Shared IP

Core: produce Protect Replicate Transfer Translate transport

Peripheral

License out License in to bundle Co-brand Protect to monetise

Secondary Results:

Assign License out Protect to monetise

Shared IP Identify, value and protect Classify as core / not core

Legal
Registration

Technical
IT due diligence

Confidentiality

Using technological innovations

1. Rights managed and royalty free images 2. < 100 mn images 3. Bettman archives 4. For revolving display of digital artwork on digital frames 5. Acquiring pics from pro-ams 6. Privately owned company of Bill Gates

The brand name for a range of precisely-cut crystal (a particular type of glass) and related luxury products produced by Swarovski AG of Wattens, Austria.

POETRY of PRECISION: Swarovski is the synonym for crystal.

In 1895, Daniel Swarovski pursued his dream of creating a crystal so perfect that it captured both the eye and the heart.

Swarovski, now the undisputed world leader in cut crystal has remained fully independent since its foundation in Wattens, Austria. The company employs 26,000 people and maintains a presence in more than 120 countries worldwide. The company draws its richness of expression from the cultural heritage of Central Europe and its talents from forging links between the arts, science and economics. .

So Is IP about:
Monopoly or Collaboration
Necessary Cost or Desirable Investment

Risk management or Business Strategy

Enhancement of profit or Multiplying Revenue Streams
- A hut on the goldmine?

Dr.V.C.Vivekanandan NALSAR University of Law vivek@nalsarpro.org www.nalsarpro.org

Patents Regime

What is a Patent ?
Patent is an exclusive monopoly right given by the sovereign to an inventor for an invention An invention to be patented should fulfill the criteria of the patent legal regime of a country It is for a limited period of time (20 years) To get the Patent the Inventor should disclose the invention fully

 The What ?
Exclusive monopoly to the inventor means to exclude any one from manufacturing, using or selling the invention during the period of the patent.(a negative right !) This exclusive right is only in the country(ies) in which the patent is granted.

What is not patentable

Discoveries are not patentable Ideas are not patentable Laws of nature

What Can Be Patented

New and useful Process, Machine, Manufacture Composition of matter, Or any new and useful improvement thereof

What ?
Patents are granted for inventions patentable under the legal regime of a country based on Novel New in the global context not published Worked used anywhere This constitutes prior art

Prior Art- everything made available to the public by means of:

PRIOR ART

Determining Prior Art

Publication any document from any source can in fact be used as prior art. It does not matter in which language the document is written, in how many copies it was made available, or whether any copies where in fact bought or read by third parties. The only thing that matters is that the document was available to the public before the critical date.

All rights Reserved Prof.vivek

28

 Publicly available material

Determining Prior Art

It is irrelevant whether the public in fact accessed the document, or how easy it was to find the document. Publicly available products also count as prior art, even though it may be very difficult to determine exactly what the product is made of or how it works. If a device is put on the market before the patent application filed on a feature in that device, the feature is no longer novel If the product is not sold, but only demonstrated to the public, then only those features which the public could observe count as prior art.

All rights Reserved Prof.vivek

29

Determining Prior Art

Oral disclosures Oral disclosures, such as lectures or non confidential discussions between the inventor and a third party, usually also count as prior art. The problem with oral disclosures is usually how to prove that they took place and what was disclosed exactly. In some cases a transcript or recording may be available. This can serve as evidence of what was orally disclosed, although establishing the date of the oral disclosure may still be difficult.

All rights Reserved Prof.vivek

30

Determining Prior Art

Internet publications Internet publications are special case. As most patent offices perform their search and examination several months after filing of the application, a search on the Internet will not be of much use. In the intervening months pages on the Web may have been updated, added or removed, which makes it impossible to determine whether the invention was published on the Internet before the day of filing. But if it can be proven that a web page with particular contents was publicly accessible the day before the filing date, then that web page will count as prior art. A site such as The Internet Archive could be very useful in such cases

All rights Reserved Prof.vivek

31

PRIOR ART -NOVELTY

The prior art has to be from a single source Combination of prior arts cannot invalidate Novelty

All rights Reserved Prof.vivek

32

What ?
Non- obvious- /Inventive Step Should not be obvious Person skilled in the art will judge The patent examiner is the person skilled in the art Should involve inventive step Subject of many litigations

All rights Reserved Prof.vivek

33

Non Obviousness- Inventive Step

Inventive step is a feature of an invention that involves technical advance as compared to existing knowledge or having economic significance or both, making the invention non obvious to a person skilled in art. Here definition of inventive step has been enlarged to include economic significance of the invention apart from already existing criteria for determining inventive step.
All rights Reserved Prof.vivek 34

Non Obviousness- Inventive Step

To judge the inventive step, the following question is to be borne in mind Would a non-inventive mind have thought of the alleged invention?. If the answer is No, then the invention is non-obvious.

All rights Reserved Prof.vivek

35

Obviousness
Definition of one of ordinary skill in the art Combining two or more prior art references Motivation to combine Some teaching, suggestion, or motivation to modify or combine found either in the references themselves or in the knowledge generally available to one of ordinary skill in the art
All rights Reserved Prof.vivek 36

Obviousness
M/s. Bishwanath Prasad Radhey Shyam Appellant v. M/s. Hindustan Metal Industries, It is important that in order to be patentable an improvement on something known before or a combination of different matters already known, should be something more than a mere workshop improvement; and must independently satisfy the test of invention or an inventive step.
All rights Reserved Prof.vivek 37

Obiviousness
To be patentable the improvement or the combination must produce a new result, or a new article or a better or cheaper article than before. The combination of old known integers may be so combined that by their working interrelation they produce a new process or improved result. Mere collection of more than one integers or things, not involving the exercise of any inventive faculty, does not qualify for the grant of a patent.
All rights Reserved Prof.vivek 38

What ?
Industrial application Should demonstrate industrial utility

Industrial Utility
An invention is capable of industrial application if it satisfies three conditions, Cumulatively: Can be made; Can be used in at least one field of activity; Can be reproduced with the same characteristics as many times as necessary

The Test

Novelty
Utility Non-Obviousness Statutory Bar NUNS TEST

TYPES OF PATENTS
PRODUCT PROCESS

Who gets the Patent

Inventor Assignee of the Inventor Any legal entity assigned by the inventor

INDIAN PATENT ACT

NON INVENTIONS UNDER SECTION 3

Sec.3:- What are not inventions?

The following are inventions within meaning of this Act,not the

(a) An invention which is frivolous or which claims anything obviously contrary to well established natural laws;

Sec.3:- What are not inventions?

(b) An invention, the primary or intended use or commercial exploitation of which would be contrary to public order or morality or which causes serious prejudice to human, animal or plant life or health or to the environment;

Sec.3:- What are not inventions?

(c) the mere discovery of a scientific principle or the formulation of an abstract theory or discovery of any living thing or non-living substance occurring in nature.

Sec.3:- What are not inventions?

(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 or the mere discovery of any new property or new use for a known substance or 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.

Explanation:For the purposes of this clause, salts, esters, ethers, poly-morphs, metabolites, pure form, particle size, isomers, mixtures of isomers, complexes, combinations and other derivatives of known substance shall be considered to be the same substance, unless they differ significantly in properties with regard to efficacy.

Sec.3:- What are not inventions?

(e) a substance obtained by a mere admixture resulting only in the aggregation of the properties of the components thereof or a process for producing such substance. Ex. Oral Rehydrating Solution containing Glucose, Sodium chloride, sodium bicarbonate, and potassium chloride.

Sec.3:- What are not inventions?

(f) The arrangement arrangement duplication of devices functioning independently another in a way; mere or reor known each of one known

Sec.3:- What are not inventions?

(h) a method of agriculture or horticulture. (i) any process for the medicinal, surgical, curative, prophylactic [diagnostic, therapeutic] or other treatment of human beings or any process for a similar treatment of animals to render them free of disease or to increase their economic value or that of their products;

Sec.3:- What are not inventions?

(j) plants and animals in whole or any part thereof other than micro organisms but including seeds, varieties and species and essentially biological processes for production or propagation of plants and animals;

Sec.3:- What are not inventions?

(k) a mathematical or business method or a computer program per se or algorithms;

Sec.3:- What are not inventions?

(l) a literary, dramatic, musical or artistic work or any other aesthetic creation whatsoever including cinematographic works and television productions;

21

Sec.3:- What are not inventions?

(m) a mere scheme or rule or method of performing mental act or method of playing game;

Sec.3:- What are not inventions?

(n) a presentation of information; (o) topography of integrated circuits;

23

Sec.3:- What are not inventions?

(p) an invention which, in effect, is traditional knowledge of which is an aggregation or duplication of known properties of additionally known component or components.

Patent Prosecution
Patent application filing
Request for Early Publication any time before 18 months 18 months
Publication

within 48 months from the date of priority

Request for Examination (Express Examination Possible)
Pre Grant Opposition

within 6 months from the request

Issue of Examination Report

11 April 2014 59

Patent Prosecution (contd.)

Reply to Examination Report
compliance within 12 months from the date of issue of examination report

Grant
within 12 months from the date of grant of patent

Post Grant Opposition

Renewals
60

Opposition Procedure
Pre Grant Opposition Under Section 25(1) Post Grant Opposition Under Section 25(2)
Revocation before IPAB Counter claim of invalidity in any Infringement case

11 April 2014

61

Pre-Grant Opposition- Procedure

18 months publication
Within 6 months of the first publication or at anytime before grant

Opposition By way of Representation Anyone Considered onlyby after the Applicant

files for Request for Examination

Request for Examination

Within three months from date of notice

Notice to Applicant

Applicants reply to the Notice

11 April 2014 62

Pre-Grant Opposition- Procedure (Contd.)

Consideration of Applicants reply

Satisfactory Grant

Not Satisfactory Amendment Suggested Hearing

Within one month from the above submission

Rejection

MCO

63

Post Grant Opposition

Notification of Grant
Within 12 months from date of notification

Notice of Opposition
With written statements and evidence

Constitution of Opposition Board Within 2 months from date of date of receipt of copy of
written statement

Reply statement and evidence by applicant

Within 1 month from the date of receipt of copy of applicants reply statement

Reply by Opponent

Hearing

64

Drafting a Patent
Provisional application Final specification 12months to file a final specification Should be in the format specified by the patent office

TITLE BACKGROUND OF INVENTION SUMMARY OF INVENTION DETAILED DESCRIPTION OF INVENTION Examples CLAIMS FIGURES OTHER ATTACHMENTS ABSTRACT

Best Mode / Preferred Embodiments

Dos and Donts of Drafting

There is a main Claim and dependent claims Each claim should be a single sentence which can run into many lines. Widest claim as possible Should not be laudatory Should be clear and understandable

67

Dos and Donts of Patent drafting

Figures are important The Claims are the crux of the patent Prior art convinces the examiner of the nonobvious factor Best mode is important Title is the choice of the inventor Patent office can redo it if it is not relevant
68

Dos and donts of Patent drafting

There are claim limits Additional claim will have additional fee The title should not exceed 15 words Claims can be amended within the scope of the invention Difference between compirising and consisting ?

69

Let us play the inventor

A Sample Claim
I claim: 1. A disposable toothbrush comprising: a cap including an opening for receipt of a fingertip,a flat surface located on one side of said cap having bristles projecting therefrom for brushing of teeth, a layer of dehydrated toothpaste being located on said bristles, and at least one dental hygiene accessory located on a side of said cap opposite to said one side, said at least one dental hygiene accessory being located within a capsule slidably mounted on said cap. 2. A disposable toothbrush as claimed in claim 1, wherein said capsule surrounds said at least one dental hygiene accessory. 3. A disposable toothbrush as claimed in claim 1, wherein said cap biodegradable. is

Patent Cooperation Treaty

The Patent Cooperation Treaty is an agreement for international cooperation in the field of patents. It is a treaty for rationalization and cooperation with regard to the filing, searching and examination of patent applications and the dissemination of the technical information contained therein. The PCT does not provide for the grant of international patents: the task of and responsibility for granting patents remains exclusively in the hands of the patent Offices of, or acting for, the countries where protection is sought (the designated Offices).

pct
The Patent Cooperation Treaty or PCT entered into force n 24 January 1978, and became operational on 01 June 1978, with an initial 18 Contracting States. Presently more than 130 Contracting States had adhered to the PCT. Came into force for India on 07 December, 1998. Filing and not granting.

THANK YOU
ANY QUESTIONS? VISIT www.nalsarpro.org for our courses on Patents Law/Cyber laws at centres of Pune/Mumbai/Delhi/Bangalore/Hyderabad/Ahmedaba d and Chennai
ACKNOWLEDGMENT NALSAR PRO MATERIALS MURALIDHARAN- VISITING FACULTY -NALSARPRO ANINDYA SIRCAR- VISITING FACULTY-NALSARPRO PVS GIRIDHAR- VISITING FACULTY-NALSARPRO SWAPNA SUNDAR VISITING FACULTY-NALSARPRO NET RESOURCES