Analyzing Patentability of Inventions - Presentation by Dr. Kalyan C. Kankanala at UPES School of Law

Analyzing Patentability of Inventions

Dr. Kalyan C. Kankanala

[email protected] URL: www.bananaip.com

Books: www.kalyankankanala.com

Patentability requirements

• Patentable subject matter

• Industrial Applicability

• Novelty

• Inventive Step

• Specification

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Patentable Subject Matter

Product or Process - Section 2(1)(j)

• Computer Program

• Genetically modified pig

• Business method

• Massage technique


Exclusions

Section 3(d)

• New form

– Efficacy

• New property or use

• Mere use of known process

– New product

– New reactant


Exclusions

• Explanation: Salts, Esters, Ethers, Polymorphs,

Metabolites, Pure forms, Particle size, Isomers, Mixture of

isomers, Complexes, Combinations and other Derivatives of

a known substance considered same substance

• Efficacy

• Novartis case


Exclusions

• Plants, Animals and Parts (Section 3(j))

• Computer Programs Per Se (Section 3(k))

• Medical Methods (Section 3(i))

• Traditional Knowledge (Section 3(p))


Example

• Kodi identifies and inserts a gene in a hen which

leads to the increase in the output of eggs (sixty

luminescent eggs per month). He is interested in

getting a patent on his invention.

• Can he get a patent and if yes, on what?


Example

• Som develops an android application for

assessing the mood of the caller. The app has

automated systems for rejecting calls of bad

mood callers. It also can recognize cold callers.

• Patentable?


Example

• Kini, a house wife and follower of Baba Ramdev,

develops a method of performing yoga that will help

astronauts adapt to low gravity environments. She

wishes to file for a patent in India.

• Will there be any issues with patentable subject matter?


Example

• Koka Nair inherits traditional knowledge with respect to

ayurvedic formulations for improving immunity and

promoting healthy living from his ancestors. After

researching on the formulations, he isolates active

ingredients from three of the formulations and prepares

tablets for enhancing immunity.

• Is his invention patentable subject matter?


Industrial Applicability

Section 2(1)(ac) - Capable of Industrial Application

• Make

• Use

• Repeat

• Industry


Industrial Applicability

• Neo invents a method of making a dog

jump on four legs.

• Helen invents a method of eloping based

on adverse conditions.


NoveltySection 2(1)(l) - New Invention

• Prior Publication

• Public Knowledge

• Public Use

• On Sale

• Public Display

• Public Working

• Single prior art reference

• Inherent anticipation


Inventive Step

Section 2(1)(ja)

• Technical Advance or Economic Significance

and

• Not obvious to a person skilled in the Art


Secondary Indication

• Commercial Success

• Copying

• Praise by expert

• Unexpected results

• Long felt need


Example

• Invention

• Chair with Wheels

• Prior Art

• Chairs

• Tables with wheels


Example

• Invention

• Stent coated with Taxol

• Prior Art

• Stents

• Many Anti-cancer agents including Taxol


Specification

Section 10

• Written Description

• Enablement

• Best Mode

• Claims

• Object: Notice and Dissemination


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