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INTELLECTUAL PROPERTY: A Quick Guide for Scientists and Technologists
“One ingredient for a successful IP system is education. Individual engineers, scientists and other innovators need to know how the IP system works. In this way, individual innovators can learn how to use the IP system to their own beneﬁt and ensure they are properly rewarded for their contributions. Properly done, everyone beneﬁts as individual innovative contributions eventually fall into the public domain for everyone’s use. To that end, this work provides an important underpinning of the IP system. It goes a long way to achieving the important goal of teaching how the IP system works on a practical, day-to-day level that is accessible to individual innovators, without hiding behind the sometimes lofty world of law. Well done. I hope you enjoy reading this as much as I have.” T. Andrew Currier, BSEE, LLB, P.Eng., Barrister and Solicitor (Ontario), Patent Agent, Trademark Agent, co-author with Stephen Perry of the forthcoming textbook ‘Canadian Patent Law’ from Butterworths “This is an admirable eﬀort to educate engineers in the ways of intellectual property, in an accessible and understandable way.” Conor McCourt, J.D., Canada “At the present stage of development, knowledge on the IP systems becomes important as new innovations and ﬁndings of individuals and organizations become commercially attractive and valuable. It is the IP rights that give the proper incentive for them to go on with more and more new creations. In this context, it is timely that a textbook be available for the education of IP aspects. This book will shed light on these relevant areas for all sectors of society, including scientists, technologists, innovators and even the ordinary citizens. The book covers most of the aspects that are of importance to students on IP systems. I congratulate the author and would like to share this valuable information with everyone.” Sarath Seneviratne, Senior Lecturer in Mechanical Engineering, University of Peradeniya, Sri Lanka
iii About the Book This book is the outcome of my teaching Intellectual Property (IP) for engineering undergraduates in the Faculty of Engineering. even in teaching. . Simplicity is my philosophy. but anyone who wishes to get an overall picture of IP. The intended target group obviously is the science and technology undergraduates. Wish you an enjoyable and informative reading. and how IP systems work will also ﬁnd this a very useful reference. University of Peradenya and some other universities and institutes in Sri Lanka. The facts are presented with simplicity in terms of content and language as I strongly believe that the science and technology personnel and innovators who make the world comfortable for everyone should be able to know their rights in simple terms before seeking advice in the lofty world of law. The teaching to them necessitated a text book which they could use during the course and thereafter as a regular quick reference. The book covers all the areas from conceptual ideas to commercialization of such conceptual ideas. their protection. as mentioned by a reviewer.
Shelton Perera. gave his valuable comments promptly and in detail on the initial draft. I thank him for building my conﬁdence in completing the work.Sc. Conor McCourt. Roshan Ragel. my colleague in my department who himself is an author.Eng. Sri Lanka IP Consultant . University of Peradeniya. by and large. Manjula Sandirigama PhD. I also wish to thank the reviewers Andrew Currier. Sarath Seneviratne and Asanka Perera for their valuable reviews and comments. HMN Bandara and the Committee of Science Education Unit. Vijaya Kumar and Dr. B. I extend my special thanks to Prof.. Last but not least. For making my eﬀort available to the readers. Department of Computer Engineering University of Peradeniya. Nihal Somaratne of University of Peradeniya for their very careful and thoughtful suggestions for improving the quality of the work.even when things go wrong. have been the greatest driving force in writing this text. I thank them for providing a platform for practicing and furthering my knowledge..Sc. Prof. I thank Amila Wijeratne for formatting the ﬁgures in the text and Senaka Yatigammana for designing the the cover page. my gratitude goes to my wife Anoma for encouraging me to make the best use of my knowledge and capabilities and for being with me always .iv Acknowledgments My students. M. Attorney-at-Law (Sri Lanka) Senior Lecturer. I wish to thank Dr.
To my parents for the encouragement and support in life To my teachers for moulding me and my students for motivating me .
. . . . . . . . . . . . . . . .7 Proprietary Databases . . . .5 ICT (Integrated Circuit Topographies) . . . . . . . .3 The Eﬀective Geography of a Patent Validity 3. . . . . . Trade Secrets . . 2. . . . . . . . . . . . . . . . . 3 Patents 3. . . .2 Title Deeds of Intellectual Property 5 5 7 7 8 11 11 12 13 13 14 14 15 17 17 19 20 20 21 . . . . . . . . . . 3. . . 3. . . . . . . . . . . . . . . .1 The Meaning of a Patent . . . . . . . . . . 2. .4 Patents vs. . . . . . . . . . .Contents 1 Intellectual Property (IP) 1. . . . . . . . . . 2. .1 Patents . .6 Geographical Indications . 1. . . . . . . . 2 Diﬀerent Types of IP and Their Protection 2. . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . .1 Introduction . . . . . . . . . . . . 1 . . . . 3. . . . . . . . .5 Commercialization . . .3 Trademarks . . . . . 2. . . . . . .4 Industrial Designs . . .1 The Need for Protecting IP Rights . . . . . . . . . . . . .2 The Duration of a Patent Validity . . . . 1. .2. . 2. . . . . . . . . . . . . . . . . .2 Copyrights .2 Protection of IP Rights . . . . 1. . .2. . . . . . . . 2.
. . . . . . . . . . . . . 41 5. . . .3 Prior Art Search on Patent Databases . . .1 Title .4 Diﬀerent Types of Prior Art Searches . . .4. 45 45 46 46 48 50 . . . . . 6. . . . . . . . . . .1. . . . . . .1.1. . . . . .2 Prior Art Search: An example . 43 5. . . .1 Patentable Subject Matter . . . . 6. .2 CONTENTS 23 23 25 25 26 28 4 Acquiring Patent Rights 4. .3 Technological Activity Search . . . . .3. . . .3 Patent . . . . . . . 37 5. . . . . . . . . . 42 5.4 Patentability Testing . . . . . . . . . . . . 31 5. . . . . .4.4. . . .2 Scope of Prior Art Search . . . . . . . . .1 Prior Art Search on Online Patent Databases 34 5. 4. . . . . 33 5.4 Claims . . . . 7 Application for a Patent 61 7. . . . . . . . . . . . . . . . . 6. . . . 4. . . . . . 64 . . . 32 5. .2 Abstract .1 Structure of a Patent 6. . 42 5. . . .4. . . . . . . . . . . .5 Infringement Search (Freedom to Operate Search) 43 5. . . . 4. .6 Patentability Search . . . . . . . .4. . . . . .1 The Meaning and the Need of Prior Art Searches . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . .4 Legal Status Search . . . . . . .4. . . . .2 Suﬃcient Disclosure of the Invention .4. . . . . . . . .1. . . . .1 Making a Local Application . . . . . . . . . . . . . . . . . . . . . Valmet Oy . . . . .3. . . . 42 5. . 5 Patent Prior Art Searches 31 5. .2 Making a Foreign Application . . . . . . . . . . .1 Patentability requirement case study: Beloit vs. 43 6 Patent Drafting 6. .2 State of the Art Searches . . . . . . . . . . .3 Description . 62 7. . 4.An Inventive Subject Matter . . .1 Name Search .
. . . . 8. . . . . . . . . . . . .1. . . . . . . . . . . . . . . .4 Licensing Fees and Royalties 9. .1. . . . . . . . . . . . .5 Description . . . . . . . . . . .3 Patent Maintenance Fees . . . .2 Assignment . .1.1 Exploitation . . . . . .2 Examination of Applications . . . . 82 10. .3 Licensing . . . . 9. . . . . . . . . . 10 A Sample Patent 81 10. . . . 81 10. . . . . . . . . . 9. . . . . . . . . . .3 Abstract . . . . . . . . 8. . . 81 10. .1. . . . . 9 Post Patent Issues 9.2 Potential Legal Implications . . . . . . . .161. . . . . . . . . . . . . . . . . . . . . . . . . . .4 Appeals Against Examiners’ Decisions .2 Bibliographical Data . . . . . 9. . . . . . .1 Title: Method of resizing a liquid crystal display . . 81 10. . . . . . . . .1. . . . . 81 10. . 9.1. . 8. . . . . . .1.1. . .1 Revision of Applications . . . . .4 Claims . . . .CONTENTS 8 Patent Examination and Granting Process 8. .1 Commercialization . . . 83 . . . . . . . . . . . . . . .1 US Patent 7. . .1. . . . . . . . . . . . . . . . . . . . . . . . . 3 67 67 69 70 70 73 74 74 75 76 78 79 . . .651 . . . . . . . . . . . . . . . . . . . . . .
4 CONTENTS .
Conventionally. vehicles. All the conventional movable or immovable properties fall into this category. these properties are divided into two categories. furniture etc. Examples are lands and buildings. are the properties that cannot be touched and felt. namely tangible and intangible properties. houses. Intangible properties. There is another categorization of property. movable and immovable. buildings.Chapter 1 Intellectual Property (IP) 1. Immovable properties mean that their location cannot be changed. The locations of movable properties could be changed as desired. Traditionally. namely. can be touched and felt. The value of such property is not generally in 5 . such properties have a value in their physical characteristics. on the other hand. Tangible properties mean that the property. movable and immovable.. Examples of such properties are lands.1 Introduction People own diﬀerent kinds of property. furniture etc.. Examples are vehicles. Intellectual property falls into the intangible category.
when we buy a book. others cannot violate them meaning that others cannot use the same idea to produce duplicates. The . more value is in the mechanisms of driving. Obviously. Ownership of traditional properties are perpetual subject to a way of disposal such as a sale or a transfer. The creator is protected by governments by oﬀering him or her what are known as intellectual property rights.) but in the creativity and innovativeness one has put into the creation of such property. if we consider the tangible value. Once Intellectual property rights are given to someone. Another key characteristic of intellectual property is that the property is just an idea of creation. If they do. When we pay for a book or car. We may buy books or cars for our use but we cannot copy and make them for our own commercialization. and there is no tangible value in them. it is in the amount of steel and plastic which is not very signiﬁcant. creations etc. Just like people could claim traditional properties to be their own by possessing a document such as a deed or ownership certiﬁcate. these intellectual property rights are negative. symbols. marks. but ownership of intellectual property is generally limited for a certain time. electronic fuel system. anti-lock brake system all of which are ideas of creation of someone. the creator can take legal action and claim compensation. in the sense that it excludes others from doing something – copying. Intellectual property could also be disposed of by way of sale or transfer. we mostly pay for the intangible idea in them which are intellectual property.6 CHAPTER 1.. literary work. INTELLECTUAL PROPERTY (IP) the physical characteristics of the tangible ﬁnal product made using the intangible property (ideas. there is tangible value in the amount of papers which is not signiﬁcant. intellectual property also can be owned by means of a special document which will be described later. When we buy a car. WIPO (World Intellectual Property Organization) deﬁnes intellectual property as creations of mind: inventions. A key characteristic of intellectual property is that such properties were not in existence before the creation or they are not made by already known processes. For example. designs etc. more value is in what is written in the book.
The next chapter describes diﬀerent types of intellectual property and how such properties are protected.1 Protection of IP Rights The Need for Protecting IP Rights It is reasonable for a novice to ask the question "why do we need to protect IP rights ?" The simple answer is that all what we enjoy today – food. if he adds his knowledge and skills to convert the bacterium into a medicine usable to treat some disease.2 1. It is important to mention a word about the diﬀerence between a (new) creation and a discovery. which is growing by leaps and bounds. PROTECTION OF IP RIGHTS 7 reasons for such limited ownership will be discussed later.1. transport. it is a discovery. then there is a (new) creation and he could claim intellectual property rights for it. What does this mean? Creation of Intellectual Property consumes considerable amount of time and money. or create something totally new that has not been in existence. – are available to us because there has been protection of IP rights. like with other properties.2. Although the key players in intellectual property are scientists and technologists. Both discoveries and creations are new revelations to the world. For an example. regulation of intellectual property rights is looked after by the legal system. it is a mere discovery. entertainment etc. medicine. a new feature has to be added to the existing thing so that it is converted into something that has not been existing in nature. In today’s technologically advanced world. Someone has to develop his idea by way of . but after the discovery. if a scientist ﬁnds a new bacterium. but if the new revelation is something that has been existing in nature. 1. communication. For something to be a (new) creation. IP rights play a major role and it is very essential for science and technology students to know what their IP rights are when they do research and development.2.
8 CHAPTER 1. others will simply copy it and try to make money from these work. All what we enjoy today have been improvements on what had been existing in the past. and if there is no mechanism of protection by the state to protect the ownership rights of the people who spent their time and money on this work. electronic equipment etc. and society can use the same knowledge to make improvements. .2. to develop a medicine. For example. they become known to the public. intellectual property also has a title document (like a deed. Consequently. one may have to spend several years. the revealer will reveal his/her knowledge. the ownership is guaranteed by the receipt of the payment made at the time of the purchase. In fact. or an ownership certiﬁcate) that protects the ownership. process. or a rental/lease agreement in case of temporary ownership. people will not feel secure and they will lose their motivation to do research or to produce literary work. the ownership is protected by a deed of ownership. If the property is furniture. the amount of time and money may far exceed the amount of time and money one has to spend to acquire a physical property such as a land or a building. or a rent or a lease agreement in case of temporary ownership. If it is a vehicle. When protection is given for the new revelations in exchange for revealing the knowledge. After the research is done or the book is written. conventional property ownerships are guaranteed by deeds or ownership certiﬁcates. 1.2 Title Deeds of Intellectual Property As we know. the ownership is protected by an ownership certiﬁcate. one has to do several years of research that costs a lot of time and money. Similarly. There would be no progress in society.. If the property is a land or a building. or a piece of literature. and we would not have the comforts and entertainment that we enjoy today. To write a book. INTELLECTUAL PROPERTY (IP) research or otherwise to make the idea into a product.
1. geographical locations and proprietary databases. such ownership documents are described after providing a brief description of what diﬀerent kinds of intellectual properties are. copyrights.2. industrial designs. Integrated Circuit (IC) topographies. namely patents. In the next chapter. trademarks. . PROTECTION OF IP RIGHTS 9 Diﬀerent types of intellectual property have diﬀerent kinds of ownership certiﬁcates.
10 CHAPTER 1. INTELLECTUAL PROPERTY (IP) .
when we buy electronic equipment. For example. and the process of making a tool. Examples of process inventions are the method of extraction of salt from sea water. we not pay not only for the mere physical value of them. but also for the creativity that is embedded in the product. There can be some inventions which fall into both product and process inventions like making a drug. Simple examples of such product inventions are a pen. a machine. a tool.1 Patents Patents are the intellectual property rights granted by the state for inventions. process of manufacturing a drug. When we buy such a product. and a medicine. but the purchase price is de11 .Chapter 2 Diﬀerent Types of IP and Their Protection 2. An invention means a creation of a new product or a process that has not been known to the public or has not been in existence in nature. The process as well as the product are inventions. the physical value may be very low.
one must make an application to the relevant national oﬃce. To obtain a patent right. and dramas. Fair Use prohibits the copying of the material for commercial use. Conventional copyrights include writings (novels. and there is a wide range of literary work. (Note that computer programs fall both into patents and copyrights. radio signals etc. educational or research work.2 Copyrights Copyright is an ownership right one gets when a literary work is created. music and movie disks and computer programs. Such inventive ideas are protected by a certiﬁcate known as a patent. . generally 20 years. carvings. There is what is known as the “Fair Use” of copyrighted material.12CHAPTER 2. This means that one can copy copyrighted material for purely personal. The method of the solution in the program is the patentable part whereas the program alone is the copyrightable part. plays. poems. Such rights are granted for a limited period of time. sometimes more. Detailed descriptions of patents will be provided in the later part of the book. depending on the legal provisions of the country concerned.). which may also be inventive. sculpture.) and other literary works such as paintings. Trade secrets. technical literature etc.) Copyright simply means that the right of copying is restricted and unauthorized copying is prohibited. Literary work does not have to be written. They will be described when patents are discussed in a following chapter. A patent is granted on application. Most of you may have noticed this right explicitly expressed in books by using c or the phrase “Copy Rights Reserved”. 2. Modern copyrights include electromagnetic signals (television signals. DIFFERENT TYPES OF IP AND THEIR PROTECTION termined by the added value for the creativity and innovativeness of putting the electronic elements together. have similarities as well as diﬀerences compared to patents. both conventional and modern.
product. Such marks are useful marketing tools because the customers usually want to buy dependable products or services that have a good track record. The mere prolonged usage is suﬃcient to establish ownership of a trademark. TRADEMARKS 13 Unlike patents. for which most countries are signatories. Unlike patents and like copyrights. billboard or even a building.2. copyright is gained by the mere creation of the work and one does not need to make a special application to the national oﬃce. Registered trademarks carry the symbol "R" whereas unregistered trademarks carry the symbol “TM”. an image or a combination of them that is used to distinguish a product or a service of one person/company from that of another. specially in case of a dispute. However. 2. However. The exterior outlook may be the . specially in case of a dispute. Toyota etc. 2. like copyrights.4 Industrial Designs An industrial design means the exterior outlook of an article. one could get a stronger legal claim for it.3. by registering such work in the relevant national oﬃce. to get protection. KFC (Kentucky Fried Chicken). TATA. Examples of such marks are Bata. Coca Cola.. Such registrations are valid for a certain period (for example. According to the Berne convention. copyright is limited to 50 years after the death of the author. one could get a stronger legal claim for the work.3 Trademarks Trademark is a design of a word. by registering trademarks in the relevant national oﬃce. it is 15 years in Canada) and renewable. trademarks need not necessarily be registered in the national oﬃce. and a trade mark is a unique identiﬁcation of such track records.
These components are combined to form a circuit that does a speciﬁc function. and it is an oﬀense to call tea made in another country Ceylon Tea. For example.6 Geographical Indications This is also a recent addition to intellectual property which recognizes that the manufacturer of some product could attribute a geographical location to it to increase the value of the product. wines made in some speciﬁc geographical locations could be diﬀerent from those made other in other locations due to climate and the method of manufacture. diﬀerent car manufacturers own industrial propriety rights for the shape of the cars they have designed. these circuits can be owned by the designers. Under Integrated Circuit Topography category.5 ICT (Integrated Circuit Topographies) This is a recent addition to intellectual properties. so the manufacturers can attribute diﬀerent geographical location to wines. A certiﬁcate of ownership of the geographical location could be obtained from the national intellectual property oﬃce on application. pattern. The subject design is a tangible object and could range from a shape of a tool to a shape of an automobile. 2. For example. A certiﬁcate of ownership of the circuit topography could be obtained from the national intellectual property oﬃce on application 2. An Integrated Circuit (IC) is a layout of enormous amounts of electronic components inside what is known as a chip.14CHAPTER 2. conﬁguration or a combination of these features. Another example is Ceylon Tea where a value addition is done by the word "Ceylon" to tea. DIFFERENT TYPES OF IP AND THEIR PROTECTION shape. . A certiﬁcate of ownership of the design could be obtained from the national intellectual property oﬃce on application. such as French champagne.
People and companies spend enormous amounts of time to collect. . The Rest of the Book In the following chapters. PROPRIETARY DATABASES 15 2. process and compile such data. As information technology developed over the last few decades.7. The data could range from the names and addresses of customers to geographical information systems.7 Proprietary Databases This is a very recent addition to intellectual property. data has become an integral and important part of information technology systems. intellectual property rights relating to patents are discussed. Developers of such data have an intellectual property right to them.2.
16CHAPTER 2. DIFFERENT TYPES OF IP AND THEIR PROTECTION .
17 . 3. 36 of 2003 62. (1) For the purposes of this Part. “invention” means an idea of an inventor which permits in practice the solution to a speciﬁc problem in the ﬁeld of technology. or may relate to. what is of importance is patents – intellectual property rights for inventions. patent application and the granting process. The aim of this book is to give a basic understanding of patents. and post patent implications to scientists and technologists. The following are some of them: Sri Lanka: Intellectual Property Act No. a product or process.1 The Meaning of a Patent A patent is a document that is granted by the intellectual property oﬃce of a government endorsing the inventorship of an invention.Chapter 3 Patents For scientists and technologists. An invention is deﬁned by patent laws of diﬀerent countries. (2) An invention may be.
machine. a patent describes the biographical data of the inventor. They will be discussed in a later section. or any new and useful improvement thereof may obtain a patent therefor subject to the conditions and requirements of this title Canada: Patent Act S(2) "invention" means any new and useful art. the person who made the revelation can get a patent right to it. the knowledge involved in the invention becomes public property. there are some universal key elements that are necessary for a revelation to be an invention. description of the invention and the boundary of the invention (known as the claims that will be described in detail later in the book). machine. By possessing the patent. address etc. If a revelation satisﬁes those criteria. Once a patent is granted. A patent is similar to a deed of a conventional property. or any new and useful improvement in any art.18 CHAPTER 3. This does not mean that the public . manufacture or composition of matter Irrespective of the diﬀerent deﬁnitions of inventions by diﬀerent legal systems. or composition of matter. Just as a deed describes the biographical data (name. machine. PATENTS India: Patent Act 1970 (as amended by The Patent Act 2002) S2(j) "invention" means a new product or process involving an inventive step and capable of industrial application USA: Patent Act 35 USC Invention Patentable Whoever invents or discovers any new and useful process. process. manufacture or composition of matter.) and the description/ boundary of land or a building. manufacture. one could prove the ownership of the invention. process.
2 The Duration of a Patent Validity Unlike conventional property right which are in force indeﬁnitely subject to alienation by sale or otherwise. and consequently there would be no transfer of knowledge to the society. The bargain involved in a patent is that the state/ society gives protection of IP rights to the inventor in exchange for disclosure of his knowledge to prevent duplication of research and to make improvements. a patent can be regarded as a bargain between the state/ society and the inventor. A bargain literally means that two parties compromise on something. and there would be no opportunity for the public to use the knowledge to make the product for ever or even to add improvements to the base product.2.. is limited to a speciﬁc period of time. therefore. . The validity of a patent. In fact. if there is no limit. This period varies depending on the county but in many countries. 3. the inventors could own it indeﬁnitely like conventional property.3. It then becomes an unfair monopoly of the inventor. One could use this knowledge to make improvements even before the patent expires. THE DURATION OF A PATENT VALIDITY 19 can copy the invention. The reason for this limit is that. Thus. It only means that the knowledge is available to the public. The objective of granting a patent is the revealing of the knowledge to the public for the betterment of the society while protecting the IP rights of the inventor. it is the minimum period of 20 years. after some speciﬁed period (the duration of the patent). patent rights are limited for a speciﬁc period of time. anybody can use the knowledge to make the same product.
so if the secret leaks out by some chance – for example. While a patent gives a monopoly protected by the state for a deﬁnite period of time. There is nothing called an international patent. However. But.4 Patents vs. In spite of the fact that there is nothing called an international patent and that the eﬀective geography of a patent is local.3 The Eﬀective Geography of a Patent Validity Patent validly is limited to countries where patent applications are made. by breaching a conﬁdentiality agreement by an employee – the secret will be known by the public and there is no redress given to the holder of the secret by the courts. These systems will be discussed in detail in later chapters. Trade Secrets Now. and these are known as Trade Secrets. it is worth considering what trade secrets are. There are however a patent application mechanisms known as Paris Convention and PCT (Patent Cooperation Treaty administered by WIPO . there is no guaranteed protection for trade secrets by the state.20 CHAPTER 3. Obviously. one can also keep a monopoly by keeping the knowledge as a secret. to obtain patent in any country. one can ask for damages if the secret was made public by a breach of contract. and one must apply in separate countries if they wish to obtain patent rights in those countries. This will be a civil law suit between the secret holder and the breacher . secrets may be kept for ever.World Intellectual Property Organization) to facilitate patent application in multiple countries. the monopoly can be eternal. the invention should be international in the sense that it the should be a ﬁrst in the world. PATENTS 3. and subsequently granted. but it is another way of monopolizing knowledge. Trade secrets could be new revelations or not. 3. and if so. This aspect will be discussed in the patentability requirement section.
3. Once the patent is granted. so no one else will ever be able to make an identical Coca Cola unless and until the trade secret is leaked out by someone.3. and all what the government does is give the inventor a right to exclude others from copying and making duplicates. a limited time monopoly is granted by the state in exchange of knowledge that other people can use after the expiry of the patent term. Government will not do it for him. the inventor may make a proﬁt from his invention. A good example of a trade secret is the recipe of Coca Cola. . COMMERCIALIZATION 21 and anybody who has commercially gained by the breach and compensation may be paid and commercial production stopped.5 Commercialization The purpose of ownership is to get some return on investment. In contrast. The inventor himself has to ﬁnd ways to make a proﬁt and it is called commercialization of patents and will be discussed towards the end of this book. when a patent is granted.5. This is true with intellectual property too. That is very unlikely to happen since any one person may not know the complete composition of ingredients.
22 CHAPTER 3. PATENTS .
1 Patentable Subject Matter Patentable subject matters are deﬁned in every country’s national legislation. The revealer should provide suﬃcient information to the public.Chapter 4 Acquiring Patent Rights To get a patent. patentable subject matters are deﬁned negatively. Generally. 4. the requirements are common in the features described below. The revelation should be an invention. 2. 1. there are common requirements in most countries. The revelation should be a patentable subject matter. meaning that what is deﬁned is the subject matters that are not patentable. So if the new revelation is not falling into the 23 . The following discussion of the above mentioned requirements is based on Sri Lanka National Intellectual Property Act (2003) but as mentioned above. the new revelation should satisfy some requirements. Despite the fact that these requirements are deﬁned with slight variations by diﬀerent legislations. 3.
the following subject matters are not patentable. and diagnostic methods practiced on the human or animal body : Provided however. they are almost the same. According to section 62(3) of Sri Lanka National Intellectual Property Act. then the subject matter is presumed patentable. or methods for doing business. . any product used in any such method shall be patentable. that a patent granted in respect of micro-organisms shall be subject to the provisions of this Act. shall not be patentable (a) discoveries. (e) an invention which is useful in the utilization of special nuclear material or atomic energy in an atomic weapon . (d) methods for the treatment of the human or animal body by surgery or therapy. scientiﬁc theories and mathematical methods .24 CHAPTER 4. animals and other micro organisms other than transgenic micro organisms and an essentially biological process for the production of plants and animals other than non-biological and microbiological processes : Provided however. notwithstanding they are inventions within the meaning of subsection (1). (f) any invention. 62. (b) plants. rules. animal or plant life or health or the avoidance of serious prejudice to the environment. Though all the countries’ legislations are not expressed in identical wordings. (c) schemes. ACQUIRING PATENT RIGHTS deﬁned categories. (3) The following. performing purely mental acts or playing games . morality including the protection of human. the prevention within Sri Lanka of the commercial exploitation of which is necessary to protect the public order.
and this is what is done by generic drug manufacturers. In fact. and if the improvement is not obvious. During the validity of the patent too. 4. but such explanations are beyond the scope of this book. the improvement can be patented. it is necessary that the patent document describes the invention in full with suﬃcient details so that someone could make the same product after reading the document. are the revelations satisfying the following three requirements: . they make generic drugs according to the recipe revealed by the expired patent. others can copy it exactly. These are also deﬁned and described in national legislations. and as soon as it is expired. 4. There are reasons why these subject matters are not patentable.An Inventive Subject Matter There are 3 core requirements for a revelation to be inventive. What constitutes inventions. according to section 63 of Sri Lankan National Intellectual Property Act. This does not mean that people can copy what is in the document during the period of validity of the patent. as will be explained in subsequent sections. SUFFICIENT DISCLOSURE OF THE INVENTION 25 Similar or the same provisions exist in other jurisdictions and an interested reader may verify it by referring to them.2 Suﬃcient Disclosure of the Invention As mentioned earlier. In this light.2.4.3 Patent . The words used in diﬀerent legislation vary slightly. people can use the knowledge by way of making improvements to what is mentioned in the revelation. after the expiry of the patent. but they are uniform and same in terms of their meaning. the whole objective of granting patent rights by the state to individuals is the dissemination of knowledge to the society for its’ betterment. They wait until the patent is expired.
(1) An invention is new if it is not anticipated by prior art. it is now possible to explain patentability testing. When a patent is applied for by someone. 65. The inventors who apply for patents also do these tests in order to make sure that their revelation is patentable. involves an inventive step and is industrially applicable. non-obviousness. These requirements are explained by using an example in the following section.26 CHAPTER 4. usefulness (for industrial applicability) and as mentioned above. and utility. ACQUIRING PATENT RIGHTS 63. An invention shall be considered industrially applicable if it can be made or used in any kind of industry. . 66. their meanings are the same. non-anticipation (for new). having regard to the prior art relevant to the patent application claiming the invention. This is because the patent application to granting process (known as patent prosecution) is quite expensive and people want to make sure. 4. An invention is patentable if it is new. inventiveness (for inventive step). that they will not lose money by a patent rejection by an examiner in the examination process. They are described in the act as follows: 64. Synonyms used by other legislations are novelty.4 Patentability Testing Having described the patentability criteria. to the best of their knowledge. such inventive step would not have been obvious to a person having ordinary skill in the art. An invention shall be considered as involving an inventive step if. patent examiners in the national intellectual property oﬃce carry out these tests to ascertain whether the revelation is patentable.
In fact. there maybe a product already in use which is made in some shape. newspaper articles. non-anticipatory) requirement. is the new one patentable? The answer is . Non obviousness or inventiveness is the most complicated and diﬃcult to decide requirement. These are two straightforward requirements. So when an improvement is introduced to what has been known. exhibitions. scientiﬁc journals. one has to make sure that the revelation does not fall into subject matter that are not patentable. For example.4. the inventors and examiners have to do what is known as a prior art search (described later). After this. it is new because it was not there earlier but the question arise whether the improvement is signiﬁcant enough to warrant a patent. What this means is that the revelation should have some use. The core requirements test has to be done next. By doing a prior art search. at the end of the reading of the document. and in short whatever that was in the public domain – known to the public) is researched.4. but are improvements of earlier products and knowledge. Mere ideas are therefore not patentable. all the related knowledge (patent literature. a patent examiner is allowed to ask the inventor for a prototype in the examination process if the examiner does not feel that the revelation is practical and has some use. it should be clear whether the revelation is not already known. The next requirement is the novelty (new. PATENTABILITY TESTING 27 Firstly. This is not very straightforward but still is a somewhat easier to decide requirement than the non-obviousness requirement described in the next paragraph. and if another product is made with a diﬀerent shape. the revelation is described in full with suﬃcient details. product launches. People cannot get a patent for what was existing before even if no one has claimed patent rights for them. it should be tested whether. To ascertain novelty. Most of the things that are in use today are not totally new. The most straightforward core requirement is utility or industrial applicability. This simply means that the revelation should be new meaning that it has to be the ﬁrst in the word. After the research.
It is the main cause of patent invalidating. 4. a drug which has been patented to cure a certain disease can be patented again for curing another disease. It is patentable if it serves a purpose unforeseen or oversighted by the earlier invention. For example. The following is the background of the case.1 Patentability requirement case study: Beloit vs. and non obviousness requirements. which will be described later. (Skilled in the art means that there is basic knowledge of the sciences encompassing the subject matter. this requirement is described as "not being obvious" to a person skilled in the art. It involved both novelty and non-obviousness issues. the new shape maybe a shape where a user has easy operability that makes the product more marketable.28 CHAPTER 4.4. Valmet Oy This was a legal case based on a dispute between the two parties Beloit (herein after called A) and Valmet Oy (herein after called B) in Canada. It is not patentable if the new shape only serves a particular purpose which was foreseen by the earlier inventor. The legal case study in the following section gives an illustration of novelty. ACQUIRING PATENT RIGHTS No and Yes. In legal jargon. Similarly. The paper manufacturing process basically involves the following four stages: Making a slurry Pressing the slurry Pulling the pressed slurry Drying the pressed slurry The economy of production greatly depends on the pressing stage where the water in the slurry is removed. An increased efﬁciency of the pressing makes the pulling stage faster thereby increasing productivity. . The case was with regard to the press section of a paper manufacturing machine.) The outcome on this test is subjective.
4. The additional pressing stage in B’s machine makes the pulling process faster thereby increasing the productivity. The mechanism of party A (labeled as prior art: bi-nip) has three rollers that provide two pressing stages while the mechanism of party B (labeled as claimed invention: tri-nip) has four rollers providing three pressing stages. The pressing is achieved by rotating rollers through which the wet slurry passes. B’s machine became more marketable. A argued that B’s mechanism was not inventive on the grounds of novelty . Then A sued B alleging that B was infringing on the patent rights of A. Eventually. Both A and B got patent rights to their respective mechanisms.4. the party which invented the pressing stage ﬁrst (party A) tried to invalidate the patent right of B (who invented the second mechanism) on the ground of novelty and obviousness. At a later stage. PATENTABILITY TESTING 29 In this case. Above ﬁgure depicts the mechanisms of pressing stages of A and B. both A and B had invented two diﬀerent pressing mechanisms and both of them obtained patent rights for their respective inventions.
the appeal court judge decided that B’s patent was also valid and that there was no infringement of A’s patent rights. They are subjective decisions and the decision has to be made after considering all the encompassing facts and wisdom. The case was argued in Canadian courts of law. it is possible to study another important area of IP known as prior art search. B’s patent was invalid. the composite machine can still be inventive (in terms of novelty) and just because the composite invention is composed of already patented inventions. The gist of the case is that novelty and obviousness do not have straightforward answers.30 CHAPTER 4. why was it not done before. The opinion of the appeal court judge with regard to the novelty of the invention was that if one makes a machine by referring to diﬀerent existing inventions and literature. the composite invention cannot be invalidated on the grounds of not being novel. With this knowledge. The appeal court judge’s argument with regard to the obviousness was that even if it was true that it was a mere addition of another roller. the trial court judge accepted the arguments of A citing that a mere addition of a roller is an obvious improvement anybody skilled in the art could do. ACQUIRING PATENT RIGHTS and obviousness and therefore. The judge also took the view that it is not even novel because there was enough literature published by diﬀerent parties that the manufacturing process can be made faster by better pressing. . that addition made the machine more productive (about 25 per cent increase of production speed) and the machine became a market success. At the trial. If it were very obvious to those skilled in the art. The appeal court judge reversed the decision of the trial court judge and stated that B’s invention with an additional roller was also inventive. B then appealed against the decision of the trial court judge. Along these arguments.
previous work is known as prior art. and these will be discussed at the end of this chapter. There are diﬀerent types of prior art searches one could perform for diﬀerent purposes. Prior art is deﬁned in Sri Lanka National Intellectual Property Act as follows: 64.Chapter 5 Patent Prior Art Searches 5. (2) Prior art shall consist of 31 . In intellectual property jargon. (1) An invention is new if it is not anticipated by prior art. Prior art search hence means the search for previous work.1 The Meaning and the Need of Prior Art Searches It is clear from the previous chapter that it is necessary to look at the previous work done with respect to a revelation when deciding its’ patentability.
priority date of the patent application claiming the invention . If someone ﬁnds that a patented invention is not patentable due to being publicly known. to the extent that such contents are included in the patent granted on the basis of the said patent application made in Sri Lanka. research literature. Everything in the public domain means already patented inventions. PATENT PRIOR ART SEARCHES (a) everything disclosed to the public. (b) the contents of patent applications made in Sri Lanka having an earlier ﬁling or. This condition is tested by referring to everything known to the public prior to the potentially patentable revelation. . it is practically impossible to search all these areas. However. exhibitions. But it is generally accepted to be so. It could even be a leaking out of information by a research mate or a company employee.32 CHAPTER 5. the revelation has to be internationally new. it still does not absolutely mean that it was not in existence before. but someone else could invalidate the patent if he/she could prove that it was already known to their ancestors.2 Scope of Prior Art Search As mentioned above. he/she can challenge the validity of the patent. priority date than the patent application referred to in paragraph (a). by written publication. to get a patent.) and get a patent. Traditional knowledge is a good example of this. or any other public disclosure. despite the fact that the patent rights enforceability is local. Even after passing the test of patentability by referring to patent material and research article. anywhere in the world. Someone could formulate a new compound using traditional knowledge (herbal recipes etc. prior to the ﬁling or. 5. and generally the search is done on patent databases of diﬀerent jurisdictions and research articles. use or in any other way. oral disclosure. newspaper publications. where appropriate. where appropriate.
The search by inventors or their agents is done on free online patent databases hosted by respective countries because unless the inventor or the agent is a specialized person in the area. This is similar to a land registry where land titles are kept for public search. Generally. this oﬃce administers patent related matters. This is done in order to get suﬃcient conﬁdence that the revelation is inventive and not rejected by examiners in the examination process. prior art search on patent databases is discussed. of course. This decision can. they may not have access to subscribed research literature. be challenged by other parties (in case of a grant) or by the applicant himself (in case of a reject) in courts of law. and hosts a free public patent database which the public could search. In case of patents.3 Prior Art Search on Patent Databases Each country has a national intellectual property oﬃce responsible for intellectual property related matters. which is known as patent prosecution.5. This examination is rigorous and done carefully since after the examination. In the following section. The patent application to granting process.3. First stage is where the search is done by the inventors or their agents prior to lodging a patent application in the government oﬃce. As we all know. before the explosion of ICT (Information and . The second stage of prior search is done at the national intellectual property oﬃce by examiners in the examination process. a patent application is allowed (patent grant) or rejected (patent reject). the oﬃce has access to subscribed scientiﬁc research literature other than free public patent literature. 5. The grant or reject decision may involve millions and billions of rupees if the application is with regard to cutting edge technology and research. is costly and if the application is rejected. PRIOR ART SEARCH ON PATENT DATABASES 33 Prior art searches are mainly done in two stages. the applicant may lose a lot of money and time.
generally search is limited to online databases. we had to go where the data is kept.gov . International search was next to impossible then. people had to go to the patent oﬃce to do some reference. The following are the generally searched patent databases. 5. Even searching online databases in all the countries is very time consuming and may not be worth the eﬀort. when one wants to determine the patentability of a revelation. Patent oﬃces are no exception. there were diﬀerent classiﬁcations available in order to carry out manual searches easily. we did not have the luxury of accessing remote data. he/she may search only in that country. who would go to a foreign country to do a patent search spending signiﬁcant amount of money. Until a few decades ago. Thanks to ICT. we can now search the databases even from our hand held devices from any part of the globe.34 CHAPTER 5.1 Prior Art Search on Online Patent Databases As mentioned above. he/she has to search all the literature. if one knows that particular research similar to the potential invention is done in a speciﬁc country. For example. The selection of countries greatly depends on the potential invention. However.3.uspto. It is therefore considered suﬃcient to search in speciﬁc countries (or regions) where one expects the possibility of prior art search. WIPO (World Intellectual Property Organization): www.epo. and ﬁnding what you want in that heap of information was quite exhausting. But since this is not possible.org EU (European Union): www.org USPTO (United States Patent and Trademark Oﬃce): www. PATENT PRIOR ART SEARCHES Communication Technology).wipo. When it was necessary to refer to some data.
kr JIPO (Japanese Intellectual Property Oﬃce): www.jpo.gc.au 35 All these databases are interfaced with a search engine and a user interface.cipo. Inventor Name.ca KIPO (Korean Intellectual Property Oﬃce): www. Application Number.ipaustralia.go.5.jp IP Australia (Australian Patent Oﬃce): www.go. Searches can be done on diﬀerent ﬁelds.kipo.. Applicant Name.gov. Publication Number etc. PRIOR ART SEARCH ON PATENT DATABASES CIPO (Canadian Intellectual Property Oﬃce): www.3. namely. . Below is a snapshot of the search engine user interface of WIPO.
For example.36 CHAPTER 5. For example. a demonstration of a prior art search is illustrated. There is diﬀerent grammar used in diﬀerent search engines and they are described in the help pages of the search interface. if the search is relating to a robotic arm for cleaning drains. a patent document mainly has an abstract description of the invention. robotically etc. will be detected. . Boolean operators are simple logical operation of OR and AND. the best yield will be given if the search can ﬁnd all these possibilities. and the key words can be joined by these so that the order of the key words in the text does not matter. speciﬁc details are not known. “A robot for cleaning drains” and another could write it as “A robotic drain cleaning arm”. We can use search grammar to make composite search phrases to catch almost all these possibilities. PATENT PRIOR ART SEARCHES These are straightforward search tools and are useful if speciﬁc information is known about a patent or speciﬁc information is required about a patent. detailed description of the invention and what are known as claims. Most of the time. When the search is done. if the search is done for robo* (some search engines use ? instead of *). The most eﬀective and economical place to search is on the abstract because abstract contains almost all about the invention. Key words combined with diﬀerent operators could be used to search anywhere in the patent document. robotic. the words robot. All what an inventor or the agent knows is some key words relating to the invention and the task is to ﬁnd whether similar work has been done elsewhere. As will be described later. In the next section. Most important of these are Boolean operators and wildcards. one could write the invention as. Wildcards are used to catch synonyms of words. Key words can be of diﬀerent formats and order.
Extraction of petroleum oil from oil sands is an economical industry in Alberta. but to be on safe side. it can be used as “hydrogen” AND “peroxide” to detect abstracts where the word “hydrogen” and ”peroxide” are separately used for some reason. PRIOR ART SEARCH ON PATENT DATABASES 37 5. The other are the word “petro” and “gas” but they can be used as petroleum. If the product’s usability is restricted to a particular country or a region. The search key words and how they are connected have to be decided ﬁrst and the search could then be done on the abstract. One such word is “oil” itself. They can be used as “hydrogen peroxide” as one phrase. gasoline etc. . Suppose that a person has manufactured a machine where this process is improved and he wants to determine the patentability of his potential invention by doing a prior art search. it is not necessary to look at databases in tropical countries like Sri Lanka. we want to make sure that our one is not obvious when compared with what is already made. We now want to patent it. if the potential invention is a new snowmobile design.3. it is suﬃcient to look at only those databases. we have to make sure that no one has ever made such a machine and if a similar one has been made. Then the words that can be used for the word “oil” have to be selected. We want to do this by doing a patent prior art search. The words “hydrogen peroxide” has to be there necessarily. it is necessary that we do the search in all the countries having oil deposits because similar research may be going on in almost all of those countries. the best place to do a search is on the abstract. and before doing so. A prior art search on Canadian patent database on oil extraction from oil deposited sand is illustrated below. As mentioned earlier. One method of extracting oil from oil mixed sand is by adding hydrogen peroxide to the oil slurry.3. For a product like this.2 Prior Art Search: An example Let us suppose that we have designed a new machine to extract oil from oil deposits in sand and soil. For example. Canada.5.
Patent Number 2578119 .695 matched your query. Accordingly. Click on its number to view the details of the document. Patent Number 2253975 . Patent Number 2627218 . Visual ﬁltration by looking at the title has to be done now. Query Submitted: ((hydrogen AND peroxide <IN> ABSTRACT) <AND> (gas* OR oil OR petro*<IN> ABSTRACT)) 533 documents out of 2. they can be formed and joined as “oil OR petro* OR gas*”.METHOD FOR MEASURING THE CONCENTRATION OF HYDROGEN PEROXIDE VAPOR . Patent Number 2310839 . so we have to use wildcards to detect all the possibilities.38 CHAPTER 5. Let us look at the ﬁrst 10 results. Are we to read all these 533 and is it really worth the eﬀort? No.A LARGE INTEGRATABLE HYDROGEN PEROXIDE INTERMEDIATE STAGE OR STAND ALONE TANK FOR THE PURPOSE OF PURIFYING FUELS USING HIGH STRENGTH HYDROGEN PEROXIDE IN FUELS 4.VAPOR STERILIZATION USING A NON-AQUEOUS SOURCE OF HYDROGEN PEROXIDE 3. 1.084.ACTIVATED PEROXIDE SOLUTIONS AND PROCESS FOR THE PREPARATION THEREOF 2. we have to look only at the ones that are relevant to our invention. PATENT PRIOR ART SEARCHES as well. The above results show that there are 533 patent documents in the whole database of more than 2 million documents. Following are the results obtained when the search is done using this keyword combination on Canadian patent database.
METHOD OF RELEASING GAS OR VAPOR FROM A SOLID MATERIAL 8. Patent Number 1144180 . This exercise has to be done for the whole list of 533 documents (which can be done in less than an hour). A LARGE INTEGRATABLE HYDROGEN PEROXIDE INTERMEDIATE STAGE OR STAND ALONE TANK FOR THE PURPOSE OF PURIFYING FUELS USING HIGH STRENGTH HYDROGEN PEROXIDE IN FUELS This 50-30.000 barrel tank is a facility to Oxidize and Purify a variety of fuels using Hydrogen Peroxide (in 30-99 pc purity) before the fuel is sent to market.STERILIZING METHOD FOR MEDICAL STERILIZATION PACKAGING AND INJECTION PACK 6.5. This is left as an exercise. Patent Number 2350387 .STERILIZATION SYSTEM AND METHOD 7. Patent Number 2465081 . PRIOR ART SEARCH ON PATENT DATABASES 5.VAPOR STERILIZATION USING INORGANIC HYDROGEN PEROXIDE COMPLEXES 10.3. The attachments and scheme are designed in an open air fashion so that the Hydrogen Peroxide can not cause a . we can conclude that only 3 and 7 are relevant. Let us look at the above two (3 and 7) abstracts. Patent Number 2465078 . Patent Number 2235941 .PROCESS AND APPARATUS FOR PREPARATION OF PHENOLS 39 By inspection. Patent Number 2280941 .METHOD FOR RAPIDLY DETERMINING THE ACCEPTABILITY OF LOADS TO BE STERILIZED 9. The second ﬁltration has to be done by looking at the abstracts of the documents keeping the invention in mind.
and.40 CHAPTER 5. measure the Hydrogen Peroxide. it will be suctioned out to a preliminary or ﬁnal storage tank or taken on beard a tanker truck for market. and put into barrels. After the Fuel stands in the tank for 24 -48 hours. The Grid Iron work area is of suﬃcient size ( covering about 25 per cent of the top of the tank) to allow for two to three persons to perform the tank operations. The solid hydrogen peroxide complex is sealed within a gas permeable material. which are to receive the barrels. and operate the mixer as the Hydrogen Peroxide is added to the fuel. METHOD OF RELEASING GAS OR VAPOR FROM A SOLID MATERIAL A method of releasing hydrogen peroxide vapor from a solid hydrogen peroxide complex capable of releasing the hydrogen peroxide vapor so as to sterilize an object is described. There will be a nominal amount of water and dust settled at the bottom of the subject tank. where it will be administered to the fuel in measured quantities. or a separate tank holding the hydrogen peroxide from which it will be piped into the tank. and shipped in water to a handling facility. The tank will be constructed of a suﬃciently strong combination of Re-bar concrete and Metallic or Plastic lining (nonreactive surfaces for the Hydrogen Peroxide). The roof is designed to protect the contents of the tank from weather. hold sealed lighting for the work area. which will be hosed out of the tank at its lowest corner. The solid hydrogen peroxide complex is heated to thereby release the hydrogen peroxide vapor through the gas permeable . PATENT PRIOR ART SEARCHES pressure buildup as it performs its oxidation process on the fuel. There will be a covered electric or gas motored lift shaft to the side of the tank for bringing the Hydrogen Peroxide barrels from ground level to above the top of the tank.
and such documents have to be read and compared with the invention more closely. and basic search can be customized according to the need. on a search. but basically searching is the same. The object is contacted with the vapor. However. that is whether it is new and non-obvious with regard to the prior art. irrelevant abstracts can be ruled out.5. Finally. The primary purpose of prior art search is to ascertain the patentability and it is called a patentability search. DIFFERENT TYPES OF PRIOR ART SEARCHES material. While reading. There are other types of searches as well. Then it is necessary to read them carefully after downloading the whole document. 5. Following are some important searches one could perform to fulﬁll a speciﬁc need. we have to see whether the new revelation is inventive. 41 By reading the abstracts on the computer screen itself while keeping the abstracts of the invention in mind. but the ﬁltration is done with a diﬀerent motive. we will end up with relevant documents to our invention. a few patent documents are obtained as relevant ones. Generally. Name Search State of the Art Search Technological Activity Search Legal Status Search . The next section discusses diﬀerent kinds of searches. the overall purpose of the search maybe diﬀerent with regard to what the purpose of the search is.4 Diﬀerent Types of Prior Art Searches The basic purpose of prior art searches is to ﬁnd out what has been done with regard to the technological activity done by the inventor.4.
.4. it is going to be a complete wastage of time and energy if someone has already claimed for the invention. a searcher can perform a search on what the speciﬁc inventor has patented.2 State of the Art Searches This type of search is done to learn the present state of the art technologies available.4. State of the art search is very useful to researchers who embark on new research activities.3 Technological Activity Search This is similar to a state of the art search. they can do their research more economically and eﬀectively. 5. PATENT PRIOR ART SEARCHES Infringement Search (Freedom to Operate Search) Patentability Search 5.1 Name Search This is a search done when speciﬁc information on the patent is known to the searcher. This search is also useful if one is interested in doing improvements to what is in existence. 5. The speciﬁc purpose of technological activity search is to ﬁnd the active competitors or countries where some new technology research is being done. Such information is useful if one wants to avoid “reinventing the wheel” because if the searcher is going to do the same invention.4. For an example. By knowing the present state of the technology.42 CHAPTER 5. what the speciﬁc company has patented or whether a patent application or a patent is available in the speciﬁc country with regard to the work the searcher is interested in knowing. assignee or the application country is known. if the inventor.
The search is more time consuming and rigorous than any of the earlier mentioned searches.4 Legal Status Search Legal status search is to ﬁnd the present legal status of a patent. DIFFERENT TYPES OF PRIOR ART SEARCHES 43 5.4.5. and novelty/non obviousness search.5 Infringement Search (Freedom to Operate Search) Infringement search or freedom to operate search is done in order to see whether an infringement of a patent right will be done by engaging in the research or the production of a certain product. Such information is useful when making new things (speciﬁcally drugs) because if someone else later sues and proves of an infringement being done. Synonyms to this search are pre-application search. This information is very useful for companies that make generic products of the patented invention after the patent is lapsed. 5. The main concern in this search is to ﬁnd out whether the patent has lapsed after the expiry of the patent monopoly or abandoned. This is the most widely done search by patent applicants and patent examiners. 18.104.22.168 Patentability Search Patentability search is done in order to ascertain whether a new invention is patentable by fulﬁlling the requirements of novelty and non-obviousness. compensation could be very costly. .4.
PATENT PRIOR ART SEARCHES .44 CHAPTER 5.
A patent document is written in separate sections.1 Structure of a Patent Title 45 The following are the sections of a patent document.Chapter 6 Patent Drafting After the prior art search is done. . the invention has to be written according to a standard format. It is similar to the structure of a standard research paper except that the patent document also has a section known as Claims. the whole objective of the government (society) granting a patent right (a monopoly) is to make the inventor reveal the invention so that any other person skilled in the art should be able to use it after the expiry of the patent or do improvements while the patent is valid. 6. To do so. if the inventor or his agent is of the opinion that the new revelation is inventive and therefore patentable. As mentioned earlier. This is called patent drafting. the invention has to be written in full and clearly so that anybody can read and use it.
In addition to this requirement. Some legislation limit the number of words in the abstract. it should also be possible to read the abstract and to ﬁlter it. Following are some sample abstracts extracted from Manual of Patent Oﬃce Practice. in Canada. one should be able to know what the invention is. 1: A heart valve with an annular valve body deﬁning an oriﬁce and having a plurality of struts forming a pair of . For example.1 Title The title is the briefest description of the invention. they are mentioned in Section 71 of the National Intellectual Property Act. It has to be complete and should not be misleading.46 Abstract CHAPTER 6.1. it is 150 words. One of the main purposes of giving a complete and concise title is to be able to extract them when a search is done. it should describe the invention in the shortest possible way. 36 of 2003 6. PATENT DRAFTING Description: Background of the invention. Disclosure of the invention Claims Drawings These requirement are described in the patent laws and rules of a country. In Sri Lanka. 6. Present state of the technology. No. CIPO (Canadian Intellectual Property Oﬃce).1. Therefore. By looking at the title. Some examples are: "Solar Powered Drain Cleaning Robot”. Similar to the main purpose of the title.. the main purpose of the abstract is to enable an eﬀective search.2 Abstract The abstract is a brief description of the invention. “Nano Fibres for Manufacture of Textiles” etc.
A slight leak or backﬂow is provided in the closed position by making the oriﬁce slightly larger than the closure member. and prevent deterioration of the device. STRUCTURE OF A PATENT cages on opposite sides of the oriﬁce. 2: Amides are produced by reacting an ester of a carboxylic acid with an amine. consisting essentially of silicon oxide and lead oxide. whereby a passivating ﬁlm forms. followed by deposition of a layer of lead on the ﬁlm. washed. The temperatures employed are substantially lower than those conventionally used. wherein a silicon oxide ﬁlm is formed on a surface of a semiconductor substrate.1-2 percent calcium hydroxide. of mercury to remove moisture and acid gases which prevent the reaction. using as catalyst an alkoxide of an alkali metal. for at least 10 minutes in an oxidizing atmosphere. This combination is then heated at 500-700oC. and then acidiﬁed to render it receptive to dyestuﬀs without adversely aﬀecting the physical properties of the wool. The ester is ﬁrst heated to at least 75 degrees Celsius under a pressure of no more than 500 mm. An annular rib is formed in a channel around the periphery of the valve body to anchor a suture ring used to secure the valve within the heart. 4: Wool is heated at 50-65 degrees Celsius for less than 15 minutes in an aqueous dispersion of 0.6. 47 . A spherical closure member is captively held within the cages and moved by blood ﬂow between open and closed positions in check valve fashion. Blood ﬂow is maximized in the open position of the valve by providing a convex proﬁle on the oriﬁce-deﬁning surfaces of the body.1. 3: Process for the production of semiconductor devices. and then converted to an amide without further heating.
The following extract from the Canadian Patent Oﬃce Practice Manual’s quotation of a judge’s view in a legal case emphasizes this requirement. Dickson J.3 Description Description is composed of three sections. skilled . We ﬁrst start with the need for the invention (background) and secondly. This is a very logical way not only of looking at the patent description but also at a research paper. the purpose of granting a patent right is the anticipation that the inventor reveals his/ her knowledge to society so that the public can use it after the expiry of the patent or do improvements while the patent is in force. and (2) is enabled to practice this invention. noted that “the inventor must. Macmillan Bloedel (Saskatchewan) Ltd. describe the potential invention and justify its’ patentability by comparing it with what has already been done.48 CHAPTER 6.. The following extract from the Canadian Patent Oﬃce Practice Manual gives an overview on the requirements for a description. This has to be done by someone based on the description. what has been done so far to fulﬁll the need (present state) and ﬁnally.1. v. namely. and the disclosure of the invention. “ In Consolboard Inc. the present state of the technology. give to the public an adequate description of the invention with suﬃciently complete and accurate details as will enable a workman. This can be thought of as a chronologically ordered story of the invention. PATENT DRAFTING 6. in return for the grant of a patent.” As mentioned earlier. “ The description must provide a clear and complete disclosure of the invention such that the person skilled in the art: (1) can unambiguously identify what has been invented. background.
in such full. having only the speciﬁcation. manufacture or composition of matter. or with which it is most closely connected. making. There may be slight variations in diﬀerent jurisdictions but the main features are uniform in all the countries.1. to make. The description must be able to answer the questions “What is your invention?: How does it work?” such that “when the period of the monopoly has expired the public will be able. STRUCTURE OF A PATENT in the art to which the invention relates. compound or use it. and (d) in the case of a process. construct.6. According to Canadian Patent Act subsection 27(3): The speciﬁcation of an invention must (a) correctly and fully describe the invention and its operation or use as contemplated by the inventor. Sample disclosures are too long to quote here but an interested reader could easily ﬁnd examples by accessing an online patent . or the method of constructing. if any. concise and exact terms as to enable any person skilled in the art or science to which it pertains. (b) set out clearly the various steps in a process. of the various steps. to make the same successful use of the invention as the inventor could at the time of his application”. so as to distinguish the invention from other inventions. compounding or using a machine. 49 The requirements of a proper disclosure are described in the patent legislation of diﬀerent countries. explain the necessary sequence. to construct or use that invention when the period of the monopoly has expired”. (c) in the case of a machine. clear. explain the principle of the machine and the best mode in which the inventor has contemplated the application of that principle.
What one could enjoy in case of a land is what is enclosed in the boundary.4 Claims The most signiﬁcant part of a patent as far as the inventor is concerned is what is known as the claims. This is done for eﬀective automatic language translation. patent claims have to be drafted so that others cannot creep though them and use the invention without legal infringement. Illustrative drawings may be included to the description. however they have to be drawn on separate sheets and no wording should be included. Claims can basically be deﬁned as the boundary of the invention just like a boundary of the land one is owning. and according to Canadian Patent Act. General Structure of Claims A claim essentially is composed of three parts: Preamble or introductory phrase Transitional phrase . All what is claimed has to be justiﬁed in the disclosure where the invention and what was already known could be cited for comparison purposes. and so is the case for a patent. A complete sample patent is also found at the end of the book for quick reference. what one can legally enjoy as his own is what is enclosed in the patent claim. Patent legislations deﬁne claims more formally. Just like one has to enclose the physical boundary of a land securely so that others cannot encroach. Patent drafting is professional work that needs a signiﬁcant amount of expertise. the claims must deﬁne distinctly and in explicit terms the subject matter of the invention for which protection is sought (section 27(4) of the Patent Act). 6.1.50 CHAPTER 6. PATENT DRAFTING database. Claims should necessarily contain what is invented but should not contain what is already in the public domain.
. . . consisting of. . a new drain cleaning robot. . and the protection is only given to the parts that are new. . What this means is that an invention may contain things that are already known but the composite invention should be new to the existing public domain knowledge.6. A robot for cleaning drains comprising . What the preamble does is to state that what follows is related to what is mentioned in the preamble. STRUCTURE OF A PATENT Body 51 Preamble is an introduction to what follows. A composition for decomposing oil spills on water comprising . having etc.. one can say that the invention is related to a bottle opener.1. . robots and compositions are already available and the present invention is about a new bottle opener. . . which comprises. . a drain cleaning robot and an oil spill decomposing composition where such equipment. no legal right is given to the inventor for what is already known. some such transitional words/ phrases are: comprising. . . . In English. . It may contain what is already known to the public but the composite body should be not known to the public before. By looking at the preamble. . or the division of what is in the public domain and what is the invention. and a new oil spill decomposing composition described after the transitional word "comprising". . the connection. Examples: A bottle opener comprising . hitherto unknown to the public. All what the transition word/phrase does is the transition from the preamble to the body. composed of. . . including. . . . The body of the claim describes the invention clearly and completely. made of. . . However. The preamble is connected to the following body – the inventionby a transitional word/phrase of a language.. . This introduction is what is already in the public domain. .
In case of a product. it is with respect to the process and sub processes of the invention. a partially-absorbing layer disposed behind said electrode. Both the drug and the process of manufacture are patentable and can be claimed as a legal right. it is not possible now to patent such processes without the concurrence of the holder of the product patent. We will now look at some examples of claims. India for example. a transparent electrode disposed behind said substrate on a side of said substrate opposite from said viewer. a reﬂective rear electrode disposed behind said emitting layer. The best example is the new drug and its’ manufacturing process. The invention could be a product or a process. The inventor does not have any legal right to either mobile phones or SMS gateways but only for the triggering device composed of a mobile phone and a SMS gateway. The claim can be worded as “An explosive triggering device comprising a mobile phone and a SMS gateway". Before it became mandatory to enforce product patents.52 CHAPTER 6. There can also be claims that claim both the product and the process. However. used to not recognize product patents and it was possible for Indian researchers to apply for patents for new processes to manufacture products like pharmaceuticals already patented elsewhere. Let us also assume that mobile phones and a short message (SMS) usage are already known to the public but explosive triggering using SMS is not yet known. an electroluminescent emitting layer disposed behind said partially-absorbing layer. the claim is with respect to the parts or components of it. 1. PATENT DRAFTING As an example. If the invention is a process. Title: An Electroluminescent Device Claim: An electroluminescent device comprising a transparent substrate for facing a viewer in front of said substrate. These are extracted from Canadian Intellectual Property database. said emit- . let us suppose that someone invents an explosive triggering device by sending a SMS using a mobile phone.
an arm driving mechanism for driving said arm. Some of these layers may be already known but the composite unit is new. Some of these may be already known but the composite unit is new. Title: An Outer Wall Cleaning Robot Claim: An outer wall cleaning robot comprising: an arm pivotable about a ﬁrst rotation axis that extends in a substantially horizontal direction in approximately parallel relation to an outer wall surface of a building. a rotational body supported by said arm in such a manner that said rotational body is pivotable about a second rotation axis extending in parallel with said ﬁrst rotation axis. The inventive part is a new way to make it by combining diﬀerent layers of material with diﬀerent thicknesses to form a composite unit that has contrast enhancement capability. said partially absorbing layer and said emitting layer each being made from a material and having a thickness that are chosen to cooperate with said reﬂective rear electrode such that at least a portion of ambient light incident on said device is reduced.1. STRUCTURE OF A PATENT ting layer being made from a material operable to emit light towards when a potential is applied between said electrodes. The invention is about outer wall cleaning robots which are already known. a wiping-squeegee mounting mechanism attached to said rotational body. a rotational-body driving mechanism for driving said rotational body independently of driving of said arm by said arm driving mechanism. and a wiping squeegee attached to said mounting mechanism. 53 The invention is about an electroluminescent (devices emitting luminence when an electric current is applied to the terminals) device which is already known. . The inventive part is a new way of making an outer wall cleaning robot by combining diﬀerent components. 2.6.
2. nano-boron. PATENT DRAFTING 3. nano-zinc oxide. The invention is a new way of doing so using a special compound. Most of the time the content of this claim is the same as what is in the abstract. and combinations thereof The invention is about a method of cementing wells which is already known.54 CHAPTER 6. Title: An Electroluminescent Device Abstract: An aspect of the invention provides an electroluminescent device that incorporates a partially-absorbing layer which is disposed in front of an emitting electroluminescent layer and a reﬂective rear electrode. nano-iron oxide. Title: Well Treatment Compositions and Methods of Utilizing Nano Particles Claim: A method of cementing comprising: introducing a cement composition into a subterranean formation. wherein the cement composition comprises cement. water. The rotational body can be . For example. What are mentioned above are independent claims which are also known as main claims. The thickness and material of the partially-absorbing layer cooperates with the thickness of the electroluminescent layer to cause at least some reduction in ambient light incident of the display. nano-alumina. and at least one nano particle selected from the group consisting of particulate nano-silica. Some of these may be already known but the composition is new. the abstracts of the above claims extracted from the CIPO database are as follows: 1. Title: An Outer Wall Cleaning Robot Abstract: An outer wall cleaning robot includes an arm pivotable about a ﬁrst rotation axis and a rotational body supported by the arm for pivotal movement about a second rotation axis.
As the name implies. The inter-relation of dependent and independent claims can be depicted as a Venn diagram where sub groups fall inside a group. Embodiments also relate to methods of cementing that include the use of nano-particles. 55 There are also what are known as dependent or sub claims. completion ﬂuids. nanozinc oxide.1. the . nano alumina.6. nano-boron. STRUCTURE OF A PATENT driven independently of a pivotal movement of the arm. wherein the cement composition comprises cement. An exemplary method of cementing comprises introducing a cement composition into a subterranean formation. In fact. water and a particulate nano-silica. To the rotational body are attached respective mounting mechanisms for a wiping squeegee and a receiving squeegee. and combinations thereof. The necessity for dependent claims is in case of an invalidation of the independent claim on the grounds that the independent claim is too broad. stimulation ﬂuids. there is still a fall back option for the inventor to claim the dependent claims. the dependent claims are dependent on the independent claim. Embodiments also relate to use of nano-particles in drilling ﬂuids. nano-iron oxide. and make a reference to the independent claim as “as claimed in (independent claim)” and emphasize on a special instance of the independent claim. Title: Well Treatment Compositions and Methods of Utilizing Nano Particles Abstract: Disclosed embodiments relate to well treatment ﬂuids and methods that utilize nano-particles. what the dependent claim claims are special cases of the claimed subject matter of the independent claim. 3. If there are no dependent claims. Exemplary nano-particles are selected from the group consisting of particulatenano-silica. and well clean-up ﬂuids.
. . . if the invention is about fabrication of semiconductor devices using Silicon or Germanium. . Alq3. Title: An Electroluminescent Device Dependent Claims: The device according to claim 1 wherein said transparent front electrode is made from ITO. 2. The device according to claim 1 wherein said rear electrode is made from Aluminium. As an example. It will be noticed that some dependent claims refer to many dependent or independent claims. Title: An Outer Wall Cleaning Robot Dependent Claims: An outer wall cleaning robot as deﬁned in claim 1 which further comprises a receivingsqueegee mounting mechanism pivotably supported relative to said rotational body. . .the device as claimed in (independent claim) wherein the element is Silicon or Germanium". If by some chance. using any material in the Group Four of the Periodic Table of Elements” and claim the device made of Silicon or Germanium by writing the dependent claim as “. The device according to claim 1 wherein said electroluminescent layer is made from a material selected from the group consisting of ZnS:Mn. . . . . . . . someone challenges that the use of Carbon (in Group Four of the Table) in making the device had already been known to the ancient Romans. . . . . . . PPV. 1. . . . . . with suﬃcient justiﬁcation in the disclosure as to the potential use of other elements in the same group of the Periodic Table. the inventor could fall back to the claims of Silicon or Germanium ! Following are dependent claims relating to the above examples extracted from the CIPO database. . a receiving squeegee at- . . . PATENT DRAFTING inventor would be left with nothing if the main independent claim is declared invalid. . he/she can draft the independent claim as “. . .56 CHAPTER 6. . . . . .
6.1. STRUCTURE OF A PATENT tached to said receiving-squeegee mounting mechanism so as to be positioned below said wiping squeegee, for receiving soiled water resultant from cleaning of the outer wall, a clutch mechanism for connecting or disconnecting said receiving squeegee to or from said rotational body, and a stopper mechanism for preventing said receiving squeegee from pivoting downward from a predetermined position. An outer wall cleaning robot as deﬁned in claim 1 or 2 wherein said arm mounting mechanism and said rotationalbody driving mechanism are provided separately from said arm. An outer wall cleaning robot as deﬁned in claim 2 wherein said receiving-squeegee mounting mechanism includes a slider base, a slider mounted to said slider base for sliding movement along said slider body in a forward and rearward direction, and drive means for driving said slider, and wherein said receiving squeegee is ﬁxed to said slider. 3. Title: Well Treatment Compositions and Methods of Utilizing Nano Particles Dependent Claims: The method of claim 1, wherein the introducing the cement composition into the subterranean formation comprises introducing the cement composition into a space between a pipe string and the subterranean formation and allowing the cement composition to set in the space. The method of claim 2, comprising running the pipe string into a well bore penetrating the subterranean formation. The method of claim 1, wherein the method comprises allowing the cement composition to set in the subterranean formation.
58 Unity of Invention
CHAPTER 6. PATENT DRAFTING
There is what is known as unity of invention in claims. As the phrase implies, it means that the claims should be a unit of invention. What this means is that one patent document should contain only one inventive subject matter. The relevant legal provision in Sri Lanka in this regard according to Sri Lanka National Intellectual Property Act is as follows: 74. An application shall relate to one invention only or to a group of inventions which are so linked to each other so as to form a single general inventive concept. As stated in the legal provision, unity of invention does not mean that the claims should be focused on one product or a process. Many products and processes could be joined if they form one well related composite invention. For an example, in a drug manufacturing process, the main product as well as the by products could be claimed if they satisfy patentability requirements. Similarly, the main process as well as the sub processes of the manufacturing process could be claimed in the same application if they are satisfying the patentability requirements. Scope of Claims As mentioned above, claims provide legal protection to inventors and are, therefore, of importance. Claims should be the point to start drafting the patent document because the rest of the documentation depends on the claims. The abstract is similar to a summarization of claims, and the description is an expansion of claims with justiﬁcation including the background and the prior art. Just as people try to expand the boundaries of physical lands duly or unduly, inventors try to get protection as broad as possible,
6.1. STRUCTURE OF A PATENT
and in the examination process, examiners make it justiﬁably narrow. Even after the patent is granted, if someone could ﬁnd that the inventor has encroached into what is already known by making his/her claims too broad, he/she could try to invalidate the claim to the extent of encroachment. If the claims are too narrow, the inventor might ﬁnd that by a minor change in his/ her product or patent, which has not been covered by his/her claims, someone could legally manufacture a similar product or use a similar process. Therefore, formulating claims is a special task for which it may be necessary to obtain professional help.
60 CHAPTER 6. PATENT DRAFTING .
Such discussions should be done after signing a 61 . An exception is that when an applicant makes a PCT application where the applicant makes the application in a depository known as the PCT (Patent Cooperation Treaty). For example.Chapter 7 Application for a Patent After the patent is drafted. necessary to discuss the invention with other stakeholders like researchers and marketing personnel or potential investors. it is advisable that no disclosure is made because it might aﬀect patent rights in other countries where such exceptions are not allowed. Exception is available in some countries where an applicant himself/herself may reveal the invention but still can make the application within a certain period. PCT will be explained later. the next step is to lodge the document with a petition (a standard form containing biographical data of the applicant and some facts regarding the invention) in the national patent oﬃce of the country. the patent rights can be invalidated. Before making the application. in United States. It may be. care should be taken not to make any public disclosures because if someone can prove that the invention was known to the public before the application date. however. the applicant can enjoy a grace period of one year after the disclosure before making the application. However.
(v) an abstract . (vi) date and number of any application for a patent ﬁled by the applicant abroad (hereinafter referred to as the “foreign application”). a national or a PCT application has to be made to get a patent grant. or essentially the same invention as that claimed in the present application . relating to the same. Due to practical diﬃculties in proving the ﬁrst to invent. this has been changed in a recent change in the law. (ii) a description of the patent . but the amount of compensation may not be suﬃcient to cover the cost of the damages caused. where required . (iv) a drawing or drawings. 7.1 Making a Local Application As mentioned above. (iii) a claim or claims . (1) (a) An application for the grant of a patent shall be made to the Director General in the prescribed form and shall contain (i) a request for the grant of the patent . The legal requirement of making a local application is described in legislation. APPLICATION FOR A PATENT Non-Disclosure Agreement (NDA) (also known as Conﬁdentiality Agreement) binding the other party to keeping the information conﬁdential. there was a system earlier where the ﬁrst to invent was given priority over the ﬁrst to ﬁle.62 CHAPTER 7. it is as follows: 71. (vii) a declaration that the applicant or his predecessor in title has not obtained a patent abroad before the . In United States. A breach of the agreement may be compensated. if any. According to Sri Lanka legislation.
75. (2) (a) An applicant may divide the application into two or more applications (hereinafter referred to as “divisional applications”) provided that each divisional application shall not exceed the limits of disclosure in the initial application. After the application is lodged. in order to warn others that copying may result in patent infringement. .1. (1) An applicant may amend the application. (b) Each divisional application shall be entitled to the ﬁling. 63 When the application is lodged in the national patent oﬃce. How this initial ﬁling date will be carried forward to other countries will be discussed in the next section. processing will begin and they will be discussed in the next chapter. The inventor could also use the phrase “Patent Pending” even though the patent right has not yet been granted. and inventors may reveal the invention thereafter without any risk. priority. provided that the amendment shall not exceed the limits of the disclosure in the initial application. or where applicable. a ﬁling date is assigned and this proves that the invention was ﬁled on that particular date. The ﬁling date could be transferred to other applications that may be ﬁled in other countries and therefore it is also known as the priority date. from date of the initial application. MAKING A LOCAL APPLICATION application was ﬁled relating to the same or essentially the same invention as that claimed in the application.7. Revisions of Applications Patent applications may be revised if new subject matter is not included. The concept of priority date will be discussed in detail later. Following is the legal provision in Sri Lanka in this regard.
its’ application or enforceability is restricted to only that jurisdiction. According to the convention. The inventor can get a patent in diﬀerent countries if he/she transfers the original ﬁling date (in the country where it was granted) to the new country where he/she is seeking patent rights. Almost all the countries in the world are signatories to this convention. It is theoretically true but is not practicable. Does this mean that one can get a patent only in one country? No. This treaty is augments the Paris convention and makes the system more ﬂexible. APPLICATION FOR A PATENT 7. if one makes . The Paris convention is an accepted international treaty. patent enforcement is local which means that once a patent is granted. the original ﬁling date is known as the priority date because the applicant is claiming a priority based on an earlier application. Another international treaty called PCT (Patent Cooperation Treaty) administered by WIPO – World Intellectual Property Organization). he/she can get patents in other countries too. an inventor can make a foreign application within one year of the original application and still claim the original priority (as a priority date). will he/she get a patent because it has been revealed in another country (where the patent was granted)? One might think that if simultaneous applications are made in diﬀerent countries. (Note here that to get a patent in any jurisdiction. According to this convention. he can make an application till December 31.2 Making a Foreign Application As mentioned above. When the ﬁling date is transfered to another country in this fashion. But then. when an application is made in a diﬀerent country. and almost all the countries in the world are signatories to it. and all signatories can use the convention in patent application matters. if someone ﬁles an application on January 1.64 CHAPTER 7. Accordingly. and still claim that his application be considered to have been ﬁled on January 1. the invention should be new to the world). this problem is solved. So there has to be some internationally accepted mechanism to transfer the ﬁling date of one country to another.
MAKING A FOREIGN APPLICATION 65 a PCT application with WIPO. let’s look at the data in the below snapshot taken from CIPO database. and makes a PCT in December 2010. and make a PCT application within one year (according to the Paris Convention) and then make local applications (according to PCT) within 30 months of the original application. the inventor loses the right to make applications in other countries.7. As a real life example. he can make local application in PCT signatory countries till December 2012. if one make a original local application in June 2010. . one can make a local application in one country.2. Accordingly. As an example. he/she can make local application in any signatory countries within 30 months (31 months in some countries) of the original application. It is also possible to get the combined eﬀects of the Paris convention and the PCT. If the applications are not made within these time periods.
Finally. of one or more earlier national. pursuant to the Convention. An applicant may however request early publication. After an application is made. According to section 28 of Canadian Patent Act. APPLICATION FOR A PATENT This application was originally made in United States on 200208-28. Following is the relevant section in Sri Lanka Intellectual Property Act. in most countries. . the applicant may wish to revise the document subject to the condition that no new subject matter is introduced as mentioned earlier. An applicant for a patent in Canada may request priority in respect of the application on the basis of one or more previously regularly ﬁled applications. (1) An application may contain a declaration claiming the priority. The legislature of a country makes provisions for the Paris Convention and the PCT. it has entered into Canada on 2005-02-16. 76. regional or international applications ﬁled by the applicant or his predecessor in title in or for any State party to the said Convention. the oﬃce will keep the documents conﬁdential until 18 months and publish them thereafter for public inspection. a PCT application was made on 2003-06-06 which is within a year of the original United States application. Subsequently.66 CHAPTER 7. which is within 30 months of the original Unites States application. Once the application is made.
(b) the requirements of paragraph (a) of subsection (2) of section 71 . (1) The Director-General shall examine the application and shall satisfy himself as to the fulﬁllment of the following : (a) where applicable. The relevant legal provisions according to Sri Lanka National Intellectual Property Act are follows: 78. the patent will oﬃce will check the application for consistency. 67 . If the application is not in order. the requirements of paragraph (b)of subsection (1) of section 71 . the oﬃce will request the applicant to do the necessary revisions within particular a time period.Chapter 8 Patent Examination and Granting Process 8.1 Revision of Applications On receiving the application.
where the applicant fails to so comply the application shall. be rejected. 78.(2) Where the Director-General ﬁnds that the conditions referred to in subsection (1) are not fulﬁled he shall request the applicant to ﬁle the required correction within a period of three months from the date of such request .(5) The Director-General shall notify the applicant of any decision under subsections (2). which comply with the prescribed requirements . on payment of the prescribed fee within the prescribed period.68CHAPTER 8. (3) and (4) and . (e) the essential elements of the invention claimed in the application have not been unlawfully derived from a patent already granted in Sri Lanka . (Note: Section 71 describes the requirements for completeness of the application) (d) the description. include the corrections into the application and if the prescribed fee is not paid within the prescribed period the application shall be rejected. such application shall be rejected. the requirements of paragraph (b) of subsection (2) of section 71 . 78.(3) Where no correction is provided in response to a request under subsection (2). (g) the search report referred to in section 73 has been submitted. subject to the provisions of subsection (3). the drawings. 78. the claims and where applicable. PATENT EXAMINATION AND GRANTING PROCESS (c) where applicable.(4) Where the Director-General ﬁnds that the essential elements of an invention claimed in an application are unlawfully derived from a patent already granted in Sri Lanka. 78. the Director-General shall. (f) the application contains an abstract .
When the examination is requested. he shall grant the patent. 79. The following are the relevant legal provisions in Sri Lanka. the examiners will test the revelation against the patentability requirements – industrial applicability. EXAMINATION OF APPLICATIONS any decision taken to reject the application shall be in writing stating the reasons for such rejection.General. the inventor has to request the examination of the patent document. 79. 79. If no request is made. it will be abandoned.2. and morality including the protection of human. 69 8. animal or plant life or health or for the avoidance of serious prejudice to the environment.(b) issue a certiﬁcate to the applicant in respect of the grant of a patent together with a copy of the patent documents including the search report : . the patent is granted. and nobody in the world can make an application for the same invention thereafter. and shall forthwith — (a) record the particulars relating to patent in the Register of patents required to be maintained in accordance with the provisions of section 80 . (1) The grant of a patent shall not be refused and a patent shall not be invalidated on the ground that the commercial exploitation of the claimed invention is prohibited by any law except where the prevention of the commercial exploitation of the claimed invention is necessary in order to protect public order.8.(2) Where the applicant fulﬁlls the requirements of subsection (1) of section 78 to the satisfaction of the Director.2 Examination of Applications Within 4 years of the original application date (in most countries). novelty and non-obviousness – and if they decide that the revelation is inventive.
the inventor will enjoy patent rights for his invention for 20 years form the date of application. the inventor is required to pay an annual maintenance fee to keep the patent in force. a maintenance fee has to be paid in order to keep the application valid. twelve months prior to the date of expiration of the second and each succeeding year during the term of the patent.3 Patent Maintenance Fees Upon receiving the patent. The legal provisions with regard to maintenance fees are as follows: 83. PATENT EXAMINATION AND GRANTING PROCESS Consequently.70CHAPTER 8. even before the patent is granted. If the payment is not made. Following is the legal provision in Sri Lanka in this regard. 83. If the patent becomes invalid for this reason. (2) Where a patentee intends at the expiration of the second year from the date of grant of the patent to keep the same in force he shall. 8. they will send what is known as Oﬃce Actions to the applicant. pay the prescribed annual fee: 8. Upon . it has already become public knowledge and nobody anywhere in the world could make a patent claim for the relevant subject matter. The applicant has to respond to them within a speciﬁed time limit.4 Appeals Against Examiners’ Decisions If the patent examiner is not satisﬁed with the inventiveness of the subject matter or there are other defects in the document. the patent will become invalid. In certain countries. (1) Subject and without prejudice to the other provisions of this Part a patent shall expire twenty years after the ﬁling date of application for its registration.
nothing can be done and the examiners will reject the patent application. The defects may be rectiﬁed. It is also possible for examiners to reject the patent for defects in the application or non-fulﬁllment of patentability requirements. But if the subject matter does not fulﬁll the patentability requirements. and further appeals could be made in the courts of law.8. the examiners will redo the examination and grant the patent if satisﬁed.4. In some countries. . APPEALS AGAINST EXAMINERS’ DECISIONS 71 receiving the responses. it is possible to appeal against the decisions of the examiners to a patent appeal board in the patent oﬃce itself.
PATENT EXAMINATION AND GRANTING PROCESS .72CHAPTER 8.
these issues are known as validity and infringement. Validity and infringement are discussed later. Like conventional property. people in countries where the invention is not patented can use the invention without the permission from the inventor (the owner of the patent). However. The inventor can also prevent the import of the patented invention manufactured in a country where it is not patented to countries where the invention is patented. the inventor can prevent others in the countries where the invention is patented from using the invention without his/her permission. is a negative right that prevents others from using the invention. A discussion on commercialization follows. there could be legal disputes as to the authenticity and the trespass/ unlawful gaining of property in case of intellectual properties. Using the patent for such economic gains is known as commercialization. therefore. In the case of intellectual property. The patent right. But nobody will take any action to ensure that the inventor makes an economic gain.Chapter 9 Post Patent Issues When a patent is issued. 73 . The inventor himself has to do something in order to realize an economic gain.
(c) to conclude license contracts. (ii) stocking such product for the purpose of oﬀering for sale. (1) Subject and without prejudice to the other provisions of this Part. importing. the owner of a patent shall have the following exclusive rights in relation to a patented invention: (a) to exploit the patented invention . selling.74 CHAPTER 9. 84. Licensing These provisions are available in Section 84 of Sri Lanka Intellectual Property Act. Exploitation 2. 9.1.1 Commercialization Three ways in which an inventor can commercialize a patent are: 1. . exporting or using . exporting or using the product . (b) to assign or transmit the patent . oﬀering for sale. selling. 84.(3) For the purposes of this Part “exploitation” of a patented invention means any of the following acts in relation to a patent : (a) when the patent has been granted in respect of a product: (i) making.1 Exploitation Exploitation means that the inventor manufactures the invention by himself or collaboratively under a collaborative agreement and the provisions are given in Section 84(3). POST PATENT ISSUES 9. Assignment 3.
sometimes as an incentive to employees there can be a separate IP . selling or importing any product obtained directly by means of that process unless such person is authorized to do so. in respect of a product obtained directly by means of the process . 75 The risk factor is high in exploitation because marketing and running the business lies in the hands of the inventor. Such provisions are included in modern day employment contracts. (iii) preventing any person using that process or using.2 Assignment Assignment of patent rights means that the inventor assigns his/her right to someone else for a consideration. (ii) doing any of the acts referred to in paragraph (a). The legal provisions in Sri Lanka according to Sri Lanka National Intellectual Property Act are as follows: 88.1.1. (1) A patent application or patent may be assigned or transmitted and such assignment or transmission shall be in writing signed by or on behalf of the contracting parties. consideration in legal terms means something one gets in return for another. who probably has very little business experience. Assignment is forced when the inventor is an employee of an organization. Assignment can be forced by an employment agreement or can be voluntary. Voluntary assignment is where the inventor by his/her own wish sells the patent right to someone for a lump sum consideration. when patent rights usually belong to the employer.9. However. and the invention is made as a result of employment. 9. The person granting the assignment is called the assignor and the person receiving the assignment is called the assignee. COMMERCIALIZATION (b) when the patent has been granted in respect of a process: (i) using of the process .
When a license is given to a licensee. There is no risk factor in assignment but the inventor will not get anything more than the agreed consideration even if the manufactured product may become a huge revenue earner. 90. record in the register such particulars relating to the contract as the parties thereto might wish . (1) A license contract shall be in writing signed by or on behalf of the contracting parties.1. For example. these conditions form vital parts of the license agreement. 9. on payment of the prescribed fee.3 Licensing Licensing gives limited rights to another person just like a rent or a lease of tangible properties. POST PATENT ISSUES (Intellectual Property) policy between the employer and the employee where economic gains are shared by them in some agreed proportion. (2) Upon a request in writing signed by or on behalf of the contracting parties. 91. the Director-General shall. For the purposes of this Part license contract means any contract by which the owner of a patent (hereinafter referred to as “the licensor”) grants to another person or enterprise (hereinafter referred to as the “the licensee”) a license to do all or any of the acts referred to in paragraph (a) of subsection (1) and subsection (3) of section 84. he/she can do some limited work in a limited area of the patent during a limited time. This too is through an agreement and the person giving the license agreement is called the licensor and the person receiving the license is called the licensee.76 CHAPTER 9. Following are the legal provisions in Sri Lanka in regard to licensing. a patent holder can give a license to someone to manufacture in China one hundred thousand number of components during a ﬁxed period.
92. sole and non-exclusive. without limitation as to time and through application of the patented invention . the licensor as well as the licensee has rights to the patent. If the government (or any other interested party) feels that the patented invention is of great social beneﬁt. Depending on the manufacturing cost. the licensee shall (a) be entitled to do all or any of the acts referred to in paragraph (a) of subsection (1) and subsection (3) of section 84 within the territory of Sri Lanka. (b) not be entitled to assign or transmit his rights under the license contract or grant sub-licences to third parties. marketability of the product and other circumstances. For example. There is what is known as a compulsory license where the patent holder is forced by the government to issue licenses. The inventor has the freedom to give licenses for other countries but not to anybody else in that country. Non-exclusive licensing means licensing is done without any restrictions mentioned above on the usage of the patent. Exclusive licensing means licensing to some entity with exclusive rights in certain aspects.9. In the absence of any provision to the contrary in the license contract.1. it can be a geographically exclusive. When a sole license is granted. where the license is given to manufacture in one particular country. namely exclusive. one could decide on the best licensing model. government (or the interested party) through the patent oﬃce could ask . and the inventor could grant as many licenses as he/she wishes. COMMERCIALIZATION to have so recorded : Provided that the parties shall not be required to disclose or have recorded any other particulars relating to the said contract. This situation arises when the inventor wants to make an undue monopoly of his invention. There are three kinds of licensing agreements. 77 Licensing lies between exploitation and assignment in terms of both risk factor and proﬁt factor.
9. Most licensing agreements also involve payment of royalties by the licensee to the licensor. usually 5-10 years. quarterly.5-5 per cent of the total sales of the licensed product for a deﬁned period. Royalties while providing the licensor with a regular income from his/ her invention.78 CHAPTER 9. governments make compulsory licenses so that inventor ceases to have monopoly and the drug could be manufactured in competition and be freely available. there is often understating of sales by industrialists in developing countries and this may aﬀect royalty payments. . Royalties also help to ensure that the licensee or the inventor has a stake in the success of his/ her product.4 Licensing Fees and Royalties Licensing agreements usually involve the payment of a licensing fee which could be a lump sum or in installments or both. If the licensee requires technical assistance from the licensor he/ she may prefer to pay the sum in installments when certain milestones in the transfer of technology process are achieved. Although royalty payment in industrialized countries can be properly accounted for and paid. semi annually.1. society will beneﬁt more than if it were only done by the inventor himself/herself. but due to beneﬁt society gets. and as a consequence. The payment typically 0. This would ensure that the licensee receives the support of the inventor during the commercialization process. For example. POST PATENT ISSUES the inventor to license his invention so that others could make the product. has to be paid regularly (monthly. often reduces the lump sum payment which would be helpful to an industrialist embarking on a new venture. if the invention is a cure for cancer. inventors would not want to license the product because of the huge potential proﬁts. annually) to the licensor.
but it can also be a criminal act. the case was regarding infringement and validity. Infringement of patent rights means the copying of the invention without permission.2 Potential Legal Implications When a patent is granted. the invention becomes public knowledge and anybody can use it without the permission of the inventor. the infringer will enjoy the patent without a penalty. it is the responsibility of the inventor to take remedial action. POTENTIAL LEGAL IMPLICATIONS 79 9. it leads to a civil dispute between two parties.obviousness. Valmet Oy. Invalidating a patent means that the validity of the patent is disputed due to time lapses (expiry of the patent) or by arguing that the invention is not patentable in terms of patentable requirements of novelty and non. If any infringement of patent rights occur.2. If the inventor does not take remedial action. In case of stealing intellectual property. the government will take criminal action against the stealer because stealing is considered a wrong doing against the whole society. When a patent is invalidated by courts after looking at the circumstances of the case. It is basically stealing. the best defense one can adopt is that the alleger’s claim is invalid or that his/her method is also inventive.9. there is no guarantee that the government will actively protect the rights of the inventor. One party alleged the other had infringed on their patent right by invalidating the patent the other party had obtained. In case of a tangible property theft. Generally. Infringement can usually be defended by invalidating the patent. infringement and validity go hand in hand because when someone alleges infringement. in case of tangible property. In the case study Beloit Canada vs. .
CHAPTER 9. POST PATENT ISSUES
A Sample Patent
Following is a patent extracted from United States Patent and Trademark Oﬃce (USPTO) database.
US Patent 7,161,651
Title: Method of resizing a liquid crystal display Bibliographical Data
Inventor:Smovzh; Anatoliy (Oakville, Canada) Assignee:Luxell Technologies Inc. (Mississauga, Canada)
A method of resizing a liquid crystal display connected to at least one ﬂex board, wherein the liquid crystal display has multiple layers including a liquid crystal layer contained between a pair of glass substrates and a pair of polarizers on opposite sides of respective 81
CHAPTER 10. A SAMPLE PATENT
ones of the glass substrates. The method comprises applying pressure sensitive tape for protecting the polarizers, dicing through the layers, including the polarizers, using a dicing wheel with predetermined diamond particle size to a speciﬁed depth and width of groove, cutting through the ﬂex board using a UV laser, breaking oﬀ unwanted portions of the liquid crystal display and ﬂex board deﬁned by the dicing and cutting operations, and sealing remaining portions of the liquid crystal display.
What is claimed is: 1. A method of resizing a liquid crystal display connected to at least one ﬂex board, said liquid crystal display having a liquid crystal layer between a pair of glass substrates and a pair of polarizers on opposites sides of respective ones of said glass substrates, the method comprising: applying pressure sensitive tape for protecting said polarizers; dicing through said layers, including said polarizers, to a speciﬁed depth and width of groove using a dicing wheel of predetermined diamond particle size; cutting through said ﬂex board; breaking oﬀ unwanted portions of said liquid crystal display and ﬂex board deﬁned by said dicing and cutting; and sealing remaining portions of said liquid crystal display. 2. The method of claim 1, wherein said predetermined diamond particle size is in the range of 40 70 microns. 3. The method of claim 1, wherein said speciﬁed width is approximately 10 mils. 4. The method of claim 1, wherein said speciﬁed depth is approximately 30 40 5. The method of claim 4, wherein said breaking oﬀ unwanted portions of said liquid crystal display and ﬂex board comprises applying a breaking force to said one of said pair of glass substrates. 6. The method of claim 1, wherein said sealing comprises applying a UV curable adhesive to said remaining portions of said liquid crystal display.
Finally. direction (Cartesian coordinates). Conventional LCDs are available in standard sizes that. Next.degree.) are coated on top of the respective ITO layers for aligning the liquid crystal molecules within the cell. cellular telephones. For example. human factors and space limitations may dictate a smaller than conventional LCD be used for avionics display in the cockpit of an aircraft (military or civilian). The glass substrates are bonded together to form a cell using epoxy or thermoplastic material.10. and more particularly to a method of resizing a liquid crystal display without ﬁrst removing the polarizer.g. the polyimide layer on the bottom substrate is rubbed along the 0. the cell is ﬁlled with liquid crystal by either vacuum ﬁlling or by a capillary method.degree.651 83 10.161. US PATENT 7. avionics. in some cases. the cell is sealed and uniform pressure is applied over the cell to improve the uniformity of the cell gap. Bottom and top polarizers are laminated with respective transmission directions perpendicular to the rub directions of the bottom and top polyimide layers. etc. computer displays. Thus. After ﬁlling. direction (according to the right hand rule in Cartesian coordinates). a reﬂective layer is deposited on the top polarizer. Description of the Related Art Liquid crystal displays (LCDs) are well known in the electronic arts for displaying images and data to a user (e.) A liquid crystal cell is typically provided with two glass substrates having thin transparent ITO (indium tin oxide) layers evaporated on the inner surfaces thereof (referred to herein as the TFT glass and the color ﬁlter glass. do not ﬁt the intended application. respectively). Polyimide layers (or any homogenous alignment material such as silane.1. 2.5 Description BACKGROUND OF THE INVENTION 1. for a left-hand twisted cell. while the top polyimide layer is rubbed along the 90.1. Methods are known in the art for resizing LCDs . Field of the Invention The present invention is directed to liquid crystal displays. evaporated silicon monoxide. etc.
the method comprises removing an excess region of the display by cutting through the ﬁrst and second plates to isolate the excess region of the ﬁrst and second plates and to expose cut edges along the operative areas of the ﬁrst and second plates.949 (Lu et al) sets forth a method of resizing a liquid crystal display comprising the removal of any tape automated bonding strips (TABs) and ﬂex circuits corresponding to undesired portions of the LCD. and a perimeter seal spacing apart the plates. The display panel is cut to remove a portion of the display panel corresponding to the undesired portion of the LCD and. the prior art is silent on any preferred approach to ﬂex PCB (printed circuit board) cutting.84 CHAPTER 10. which adds to the processing costs and time required to resize the display.204. ﬁnally. Pat. Any circuit boards. A seal is applied between the plates along an exposed edge of the target display portion. or portions thereof.S. corresponding to the undesired portion of the LCD are then cut and removed. In its broadest aspect. U. wherein the display comprises a front plate. wherein the seal includes an adhesive having mechanical properties for preserving cell spacing between the front and back plates. Pat.906 (Tannas) discloses a method of changing the physical shape of an electronic display. U. WO 99/19765 (Marconi Avionics (Holdings) Limited) sets forth a method of resizing an LCD having a liquid crystal sealed between ﬁrst and second parallel transparent plates forming an operative area of the display. Each of the foregoing prior art LCD resizing methods also specifically includes removal of the polarizer before cutting. and wherein the image-generating medium is sealed in an area between the plates and within the borders of the perimeter seal.509. No. No. The method comprises cutting the display along desired dimensions. A SAMPLE PATENT to ﬁt an intended application. thereby breaking the perimeter seal of the display. 6. resulting in a target display portion and an excess display portion. the cut edge of the display panel is sealed. Also. .S. a back plate. 6.
1 is a ﬂowchart of a method for resizing an LCD. an initial functionality test is performed consisting of illuminating the LCD and verifying optical performance. a dicing wheel is used to cut through all layers of the LCD. 2. based on the intended application. including the polarizers. 1. wherein like numerals refer to like parts throughout.651 85 SUMMARY OF THE INVENTION It is an aspect of the present invention to provide a method of resizing an LCD that does not require removal of the polarizer before cutting. a determination is made as to the desired size of the display. at step 1. The above aspects can be attained by a method that includes dicing through the polarizer and other LCD layers using a dicing wheel with speciﬁed diamond particle size. reference being had to the accompanying drawings forming a part hereof. at step 2. BRIEF DESCRIPTION OF THE DRAWINGS FIG. discussed in greater detail below. Another aspect of the invention is to provide ﬂex PCB cutting that minimizes conductor short circuits. at step 4. 3 is a scanned electron microscope image of a ﬂex PCB board trimmed according to the preferred embodiment of FIG. Con- . followed by UV laser ﬂex PCB cutting. reside in the details of construction and operation as more fully hereinafter described and claimed. 1 is a ﬂowchart showing the steps in a preferred embodiment of the LCD resizing process. These together with other aspects and advantages which will be subsequently apparent.1. according to the preferred embodiment. First. The result of this cutting operation and consecutive breaking is shown in FIG.10. FIG. DETAILED DESCRIPTION OF THE PREFERRED EMBODIMENTS FIG. US PATENT 7. pressure sensitive tape is applied to the tops of both polarizers for protection against glass particles generated during dicing. as well as speciﬁed depth and width of groove.161. 1. At step 3. Next. According to an important aspect of the invention. FIG. 2 is scanned electron microscope images of an LCD cut using the method of FIG.
The results of dicing and breaking of the LCD (steps 4 and 6) . ﬂex board is made of PVA materials bearing densely populated narrow (.10 mils) copper conductive lines. the depth of dicing should be diﬀerent for the TFT and color ﬁlter glass layers of the LCD. A UV laser is used in the preferred embodiment to avoid short circuits due to copper spreading during mechanical trimming (i. The use of lower particle size leads to dicing wheel clogging and overheating of the LCD in the vicinity of the cut. According to a successful implementation. At step 6. An additional UV curable sealant may also be applied for protection against moisture. the cutting step 4 was performed using a KandS 7100 dicing saw with a 10 mils thick diamond wheel. Normally. Diamond particles greater than 70 microns give rise to an increase of the chip-out region. A ﬁnal functionality test is performed at step 8. A SAMPLE PATENT trary to the teachings of the prior art.86 CHAPTER 10.e. the inventor has discovered that by careful selection of the diamond particle size of the cutting wheel. It was determined that diamond particles size should be in range 40 70 microns. It was determined that in order to achieve mechanical rigidity of the diced LCD panel for secure handling and easy breaking. UV laser cutting is performed for trimming the PCB ﬂex board. This result is achieved under conditions that one of the glasses is diced to 30 40 Next. the sections of unwanted LCD and ﬂex board are broken and separated. it is preferable that the breaking force be applied to the glass having the shallower groove.about. at step 5. an appropriate depth and width of the groove are provided which does not damage the polarizers or cause delaminating of the LCD layers. Depth of cutting depends on glass thickness and mechanical properties. machining of PVA requires UV irradiation). In order to facilitate panel separation. thereby eliminating the prior art requirement of ﬁrst removing the polarizers. The remaining LCD is sealed with UV curable adhesive at step 7. similar to the initial test discussed above in connect ion with step 1.
since numerous modiﬁcations and changes will readily occur to those skilled in the art. it is not desired to limit the invention to the exact construction and operation illustrated and described. Further. 2 which depicts a vertical cross-section through the cut LCD. and accordingly all suitable modiﬁcations and equivalents may be resorted to. US PATENT 7. Some polarizer residues are evident sticking to the polarizer. SSDP laser at 5 W power and 246 nm wavelength. thus.651 87 are shown in FIG. The many features and advantages of the invention are apparent from the detailed speciﬁcation and. the presence of these residues does not aﬀect LCD performance after resizing FIG. 3 is an image of a ﬂex PCB board trimmed using a Spectraphysic. Resistivity between two adjacent conducting lines after laser trimming was measured in excess of 20 Megaohms. from which there will be noted an absence of polarizer and the other ﬁlm residues on the diced areas of both glasses. it is intended by the appended claims to cover all such features and advantages of the invention that fall within the true spirit and scope of the invention. falling within the scope of the invention.1. However. according to the preferred embodiment. .RTM.161.10.
A SAMPLE PATENT .88 CHAPTER 10.
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