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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

Methods of Disclosing an Invention

There are various strategies of disclosing an invention. It is, understood, here that the invention is disclosed to a reliable patent attorney or patent agent. According to a first strategy the patent attorney gives a disclosure template form to the inventor and asks the inventor to disclose the invention by filling the fields in the template.

It has been observed that the disclosure template is not sufficient to disclose the invention completely. The template generally includes fields like the name, title, novel features, description of the invention, diagrams if any, how did the invention click in my mind, any incidence, need of the invention. Other fields like signatures of the witnesses and inventor are also included in the template. However, this space in the template form is not enough to describe the invention. The inventors try to furnish the information in the limited space in the template unless he is directed to give more details. The another aspect is that the disclosure template is very general and not invention specific. So there are chances of missing novel features of the invention in this strategy.

According to the second strategy, the inventor discloses the invention by producing a prototype or by disclosing the actual device. There are cases where the inventors have disclosed their invention with a number of photographs showing various views of the invention. The patent attorney and his technical experts such as engineers has to understand the invention using the prototype, find out various technologies involved in the manufacture, use, application and method of use in the best mode of the invention. A lot of cooperation of the inventor is needed in the second strategy.

Good inventors maintain a log book of development of the invention. The log book acts as an evidence to prove “who invented first?”. The log book also helps to describe the specification of the invention.

There is a need of developing a disclosure strategy for efficiently understanding the invention with the disclosure given by the inventors.