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TMP Free Patent Lesson - 1

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Introduction to Intellectual Property Rights

This short lesson basically teaches you the various types of Intellectual Property (IP)
and Intellectual Property Rights.

• What is IP?

IP is Intellectual Property - It is basically intangible property that is created at the


mind of the humans before being converted to material forms. Property here is the
human thought process and the protection accorded to such thought process. Eg:
idea, business method, invention etc.

• What are IP rights?

• As the name indicates Intellectual Property Rights are exclusive rights over the
creations of the mind. A creator can have exclusive rights over his creation for a
certain period of time depending upon the type of Intellectual Property.

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• Why protect IP rights?

Protection of IP rights is done in order to have monopoly over their inventions and
creations and thus possess exclusive rights over their invention for a certain period of
time depending upon the type of Intellectual Property.

• Types of Intellectual Property


a. Patents: Patent is a grant given by the Government to an inventor for having
made an invention. Once granted, a patent gives the inventor the right to exclude
others from making, using, selling, importing or offering for sale the invention for the
duration of the patent term.

b. Trademarks: Trademark is a unique symbol that is used in marketing the business


products by a person who owns the symbol. The trademark owner will have monopoly
over the usage of that symbol

Examples: Brands, Logos, Service marks, Trade name etc.

c. Design Patents: These are patents for industrial designs. It deals with the
protection of a unique design, shape, or ornamental surface of an object. In India they
are called only as Designs and are regulated by the Designs Act and administered by
the Designs Office located at Kolkata

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d. Plant Patents: According to the US Law plant patents are issued when a
person has invented or discovered and has asexually reproduced a new variety of
plant that is distinct. The plant should be other than a tuber propagated plant or a
plant found in an uncultivated state

e. Copyrights: Copyrights are a form of IP rights given to an author, artist,


composer, or programmer to exclude others from either copying or publishing literary,
dramatic, musical, artistic, or software works.

f. Geographical indications: It is a name or sign used on certain products or which


corresponds to a specific geographical location or origin. The use of a geographical
indication is that it may act as a certification that the product possesses certain
qualities, or enjoys a certain reputation, due to its geographical origin.

g. Internet Domain Names and Disputes: A domain name is the address of a web
site which is intended to be easily identifiable and remembered, such as
tmpsearchers.com. Sometimes they are used as trademarks or business identifiers

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also thus attracting customers to the websites. The reasons for domain name disputes
may be several. One of them is that when your domain name is similar or confusing
when compared to some other domain name.

h. Trade Secrets: Any information that is not generally known, that will give a
business advantage, or is commercially useful. Sometimes it is considered and
referred to as confidential information. It may be a formula, process, design, device
etc.

i. Unfair Competition: The law of Unfair Competition helps in dealing with the
economic injury caused to the business because of a wrongful business practice. It
may be in relation to any distinctive design, slogan, shape, business lay out etc.

TMP Free Patent Lesson - 2

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Patent Lesson - 2

These are basic concepts in Patent Law. I have tried to make this lessons as far as
possible in the form of questions and answers. Please read from top to the bottom. I
have arranged the questions in such a way that the subject logically flows and the
questions stem from the answers to the earlier question.

I agree that the first few lessons are the toughest lessons to learn as these are merely
abstract concepts. Secondly you are learning a new subject which is part technology
and part Law. But make no mistake about it, you must learn these basic things as they
constitute the foundation upon which you are going to build your knowledge of Patents.

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1. What is a Patent?

Patent is a grant given by the Government to an Inventor for having made an


Invention. Once issued, the Patent gives the inventor the right to exclude others from
making, using, selling, importing or offering for sale the invention for the duration of
the Patent Term usually 20 years from the date of filing the patent application.

Inventor is the person who made the Invention

Only a natural person or persons can be inventors.

They may be employees of a company working on a project and invent some


thing. Depending on the Employment contract, they may or may not have rights
to the Patent. But still the applicant ( Company or Employer) for the patent must
disclose who are the inventors to the Patent Office.

2. What is an Invention?
Invention is any new

• Process
• machine
• article
• composition of matter or
• any new improvement of any of the above four.

Patent Office is the Government Office that receives the patent application, processes
it and grants the Patent.

Patent Application is the formal set of papers describing the invention and can be
filed with the patent office by the applicant for grant of Patent for the Invention.

Patent Lesson - 2 (Page 2)

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Who can be the Applicant?

Under US Law any one can be the applicant for Patent. However if they are not the
inventor of the invention, the applicant must disclose who is the inventor in the
application. This typically applies to employers who have the right to file the patent
application while the employees use the facilities and funds of the employer to invent.
The applicant for patent is also called Assignee

Can there be more than one Applicant ?

Yes. One or more persons can join together and file an application as Joint applicants.

Why do I need a Patent?

Once a Patent is granted you are the owner of the invention for which patent is issued
and can prevent others from making, using, selling, exporting, or trading in or
importing the invention in to the country where you received the patent unless
you license them to do so or assign a patent to the person who is so doing.

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This is a preventive right enabling you to prevent others from doing something
with your invention.

You can also make, use, sell and trade in your invention and can even license or
assign your rights in the patent.

You have a financial incentive to get a Patent by getting exclusive rights, and the rights
to assign the patent or license the patent for a fee. You get a monopoly that you can
use to make money,

The rights conferred are limited to the term of the Patent granted.

The term of the patent is 20 years from the date of filing the Non Provisonal Patent
application

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Patent Lesson - 2 (Page 3)

What is Assignment of Patent?

When you sell your rights in the patent to another person, it is called Assignment. It is
like selling your property to another person. Then you lose all rights in that property..
Though you lose all rights, you can earn a substantial amount of money here and there
are companies that trade in patents like this.

What is Licensing the Patent?

When you lease your property to another person, you own the property, has the right
to terminate the lease agreement and has the right to take the lease rentals. Licensing
is basically like a lease. This can be an exclusive license by which you agree to allow
only one person to have the license or it can be a non exclusive license by which you
can license any number of persons to make, use, sell your invention. The Choice is
yours. You get an annual fee called Royalty which will be paid to you till the term of the
patent or the term of the licensing agreement comes to an end.

Types of Patent Applications

There are two main types of Patent Applications

Provisional Patent Applications

Non-Provisional Patent Application is the Regular Patent Application filed to get a


Patent for the invention.

A Provisional Patent Application is not available for Design Patents.

The other two types of Patent Applications are PCT Patent Application and
Convention Patent Application. We will see what these are later.

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Filing Date of Provisional Patent Application and Non


Provisional Patent Application

There are two filing dates. Filing dates of Provisional Patent Application and Filing
Date of Non Provisional Patent Application ( or complete specification as it is called in
India).

Date of filing the Provisional Patent Application is called the priority date. This is used
to set the prior art date of the invention for determining the patentability of subsequent
patent applications. Patent Term would be calculated from the filing date accorded.

If the provisional application is correctly filed the USPTO will allot the filing date of the
provisional application to any non provisional application based on the provisional
application. If the provisional application is deemed not to fully comply with the
requirements then then the filing date becomes the date of filing the non provisional
application. 20 year term is calculated from the Filing date accorded When we discuss
the provisional application we will see how the filing date of the provisional application
can be lost.

If I obtain Patent in India or US is it valid all over the


world?

A Patent can be granted only by a Sovereign country and so is valid only within that
country that issued the patent. If India issues a Patent, it is valid only within India. If
the US issues a Patent it is valid only within US. ( not in other countries where the
application for patent was not filed and patent was not issued). You must remember
this clearly.

If you do not get a Patent in one country, then you have no patent rights there
and so your invention is not protected in that country. Simply any one can copy,
make, use and sell your invention in all countries where you have not obtain ed a
patent for your invention.

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Can I get an International Patent?

There is nothing called an International Patent.

You can however file an International Patent Application if your country is a


signatory to PCT (Patent Co-operation Treaty) and that will give you the same filing
date as you obtained in your country, in all PCT member countries.

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Exercise:

Google for the following and obtain their text and study them three times.

US Law

• 35 USC 100
• 35 USC 101
• 35 USC 102
• 35 USC 103
• 35 USC 112
• 37 CFR 75

India Law

• Indian Patent Act Section 2


• Indian Patent Act Section 3

Answer the following:

What is PCT?

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What is CFR

What is USC

TMP Free Patent Lesson - 3

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Patent Lesson - 3

1. When should I file my Patent Application?

When you know that you have a Patentable Invention, you can file a Patent
Application.

• What is a Patentable Invention?


• What are not inventions?

This is the most important concept and the core concept of Patent Law and you
must learn this very carefully and memorize this part alone.

2. What is an Invention ?

An invention is any

• New (called Novelty Test);


• Useful (called Utility Test);
• Process or Product (A product may be a machine or an article of manufacture or
composition of matter)
• Not Obvious to a person of ordinary skill in the art at the time the invention was
made or it must involve an inventive step; and
• Capable of industrial application

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3. What is the meaning of Any in the definition of


Invention?

• Any means in the context of the definition for invention anything that is
new and useful, made by man under the sun.
• However there are five categories of subjects that are entitled to make an
invention get a patent.
• These are called the Statutory Classes in US Law. See 35 USC 101

These are Any

1. Process;
2. Machine;
3. (Article of) Manufacture;
4. Composition of matter or
5. Any New use of a Process or a Business method ( both these are covered under
the definition of Process)
6. Any new and useful Improvement of any of the above 1 to 5

Statutory Classes - Product and Process Patents

• Patents issued for items no's 2 to 4 above are called Product Patents as they are
issued for a product.
• Patents issued for a method of manufacture or methods of use are called Process
Patents as they are issued for a process or method

4. New or Novelty

• This requirement is also called the Novelty Test for patentability of an invention.
• In Indian Patent Act, this is called as "New Invention" and is covered in Section
2(l) of the Indian Patent Act.
• In US, it is covered by 35 USC 102. Title 35 of the United States Code and
Section 102 or US Patent Act Section 102.

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• According to Section 2(l) of the Indian Patent Act

"New Invention" means

any invention or technology

which has not been anticipated by publication in any document or used


in the country or elsewhere in the world

before the date of filing of patent application with complete specification,

i.e., the subject matter has not fallen in public domain or that it does not
form part of the state of the art.

Difference between India Law and US Law on Novelty

US Patent Law substantially differs from the rest of the world on Novelty requirements
and is stated in 35 USC 102. We will discuss this later in the lesson on Patentability. For
now remember that it is different from the rest of the world.

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5. Usefulness or Utility Test

This is called the Utility Test for patentability of an invention.

The invention made should be useful to humans.

In many countries Utility is regarded as utility of a commercial scale and they prefer the
term capable of industrial application. India uses this term.

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6. Unobvious Requirement

The Requirement of Non Obviousness is mentioned in US Law in 35 USC 103. In India


some elements of Section 3 of the Patent Act deals with Non obviousness Requirement.
This is apart from Section 2(ja) of the Indian Patent Act

We will discuss this in detail in Lesson on unobviousness as this is an important subject.

7. Inventive Step

Indian Patent Act Section 2(ja) defines an inventive step as follows:

Inventive Step means a feature of an invention that involves technical advance as


compared to the existing knowledge or having economic significance or both and that
makes the invention not obvious to a person skilled in the art.

This is the same as the unobvious requirement of US Law


US Law describes the person skilled in the art as Person of Ordinary Skill in the Art
POSA

8. Person of Ordinary Skill in the Art (POSA)

POSA is a hypothetical person who is visualized to know the basic principles in the
subject matter of the invention for which patent is sought. POSA is not an expert but
knows the subject. POSA is used to check whether an invention when it is made will be
obvious to a POSA if he were to study the prior art documents cited by the Patent
Examiner. If the invention is deemed obvious to a POSA, patent will be denied; if not
patent will be issued. More on this will be covered in later lessons.

9. Capable of Industrial Application

Indian Patent Act Section 2(ac) defines the term Capable of Industrial Application as
follows:

The term capable of industrial application in relation to an invention means


that the invention is capable of being used in an industry

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10. PCT Rules for Patentability

PCT is Patent Co-operation Treaty and is a common treaty on providing reciprocal


rights to citizens of one member country of PCT, in the other member countries.

PCT Rules require that to be patentable an invention must meet three requirements

• Novelty
• Inventive Step - Non obviousness
• Industrial Application - Basically utility but at an industrial scale

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Exercises:

Study the following Sections of US Law

• 35 USC 100
• 35 USC 101
• 35 USC 102
• 35 USC 103
• 35 USC 112
• 37 CFR 75

Indian Patent Act Section 2

Go through lessons 1 and 2 again once today

TMP Free Patent Lesson - 4

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We have now see that to get a patent issued two things are needed .

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One an invention is needed

Two the invention must fall within the statutory classes.

Apart from these two requirements two other important requirements must be met.

Novelty and the other is Nonobviousness.

Let us study Novelty in this lesson.

Today will be a tough day for you. But it is very important that you learn this lesson
very carefully. Forgive me for taking you through a tough path. I have trained nearly 20
people now and I find that once you are taken to the application of law there is little
time or interest to learn the basics. And many remain weak on basics, which in turn is
the reason for the inability to draft patent applications. Again I'm taking you through
the tough road so you will benefit in the long term. Please follow my instructions.

I'm going to send the next lesson only after two days as this lesson involves a lot of
study of about 20 pages for you. I'm going to introduce you to 35 USC 102 and we will
discuss section 102 again tomorrow after you have studied the Indian concept of
Novelty.

Novelty essentially means New, some thing that was not known earlier or not
published earlier or not used earlier. Essentially in legal language, your invention was
not anticipated by prior art. Then it is Novel and not otherwise.

United States Law on Novelty is stated in 35 USC 102. It differs significantly from the
concept of Novelty practiced all over the world because it tends to and is clearly to
intended to protect and promote American interests. I'm giving the text of the statute
below for your ready reference.

35 U.S.C. 102
Conditions for Patentability - Novelty and Loss of Right to Patent

A person shall be entitled to a patent unless

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a. the invention was known or used by others in this country, or


patented or described in a printed publication in this or a foreign country,
before the invention thereof by the applicant for patent, or

b. the invention was patented or described in a printed publication in


this or a foreign country or in public use or on sale in this country,

more than one year prior to the date of the application for patent in the
United States, or

c. he has abandoned the invention, or

d. the invention was first patented or caused to be patented, or was the


subject of an inventor's certificate, by the applicant or his legal representatives
or assigns in a foreign country prior to the date of the application for patent in
this country on an application for patent or inventor's certificate filed more than
twelve months before the filing of the application in the United States, or

e. the invention was described in - (1) an application for patent, published


under section 122(b), by another filed in the United States before the
invention by the applicant for patent or (2) a patent granted on an
application for patent by another filed in the United States before the invention
by the applicant for patent, except that an international application filed under
the treaty defined in section 351(a) shall have the effects for the purposes of
this subsection of an application filed in the United States only if the
international application designated the United States and was
published under Article 21(2) of such treaty in the English language; or

 he did not himself invent the subject matter sought to be patented, or

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 (1) during the course of an interference conducted under section 135 or section 291,
another inventor involved therein establishes, to the extent permitted in section 104,
that before such person's invention thereof the invention was made by such other
inventor and not abandoned, suppressed, or concealed, or (2) before such person's
invention thereof, the invention was made in this country by another inventor who had
not abandoned, suppressed, or concealed it. In determining priority of invention under
this subsection, there shall be considered not only the respective dates of conception
and reduction to practice of the invention, but also the reasonable diligence of one
who was first to conceive and last to reduce to practice, from a time prior to conception
by the other.

Read the above section three or four times and you will see that the the United
States wants to protect and promote the interest of the citizens of United States and
the English speaking population of the world over the rest of world. Credit should be
given to them really for their patriotism for this was done long before the concept of
globalization came to existence.

Secondly note that the rule is that the first to invent gets the patent. In the rest of
the world it is the first to file the patent application gets the patent.

Thirdly please see that the first to invent has a one year time from the date of
conception and reduction to practice to file the patent application. In other
words even if you are the first person to file the application, if the same invention was
filed by another and he can prove that he was the first to invent subject to the
provisions of 35 USC 102(g) above

This first to invent rule coupled with the one year grace period rule above gives
special advantages to the US citizens in filing and obtaining patents in the United States
which is the largest economy in the world.

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The rest of the world follows a different standard of first to file the patent application to
issue patents.

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To understand how Novelty is ascertained in India, I would recommend that you
download the Manual of Patent Practice and Procedure 2008 Published by the Patent
Office of India here. I'm giving the direct link from the patent office so you can right
click on the link and save it to your system.

DRAFT MANUAL OF PATENT PRACTICE AND PROCEDURE - PATENT OFFICE, INDIA


(2008)

This is now a substantially improved document than the earlier version

Please print out pages 21 to 33 of this manual and study the discussion on Novelty.
This will show you how Novelty is understood and interpreted by the Indian Patent
Office. It is fairly simple and straight forward and should not pose any difficulties

In particular study the following sections and have them at your finger tips- Section 2
Sub section (j), (ja), and (l) and m of the Patent Act of India to understand Novelty.

Patent Act 1970


2(j): Invention means a

New

Product or Process

Involving an inventive step and

Capable of Industrial application

(l) "new invention" means

any invention or technology which has not been anticipated by publication in any
document or

used in the country or elsewhere in the world before the date of filing of patent
application with complete specification,

i.e., the subject matter has not fallen in public domain or

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that it does not form part of the state of the art;

2(ja): "inventive step" means

a feature of an invention that involves technical advance as compared to the


existing knowledge or

having economic significance or both

and that makes the invention not obvious to a person skilled in the art;

I believe that the Manual of Patent Practice and Procedure pages 21 to 33 substantially
covers the concept of Novelty and it is adequate for a beginner to read that portion to
understand the concept of Novelty as understood, applied and interpreted in India

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Exercise:
Please study 35 USC 101, 102, 103 and 112.

Please study Section 2 and 3 of the Indian Patent Act

Please study Pages 21 to 33 of the Manual of Patent Practice and Procedure

In the next Lesson we will learn on the concept of Novelty in US again and will study 35
USC 102 again

Review the earlier lessons once.

Your next lesson will be sent to you only after two days

Patent Lesson - 5

Patent Lesson on Novelty in India

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Novelty -2

I'm avoiding the text of the sections which are written in a legal language which is
tough for beginners to understand. Therefore I'm only giving my explanations to these
sections in a plain, simple and easy to understand language.

We need to study Sections 13, 29, 30, 31, 32, 33 and 34 of the Indian Patent Act for
this purpose. You will need to consider these sections when you draft your patent
applications for filing in India to determine the Novelty of the Invention claimed.
Today's lesson also runs to multiple pages. But I have tried to write it in a simply
language as far as possible.

We have already seen the import of Section 2 for Novelty. Sections 13 and 29-34
discuss how it should be practically understood, applied and interpreted in India by the
Patent Examiner and so it is necessary for us to study now. The law related to Patents
is stated in the Patent Act. How this law should be administered is stated in the Patent
Rules. Rules 28 to 34 of Patent Rules must also be studied and understood for Novelty.

Section 13

Section 13 of the Patent Act directs the Patent Examiner to ascertain whether the
invention claimed in a patent application has been anticipated by disclosure in a prior
document.

The section talks about four circumstances where the novelty of the invention can be
hit. Section 13 directs the Examiner to ascertain if Novelty of the invention claimed is
hit under any one these four circumstances.

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The examiner should find out if the invention is anticipated by

1. Disclosure in a Patent application filed in India before the filing of patent


application under examination Let me call "Patent application under examination"
as your patent to simplify.
2. Disclosure in a patent application filed in India AFTER the filing date of your
patent, but that other patent application claims a priority date earlier than yours
3. Ascertain whether your invention has been anticipated by any prior published
document anywhere before the filing date of your complete specification.
4. If a complete specification is amended, the amended specification shall be again
examined as per the above rules 1 to 3 which is logical.

Anticipated means already disclosed in a prior document.

Examiner means the Patent Examiner who is examining your patent application.

Published means printed on paper or electronically and made available to at least one
member of the public or if within the same organization to those who have not signed a
confidentiality agreement to protect the invention as secret.

Points 1and 3 above are not tough. Point No. 2 talks about a situation where some one
files after you, but claims a priority date earlier than yours by virtue of a connected
application filed prior to your patent. Though slightly confusing it is easy only. Read it
again to understand and if you are confused email me please.

Patent Lesson on Novelty in India

Novelty -2 (Page 2)

I'm not using the legal language used in the section but I'm only giving you the essence
of the section for you to remember. Also I'm not giving case laws for you here. It is
enough if you learn and remember the basic principles first. After all this is only an
introductory course. If you want to learn more go to the Manual of Patent Practice and
Procedure you downloaded and study pages 21 to 33 and 204 to 210 both inclusive.

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If the text of Section 13 is tough, please do not worry about it. I have explained it
above.

Basically this section tells you to take a common sense approach. And what is that?

1. You must conduct a Prior Art Search before you file your Patent Application.
2. Ascertain that the invention is Novel before your file your application.

O.K

Section 13(4) makes a disclaimer protecting the Government of India and its officers
but that is not relevant to understand Novelty.

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Section 29 of the Patent Act

Section 29 of the act provides for an exceptional situation to protect your invention.

A. You disclose your invention to one person and that person deceives you, desires to
prevent you from obtaining patent and publishes the invention before your file your
patent application. This is not a normal situation but an exceptional situation.

Under that exceptional situation, section 29 provides that, if you can prove three things
the prior publication will not be deemed to be anticipation of your invention and you can
still get a patent for your invention.

The Three things to be proved are:

1. That the other person who made the publication obtained the invention from you
or your agents.
2. That he published without your knowledge and consent
3. That on knowing of the publication without wasting time, you filed the patent
application as soon as practically possible.

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4. This protection will not be available to you, if your invention was commercially
worked in India before you filed your patent application.

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Exception to Rule 4 above:

If the "commercially worked" or sale happened before the priority date of your
invention and it was done only for "reasonable trial" and was done with your knowledge
and consent then the protection is still available.

So simply what this section tells us is this.

1. Do not disclose your invention to third parties before you file your provisional
patent application at least. Avoid Troubles.
2. Do not sell your invention even for reasonable trial purposes before you file your
patent application.

Avoid trouble and avoid these exceptional situations. But this is still relevant to Novelty
assuming you made a mistake.

You can read the text of the Section 29.

Don't get frightened by the legalese used in section 29 but the principle is as stated
above.

Section 30

Section 30 is to the effect that there is

no Anticipation by previous communication to Government or

to any person (authorized by the government) to investigate the invention.

Section 31

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Anticipation by Public display etc

An invention shall not be deemed to have been anticipated by reason only of :

a. the display of the invention with the consent of the inventor, at an industrial
exhibition to which the provisions of this section have been extended by the
Central Government by notification in the Official Gazette
b. the publication of any description of the invention in consequence of the display
or use of the invention at such exhibition as aforesaid
c. the use of the invention, after it has been displayed or used at any such
exhibition as aforesaid and during the period of the exhibition, by any person
without the consent of the inventor
d. the description of the invention in a paper read by the inventor before a learned
society or published with his consent in the transactions of such a society.

IF

the application for the patent is made by the inventor not later than twelve months
after the opening of the exhibition or the reading or publication of the paper.

Caution:

Do not do any one of these things. File your provisional patent application first. Avoid
Troubles. This section is intended to protect and give you a 12 month time limit
assuming you made a mistake of disclosure already. Avoid this practice as far as
possible.

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Section 32 Anticipation by public working

An invention claimed in a complete specification

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shall not be deemed to have been anticipated

by reason only that, at any time within one year

before the priority date of the relevant claim,

the invention was publicly worked in India.

a. by the patentee or applicant or


b. by any other person with the consent of the patentee

Provided the working was effected

1. for the purpose of reasonable trial only and


2. if it was reasonably necessary that the working for that purpose should be
effected in public.

Caution: No reasonable Trial please. A provisional application is cheaper to file and


avoid costly litigation by filing a provisional application. These provisions must be
treated as exceptions and exceptional safeguards available after you made a mistake
and must not be resorted to as a normal practice.

Section 33

Section 33 bars a conclusion of anticipation by use and publication after you have filed
your provisional application.

This section applies under the following situation.

1. You file a provisional application


2. After obtaining the filing date of provisional application you start using the
invention or publish it.
3. You then file the complete specification

Then not withstanding anything contained in this act the Controller shall not refuse to
grant the patent (or the patent shall not be revoked or invalidated) for the sole reason
that any matter described in the provisional specification was used or published in India
or elsewhere at any time after the date of that application.

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Caution

Be careful about this section. This is not as simple it looks like as we shall see when we
discuss the pros and cons of filing a provisional application and the mistakes that can
happen with filing a provisional application.

Section 34

No anticipation is deemed if circumstances are only as described in Sections 29, 30, 31


and 32.

Rules 28 to 32 deal with the procedure to be followed in the prosecution of patent


applications where anticipation is taken as a ground of objection by the office. With the
exception of Rule 28 others are not difficult and Rule 28 also is to the effect that within
a month of the receipt of the objections from the patent office, by citing earlier
specification of a earlier patent you must respond and ask for a personal hearing. Or
ask for further time to respond. These are basically procedural aspects that we can see
in advanced classes later.

Other Rules relating to anticipation are self explanatory and not difficult to follow

TMP Free Patent Lesson - 6

View Course Schedule

We studied earlier that patents will be only to patentable inventions. We have seen
the statutory classes to which the inventions should belong to, so as to get a Patent.
Otherwise they are not patentable even if they are new.

25
This begs the questions as to what are not Inventions for the purpose of
Patentability. This lesson focuses on such products or processes which will not be
considered inventions and for which a Patent will not be issued.

There is a difference between Indian Law and US Law on the subject.

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Indian Patent Act sections 3 and 4 define as to what are not inventions and what
cannot be patented.

Section 3

The following are not inventions according to Section


3:

1. Inventions which are frivolous - meaning insignificant and naturally obvious in


comparison with known prior art

2. Inventions which claim any thing contrary to law of the country or morality or
injurious to public health;

3. The formulation of an abstract theory or the mere discovery of a scientific principle;

4. A new use of a known product or Process

Exception:

However the new use of a known method is patentable if that new use of known
process uses a new reagent or results in a new product.

5. A substance obtained by mere admixture which results only in the aggregates of


the properties of the components

6. Any arrangement or re-arrangement or duplication of known devices, each


functioning independently in their own way.

26
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7. Any method or process of testing the process of manufacture for rendering the
machines, apparatus or equipment efficient for improvement of the existing machine

8. A method of agriculture or horticulture.

9. Any process of medical, surgical, diagnostic, therapeutic, or any other treatment


of human beings or of animals to render them free of disease or to increase the
economic value of their products

10. Plants and Animals in whole or any parts other than micro organisms. Seeds,
Varieties and species, and essentially biological processes for production or
propagation of plants and animals.

11. A Mathematical or Business Method or a Computer Program per se or algorithms.

12. A literary, dramatic, musical or artistic work or any other aesthetic creation
including cinematographic works and television productions.

13. A mere scheme, rule or method of performing mental act or method of playing
games.

14. A presentation of Information. 15. Topography of integrated circuits.

16. Any invention which is a traditional knowledge or any aggregates or duplicates of


traditionally known properties of known component or components.

17. Any Inventions related to Atomic Energy are Not Patentable.

WHAT ARE THE INVENTIONS THAT ARE NOT PATENTABLE


IN USA?

1.The claimed inventions as a whole must be useful and accomplish a practical


application. i.e., it must produce a "Useful, Concrete and Tangible result" otherwise
the inventions cannot be patented.

27
2.If the invention is not more than any idea or a concept or is simply a starting point
for future research, then such inventions are not patentable.

3.Business method is patentable in United States of America provided it produces a


concrete and tangible result as explained in point number 1 in this para.

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4.Computer Software is patentable in United States of America based on


the concrete and tangible results.

5.However literary works including music compositions, legal documents and


compilation of data are not patentable.

6.Unlike the Indian Law on patents, US Law does not clearly explain as to what are not
inventions. Every thing under the sun made by man or woman is patentable in the
United States if it falls within the statutory classes set forth in 35 USC 101 and
produces a concrete and tangible and useful result.

EXERCISE:

1.Please read 35 USC 101, 102, 103 and 112 and Sections 2 and 3 of the Indian Patent
Act again today.

2.Download the following PDF file which gives guidelines to US patent examiners to
assess whether a claimed invention is patentable. This is 59 pages of pdf and could be
tough on you but just read it to understand the process. Do not worry if you do not
understand all that is stated here.

http://www.uspto.gov/web/offices/pac/dapp/opla/
preognotice/guidelines101_20051026.pdf

TMP Free Patent Lesson - 7

28
View Course Schedule

First things first

We have more than 700 members now. All learning together, in a virtual class, invisible
to each other, and living across the length and breadth of India and a few other
countries. And it is not even 15 days since we started. Thanks to you all and it is really
exciting for me to share my knowledge with so many of you at one time. Thank you all
so much for the support. Please help spread the word and please ensure that all
interested persons join this free course. I’m particularly interested in getting young
Engineers and Scientists in their final year as they will have a burning desire to learn at
that age and as they are going to be future technology leaders of India.

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Our sincere thanks are also due to Dr. A.S. Rao for posting about this free patent
training in his blog. Please see it here.

http://indiainvents.blogspot.com/2008/06/free-patent-lessons-from-tmp-
searchers.html

This is an excellent way to help spread the word. If you write a blog please let us
know.

Now back to learning. You have a lot to learn today.

29
How to evaluate whether an invention is Novel and how to beat an objection
that the invention lacks Novelty

When you file your patent application, it goes to an officer called Patent Examiner. His
duty is to check the patent application and verify that it meets with the subject matter
requirement, Novelty requirement and is non obvious and meets the utility
requirements; in other words he will have to check whether your invention is patentable
and has to certify so to the Controller of Patents. Only then patent will be issued.

There are rules for rejecting a patent application on the ground of lack of Novelty. They
are as follows:

Rules for Novelty Rejection:

1. Your invention should have been disclosed prior to its filing in a printed
publication
2. Your invention should have been sold prior to your patent application filing date.
3. Your invention should have been disclosed to any one who has not signed a
confidentiality and non disclosure agreement prior to the date of filing of your
patent application.

Defenses for Novelty Rejection

1. Single prior art reference should be used to reject the application on the basis
of Novelty.

30
2. If the examiner wants to combine documents only those documents that
have been cited in a prior art document as parent documents can be combined.
Combining more than two different documents is permissible only in the case of
non obviousness or inventive step rejections and not in the case of Novelty.
3. If you create any physical difference or any difference in the method that is
different from the single prior art reference, then you satisfy the Novelty
requirement. You must do this before filing by conducting a prior art search of
patent and non patent literature
4. If your method contains different steps or your apparatus contains less
components than the single prior art document, Novelty will be established.
5. Similarly if your method contains less steps to reach the same result Novelty will
be established.
6. The new use of a known method using a new reagent or resulting in a new
Product is Novel.

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Please read the Manual of Patent Practice and Procedure pages 21-33 both inclusive,
and pages 204-210 both inclusive to understand how Novelty rejections are made by
the patent office. Once you understand the process it is easy to anticipate these
problems and beat them before you file the application.

We have two more tests on Patentability of an invention.

These are

1. Novelty (we have completed it today)

31
2. Inventive step or Non obviousness - Basically this is anticipation by combination of
two or more documents

And

3. Utility or Industrial Application - whether the invention is really useful and can be
worked in an industry.

However before going in to the other two abstract concepts of patentability I want to
get you more interested in the subject. And so we will be looking at how to draft a
Provisional Patent Application first.

Patent Applications are basically of four types.

1. Provisional Patent Application - filed to obtain priority date.

2. Non Provisional Patent Application or Complete Specification (must be filed within 12


months of filing of the provisional patent application)

3. PCT Patent application - (Must be filed within 12 months of filing the


provisional patent application). Same as a complete specification it is filed under
PCT and has different rules and forms. Has two stages called PCT International stage
and PCT National Stage. We will discuss this later. For the time being remember that
this should be filed within 12 months of the priority date

4. Convention Application: This is dealt with below.

32
I'm not including Patent of Addition or Continuation or Continuation in part or Divisional
application as separate types because all of them are basically a different form of
complete specification filed under different circumstances. Nothing more

Manual of Patent Practice and Procedure however classes patent applications differently
in to six types which is as follows:

1. Ordinary Application: Application made by Indian nationals directly to the


Patent Office. It includes both provisional and non-provisional application
(complete specification).

2. Convention Application: India has entered into bilateral treaties with a


number of countries for granting equal protection to patent rights to citizens of
India just as given to their own citizens. These are called Convention countries.
Application from these countries are Convention Applications. A convention
application must be filed within 12 months from the priority date.

3. PCT International Application: It is an application filed under Patent Co-


operation Treaty (PCT). It must be filed within 12 months of the priority date.

4. PCT National Phase Application: Application for entry into India or National
phase of PCT application after publications. It must be filed within 31 months
from priority date.

5. Application for Patent of Addition: Incase the applicant comes across a


situation where he finds that he has an invention which is a slight modification of

33
the invention for which he has already applied, a patent of addition can be filed
since the invention does not involve a substantial inventive step.

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Patent of Addition will be granted only when the date of filing of application was
the same or later than the date of filing of the non-provisional application
(complete specification) in respect of the main invention.

6. Divisional Application: I'm discussing this in the next page. But remember
that this is the sixth type of the patent application recognized by the Patent
office. Section 16 of the Patent Office provides for this. Requirements are same
as for a complete specification.

(See pages 97-99 of Manual of Patent Practice and Procedure).

You can have only one patent for one invention. If you file two patent applications
for the same invention, it is called as double patenting and you will have to withdraw
one application.

Do you have any problem in understanding one Patent for one invention rule?

Nothing

34
Ok Great.

Similarly you can not have two inventions in one patent application. If you file
two inventions in a single patent application you will be asked to elect one of those
inventions for further prosecution and cancel the claims for the second invention. This
procedure is called the Election/Restriction Requirement. Basically you elect and
you are restricted to a single invention in one patent application

You may now ask this question.

OK I made a mistake and what about the protection for the second invention?

Take it Easy.

The Law provides for a Divisional Patent Application

Requirements and conditions for a Divisional Application are provided in Section 16


of the Patent Act.

A Divisional Application is one which is divided out of an earlier patent


application. Let us call it the original application.

Divisional application can be filed only if and after the patent office objects to the
presence of more than one inventive concept in the original patent application

Divisional Application should be filed before the grant of the patent for the
original application i.e., the application out of which the divisional application was

35
divided. So you have to file the divisional application during the time the original
application is pending.

Divisional application cannot include any new matter not disclosed in the
original patent application. Patent office will ask you to amend the specification if
you introduce new matter not disclosed in the original application.

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You get the same filing date as the original patent application.

Since the patent office only examines claims, it is enough if you make only
amendments to the claims while filing a divisional patent application retaining all
other things disclosed in the earlier original application.

You have to state in the application that this is a divisional application and has been
divided out of the earlier original application as per office directions. See Form 1 for
details.

The concept of Divisional Patent Application is the same in India and US. It is covered
under Section 16 of the Indian Patent Act. Though I write a lot on this, this is required
only when an Election / Restriction requirement is imposed and is basically a complete
specification in itself

You now have two inventions and two patent applications. Ok.

This helps to secure one invention=one patent rule. We will see more on this in
future lessons.

36
There are also two other types of Patent applications in US Law which are stated as
Patents of Addition in India

Continuation Patent Applications: Incase if you want to file additional claims to your
invention disclosed in your earlier filed application that has not been issued or
abandoned, then you can do that by filing for a Continuation Patent Application. You
can make use of the same specification which you drafted for your earlier application.
The Continuation Patent Application and the parent application (patent application) filed
initially should have at least one common inventor.

Inventors also opt for a Continuation Patent Application when some claims drafted
for the patent application have been accepted and some have been rejected.

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Continuation in Part Patent Applications (CIP): This is application in which the


additional matter can be added that has not been disclosed in the parent application.
There must be at least one common inventor in the CIP and its parent application.

Provisional Patent Application

Ok now let us try to draft a Provisional Patent Application.

We have got an invention.

We have not checked the prior art and are yet to conduct the prior art search.

37
Yet we want to protect the idea for we are 100 per cent confident that no such
invention was ever conceived by any one.

No problem with that notion. We will verify it later.

Just file the Provisional Patent Applications. It is cheap and it is easy to file.

Why should I file my provisional application without conducting a prior art


search?

Official fees in India are only Rs.1000/- for a provisional patent application if you file as
an individual to secure an initial filing date. No other expenses are required. I believe
any body who has done research and wants to file an invention can afford it. You do not
lose much by filing a provisional application.

A competent prior art search could cost you any where between INR. 25,000 to
200,000/-.

Prior art search is the most expensive part in the decision to file a patent application. A
patent search or prior art search is not easy. If any one tells you otherwise, take it from
me that they are not going to deliver a professional job.

Patent Drafting is not at all difficult once you have done the prior art search and
understand the core concept of the invention and have mastered the rules of patent
drafting and have done extensive practice exercises.

Please believe me. Ok

Now let us look at the Requirements of Filing a Provisional Patent Application in India

Sections 9 and 10 of the Patents Act provide for the Provisional Specification and its
form. A complete specification is basically a refined provisional specification with claims
and other mandatory forms. So check sections 9 and 10. Also please carefully study
Rules 4 to 16 of the Patents Rules for understanding the requirement of Size, form
etc of a Patent Application.

38
Requirements of Filing a Provisional Patent Application in India

a) A Provisional Patent application is filed to obtain a priority date.

b) Within 12 months of filing the provisional application the non-provisional


specification or complete specification must be filed to acquire the priority date
of the filling date of the provisional application.

c) The provisional patent will not be examined on its merits and will expire at
the end of 12 months.

What is a filing date?

The date on which you file your patent application is the date of filing of that patent
application irrespective of the type of application.

The filing date of the provisional application, or if you elect to file the non-
provisional specification without filing a provisional application, then the filing date of
the non- provisional application will become the priority date.

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What is the use of priority date?

The priority date ensures that your application disclosing the invention will
become prior art to other patent application filed after your priority date. If the
inventions are identical patent will be given only to the person who has the earliest
priority date

39
CONTENTS OF PROVISIONAL APPLICATION

The provisional application is cheap and easy to prepare but it has its own drawbacks.
With that warning, let us look at the contents of a Provisional application.

Provisional Application has to be filed in Form 2 as is the complete specification.

The specification whether it is provisional or complete should start on a separate sheet.


It must contain the following elements.

1. Title of the Invention


2. Field of the Invention
3. Background of the Invention
4. Summary of the Invention
5. Description of Drawings
6. Detailed Description of the invention with Respect to the Drawings. Here
the various embodiments (meaning various types or models of your invention),
the way to make it, the method of using it as known to you and the preferred
mode of operating your invention must be stated. While no format of provisional
application is required it must meet the requirements for a complete specification
as far as the disclosure of the invention is concerned. Please note that the
disclosure of the invention must meet the three requirements for the
description of a patent application.

6.1 Written Description

6.2 Enablement

6.3 Disclosure of Best Mode and if there are more than one best mode or
preferred embodiments all of them must be disclosed. I will tell you more on
this later.

6.4 The description should not suppress any information regarding the invention

40
6.5 The description in the provisional application should provide sufficient
antecedent support for the claims that you are going to make in the complete
specification or Non Provisional application. Failure do so would make you
lose the priority date.

7. Drawings as required to explain the invention disclosed must be included.


Every physical feature that you intend to claim in the complete
specification must be supported in the drawings for the provisional
application.
8. Claims are not required to be included in the provisional application. But
it is best to include at least one very, very narrow claim of the invention. Do not
include a broad claim. Claims should start on a separate sheet
9. Similarly Abstract of the disclosure is not required. But there is no bar in
filing an abstract. Abstract should be on a separate sheet.
10.Fees of the Provisional application must be paid. The Fee Schedule is given in
First Schedule to the Patent Rules. See Entry 1
11.Following Forms to be included (if you

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are filing on your own)

11.1 Form 1

11.2 Form 2 ( The description should be in Form 2)

11.3 Form 3

7.5 Fee to be paid in favor of Controller of Patents and payable at the place of
office where you are filing the application or payable by cash or at par check
or demand draft.

41
The rules for drafting a provisional application in US and India are same and the law is
the same. The wording may be different in the legislations.

When you complete this course you would be able to draft a provisional application
yourself but I leave it to you if you need the supervision and guidance of a Patent
Attorney or Patent Agent.

What are the advantages of filing a provisional patent application?

1. It is easy to draft; no proper format is required.

2. You must give the title and the description of the invention along with a suitable
drawing as necessary. One drawing is adequate to meet the needs of filing but
ensure that as many drawings as needed are filed to show all the physical
features you are going to claim later in the complete specification.

3. Claims need not be included in a provisional patent application though it is


advisable to include at least one independent claim.

4. The provisional application enables you to obtain the priority date.

5. It is not expensive in comparison with Non-provisional application.

6. If you know how to draft a technical literature article, that article itself
can be filed as the disclosure of the invention in the provisional patent
application before the article is published.

7. You can file your provisional application and improve your invention within a
period of twelve months.

42
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8. If you file your provisional application, you have 12 months to convince potential
investors to finance your non-provisional application.

9. A Provisional patent application is not examined on its merits.

10. The only purpose served by filing the provisional application is to obtain
the priority date.

DISADVANTAGES OF FILING A PROVISIONAL PATENT APPLICATION

Although the provisional application should have only a formal description, that
description should also meet the following three tests.

1. It should be a written description detailing how to make and use your invention.
The meaning of a written description is simple. All steps that are necessary to
understand and practice the invention and all information needed should be
disclosed in a detailed way. This is called the Written Description Requirement.
2. It should enable a person skilled in the art to duplicate your experiment and
make the invention without undue experimentation. This is called Enablement
Requirement.
3. The provisional application must disclose the best mode of carrying out the
invention (preferred embodiment in patent parlance). If there are more than one
way of carrying out the invention you must disclose all of them to make them
prior art. This is called the Best Mode Requirement.
4. The provisional application will expire at the end of twelve months. No patent will
issue on the basis of a provisional application alone unless a non provisional
application or complete specification is filed within 12 months.

43
5. In order to claim the priority date of the provisional application you should
completely disclose your invention in the provisional application. In other words,
the invention disclosed in the provisional application and the non-provisional
application must be identical. This is important in pharmaceutical or chemical
compositions. If you do not include one component of composition in the
provisional application but include it later in the non-provisional application the
priority date will be the date of filing of the non-provisional application only,
because the properties will change with the addition of one more component to
the composition. Effectively you will loose the main objective of filing the
provisional application i.e., obtaining the priority date.
6. The provisional application should enable the claims in the non provisional
application.
7. You must file your non-provisional application within 12 months from the date of
filing the provisional application.
8. You must also file your PCT application or convention patent application
within 12 months of filing the provisional application. These are expensive
to file and mobilizing funds for all the above said points will be a problem within
12 months.
9. The Provisional patent application cannot claim the benefit of an earlier
application.

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10.The Provisional patent application must name all the inventors of the invention.
11.The description of the provisional patent application cannot be amended to
introduce new information in the description. If you make a mistake you have to
file another provisional application.
12.The provisional application must be filed with the official fee to obtain the priority
date.
13.No patent will be issued on the basis of the provisional patent application unless
the provisional patent application is converted to non-provisional patent
application within 12 months.

44
14.The drawings of the provisional application must enable all the physical features
of the claims in the complete specification.

You can download the forms directly from the Patent Office website at
http://ipindia.nic.in/ipr/patent/patent_FormsFees/index.htm

Or

You may download the Forms for filing a Provisional Application here
http://www.tmpsearchers.com/Patent_Forms.zip

Things for you to remember are these

1. When you draft a Provisional Patent Application no legalese is

required.

2. Just ensure that all the elements of your invention are completely

disclosed along with the various modes of the invention.

3. Use plain and simple English and write short sentences.

4. Proofread and see that the language used conveys the information correctly,
precisely and discusses the invention elaborately.
5. Avoid grammar mistakes in sentence formation. Employment of language and
how you write your claims is very important in drafting patent applications and if
you are not sure of your English ask your friends who have signed a NDA with
you to proof read the application before filing.

Caution

45
Do not discuss prior art in the provisional application. References to any prior
art known to you should be avoided. There is no requirement that you should
state it in the provisional patent application and avoid discussing it. If you do
not disclosing prior art, it does not mean that you are suppressing material
information and it only shows that you have not done a prior art search and
assuming you did, you could not find any relevant prior art. That is the
conclusion the office will arrive at. If you admit prior art, the office is entitled
to draw a conclusion of obviousness based on your admission of prior art even
in the provisional application. Also if you disclose prior art in the provisional
application you cannot suppress it in the complete specification.

Here is a link from USPTO on Provisional Patent Applications:

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http://www.uspto.gov/web/offices/pac/provapp.htm

You can also check the following links about Provisional Patent Applications. I
strongly recommend that you do this to learn more about this topic. While
these two links discuss basically US Patent Law on Provisional Applications
remember that there is no difference between India Law and US Law in so far
as Provisional applications are concerned.

http://www.bitlaw.com/patent/provisional.html

http://www.bpmlegal.com/provapp.html

46
Please note that I'm not connected in any way with the websites that I cite
here and I'm not connected with the patent applications that I'm going to cite
for your learning purposes. While I do draft patent applications for filing in
India and elsewhere, I'm not connected with these applications. Please
understand.

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Tomorrow we will see a sample of an actual Provisional Patent Application filed in US


and see how it has been drafted and filed. I will also show a mock provisional
application that you can prepare in about 90 minutes or less in India if you remember
the above points without including the drawings. I'm certainly not misleading you.

We will do the following.

We will take one published inventive concept.

Assume an inventor

Assume that the inventor is the applicant

Assume that drawings are not required.

Based on this we will show you how to draft and prepare an application.

Exercise

I have no exercises for you today. You have studied a lot. Learning and
remembering so much in a day is difficult. But I wanted a continuation of the thought
process and so this is sent as a large lesson.

47
Please note that while this type of conversational style of teaching is difficult to write
and easy to read and learn, it is also much more easier for you to forget what you have
studied. So I suggest that you study these 11 pages at least 3 or 4 times.

48
49
TMP Patent Lesson 10 - Non Obviousness 2
2. Who can be called a person of ordinary skill in the art?

A person of ordinary skill in the art is a hypothetical person. He does not really exist in the world. The

acronym used for him generally is POSITA or PHOSITA.

And so who is a POSITA?

He is a hypothetical person of ordinary skill in the subject matter. An average skilled person.

However he is deemed to know every thing in the subject matter in his field.

So he will know of all patents, all technical journal publications and would have read all the articles

published in technical journals and all patent applications published or granted in all languages.

He is given the credibility and competence of an ordinary person only.

Naturally such a person does not exist except for this hypothetical assumption.

The concept of posita enables the patent office to combine the various documents that the examiner would

unearth in his search for obviousness of the invention for which the patent application has been filed.

Thus the patent office can combine multiple documents and come to a conclusion that patent can not be

given for the invention is obvious.

This is a common rejection made by USPTO on almost all patent applications submitted to it. You must note

that patent is given only to 50% of the applications filed in USPTO as the applicants are not able to beat the

rejections made by USPTO under 35 USC 103 which deals with obviousness rejections.

3. How does the patent office makes the obvious to a POSITA rejections?

The Patent office first looks for documents cited by the applicant as prior art in his patent applications

(whether it is provisional or non provisional) in the background of the invention and in the detailed

description of the invention. Documents that are cited here are applicant admitted prior art documents.

Then the office will combine these documents with prior art patent documents and then with prior art non

patent documents.

The rejections are made by combining any number of these documents.

The only thing that is required to be noted is that the documents must have a priority date earlier than

that of the application. Thus though some documents may have been published later than your patent

50
application if their priority date is earlier to yours they can and will still be cited as prior art documents to

reject your invention under ‘103 rejections.

There is a significant difference between USPTO and Indian Patent Office which you must clearly have in

mind here. This difference may disappear over a period of time but at the moment it exists.

USPTO examiners have no restrictions on search capabilities including budgets. Indian Patent office does

not enable the Indian Patent Examiners to search through technical literature databases which are very

costly. A single document can cost you easily $35 upwards for downloading and viewing. I’m not aware of

the Indian Patent Examiners being given the liberty of purchasing technical literature documents which can

be made only in US dollars online while searching for patents.

Therefore unless you cite some technical journal documents in your own applications, there is no way a

patent examiner in India will pull out a technical journal article to defeat your application. He just may not

have the budget and the access to find out. So avoid making these disclosures in your patent applications.

Review my lesson on Provisional Application again to understand the importance of this point.

In USPTO also the examiners have to complete an application within 35 hours I believe. So unless they are

not able to get prior art patent documents they might not get in to the technical literature document

searching part. Many examiners in USPTO are subject matter experts and are highly decorated scientists. In

India the patent examiners are taken at an yearly contract renewable every year. I’m not sure if the best

brains in the field would opt to become patent examiners at this stage.

All this could change in future. When I became a Patent Agent the patent office did not have a single

computer to use. Today it is totally computerized and increasingly efforts are being made to digitize the

whole database and the patent office is one of the highly profit making offices to the Central Government.

So all this can change in future. But at the moment it is better for you to remember that unless you cite a

technical journal article yourself, the patent office may not be in a position to cite a technical article as a

prior art against your application.

51
TMP Patent Lesson 11- Obviousness III
This is the third and concluding part of the Non obviousness Requirement for Patentability.

You would do well to study a US Supreme Court case KSR International on Nonobviousness. Study also the

Federal Circuit decision against which appeal was filed in the US supreme Court. You can google for the

case or find it at findlaw.com

Arguments that can be advanced to defeat Obviousness Objections.

These are also the defences to an obviousness rejection. I’m not covering them all here as this is only an

introductory course. Nor am I giving a lot of information on the headings below. That will be stretching this

limited course a little too much.

Basically the arguments to overcome obviousness rejections are based on common sense approach. The

following are the grounds normally used.

1. Failure of others to accomplish what the invention teaches. In other words other scientists have

recognized the problem, tried to solve it but could not and your invention did it.

2. Your invention recognizes an unrecognized problem and solved it. In other words the invention identified

a problem that could not even be identified by others and you identified the problem and your invention

solved the problem.

3. Your invention is a commercial success.

4. If your invention has omitted some elements in the prior art documents and still achieves same or better

results in an economical way, it is not obvious.

5. If the combination of the invention was not suggested by the prior art documents, then your invention is

not obvious.

6. If the prior art documents taught away from the principle of the invention, then the invention is not

obvious.

7. If the prior art documents specifically teach away from combining them and the examiner has combined

such prior art documents then the invention is not obvious.

8. If the invention solves an ancient problem for which no solution existed and your invention came up with

the solution, then it is nonobvious.

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9. Where the invention used elements that are thought to be impossible to combine and combined them

then it is not obvious.

10. If the prior art documents cited are from non analogous fields, and their combination is required to

make the invention obvious, then the invention is not obvious.

11. The decision is based on hindsight. Every thing is obvious after it is pointed out. Rejection was bad due

to hindsight.

12. The combination of the prior art elements and the rejection of the invention was based on obvious to

try principle.

13. The suggested combination of prior art documents do not assure success by mere combination and

extensive experimentation, research and studies would be needed to combine them to reach the results

taught by the invention.

One more possible defence but weak defence.

14. If multiple prior art documents are needed to be combined then the invention may be deemed non

obvious.

There is a case that approved combining 13 different documents by the patent examiner to reject an

invention on the ground of obviousness. You can use the 14th ground as a supporting ground to the first 13

but the ground No. 14 alone would not stand on its own.

Let me state that the list is not exhaustive but merely indicative of the defences that can be made. Let us

also remember that the case law on patents and patentability in particular in India is limited at the

moment but it is bound to change in future.

This concludes our lessons on Patentability. While the last lesson here is the most important one, I’m not

sure how many of you are going to be patent agents who are going to raise these points in future. This topic

is for advanced patent prosecution persons and not for beginners any way and if you feel that you were

able to understand the lessons on obviousness hats off to you and you are heading in the right direction.

Note however I have oversimplified things here for you to understand. If you do not understand todays

lesson, please do not feel bothered. You don’t learn to swim until you jump in to the water.

By the way let me know how many of you are interested in writing the next Patent Agent Examination? Do

you really intend to learn Patent Law to an extent that you would like to become a Patent Agent? Let me

know. I ask precisely because a lot of members have written to me about the need to conduct a

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certification exam of this course. I have been looking at the click through stats and I find that the number

of persons who are seriously following up all the lessons is only about 300 or so.

I believe that enabling our members to become Patent Agents which is a professional qualification and can

make you earn at least about Rs. 6 lakhs per annum in India is the best benefit that we can give our

members. We made it a point to tell you when you joined that we are not an educational institution and

we do not want to deviate from that stated fact. But we would certainly give you a special personal

training if you want for the Patent Agent examination.

We would be interested to provide intense training to about 30 members to write the Patent Agent

examination. You will need to study for about 90 days and if you are working in any corporate will need to

take study leave or special permission to study for this program. Only absolutely serious and sincere

members please contact us. You need to have the required qualifications to become a Patent Agent and

must have excellent written English plus an ability to grasp quickly and write the answers.

aswami Natarajan

Patent Attorney

TMPsearchers

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