PATENTS

DEFINITION
A Patent is an intellectual property right relating to inventions and is the grant of exclusive right, for limited period, provided by the Government to the patentee, in exchange of full disclosure of his invention, for excluding others, from making, using, selling, importing the patented product or process producing that product without the prior permission

of the owner.

Patents ensure property rights (legal title) for the

invention for which patent has been granted, which may

be extremely valuable to an individual or a Company.

Patent right is territorial in nature and a patent obtained in one country is not enforceable in other country

The term of protection available shall not end before the expiration of a period of 20 years counted from the filing date provided the required maintenance fees are

paid on time

ADVANTAGE

Advantages include the ability to force a competitor to stop

exploiting the invention and the possibility of generating

revenue from licensing arrangements or damages for infringement

A patent is a powerful business tool for companies to gain exclusivity over a new product or process, develop a strong

market position and earn additional revenues through

licensing.

DISADVANTAGE

Considerable upfront costs. Complete invention. public disclosure of the

A limited term before exclusive rights

expire

PATENTABILITY CRITERIA
i) Novelty : The matter disclosed in the specification
is not published in India or elsewhere before the

date of filing of the patent application in India.

ii) Inventive Step: The invention is not obvious to a person skilled in the art in the light of the prior publication/knowledge/ document. iii) Industrially applicable: Invention should possess utility, so that it can be made or used in an industry.

Contd

Consists of patentable subject matter Is new (novelty requirement) Involves an inventive step (non obviousness

requirement)

Is capable of industrial application (utility requirement) Is disclosed in a clear and complete manner in the patent application (disclosure requirement) .

PROCESS PATENT

Process patent protection must give rights not only over use of the process but also over products obtained directly by the process.

PRODUCT PATENT

The exclusive rights that must be conferred by a product patent are the ones of making, using, offering for sale, selling, and importing

for these purposes

WHAT CAN BE PATENTED?

Any

Invention

concerning construction

with or

composition, manufacture

of a substance
of an article

of an apparatus,
an industrial type of process

NON PATENTABLE INVENTIONS

Discoveries are not patentable: Einstein could not patent his celebrated law that E = mc^2; nor could Newton have patented the law of gravity. Such discoveries are manifestations of . . . nature, free to all men and reserved exclusively to none Literary, dramatic, musical or artistic works

CONTD

Schemes, rules, games, computer programs as such Methods of medical treatment Contrary to public policy and morality: Those which by publication or exploitation might result in offensive, immoral or anti-social behavior. Current debate life patents/GM Food

Plant and animal varieties (in EU not in US)

IN DETAIL
(a) an invention which is frivolous or which claims anything obviously

contrary to well established natural laws; (b) an invention the primary or intended use or commercial exploitation of which could be contrary to public order or morality or which causes serious prejudice to human, animal or plant life or health or to the environment; (c) the mere discovery of a scientific principle or the formulation of an abstract theory (or discovery of any living thing or non-living substances 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 or the mere discovery of any new property or mere 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 ;

Explanation- For the purposes of this clause, salts, esters, ethers, polymorphs,

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. (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; (f) the mere arrangement or re-arrangement or duplication of known devices each

functioning independently of one another in a known way;

(g) a method of agriculture or horticulture;

(h) 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.

(i) 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;

(j) A mathematical or business method or a computer programme per se or

algorithms; (k) A literary, dramatic, musical or artistic work or any other aesthetic creation whatsoever including cinematographic works and television productions; (l) A mere scheme or rule or method of performing mental act or method of playing game (m) A presentation of information; (n) topography of integrated circuits; (o) An invention which in effect, is traditional knowledge or which is an aggregation or duplication of known properties of traditionally known component or components. (P) Inventions relating to atomic energy and the inventions prejudicial to the interest of security

Patent: what does it contain?

Specification: .description for repeatability by someone equally trained in the prior art. what exactly is protected

Claim

Inventor/s :

person/s who are responsible for the invention and reduction to practice. Even in the cases of company patents, the inventors are named. : date of award of patent, protection applies from the date of application for 20 years
awarded by the PTO

Date

Patent No. :

Steps/ Timeline to get a Patent

1.

Invention Disclosure Statement: Pre examination of prior art

2.
3. 4. 5. 6.

Draft Application: Specification & claims repeatability, novelty

Application: Computer Application to PTO Review: PTO Examination Result: Clarifications/Rejection Award of Patent

TYPES OF PATENT APPLICATIONS

a)
b)

Ordinary Application
Application for Patent of Addition (granted for Improvement or Modification of the already patented invention, for an unexpired term of the main patent).

c)

Divisional Application (in case of plurality of inventions

disclosed in the main application).

d)

Convention application , claiming priority date on the basis of filing in Convention Countries.

e)

National Phase Application under PCT.

HOW TO GET A PATENT??

The first step is to perform a prior art search.

After a prior art search has been performed and the decision
to seek patent protection has been made, a patent application has to be prepared and submitted to the relevant national or regional patent office. The application will include a full description of the invention, the patent claims that determine

the scope of the patent applied for, drawings and an abstract.

Processing an application

Processing an application :

Publication Grant Opposition Formal Examination Publication of Application Search and Substantive Examination Grant and Publication Opposition Proceedings

Steps in general:

HOW MUCH DO PATENT COST

The costs vary considerably from country to country

and within a country depending on factors such as the

nature of the invention, its complexity, attorneys fees,

the length of the application and objections raised during the examination by the patent office.

It is important to keep in mind and properly budget the costs related to patent application and maintenance

Contd

There are generally costs associated with performing a prior art search, particularly if you rely on the services of an expert; There are official filing fees that vary widely from country to country. Some countries have discounts for SMEs and/or for applicants filing the application on-line. In addition, some countries allow expedited examination on payment of additional fees. If you rely on the services of a patent agent/attorney to assist you in the application process (e.g., provide the patentability opinion, draft the patent application, prepare the formal drawings and correspond with the patent office), you will incur additional costs;

Contd

Once a patent has been granted by the patent office, you

must pay maintenance or renewal fees, generally on an

annual basis, to maintain the validity of the patent;

In case you decide to patent your invention abroad, you should consider also the relevant official filing fees for the countries in question, the translation costs and the costs of

using local patent agents (which is a requirement, in many

countries, for foreign applicants).

Concept of Utility model

Also known as short-term patents, petty patents or innovation patents. Make "minor" improvements to , and adaptations of, existing products. Utility models are primarily used for mechanical innovations. A utility model is an exclusive right granted for an invention, which allows the right holder to prevent others from commercially using the protected invention, without his authorization, for a limited period of time

Characters of Utility Model

Procedures for granting utility models are generally faster and simpler than for patents;

Acquisition and maintenance fees are generally lower than those applicable to patents;

The maximum possible duration of utility models is usually shorter than it is for patents;

Utility models may, in some countries, be limited to certain fields of technology and may only be available for products (not for processes); and

Usually, a utility model application or a granted utility model may be converted into a regular patent application.

Diff. b/w Utility model and Patent

The requirements for acquiring a utility model are less stringent than for

patents. While the requirement of "novelty" is always to be met, that of

"inventive step" or "non-obviousness" may be much lower or absent altogether.

In practice, protection for utility models is often sought for innovations of a rather incremental character which may not meet the patentability

criteria.

The term of protection for utility models is shorter than for patents and varies from country to country (usually between 7 and 10 years without

the possibility of extension or renewal).

Contd..

In most countries where utility model protection is available,

patent offices do not examine applications as to substance prior

to registration. This means that the registration process is often significantly simpler and faster, taking, on average, six months.

Utility models are much cheaper to obtain and to maintain. In some countries, utility model protection can only be

obtained for certain fields of technology and only for products

but not for processes.

Commercializing patent technology

From

the

viewpoint

of

the

inventor

or

invention owner there exist a few possible

ways for commercializing inventions:

To start own manufacturing and marketing the product based on the invention,

To license the rights in the invention To sell the patent rights, or Any combination of the above.

The decision which way to choose will depend on a variety of factors, among which the cost and benefits analysis will often be decisive. The income an invention may generate will depend directly on the investment made for its development and marketing:

the highest return (or benefit) for the inventor may be expected when he decides to start its own production based on the invention, but this approach will require also the largest investment; the benefit for the inventor will be much lower when he decides to license or even to sell his patent rights at an early stage of development of his invention.

Enforcing patents

International patent classification system(IPC)

It is a hierarchical classification system used to classify and search patent documents.

It also serves as an instrument for orderly arrangement of patent documents, a basis for selective dissemination of information and a basis for investigating the state of the art in given fields of technology.

The seventh edition of the IPC consists of 8 sections, which

are divided into 120 classes, 628 subclasses and approx 69,000 groups.

The 8 sections are:

Human Necessities; Performing Operations; Transporting; Chemistry; Metallurgy; Textiles; Paper; Fixed Constructions; Mechanical Engineering; Lighting; Heating; Weapons; Blasting; Physics; Electricity. Currently, over 100 countries use the IPC to classify their patents

Patenting Abroad

Patents are territorial rights, which means that an

invention is only protected in the countries or

regions where patent protection has been obtained.

In other words, if you have not been granted a

patent with effect in a given country, your invention

will not be protected in that country, enabling anybody else to make, use, import or sell your invention in that country.

Contd

Patent protection in foreign countries will enable your company to enjoy exclusive rights over the patented invention in those countries.

In addition, patenting abroad may enable your

company to license the invention to foreign

firms, develop outsourcing relationship, and

access those markets in partnership with others

Patent Cooperation Treaty ( PCT)

Article 19 of the Paris Convention provides for member states to make special agreements for the protection of industrial property between themselves The PCT is one such special agreement

What is the PCT?

A mainly procedural international treaty facilitating certain

steps in the process of obtaining patents internationally More specifically, the PCT establishes a procedure for the filing and processing of a single application for a patent which has legal effect in the countries which are Treaty members

Simplifies the procedure for obtaining patent protection in

many countries, making it more efficient and economical for: (1) users of the patent system (applicants and inventors); and (2) patent Offices

CONVENTION APPLICATION

LEGAL PROTECTION

There are three main ways of protecting an invention abroad:

The national route. You may apply to the national patent office of each country of interest, by filing a patent application in the required language and

paying the required fees. This path may be very

cumbersome and expensive if the number of

countries is large.

The Regional Route

When a number of countries are members of a regional patent system, you may apply for protection, with effect in the territories of all or some of these, by filing an application at the relevant regional office. The regional patent offices are:

The African Intellectual Property Organization (OAPI) The African Regional Intellectual Property Organization (ARIPO) The Eurasian Patent Organization (EAPO) The European Patent Office (EPO) The Patent Office of the Gulf Cooperation Council

The international route

If your company wants to have the option of protecting an invention in any

number of member countries of the Patent Cooperation Treaty(PCT), then you should consider filing an international PCT application.

To be eligible to do so, you must be a national or resident of a PCT Contracting State, or, your business must have a real and effective industrial or commercial presence in one of these countries.

By filing one international application under the PCT, you may simultaneously seek patent protection for an invention in the more than 125 member countries of the PCT. This application may be filed either at your national or regional patent office and/or at the PCT receiving office at the World Intellectual Property Office (WIPO) in Geneva, Switzerland.