Dr. Ravi Dhar & Nikhil Dhar on Intellectual Property. Part I- Understanding Patents in Detail

Dr. Ravi Dhar & Nikhil Dhar on
Intellectual Property
Part-I: Patents
(rdhar_in@yahoo.com)
(nikhil.dhar@skyquestt.com)
April 19, 2014 RD_ND_Patents_2014 1

ACKNOWLEDGEMENTS
DBT/ BIRAC/ NII/ US Embassy/ IPO/ USPTO/ EPO/ WIPO/ JPO/
Boston University,USA/ NIH, USA/ MIHR, UK/ Various websites & Journals/
Skyquestt Consulting Pvt. Limited, India/Colleagues
&
(Indian Patent Act: http://www.patentoffice.nic.in/ipr/patent/patAct1970-3-
99.html)

Intellectual Property
• Patents
• Trademarks
• Copyrights
• Protection of Plant Varieties
• Geographical Indicators

Sections
• Definition?
• Specifics of a Patent
• Components of writing a Patent
• What is Novelty?
• What is Non-obviousness?
• What is Utility?
• What is Obviousness?
• What are Claims


Terms
PCT
National Phase

Patents (General)

What is a Patent?
Legal protection on an act of Intellect (i.e.,
inventions like drugs, vaccines, bio-markers,
medical devices, an industrial designs etc.) that
confers the creator of an invention the sole
right to make, use and sell invention for a set
period of time”
Thus it restricts any other person to repeat the effort
unnecessarily.
Innovations may be tangible or intangible
April 19, 2014
RD_ND_Patents_2014 7

Legal Protection of Inventions & Business!!
Scientific Investigations
Innovations (Legal protection=Patent)
Product
Industry/ Business
Service to people
Royalties
Pump back some money for investigations
April 19, 2014
Reward

Famous Quotes about Innovations
 “No one asks you to throw Mozart out of the window. Keep Mozart. Cherish
him. Keep Moses too, and Buddha and Lao Tzu and Christ. Keep them in your
heart. But make room for the others, the coming ones, the ones who are
already scratching on the window-panes”
- Henry Miller (1891-1980) American author.
 "I never perfected an invention that I did not think about in terms of the service
it might give others... I find out what the world needs, then I proceed to invent."
- Thomas Edison
 "We were young, but we had good advice and good ideas and lots of
enthusiasm"
- Bill Gates, founder of Microsoft Corporation
 "Our success has really been based on partnerships from the very beginning.“
- Bill Gates
(Accomodation + Need + Enthusiasm + Partnerships)

Characteristics of a Patent
Novelty : Something new & non-existent in prior art
(previously existing knowledge)
Non-obvious/
Inventive Step : An idea is non-obvious if it would not be discovered by one of
``ordinary skill in the art'' when the idea was needed
Utility : Usefulness of an invention

Story of Axel Patent
Revenue generated US $ 700 million

Functional Definition
“A grant made by government that confers the creator
of an invention the sole right to make, use and sell
invention for a set period of time”
Thus it restricts any other person to repeat the effort
unnecessarily.
Innovations may be tangible or intangible
April 19, 2014

“Patent protection does not result in
owning the invention by the
inventor but protects, others from
repeating the effort which has
already been made”
“ Patent System Adds fuel to interest to the fire of the genius” -
Abraham Lincoln

Patents
 Patents are exclusive property rights for intangible
creations of the human mind
 Patents exist only in laws of sovereign states
 Patents can be enforced only to the extend that
application has been made
 Patents are granted covering the territory of an
individual state
 Patent rights are limited in duration

This could be boring; no variety

Patent : An Open Letter Document
 Derived from Latin litterae patentes
 An official document by which certain privileges, rights, ranks
or titles were conferred or publicly announced
 They carried the seal of sovereign grantor on the inside, rather
than being closed by a seal on the exterior
 The openness was in no way connected with disclosure of an
Invention – this happened much later in 1331 onwards for
skilled artisans from abroad.

Why Patent ?
 Avoid Repetitions
 Monetary Compulsion
 To Inflate Ego
 Protect interest of country

Reasons for Patenting (contd.)
 Opportunity to license or sell the invention
 Strong market position
 Increase in negotiating power
 Exclusive rights
 Higher returns on investments
 Positive image for your enterprise

Types of Patents
Invention
any new technical solution relating to a product, a process or
improvement thereof.
Utility Model
any new technical solution relating to the shape, the structure,
or their combination, of a product, which is fit for practical use.
Design
any new design of the shape, the pattern or their combination,
or the combination of the color with shape or pattern, of a
product, which creates an aesthetic feeling and is fit for
industrial application.

•Provisional Patent Application
•Non-provisional (Utility) Patent Application
Design Patent Application
•Plant Patent Application
•International Application

Characteristics of Patents
Novelty
Inventive Step (=non-obviousness)
Industrial Application (=utility)
A patent has a life of 20 years
It has to be renewed periodically by payment of money

Characteristics of Patents (expand)
(Hypothetical)
Novelty : A Flying Car/ A Spray Formulation of Anti-biotic
Inventive Step : No visible blades used for flying/ Absorption of
Antibiotic against rotavirus through skin
Utility : For rapid movement in cities/ Curing Flu

Patent Related Terminology
 Novelty
 Prior Art
 Non-Obviousness (inventive step)
 Utility
 Claims & Disclosure
 Search
 Fee & Annuity
 Examination Report
 Gazette
 Patent document
(Important: go through http://www.stn-international.de/training_center/patents/pat_term.pdf)

Patent Drafting
• India

Components in Drafting a Patent
 Field of Invention
 Background of Invention
 Object of Invention/ (Problem-Solution Approach)
 Summary of Invention
 Detailed Description
 Description of Drawings
 Experimental Procedures
 Results
 Claims
 Abstract
(RD/NII/2008)

Expansion of the components
 Field of Invention = Title
 Background of Invention** = Why, how, what is known
 Object of Invention = e.g., To develop a efficient pain killer
 Summary of Invention = Summary
 Detailed Description = Expand
 Description of Drawings = On separate sheets
 Experimental Procedures = Detailed one
 Results = As you discuss in a publication;
mention utility
 Claims = Leave this for Attorney
 Abstract = Brief Summary
(**Object of Invention as in Indian patents = Disclosure as in USA)
(RD/NII/2008)

Patents (contd.)
Novelty : Something new & non-existent in prior art
(previously existing knowledge)
Non-obvious/
Inventive Step : An idea is non-obvious if it would not be discovered by one of
``ordinary skill in the art'' when the idea was needed
Utility : Usefulness of an invention

Definitions:
Novelty : matter described in application has not been
published or discussed before in India or abroad
Inventive Step: the invention is not obvious to a person
skilled in Art in the light of prior publication/knowledge/
document
Utility/ Industrial Application: it should be used in industry

PRIOR ART

What can be Prior Art?
 Any Publication related to invention
 Any material available to public
 Oral Disclosure
 Hence Filing date of Patent/ Invention is essential
 Enablement: A document must enable an average skilled person to
practice the invention claimed

Prior Art Issues (Take Precautions!!!)
 Do not discuss your scientific findings having a technology
component/ invention in a public meeting, in a
pharmaceutical company meet, in press or other electronic
media
 In-house presentations within the scientific organization/
NII/THSTI/RCB or places which gives funding e.g., DBT is o.k.
 Technology part should be discussed in a non-disclosure
manner/format

Prior Art Issues
 Breadth of Claims
 Nature of Invention
 State of Prior Art
 Level of Skill in Art
 Level of Predictability
 Amount of Direction/Guidance in Specification
 Presence/Absence of Working examples
 Quantity of Experimentation Needed or Expected

Prior Art

Why search Patent information?
 Avoid duplication of R&D work
 Identify specific new ideas and technical solutions, products or
processes
 Identify the state-of-the-art in a specific technological field in order to
be aware of the latest development
 Assess and evaluate specific technology and to identify possible
licensors
 Identify alternative technology and its sources
 Locate of sources of know-how in a specific field of technology or in a
given country
 Improvement of an existing product or process
 Development of new technical solutions, products or processes
 Identify existing or prospective industrial property rights (validity,
ownership, ...), particularly to avoid infringement actions
 Assess novelty and patentability of own developments with a view of
applying for a domestic or foreign industrial property right
 Monitor activities of competitors both within the country and abroad
 Identify a market niche or to discover new trends in technology or
product development at an early stage.

DIFFERENT TYPES
OF
PATENT SEARCHES
April 19, 2014 39RD_ND_Patents_2014

1. What is the patent search?
2. Kinds of patent search
3. Exercises
4. Key Concepts in searching
• What do we search
• The process of patent search
5. Creating & Refining Search Queries
6. Databases to retrieve the Technology Information
• Patent database
• Non-Patent Databases
7. How to use patent databases
8. Exercise

What is Patent Search
 To retrieve information to answer specific questions
 To search and analyze relevant patents in product development step or
 Prior to patent application process to make sure the patentability of invention
To get current technology information and future trend of specific technology
area

Kinds of Patent
Search
Patentability
Search
Freedom-To-
Operate Search
Validity/Invalidity
search
State-of-the Art
search

• Is a given invention (claimed in a patent application) patentable?
Patentability Search
• Do patent rights exist on which a given product risks infringing?
Freedom-To-Operate Search
• Is a given patent valid?
Validity/Invalidity Search
• Which technologies exist in a given field of technology?
• Who is active in a given field of technology?
State-of-the Art Search

Patentability Search/Novelty Search
1. Done to identify patents and non-patent literature
2. Recommended to be done before writing and
filing the patent specification, and therefore,
3. Sometimes called a pre-application search

A clearance search which concentrates on
uncovering enforceable patents that may act
as “roadblocks” to commercialization of a
product or service
Uses
Guide product design decisions.
Identify patents that may need to be licensed
Freedom-To-Operate Search (FTO)

Validity/Invalidity Search
1. Search is done to invalid some claims of a particular
patent
2. The search can provide some prior art references that
disclose claims that are infringed by the subject
disclosure
1. Determine the enforceability of patents owned by you
2. Prepare an opposition/invalidity procedure against
others’ patents
3. Prepare a defence against lawsuits claiming
infringement of others’ patents

State-of-the-Art Search
1. Search is executed in order to determine existing solutions
and potential competitors within a given technological field
2. The search includes not only patent documents but also
non patent literature
1. Plan R&D activities more efficiently
2. Decide whether to enter a market
3. Determine which areas are not sufficiently covered by
existing players

Concepts in Searching
What we
search
Any Relevant
Information
In any type and
part of
document
From
any place
From
any time period
Technology
Information
Patent
Scientific and
Technical
information

 Scholarly publications:
• Handbooks, textbooks, encyclopaedias, journals, dissertations,
conference proceedings, technical reports
 Industry/trade publications:
• Industry reviews, disclosure publications
 Newspapers
 Websites
•Technology blogs, researchers’ websites
Scientific and technical information

Process of Patent Search
Purpose of
search
Scope of search
Data
Extraction
Selection of
keywords
Preparation of
search queries
Searching
and
Reviewing

Constructing a keyword search
What is known about the invention?
 Problems to be solved
 Solution proposed for this problem
• Features of the solution
• Functions of the solution

Creating and Refining Search Queries
1. Truncation or Wildcard operators
These type of operators stand for an unspecified number of characters in a queries
Wildcard Meaning Use in Patent
collections
Example
? (Question
Mark)
Represent to exactly
one character
Left, right, and
internal use
supported
“t?re” will pick up
“tyre” and “tire”)
* (Asterisk) Represent to unlimited
number of characters
Left and/or right,
internal
“File*” will pick
up file or files
etc.

2. Proximity operators
Proximity operators search:
• Based on the distance by number of terms separating two keywords, and
• Also find words in the same paragraph
Operators Meaning Example
SAME Terms must be in the same paragraph, in
any order
ADJ Terms should be next to each other and in
order specified
NEAR Terms should be next to each other and in
any order

3. Boolean Operators
Major Boolean operators are AND, NOT, and OR which can be used in all collections
Operators Meaning Example
AND Two term must exist
OR Any one term or two terms
must exist
NOT A term following “NOT” must
be excluded

Databases to retrieve the Technology information
Free Patent databases
US Patent and TradeMark Office (USPTO)
URL: www.uspto.gov
Espacenet
URL: www.ep.espacenet.com
WIPO (World Intellectual Property Organization)
URL: http://patentscope.wipo.int/search/en/search.jsf
Patent Lens
URL: http://www.patentlens.net/patentlens/quick.html
Freepatents online
URL: www.freepatentsonline.com

For Chemical structure searches
• PubChem
• ChemSpider
For Sequence search
• Patent Lens
• PubMed

Paid Patent Databases
• Thomson Innovation
URL: https://www.thomsoninnovation.com/login
• Questel Orbit
URL: www.orbit.com
• STN
URL: http://www.stn-international.de/index.php?id=123

Non-Patent Databases
Google scholar
Scirus
DeLCON

Obviousness

Obviousness
• Obviousness, means that “a person having ordinary skill
in the art” would not know how to solve the problem at
which the invention is directed by using exactly the
same mechanism.
• The obviousness standard prevents the patenting of
relatively insignificant differences between the
invention and the prior art
• The invention must provide one or more new and
unexpected (surprising) results

Obviousness (contd)
• Prior art can be combined in an obviousness
determination, that is, more than one reference can be
cited by the examiner as showing different features of
the invention which, taken together, render the
invention obvious
• Obviousness is inherently a subjective determination,
as the examiner cannot be, or know the mind of, the
hypothetical “one skilled in the art.”

Non-obvious to Whom?
• A patent will NOT be issued if a person having ordinary skill in
the field of the invention would consider the invention obvious
at the time of creation
• The law considers a person having ordinary skill in the art to be
a worker in the field of the invention who:
– Has ordinary skill
– Is totally knowledgeable about all the prior art in his or her
field
• Pure Fantasy, but no other realistic way to determine non-
obviousness
– The PTO creates a hypothetical person and tries to weigh
the obviousness of the invention against the knowledge this
hypothetical person would possess

Examples of Obviousness**
• Non-obvious: Slight Physical Changes – Dramatic Result
– Sometimes, a very slight change in chemical entity, or shape, slope,
size, material can produce a patentable invention that operates
entirely differently and produces totally unexpected results (e.g.,
hCG + M.w as anti-cancer vaccine??)
• Non-obvious: New Use Inventions
– Do not involve any physical change to old invention
– Must be different use of known product or process and produce new,
unexpected results ( e.g., aspirin which is a pain killer now used as
anti-diabetic??)
• Obvious: Different Element, Similar Function
– Courts have held that substituting a different, but similarly
functioning, element for one of the elements in a known
combination creates a novel invention but an obvious one.

“If we posed the problem to 100 people skilled in the
art, would all 100 have to come up with the solution
that appears in the patent? Would 90 be enough? 50?
10? 1? More complex --- and quite germane (=related)
to what I regard as a central problem of how patents
are granted and enforced --- is the question of what
happens if the 100 people come up with 10 or 100
different solutions, all or most of which are at least as
good as the patented idea, and yet few, if any are
exactly that idea”.
How obvious is ``obvious''?

Obviousness
35 U.S.C. § 103 (a)
“A patent may not be obtained though the invention is not
identically disclosed or described as set forth in section 102 of
this title, if the differences between the subject matter
sought to be patented and the prior art are such that
the subject matter as a whole would have been obvious at
the time the invention was made to a person having
ordinary skill in the art to which the said subject matter
pertains”

Obviousness
Please see the following articles in Nature:-
http://www.nature.com/nbt/journal/v27/n2/pdf/nbt0209-117.pdf
http://www.cafc.uscourts.gov/opinions/o8-1282.pdf

Non-obviousness : The Relevant Prior Art
Two classes of Prior Art for Non-obviousness
•Common general knowledge
•Enhanced knowledge
•Hidden or imputed knowledge
•Prior application

Issues on Obviousness
[Nature September 2009 “Obvious to whom?
Issue of non-coated tablet]
The approach consists in:
identifying the closest prior art, the most relevant prior art;
determining the objective technical problem, that is,
determining, in the view of the closest prior art, the technical
problem which the claimed invention addresses and
successfully solves; and
examining whether or not the claimed solution to the objective
technical problem is obvious for the skilled person in view of
the state of the art in general.

CLAIMS

Claims
Claims are the parts of a patent which define the
boundaries (2,3,4) of patent protection
Patent claims are the legal basis for patent
protection
They form a protective boundary line around your
patent that lets others know when they are infringing
on your rights
The limits of this line are defined by the words and
phrasing of your claims
1
3
4
2

Claims
(*Pwil-2 Protein widely expressed in tumors)
*

Claims
Scope of claim:
Each claim should have only one meaning which can be either
broad or narrow, but not both at the same time.
In general a narrow claim specifies more details than a broader
claim.
Having many claims, where each one is a different scope allows
you to have legal title to several aspects of your invention.

Claims

Characteristics of Claims
Be Clear
Your claim must be clear so that you do not cause the reader to
speculate about the claim. If you find yourself using words such as
"thin", "strong", "a major part", "such as", "when required", then you
are probably not being clear enough. These words force the reader
to make a subjective judgment, not an objective observation.
Be Complete
Each claim should be complete, so that it covers the inventive
feature and enough elements around it to put the invention in the
proper context.
Be Supported
The claims have to be supported by the description. This means that
all the characteristics of your invention that form part of the claims
must be fully explained in the description. In addition, any terms you
use in the claims must be either found in the description or clearly
inferred from the description.

Structure of Claims
(1) A claim is a single sentence composed of three parts:-
 the introductory phrase
 the body of the claim
 and the link that joins the two
The introductory phrase identifies the category of the invention and
sometimes the purpose for example, a machine for waxing paper, or a
drug composition.
(2) The body of the claim is the specific legal description of the exact
invention which is being protected.
The linking consists of words and phrases such as:
which comprises
including
consisting of
consisting essentially of
Note that the linking word or phrase describes how the body of the claim relates to the
introductory phrase. The linking words are also important in assessing the scope of the claim
as they can be restrictive or permissive in nature.
Example, "A drug injecting device" is the introductory phrase, "comprising" is
the linking word, and the rest of the claim is the body.

Patent Search Exercises:
Aids/ Tutorials
• http://www.wipo.int/edocs/mdocs/sme/en/wipo_ip
_bis_ge_03/wipo_ip_bis_ge_03_15-annex1.pdf
• http://www.summaweb.com/enginlib/

Classification
WIPO International Patent Classification has eight sections:
• SECTION A – HUMAN NECESSITIES
• SECTION B – PERFORMING OPERATIONS; TRANSPORTING
• SECTION C – CHEMISTRY; METALLURGY
• SECTION D – TEXTILES; PAPER
• SECTION E – FIXED CONSTRUCTIONS
• SECTION F – MECHANICAL ENGINEERING; LIGHTING; HEATING;
WEAPONS; BLASTING
• SECTION G – PHYSICS
• SECTION H – ELECTRICITY

Patent Search/Prior Art Search

Patent Search Strategy

Free On-line Patent Databases

Charged on-line databases

General Search for Beginners

Advanced Search

Search Results

Clustering

Patent Families
Each patent issuing authority/country may have
different regulations for the same patent filed
elsewhere
A group of patent equivalents make up a patent
family
Members of closely related patent family have
common priority number & date
The online database will have a single record only
(http://www.stn-international.de/training_center/ patents/patentfamily.pdf)

“Basic Patent”
The first family member identified for abstracting &
indexing into database
It has no legal meaning
The basic for one-database producer may not be basic
for another producer

Patent Family & Timeline
US
Application
PRIORITY
JP
Application
Patent Family
GB
Application
GB
Granted Patent
US
Application
(Pre-grant)
US
Granted
Patent
JP
Application
GB
Application
0 ??1812
Priority
filing
Additional
filings
Published applications Published granted patents
RD/BIRAC/2012April 19, 2014 RD_ND_Patents_2014 109

Patent Family- (contd.)
Complexity arises due to:-
a) Divisional applications: if results are too broad for
the patent, and it is split
into one or more to claim
different inventions
b) Continuation : results from second or subsequent
application being filed while the
original one is pending
c) Continuation-in-part : a result of second or subsequent
application being filed, which
includes new material, while the
original is pending

Terminology
Application
A document consisting of the specification of the invention and
an oath in which the inventor declares that he believes himself
to be the original and first inventor of the subject matter in
the application
Claims
Brief descriptions, in legal terms, of the subject matter which
the applicant regards as his invention
Continuation
In the U.S., a later application claiming the same invention
filed while the original application is pending. The original
filing date is used for determination of prior art
Continuation-in-part
In the U.S., a second application for the same invention,
usually to introduce improvements not covered in the original
application. The original filing date is used for prior art

Terminologies
Defensive Publication
Publication of the details of an invention in the Official
Gazette or in the other publications to prevent others from
obtaining a patent on the invention.
Design patent
A type of patent issued in the U.S. for inventive designs of a
purely ornamental or aesthetic nature.
Designated states
In application filed at the European Patent Office or the
World Intellectual Property Organization, the courtiers in
which the invention will be protected.
Division
In the U.S., an additional application derived from an earlier
application that claims two or more inventions, as
determined by the patent examiner. The original date is
used for determination of prior art.

Terminologies (contd)
Equivalents
All the patent publication within a patent family
relating to a specific invention.
Granted patent
A legal document giving an inventor the right to
exclude others from making, using, or selling the
invention according to the laws governing patents
in a country.
Kind codes
Codes indicating the stage of the published patent
document, e.g., unexamined application,
examined application, granted patent.

Terminologies (contd)
Patent family
What was previously known in a given area of technology that lead to
the development of an invention.
Priority application
The application with the earliest date, when an inventor files for a
patent in more than one country.
Reassignment
The assignee transfers ownership of patent right to another party.
Reissued patent
In the U.S., the result of an application by the patent owner to make
corrections in the specifications or claims of the patent. A new patent
number is assigned, but the original expiration date is maintained.

Terminologies(contd)
Unexamined application
In some countries, the first publication level for a patent
document in which application has not undergone full
examination for novelty and non-obviousness.
Utility model
In Japan and Germany legal protection for minor
inventions that do not necessarily meet the novelty or
non-obviousness criteria of regular patents.

Patent Specifications
They are dynamic documents and often modified to
meet requirements of each jurisdiction (=country or
area)
This could disentitle an inventor his/her specific
contribution e.g., method of medical treatment claims
is valid in the USA but not in India or Europe or New
Zealand

Patent Rules

Patent Reforms Act – 2007 (U.S.A.)
On April 18, 2007, bipartisan legislators in both the Senate and House of
Representatives introduced sweeping patent reform measures in legislation
termed the Patent Reform Act of 2007. The reform measures include
modifying some of the following provisions:
 First-to-file rights and elimination of interference proceedings;
 Reform to make it easier to file a patent application without the inventor's
cooperation;
 Limitation of damages to only the economic value of the improvement as
compared to the prior-art;
 Specific limitations on when damages may be trebled for willfulness;
 Post-grant opposition proceedings with a reduction in the litigation
estoppel (A bar preventing one from making allegations or a denial that contradicts what one has
previously stated as truth) effect;
 Limitations on patent venue;
 Authority to the PTO director to create further regulations.
 Although couched in terms of the importance of patents and patent
quality. The thrust of many of the measures are clearly directed at
"limiting litigation abuses." Although a detailed analysis has not been
completed, the two versions appear virtually identical.

5/25 of USA : A New Patent Rule
“First to invent System”
USPTO:
New Patent Application can have 5 independent claims &
25 total claims (effective date November 1, 2007) {on hold ?}
This rule is being slapped to improve quality of Patents
USPTO believes that many applicants abuse current
examination process by filing too many applications with
related inventions

Why search patent information?
 Avoid duplication of R&D work
 Identify specific new ideas and technical solutions, products or
processes
 Identify the state-of-the-art in a specific technological field in order to
be aware of the latest development
 Assess and evaluate specific technology and to identify possible
licensors
 Identify alternative technology and its sources
 Locate of sources of know-how in a specific field of technology or in a
given country
 Improvement of an existing product or process
 Development of new technical solutions, products or processes
 Identify existing or prospective industrial property rights (validity,
ownership, ...), particularly to avoid infringement actions
 Assess novelty and patentability of own developments with a view of
applying for a domestic or foreign industrial property right
 Monitor activities of competitors both within the country and abroad
 Identify a market niche or to discover new trends in technology or
product development at an early stage.

Who are the main user groups of patent
information?
 Industry, and in particular R&D intensive industry
 Research and development institutions
 Governmental authorities
 Small and medium-size enterprises
 Individual inventors
 Professionals in the field of industrial property, e.g.,
administrators of technical libraries, patent agents, researchers,
producers of data banks
 Educational institutions and university students

What is the scope of ``an art''?
(Sort of background of an invention; example Computer Application)
“All computer science? A topic roughly equivalent to one course
at the undergraduate level? The subject of a PhD thesis? One
important criterion is that we must consider people actually
practicing the art, not those thinking about the art. Thus, an
academic researcher may not be a good, or even acceptable,
model for a person of ordinary skill in the art. Apparently, a better
model would be a person with a BS degree in Computer Science
who writes code for a living. In some cases, e.g., a patent
involving locking algorithms for database systems, we might
take the proper model to be someone who had had an
appropriate MS-level course, database systems in this example”.

Explanation of scope of art
http://www.iusmentis.com/patents/claims

Patent Application Information Retrieval
(PAIR) A system that displays information regarding patent
application status.
There is both a Public and Private side to PAIR. “ Public PAIR ” only displays issued or published
application status.
To access Public PAIR, you need only have a patent, application, or publication number that you wish to
search.
“Private PAIR” is the Patent Application Information Retrieval
system developed to provide secure access for customers who want
to view current patent application status electronically via the
Internet. Private PAIR provides secure real-time access to pending application status
and history using digital certificates issued from the USPTO's Public Key Infrastructure.
To access Private PAIR, you must be a registered patent
attorney/agent, an Independent Inventor, or a person granted limited
recognition, have a customer number, have a digital PKI certificate to
secure the transmission of the application to the USPTO.

What is PAIR (SOPs)
#Date Content description3205-14-2001Mail Notice of Allowance3105-14-
2001Notice of Allowance Data Verification Completed3005-14-2001Notice of
Allowability2910-06-2000Case Docketed to Examiner in GAU2809-27-2000Mail
BPAI Decision on Appeal - Reversed2709-27-2000BPAI Decision - Examiner
Reversed2610-25-1999Mail Miscellaneous Communication to Applicant2510-25-
1999Miscellaneous Communication to Applicant - No Action Count2407-16-
1999Remand to the Examiner by BPAI2302-21-1997Mail Reply Brief Noted by
Examiner2202-21-1997Reply Brief Noted by Examiner2112-26-1996Date
Forwarded to Examiner2012-18-1996Reply Brief Filed1911-13-1996Mail
Examiner's Answer1810-28-1996Examiner's Answer to Appeal Brief1707-17-
1996Date Forwarded to Examiner1607-12-1996Appeal Brief Filed1507-12-
1996Request for Extension of Time - Granted1404-15-1996Notice of Appeal
Filed1303-27-1996Mail Advisory Action (PTOL - 303)1203-26-1996Advisory
Action (PTOL-303)1103-13-1996Date Forwarded to Examiner1003-11-
1996Amendment after Final Rejection901-16-1996Mail Final Rejection (PTOL -
326)801-11-1996Final Rejection710-19-1995Date Forwarded to Examiner609-22-
1995Response after Non-Final Action509-22-1995Request for Extension of Time
- Granted404-20-1995Mail Non-Final Rejection304-03-1995Non-Final
Rejection202-03-1995Case Docketed to Examiner in GAU101-26-1995Application
Captured on Microfilm

Events
• Amendment
• Non-final rejection
• Final rejection
• Appeal brief
• Appeal to the Board of Patent Appeals and
Interferences (BPAI)

Example : A Method for Diagnosing Cancer
Bibliographic data Description Claims Mosaics Original Document INPADOC legal status
Publication number :WO2006066826 (A1)(patent of invention)
Publication date :2006-06-29
Inventor(s) :NAYERNIA KARIM [DE];ENGEL WOLFGANG [DE]
Applicant(s) :GEORG AUGUST UNI GOETTINGEN [DE];
NAYERNIA KARIM [DE];ENGEL WOLFGANG [DE]
Classification: - international: C12Q1/68; C12Q1/68;
Application number : WO2005EP13600 20051216 2006-06-29
Priority number(s) :EP20040030123 20041220
(Source: esp@cenet database — WIPO - esp@cenet)

Claims
(*Pwil-2 Protein widely expressed in tumors)
*

(Based on Indian Application: 466/DEL/IN of 2/3/2005: “Novel Nucleotide Sequences”)
Search Report

“Patent protection does not result in
owning the invention by the
inventor but protects, others from
repeating the effort which has
already been made”
“ Patent System Adds fuel to interest to the fire of the genius” -
Abraham Lincoln

Gene Patenting

Gene Patenting
View # 1 on Claims (In Favour):
Gene is DNA of Defined and Specific Function
Gene is Isolated due to Human Technical Intervention
Hence a Gene should be Afforded Legal Protection
(US Code Section 35 (100-101)
View # 2 on Claims (In Opposition):
Genes are discoveries and not inventions and should not
be owned by any individual or organization
Genes are discoveries & not inventions & hence not new
Gene isolation and cloning is well established and a person
skilled in art can fish it out.

??
Under New Laws; gene patenting now
requires mention of utility as a very
Important attribute

Players who Generate Patents

Key Players in Patenting
 Inventors / PIs/ Scientists / An individual-s
 An Organization/s where the inventor works
 Funding agency
 The Patent Office

Patent Office
Sell Technology/ Technology Transfer
Inventor/ PI
Upscale Technology
Funding Agency
Organization
Commercialize the
product
Earn Royalty
Share Royalty
**

Historical

Thomas Jefferson,U.S. Patent Act of 1793 &
Firsts in Patenting!
 Thomas Jefferson was the first Patent Examiner
 In 1790, the cost to obtain a patent was between $4 and $5.
 The first U.S. patent was granted on July 31, 1790, to Samuel Hopkins of Pittsford, for an
improvement in "the making of Pot ash and Pearl ash by a new Apparatus and Process."
 Mary Kies of Killingly, Conn., was the first women to obtain a patent. In 1809 she received
a patent for a way to weave "straw with silk or thread."
 Chester Carlson was a patent agent who tired of having to make multiple copies of patent
applications using the only duplication method available at the time: carbon paper. In
1959 he came up with a new copying system and took it to IBM for evaluation. The
"experts" at IBM determined potential sales to be only 5,000 units because people
wouldn’t want to use a bulky machine when they had carbon paper. Carlson’s invention
was the xerography process, the company founded on the system is Xerox.
 Abraham Lincoln, congressman from Illinois, received Patent No. 6,469 for "A Device for
Buoying Vessels over Shoals." The idea of the invention was that if a ship ran aground in
shallow waters, the bellows would be filled with air, and the vessel, thus buoyed, would
float clear. The model Lincoln whittled can be seen at the Smithsonian's National Museum
in Washington.
 Mark Twain (Samuel L. Clemens) received Patent No. 121,992 for "An Improvement in
Adjustable and Detachable Straps for Garments." He later received two more patents:
one for a self-pasting scrapbook and one for a game to help players remember important
historical dates.

First Patent on Genetically Modified Organism
DIAMOND v. CHAKRABARTY,
447 U.S. 303 (1980)
DIAMOND, COMMISSIONER OF PATENTS AND TRADEMARKS
versus
CHAKRABARTY.
CERTIORARI TO THE U.S. COURT OF CUSTOMS AND PATENT APPEALS.
No. 79-136.
Argued March 17, 1980.
Decided June 16, 1980.
(Respondent filed a patent application relating to his invention of a human-made, genetically
engineered bacterium capable of breaking down crude oil, a property which is possessed by
no naturally occurring bacteria)

Patent Laws
Each country has it’s own set of laws

Compulsions for framing laws
a) Domestic/ Regional (political or otherwise)
b) International Obligations :
International pulls & pressures (TRIPs)
c) Financial/ Regional/ local etc

What is Patentable ?
USA : “Anything under the Sun” “First to invent”
Europe : Discoveries, scientific theories & math. Models, aesthetic
creations, presentation of information, inventions contrary to “order
public” & those contrary to morality, plant & animal varieties,
production of plants and animals
India : Go to (http://www.patentoffice.nic.in/ipr/patent/patents_filing.pdf)
[Note: EPO, Japan, India “ First to File”]

What is not Patentable in India !
 Frivolous claims contrary to well-established natural laws
 Anything contrary to law or morality, or injurious to public
health
 Mere arrangement or rearrangement or duplication of known
devices, each functioning independently of one another in a
known way
 A method or process of testing the process of manufacture
for rendering the machine, apparatus or other equipment more
efficient or for the improvement or restoration of the existing
machine, apparatus or other equipment or for the improvement
or control of manufacture
 A method of agriculture or horticulture

What is not Patentable in India? (contd.)
 Inventions related to atomic energy
 Computer software
 Aesthetic creations
 Discoveries, scientific theories, mathematical methods
 Schemes, rules or methods for performing mental acts playing
games or doing business (business methods)
 Presentation of information
 Methods of treating humans or animals through surgery, or
therapeutical diagnostics
 Animals and plants, and biological methods for rearing/growing
them (however, microorganism is patentable in India)
 Products made by chemical synthesis foods, medicines
 Process patents for drugs (reverse engineering) but when novel,
permitted

Controversial Cases on Patents in India?
Case Study:
Initiatives for Medicine, Access & Knowledge (I-MAK)(A US Based
Non-Profit Organization)
Vs
Abbott Laboratories, U.K.
“Heat Stable forms of a medicine named Aluvia, in Tablet form
(formulation of Kaletra : an HIV Drug-pre; 1995 Drug) should not
be Patented as per pre-1995 Indian Patent Laws according to
Section 3 (d)”
[Article 3 (d) allows serious modifications but not the frivolous ones]
(TOI: 25/08/2007)

Controversial Cases on Patents in
Australian Patent Office?
2008: Australia's patent office admitted to being "uncomfortable" about
granting a patent to a group from Seoul National University Industry Foundation
that includes the disgraced researcher Woo-Suk Hwang as one of the inventors.
The patent application is for a stem cell line, which the group of 18
researchers claimed was produced by a procedure known as somatic cell nuclear
transfer but has since been revealed to have been created by parthenogenesis (the
development of an embryo in the absence of fertilization).
Although the application made false claims about the method used to
create the stem cell line, this did not alter the status of the product: "it is generally
accepted that the line of stem cells exists and is a new invention. But it is now
generally accepted that they were not derived by somatic cell nuclear transfer but
by another process called parthenogenesis."
"The Patents Act requires IP Australia to be satisfied that there is an
invention [...] that [has] not been discovered before. The new line of stem cells is
such an invention."
Nature Medicine: 14(12), December, 2008

Some Statistics

http://www.wipo.int/ipstats/en/wipi/index.html
http://www.wipo.int/export/sites/www/ipstats/e
n/wipi/pdf/941_2011_section_a.pdf

Share of Patent Offices in total patent
applications
(Source: WIPO Statistics Database, October 2011)
(1995)
United States of America : 21.8%; China : 1.8%
Japan : 35.2%; Korea : 7.5%
European Patent Office : 5.8%; Others : 28.0%
(2010)
Japan : 17.4%; Korea : 8.6%

Application data availability
IP type Estimated world totals based on Data available for Data coverage
Patents 135 offices 88 offices 97%
Utility models 60 offices 46 offices 99%
Trademarks 169 offices 115 offices 87%
Industrial designs 130 offices 104 offices 96%

Information about Patent Offices Worldwide
(RD: 12/11/2012)
(Worldwide 7.3 million patents)
Country/ region # Employees # of Patent
Examiners
Total filings
in 2004
Total filings
in 2010
Remarks
EPO$ 6500 3500 181000 1,30,000 Heavy backlog
USPTO$ 7300 3000 250000 5,00,000 Heavy backlog
JPO$$ (Japan) 2651 1358 400000 3,50,000 Very slow in
assessment
SIPO$$S, * (China) 4400 2000 100000 3,80,000 Joined IPR regime
recently; gearing up
KIPO* (Korea) 1517 728 160000 1,50,000 No backlog; outsource
jobs
IPO$$$$, * (India) 200 135 17500 40,000 Heavy backlog; Need
more staff;
modernized
Latin America ? ? ? ? Setting up with help
of EPO
Africa Setting up with help
of EPO
Note : Trilateral Offices being planned between China, Korea & India

Patents in Force World Wide as in 2010
EPO : 8.3%
USA : 32%
Japan : 22%
China : 24%
Korea : 9.6%
India : 2.5%
[Title “Chimeric gene constructs for generation of
fluorescent transgenic ornamental fish”:
US Patent Application No. :
20040143864 dated July 22, 2004]
GloFish®™

International Patent Filings – 2008-2013
S. No. Country Patent Filed - 2008
1. Japan 28,774
2. Germany 18,428
3. Republic of Korea 7,908
4. France 6,867
5. China 6,089
6. United Kingdom 5,517
7 Netherlands 4,349
8. Sweden 4,114
9. Switzerland 3,832
10. Canada 2,966
11. Italy 2,939
12. Finland 2,119
13. Australia 2,028
14. Israel 1,882
15 Republic of Korea 7,908
16. India 766
17. Singapore 578
18. Brazil 451
19. South Africa 382
20. Turkey 367
21. Mexico 210
22. Malaysia 177

Patents in Force in India
Action 1999-2000 2002-03 2004-05 2005-06 2006-07
Application
filed
4824 11,466 17,466 24,415 28,882
Application
Examined
2824 9538 14,813 11,569 14,119
Patents
Granted
1881 1379 1911 4320 7359
(Source: Indian Patent Office)

Indian Patent Office as International
Search Authority
The Indian Patent Office has now designated as the
International Searching Authority (ISA) and International
Preliminary Examining Authority (IPEA) by the World
Intellectual Property Organization (WIPO) which consists of
more than 170 member countries.
The recognition of India as an ISA and IPEA puts India in a
coveted league of only 15 nations and organizations currently
recognized at a global level.

Please see World IP Today:-
http://science.thomsonreuters.com/press/pdf/tl/WIPTPatent07.pdf

Source : WIPO

GM Crops

Drugs Going Off Patent Regime
Total : US $ 10 b
(http://mediwire.skyscape.com/main/Default.aspx?P=Content&ArticleID=317333)

(http://mediwire.skyscape.com/main/Default.aspx?P=Content&ArticleID=317333)
Total: US $ 9.7 billion

Number of drugs with patents expiring in 2000-04
(Grouped by treatment category)
Treatment category 2000 2001 2002 2003
1. Cancer and cancer related treatments 5 6 4 2
2. Anti-infective treatments 2 6 2 3
3. Central nervous system treatments 6 2 2 5
4. Cardiovascular/cerebro-vascular
treatments 13 13 6 17
5. Respiratory treatments 5 3 4 5
6. Endocrine, nutritional,
metabolic and immunity treatments 3 2 2 3
7. Topical treatments 5 1 3 7
8. Hormonal treatments 1 4 1 5
9. Musculo-skeletal and
connective tissue treatments 1 0 1 0
10. AIDS and AIDS related treatments 2 2 0 1
11. Analgesic treatments 1 5 5 1
12. Digestive system treatments 5 1 5 0
13. Blood disorder treatments
http://www.biospectrumindia.com/content/BioBsiness/10511112.asp
0 0 0 0

Mode of Drug Action
Certain drugs work by interacting with receptors, special sites on the surface of body cells.
Drugs may bind to a specific receptor, possibly preventing naturally occurring chemicals
from binding to the receptor. In so doing, if a drug enhances cell activity, it is called an
agonist; if it blocks cell activity, it is called an antagonist.

Sale of Pharmaceutical Products for Lifestyle
Diseases in India (Jan-Dec 2007)
S.
No.
Segment Value in
Rs. Crore
%growth in
value
% growth
in volume
1. Cough & Cold 1020.23 5.78 2.13
2. Diabetes 437.73 39.33 27.75
3. Cardio-Vascular
(cholesterol lowering drugs)
304.19 35.09 31.25
4. Cefixime Oral Sol
(anti-infective)
295.10 9.46 9.19
5. Cephalo Comb Injection (surgery) 286.23 36.46 35.44
6. Conv. Iron Liquid 284.73 9.11 7.19
7. Ciprofloxacin Oral Solids (strong anti-
biotic)
274.50 -2.14 -3.24
8. Calcium Oral Solids 262.41 16.73 10.49
9. Diclo.comb.oral Solid (pain killer) 231.72 11.08 10.67
(Total : Rs. 3396.84 )
(Source: ORG; TOI – 17.03.2008)

Drug Price Competition and Patent
Term Restoration Act (U.S.A.)
Statutory and Regulatory Citations
The patent term restoration statute can be found at 35 U.S.C.ß 156
et seq. PTO published its regulations on March 24, 1987. These
regulations can be found at 37 C.F.R. Part 1. FDA published its
regulations on March 7, 1988. These regulations can be found at 21
C.F.R. Part 60. FDA published a Memorandum of Understanding
governing information exchanges and cooperation between the two
agencies in the May 12, 1987 Federal Register (52 Fed. Reg. 17,830).

Gazette of India: Patents
= Federal Register in USA

Ever-greening of Patents

Drug Price Competition and Patent
Term Restoration Act (U.S.A.)
Eligibility Assistance on Applications
To obtain patent term extension, an application must satisfy certain eligibility
criteria, including:
(1) the patent has not expired, (2) the patent has never been extended, (3) the
application is submitted by the patent owner or its agent, (4) the product has
been subject to a regulatory review period with FDA or USDA before its
commercial marketing or use, and (5) the permission for commercial marketing
or use represents the first permitted commercial marketing or use of the
product under the provision of law under which the regulatory review occurred
(but for products produced using recombinant DNA technology, excluding
animal drug products, the product can be the first permitted commercial
marketing or use of a product produced under that technology), or if the
product is a veterinary drug product, the product cannot be claimed in any
other patent which has been extended and, if previously approved for use in
non-food producing animals, must not have received patent term extension for
that use.

Ever greening of Patents
“Evergreening, in one common form, occurs when the brand-
name manufacturer literally “stockpiles” patent protection by
obtaining separate 20-year patents on multiple attributes of a
single product. These patents can cover everything from
aspects of the manufacturing process to tablet color, or even a
chemical produced by the body when the drug is ingested and
metabolized by the patient”
Primary uses
Processes and intermediates
Bulk forms
Simple formulations
Composition of matter

Ever greening of Patents (contd.)
Expansive numbers of uses
Methods of treatment
Mechanism of action
Packaging
Delivery profiles
Dosing regimen
Dosing range
Dosing route
Combinations
Screening Methods
Chemistry Methods
Biological Target
Field of use

Patent Landscaping

Freedom-to-operate search (FTO)

Freedom-To-Operate Search (FTO)
A clearance search which concentrates on
uncovering enforceable patents that may act
as “roadblocks” to commercialization of a
product or service
Uses
Guide product design decisions.
Identify patents that may need to be licensed

WHAT WE
SEARCH FOR
FTO
Existing claims of patents
currently in force (existing
“active” claims)
Subject matter that may appear
in claims of patents entering (or
re-entering) into force in the
future (future “active” claims)

WHERE WE
SEARCH FOR
FUTURE ACTIVE
CLAIMS
Document Types
• Claims in patent applications
• Claims in patents lapsed or withdrawn reinstatement
• Description in patent applications amended claims
• Description in patents amended claims

Remember
IP rights are specific to
different jurisdictions, a
FTO analysis should
relate to particular
countries or regions
where you want to
operate

STRATEGIES
FOR
OBTAINING
FREEDOM TO OPERATE
(FTO)

In-
licensing
• Taking a written authorization from the patent holder to use the
patented technology for specified period of time in a specified
markets
Cross-
licensing
• When two companies exchange licenses in order to be able to
use certain patents owned by the other party.
Inventing
around
• Guiding research or making changes to the product or process to
avoid infringement on the patent(s) owned by others
Patent
pools
• Where two or more companies practicing related technologies put
their patents in a pool to establish a clearinghouse for patent rights

Patent Landscaping Process (1)
 Patent landscapes are used to:
 Gain competitive insight
 Identify gaps and clusters in technology
 Assess self portfolios vis-à-vis competition
 Develop future R&D strategies
 Identify new application areas of existing patents
 Develop a licensing strategy
 Develop new products and improve existing products
 Determine commercial value of patents
 Identify fundamental invention vis-à-vis improvements
 Monitor patent activity in particular geographic
markets
NII/P&OTT/RD/2008April 19, 2014 RD_ND_Patents_2014 183

Part A (Overview)
 Scan all patents of interest from Patent websites
 Screen Patents of Interest
 Map Patents
It is the visualized expression of total patent analysis results to understand
patent information effectively. Patent Map is produced by gathering related
patent information of a target technology field & analyzing these data by
different criteria and presenting results by using graphical tools. However,
the type of patent map is created depends upon the question that is trying
to be answered. Patent Maps allow us to identify acquisition target, patent
cross licensing targets, future competitive treats & potential of licensing in
and out.
Thus Patent Maps allow us to track, monitor, discover, spot, assess, guard
and see patent activities in a certain area.
 Freedom to Operate
 Mitigate

Part B (Basic Information)
Define Scope
Perform Search
Map Trends
Analyze Patents
Select Patents of Interest
Design Around
Investigate Owners
Mitigate Infringement
Display Results
Part C (Watch Competition)
Understand Competitors IP
Identify Trends in Competitors IP
Identify Unprotected Areas
Avoid Infringement
Part D (Seek Strategic Positions)
Licensing Agreements
Patents
Joint Ventures

Patent Pools

Patent pool for neglected diseases
Pharmaceutical giant GlaxoSmithKline (GSK) will share the patented
knowledge it uses to develop medicines for neglected tropical diseases (NTDs)
— including malaria and tuberculosis — with other drugs companies,
governments and non-governmental organizations.
Andrew Witty, GSK's chief executive, proposed the voluntary 'patent pool' in a
12 February speech, and called on other drugs firms to open up access to
intellectual property relevant to NTDs.
Starting this year, Witty announced, GSK will also cap its prices for patented
medicines in poor countries at 25% of what it charges in developed countries.
It will also reinvest 20% of the profit it makes from selling medicines in poor
nations into health-care infrastructure projects in those countries.
Source: Nature News
Published online 18 February 2009 | Nature 457, 949 (2009) | doi:10.1038/457949e
News in Brief

Patent Pooling
A patent pool is a consortium of at least two companies
agreeing to cross-license patents relating to a particular
technology.
The creation of a patent pool can save patentees and
licensees time and money, and, in case of blocking
patents, it may also be the only reasonable method for
making the invention available to the public.
(Note: Competition law issues are usually important when a large
consortium is formed. Patent pooling has recently become a hotly
debated field)

Patent Pooling
Identify relevant parties
Gain agreement between parties (e.g., need to access many Patents)
Letter of intent
Independent evaluation of Patents
Develop operating model
Regulatory authority approval
Sign full agreement
Go live

Patent Pooling for HIV/AIDS drugs
 WHO efforts (UNITAID)
 Air Tax etc

Patents & Economy

Patents Generate Economy
Examples:
India : (http://www.nistads.res.in/contents/patent/11-Chapter-3.pdf)
USA :
NIH : 20,000 technologies/2000 generate $$
“AXLE” shuttle vector example
BU : 2000 technologies/ 15 generate US $100m

Generation Money by IPR: an example
(Money Loss by USA in India due to lack of protection of IPR in 2000)
 Motion pictures 80%
 Sound Recordings and Musical Compositions 40%
 Computer Programs: Business Applications 76%
 Computer Programs: Entertainment Software 82%
 Books (US$22 million) Not Available
 Motion pictures 7.3%
 Sound Recordings and Musical Compositions
24.5%
 Software 292.8%
 Books 21.0%

Patents and Recession
Yes, it has affected filing and technology transfer

Patents generate revenue: do you agree ?
Only 5-12% of patents get commercially exploited!

Patenting leads to business & need
uniform International rules for Trading
World Trade Organization
World Intellectual Property Organization

Share of Patent Offices in total patent
applications
(Source: WIPO Statistics Database, October 2011)
(1995)
Japan : 35.2%; Korea : 7.5%
(2010)
Japan : 17.4%; Korea : 8.6%

Patent Offices fall under:
Ministry of Commerce and Industry
Department of Industrial Policy and
Promotion
Controller General of Patents Designs and
Trade Marks
(INDIA)

CONTROLLER GENERAL OF PATENTS, DESIGNS
AND TRADEMARKS
(CGPDTM)
T M REGISTRY
DESIGN OFFICE
G.I. REGISTRY
Head Office
KOLKATA
Branch
DELHI
Branch
CHENNAI
Branch
MUMBAI
Head Office
MUMBAI
DELHI
KOLKATA
CHENNAI
A’BAD
P.I.S.
Nagpur
KOLKATA
PATENT OFFICE
CHENNAI
(Source : Indian Patent Office)

HISTORY OF INDIAN PATENT SYSTEM
1856 THE ACT VI OF 1856 ON PROTECTION OF INVENTIONS BASED ON THE BRITISH PATENT LAW OF 1852. CERTAIN EXCLUSIVE
PRIVILEGES GRANTED TO INVENTORS OF NEW MANUFACTURERS FOR A PERIOD OF 14 YEARS.
1859 THE ACT MODIFIED AS ACT XV; PATENT MONOPOLIES CALLED EXCLUSIVE PRIVILEGES (MAKING. SELLING AND USING
INVENTIONS IN INDIA AND AUTHORIZING OTHERS TO DO SO FOR 14 YEARS FROM DATE OF FILING SPECIFICATION).
1872 THE PATENTS & DESIGNS PROTECTION ACT.
1883 THE PROTECTION OF INVENTIONS ACT.
1888 CONSOLIDATED AS THE INVENTIONS & DESIGNS ACT.
1911 THE INDIAN PATENTS & DESIGNS ACT.
PATENT ACT - 1970
1972 THE PATENTS ACT (ACT 39 OF 1970) CAME INTO FORCE ON 20TH APRIL 1972.
1999 ON MARCH 26, 1999 PATENTS (AMENDMENT) ACT, (1999) CAME INTO FORCE FROM 01-01-1995.
2002 THE PATENTS (AMENDMENT) ACT 2002 CAME INTO FORCE FROM 2OTH MAY 2003; modified in 2005
(source : http://www.patentoffice.nic.in/ipr/patent/history.htm)

Department of Industrial Policy &
Promotion (DIPP) is the nodal
Department in the Government of India
for all matters concerning WIPO.

Patent Activity in India
PSUs : 12%
MNCs : 28%
Indian Private Industry : 60%
?
?

Patent filing process (India)
Filing :
Complete Specifications
Examination
Allowance
Issuance
Maintenance
Refusal/ Appeal !!
Publication Opposition
If yes, go to
Revise

Patent Filing Documents
&
Drafting

Patent Filing Documents (INDIA)
(Form 1): Application form in triplicate
(Form 2): Provisional or complete specification in triplicate. If the
provisional specification is filed it must be followed by complete
specification within 12 months (15 months with extension)
Drawing in triplicate (if necessary)
Abstract of the invention (in triplicate)
Information and undertaking listing the number, filing date and
current status of each foreign patent application in duplicate
(Form 3): Priority document (if priority date is claimed)
(Form 5): Declaration of inventorship where provisional
specification is followed by complete specification or in case of PCT
convention application
Power of attorney (if filed through Patent Agent)
Fee in cash/by local cheque/by demand draft in favor of Controller of
Patents)

Drafting of Claims (1)
1. Interview the inventor
2. Inventor knows best about his invention
3. Record Interview on Camera, if possible
4. Demand sketches
5. While evaluating invention, first of all draft broadest claims
6. The broadest claim is a claim that is narrower only at the point of
novelty than any prior art reference one is aware of
7. Once a point of novelty is in mind, decide on the type of claim
(product- new or improved compound or composition of matter) /
method of use/ process of manufacture, reconsider/ revise the
claims
8. While interpreting claims, consider other claims in the patent with
patent differentiation in mind
9. Ask the following: is the claim too broad or too narrow or
problematic
10.Consider how claims affect each other
11.When in doubt, ask inventor to again explain it

Statutory Provisions — Basic Principles: The Statute
Omnibus Claims
Statutory Classes
Claim Forms and Formats: Placement After Specification
Numbering and Order
Preamble
Transition from Preamble to Body
Body of the Claim
Format and Punctuation
Dependent Claims
Independent Claims
Multiple Dependent Claims

Fees Payable for Claims
Apparatus or Machine Claims: Elements of These
Claims
Order of Elements
Tying Elements Together
“Whereby” and “Means” Clauses
Method or Process Claims: Elements of Method
Claims

Order of Steps
Article of Manufacture Claims: Product-by-Process Claims
Design Claims
Plant Patent Claims
Composition of Matter Claims — Chemical Cases: “Markush”
Expressions
Special Claims for Chemical Cases
New Use Claims
Jepson-Type Claims
Generic and Species Claims of Varying Scope:
Claiming Different Classes of Invention in One
Patent
Non-art Rejections: Duplicate Claiming

Undue Multiplicity
Old Combination; Over-claiming
Aggregation
Printed Matter
Incomplete
Vague and Indefinite
Prolixity
New Matter
Claiming Biotechnology Inventions
Thoughts on Claim Drafting: Review of Some Basics

How to file a Patent (ABROAD)
Direct Route for National Phase:
Seek permission from IPO, India ; 6-months time period
PCT Route:
Uniform examination agency
18-32 months
Go to National Phase e.g., USA, Europe, Singapore, China
Role of Patent Attorney & deficiencies in India?

Strategy
1
The traditional way to apply for a patent is to file a standard Patent Application
(now called a non-provisional) with the PTO without a prior art search. This
way can sometimes be a roll-of-the-dice approach. Without a search of
relevant art, one cannot develop a proper strategy for applying for a patent.
While it may be one of the cheapest strategies, there is a chance that the
cost of filing could have been avoided. However, if your idea is truly one of
a kind, this could be the best approach.
Strategy
2
A variation on Strategy 1 is to perform a patentability search prior to filing the
non-provisional application. While no search can generate a 100% of the
relevant art or prevent a rejection by the PTO, a search can help determine
what is out there and shape the best strategy for prosecution.
Strategy
3
The newest and possibly the most attractive strategy is to file a Provisional
Patent Application. This is a great tool for inventors. When you invent
something, you generally have 1 year to file an application with the PTO, or
lose the right to do so. A provisional application allows you to file the
disclosure of your invention with the office, establish a priority date and
gives you another year to file your non-provisional application. This
strategy also gives you a year to determine if there is a market for your
invention while employing the title 'Patent Pending' on your invention.
Patent Prosecution Strategy

Form No. Section and rule Title
1 2 3
1.
1.A
Sections 5(2), 7, 54, 135 and rule 39
Section 7(1A); rule 20(1)
Application for grant of a patent.
Application for grant of patent on an application corresponding to
an International application under PCT.
2. Section 10; rule 13 Provisional/Complete Specification.
3. Section 8 and rule 12. Statement and undertaking.
4. Sections 8(2), 9(1), 25(1), 28(4), 43(3), 53(3) and rules 12(4),
13(6), 24(5), 56(1), 73(3) or 130.
Request for extension for time.
5. Section 10(6) and rule 13(6). Declaration as inventorship.
6. Sections 20(1), 20(4), 20(5) and rules 34(1), 35 or 36. Claim or request regarding any change in applicant for patent.
7. Section 25 and rule 55. Notice of opposition to grant of a patent.
8. Sections 28(2), 28(3) or 28(4) and rules 66, 67, 68. Request or claim regarding mention of inventor as such in a patent.
9. Section 43 and rule 73(1). Request for sealing of a patent.
10. Section 44 and rule 75. Application for amendment of patent.
11. Sections 51(1), 51(2) and rules 76, 77. Application for direction of the controller.
12. Section 52(2) and rule 79. Request for grant of patent.
13. Section 57 and rule 81(1). Application for amendment of the application for patent/complete
specification.
14. Sections 57(4), 61(1), 63(3), 78(5) and 87(2) and rules 49(1),
52(3), 81(3)(b), 85(1), 87(2), 98(1), 101(3) or 124 and
also section 87 (2) as modified by section 24C.
Notice of opposition to amendment/restoration/surrender of
patent/grant of compulsory licence or revision of terms
thereof or to a correction of clerical errors.
15. Section 60 and rule 84. Application for restoration of patents.
16. Section 68 and rule 89. Application for registration of a document.
17. Sections 69(1) or 69(2) and rules 90(1) and 90(2) Application for registration of title/interest in a patent or share in it
or registration of any document purporting to affect
proprietorship of the patent.

18. Sections 84(1), 91 or 92(1) and rules 47, 96 and also sections
84 and 92 as modified by section 24C.
Application for compulsory licence.
19. Section 11B and Rule 24(1). Request for examination of application for patent.
20. Section 85(1) and rules 47, 96, and also section 85(1) as
modified by section 24C.
Application for revocation of a patent or exclusive marketing right.
21. Section 88(4) and rules 51, 100 and also section 88(4) as
modified by section 24C.
Application for revision of terms and conditions of licence.
22. Section 94 and rule 102(1) and also section 94 as modified
by section 24C.
Request for termination of compulsory licence.
23. Rules 109 and 112. Application for registration of Patent Agent.
24. Section 130 (2) and rule 117. Application for the restoration of the name in the register of Patent
Agents.
25. Sections 77(1)(f), 77(1)(g) and rules 130(1) or 130(2). Application for review/setting aside controller’s decision/order.
26. Sections 127, 132 and rule 135. Form of authorisation of a Patent Agent/or any person in a matter
or proceeding under the Act.
27. Section 24A and rule 40. Application for grant of exclusive marketing rights.
28. Rule 46. Form for the grant of exclusive marketing rights.
29. Section 146(2) and rule 131(1) Statement regarding the working of the Patented invention.
30. Section 39 Request for permission for making patent application outside India

Documents Needed to File an Application
Application for grant of patent in Form 1;
Form 2 accompanied by two copies of the complete patent
specification;
Two sets of the drawing figures, if any, one set of which should
be in thick A-4 size white sheets;
Duly stamped power of attorney in Form 26 authorizing the agent;
Declaration of the inventorship signed by the applicant in Form 5;
Priority documents, if any, if not in English, English translation
thereof;
The Statement and Undertaking regarding corresponding foreign
filings in Form 3; and
Proof for the applicant’s right to apply for patent.
To obtain a lodgment date, what is required is:
The Specification;
Name and address of the applicant;
Name(s) and addresse(s) of the Inventor(s); and
The priority details.April 19, 2014 RD_ND_Patents_2014 220

Patent Prosecution in India
Application
Applicant
Publication
Representation
Examination
Grant
Opposition
Renewal

Patent Filing Process
In
Patent Offices

Patent filing process (EPO)
Filing
Search
Request for Examination
Substantive Examination
Announcement of Grant
Publication of Patent
Maintenance
If opposed : revocation
Refusal
Withdrawal
Publication

Patent filing process (USPTO)
Filing
Examination
Notice of Allowance
Patent Issuance
Maintenance
Opposition / Interference
Office action/ rejection/
abandonment
Patent withdrawal

Patent Application Process in U.S.A.
Contact a Law Firm
Study Law Firm Brochure
Study Schedule of Fee
Fix a Meeting with Attorney to discuss: Invention, Patent
application process and Fee arrangements
Conduct Patentability Search and Opinion
Preparations for filling of Patent Application
Prepare an Information disclosure Statement
Attend to the Notice to file missing parts
Notice to comply with Sequence rules
Office action and response to office action (amendment)
Notice of allowance
Final rejection
Amendment after rejection
Appeal
Continuation application
Abandon the Application

Patent Application Process in U.S.A.
Extension applications
Continuation
Divisional
Continuation-in-part
Reissue
Continued Prosecution Application

PCT

Patent Cooperation Treaty
“The Patent Cooperation Treaty (PCT) of 1970 is an international patent
law treaty. It provides a unified procedure for filing patent applications to
protect inventions in each of its Contracting States – 137 countries. A
patent application filed under the PCT is called an international
application or PCT application.
A Patent Cooperative Treaty (PCT) patent application is a means to delay
filing in individual foreign countries for up to 30 months from the U.S.
filing. The PCT patent application does not mature into a patent. Rather,
an application must still be filled in each individual country”.
[List of PCT countries:
http://www.wipo.int/pct/guide/en/gdvol1/annexes/annexa/ax_a.pdf]

Documents for filing Patents PCT Route
By PCT Route:
 Complete Specification
 Drawings (if any)
 Priority Documents
 Abstract
 International Search Report
 International Preliminary Examination Report
 WIPO Publication
 Power of Attorney

PCT Filing Procedure
File PCT application in
Indian Patent Office
Ask for International
Preliminary
Examination Report
Choose
National Phase Countries e.g., USA, UK,
China, Japan, Singapore
1st written opinion issued;
If favorable
Publication of PCT after 18 months
from the priority date by WIPO
Response to written opinion
(Modify/ delete/ improve claims)
Local Patent Laws applicable

University
US federal
funding for life
sciences
research
(1998-2001)
$ billion
Biotechnology
patents granted
by the USPTO
(1998-2001)
Biotechnology
applications
submitted to the
USPTO
(1998-2001)
Disclosed
technology
transfer deals
with biotechnology
firms
(1998-2002)
University of California system
(Oakland, CA, USA) 2.97 757 330 23
University of Texas (Austin, TX,
USA)
1.39 202 71 10
Johns Hopkins University
(Baltimore, MD, USA)
1.19 258 107 13
Washington University (St. Louis,
MO, USA)
1.04 125 37 3
University of Pennsylvania
(Philadelphia, PA, USA)
0.98 138 50 4
Harvard University (Cambridge,
MA, USA)
0.79 127 42 9
Stanford University (Stanford,
CA, USA)
0.74 137 60 14
Columbia University (New York,
NY, USA)
0.70 141 37 1
Cornell University (Ithaca, NY,
USA)
0.50 136 49 0
Massachusetts Institute of
Technology (Cambridge, MA,
USA)
0.20 81 32 13
Rockefeller University (New
York, NY, USA)
0.18 154 56 5
(Sources: National Science Foundation, US Patent and Trademark Office (USPTO), Recombinant Capital)

(http://www.wipo.int/ipstats/en/statistics/patents/patent_report_2006.html)

Indian Patent Office

Patent Applications related
To Micro-organisms
Deposit at IMTECH,
Chandigarh

Patent Search Databases
Free Databases
http://www.patentoffice.nic.in/
http://pat2pdt.org
http://www.uspto.gov/
http://www.epo.org/
http://www.jpo.go.jp/
http://www.ipo.gov.uk/
http://www.ipos.gov.sg/main/index.html
Restricted but Free Databases
RaDius (US Federal Govt. Site)
USPTO private PAIR System

Patent Search Databases (contd.)
Subscription/Paid Databases
Thomson Innovation
Delphoin (www.delphion.com)
MicroPatent (www.micropatent.com)
Dialog (www.dialog.com)
PatentCafe (www.patentcafe.com)
Big Patents India (http://india.bigpatents.org/)

Organization of Patent Offices

Organization of European Patent Office

Various Components of
IP-Activities

Thank You & Good Luck
ACKNOWLEDGEMENTS
Several websites; DBT/ BIRAC/ NII/ US Embassy/ IPO/ USPTO/ EPO/ WIPO/ JPO/
Boston University,USA/ NIH, USA/ MIHR, UK/ Various websites & Journals
&
(Indian Patent Act: http://www.patentoffice.nic.in/ipr/patent/patAct1970-3-99.html)

Dr. Ravi Dhar & Nikhil Dhar on Intellectual Property. Part I- Understanding Patents in Detail

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