Unit 2: Patents

2.1 Elements of Patentability: Novelty, Non Obviousness (Inventive Steps),

Industrial Application
2.2 Registration Procedure, Rights and Duties of Patentee,
2.3 Assignment and licence
2.4 Restoration of lapsed Patents, Surrender and
2.5 Revocation of Patents,
2.5 Infringement,
2.6 Remedies & Penalties

2.1 Elements of Patentability: Novelty, Non Obviousness (Inventive Steps),

Industrial Application

Title: Elements of Patentability: Novelty, Non-Obviousness (Inventive

Steps), and Industrial Application

Introduction:

The patent system serves as a crucial pillar in fostering innovation and

technological advancement. The protection it offers encourages inventors to
disclose their inventions to the public, contributing to the collective knowledge
base while securing exclusive rights for a limited period. This article delves into
three fundamental elements of patentability: novelty, non-obviousness (or
inventive steps), and industrial application.

I. Novelty:

Novelty is a cornerstone of patentability, emphasizing the importance of the

invention being new and not part of the prior art. An invention is considered
novel if it has not been publicly disclosed or made available to the public in any
form before the filing date of the patent application.

 Prior Art:
o Defining what constitutes prior art is crucial. It includes everything
publicly available, whether through written or oral disclosure, use,
sale, or any other means, before the filing date of the patent
application.
 o The significance of a worldwide novelty standard in many
jurisdictions ensures that any public disclosure, regardless of its
origin, can invalidate a patent application.
 Grace Periods:
o Some jurisdictions provide inventors with a grace period during
which disclosures made by the inventor or someone who obtained
the information from the inventor do not count as prior art.
However, relying on grace periods may limit international patent
protection.
 Absolute vs. Relative Novelty:
o Absolute novelty requires that an invention is new worldwide,
without any exceptions.
o Relative novelty allows for a limited period during which prior
disclosures are not considered if the inventor has applied for a
patent.

II. Non-Obviousness (Inventive Steps):

Beyond being novel, an invention must involve an inventive step or be non-

obvious to a person skilled in the art. This criterion aims to distinguish
inventions that represent true advancements from those that might be a mere
combination of known elements.

 Person Skilled in the Art:

o Determining the skill level of a person skilled in the art is essential.
It helps evaluate whether the invention's non-obviousness would be
apparent to someone with ordinary skill in the relevant field.
 Obviousness Test:
o Various jurisdictions apply different tests to assess obviousness.
Commonly, it involves evaluating whether the claimed invention
would have been obvious to a person skilled in the art at the time of
filing.
 Secondary Considerations:
o Objective evidence, such as commercial success, unexpected results,
and long-felt but unsolved needs, can be crucial in demonstrating
non-obviousness.
 o The significance of a "teaching, suggestion, or motivation" (TSM)
test in some jurisdictions highlights the need to establish that there
was no explicit motivation to combine prior art references.

III. Industrial Application:

An invention must possess industrial applicability, meaning it can be made or

used in some kind of industry. This criterion ensures that patents are granted for
inventions that have practical utility and contribute to technological progress.

 Technical Effect:
o The industrial application requirement often involves demonstrating
a technical effect or solving a technical problem. This ensures that
the invention is not a mere abstract idea but has a tangible impact.
 Exclusions:
o Some jurisdictions explicitly exclude certain subject matter, such as
methods of medical treatment or computer programs "as such," from
patentability unless they have a specific technical application.
 Utility Requirement:
o The utility requirement emphasizes that an invention should have a
specific, credible, and substantial utility. This prevents the granting
of patents for speculative or non-functional inventions.

Conclusion:

In summary, the elements of patentability—novelty, non-obviousness (inventive

steps), and industrial application—are intricately interconnected, forming the
foundation of a robust patent system. The delicate balance between incentivizing
innovation and preventing the granting of overly broad or trivial patents is
maintained through a rigorous examination of these elements. Understanding
these criteria is essential for inventors, patent practitioners, and policymakers
alike to navigate the complex landscape of intellectual property and foster a
thriving culture of innovation.

2.2 Registration Procedure, Rights and Duties of Patentee

Title: Registration Procedure, Rights, and Duties of a Patentee: Navigating

the Path to Intellectual Property Protection
Introduction:

The journey from conceptualizing an invention to obtaining a patent involves a

multifaceted process that encompasses registration procedures, the acquisition of
rights, and the assumption of certain duties by the patentee. This comprehensive
exploration seeks to elucidate the intricate landscape of patent law, delving into
the steps an inventor must undertake, the rights conferred upon them, and the
responsibilities they bear.

I. Registration Procedure:

 1. Preparing the Patent Application:

o A meticulous and well-drafted patent application is the cornerstone
of the registration process. It typically includes a detailed description
of the invention, claims defining the scope of protection, and often
drawings or diagrams to illustrate the invention.
 2. Filing the Application:
o The patent application is submitted to the relevant intellectual
property office, initiating the examination process. Different
jurisdictions may have specific requirements regarding the format,
language, and content of the application.
 3. Patent Examination:
o The patent office conducts a thorough examination to assess the
novelty, non-obviousness, and industrial applicability of the
invention. Examiners may request additional information or
amendments during this phase.
 4. Publication and Opposition:
o Once the patent office is satisfied with the examination, the
application is published. In some jurisdictions, a post-publication
opposition period allows third parties to challenge the patent's
validity.
 5. Grant of Patent:
o Upon successful completion of the examination and any opposition
proceedings, the patent office grants the patent. The patentee is then
entitled to enforce their exclusive rights.

Rights and Duties of a Patentee:

I. Rights of a Patentee:

1. Exclusive Rights:

 Definition: The primary and fundamental right granted to a patentee is

exclusivity. This entails the exclusive right to make, use, sell, and import
the patented invention for a specified period.
 Duration: The exclusivity typically lasts for 20 years from the filing date
of the patent application, providing a temporal monopoly to the patentee.

2. Right to License:

 Definition: A patentee has the authority to grant licenses to others,

allowing third parties to use the patented invention under specific terms
and conditions.
 Monetization: Licensing can serve as a lucrative avenue for the patentee
to monetize their invention, fostering collaboration and widespread use.

3. Right to Enforce:

 Definition: The right to enforce the patent involves taking legal action
against individuals or entities that infringe on the exclusive rights granted
by the patent.
 Legal Remedies: The patentee can seek remedies such as injunctive
relief, damages, or both, through litigation or negotiation.

4. Right to Assign:

 Definition: Patents are transferable assets, and a patentee has the right to
assign or sell their patent to another party.
 Recordation: The assignment must be recorded with the relevant patent
office to ensure the new owner's legal rights.

II. Duties of a Patentee:

1. Maintenance Fees:

 Definition: Patentees are typically required to pay maintenance fees to

keep their patents in force.
  Consequence of Non-payment: Failure to pay these fees can result in the
expiration of the patent, leading to loss of exclusivity.

2. Working the Invention:

 Definition: Some jurisdictions impose a duty on patentees to actively

work their patented inventions, ensuring that the technology is put into
commercial use.
 Compulsory Licensing: Failure to work the invention may lead to
compulsory licensing, allowing others to use the patented technology
under certain conditions.

3. Patent Marking:

 Definition: Patentees are often required to mark their patented products

with the relevant patent number to provide notice to the public.
 Enforcement Aid: Proper marking facilitates enforcement actions against
potential infringers and helps maintain the integrity of the patent system.

4. Information Disclosure:

 Definition: During the patent application process, patentees have a duty to

disclose any information material to the patent's validity.
 Consequences of Non-disclosure: Failure to fulfill this duty may result in
consequences, including the potential invalidation of the patent.

Conclusion:

The rights and duties of a patentee form a delicate balance designed to

incentivize innovation while ensuring responsible use of exclusive rights.
Patents, as legal instruments, play a pivotal role in encouraging inventors to
share their innovations with the public. However, this privilege comes with
responsibilities, such as maintaining the invention, disclosing relevant
information, and respecting the boundaries of exclusivity. A nuanced
understanding of these rights and duties is essential for inventors, businesses,
and policymakers to navigate the complexities of the patent system and
contribute to a dynamic and responsible innovation ecosystem.
Navigating the Path to Intellectual Property Protection: A Comprehensive
Guide

Introduction:

In the ever-evolving landscape of innovation, intellectual property (IP)

protection is paramount for creators and inventors seeking to safeguard their
ideas, inventions, and creative works. This comprehensive guide explores the
multifaceted journey of navigating the path to intellectual property protection,
covering various forms of IP, their registration procedures, and the strategic
considerations involved.

I. Understanding Intellectual Property:

 1. Types of Intellectual Property:

o Intellectual property encompasses various forms, including patents,
trademarks, copyrights, and trade secrets.
o Each type of IP protects different aspects of innovation, such as
inventions, brands, creative works, and confidential information.
 2. Choosing the Right IP Protection:
o Selecting the appropriate form of IP protection depends on the
nature of the creation. For inventions, patents may be suitable, while
trademarks protect brands, and copyrights cover creative
expressions.

II. Patent Protection:

 1. Invention Disclosure:
o Before embarking on the patent process, inventors must document
and disclose their inventions in detail, including the novel aspects
that make them eligible for patent protection.
 2. Patentability Assessment:
o Conducting a thorough patentability search and analysis helps
determine if the invention meets the criteria of novelty, non-
obviousness, and industrial applicability.
 3. Patent Application Drafting:
 o Crafting a well-structured and detailed patent application is crucial.
It should include a description of the invention, claims defining its
scope, and any necessary drawings or diagrams.
 4. Patent Examination and Prosecution:
o The patent office examines the application, and the process may
involve responding to office actions, amending claims, and
addressing any concerns raised by the examiner.
 5. Maintenance and Enforcement:
o After a patent is granted, the patentee must pay maintenance fees to
keep it in force. Enforcement involves actively protecting the patent
and taking legal action against infringers.

III. Trademark Protection:

 1. Trademark Search:
o Before applying for a trademark, it's essential to conduct a
comprehensive search to ensure the chosen mark is not already in
use or registered by another party.
 2. Trademark Application Filing:
o Submitting a trademark application to the relevant intellectual
property office initiates the registration process. The application
should include a description of the goods or services associated with
the mark.
 3. Trademark Examination and Opposition:
o The trademark office examines the application, and there may be a
period during which third parties can oppose the registration if they
believe it infringes on their existing rights.
 4. Trademark Registration and Renewal:
o Upon successful examination, the mark is registered. Trademark
owners must periodically renew the registration to maintain
protection.

IV. Copyright Protection:

 1. Creation and Fixation:

o Copyright protection arises automatically upon the creation and
fixation of an original work in a tangible medium, such as writing,
art, music, or software.
  2. Registration Benefits:
o While not required for protection, registering a copyright with the
relevant office provides additional benefits, such as the ability to sue
for statutory damages and attorney's fees.
 3. Duration and Renewal:
o Copyright protection has a limited duration. Renewal may be
possible in certain cases, but the rules vary by jurisdiction.

V. Trade Secret Protection:

 1. Identifying Trade Secrets:

o Businesses must identify and document information that qualifies as
a trade secret, such as formulas, processes, customer lists, or other
confidential business information.
 2. Implementing Security Measures:
o Protecting trade secrets involves implementing security measures,
including restricted access, confidentiality agreements, and
employee training.
 3. Enforcing Trade Secret Rights:
o If a trade secret is misappropriated, the owner can take legal action
to seek remedies, such as injunctions and damages.

VI. Strategic Considerations:

 1. International Considerations:
o Understanding the nuances of IP protection across borders is crucial,
considering differences in laws, registration procedures, and
enforcement mechanisms.
 2. IP Portfolio Management:
o Developing and managing an effective IP portfolio involves
strategic decision-making, including the identification of core assets,
licensing opportunities, and potential areas for expansion.
 3. Enforcement and Litigation:
o Being prepared to enforce IP rights through litigation or alternative
dispute resolution mechanisms is a critical aspect of protecting
intellectual property.

Conclusion:
Navigating the path to intellectual property protection is a complex and dynamic
process that requires careful planning, execution, and ongoing management.
Whether an inventor seeking patent protection, a business safeguarding its brand
with trademarks, a creator protecting original works with copyrights, or a
company securing trade secrets, a comprehensive understanding of the relevant
laws and strategic considerations is essential. By embracing the principles
outlined in this guide, individuals and organizations can navigate the intricate
landscape of intellectual property, fostering innovation, protecting investments,
and contributing to a vibrant and competitive global marketplace.

2.3 Assignment and licence

Assignment and License: Understanding and Differentiating Key

Intellectual Property Transactions

I. Introduction:

Intellectual property (IP) transactions play a pivotal role in the

commercialization and protection of creative works, inventions, and brands.
Among these transactions, assignments and licenses are two fundamental
mechanisms through which IP rights are transferred or shared. This discussion
delves into the concepts, distinctions, and implications of assignment and license
in the context of intellectual property.

II. Assignment of Intellectual Property:

 1. Definition:
o An assignment is a transfer of ownership of intellectual property
rights from one party (assignor) to another (assignee).
 2. Key Elements:
o The assignment typically involves a written agreement specifying
the details of the transfer, including the scope of rights,
consideration (payment or other compensation), and any conditions
or restrictions.
 3. Effects of Assignment:
o Once an assignment is executed, the assignee becomes the new
owner of the IP rights. The assignor relinquishes all rights and
interests in the intellectual property.
  4. Recordation:
o To ensure legal clarity and enforceability, assignments are often
recorded with the relevant intellectual property office. This serves as
public notice of the change in ownership.

III. License of Intellectual Property:

 1. Definition:
o A license is a permission granted by the IP owner (licensor) to
another party (licensee) to use the IP rights without transferring
ownership.
 2. Types of Licenses:
o Licenses can be exclusive, granting the licensee exclusive rights to
use the IP, or non-exclusive, allowing multiple licensees to use the
IP simultaneously.
 3. Scope and Restrictions:
o The license agreement defines the scope of the permitted use, any
restrictions, duration, and financial arrangements, such as royalties
or license fees.
 4. Retention of Ownership:
o Unlike an assignment, the licensor retains ownership of the
intellectual property. The licensee gains specific rights but does not
become the owner.

IV. Distinctions Between Assignment and License:

 1. Nature of Transfer:
o Assignment involves a complete transfer of ownership, while a
license grants permission for specific uses while retaining
ownership.
 2. Control and Use:
o Assignees have full control and can enforce rights independently.
Licensees operate within the parameters defined by the license
agreement.
 3. Duration:
o Assignments are generally permanent, while licenses can be
temporary or perpetual, depending on the terms.
 4. Rights to Sub-license:
 o Assignees have the right to further transfer the IP rights. In licenses,
the ability to sub-license depends on the agreement between the
parties.

V. Common Provisions in Assignment and License Agreements:

 1. Representations and Warranties:

o Both types of agreements typically include assurances from the
transferring party regarding the validity of the IP rights and absence
of third-party claims.
 2. Governing Law and Dispute Resolution:
o Agreements often specify the governing law and mechanisms for
resolving disputes, providing a legal framework for the transaction.
 3. Confidentiality:
o To protect sensitive information related to the IP, both assignments
and licenses may include confidentiality provisions.

VI. Practical Considerations:

 1. Due Diligence:
o Parties involved in assignments or licenses should conduct due
diligence to ensure the validity and value of the IP rights being
transferred or licensed.
 2. Negotiation and Flexibility:
o Negotiation is crucial to align the interests of both parties.
Flexibility in crafting terms that meet the specific needs of the
transaction enhances the likelihood of a successful agreement.

VII. Conclusion:

In conclusion, assignment and license are integral tools in managing and

leveraging intellectual property. Whether an outright transfer of ownership or a
permission-based arrangement, these transactions shape the landscape of
innovation, collaboration, and commercialization. A nuanced understanding of
the distinctions, implications, and common provisions in assignment and license
agreements is essential for individuals, businesses, and legal professionals
navigating the complex terrain of intellectual property transactions. By
employing these tools strategically, stakeholders can protect their interests,
foster innovation, and contribute to the dynamic evolution of the intellectual
property landscape.

2.4 Restoration of lapsed Patents, Surrender and

Restoration of Lapsed Patents and Surrender: Legal Mechanisms and

Implications

I. Restoration of Lapsed Patents:

 1. Lapse of Patents:
o Patents may lapse due to the failure of the patentee to meet certain
obligations, such as paying maintenance fees or fulfilling other
statutory requirements.
 2. Restoration Process:
o The restoration of lapsed patents is a legal mechanism designed to
provide patentees with an opportunity to revive their patents. This
typically involves submitting a restoration request to the relevant
patent office.
 3. Conditions for Restoration:
o The restoration process is often subject to specific conditions.
Patentees may need to demonstrate that the failure to comply with
requirements was unintentional, and they may be required to pay
fees and penalties.
 4. Limited Timeframe:
o Most jurisdictions impose a limited timeframe within which
restoration can be sought. This emphasizes the importance of
prompt action by the patentee to initiate the restoration process.

 5. Justification for Restoration:

o Patentees are typically required to provide a clear and compelling
justification for the restoration, such as evidence of their continued
interest in maintaining the patent and the unintentional nature of the
lapse.

II. Surrender of Patents:

  1. Voluntary Surrender:
o Patentees have the option to voluntarily surrender their patents by
submitting a formal request to the relevant patent office. This is a
proactive decision made by the patentee.
 2. Effects of Surrender:
o Once a patent is voluntarily surrendered, it is considered revoked.
This leads to the loss of exclusive rights, and the patented invention
becomes part of the public domain.
 3. Strategic Considerations:
o Companies may choose to surrender patents for various strategic
reasons, such as a shift in business focus, changes in market
conditions, or a desire to streamline their patent portfolio.
 4. Impact on Licensing Agreements:
o Surrendering a patent may have implications for existing license
agreements associated with that patent. Careful consideration and
communication with licensees are crucial to address potential
contractual obligations.

III. Legal Implications and Considerations:

 1. Legal Procedures and Documentation:

o Both restoration and surrender involve specific legal procedures and
documentation. Compliance with these procedures is crucial to
ensure the effectiveness and legitimacy of these actions.
 2. Notification Requirements:
o Patent offices may require patentees to notify relevant parties, such
as licensees and interested third parties, about the restoration or
surrender of a patent.
 3. Impact on Patent Portfolio Strategy:
o The decision to restore or surrender a patent should align with the
overall patent portfolio strategy of the patentee. Factors such as
market dynamics, technology trends, and the competitive landscape
should be considered.

IV. Conclusion:

In navigating the complexities of patent management, the legal mechanisms of

restoration and surrender provide flexibility to patentees. Whether seeking to
revive a lapsed patent or proactively relinquishing rights, patentees must
carefully consider the legal implications, comply with procedural requirements,
and assess the strategic impact on their overall intellectual property portfolio. By
understanding and strategically utilizing these mechanisms, patentees can
optimize their patent portfolios in response to evolving business and market
dynamics.