Patent: Presentations on Analyzing Patentability of Inventions by Dr. Kalyan C Kankanala - BananaIP

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Analyzing Patentability of

InventionsBy

Dr. Kalyan Chakravarthy [email protected]

Blog: www.bananaip.comCourse Materials: www.onlineipcourses.com

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Patentability requirements

Patentable subject matterIndustrial ApplicabilityNoveltyInventive StepSpecification


INVENTIONS

Subject Matter

Usefulness

Novelty

Non-obviousness

Specification

PATENTS

Kalyan’s Patent Filter Model


Patentable Subject MatterProduct or Process - Section 2(1)(j)

Computer ProgramGenetically modified pigBusiness methodMassage technique


ExclusionsSection 3(d)

New form Efficacy

New property or useMere use of known process

New productNew reactant


ExclusionsExplanation: 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

EfficacyNovartis case


ExclusionsPlants, Animals and Parts (Section

3(j))Computer Programs Per Se (Section

3(k)Medical Methods (Section 3(i))Traditional Knowledge (Section 3(p))


ExampleRam, a researcher at IISc, isolates the gene

responsible for milk production in cows. He modifies the gene and inserts it into a cow and creates a genetically modified cow that produces higher quantities of milk.

Ram approaches you for advise on patentability. Is his invention patentable subject matter?


ExampleVishnu develops a computer program for

playing movies in all formats. His program is very special because of its small size and suitability for installation on symbion, android and other mobile operating systems.

Is this invention patentable subject matter?


ExampleManu invents a process of massaging that includes the

following steps:

Use of a combination of kerala, thai and european massage techniques;

Playing specific music for each technique to enhance relaxation; and

Application of an ayurvedic paste with gentle massage.

The purpose of the massage is to de-stress and relax.

Is it patentable subject matter?


ExampleBanana 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 ApplicabilitySection 2(1)(ac) - Capable of Industrial

Application

Make UseRepeat

Industry


NoveltySection 2(1)(l) - New Invention

Prior PublicationPublic Knowledge Public UseOn SalePublic DisplayPublic Working


Inventive StepSection 2(1)(ja)

Technical Advance or Economic Significance and

Not obvious to a person skilled in the Art.


Secondary IndiciaCommercial SuccessCopying Praise by expertUnexpected resultsLong felt need


ExampleInvention

Chair with Wheels

Prior Art

ChairsTables with wheels


SpecificationSection 10

Written DescriptionEnablementBest ModeClaims

Object: Notice and Dissemination


ExampleStent coated with Taxol

Prior Art

StentTaxol and other Anti-cancer agents


Patentability ReportInvention DetailsFactsShort opinionPatentability Analysis

Subject MatterIndustrial ApplicabilityNoveltyInventive Step

Opinion on PatentabilityRecommendationsDisclaimer


References

Novelty Cases

Lakhpat Rai and Ors. Vs. Sri Kishan Das and Ors., MANU/UP/0155/1918.

Monsanto Company Vs. Coramandal Indag Products (P) Ltd., MANU/SC/0317/1986

Laxmi Dutt Roop Chand Vs. Nankau and Ors., MANU/UP/0012/1964.

Inventive Step Cases

Bishwanath Prasad Radhey Shyam Vs. Hindustan Metal Industries, AIR 1982 SC 1444.

Bilcare Limited Vs. Amartara Private Limited, MANU/DE/0889/2007.

Dhanpat Seth and Ors. Vs. Nil Kamal Plastic Crates Ltd., AIR 2008 HP 23

Novartis AG Vs. Union of India (UOI), MANU/IC/0034/2009.


Thank you

Reading MaterialsChapter 2, Indian Patent Law and Practice, Dr.

Kalyan Kankanala, Arun Narasani and Vinita Radhakrishnan, OUP India Publication.

www.onlineipcourses.comwww.sinapseblog.com