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PATENTS

Intellectual Property
 Intellectual property- is an idea, a
design, an invention, a manuscript, etc.
which can ultimately give rise to a useful
product or application.

 Intellectual property rights- these were
created to protect the rights of individuals
to enjoy their creations and inventions.
IPRs are protected by

 Industrial rights - which includes inventions (patents),
trademarks, industrial designs, and geographic indications
of source

 Copyright - which includes literary and artistic works
such as novels, poems and plays, films, musical works,
artistic works such as drawings, paintings, photographs
and sculptures, and architectural designs. Rights related
to copyright include those of performing artists in their
performances, producers of phonograms in their
recordings, and those of broadcasters in their radio and
television programs

Patent - Introduction
 A patent is a set of exclusive rights granted by
a government to an inventor for a limited period
of time in exchange for a public disclosure of
an invention.

 Through these rights an inventor can exclude
others from imitating, manufacturing, using or
selling the invention for commercial use during the
specified period.


 Novelty
 Non-obviousness or Inventive step
 Usefulness or Industrial applicability
Invention must be:
History – Indian Patent Act-1970
 1856- THE ACT VI OF 1856 ON PROTECTION OF INVENTIONS BASED ON THE
BRITISH PATENT LAW OF 1852. CERTAIN EXCLUSIVE PRIVILEGES GRANTED
TO INVENTORS OF NEW MANUFACTURERS FOR A PERIOD OF 14 YEARS.
 1859- THE ACT MODIFIED AS ACT XV; PATENT MONOPOLIES CALLED
EXCLUSIVE PRIVILEGES (MAKING. SELLING AND USING INVENTIONS IN
INDIA AND AUTHORIZING OTHERS TO DO SO FOR 14 YEARS FROM DATE
OF FILING SPECIFICATION).
 1872- THE PATENTS & DESIGNS PROTECTION ACT.
 1883- THE PROTECTION OF INVENTIONS ACT.
 1888- CONSOLIDATED AS THE INVENTIONS & DESIGNS ACT.
 1911- THE INDIAN PATENTS & DESIGNS ACT.
 1972- THE PATENTS ACT (ACT 39 OF 1970) CAME INTO FORCE ON 20
TH
APRIL
1972.
 1999- ON MARCH 26, 1999 PATENTS (AMENDMENT) ACT, (1999) CAME INTO
FORCE FROM 01-01-1995.
 2002- THE PATENTS (AMENDMENT) ACT 2002 CAME INTO FORCE FROM 2OTH
MAY 2003
 2005- THE PATENTS (AMENDMENT) ACT 2005 EFFECTIVE FROM Ist JANUARY
2005
INTELLECTUAL PROPERTY RIGHTS
BUILDING OF INDIA
Types of Patent
Utility Patent
 Most patents fall into the utility patent category.
Utility patents are subdivided into mechanical,
electrical and chemical categories
 The patent grant allows the patentee exclusive
rights that prevents others from making, using, or
selling the invention for a period of up to 20 years
from the date of application.
 Almost nine out of every ten patents granted fall in
the UTILITY PATENT category.
Design Patent-
 Covers the invention of new original and
ornamental designs for manufactured
products.
 Period of 14 years.
 Protects the way they look
Plant Patent-
 A plant patent is a patent issued for newly
invented strains of asexually reproducing
plants, including cultivated mutants, hybrids.
 Tuber propagated plants or wild
uncultivated plants may not be patented.
 It permits its owner to exclude others from
making, using, or selling, or asexually
reproducing the plant for a period of up to
twenty years from the date of filing of
application.
Procedure for Patenting
• Patent is requested by filing a written application at
the relevant patent office.
• The patent application passes through the following
stages:
1. Patent search study
2. Filing
3. Examination
4. Publication
5. Examination
6. Pre-grant Opposition
7. Grant & Publication
8. Post-grant Opposition
Patent search study
 Assists in evaluating the chances of obtaining a patent
for an invention & claims.
 Many reasons a patent request may be declined, but the
most common reasons are
 there is a prior art
 similar patent is already granted
 the invention is not new
 The patent search study will give information on the
different claims one can file & what the requirements
would be to apply for a patent.
 With this, one can save time & money.
 Patents search study is comprised of 3 sections

1. Patent search – An in depth search by registered
patent attorneys for prior art.
2. Analysis and recommendation- Based on the
characteristics of an invention and findings, the
attorney in charge of a search will present an
analysis and recommendation regarding the
probability of obtaining the patent grant.
3. Patent application proposal – An attorneys will
prepare a proposal offering a patent application
legal services
Filing of patent
 Application for Patent can be filed by-
 True & first inventor,
 Assignee or legal representative of the inventor.
 Every application shall be accompanied by a
provisional or complete specification.
 Filing of a provisional specification allows the
applicant to get an early application date.
 One has to file complete specification within 12
months from the date of filing of the application

 Date of first filing allotted by the Patent Office to an
application
 Date of reference used by the patent to determine the
newness of the invention.

Place of Filing
 Patent Application can be filed at any of the four patent
offices in India. Patent Offices are located at Kolkata,
New Delhi, Chennai and Mumbai.
Priority Date
Examination
 Request for Examination be filed within a period of 48
months from the date of priority or date of filing
 Examination - First Examination Report
 The examiner makes a formal examination by verifying the
propriety and correctness of all documents filed with the
application.
 Verifies the patentability of the application.
 The examiner conducts a prior art search to check if there is
prior art, which anticipates the invention claimed.
 The examiner will give the examination report within 1
month from the date of reference by controller.
 The controller has the power to reject the application, if the
applicant does not comply with his requirements.
Pre-grant Publication
 Patent application will be published on expiry of
eighteen months after the priority date.
 On publication, specification including drawings
and deposits shall be open for public inspection.
Pre-grant Opposition
 Before the grant of patent and after the
publication of application, any person can
make a representation for pre-grant
opposition
 Can be filed within six months from the
date of publication of the application
 No fee for filing representation for pre-
grant opposition
Grant
 If the application satisfies all the requirements of the
patent act, the application is said to be in order for grant.
 Every granted patent shall be given the filing date.
 A granted patent gives the patent holder the exclusive
right to make, use, sell, offer for sale and import the
product or use the process.

 Assignment
 Licenses
Patent is not granted
• Complete application for the invention is not filed
within twelve months from the date of convention
application.

• Nondisclosure or wrongful disclosure of the
biological source.

• Invention is anticipated by traditional knowledge.

Post-grant Opposition/Revocation
of a Patent
Three modes of revocation
1. Central government
2. Controller of Patent office
3. Court

 Filing post-grant opposition is 12 months from the date of
publication of the grant of patent in the official journal of the
patent office
 Wrongful obtainment of the invention by the inventor.
 Publication of the claimed invention before the priority date.
 Sale or Import of the invention before the priority date.
 Public use or display of the invention.
 The invention doesn't satisfy the patentability requirements
Process of Opposition
 The Controller constitutes an Opposition board to deal
with the opposition on receiving a notice.

 The Opposition board decides the issues after giving
reasonable opportunity of hearing to both the parties.

 The Opposition board might invalidate the patent,
require amendments or maintain the status .
A patent can expire
 The patent has lived its full term i.e. the term
specified by the patent act of the country.
Generally it is 20 years from the date of filing.
 The patentee hs failed to pay the renewal fee. A
patent once granted by the Government has to be
maintained by paying annual renewal fee.
 The validity of the patent has been successfully
challenged by an opponent by filing an opposition
either with the patent office or with the courts.
What cannot be patented
(1/3)
 An invention that is frivolous or that claims anything
obviously contrary to well-established natural laws;
 An invention the primary or intended use of which
would be contrary to law or morality or injurious to
public health;
 The mere discovery of a scientific principle or the
formulation of an abstract theory;
 A method of agriculture or horticulture;
 The mere arrangement or rearrangement or duplication
of known devices, each functioning independently of one
another in a known way;
What cannot be patented
(2/3)
 The mere discovery of any new property or new use
for a known substance or of the mere use of a known
process, machine or apparatus unless such known
process results in a new product or employs at least
one new reactant;
 A mathematical or business method or a computer
program or algorithms;
 Topography of integrated circuits;
 An invention which is traditional knowledge or
duplication of known properties of traditionally known
components.

What cannot be patented
(3/3)
 Inventions relating to atomic energy.
 Plants & animals in whole or any part thereof other
than micro-orgs but including seeds, varieties & species
& essentially biological processes for production or
propagation of plants & animals;
 A substance obtained by a mere admixture resulting
only in the aggregation of the properties of the
components thereof or a process for producing such
substance;
 A presentation of information;
Contents of Patent
 Classified into three broad sections

1. Front page
2. Specifications
3. Claims
Front Page
 Patent number
Its presence indicates that this is a granted patent
They are granted in a serial manner by the appropriate patent
office.

 Publication number
Unique identification number with which the invention first came
to public attention.
Typically a patent application is published 18 months after the
date of the original non-provisional application.


 Each patent application is identified by a serial
number followed by a “/”, then three-alphabetical
code to indicate the patent office in which it was
filed, then another “/” & finally the year in the yyyy
format.

 Four patent offices are represented by following
codes DEL – Delhi
MUM – Mumbai
KOL – Kolkata
CHE - Chennai

 Kind codes
The two digit alphanumeric codes provide a brief
snapshot of the history of the patent application with
the patent office.
 Dates
For any granted patent , 4 different kind of dates can
be identified.
 Date of grant
 Date of publication
 Date of filing
 Priority date

 Classification codes
• Alphanumeric codes that indicate the technical field to
which invention is focused.
• Different patent offices have different ways of
classifying, although there have been effort into
integrating the classification system into one
international system recently
Front page should also contain -
 Name of the inventor
 Title of the invention
 Abstract of the invention
 Drawing
 List of citations


 All the information in the front page of
patents its preceded by a numeric code of
INID (Internationally agreed upon Numbers
for Identification of Data) codes , typically
2 digits.
Specifications

 Technical field, background, summary of invention,
detailed description, object of invention and examples
are generally referred to as specification
 Play a important role in describing the invention as it
provide the definition and description of the terms given
in the claims
 It is generally looked at to interpret the invention as
claimed and also to determine the scope of invention.
Claims
 Most important part of patent as they constitute
the boundaries of the “Rights” for the invention
disclosed in the patent
 Heart and soul of a patent as it represent the scope
of the invention.
 They are sequentially numbered
 2 kinds –
1. Independent claims
2. Dependent claims
 Independent claims are generally the broadest in scope
 They provide just the minimum elements necessary that
differentiates the invention over the existing prior art.
 Dependent claims on the other hand depend on one or
more claims.
 The claim upon which a dependent claim depends may
be an independent or a dependent claim.
 May provide additional elements to independent claims.
 When a dependent claim is depended upon more than
one claim then it is referred to as multiple dependent
claim.
Divisional applications
 Used in cases where the parent application
may lack unity of invention
 The parent application describes more than
one invention and the applicant is required
to split the parent into one or more
divisional applications each claiming only a
single invention.
Additional Applications
 a patent in respect of any improvement or
modification of an invention described or disclosed
in the complete specification already applied for or
has a patent.
 should be something more than a mere workshop
improvement and must independently satisfy the
test of invention.
 The major benefit is the exemption of renewal fee
so long as the main patent is renewed.
 A patent of addition lapses with the cessation of
the main patent.
ASSIGNMENT

• Assignment- selling an invention to
commercialize it
• Problems associated with the assignment-


1. Sale price cannot be determined
• Inventors sell of Intellectual property happens
once
• Hence he should recoup all the money in one
transaction
• Since most of the biotechnology inventions are
not fully developed at the sale date, it is
extremely difficult to put monetary value on the
invention
• If price is too high- no one will purchase it
• If price is too low and the invention becomes
commercially useful- inventor losses money
2. Loss of right
 Once the inventor sells the patent, all their
interest in that invention is sold
 Inventor cannot use or even make further
research or modification in his invention
without the permission of the new owner
Licensing
 Hence to overcome all these problems, the invention can
be licensed
 A license is a binding, revocable privilege to use the
IPR, for a fixed no of years, in a fixed territory in
exchange for money or other compensation
 The inventor gives another person the right to use his
invention and commercialize it
 A written document is produced which mention the
obligation of both parties to the transfer transaction.
This document is the license document.
 The license document include information of both the
parties, the invention, initial payment, royalty, etc.
 Most common way to transfer technology
Types of License (1/2)
 Sole License
 a situation wherein only a single person or
entity is given a license to practice the
invention.
 Here the licensee and the patent owner have the
right to use the patented technology.
 Exclusive License
 A situation wherein only a single person or
entity is given a license to practice the
invention.
 Here only licensee has the right to use the
patented technology, which cannot even be
used by the patent owner.
 Non Exclusive license
 A situation wherein several parties are given
license to practice the invention
 All licensees and the patent owner have the
right to use the patented technology
 Cross license
 A situation where two or more organizations
license patents to each other in order to
consolidate respective market positions.
Types of License (1/2)
 The Patent Office,
Intellectual Property Office Building,
CP-2 Sector V, Salt Lake City,Kolkata-700091,
Phone : 23671945, 1946, 1987, FAX-033-2367-1988,
Email:- kolkata-patent@nic.in The Patent Office,
Intellectual Property Office Building,G.S.T. Road,
Guindy, Chennai-600032,
Phone: 044-22502081- 84, FAX: 044-22502066,
Email: chennai-patent@nic.in The Patent Office,
Intellectual Property Office Building,
Plot No. 32, Sector 14,
Dwarka, New Delhi-110075
Phone : 011-28034304, 28034305, 28034306
FAX:011-28034301, 28034302
Email: delhi-patent@nic.in
Patent Office
Boudhik Sampada Bhawan, S.M.Road,
Near Antop Hill Post Office, Antop Hill, MumbaiI - 400 037.
Phone : 24137701, 24141026, 24150381, 24148165, 24171457
FAX : 24130387
EMAIL: mumbai-patent@nic.in
Office Territorial Jurisdiction
Patent Office Branch,
Mumbai
The States of Maharashtra, Gujarat, MadhyaPradesh, Goa and
Chhattisgarh and the Union Territories of Daman and Diu &
Dadra and Nagar Haveli
Patent Office Branch,
Chennai
The States of Andhra Pradesh, Karnataka, Kerala, Tamil
Nadu and the Union Territories of Pondicherry and
Lakshadweep .
Patent Office Branch,
New Delhi
The States of Haryana, Himachal Pradesh,Jammu and
Kashmir, Punjab, Rajasthan, Uttar Pradesh, Uttaranchal,
Delhi and the Union Territory of Chandigarh.
Patent Office,
Kolkata
The rest of India.
Patent Cooperation Treaty
(PCT)
 International Patent Law Treaty
 142 states
 India became a PCT Contracting state on
December 7, 1998
 Facilitates filing of patent applications under a
single umbrella and provides for simplified
procedure for the search and examination of
such applications.
 Allows a resident or national of a PCT member
state to obtain the effect of patent filings in any
or all of the PCT countries and to defer the bulk
of filing costs usually due on filing.
General Agreement on Tariffs
and Trade (GATT)
 Established after World War II in the
wake of other new multilateral
institutions dedicated to international
economic cooperation - notably the
Bretton Woods institutions known as
the World Bank and the International
Monetary Fund.

GATT
 It was negotiated during the UN Conference on
Trade and Employment and was the outcome of
the failure of negotiating governments to create
the International Trade Organization (ITO).
 GATT was formed in 1949 and lasted until 1993,
when it was replaced by the World Trade
Organization in 1995. The original GATT text
(GATT 1947) is still in effect under the WTO
framework, subject to the modifications of GATT
1994.
 8 rounds have been held, the last being at Doha
Uruguay Round - 1986-1994
 Areas such as services, capital, intellectual
property, textiles, and agriculture.
 123 countries took part in the round
 Creation of WTO in 1994
 WTO expanded its scope from traded goods to
trade within the service sector and intellectual
property rights and dispute settlement. More
liberalized International Trade
 WTO officially commenced on January 1, 1995
under the Marrakech Agreement replacing GATT
 WTO has 153 members
WTO five principles
 Non-Discrimination – Most Favored
Nation and National Treatment
 Reciprocity -
 Binding and enforceable commitments
 Transparency - Trade Policy Review
Mechanism
 Safety valves
WTO - Councils
 Council for Trade in Goods
 Council for Trade-Related Aspects of
Intellectual Property Rights
 Council for Trade in Services
 Trade Negotiations Committee
Trade-Related Aspects of
Intellectual Property Rights(TRIPS)
 International agreement administered by
the World Trade Organization that sets
down minimum standards for many forms
of intellectual property regulation as
applied to nationals of other WTO
Members.
 It was negotiated at the end of the
Uruguay Round of the General Agreement
on Tariffs and Trade (GATT) in 1994.
TRIPS
 TRIPS contains requirements that nations' laws must meet for
copyright rights, including the rights of performers, producers
of sound recordings and broadcasting organizations;
geographical indications, including appellations of origin;
industrial designs; integrated circuit layout-designs;
patents; monopolies for the developers of new plant
varieties; trademarks; and undisclosed or confidential
information.
 TRIPS also specifies enforcement procedures, remedies, and
dispute resolution procedures.
 introduced intellectual property law into the international
trading system for the first time and remains the most
comprehensive international agreement on intellectual property
WIPO
 World Intellectual Property Organization
 Established after WIPO Convention in
1967 with a mandate from its Member
States to promote the protection of IP
throughout the world
WIPO-Administered Treaties

IP Protection
 Berne Convention
 Brussels Convention
 Madrid Agreement (Indications of Source)
 Nairobi Treaty
 Paris Convention
 Patent Law Treaty
 Phonograms Convention
 Rome Convention
 Singapore Treaty on the Law of Trademarks
 Trademark Law Treaty
 Washington Treaty
 WCT
 WPPT

WIPO-Administered Treaties
Global Protection
 Budapest Treaty
 Hague Agreement
 Lisbon Agreement
 Madrid Agreement (Marks)
 Madrid Protocol
 Patent Cooperation Treaty

Classifications
 Locarno Agreement
 Nice Agreement
 Strasbourg Agreement
 Vienna Agreement