Monthly Archives: September 2009

Frequently Used Terms in Patenting

  1. WIPO World Intellectual Property Organization

    * WIPO is one of the 16 specialized agencies of United Nations
    * WIPO is non elected body and promotes IP in developing countries
    * The Head Office of WIPO is located at Geneva that was Est. in 1967
    * WIPO was created “to encourage creative activity, to promote the protection of intellectual property throughout the world”
    * WIPO administers 24 international treaties
    * WIPO administers and oversees international intellectual property obligations
    * WIPO has got 185 member states
    * India is a member state of WIPO

    2. Invention, Inventive step, Patentee, Legal representative, PCT and Person Interested

    * “Invention” means a new product or process involving an inventive step and capable of industrial application.
    * “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;
    * “patentee” means the person for the time being entered on the register as the grantee or proprietor of the patent;
    * “patent agent” means a person for the time being registered under this Act as a patent agent
    * “Patent Cooperation Treaty” means the Patent Cooperation Treaty done at Washington on the 19th day of June, 1970 as amended and modified from time to time
    * “person interested” includes a person engaged in, or in promoting, research in the same field as that to which the invention relates;

    3. International treaties concerning IP rights

    * Paris Convention for the Protection of Industrial Property (1883)
    * Patent Cooperation Treaty (PCT) (1970);
    * Budapest Treaty on the International Recognition of the Deposit of microorganisms for the purposes of Patent Procedure (the Budapest Treaty) (1977)
    * Strasbourg Agreement Concerning the International Patent Classification (IPC)(1971)
    * International Convention for the Protection of New Varieties of Plants (UPOV)(1961); and
    * Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPS) (1994)
    * Other international agreements that have IP implications for biotechnology Include: the Convention on Biological Diversity (1992); and
    * The Food and Agriculture Organization (FAO) International Treaty on Plant Genetic Resources (adopted 2001).
    * Berne Convention for the Protection of Literary and Artistic Works (1886) (copyright, including software); and
    * WIPO Copyright Convention (1996) (updating copyright rules for the digital environment).

    4. Budapest Treaty 1977

    * Budapest Treaty is on the International Recognition of the Deposit of microorganisms for the purposes of Patent Procedure (the Budapest Treaty) (1977)
    * It was always a great difficulty to describe the best mode of invention when it comes to disclosing invention involving Microorganisms.
    *
    A patent applicant is supposed to disclose the best mode of invention in the specification of application for a patent. It is difficult to disclose the best mode in a specification without availability of the actual microorganism. An access to microorganisms that are discussed in the specifications always preferable. The Treaty does this by providing for the deposit of a microorganism at a recognized “international depositary authority”.

    5. Conditions of patentability

    A patent is granted for an invention. An invention is defined in section 2(1)(j) as “a new product or process involving an inventive step and capable of industrial application.”

    Therefore, the criteria for an invention to be patentable are – (i) it must be novel; (ii) it must have an inventive step; and (iii) it must be capable of industrial application. Further, the invention should not fall under any of the categories of “Inventions Not Patentable” mentioned under sections (3) and (4) of the Patents Act, 1970.

    6. Novelty of an Invention

    An invention is considered new (novel) if it has not been anticipated by publication in any document any where in the world or used in the country or prior claimed in an application for patent in India or form part of the knowledge, oral or otherwise, available within any local or indigenous community in India or elsewhere before the date of filing of patent application or date of priority, that is, the subject matter has not fallen in the public domain or that it does not form part of the state of the art.

  2. Person Skilled in the Art

    The person skilled in the art is presumed to be an ordinary practitioner aware of what was common general knowledge in the art at the relevant date (average skilled person). He is also be presumed to have had access to everything in the state of the art, in particular the documents cited in the search report, and to have had at his disposal the normal means and capacity for routine work and experimentation. Such person need not possess any inventive capability. It was the presence of such capability in the inventor, which set him apart from the notional skilled person. His attitude is considered to be conservative. He would never go against an established prejudice, nor try to enter unpredictable areas nor take incalculable risks.

    8. Invention which is not Novel

    An invention is not considered to be novel

    1. If it has been anticipated by publication before the date of filing of the application in any of the specifications filed in pursuance of application for patent in India on or after 1st January, 1912.

    2. If it has been anticipated by publication made before the date of filing or the date of priority of the application in any of the documents in any country; or

    2. If it has been claimed in any claim of any other complete specification filed in India, which was filed before the date of application though published after the date of that application.

    9. Effects Of Publication:

    After publication of the application for patent the depository institution will make the biological material (mentioned in the specification) available to the public
    The Patent office will make the specification (complete as well as provisional, if any), and drawings filed in respect of the application available to the public on payment of the prescribed fee as given in the First Schedule.
    The applicant shall have like privileges and rights, as if a patent for the invention had been granted from the date of publication of the application until the date of grant. But he shall not be entitled to institute any proceedings for infringement until the patent has been granted.
    The rights of patentee for applications filed u/s 5(2) before 1st day of January, 2005 will accrue from the date of grant of the patent.

    10. Rights of patentees

    Subject to the other provisions contained in Sec 48 of the Patent act 1970 Act and the conditions specified in section 47, a patent granted under this Act shall confer upon the patentee-

    1. Where the subject matter of the patent is a product, the exclusive right to prevent third parties, who do not have his consent, from the act of making, using, offering for sale, selling or importing for those purposes that product in India

    2. Where the subject matter of the patent is a process, the exclusive right to prevent third parties, who do not have his consent, from the act of using that process, and from the act of using, offering for sale, selling or importing for those purposes the product obtained directly by that process in India.

    11. Formal Examination of Patent Application at Patent Office

    The application for a patent, as filed, including all the relevant documents, payments etc are checked/scrutinized to ensure that the same are filed or submitted in conformity with the provisions of the Patents Act and Rules.[ section 12 (1)(a)]

    Formal scrutiny/checking is carried out in respect of the following documents-

    All relevant forms, request, petitions, assignment deeds, translation etc.

    Payment of fees and other details

    Provisional and /or complete specification

    Abstract

    Drawings (if any)

    Presence of meaningful claim(s) or absence of claims in a complete specification

    Proof of right

    Form 5 (along with complete after provisional or for filing PCT- NP/Convention application)

    Power of Attorney or attested copy of General Power of Attorney (if any)

    Form 3 -information regarding foreign filing u/s 8(1)

    Whenever Form 6 is filed and assignment has taken place from individual to other than individual, difference in fee has to be called for (Rule 7(3))

    Screening Screening is carried out for the following –

    a) Technical fields of invention

    b) Relevance to defence or atomic energy

    c) International and Indian Classification

    d) Correction/completing the abstract, if required.

    c) After scrutiny of the documents, the lacunae, if any, in the application will be communicated to the applicant in FER.

    12.
    Objectives of IP protection
    1. To recognize inventor’s rights
    2. Reward innovation, research and development
    3. Enhance trade and investment
    4. International trade promotion
    5. Encourage industrial development
    6. Imposing IP rights for IP protection through injunctions, damages and compensation

    13. How to Exercise IP Rights

    * Develope a short term and long term strategy of your group/company/corporation
    * Define various objectives and research plans to achieve the objectives
    * Maintain confidentiality of your research work inclding the objectives and research plans
    * Explore partnership opportunities by protecting your work using patents/copyrights/tread secrets
    * Find our partners in the field having experience and technical knowhow to develope collobrative work
    * Have greement and contracts done with partners and clients
    * Maintain a log of your research work from the start
    * Follow starndards such as ISO, GLP, GMP etc.
    * Follow internatinal guidelines to document your research work

    14. Request for examination

    Section 11 Request for examination- A request for examination on Form 18 along with the prescribed fees should be submitted so that the application is taken up for examination.

    In case the applicant or any other interested person does not make a request for examination of the application for a patent within the period as specified under sub-section (1) or sub-section (3), the application shall be treated as withdrawn by the applicant.

    Provided that— (i) the applicant may, at any time after filing the application but before the grant of a patent, withdraw the application by making a request in the prescribed manner; and (ii) in a case where secrecy direction has been issued under section 35, the request for examination may be made within the prescribed period from the date of revocation of the secrecy direction.

    15. Freedom to operate

    FTO is ensuring that the commercial production and marketing of your invention does not infringe the intellectual property rights of other people. It has been observed that a considerable number of inventions are modifications of the present art and require the use of existing technology. An inventor may have a patent for a particular product but he might have to use existing patented technology to commercially exploit the new product. Hence before the commercial use of the product it is necessary to see if one has freedom to operate.

    References- WIPO Study material
    Draft of Manual of Patents published by the Patents office India

Patenting Facts and Myths

Patenting Facts

1. A patent specification must have at least one claim
2. The mere fact that DNA fragments are derived from the same source is not sufficient to meet the requirement for unity of invention.
3. PCT enables centralized publication of International Applications with ISR
4. Patent Amendment Act 1999, came into force retrospectively from 1st Jan 95
5. PCT provides the option of International Preliminary Examination of international application
6. A license is a grant of permission made by the patent owner to a party to exercise any specified rights as agreed.
7. Before you commercialize your patented invention you are supposed to make sure that you have FTO.
8. If an inventor assigns his patent rights to someone else, he no longer owns those rights.
9. An invention which in effect, is traditional knowledge or which is an aggregation or duplication of known properties or traditionally known component or components is not patentable in India.
10. Plants and animals in whole or any part thereof other than microorganisms but including seeds, varieties and species and essentially biological processes for production or propagation of plants and animals is not patentable in India.
11. A request form for filing International Application for Patent should be PCT/RO/101 in triplicate.
12. A mere DNA fragment without indication of a function or specific asserted utility is not a patentable invention.
13. Budapest Treaty (1977) is about the International Recognition of the Deposit of microorganisms for the purposes of Patent Procedure
14. The patent term is calculated from the filing date in line with TRIPS provisions and the term is at least 20 years from the filing date.
15. Once your patent application is filed, then you are free to publish, demonstrate and indeed commercialize your invention
16. The background of an invention in a patent/application document helps to highlight the differences between existing technology and the claimed invention.

Patenting Myths
1. Patent gives an exclusive right therefore patented inventions are never restricted for environmental safety/ public health/ defense related reasons.
2. Documentation of research work and IP protection do not complement each other.
3. The meaning of Assignee and Legal Representative are the terms carrying similar meaning and are alternatively used in IP matters.

Patentability of Lifeforms

1. A mere DNA fragment without indication of a function or specific asserted utility is not a patentable invention.
2. A DNA fragment, of which specific utility, e.g. use as a probe to diagnose a specific disease, is disclosed, is a patentable invention as long as there is no other reasons for rejection.
3. A DNA fragment showing no unexpected effect, obtained by conventional method, which is assumed to be part of a certain structural gene based on its high homology with a known DNA encoding protein with a known function, is not a patentable invention. (EPO, JPO). The above-mentioned DNA fragment is unpatentable if the specification fails to indicate an asserted utility. (USPTO)
4. The mere fact that DNA fragments are derived from the same source is not sufficient to meet the requirement for unity of invention.

Types of Patent Applications in India

• Ordinary Application
• Convention Application
• PCT International Application
• PCT National Phase Application
• Application for Patent of Addition
• Divisional Application

Ordinary Application- An application for patent filed in the Patent Office without claiming any priority of application made in a convention country or without any reference to any other application under process in the office is called an ordinary application. Such an application can be filed by an inventor himself (as an applicant ) or by a person to whom the invention is assigned by the inventor (an assignee is the applicant), without claiming any priority of application made in a convention country or without referring to any other application being processed in the Patent Office. The applicant can be either from India or from abroad.

Convention Application- When an applicant files the application for a patent, claiming a priority date based on the same or substantially similar application filed in one or more of the convention countries, it is called a convention application. In order to get convention status, an applicant should file the application in the Indian Patent Office within twelve months from the date of first filing of a similar application in the convention country. The priority document [Section 138 (1)] and its verified English translation (if required) [Section 138 (2)] also should be submitted by the applicant. A convention application shall be accompanied by a complete specification.

PCT International and National Applications -PCT is an international filing system for patents in which the applicant gets an international filing date in all the designated countries, conferring the late entry (up to 31 months) to the national offices without affecting the priority date. This is a simple and economical procedure for the applicants seeking protection for their inventions in many countries.
Indian Patent Office is a Receiving Office for international applications by nationals or residents of India (see rules 17 to 23). An international application shall be filed with the appropriate office under rule 4 in triplicate either in English or in Hindi language [Rule 19(1)].

An international application [Section 2 (1)(ia)], made according to the Patent Cooperation Treaty [Section 2 (1)(oa)], designating India can enter national phase within 31 months from the priority date of international application or date of filing of international application whichever is earlier. Such an application filed before the Controller in the Indian Patent Office claiming the priority and international filing date is called PCT national phase application. Applicant can enter national phase with a request made in Form 1. The title, description, drawings, abstract and claims filed with the application shall be taken as the complete specification for the purposes of filing in India (Section 10 (4A)). The filing date of the application shall be the international filing date accorded under the Patent Cooperation Treaty [Section 7(1)(B)].

Application of Addition- When an applicant feels that he has come across an invention which is a slight modification of the invention for which he has already applied for/ or has patent, the applicant can go for patent of addition since the invention does not involve a substantial inventive step.

It is also possible to convert an independent patent to a patent of addition at a later date if the subject matter was an improvement in or modification to a main invention for which he holds a patent. There is no need to pay separate renewal fee for the patent of addition during the term of the main patent. A patent of addition expires along with the main patent unless it is made independent according to the provisions in Section 54. However a patent of addition will not be granted unless the date filing of application was the same or later than the date of filing of the complete specification in respect of the main invention. It should be noted that a patent of addition will not be granted before granting of the patent for the main invention.

Provisional Application/Specification- When the applicant finds that his invention has reached a presentable form but not the final shape, he may prepare a disclosure of the invention in the form of a written description and submit it to patent office as a provisional specification which describes the invention.
A provisional specification helps to establish the priority of the applicant over any other person who is likely to file an application for patent in respect of the same invention being developed concurrently. The applicant also gets twelve months time to fully develop the invention and ascertain its market potential without the fear of losing the priority right over the invention. Immediately on receiving the provisional specification the patent office accords a filing date for the application and provides a period up to twelve months for filing the complete specification, during which the applicant can fully develop his invention by himself or with the help of others who are interested in the economic value of the patent. No extension of time is permissible for filing complete specification.

Divisional application (S. 16)- When the application made by an applicant claims more than one invention, the applicant on his own request or to meet the official objection raised by the controller may divide the application and file two or more applications as applicable for each of the inventions. This type of application is divided out of the parent one and is termed as divisional application. The priority date for all the divisional applications will be samse as that claimed by the parent application. It is termed as Ante Dating. The complete specification of the divisional application should not include any matter not in the substance disclosed int eh complete specification of the first application. The reference of the parent application should be made in the body of the specification.

Full Forms of Important Terms in IP

CBD- Convention of BioDiversity
IPR- Intellectual property rights
PO- Patent Office
IPO- Indian Patent Office
EPO- European Patent Office
IB- International Bereau
FTO- Freedom to operate
FER- First Examination Report
IPER- International Preliminary Examination Report
IPC- International Patent Classification
UPCL- US patent classification
ISA- International Searching Authority
FER- First Examination Report
TRIPS- Agreement on Trade-Related Aspects of Intellectual Property Rights
JPO- Japanese Patent Office
PCT- Patent Cooperation Treaty
ISR- International Search Report