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THIRD-IP Intellectual Property Services LLP https://thirdip.com/ Patent Filing Strategies Dr. Sanchita Tewari Designated Partner (Patent Agent)

Patent Filing Strategies · •THIRDIP Provides Patent and Literature informatics services with keen interest in – •RESEARCH, PRODUCT, PATENT •Novelty search, Prior art search

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Page 1: Patent Filing Strategies · •THIRDIP Provides Patent and Literature informatics services with keen interest in – •RESEARCH, PRODUCT, PATENT •Novelty search, Prior art search

THIRD-IP Intellectual Property Services LLPhttps://thirdip.com/

Patent Filing Strategies

Dr. Sanchita TewariDesignated Partner

(Patent Agent)

Page 2: Patent Filing Strategies · •THIRDIP Provides Patent and Literature informatics services with keen interest in – •RESEARCH, PRODUCT, PATENT •Novelty search, Prior art search

• Thank you all participants for joining with us and investing your valuable time in to this webinar and for giving me the opportunity to talk about Patents and it’s Filing Strategies.

• Today, I would like to highlight the importance of this topic of Filing Strategy in the life of students, researchers, development, professional, project, proposal, individuals, Colleges, startup, MSME.

THIRD-IP Intellectual Property Services LLP https://thirdip.com/

Page 3: Patent Filing Strategies · •THIRDIP Provides Patent and Literature informatics services with keen interest in – •RESEARCH, PRODUCT, PATENT •Novelty search, Prior art search

Dr. Sanchita Tewari - Introduction

❖ B.Sc & M.Sc Food Science & Tech, Biochemistry

❖ ICAR IGFRI PhD-Biochemistry & Mol. Bio. Lab

❖ Lovely Professional University Senior Lecturer

❖ University Of - TA & RA (Biological North Texas Sciences and Bioinformatics lab)

❖Women Scientist- DST- CSIR URDIP

❖ THIRD-IP Intellectual - Designated Partner

Property Services LLP, https://thirdip.com/

Page 4: Patent Filing Strategies · •THIRDIP Provides Patent and Literature informatics services with keen interest in – •RESEARCH, PRODUCT, PATENT •Novelty search, Prior art search

QUIZ LINK https://thirdip.com/boat2learn/

THIRD-IP Intellectual Property Services LLP https://thirdip.com/

Page 5: Patent Filing Strategies · •THIRDIP Provides Patent and Literature informatics services with keen interest in – •RESEARCH, PRODUCT, PATENT •Novelty search, Prior art search

• THIRDIP Provides Patent and Literature informatics services with keen interest in –

• RESEARCH, PRODUCT, PATENT

• Novelty search, Prior art search & Patentability opinion

• Patent Infringement and Invalidation strategies & possibilities

• Technical reports – Products, processes

• Chemical information services

• Patent filing – Life Sciences, Chem, Pharma, Mechanical

• Boat2learn – Educational Platform, Patent Agent Training

• THIRDIP YouTube Channel -

• Webinars –Quiz Certificates QUERY -8169899640

THIRD-IP Intellectual Property Services LLP https://thirdip.com/

Page 6: Patent Filing Strategies · •THIRDIP Provides Patent and Literature informatics services with keen interest in – •RESEARCH, PRODUCT, PATENT •Novelty search, Prior art search

TOPICS

Types of Applicants

Ownership of IP

IP in Employment

Patent filing Strategy

Case study

THIRD-IP Intellectual Property Services LLP https://thirdip.com/

Page 7: Patent Filing Strategies · •THIRDIP Provides Patent and Literature informatics services with keen interest in – •RESEARCH, PRODUCT, PATENT •Novelty search, Prior art search

Types of Applicants

Natural person

Startups

Small Entity

Other than natural/Small entity -> Large Entity

THIRD-IP Intellectual Property Services LLP https://thirdip.com/

Page 8: Patent Filing Strategies · •THIRDIP Provides Patent and Literature informatics services with keen interest in – •RESEARCH, PRODUCT, PATENT •Novelty search, Prior art search

Inventor – True and First Inventor

OriginatorX ImporterX Outside Communication

THIRD-IP Intellectual Property Services LLP https://thirdip.com/

Page 9: Patent Filing Strategies · •THIRDIP Provides Patent and Literature informatics services with keen interest in – •RESEARCH, PRODUCT, PATENT •Novelty search, Prior art search

Ownership Of IP ?

Applicant – Grantee - Assignee

Assignment – Inventor

THIRD-IP Intellectual Property Services LLP https://thirdip.com/

Page 10: Patent Filing Strategies · •THIRDIP Provides Patent and Literature informatics services with keen interest in – •RESEARCH, PRODUCT, PATENT •Novelty search, Prior art search

IP in Employment

Time

Resources

Equipments

THIRD-IP Intellectual Property Services LLP https://thirdip.com/

Page 11: Patent Filing Strategies · •THIRDIP Provides Patent and Literature informatics services with keen interest in – •RESEARCH, PRODUCT, PATENT •Novelty search, Prior art search

Patent Filing Strategy

Market – Business - License

THIRD-IP Intellectual Property Services LLP https://thirdip.com/

Page 12: Patent Filing Strategies · •THIRDIP Provides Patent and Literature informatics services with keen interest in – •RESEARCH, PRODUCT, PATENT •Novelty search, Prior art search

STRATEGY

Provisional Patent Application(s)

Developments

Combine All -> Complete Patent Application

Patent Of Addition – Complete Patent Applications

THIRD-IP Intellectual Property Services LLP https://thirdip.com/

Page 13: Patent Filing Strategies · •THIRDIP Provides Patent and Literature informatics services with keen interest in – •RESEARCH, PRODUCT, PATENT •Novelty search, Prior art search

STRATEGY

Developments, Modifications, Improvements, Usage

Patent Of Addition - Patent Applications

Alternatives possible, manufacturing processes

Design around X Licensing - OPTION

THIRD-IP Intellectual Property Services LLP https://thirdip.com/

Page 14: Patent Filing Strategies · •THIRDIP Provides Patent and Literature informatics services with keen interest in – •RESEARCH, PRODUCT, PATENT •Novelty search, Prior art search

When to File patent application ?

Too earlyEarlyLate Too late

Protect Your Invention

Variations, Versions, Updation - Possible

THIRD-IP Intellectual Property Services LLP https://thirdip.com/

Page 15: Patent Filing Strategies · •THIRDIP Provides Patent and Literature informatics services with keen interest in – •RESEARCH, PRODUCT, PATENT •Novelty search, Prior art search

Publication of Patent Application

18 months - SecretNo Publication - WithdrawEarly Publication –~One monthLagging behind in Work

Protection of Invention

THIRD-IP Intellectual Property Services LLP https://thirdip.com/

Page 16: Patent Filing Strategies · •THIRDIP Provides Patent and Literature informatics services with keen interest in – •RESEARCH, PRODUCT, PATENT •Novelty search, Prior art search

THIRD-IP Intellectual Property Services LLP https://thirdip.com/

Examination of Patent Application

Examination 48 MonthsExpedited ExaminationWithdrawLagging behind in WorkBefore Grant - Withdraw

Page 17: Patent Filing Strategies · •THIRDIP Provides Patent and Literature informatics services with keen interest in – •RESEARCH, PRODUCT, PATENT •Novelty search, Prior art search

THIRD-IP Intellectual Property Services LLP https://thirdip.com/

Patentability Criteria

Novelty Of InventionKILLS

Prior Art

Publishing before Patent ? X

Page 18: Patent Filing Strategies · •THIRDIP Provides Patent and Literature informatics services with keen interest in – •RESEARCH, PRODUCT, PATENT •Novelty search, Prior art search

PRIOR ART -> PATENTABILITY?

Provisional Patent Application Publication, seminar, conference etc.

Complete Patent ApplicationComplete research with results

THIRDIP INTELLECTUAL PROPERTY SERVICES LLP

THIRD-IP Intellectual Property Services LLP https://thirdip.com/

Page 19: Patent Filing Strategies · •THIRDIP Provides Patent and Literature informatics services with keen interest in – •RESEARCH, PRODUCT, PATENT •Novelty search, Prior art search

Publication Patent

Experiments Invention

Results Application

Product

Market

IP-Confidential

Identification, Protection

THIRDIP INTELLECTUAL PROPERTY SERVICES LLP

THIRD-IP Intellectual Property Services LLP https://thirdip.com/

Page 20: Patent Filing Strategies · •THIRDIP Provides Patent and Literature informatics services with keen interest in – •RESEARCH, PRODUCT, PATENT •Novelty search, Prior art search

THIRD-IP Intellectual Property Services LLP https://thirdip.com/

Multiple Filings

Single Priority – All in One

Multiple Priority - Separate

Page 21: Patent Filing Strategies · •THIRDIP Provides Patent and Literature informatics services with keen interest in – •RESEARCH, PRODUCT, PATENT •Novelty search, Prior art search

Multiple Filings

Composition/Formulation/Combination/Product

Device

Apparatus

Machine

Useful Improvement

Process/Method

THIRD-IP Intellectual Property Services LLP https://thirdip.com/

Page 22: Patent Filing Strategies · •THIRDIP Provides Patent and Literature informatics services with keen interest in – •RESEARCH, PRODUCT, PATENT •Novelty search, Prior art search

Purpose of filing patent

application

Recognition

Publication

Prior Art

Competition

Patent

License/Reward

Revenue

THIRD-IP Intellectual Property Services LLP https://thirdip.com/

Page 23: Patent Filing Strategies · •THIRDIP Provides Patent and Literature informatics services with keen interest in – •RESEARCH, PRODUCT, PATENT •Novelty search, Prior art search

Filing PCT Application

THIRD-IP Intellectual Property Services LLP https://thirdip.com/

THIRDIP INTELLECTUAL PROPERTY SERVICES LLP

Page 24: Patent Filing Strategies · •THIRDIP Provides Patent and Literature informatics services with keen interest in – •RESEARCH, PRODUCT, PATENT •Novelty search, Prior art search

PCT - Patent Cooperation Treaty

• International application- An patent application filed under this Treaty

• Advantages

• 1. One application designated to all member countries

• 2. One office

• 3. One language

• 4. International Search Report – Decision Business

• 5. Time delay

• 6. Online filing

• 7. International Phase – National Phase –> Regional

• PATENT GRANT – NATIONAL PATENT OFFICE

THIRD-IP Intellectual Property Services LLP https://thirdip.com/

Page 25: Patent Filing Strategies · •THIRDIP Provides Patent and Literature informatics services with keen interest in – •RESEARCH, PRODUCT, PATENT •Novelty search, Prior art search

Patent

• Product

• Process

THIRD-IP Intellectual Property Services LLP https://thirdip.com/

Scientific Article

• Supportive findings for

Regulatory submission

• Analysis – Method

Development Procedure

• Clinical Study Results

THIRDIP INTELLECTUAL PROPERTY SERVICES LLP

Page 26: Patent Filing Strategies · •THIRDIP Provides Patent and Literature informatics services with keen interest in – •RESEARCH, PRODUCT, PATENT •Novelty search, Prior art search

Startups

-Assets

Govt. Schemes – Rebate - IP asset

Block Competitors - IP

IP - Partnership, Business

Investment –IP

Screening of IP intervals– IP monitoring

Highly Potential – Protect IP

Less Potential – Halt - IP strategy

Recognition /Reputation

Acquisition, Merger, Sale – IP valuation

THIRD-IP Intellectual Property Services LLP https://thirdip.com/

Page 27: Patent Filing Strategies · •THIRDIP Provides Patent and Literature informatics services with keen interest in – •RESEARCH, PRODUCT, PATENT •Novelty search, Prior art search

Small Medium EnterprisesFocus on Research & Development Protection of IPR simultaneouslyContinuous developments - UpdatesAdvertising / MarketingProduct UniquenessProfit, Revenue, SalesLicensingIP Management, Patent Portfolio

THIRD-IP Intellectual Property Services LLP https://thirdip.com/

Page 28: Patent Filing Strategies · •THIRDIP Provides Patent and Literature informatics services with keen interest in – •RESEARCH, PRODUCT, PATENT •Novelty search, Prior art search

TRADE SECRET - NDAMixing sequence, Formulas, patterns, compilations, programs, devices, methods, techniques, processes.

Emails, customer lists and manufacturing processes.

Competitive advantage – market

COPYING x

THIRD-IP Intellectual Property Services LLP https://thirdip.com/

Page 29: Patent Filing Strategies · •THIRDIP Provides Patent and Literature informatics services with keen interest in – •RESEARCH, PRODUCT, PATENT •Novelty search, Prior art search

PRIOR ART SEARCHING

PATENTABILITY STUDY

PATENT LANDSCAPE

THIRD-IP Intellectual Property Services LLP https://thirdip.com/

Page 30: Patent Filing Strategies · •THIRDIP Provides Patent and Literature informatics services with keen interest in – •RESEARCH, PRODUCT, PATENT •Novelty search, Prior art search

THIRD-IP Intellectual Property Services LLP https://thirdip.com/

PATENT FILING STRATEGY EXAMPLE

Page 31: Patent Filing Strategies · •THIRDIP Provides Patent and Literature informatics services with keen interest in – •RESEARCH, PRODUCT, PATENT •Novelty search, Prior art search

THIRD-IP Intellectual Property Services LLP https://thirdip.com/

STUDY OF APPROVED DRUG PATENTS FILED IN USPTO - FILING STRATEGY

Page 32: Patent Filing Strategies · •THIRDIP Provides Patent and Literature informatics services with keen interest in – •RESEARCH, PRODUCT, PATENT •Novelty search, Prior art search

THIRD-IP Intellectual Property Services LLP https://thirdip.com/

STUDY OF APPROVED DRUG PATENTS FILED IN USPTO - FILING STRATEGY

Page 33: Patent Filing Strategies · •THIRDIP Provides Patent and Literature informatics services with keen interest in – •RESEARCH, PRODUCT, PATENT •Novelty search, Prior art search

THIRD-IP Intellectual Property Services LLP https://thirdip.com/

STUDY OF APPROVED DRUG PATENTS FILED IN USPTO - FILING STRATEGY

Page 34: Patent Filing Strategies · •THIRDIP Provides Patent and Literature informatics services with keen interest in – •RESEARCH, PRODUCT, PATENT •Novelty search, Prior art search

THIRD-IP Intellectual Property Services LLP https://thirdip.com/

STUDY OF APPROVED DRUG PATENTS FILED IN USPTO - FILING STRATEGY

Page 35: Patent Filing Strategies · •THIRDIP Provides Patent and Literature informatics services with keen interest in – •RESEARCH, PRODUCT, PATENT •Novelty search, Prior art search

THIRD-IP Intellectual Property Services LLP https://thirdip.com/

STUDY OF APPROVED DRUG PATENTS FILED IN USPTO - FILING STRATEGY

Page 36: Patent Filing Strategies · •THIRDIP Provides Patent and Literature informatics services with keen interest in – •RESEARCH, PRODUCT, PATENT •Novelty search, Prior art search

THIRD-IP Intellectual Property Services LLP https://thirdip.com/

Page 37: Patent Filing Strategies · •THIRDIP Provides Patent and Literature informatics services with keen interest in – •RESEARCH, PRODUCT, PATENT •Novelty search, Prior art search

THIRD-IP Intellectual Property Services LLP https://thirdip.com/

Page 38: Patent Filing Strategies · •THIRDIP Provides Patent and Literature informatics services with keen interest in – •RESEARCH, PRODUCT, PATENT •Novelty search, Prior art search

Questions ?Patent filing, Patent Agent Exam

Boat2learn – Educational Platform

THIRDIP LinkedIn, THIRDIP YouTube Channel, THIRDIP Facebook

Webinars –Quiz Certificates

QUERY - 7011406766

THIRDIP IPR SERVICES

Phone – 7011406766, 8169899640

• Email - [email protected] ;

[email protected]

• Website - https://thirdip.com/boat2learn/

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Page 39: Patent Filing Strategies · •THIRDIP Provides Patent and Literature informatics services with keen interest in – •RESEARCH, PRODUCT, PATENT •Novelty search, Prior art search

Disclaimer

This slides are for knowledge and teaching purpose, all

Trademark and Copyright materials included in the

presentation are the property of their corresponding

authors and not belong to the presenters.

For full disclaimer visit thirdip.com/disclaimer

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THIRD-IP Intellectual Property Services LLP https://thirdip.com/