Patents

Dr. S. Ramgopal Rao

M. Sc., MBA, Ph. D, PG D Patents Law

Associate professor, Department of Biotechnology Sreenidhi Institute of Science & Technology, Hyderabad E-mail: sramgopalr@gmail.com

We are in the Knowledge Century Living in the Knowledge Society Governed by the Knowledge Economy

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What is an Invention ?
New and Useful  Product (Composition of matter, apparatus, device, machine, article of manufacture, composition)  Process/Method  Method of treatment/Use and improvements thereof
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What is an Invention under the Indian Patent Act?



Invention means a new product or process involving an inventive step and capable of industrial application. application. U/S 2(1)(j). )(j). Inventive step 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. U/S 2(1)(ja). art. )(ja) 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. U/S 2(1)(l). art. )(l).
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Category of Inventions


Composition containing the chemical compound[s]/their derivatives/ salts. salts. synergistic compositions/ formulations. formulations. process for the preparation of chemical compounds/ composition. composition. methods of using the compounds or compositions [new use of the known compounds]. compounds]. new strain of microorganism. microorganism. new plasmid/ vector/ sequence/ protein/ construct. construct. new vaccine. vaccine. new use of known bacterial strains new variety of plant/asexually produced plant/ seed/ new plant per se. se.
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Category of Inventions (Examples)

Chemical compound[s] / intermediates and their compound[s] derivatives / analogs / salts, esters, ethers, salts, polymorphs, metabolites, pure form, particle size, isomers, mixtures of isomers, complexes, combinations and other derivatives of known substance(s) substance(s).

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Category of Inventions
  

 

Genetically modified biotech products. products. Other agri biotech product/ processes. processes. Diagnostic kit/ surgical device/ surgical apparatus. apparatus. Method for the surgical, curative, prophylactic or any other treatment of humans and animals. animals. Method for the treatment of plants. plants. Apparatus/ device. Apparatus/ device.
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Hardware/ firmware/ combination of hardware with software/ software. software. Value added Traditional Knowledge based synergistic formulation/ new activities. activities. Inventions relating to defense*. defense*. Inventions relating to atomic energy**. energy**. Inventions relating to dual use technologies * = permission required under section 35 of the Indian Patents Act. Act. ** = permission required under section 4 of the Indian Patents Act. Act. Note: Note: Not all categories of inventions are patentable under the Indian Patent Act. Act.
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Inventions not patentable in India



Section 3
An invention: invention:
Which is frivolous or contrary to natural laws. laws. b) Which is contrary to public order or morality or causes serious prejudice to human or animal or plant health or to the environment. environment. c) Mere discoveries d) New form or new use or new property of known substance without increase in the efficacy of that substance. substance. e) Mere admixtures. admixtures. f) Mere arrangement or rearrangement or duplication of known devices. devices. g) [Omitted from the act.] act. h) Method of agriculture or horticulture. horticulture.
a)

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Inventions not patentable in India

i). Method of treatment of humans or animals (excluding plants). plants). j). Plants and animals (except microorganisms) in whole j). or any part thereof or any process of their propagation. propagation. k). k). Mathematical or business method or computer programs per se or algorithms. algorithms. l). Any thing subject matter of copyright. l). copyright. m). m).Method of playing game or mental act n). n). Presentation of information. information. o). o). Topography of integrated circuits. circuits. p). p). Traditional knowledge or its obvious combination. combination.


Section 4 Inventions relating to atomic energy. energy.

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What is a Patent

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Introduction

A patent is a document, issued, upon application, by a government office (or a regional office acting for several countries). countries). A patent describes an invention and creates a legal situation in which the patented invention can normally only be exploited (manufactured, used, sold, imported) with the authorization of the owner of the patent. patent. The right created by a patent is a monopoly right. right. The significance of the right is a statutory right to prevent others from exploiting his invention. This is invention. the right to exclude others from making, using or selling his invention. invention.
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What the inventor gets?

The right to take action against any person exploiting the patented invention in the country without the agreement of the patent owner constitutes the patent owner's most important right. right. This permits him to derive the material benefits to which he is entitled as a reward for his intellectual effort and work, and compensation for the expenses, which his research and experimentation leading to the invention have entailed. entailed.
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Who gives it?

Interestingly, the State grants the patent rights. rights. The State however, cannot and will not enforce the patents by suing on behalf of the owner. owner. It is up to the owner to enforce his rights by suing for what is called an infringement of his rights. rights. Thus the right is vested on the owner unlike criminal law where the state enforces the right on behalf of the victim. victim. This right is vested by the State on the owner in return for the disclosure of the invention. invention.
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Patents are given only for inventions. inventions. Inventions are solutions specific problems in the field of technology. technology. An invention may relate to a product or a process. process. The protection conferred by the patent is limited for a statutorily specified period of time. time. In some countries, inventions are also protectable through registration under the name of 'utility model. model.
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PATENTABILITY:

Patentability is determined by whether the invention falls within the scope of patentable subject matter. Patentable subject matter is defined in terms of exceptions to patentability. The general rule is that patent protection shall be available for inventions in all fields of technology. Normally, discoveries of materials already in nature are not patentable. These are known to fall within public domain. The reason is that no one person can get monopoly rights over something that already exists in nature. nature.

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Scientific theories or mathematical methods are also not patentable. The reason is that these patentable. theories are not inventions. However, inventions inventions. made using these theories are patentable. patentable. Biological processes are not patentable though most countries seek to protect microbiological process. process. The reason behind this is that in order to qualify for patent protection the substance has to be man made. Since biological processes are not made. man made, they are not patentable. patentable.

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Ideas, schemes etc. are also not etc. patentable. patentable. But these may qualify for copyright protection. protection. Methods of treatment for humans or animals, or diagnostic methods practiced on humans or animals are not patentable. patentable. The reason is, these are very subjective and therefore cannot be standardized by patents. patents.

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Viewpoints

Patentability is an area where there are differing views. views. Examples of this are patentability of software and biotech inventions. inventions. Whether these are patentable is an issue that has been disputed. disputed. The US has case laws that explain why they consider these subject matter patentable. (See, patentable. Diamond V. Diehr, Arrhythemia and diamond v. Diehr, Chakraborthy) Chakraborthy). These cases are important for the discussion on the evolution of patenting of biotechnology and of computer software. software.

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Industrial Applicability

Industrial applicability essentially means that the subject matter should have some practical application. application. This also explains why theorems and algorithms are excluded from patentability. patentability. It also refers to the fact that the subject matter should be such that it can be reproduced. reproduced. The entire reason for granting an inventor a monopoly right is to encourage R and D and provide the benefit of the same to the public. public.
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This purpose will be defeated if the subject matter for which a patent is sought is not capable of being reproduced. reproduced. The word "industrial" in the same expression has a very special meaning in the terminology of patent laws. laws. In common language, an "industrial" activity means a technical activity on a certain scale, and the "industrial" applicability of an invention means the application (making, use) of an invention by technical means on a certain scale. scale.
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Novelty

Novelty is a fundamental requirement is an undisputed condition of patentability. patentability. Novelty is not something which can be proved or established; only its absence can be proved. established; proved. Novelty essentially means that the invention should be new. new. What is not new is said to exist already in the public domain and therefore is not patentable. patentable. What is already in the public domain is called a prior art. art.

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Prior art

"Prior art is all the knowledge that existed prior to the relevant filing or priority date of a patent application, whether it existed by way of written or oral disclosure. disclosure. The question of what should constitute "prior art" at a given time is a subject of debate. debate. What is a prior art is also disputed. disputed. Some countries demand intellectual property protection for the traditional knowledge. knowledge. Others argue that traditional knowledge is already known to sections of the public and is therefore a prior art. art.
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Determining Prior Art

Should be made against a background of what is known only in the protecting country. This would exclude knowledge from other countries. Therefore what is known in India can be protected in the US. Some makes its distinction based on the differentiation between printed publications and other disclosures like oral disclosures and prior use, and where such publications or disclosures occurred.
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Disclosure of Invention

Normally, the disclosure of an invention so that it becomes part of the prior art may take place in three ways. ways. These are
1. by publication, 2. by spoken words uttered in public (oral disclosure), disclosure), or public. 3. by use of the invention in public.

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NonNon-obviousness


Once the subject matter of the invention is patent eligible, it should meet other criteria in order to be eligible for patent protection. protection. The most significant is that the invention should be non-obvious. non-obvious. This means that the invention possess sufficient inventive step in such a manner that the invention is non obvious to one skilled the same art. art.

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The question as to whether or not the invention "would have been obvious to a person having ordinary skill in the art" is perhaps the most difficult of the standards to determine in the examination as to substance. substance. The reason for the inclusion of a requirement like this in patent legislations is based on the premise that protection should not be given to what is already known as part of the prior art, or to anything that the person with ordinary skill could deduce as an obvious consequence thereof. thereof.
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This criteria of inventive step or nonnonobviousness has to be differentiated from the earlier criteria of novelty. novelty. Novelty exists if there is any difference between the invention and the prior art. art. The question, "is there inventive step?" only arises if there is novelty. novelty.
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The expression "inventive step" conveys the idea that it is not enough that the claimed invention is new, that is, different from what exists in the state of the art, but that this difference must have two characteristics. characteristics. Firstly, it must be "inventive," that is, the result of a creative idea, and it must be a step, that is, it must be noticeable. step, noticeable.

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There must be a clearly noticeable difference between the state of the art and the claimed invention. invention. This is why, in some jurisdictions, there is the concept of an "advance" or "progress" over the prior art. art. Secondly, it is required that this advance or progress be significant and essential to the invention. invention.

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Other aspects of getting a patent involves

the disclosure, the specification and claim drafting. drafting.

These requirements are the heart line of actually acquiring a patent. patent.

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Finding the Invention

1. INVENTORS BRIEF / INVENTION DISCLOSURE 2.OBJECTIVES OF THE INVENTION 3. Component parts/process / method / product / application details about the invention
A. What component parts/process steps/product characteristics make up the invention? B. What component parts/process steps, if any, are new? C. How are the component parts connected? What are the process steps involved?

Finding the Invention

D. Is there any new function achieved/NEW STEP INVOLVED? E. What variations in the method/ reaction conditions/reactants/structure possible? F. Which part of the invention is most critical and took longest to develop? Why?

4. Purpose and function of the invention

A. What does the invention do and its utility B. Are there other ways to do what the invention does?
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Finding the Invention

5. Establishing the Problems. How were these problems addressed IN THE PRIOR ART? 6. Competition A. What inventions in the prior art competes with the invention? B. What are the advantages of the invention over the known art? C. How are these advantages achieved? D. What features of the invention would be more vulnerable?

Finding the Invention

E. Does the invention improve upon a prior product/process? If so, what products/processes and in what ways? F. Provide a full description of prior product/PROCESSES to cite as prior art. art.

7. A. Whether the invention developed has commercial potential or similar product / process already in the market. market.
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Finding the Invention

B. Is it possible to introduce the product in the market immediately? If so, when, and under what circumstances? C. What advantages and features help sell the product? D. How are these advantages and features achieved? E. What is the life of the product?

Finding the Invention

8. What is the AVERAGE skill in this art? Who else is working in the area? 9. Best mode contemplated by the inventor - Has the inventor thought about a best mode of practicing the invention? - If a best mode has been contemplated, is it fully disclosed?

Importance of Patents
Important source of Scientific & Technical Knowledge More than 40 million Patent Documents and 1 million being added every year  AN OCEAN OF SCIENTIFIC AND TECHNOLOGICAL INFORMATION  OPEN TO PUBLIC FOR FREE USE AFTER TERM EXPIRES OR CEASES TO BE IN FORCE Avoids duplication of research and Acts as a stepping Stone for Scientific Research. Identifies emerging technologies, research areas and business opportunities REASONABLE ASSURANCE FOR COMMERCIALIZATION OF THE INVENTION

Significance of Patents for Industry



Patent is an important tool for creation, upgradation and protection of technology Helps industry to improve existing technology to give cheaper and better products A healthy patent system induces capital investment in new lines of production and encourages FDI, stimulating thereby technological development & economic growth

AREAS OF INTEREST FOR INDUSTRY

Improvement of the quality of the old product Manufacturing of a new product Increasing production Create Corporate Identity Enhancing Negotiating Access to Finance Skills and

Avoiding Unnecessary litigation

Significance of Patents for Enterprise



Patents can give valuable information for Planning R & D Planning strategic protection for an enterprise, Forging strategic alliances, Blocking competitors and Identifying possible collaborators

 

Catalyst in evolving a positive image of the enterprise Patent as a Tool for International Trade & Cooperation

  

Measure of Companys Success Tool for increasing negotiating power Helps to emerge as market a Pre-eminent Player in the

Working of Patented Inventions Objectives



Patents are granted To encourage inventions To secure that the inventions are worked in India on a commercial scale and to the fullest extent To ensure that the patents do not impede protection of public health and nutrition And act as instrument to promote public interest specially in sectors of vital importance for socioeconomic and technological development of India

Patents

are

not

granted

merely

to

enable

the

patentee to enjoy right for importation

It is ensured that Patent System does not prohibit Central Govt to take measures to protect public interest Patent Right is not abused by the patentee Patentee does not restrain trade or adversely affect the international transfer of technology Benefits of the Patented Inventions are made available at reasonably affordable prices to the public

Protection and enforcement of Patent Right is aimed at Promotion of technological innovation Transfer and dissemination of technology Mutual advantage of producers and users of technological knowledge Ensuring social & economic welfare and balance of lights and Obligations

ROLE OF GOVERNMENT To enhance IP literacy To set up Modernized IP System To provide for effective enforcement of IPRs To create infrastructure for providing industries and Institutions with needneedbased R&D facilities Training on IPR issues Organizing utility workshop on IPRs

Top 20 Offices of Filing

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SAKICHI TOYODAS STORY

Granted Patents on Automatic Weaving Machine Earned Huge royalty in 1929

Founded TOYOTA motor Company

US Patent for Turmeric

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Title: Title: Use of Turmeric in wound healing Inventors: Inventors: Suman K Das et.al et. Assignee: Assignee: University of Mississippi
Medical Center Filed : Dec 28,1993 28, Claim 1: A method of promoting healing of a wound in a patient, which consists essentially of administering a wound healing agent consisting of an effective amount of turmeric powder to said patient
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Prior Art for Turmeric

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Prior Art for Turmeric

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