By Dr. Kalyan Chakravarthy Kankanala. kalyan@brainleague.com Blog: www.sinapseblog.com Course Materials: www.onlineipcourses.

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Analyzing Patentability of Inventions

Patentability requirements
Patentable subject matter Industrial Applicability Novelty Inventive Step Specification

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INVENTIONS

Kalyan’s Patent Filter Model
Subject Matter Usefulness Novelty Non-obviousness Specification

PATENTS
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Product or Process - Section 2(1)(j) Computer Program Genetically modified pig Business method Massage technique
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Patentable Subject Matter

Exclusions
Section 3(d) New form Efficacy New property or use Mere use of known process New product New reactant

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Exclusions
Explanation: Salts, Esters, Ethers, Polymorphs, Metabolites, Pure forms, Particle size, Isomers, Mixture of isomers, Complexes, Combinations and other Derivatives of a known substance considered same substance Efficacy Novartis case

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Exclusions
Plants, Animals and Parts (Section 3(j)) Computer Programs Per Se (Section 3(k) Medical Methods (Section 3(i)) Traditional Knowledge (Section 3(p))

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Example
Ram, a researcher at IISc, isolates the gene responsible for milk production in cows. He modifies the gene and inserts it into a cow and creates a genetically modified cow that produces higher quantities of milk. Ram approaches you for advise on patentability. Is his invention patentable subject matter?
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Example
Vishnu develops a computer program for playing movies in all formats. His program is very special because of its small size and suitability for installation on symbion, android and other mobile operating systems. Is this invention patentable subject matter?

© Brain League IP Service -2007

Example
Manu invents a process of massaging that includes the following steps: Use of a combination of kerala, thai and european massage techniques; Playing specific music for each technique to enhance relaxation; and Application of an ayurvedic paste with gentle massage. The purpose of the massage is to de-stress and relax. Is it patentable subject matter?

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Example
Banana Nair inherits traditional knowledge with respect to ayurvedic formulations for improving immunity and promoting healthy living from his ancestors. After researching on the formulations, he isolates active ingredients from three of the formulations and prepares tablets for enhancing immunity. Is his invention patentable subject matter?
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Industrial Applicability
Section 2(1)(ac) - Capable of Industrial Application Make Use Repeat Industry
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Novelty
Section 2(1)(l) - New Invention Prior Publication Public Knowledge Public Use On Sale Public Display Public Working Single prior art reference Inherent anticipation
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Inventive Step
Section 2(1)(ja) Technical Advance or Economic Significance and Not obvious to a person skilled in the Art.
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Secondary Indicia
Commercial Success Copying Praise by expert Unexpected results Long felt need

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Example
Invention Chair with Wheels Prior Art Chairs Tables with wheels
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Specification
Section 10 Written Description Enablement Best Mode Claims Object: Notice and Dissemination
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Example
Stent coated with Taxol Prior Art Stent Taxol and other Anti-cancer agents

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Patentability Report
Invention Details Facts Short opinion Patentability Analysis Subject Matter Industrial Applicability Novelty Inventive Step Opinion on Patentability Recommendations Disclaimer
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References Novelty Cases Lakhpat Rai and Ors. Vs. Sri Kishan Das and Ors., MANU/UP/0155/1918. Monsanto Company Vs. Coramandal Indag Products (P) Ltd., MANU/SC/0317/1986 Laxmi Dutt Roop Chand Vs. Nankau and Ors., MANU/UP/0012/1964. Inventive Step Cases Bishwanath Prasad Radhey Shyam Vs. Hindustan Metal Industries, AIR 1982 SC 1444. Bilcare Limited Vs. Amartara Private Limited, MANU/DE/0889/2007. Dhanpat Seth and Ors. Vs. Nil Kamal Plastic Crates Ltd., AIR 2008 HP 23 Novartis AG Vs. Union of India (UOI), MANU/IC/0034/2009.

© Brain League IP Service -2007

Thank you Reading Materials Chapter 2, Indian Patent Law and Practice, Dr. Kalyan Kankanala, Arun Narasani and Vinita Radhakrishnan, OUP India Publication. www.onlineipcourses.com www.sinapseblog.com

© Brain League IP Service -2007

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