Patents process of patenting v5.1

Patents, Process, Business Case & Career IPR Workshop, IPS Academy Indore

9th Apr 2016

By –

KRD Pravin email – [email protected]

Twitter - @krdpravin Mob – 0976.9378.150

All IP rights are with their respective owners

All IPs are used here for representative purpose only

© KRD Pravin 2016

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mailto:[email protected]

http://www.twitter.com/krdpravin

http://www.twitter.com/krdpravin

Disclaimer

This workshop is for information purpose

No parts of this workshop should be construed as “expert advice on a specific matter”

Please consult the trainer or a legal expert separately for detailed view on specific case/situation or business scenario

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© KRD Pravin 2016

+Business Example

+Contrary Examples

+Patent Commercialization

+Process for Patent

+ International Filing

+What’s not Patentable

+ Why and How?

+ Career Progression

+ What’s on offer

CONTENTS

+Brief on Patents

+Criteria for getting a Patent

Elaborating Patents

Business case for Patents

Process filing a Patent

Career in Patenting

01 02 03 04 INTRO

If you are tired of washing spoons, you have an option…

Edible Spoon

Does it remind you of

Can you patent these?

Source – http://ediblespoonmaker.com/ 4 © KRD Pravin 2016

Can you patent these?

Source – http://edriel.com/wp-content/uploads/2014/12/Captura-de-pantalla-2015-04-18-a-las-23.58.56.png 5 © KRD Pravin 2016

Intellect

• Idea

Property

• Expression

• Innovation/Invention

• Quality + Identity

• Appearance

• Confidential

Rights

• Copyrights

• Patent

• Trademark

• Design

• Trade secret

Remember…

Ideas and concepts are not protected

Protection is offered to tangible expression of idea and concept

The expression is termed as Intellectual Property

6 © KRD Pravin 2016

What is Patent?

A type of Intellectual Property

Granted for an invention for product or process

Patents are granted under the law of the land – There is nothing as Global or World-wide Patent currently

Offers monopoly rights to produce, market and prohibit others from doing the same (for patented invention)

20 years protection period from the date of filing of patent application


Criteria for Patented

Inventions in all fields of technology – no Atomic Energy though!

Products or processes

Criteria of Novel Non-obviousness (inventive step) Industrial application Not anticipated

8 8 © KRD Pravin 2016

Chapter 6

How I lost here?

Section 2.1.(ac)

Section 2.1.(j)

Criteria explained

Novel

Invention not known to public prior to claim by inventor

Inventive Step

Invention would not be obvious to a person with ordinary skill in the art

Industrial Application

Invention can be made or used in any useful, practical activity as distinct

from purely intellectual or aesthetic one

Not Anticipated

Not in public knowledge before filing of a patent 9 © KRD Pravin 2016

© KRD Pravin 2016

+Business Example

+Contrary Examples


+Process for Patent



+ Why and How?


+ What’s on offer

CONTENTS

+Brief on Patents


Elaborating Patents



Career in Patenting

01 02 03 04 INTRO

Impact of Intellectual Property

0%

20%

40%

60%

80%

100%

1975 1985 1995 2005 2015*

17% 32%

68% 80% 84%

83% 68%

32% 20% 16%

Components of S&P 500 Market Value

Intangible Tangbile

Source – Ocean Tomo LLC, Link

Plant, equipment, machinery

Patents, Market share,

other IP

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© KRD Pravin 2016

http://www.oceantomo.com/2015/03/04/2015-intangible-asset-market-value-study/

Contrasting Examples – Coke

• Coca-Cola soft drink formula a secret • It is rumored that they are not allowed to travel

together

• Formula only know to a few people

• Those who know the secret formula have signed non-disclosure agreements


Contrasting Examples – LEGO

• LEGO Patented stud and tube coupling system (the way bricks hold together) in 1958

• Today the patents have long expired and the company tries hard to keep out competitors by using designs, trademarks and copyright


Commercialization

Product / Service

Marketing

Commercialization

Legal

Licensing Court

proceeding


Idea to Invention to commercialization

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Idea - Worlds

Cheapest car

© KRD Pravin 2016

Patent

Trademark

Trade Secret

Design

Copyright

Novel & Inventive

Confidential Info &

Undisclosed Tech

External Appearance

Package Insert / Information

Leaflet

Brand Name RealFlex

Intellectual Property


© KRD Pravin 2016

+Business Example

+Contrary Examples


+Process for Patent



+ Why and How?


+ What’s on offer

CONTENTS

+Brief on Patents


Elaborating Patents



Career in Patenting

01 02 03 04 INTRO

PROCESS, JOURNAL, SAMPLE PATENT AND CERTIFICATE

Patent process takes about 48-60 months, lengthy process. Here is how you need to proceed

Process

Application

PCT Application

Publication

Certificate


Grant of Patent

Patents are granted by patent offices after publication and

substantial examination of the applications

In India provisions exist for pre-grant and post grant

opposition by others

Patents are valid within the territorial limits India

Foreigners can also apply for patents

Until recently (March 2013), US had ‘First-to-Invent’ clause for patent, now as per common practice, moved to

‘First-to-File’ 19 © KRD Pravin 2016

Process some pointers

Amendments can be done before grant of patent, with riders

Early publication request can be made

Fee to be paid time to time, for enforcement of patent

If fee not paid – patent will lapse

Anticipation (e.g. non-novel) Chapter 6 Sec 29-33 in certain situation Previous publication Previous communication to Govt Public display Public working


International agreements

PCT – Patent co-operation Treaty (Under WIPO)

PCT was done in 1970 in Washington

PCT application can be filed in 148 countries

Filing application in various countries through PCT

1 millionth application filed in 2004, next 1millionth in 2011

Only decline in Patent applications through PCT was in 2009 (Global slow down)!


PCT Process

(months)

File PCT application

12 0 30

International search report & written opinion

16 18

International publication

(optional) File demand for International preliminary examination

File local application

Enter national phase

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(optional) International preliminary report on patentability

Generally, a patent application in the home country of the applicant

Generally filed in same national patent office--one set of fees, one language, one set of formality requirements--and legal effect in all PCT States

Report on state of the art (prior art documents and their relevance) + initial patentability opinion

Disclosing to world content of application in standardized way

Request an additional patentability analysis on basis of amended application

Additional patentability analysis, designed to assist in national phase decision-making

Express intention and take steps to pursue to grant in various states


WHAT IS NOT PATENTABLE?


What is not patentable?

Chapter 2 Sec 3. a an invention, that is frivolous or that claims anything obviously contrary to well established natural laws Machine giving more than 100% performance Perpetual motion machine Newton’s laws of gravitation

Chapter 2 Sec 3.b a machine whose primary or intended use or commercial exploitation of which could be contrary to Public order or morality or which causes serious prejudice to human, animal or plant life or health or to the environment device for house-breaking Biological warfare material or device



Chapter 2 Sec 3.c mere Discovery of a Scientific Principle or Formulation of an Abstract Theory or discovery of any living thing or non–living substance occurring in nature

Discovery – disclosing/finding something, not seen before

Archimedes Principle Not patentable

Invention – an action resulting in a new product or new process

Using Archimedes Principle and making a Ship – can be patented



Chapter 2 Sec 3.d the mere discovery of a new form of a known substance which does not result in the enhancement of the known efficacy of that substance OR the mere discovery of any new property or new use for a known substance OR of the mere use of a known process, machine or apparatus, unless such known process results in a new product or employs at least one new reactant For the purposes of this clause salt, esters, ethers, polymorphs,

metabolites, pure form, particle size, isomers, mixtures of isomers, complexes, combination and other derivatives of known substance shall be considered to be the same substance, unless they differ significantly in properties with regard to efficacy



Chapter 2 Sec 3.e a substance obtained by mere admixture resulting only in the aggregation of the properties of the components thereof or a process for producing such substance

Adding Salt and sugar and making a paste which taste sugary and salty taste (admixture) without any additional property

Used in Ever-greening of patent, not allowed in India

a mixture resulting in synergistic properties of mixture of ingredients e.g. lubricant



Chapter 2 Sec 3.f mere arrangement or re-arrangement or duplication of known devices, each functioning independently of one another in a known way An Umbrella with fan

A flour-mill provided with sieving

Chapter 2 Sec 3.h method of Agriculture or Horticulture Producing new form of a known plant,

preparation of an improved soil

However, Agricultural Equipments are patentable



Chapter 2 Sec 3.i any process for the medicinal, surgical, curative, prophylactic, diagnostic, therapeutic or other treatment of human beings or any process for a similar treatment of animals to render them free of disease or to increase their economic value or that of their products Process is not patentable but Product can be…

Chapter 2 Sec 3.j plants and animals in whole or any part thereof other than micro- organisms, but including seeds, varieties and species and essentially biological process for production or propagation of plants & animals Clones and new varieties of plants: A process for production of plants or animals if it consists entirely of natural

phenomena such as crossing or selection



Chapter 2 Sec 3.k a mathematical method or a business method or a computer program per se or algorithms

Computer program or mathematical process

Chapter 2 Sec 3.l a literary, dramatic, musical or artistic work or any other aesthetic creation including cinematographic work and television productions

These properties fall in which IP protection?



Chapter 2 Sec 3.m a mere scheme or rule or method of performing mental act or method of playing game

An innovative golf club, for better shot is patentable

Chapter 2 Sec 3.n presentation of information

This presentation can be what?

What type of protection one can apply for?



Chapter 2 Sec 3.o topography of integrated circuits

Chapter 2 Sec 3.p an invention which, in effect, is the traditional Knowledge or an aggregation or duplication of known properties of traditionally known component or components This is anyways not Novel Any addition to the traditional knowledge creating new product or process is

patentable

Chapter 2 Sec 4 Inventions relating to atomic energy not patentable

Chapter 2 Sec 5 inventions where only method or processes of manufacture patentable


© KRD Pravin 2016

+Business Example

+Contrary Examples


+Process for Patent



+ Why and How?


+ What’s on offer

CONTENTS

+Brief on Patents


Elaborating Patents



Career in Patenting

01 02 03 04 INTRO

Why a Career in Patent Law?

Working with cutting edge technology Know what is happening well in advance.

New technology not previously disclosed.

Applied scientific knowledge Address real-world applications of the science

Opportunity to work on Diverse Technological Researches Exposure to a broader range of science and technology than does a

research career

Legal Intricacies Analyze scientific facts in a legal framework


Becoming a Patent Agent

Valid degree in science, engineering or technology (BE, BTech , BSc / MSc)

Indian citizen

21 years of age

Pass exam conducted by patent office Paper 1 on Patent Law

Paper 2 on Drafting & descriptive

Viva-voce

Pay registration fee


Jobs as a Patent expert

Corporates Filing

Licensing and valuation

Research Institutions / Academia

Govt jobs Patent Examiners with Patent Office

Advisor

KPOs

Law Firms

Entrepreneurship


Application Process & related works

Idea to Invention Application Publication Opposition if any

Resolution if applicable

Examination

• Opposition if any

• Resolution if applicable

Grant Maintenance

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Drawing Patent Search Office Action

Freedom to operate search

Invalidity search

State of art Search

Landscaping Prosecution

Spec Drafting

© KRD Pravin 2016

Infringement analysis Advisory services

Search results March 2016

IP intelligence Strategy formulation


THANK YOU!

© 2016, KRD Pravin +91-976.9378.150 [email protected] Twitter – @krdpravin

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mailto:[email protected]