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.
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
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.
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