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Intellectual property rights

  1. 1. INTELLECTUAL PROPERTY RIGHTS Dr. Basavaraj K. Nanjwade M. Pharm., Ph.D Department of Pharmaceutics KLE University College of Pharmacy BELGAUM-590010, Karnataka, INDIA
  2. 2. CONTENTS • Types of IP • Definition • Scope • Objective of Patents • Contents of Patent • Claims and types of claims 01 March 2011 2Allicance Institute, Hyderabad
  3. 3. CONTENTS • Key terminology used in Patents - Application - Examiner - Prior art - Priority - Specifications - Provisional and non-provisional applications - Claims - Applicant - Assignee - Inventor - Anticipation - Obviousness - Infringement and Invalidation 01 March 2011 3Allicance Institute, Hyderabad
  4. 4. Types of Intellectual Property • Copyright • Related Rights • Trademarks • Geographical Indications • Industrial Designs • Patents • New Plant Varieties • Unfair Competition • Enforcement of Intellectual Property Rights • Emerging Issues in Intellectual Property 1. Biotechnology 2. Traditional Knowledge 01 March 2011 4Allicance Institute, Hyderabad
  5. 5. Copyright • What is copyright? Copyright aims at providing protection to authors ( writers, artists, music composers, etc) on their creations. Such creations are usually designated as ‘works”. 01 March 2011 Allicance Institute, Hyderabad 5
  6. 6. Related Rights • What are related rights? Related rights provide protection to the following persons or organizations: - Performers (actors, musicians, singers, dancers, or generally people who perform), in their performances - Producers of sound recordings (for example, cassette recordings and compact discs) in their recordings and - Broadcasting organizations, in their radio and television programs. Sometimes, these rights are also referred to as neighboring rights. 01 March 2011 Allicance Institute, Hyderabad 6
  7. 7. Trademarks • What is a trademark? A trademark is a sign that is used to identify certain goods and services as those produced or provided by a specific person or enterprises. E.g. “DELL” is trademark that identifies goods (computers and computer related objects). E.g. “CITY BANK” is a trademark that relates to services (banking and financial services). 01 March 2011 Allicance Institute, Hyderabad 7
  8. 8. Geographical Indications • What is a geographical indication? A geographical indication is a sign used on goods and stating that a given product originates is a given geographical area and possesses qualities or reputation due to that place of origin. Geographical indications may be used for a variety of products, such as agricultural products. e.g. i. Cheese- “Roquefort” produced in this region of France. ii. Olive oil- “Tuscany” for olive oil produced in specific region in Italy. iii. Tea- “Darjeeling” which is grown in India. iv. Wines and Spirits- “Scotch Whisky” which originates in Scotland. 01 March 2011 Allicance Institute, Hyderabad 8
  9. 9. Industrial Designs • What is an industrial design? An industrial design is the ornamental or aesthetic aspect of an article. The design may consist of three-dimensional features, such as the shape of an article, or two-dimensional features, such as patterns, lines or color. Industrial designs are applied to a wide variety of products of industry and handicrafts such as technical and medical instruments, watches, jewelry, house ware, electrical appliances, vehicles, architectural structures, textile designs and other luxury items. 01 March 201 Allicance Institute, Hyderabad 9
  10. 10. Industrial Designs • To be protected under most national laws, an industrial design must appeal to the eye. This means that an industrial design is primarily of an aesthetic nature, and does not protect any technical features of the article to which it is applied. 01 March 2011 Allicance Institute, Hyderabad 10
  11. 11. Patents • What is a patent A patent is an exclusive right granted in respect of an invention, which may be a product or a process, that provides a new and inventive way of doing something or offers a new and inventive technical solution to a problem. Examples: Electric lighting- patents held by Edison and Swan Plastic- patents held by Baekeland Ballpoint pens- patents held by Biro Microprocessors- patents held by Intel. Telephones-patents held by Bell CDS-patents held by Russell. 01 March 2011 Allicance Institute, Hyderabad 11
  12. 12. New Plant varieties • Why protect new varieties of plants? – Providing an effective system of plant variety protection has the aim of encouraging the development of new varieties of plants, for the benefit of society. – The breeding of new varieties of plants requires substantial amounts of investment (skill labor, money, time, etc.). – Providing exclusive rights to breeders is an incentive to the development of new plant varieties for agriculture, horticulture and forestry 01 March 2011 Allicance Institute, Hyderabad 12
  13. 13. Unfair Competition • What is unfair competition? Unfair competition is generally understood as any act of competition that is contrary to honest practices in industrial or commercial matters. A dishonest practices is not something that can be defined with precision. The standard of fairness or honesty may change from country to country, as well as evolve with time. It is, therefore, difficult to attempt to encompass all existing acts of unfair competition in one definition. 01 March 2011 Allicance Institute, Hyderabad 13
  14. 14. Enforcement of Intellectual Property Rights • Infringement of intellectual property rights A publisher may own copyright in a book, which has been reproduced and sold without his or her consent, at a cut price. A sound producer, who has invested large amounts of money, in terms of talent and technical skill, in producing a records, sees that copies of it are sold on the market, at cheap prices, without his authorization. 01 March 2011 Allicance Institute, Hyderabad 14
  15. 15. Enforcement of Intellectual Property Rights Someone else’s trade mark may have been used by a company on similar or identical goods of lesser quality, harming thus the reputation of the legitimate owner, and inflicting on him or her serious financial loss, let alone exposing customer’s health to danger. Somebody may be using the geographical denomination of “Roquefort” on cheese manufactured elsewhere than in the region of Roquefort in France, thus deceiving the consumers as well as taking away business from legitimate producers. 01 March 2011 Allicance Institute, Hyderabad 15
  16. 16. Enforcement of Intellectual Property Rights In all such cases intellectual property rights (i.e. copyright, related rights, trademarks, geographical indications) have been infringed. It is important that in such cases enforcement mechanisms be called into play to protect not only the legitimate interests of the rights of the owners, but also of the public. 01 March 2011 Allicance Institute, Hyderabad 16
  17. 17. Emerging Issues in Intellectual Property Intellectual property plays an important role in an increasingly broad range of areas, ranging from the internet to health care, to nearly all aspects of science and technology, literature and the arts. The following two topics, Biotechnology and Traditional Knowledge, are now being discussed at length at the international arena. 01 March 2011 Allicance Institute, Hyderabad 17
  18. 18. Biotechnology • What is Biotechnology? Biotechnology is a field of technology of growing importance in which inventions may have a significant effect on our future, particularly in medicine, food, agriculture, energy and protection of the environment. The science of biotechnology concerns living organisms, such as plants, animals, seeds and microorganisms, as well as biological material, such as enzymes, proteins and plasmids (which are used in “genetic engineering”) 01 March 2011 Allicance Institute, Hyderabad 18
  19. 19. Traditional Knowledge • Traditional knowledge-used here broadly to refer to tradition-based innovations and creations resulting from intellectual activity in the industrial, scientific, literary or artistic fields-had been largely over-looked in the IP community until quite recently. • It is now increasingly recognized that the economic value of traditional knowledge assets could be further enhanced by the use of IP. 01 March 2011 Allicance Institute, Hyderabad 19
  20. 20. What is Meant by Intellectual Property? • Intellectual property is a right you have on your creations, like a film, a musical composition, an invention, a brand name, etc. • If you have an intellectual property (IP) over any of your work or ideas, others need to take your permission before using it. • Otherwise you can initiate legal action against such persons. 01 March 2011 Allicance Institute, Hyderabad 20
  21. 21. What is Meant by Intellectual Property? • Intellectual property refers to the right over the intellectual work and not the work itself. The work can be either artistic or commercial. • The artistic works come under the category of copyright laws, while the commercial ones, also known as industrial properties, are ruled by copyrights, trademarks, industrial design rights and trade secrets. • Copyright laws deal with the intellectual property of creative works like books, music, software, painting, etc. • Industrial properties cover those created and used for industrial or commercial purposes. • As stated earlier, intellectual property is categorized into various types as per the nature of work. • The most common types of intellectual property are copyrights, trademarks, patents, industrial design rights and trade secrets. 01 March 2011 Allicance Institute, Hyderabad 21
  22. 22. What is Intellectual Property The history of the human race is a history of the application of imagination, or innovation and creativity, to an existing base of knowledge in order to solve problems or express thoughts. Penicillin, plant medicines and cures in Southern Africa, the transistor, semiconductor nanotechnology, recombinant DNA drugs, and countless other discoveries and innovations, it has been the imagination of the world’s creators that has enabled humanity to advance to today’s levels of technological progress. 01 March 2011 22Allicance Institute, Hyderabad
  23. 23. Definition Intellectual property ... a category of intangible rights protecting commercially valuable products of the human intellect. The category comprises primarily trademark, copyright, and patent rights, but also includes trade-secret rights, publicity rights, moral rights, and rights against unfair competition. 01 March 2011 Allicance Institute, Hyderabad 23
  24. 24. Scope 1.The pharmaceutical industry has relied to a considerable degree on contracting and outsourcing, especially upstream in R&D through various licensing arrangements and down stream through co-marketing agreements. This is referred to as the cluster approach. 2. Expanded sharing information including creation / use of collaborative knowledge network (CNK), can greatly enhance the company performance. 01 March 2011 24Allicance Institute, Hyderabad
  25. 25. Scope 3.More web-based approaches will provide the foundation for these systems. 4.The greatest positive impact of IT is likely to be in R&D Where systems can contribute to faster approval and market introduction of products. 5.To attain leading position in branded products, they must emulate their global counterparts in initiating strategic alliance with smaller biotech company, which are expected to key future source of innovation. 01 March 2011 Allicance Institute, Hyderabad 25
  26. 26. Scope 6. Focusing on physician as key decision-makers has long been a priority of the pharmaceutical industry ; physician will continue to be the most important gatekeeper to the market. ? The patient direct consumer of pharmaceutical can do this better collection and analysis of consumer data related to products both currently marketed and in development. Additional advantage to identify patient populations for clinical trials, facilitating the expansion of research efforts related to personalized medicines and contributing to overall R&D productivity. 01 March 2011 Allicance Institute, Hyderabad 26
  27. 27. Patents 01 March 2011 Allicance Institute, Hyderabad 27 • Patents for: – The drug substance itself: • Chemical composition of the API – Method of use: • Use of the drug to treat a particular condition – The formulation: • The physical form of a drug and method of administration – The process of making it: • Manufacturing methods
  28. 28. Objective of Patent a) To protect the rights of the University, its innovators, inventors, research sponsors and the public; b) To eliminate the infringement, improper exploitation and abuse of the University's intellectual assets belonging to the University or the other persons; c) To optimize the environment and incentives for research and for the creation of new knowledge; 01 March 2011 28Allicance Institute, Hyderabad
  29. 29. Objective of Patent d) To promote linkages with industry and stimulate research through developing and utilizing novel technologies and creative works for commercialization and plough back resources the University and to the interested parties; e) To promote creativity and innovation; and f) To ensure fair and equitable distribution of all benefits accruing from all innovations and inventions. 01 March 2011 Allicance Institute, Hyderabad 29
  30. 30. Types of Patents Patents come in all shapes and sizes. The three basic types are 1. Utility (useful devices and processes), 2. Design (appearance of a useful device), and 3. Plant Patents (man-made plant varieties). 01 March 2011 30Allicance Institute, Hyderabad
  31. 31. Contents of Patent • Normally it should contain the following matter 1. Title of invention 2. Field of invention 3. Background of invention with regard to the drawback associated with known art, 4. Object of invention, 5. Statement of invention 6. A. summary of invention 7. A brief description of the accompanying drawing 8. Detailed description of the invention with reference to drawing/examples 9. Claim(s) 10. Abstrct 01 March 2011 Allicance Institute, Hyderabad 31
  32. 32. Claims of Patents What is claimed is: A pharmaceutical formulation comprising: a substantially clear solution in a soft gelatin capsule, wherein the solution comprises:……. 01 March 2011 32Allicance Institute, Hyderabad
  33. 33. Claims of Patents • An orally administrable pharmaceutical composition according to any of the preceding claims m through to n, the composition devised into an improved drug delivery device comprising a soft gelatin capsule having … • An orally administrable soft gelatin capsule as substantially herein described with reference to the description and the examples. 01 March 2011 Allicance Institute, Hyderabad 33
  34. 34. Types of Claims • This is a list of special types of claims that may be found in a patent or patent application. For explanations about independent and dependent claims and about the different categories of claims, i.e. product or apparatus claims (claims referring to a physical entity), and process, method or use claims (claims referring to an activity), see Claim (patent), section "Basic types and categories". 01 March 2011 Allicance Institute, Hyderabad 34
  35. 35. Types of Claims 1. Jepson 2. Markush 01 March 2011 Allicance Institute, Hyderabad 35
  36. 36. Jepson • Jepson claim is a method or product claim where one or more limitations are specifically identified as a point of novelty, distinguishable over at least the contents of the preamble. • Jepson claim can be useful in calling the examiner's attention to a point of novelty of an invention without requiring the applicant to present arguments and possibly amendments to communicate the point of novelty to the Examiner. • On the other hand, the claim style plainly and broadly admits that that subject matter described in the preamble is prior art. 01 March 2011 Allicance Institute, Hyderabad 36
  37. 37. Markush • Mainly used in chemistry, but not only, a Markush claim or structure is a claim with multiple "functionally equivalent" chemical entities allowed in one or more parts of the compound. • No patent databases generate all possible permutations and index them separately. Patent searchers have the problem, when searching for specific chemicals in patents, of trying to find all patents with Markush structures that would include their chemicals, even though these patents' indexing would not include the suitable specific compounds. 01 March 2011 Allicance Institute, Hyderabad 37
  38. 38. Types of Claims • There are many different types of claims of a patent application. Some patent claims are about the type of invention. There are apparatus claims, method or process claims, claims to designs, chemical composition, and so on. • There are also ones which are related to the scope of a patent. Generally speaking, broad patent claims are more valuable and marketable than narrow ones. • Broad patent claims are similar to a fishing net. The bigger the net, the more fish on your plate. 01 March 2011 38Allicance Institute, Hyderabad
  39. 39. Types of Claims • In patent terms, a broad claim will give you a larger monopoly and potentially more opportunities for licensing. • Narrow claims are ones with less scope. These ones are more difficult to infringe, and are typically less valuable. • The narrowest ones are called "picture claims” • There are also independents and dependents. 01 March 2011 Allicance Institute, Hyderabad 39
  40. 40. Types of Claims • In other words, you can pretend that there is no period between the independent claim and the dependents because the dependents is conflated in scope with the independent claim. • It should be noted that if the independent is infringed, you do not need to worry about the dependent claims. However, if there is no infringement on the independent claim, but there is infringement on the dependent claim, there is still infringement. 01 March 2011 Allicance Institute, Hyderabad 40
  41. 41. Key terminology used in Patents 1. Application 2. Examiner 3. Prior art 4. Priority 5. Specifications 6. Provisional and Non-provisional applications 7. Claims 8. Applicant 9. Assignee 10. Inventor 11. Anticipation 12. Obviousness 13. Infringement and Invalidation 01 March 2011 41Allicance Institute, Hyderabad
  42. 42. 1. Application Types of Patent Applications a. Ordinary Application b. Application for Patent of Addition (granted for Improvement or Modification of the already patented invention, for an unexpired term of the main patent) c. Divisional Application (in case of plurality of inventions disclosed in the main application) d. Convention application, claiming priority date on the basis of filing in Conventional Country e. National Phase Application under PCT 01 March 2011 42Allicance Institute, Hyderabad
  43. 43. 2. Examiner • Patent examiners review patent applications to determine whether the claimed invention should be granted a patent. The work of a patent examiner usually includes searching patents and scientific literature databases for prior art, and examining patent applications substantively by examining whether the claimed invention meets the patentability requirements such as novelty, "inventive step" or "non- obviousness", "industrial application" (or "utility") and sufficiency of disclosure. • In most countries, Examiners are high level employees with clerical staff working under their supervision in supporting roles. For example, in the Indian Patent Office, an entry level Examiner is a Group A gazetted officer. This is the highest post in the set-up of the Indian Government. 01 March 2011 43Allicance Institute, Hyderabad
  44. 44. 3. Prior art • The definition of “prior art” differs from country to country. In many countries, any invention made available to the public anywhere in the world in written form, by oral communication, by display or through use constitutes the prior art. • Thus, in principle, the publication of the invention in a scientific journal, its presentation in a conference, its use in commerce or its display in a company’s catalogue would all constitute acts that could destroy the novelty of the invention and render it not patentable. 01 March 2011 44Allicance Institute, Hyderabad
  45. 45. 3. Prior art • The disclosure of an invention so that it becomes part of the prior art may take place in three ways, namely: * by a description of the invention in a published writing or publication in other form; * by a description of the invention in spoken words uttered in public, such a disclosure being called an oral disclosure; * by the use of the invention in public, or by putting the public in a position that enables any member of the public to use it, such a disclosure being a “disclosure by use.” 01 March 2011 Allicance Institute, Hyderabad 45
  46. 46. 4. Priority • Patent priority relates to the issue of who is entitled to a patent when two different inventors create the same invention and seek patents on those inventions. For example, suppose that Inventor A invents a Gadget in 1990 and files a patent application in 1992. Meanwhile, Inventor B invents the same Gadget in 1991 (after Inventor A invented his) but files his patent application that same year, in 1991 (before Inventor A filed his patent application). • So Inventor A invented the Gadget first, but Inventor B filed his patent application first. The issue of who gets the patent is the issue of “patent priority.” In the United States, the issue of patent priority is determined by the so-called “first to invent” rule. 01 March 2011 46Allicance Institute, Hyderabad
  47. 47. 5. Specifications • Provisional Specification • Complete Specification 01 March 2011 Allicance Institute, Hyderabad 47
  48. 48. Provisional Specification • Describes essential features of the Invention • Does not require claims and abstract • Secure the Prior right • Liberty to develop the Invention • Get time for testing commercial possibility of the Invention. 01 March 2011 Allicance Institute, Hyderabad 48
  49. 49. Complete Specification • Is filed within 12 months from the date of the provisional application • Include improvement associated with the subject matter of the provisional application • Subject to examination • Subject to acceptance & grant 01 March 2011 Allicance Institute, Hyderabad 49
  50. 50. 5. Specifications Provisional Specification • Application for patent may be accompanied by the provisional specification. • It should contain the description of invention with drawing, if required. • It is not necessary to include Claim. • However, the complete specification should be fairly based on the matter disclosed in the provisional specification and should be filed within 12 months. • If the complete specification is not filed within 12 months the application is deemed to have been abandoned. 01 March 2011 Allicance Institute, Hyderabad 50
  51. 51. 5. Specifications Complete Specification • The complete specification is an essential document in the filing of patent application along with the drawing to be attached according to the necessity. • Complete specification shall full describe the invention with reference to drawing, if required, disclosing the best method known to the applicant and end with Claim/Claims defining the scope of protection sought. • The specification must be written in such a manner that person of ordinary skill in the relevant field, to which the invention pertains, can understand the invention 01 March 2011 Allicance Institute, Hyderabad 51
  54. 54. 5. Specifications • COMPLETE SPECIFICATION • Complete Specification is a techno-legal document, which fully and particularly describes the invention and the best method of performing it. • Complete specification may be followed by • Drawings (if any). 01 March 2011 Allicance Institute, Hyderabad 54
  55. 55. 5. Specifications Contents of Complete/Provisional Specification [Form- 2] (S.10) a) Title b) Field of the invention. c) State of the art in the field d) Object of the invention (Problem & Solution) e) Statement of invention f) Detailed description of the invention with reference to the drawings. g) Scope and/or ambit of the invention h) Claims i) Figs and Examples j) Abstract 01 March 2011 Allicance Institute, Hyderabad 55
  56. 56. 6. Provisional and Non-provisional applications Provisional Patent Application • Since June 8, 1995, the USPTO has offered inventors the option of filing a provisional application. • Claims and oath or declaration are NOT required for a provisional application. • Provisional application provides the means to establish an early effective filing date in a patent application and permits the term "Patent Pending" to be applied in connection with the invention. 01 March 2011 Allicance Institute, Hyderabad 56
  57. 57. 6. Provisional and Non-provisional applications • Provisional applications may not be filed for design inventions. • The filing date of a provisional application is the date on which a written description of the invention, drawings if necessary, and the name of the inventor(s) are received in the USPTO. • To be complete, a provisional application must also include the filing fee, and a cover sheet specifying that the application is a provisional application for patent. 01 March 2011 Allicance Institute, Hyderabad 57
  58. 58. 6. Provisional and Non-provisional applications • The applicant would then have up to 12 months to file a non-provisional application for patent as described above. • The claimed subject matter in the later filed non- provisional application is entitled to the benefit of the filing date of the provisional application if it has support in the provisional application. • The 12 month pendency for a provisional application is not counted toward the 20 year term of a patent granted on a subsequently filed non-provisional application which relies on the filing date of the provisional application 01 March 2011 Allicance Institute, Hyderabad 58
  59. 59. 6. Provisional and Non-provisional applications Non-Provisional Patent Application • A non-provisional application for a patent is made to the Assistant Commissioner for Patents and includes: • A written document which comprises a specification (description and claims), and an oath or declaration; • A drawing in those cases in which a drawing is necessary; and The filing fee. • All application papers must be in the English language or a translation into the English language will be required along with the required fee. 01 March 2011 59Allicance Institute, Hyderabad
  60. 60. 6. Provisional and Non-provisional applications • The application for patent is not forwarded for examination until all required parts, complying with the rules related thereto, are received. • If any application is filed without all the required parts for obtaining a filing date (incomplete or defective), the applicant will be notified of the deficiencies and given a time period to complete the application filing (a surcharge may be required) – at which time a filing date as of the date of such a completed submission will be obtained by the applicant. • If the omission is not corrected within a specified time period, the application will be returned or otherwise disposed of; the filing fee if submitted will be refunded less a handling fee as set forth in the fee schedule. 01 March 2011 Allicance Institute, Hyderabad 60
  61. 61. 6. Provisional and Non-provisional applications • All applications received in the USPTO are numbered in sequential order and the applicant will be informed of the application number and filing date by a filing receipt. • The filing date of an application for patent is the date on which a specification (including at least one claim) and any drawings necessary to understand the subject matter sought to be patented are received in the USPTO; or the date on which the last part completing the application is received in the case of a previously incomplete or defective application. 01 March 2011 Allicance Institute, Hyderabad 61
  62. 62. 7. Claims • A set of properly drafted claims is an important part of complete specification. • The complete specification must have at least one Claim. • The first claim is the main claim. • The subsidiary claims refer to the main claim and include qualifying or explanatory clauses on the various integers of the main claim or optional features. 01 March 2011 Allicance Institute, Hyderabad 62
  63. 63. 7. Claims • They may also contain independent claims. • Although the claim clauses consist of a number of claims, the totality of the claims must relate to one invention only. • It should be noted that a claim is a statement of technical facts expressed in legal terms defining the scope of the invention sought to be protected. 01 March 2011 Allicance Institute, Hyderabad 63
  66. 66. 7. Claims • The claims of a patent specification define the scope of protection of a patent granted by the patent. • The claims describe the invention in a specific legal style, setting out the essential features of the invention in a manner to clearly define what will infringe the patent. • Claims are often amended during prosecution to narrow or expand their scope. • Independent claim setting out the broadest protection, and a number of dependent claims which narrow that protection by defining more specific features of the invention. • In the U.S., claims can be amended after a patent is granted, but their scope cannot be broadened beyond what was originally disclosed in the specification. No claim broadening is allowed more than two years after the patent issues. 01 March 2011 Allicance Institute, Hyderabad 66
  67. 67. 8. Applicant ? 01 March 2011 67Allicance Institute, Hyderabad
  68. 68. 9. Assignee • Assignee includes an assignee of the assignee and the legal representative of a deceased assignee and references to the assignee of any person include references to the assignee of the legal representative or assignee of that person 01 March 2011 68Allicance Institute, Hyderabad
  69. 69. 10. Inventor • In patent law, an inventor is the person, or persons in United States patent law, who contribute to the claims of a patentable invention. • "Joint inventors", or "co-inventors", exist when a patentable invention is the result of inventive work of more than one inventor. Joint inventors exist even where one inventor contributed a majority of the work. 01 March 2011 Allicance Institute, Hyderabad 69
  70. 70. 11. Anticipation • If a claim reads on a single item of prior art – a printed publication or a product – then that item of prior art “anticipates” the claim must be rejected under Section 102. • Sometimes, however, a claim does not read on a single item of prior art, but instead reads on a combination of two or more items. In that case, the claim may be “obvious” under Section 103. 01 March 2011 70Allicance Institute, Hyderabad
  71. 71. 11. Anticipation • An examiner, who generally has a degree in science or engineering (and in some cases, even a Ph.D. in the area he or she is examining), can also take notice that something is generally known in the field, although it is preferable to cite to one or more references. • The references that the examiner has considered are listed on the first page of the patent. 01 March 2011 Allicance Institute, Hyderabad 71
  72. 72. 12. Obviousness • First: Exactly who determines whether something is obvious? Traditionally this was a person who knows everything but has no creativity. • However, one of the ways that the Supreme Court has made obviousness stricter is by alluding to the fact that a person who combines invention A with invention B may in fact possess some creativity. 01 March 2011 72Allicance Institute, Hyderabad
  73. 73. 12. Obviousness • Going back to our example of the orange juice squeezer on the pump: Let’s presume that you made a very unique formula comprising, for example, an epoxy. • This epoxy is very efficient in securing a plastic orange juice squeezer to a wooden handle on an air pump. • In this case, you might be able to apply and obtain a patent for this unique formula epoxy, but claiming the combination of an air pump and orange juice squeezer with the epoxy, might be deemed obvious, and hence would not be granted a patent. 01 March 2011 Allicance Institute, Hyderabad 73
  74. 74. 13. Infringement and Invalidation • Patent infringement is the commission of a prohibited act with respect to a patented invention without permission from the patent holder. • Permission may typically be granted in the form of a license. • The definition of patent infringement may vary by jurisdiction, but it typically includes using or selling the patented invention. • In many countries, a use is required to be commercial (or to have a commercial purpose) to constitute patent infringement. • The scope of the patented invention or the extent of protection is defined in the claims of the granted patent. • In other words, the terms of the claims inform the public of what is not allowed without the permission of the patent holder. 01 March 2011 74Allicance Institute, Hyderabad
  75. 75. 13. Infringement and Invalidation • Patents are territorial, and infringement is only possible in a country where a patent is in force. • For example, if a patent is filed in the United States, then anyone in the United States is prohibited from making, using, selling or importing the patented item, while people in other countries may be free to make the patented item in their country. • The scope of protection may vary from country to country, because the patent is examined by the patent office in each country or region and may have some difference of patentability, so that a granted patent is difficult to enforce worldwide. 01 March 2011 Allicance Institute, Hyderabad 75
  76. 76. 13. Infringement and Invalidation Why invalidate? • Invalidity searches can be useful as a defensive tool when a company is concerned about infringing a particular patent. • • An invalidity search attempts to uncover issued patents or other published prior art that may render a patent partially or completely invalid. • In contrast, validity searches can also be used to invalidate an in-force patent thereby allowing a company to practice that technology without paying royalties to the firm that holds the rights to the patent in question 01 March 2011 Allicance Institute, Hyderabad 76
  77. 77. 13. Infringement and Invalidation What is required to invalidate? • Active or lapsed or expired patent/publication • Non-patent literature – Scientific literature – Old sales catalogs – Trade journals – Conference etc… • The most importantly the priority date of source document should be prior to the priority date of the patent to be invalidated, in case of US • In case of German, the publication date of source document should be prior to the priority date of the patent to be invalidated 01 March 2011 Allicance Institute, Hyderabad 77
  78. 78. SOURCES OF INFORMATION • www.ipindia.nic.in • www.tdb.india.com • www.nifindia.org • www.indiainnovates.com • www.sristi.org • www.nrdcindia.com • www.techbizindia.com • www.wipo.org • www.uspto.gov.in • www.epo.org 01 March 2011 78Allicance Institute, Hyderabad
  79. 79. SOURCES OF INFORMATION 01 March 2011 79Allicance Institute, Hyderabad
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  91. 91. 01 March 2011 Allicance Institute, Hyderabad 91 THANK YOU E-mail: bknanjwade@yahoo.co.in Cell No:00919742431000