Intellectual Property

Fundamentals of Patents

RAJ HIRWANI
Adjunct Professor IIT,Mumbai
Emeritus Professor, AcSIR
Former Head- CSIR IP Directorate and
CSIR Unit for Research and Development
of Information Products
PUNE - 411 008
 What is intellectual Property?
• Property
- Ownership
- Free to use it as owner wishes
- Exclude others from so using that owned
item of property
• Intellectual Property
- Types of property that results from
creations of human mind,the intellect.
 WIPO Convention

“Literary artistic and scientific works;

performances of performing artists,
phonograms, and broadcasts; inventions in
all fields of human endeavor; scientific
discoveries; industrial designs; trademarks,
service marks, and commercial names and
designations; protection against unfair
competition; and "all other rights resulting
from intellectual activity in the industrial,
scientific, literary or artistic fields.”
 Intellectual Property Rights

• Literary, artistic and scientific works e.g. books.

Protection of this property is governed by laws
concerning Copyright.
• Performances, broadcasts e.g. concerts.
Protection of this property is governed by laws
concerning Copyright's Related Rights.
• Inventions e.g. a new form of jet engine.
Protection of inventions is covered by laws
concerning Patents.
 Intellectual Property

• Industrial designs e.g. the shape of a soft

drinks bottle. Industrial Designs may be
protected by its own specialized laws, or
those of Industrial Property or Copyright.
• Trademarks, service marks and commercial
names and designations e.g. logos
• Names for a product with unique
geographical origin, such as Champagne are
protected by Geographical Indicators.
 Intellectual Property Rights

• Technical Designs of electronic devices are

protected by Integrated Circuits.
• New Plant varieties are protected by Plant
Varieties Protection Act.
• Confidential information not in public domain
can be protected as Trade Secret.
 Why IP has become Important?

• Development of Global Technological

capability
• Reverse Engineering feasible in developing
countries
• Follow-up of General Agreement on Trade
and Tariffs (GATT)
• Agreement on Trade Related Aspects of
Intellectual Property Rights (TRIPS
Agreement)
 WHY DO IP RIGHTS MATTER?
• Provide incentive towards various creative
endeavors of the mind by offering protections;
• Give such creators official recognition;
• Create repositories of vital information;
• Exclusive rights – high market share
• To protect your own business and inventions
from your competitors
 Why do IP Rights matter?

• To avoid the risk of being exposed to

assertions of patent infringement by
competitors/ third parties
• Facilitate the growth of domestic industry and
international trade
• Monetisation - Income from licensing
• Attract Investors
 WHY IP IS IMPRTANT TO INVESTORS?
• IP is integral part of value creation in a tech-
based enterprise
• Investors are faced with considerable
uncertainty and therefore rely on patents as
signals when trying to assess
• IP is the basis for putting resources to risk
• Appropriate use of the IP system is a
powerful tool for competition, stability and
mitigation of risks on capital investments.
• Venture capitalists want to maximize returns
and minimize risks
 WHAT IS A PATENT ?

A RIGHT GRANTED TO INVENTORS

TO PREVENT UNAUTHORIZED USE
OF AN INVENTION, WITHIN A
PARTICULAR TERRITORY, FOR A
LIMITED TIME. DOES NOT
GUARANTEE THE FREEDOM TO
EXPLOIT THE INVENTION.
 Patent-Explanation
• Negative Right
• Patents are territorial
e.g., an Indian patent has no force in other
countries , just as a foreign patent has no
force in this country.
• Limited Time: 20 years from Date of
application.
• Positive right restricted by previous patents
-Freedom to operate/market/practice
All patent applications are published after 18
months
 Social Contract
• Patent rights are granted in return for the
inventor’s full disclosure of the technology to the
public
• The patent holder receives the right to prevent
anyone else from practicing the invention
• In exchange, the government ensures that the
information regarding the invention is publicly
disclosed, and the invention itself is available for
anyone’s use after the expiration of the patent.
 REQUIREMENTS OF PATENTABILITY
SUBSTANTIVE REQUIREMENTS

• SUBJECT MATTER
• NOVELTY
• NON-OBVIOUSNESS
• UTILITY

PROCEDURAL REQUIREMENTS

• ENABLEMENT
• DEFINITENESS
• BEST MODE
IDEAS/CONCEPTS CANNOT BE PATENTED
 REQUIREMENTS OF PATENTABILITY
SUBJECT MATTER
• MANUFACTURE
• MACHINE
• COMPOSITION OF MATTER
• PROCESS
e.g. GENETICALLY MODIFIED BACTERIA
HUMAN ENGINEERED MICE
UTILITY
MINIMUM DEMONSTRATION
NOVELTY
NOT ANTICIPATED IN ”PRIOR ART”
“PRIOR ART”- ANYTHING PREVIOUSLY
PUBLISHED,PATENTED,KNOWN,USED,SOLD

Contd…
 REQUIREMENTS OF PATENTABILITY

OBVIOUSNESS
KNOWLEDGE AT THE TIME OF INVENTION MUST
NOT BE OBVIOUS TO ONE OF ORDINARY SKILL
IN THAT AREA
DETERMINED BY
SCOPE / CONTENT OF PRIOR ART
AS LEVEL OF ORDINARY SKILL IN TECHNOLOGY
INCREASES, SO DOES THE OBVIOUSNESS OF
ADVANCES

Contd…
REQUIREMENTS OF PATENTABILITY
ENABLEMENT
ABILITY TO USE THE INVENTION WITHOUT
“UNDUE EXPERIMENTATION” (SPECIFICATION)

DEFINITENESS INQUIRY
UNDERSTANDING LIMITS OF INVENTION
BASED ON CLAIM LANGUAGE

BEST MODE
BEST WAY KNOWN TO HIM/HER TO CARRY
OUT THE CLAIMED INVENTION. DISCLOSURE
MUST ALLOW A PERSON OF “ORDINARY SKILL
IN THE ART “TO PRACTICE THE INVENTION.
CONCEALMENT OF BEST MODE RESULTS IN
REJECTION.
 EXCEPTIONS TO
PATENTABILITY OF INVENTIONS

• An invention which is frivolous or which claims

anything obviously contrary to the well established
natural laws
• An invention the primary or intended use or
commercial exploitation of which would be
contrary to public order or morality or which
causes serious prejudice to human, animal or
plant life or health or to the environment, law,
morality or injurious to public health.
• The mere discovery of a scientific principle or the
formulation of an abstract theory or discovery of
any living thing or non-living thing in nature
 PATENTABILITY OF INVENTIONS
….Continued

• The mere discovery of a 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
• A substance obtained by a mere admixture resulting
only in the aggregation of the properties of the
components thereof or a process for producing such
substances
• The mere arrangement or rearrangement or
duplication of known devices each functioning
independently of one another in a known way
 PATENTABILITY OF INVENTIONS
….Continued

• A method of agriculture or horticulture

• Any process for the medicinal, surgical, curative,
prophylactic, diagnostic, therapeutic or other
treatment of human beings or any process for a
similar treatment of an animal or plants to render
them free of disease or to increase their economic
value or that of their products
 EXCEPTIONS TO THE INVENTIONS

• Plants and animals in whole or part thereof other

than micro organism but including seeds, varieties
and species and essentially biological processes
for production or propagation of plants and animals
• A mathematical or business method or a computer
programme per se or algorithms
• A literary, dramatic, musical or artistic work or any
other aesthetic creation whatsoever including
cinematographic works and television productions
 EXCEPTIONS TO THE INVENTIONS

- A mere scheme or rule or method of performing

mental act or method of playing games
- A presentation of information
- Topography of integrated circuits
- An invention which, in effect , is traditional
knowledge or which is an aggregation or
duplication of known properties of traditionally
known component or components
 DEFINITIONS
• INVENTIONS
• “Invention” means a new product or process involving
an inventive step and capable of industrial application
• INVENTIVE STEP
• “Inventive step” means a feature that makes the
inventions not obvious to a person skilled in the art
• CAPABLE OF INDUSTRIAL APPLICATION
• In relation to an invention means that the invention is
capable of being used in an industry
(Industry here does not mean manufacturing sector
alone. It is an all encompassing definition for the
purpose of utility).
 PATENTABILITY UNDER US SYSTEM

ANYTHING THAT INVOLVES HUMAN

INTERFERENCE CAN BE PATENTED

PLANTS,BUISNESS METHODS,SOFTWARE (ALL

TECHNOLOGY AREAS)
 Patent Claim Types

• Product claims- Apparatus/Device/ Composition

• Process/ Method claims
• Use/Application claims
• Product-by-process claims
• Biotech claims
• Software claims
• Omnibus claims
• Design claims
 Process Vs Product Patent

A+B
A+B a B+C
e b
X
C+D d c B+D
X – Product
a, b, c, d, e - Processes
A,B,C,D – Raw materials
 IMPORTANT CHANGES
IN RESPECT OF CHEMICAL PROCESS

Patents to the products capable of being used as

food, agrochemicals , drug and medicines and
those of chemical process.

Chemical processes to include biochemical,

biotechnological and microbiological processes
 COMMUNICATIONS THAT COUNT
AGAINST AN INVENTOR
• PRINTED PUBLICATIONS
– MICROFILMS / DIGITAL MEDIA
– SLIDES AND DRAWINGS
– PHOTOGRAPHS
– SPEECHES AND HANDOUTS
– LIBRARY CATALOUGING (THESIS)
– GOVERNMENT RESEARCH GRANT PROPOSAL
• EMPHASIS ON `ACCESSIBILITY AND DISSEMINATION OF THE WORK’
• INVENTION ON SALE
• INVENTION AVAILABLE FOR PUBLIC USE.
• USA- ONE YEAR GRACE AFTER PUBLICATION
 WHO CAN QUALIFY AS INVENTORS
• PROVIDER OF THE IDEA/CONCEPT
• MEMBERS OF TEAM WHO MADE SIGNIFICANT
CONCEPTUAL CONTRIBUTIONS
• EVERY TEAM MEMBERS SHOULD HAVE HIS
OWN NOTEBOOK OR DOCUMENT TO RECORD
HIS CONTRIBUTION,DATED,SIGNED AND
WITNESSED
• IF YOU DESIGN AN EXPERIMENT FOR SOMEONE
ELSE TO PERFORM ENTER YOUR
INSTRUCTIONS INTO YOUR NOTEBOOK
 R&D Alerts for Patent Protection

• Record the date of conception of an idea

• Record the date when the Conception was

first “Reduced to Practice"
• Show “Due Diligence" in reducing the
invention to practice sign and witness all
entries in
• Notebook. The laboratory notebook is a legal
record. A System for lab record keeping
should be evolved.
 INVENTORSHIP Vs. OWNERSHIP

• ORGANISATIONAL IPR POLICIES (WORK FOR HIRE)

• COMMERICAL WORK OF NON-EMPLOYEES
ARTISTIC WORKS
ARCHITECTURAL OR ENGINEERING DRAWINGS
COMPUTER SOFTWARE
REPORTS BY CONSUTLANTS OR
SUBCONTRACTORS
SPONSORSHIPS /GRANTS – ASSIGNMENTS /
MARCH IN RIGHTS / SHOP RIGHTS
 Types of Patents
• Utility Patents
• Design Patents
• Plant Patents
• Innovation Patents
• Provisional Patents
 TYPES OF PATENTS
Utility Patents-are available for processes,
machines, articles of manufacture, or
compositions of matter that are deemed new,
useful and non-obvious. The traditional
subject matter of patents covers tangible,
technical inventions, such as improvements to
client-server systems, motors, radios,
computer chips and various technical product
features
 TYPES OF PATENTS

• Patents for business methods: E.g a method for

completing a credit card transaction without the
need for the physical presence of the credit card.
• Design Patents- to protect ornamental (non-
functional) designs. Apple’s Patent D 604,305
covering the design of its iPhone interface
• Plant Patents
• Innovation Patents
• Provisional Patents
 PROVISIONAL PATENT
• In India, the United States and some other
countries, a temporary patent application, to
protect invention while work is in progress
termed as provisional application, may be filed.
• Must be “completed” within 12 months by the
filing of a complete application.
• The legal requirements for a provisional
application may be less than those for a
complete application, for example, it is not
necessary to include claims in a provisional.
 Compulsory Licensing

• In certain cases, in fact, the use of the patented

invention may be authorized to a third party either by
the competent court or by a Patent Office
(depending on the law of the country)
• Prevents the abuses which might result from the
exclusive rights conferred by a patent. This regime
may also be applied in case of non-use of the
patented invention within a prescribed period
(generally four years from the filing date of
application for patent, or three years from the issue of
patent).
 FOREIGN PATENTS

- TERRITORIAL RIGHT- RESTRICTED TO GRANT

GIVING COUNTRY
- NO CONCEPT OF WORLD PATENT or
INTERNATIONAL PATENT
- SYSTEM OF FILING INERNATIONAL PATENT
APPLICATION FOR THE PURPOSE OF PRIORITY
DATE AND EXAMINATION EXISTS UNDER THE
PATENT COOPERATION TREATY (PCT)
ADMINISTERED BY WORLD INTELLECTUAL
PROPERTY ORGANISATION (WIPO)
 Patent Cooperation Treaty (PCT)
• Filing in a home country
• International Search (ISA)
• International Publication (WIPO)- 18 Months
• International Preliminary Examination
(optional)
• National Phase (Optional in designated
countries)- up till 12 months after publication
 ADVANTAGES of PCT

• Simplify the process

• Single Priority date
• Gain time to make a decision
• Disseminate more effectively the technical
knowledge contained in patent
documentation.
• Increased efficiency of national patent offices
 European Patent System

• EUROPEAN PATENT CONVENTION

- EUROPEAN DIRECTIVES
- NATIONAL LAWS ON THE SUBJECT MATTER
• EUROPEAN PATENT OFFICE (EPO)
- PATENT VALID IN CONTRACTING COUNTRIES
• NATIONAL PATENTS (GERMAN-DE) ETC.
• AFRICA and MIDDLE EAST TO FOLLOW
SIMILAR PRACTICE
PARIS CONVENTION OF INDUSTRIAL
PROPERTY
• Oldest Convention (1883)

• The Right of Priority – Filing within 12 Months

• Concept of National Treatment

• Independence of Patents
 PATENT PROSECUTION
• EXAMINERS SEARCH
• CITATION OF PRIOR ART
• NORMAL FOR ALL CLAIMS TO BE
REJECTED
• GROUNDS ON WHICH CLAIMS HAVE
BEEN REJECTED
• INVENTION HAS TO BE OF AN EARLIER
DATE THAN CITED PRIOR ART
• ANSWER TO THE OBJECTIONS/AMEND
CLAIMS/ WITHDRAW
 Patent Protection in India – Important
Milestones

• 1856 - Protection for inventions formally started

– Based on the British Patent Law of 1852
• 1911 - The Indian Patents & Designs Act
– Product patents / composition of matter patents available
• 1972 - The Indian Patents Act ( April 20, 1972)
– Only process patents in pharmaceuticals, agrochemicals and
food
– Term – 5 years from date of grant or 7 years from date of
application, whichever was earlier

Dr Raj Hirwani 43
 Patent Protection in India – Important
Milestones
• 1994 – Indian signs GATT agreement
• 1997 – India becomes a PCT member-state
• Amendments to the 1970 Act
– 1999 - (effective Jan 1, 1995)
– 2002 (effective May 20, 2003)
– 2005 (effective Jan. 1,2005) – Reintroduction of
product patents for pharma, food and agrochem.
– Patents for other technology areas like Biotech
INDIAN IPR LAWS ARE TRIPS COMPLIANT
Dr Raj Hirwani 44
 Commercial exploitation of patents

• Patents to Exclude the Competition - the

Pharmaceutical Industry
• Patents for Survival - the Biotechnology Industry
• Patents as Bargaining Chips - the Electronics Industry
• Patents as a Source of Royalty Income - Universities
• Patents as Marketing Tools- National Labs
• Patents as Lottery Tickets - Individual Inventors

Dr Raj Hirwani 45
 Patents : Hidden Benefits

• Advancement of Technology
• Source of Information
• Economic Indicators (R&D Investment)
• Innovation Indicators
• Delineation of technology fronts
(Useful for Technology Forecasts)
• Research and Business Planning
 PUBLIC PERCEPTIONS

• HYPE Vs. REALITY

– BASMATI RICE

– NEEM

– TURMERIC

• NEED FOR INFORMED OPINION

– PIRACY

– COUNTERFEITS