Presentation on IP knowing to owning: Identification; Protection Cost; Time; Remarks Management; commercialisation;

What is an invention: Definition: An invention means a new product or process involving an inventive step and capable of industrial application (S. 2(1)(j)); the criteria for an invention to be patentable are, (1) An invention must be novel (2) has an inventive step and (3) is capable of industrial application New solution to a technical problem and includes any inventions, whether processes or products, in all areas of technology. Example of inventions: band - aid, electric iron, safety pin, ball point pen, telephone, etc. All invention may not patented;

Why Protect Invention? DefensiveProtect creative assets Counterattack Reduce risk of innovation Offensive - Exclude others frommaking, using, selling, offering for sale or importing the patented invention and can also exclude commercialization. This exclusion is only applicable in the countries invention is protected by a patent; MarketGenerate income Product and service distinctions Strategic funds, partners, customers, employees Increase valuation where the

Statutory exclusions from patentability: Frivolous/contrary natural laws; Contrary order public or morality; Prejudice to human or animal or plant life or health or environment; Abstract theory or scientific principle; Mere new property or new use; Mere admixture; Mere arrangement or rearrangement; Method of agriculture or horticulture; Process for treatment or prophylaxis of human beings or animals; Seeds, varieties or species of plants or animals; Computer program per se; Mathematical method, business method or algorithm; Aesthetic creation; Method of playing games; Presentation of information; Topography of integrated circuits; Traditional knowledge; Inventions relating to atomic energy;

Questionnaire for Identification of an invention: What type of invention you wish to patent? Is it a product/process? At what stage is the invention? Is it at the concept stage? Is it complete? Has it been tested? Has there been any disclosure of the invention? If so, how, when and where? Is the invention an improvement of an existing product/process? Please supply information about the field to which the invention relates. Have you carried out any patent/literature search for prior art? If so, please give details. What is the main feature of the invention? How does it solve problems of the prior art? Please enumerate the advantages of the present technology over prior art. For preparing the specification, please send write up of the invention and complete set of drawings if any. If it is a process patent, please provide a flow chart.

PROTECTION:

Who may apply for patent? Where one may file an Application for Patent? Filing requirements for patent Follow-up and the prosecution; Maintenance by paying annuity

Minimum documents required for patent filing in India: Form 1 - Application for the grant of patent; Form 2 - Provisional or Complete Specification; Every CS shall- Description of invention and a title sufficiently indicating the subject matter, Fully and particularly describe the invention, Disclose the best method of performing the invention, Claim(s), Abstract, Drawings if any, Model or sample of anything illustrating the invention as the Controller may require etc; Form 3 - Statement and undertaking by the applicant; Form 5 - Declaration as to inventorship; Form 26 - Authorization of patent agent; Priority document, if it is a convention application; Proof of right; Prescribed official fees

Prescribed official fees (INR) Title Form Natural person Other

Application for Grant of Patent

1000

4000

Provisional/Complete Specification

No fee*

No fee*

Prescribed official fees:

3 Statement and Undertaking Under Section 8 No fee No fee

Declaration as to Inventorship

No fee

No fee

Request for Publication (optional)

2500

10000

18

Request for Examination of Application for Patent

2500

10000

Patent Grant Procedure

Filing of patent application Early Publication Publication after 18 months
Pre Grant Opposition / Representation by any person.

Request for examination Examination: Grant or Refusal Publication of Grant of patent Post Grant Opposition to grant of patent (Constitution of Opposition Board) Decision By Controller

HOW TO RESPOND TO AN OFFICIAL ACTION Law and Practice: Objections (a) Technical (b) Formal Technical objections -Sections of the Indian Patents Act and Rules.  - wordings of the claims.  - citations under X and Y category.

Formal objections     - Formal documents - Drawings - Assignment -Power of Attorney - Petitions

FIRST EXAMINATION REPORT [BIOTECHNOLOGY]

One or more official actions (OA) can be raised. File a response ASAP. Do not wait for the deadline. OA can be issued even on the last date. If Examiner maintains his objections or is adamant even proximate to final date, ask for a formal hearing under Section 14, at least ten days in advance, no official fee payable.  If adverse order received after hearing file Review Petition Section 77 and Rule 130 within one month (Form 24).  Appeal before the board (IPAB).    

ABANDONMENT OF PATENTS

A patent can be abandoned due to the following reasons: If a complete specification is not filed within a year; If a request for examination is not filed within four years; If all the objections are not met within a year after the issue of FER to an applicant; If a hearing is unattended by an applicant in case of opposition. If the Controller is not informed about the working of an invention as and when required. Defect in the post-grant opposition; The voluntary surrender of the Application or the patent; Non-renewal of a granted patent