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DIPP and WIPO Organized Program on Training of Trainers on Effective IP Asset Management Patentable and Non Patentable Inventions in Key Jurisdictions,

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Presentation on theme: "DIPP and WIPO Organized Program on Training of Trainers on Effective IP Asset Management Patentable and Non Patentable Inventions in Key Jurisdictions,"— Presentation transcript:

1 DIPP and WIPO Organized Program on Training of Trainers on Effective IP Asset Management Patentable and Non Patentable Inventions in Key Jurisdictions, Drafting a Patent Specification, Patent Cooperation Treaty (PCT) and Budapest Treaty G. Deepak Sriniwas, Partner K&S PARTNERS

2 Discussion on Patentable and Non Patentable Inventions in Key Jurisdictions Patentable and Non Patentable Inventions in Key Jurisdictions Drafting a Patent Specification Drafting a Patent Specification Patent Cooperation Treaty (PCT) Patent Cooperation Treaty (PCT) Budapest Treaty Budapest Treaty

3 Patentable and Non Patentable Inventions Pharma; Biotech Pharma; Biotech Software; Mathematical; Business methods Software; Mathematical; Business methods

4 WHAT IS PATENTABLE? Patents Act 1970 Patents Act 1970 Patentable inventions any product or process which is : novel novel not obvious to a person skilled in the art not obvious to a person skilled in the art capable of industrial application capable of industrial application

5 WHAT IS NOT PATENTABLE? (section 3) (d) New use of known substance/process Polymorphs, esters, salts, combinations, Polymorphs, esters, salts, combinations, derivatives that do not show enhanced derivatives that do not show enhanced therapeutic efficacy over known main therapeutic efficacy over known main substance substance (e) Mere admixtures (as opposed in synergistic mixtures) and processes thereof mixtures) and processes thereof (i) Method of treatment of human beings/animals beings/animals (j) Plants, animals parts thereof

6 WHAT IS NOT PATENTABLE? (section 3) Section 3(d) 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.

7 WHAT IS NOT PATENTABLE? (section 3) Section 3(d) (contd.) Explanation: For the purpose of this clause, salts, esters, ethers, polymorphs, metabolites, pure from, particle size, isomers, mixtures of isomers, complexes, combinations and other derivatives of known substance shall be considered to be the same substance, unless they differ significantly in properties with regard to efficacy. Examples: Examples: Toxic – non-toxic Toxic – non-toxic Stable – shelf life Stable – shelf life

8 WHAT IS NOT PATENTABLE? (section 3) (e) a substance obtained by a mere admixture resulting only in the aggregation of the properties of the components thereof

9 WHAT IS NOT PATENTABLE? (section 3) (i) any process for the medicinal / surgical / curative, prophylactic / diagnostic / therapeutic or other treatment of human beings or similar such process for treatment in animals.

10 Section 3(d) New Use of a Known substance Section 3(e) Mere admixture Section 3(i) Method of Treatment SECOND MEDICAL USE

11 Case Law- GLIVEC Test of 3(d) and the product patent regime. Test of 3(d) and the product patent regime. Novartis AG filed patent application No. 1602/MAS/98 on July 17, 1998 for crystal modification of N-Phenyl-2-Pyrimidineamine derivative, processes for its manufacture and its use Novartis AG filed patent application No. 1602/MAS/98 on July 17, 1998 for crystal modification of N-Phenyl-2-Pyrimidineamine derivative, processes for its manufacture and its use Specifically beta form of N-{5-[4-(4-Methyl-piperazino-methyl)- benzoylamido]-2-methyl-phenyl}-4-(3-p yridyl)-2-pyrimidine-amine salt. Specifically beta form of N-{5-[4-(4-Methyl-piperazino-methyl)- benzoylamido]-2-methyl-phenyl}-4-(3-p yridyl)-2-pyrimidine-amine salt. ( β form of methanesulfonic acid addition salt of a pyrimidine compound and XRD pattern of β form was provided)

12 Case Law- GLIVEC Notable statement in specification It goes without saying that all the indicated inhibitory and pharmacological effects of β form are also found with the free base. Notable statement in specification It goes without saying that all the indicated inhibitory and pharmacological effects of β form are also found with the free base. No enhanced efficacy shown No enhanced efficacy shown Established β form was pre-existing Established β form was pre-existing Application was rejected by the Patent Office Application was rejected by the Patent Office Limited appeal to DB Chennai, case rejected Limited appeal to DB Chennai, case rejected Limited issue before IPAB-case rejected Limited issue before IPAB-case rejected Challenged IPAB decision by way of write in SC Challenged IPAB decision by way of write in SC

13 WHAT IS NOT PATENTABLE? (section 3) (j) Plants and animals in whole or in part thereof other than microorganisms but including seeds, varieties and species and essentially biological processes for production or propagation of plants and animals.

14 PRODUCT PATENTS All products of molecular biology: whether for use as drug or food product Novel micro-organism (genetically engineered) Novel micro-organism (genetically engineered) Novel gene and peptide sequences Novel gene and peptide sequences Promoter, Marker Promoter, Marker Novel cassette, construct Novel cassette, construct Vaccine Vaccine New viral strain New viral strain

15 MICRO-ORGANISMS Not defined by Act Not defined by Act Possibly includes yeast, bacteria, recombinants, DNA sequences, vectors Possibly includes yeast, bacteria, recombinants, DNA sequences, vectors Are isolated microbes and colonies mere discovery ? Are isolated microbes and colonies mere discovery ? Isolates, if characterized, deposited in ID and utility found – are they patentable Isolates, if characterized, deposited in ID and utility found – are they patentable Genetically modified organisms: patentable Genetically modified organisms: patentable Source and origin of Biological material to be provided in specification Source and origin of Biological material to be provided in specification

16 MICRO-ORGANISMS EUROPE EP case T396/93: Micro-organism includes bacteria, yeast, fungi, algae, protozoa, virus…. Biotechnology Directive : Defines biological material not micro- organism Defines biological material not micro- organism Includes microbes, cell lines, viruses…. Includes microbes, cell lines, viruses…. Excludes cell lines used for modifying germ line of human beings Excludes cell lines used for modifying germ line of human beings

17 MICRO-ORGANISMS USA- PATENTABLE Diamond v. Chakrabarty, 447 U.S. 303 (1980) Diamond v. Chakrabarty, 447 U.S. 303 (1980) genetically engineered bacteria are patentable genetically engineered bacteria are patentable anything under the sun that is made by man anything under the sun that is made by man Patents granted for : Patents granted for : Yeast lines, Yeast lines, Virus, hybridoma, oyester Virus, hybridoma, oyester Harvard Mouse Harvard Mouse

18 MICRO-ORGANISMS INDIA Micro-organism Micro-organism Isolated ? Isolated ? Mutant ? Mutant ? Genetically modified ? Genetically modified ? No distinction between isolated and genetically modified micro-organism No distinction between isolated and genetically modified micro-organism Many argue: Isolated micro-organism is no invention, only Genetically Modified Many argue: Isolated micro-organism is no invention, only Genetically Modified Deposit in international depository prior to date of Indian filing Deposit in international depository prior to date of Indian filing

19 GENES Gene sequences if isolated and utility found, patentable Gene sequences if isolated and utility found, patentable Are they part of animal or human being ? Are they part of animal or human being ? Antibodies, including chimeric antibodies are patentable Antibodies, including chimeric antibodies are patentable

20 ISOLATED DNA EUROPE-PATENTABLE EUROPE-PATENTABLE Held in RELAXIN CASE - Isolated DNA sequence is a chemical compound; can be patented

21 ISOLATED DNA US - PATENTABLE US - PATENTABLE An isolated and purified DNA molecule, RNA molecule, or amino acid molecule An isolated and purified DNA molecule, RNA molecule, or amino acid molecule isolated chemical compounds isolated chemical compounds Full-Length Genetic Sequences patentable Full-Length Genetic Sequences patentable Corresponding amino acid sequence patentable Corresponding amino acid sequence patentable Partial nucleic acid sequences if proved useful (eg: as encoding protein responsible for diagnosis of a specific disease) = patentable Partial nucleic acid sequences if proved useful (eg: as encoding protein responsible for diagnosis of a specific disease) = patentable

22 Example US PATENT NO. 6,616,950 What is claimed is: What is claimed is: 1. A fermented fruit based herbal health drink composition useful as an antioxidant, cardio-tonic, diuretic, digestive, choleretic, nervine relaxant and immuno-modulant, comprising extract from plant Andrographis with concentration ranging between 0.5 to 10% in the total herbal health drink, extract from fruit, and ethanol ranging between 3 to 13% in the total herbal health drink, optionally extract from plant Tinospora and other additives.

23 Example US PATENT NO. 6,558,940 A biologically pure culture of Streptomyces sp. CIMAP A.sub.1 strain bearing ATCC Accession No. PTA-4131 and capable of inhibiting the growth of phytopathogenic fungi.

24 Example US PATENT NO. 6,696,284 1. A biological filter for the purification of waste gases, comprising a housing with at least one inlet and at least one outlet, and a bed of active micro-organisms contained in a carrier material consisting of pith extracted from coconut husks, the carrier material being provided in the housing such that the waste gases flowing in through the at least one inlet contact the bed of carrier material before exiting through the at least one outlet. 1. A biological filter for the purification of waste gases, comprising a housing with at least one inlet and at least one outlet, and a bed of active micro-organisms contained in a carrier material consisting of pith extracted from coconut husks, the carrier material being provided in the housing such that the waste gases flowing in through the at least one inlet contact the bed of carrier material before exiting through the at least one outlet.

25 PROCESS PATENT Method of protein purification, downstream processing Method of protein purification, downstream processing Process using micro- organisms to obtain chemicals Process using micro- organisms to obtain chemicals Patentable Patentable

26 SCREENING ASSAYS Diagnostic assays: grey area Diagnostic assays: grey area Is it ex-vivo or in-vivo? Is it ex-vivo or in-vivo? Does the result of the method indicate that subject is suffering from a disorder? Does the result of the method indicate that subject is suffering from a disorder? If yes, not patentable If yes, not patentable

27 METHOD FOR REGENERATION OF ORGANS A method for regenerating organs in humans using: A method for regenerating organs in humans using: stem cells stem cells from contiguous embryonic peritoneal layer from contiguous embryonic peritoneal layer formation of mesodermal organs in vitro formation of mesodermal organs in vitro avoids use of exogenous tissue avoids use of exogenous tissue 5 organs regenerated 5 organs regenerated

28 METHOD FOR REGENERATION OF ORGANS FPatent Act, 1970 F sec 3(i) any process for the medical, surgical, …. treatment of human beings or …render them free of disease …… F invention in question hit by above provision F currently not patentable in India F US 6,227,202 obtained

29 SOFTWARE PATENTS & BUSINESS METHOD PATENTS

30 SOFTWARE PATENTS INDIA Why Software is protected? Why Software is protected? Copyright does not protect ideas behind software Copyright does not protect ideas behind software Promote development of the software industry and computer-related industry Promote development of the software industry and computer-related industry Software also exhibits technical behavior Software also exhibits technical behavior Advantage for SMEs and independent Software developers. Advantage for SMEs and independent Software developers.

31 SOFTWARE PATENTS - INDIA WHAT IS NOT PATENTABLE? WHAT IS NOT PATENTABLE? SECTION 3 (k) a mathematical or business method or a computer programme per se or algorithms;

32 Sec. 3 (k): Problem Areas All computer implemented methods NEED NOT qualify to be called as computer programs All computer implemented methods NEED NOT qualify to be called as computer programs All computer implemented methods CAN NOT be considered as non-patentable – merely a computer program per se is not patentable All computer implemented methods CAN NOT be considered as non-patentable – merely a computer program per se is not patentable

33 Sec. 3 (k): Problem Areas (Contd..) a computer program per se is merely directed towards code; hence, a claim of the following nature is non-patentable a computer program per se is merely directed towards code; hence, a claim of the following nature is non-patentable A method of addition of two numbers comprising: function AddJavaSc() function AddJavaSc(){ var k, l; l=parseInt(document.getElementById("txtVal1").value);k=parseInt(document.getElementById("txtVal2").value); document.getElementById("txtVal3").value=l + k; } The claim should express it in simple statement which is readable and understandable by the Patent Office such as: The claim should express it in simple statement which is readable and understandable by the Patent Office such as: A a method of addition of two numbers comprising: (a) obtaining value for a first variable from the user; (b) obtaining value for a second variable from the user; (c) ….. The claim should express it in simple statement which is readable and understandable by the Patent Office such as: The claim should express it in simple statement which is readable and understandable by the Patent Office such as: A a method of addition of two numbers comprising: (a) obtaining value for a first variable from the user; (b) obtaining value for a second variable from the user; (c) …...", "width": "800" }

34 Sec. 3 (k): Problem Areas (Contd..) Merely adding a conventional hardware to a program is not patentable; hence, a claim of the following nature is not patentable. A computer for implementing a method of addition of two numbers comprising: (a) obtaining value for a first variable from the user; (b) obtaining value for a second variable from the user; (c) …..

35 Sec. 3 (k): Problem Areas (Contd..) merely mentioning a hardware which performs same necessary operation of the method (mere automation) – hit by section 2 (1) (j) WE CLAIM: A computer implemented method for controlling access to a portion of a document, the document comprising a plurality of portions, the method performed by at least one processor, the method comprising: receiving a request to access the document portion; receiving a request to access the document portion; determining whether to provide access to the requested document portion based on data describing past accesses of other portions of the document; and determining whether to provide access to the requested document portion based on data describing past accesses of other portions of the document; and responding to the request based on the determination. responding to the request based on the determination.

36 Sec. 3 (k): Problem Areas (Contd..) A method is restricted to a specific area of technology A method for controlling access to a portion of a legal document which governs contractual obligations between two parties, the document comprising a plurality of portions, the method comprising: receiving a request to access the document portion which pertains to contractual obligations between two parties; receiving a request to access the document portion which pertains to contractual obligations between two parties; determining whether to provide access to the requested document portion based on data describing past accesses of other portions of the document; and determining whether to provide access to the requested document portion based on data describing past accesses of other portions of the document; and responding to the request based on the determination. responding to the request based on the determination.

37 Sec. 3 (k): A Solution to Problem A method should provide technical effect for being patentable; A method should solve a technical problem instead of merely avoiding the problem Technical Effect: It is defined as solution to a technical problem, which the invention taken as a whole, tends to overcome. Few general examples of technical effect are as follows- 1) Higher speed 2) Reduced hard-disk access time 3) More economical use of memory 4) More efficient data base search strategy 5) More effective data compression techniques 6) Improved user interface 7) Better control of robotic arm 8) Improved reception/transmission of signal

38 Sec. 3 (k): Better Solution A method provides technical effect and at the same time, contains details of the hardware that can perform the necessary function

39 Various Categories of Claims Method / Process Method / Process Apparatus / System Apparatus / System Computer Program Product Computer Program Product

40 Method / Process Claims It is possible to obtain grant if: It is possible to obtain grant if: the claimed method possess Technical Effect; and the claimed method possess Technical Effect; and Mode of implementation is preferably by hardware (conventional in nature) and the same is clearly mentioned in the specification along with details of the hardware; and Mode of implementation is preferably by hardware (conventional in nature) and the same is clearly mentioned in the specification along with details of the hardware; and Claims contain hardware limitation Claims contain hardware limitationExample: A method for processing seismic data, comprising the steps of collecting the time varying seismic detector output signals for a plurality of seismic sensors placed in a cable, comprising: (a) …… (b)…… Steps involving technical effect

41 Apparatus / System Claims A novel hardware implementing a conventional method A novel hardware implementing a conventional method Clearly define inventive constructional hardware features Clearly define inventive constructional hardware features Example: A register for storing data (process limitation) Means should be defined Means should be defined Example: Means for mapping a set of points What means are used? Some of the workable means to be mentioned in the specification and in the sub-claims Input means – mouse, key pad, CD reader, touch screen, joy stick etc. Input means – mouse, key pad, CD reader, touch screen, joy stick etc.

42 Computer Program Product Claims Example: - A computer program product in computer readable medium - A computer-readable storage medium having a program recorded thereon Software program products are computer program per se if simply recorded on a medium. Software program products are computer program per se if simply recorded on a medium. Hence, not patentable

43 Examples of software per se: - A computer program product in computer readable medium - A computer-readable storage medium having a program recorded thereon - A method for generating a new computer program using a software development tool - Scheme or method of bookkeeping - Business method in the field of accounting - Method of tax collection

44 ALLOWABLE SUBJECT MATTER A method having technical effect and having hardware limitation EXAMPLE: - A method for transmitting data across an open communication channel on a wireless device that selectively opens and closes a communication channel to a wireless network, and each wireless device including a computer platform and including a plurality of device resources that selectively utilizes a communication channel to communication with other devices across the network, said method comprising:

45 PATENTABLE SUBJECT MATTER - US 35 U.S.C. Section 101 35 U.S.C. Section 101 whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefore.. whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefore.. Process= process, art or methods Process= process, art or methods No technical effect or technical contribution requirement No technical effect or technical contribution requirement

46 EXCEPTIONS-BY CASE LAWS Diamond Vs Chakrabarty :anything under the sun made by man is patentable---life form Diamond Vs Chakrabarty :anything under the sun made by man is patentable---life form Diamond Vs Diehr : laws of nature, abstract ideas, natural phenomena are exceptions to patentability Diamond Vs Diehr : laws of nature, abstract ideas, natural phenomena are exceptions to patentability In re Allapat : practical application of an abstract idea, however is statutory In re Allapat : practical application of an abstract idea, however is statutory

47 EXCEPTIONS-BY CASE LAWS Before Diamond v. Diehr (1981), software was deemed as similar to mathematics and laws of nature, both of which are un patentable Before Diamond v. Diehr (1981), software was deemed as similar to mathematics and laws of nature, both of which are un patentable Before State Street Bank v. Signature Financial Group case (1998 ), business method were considered per se un patentable. Before State Street Bank v. Signature Financial Group case (1998 ), business method were considered per se un patentable.

48 BUSINESS METHODS PATENTS Why Business method need to be protected? Why Business method need to be protected? Innovative business methods equally contribute to a countrys economic development.

49 BUSINESS METHODS PATENTS A business method that provides a useful, concrete, and tangible result is patentable subject matter. A business method that provides a useful, concrete, and tangible result is patentable subject matter. (State Street Bank v. Signature Financial, 1998) (State Street Bank v. Signature Financial, 1998) Example: Amazons one-click shopping

50 BUSINESS METHOD PATENTS Examples- Contd.. Internet Purchasing Internet Purchasing Advertising and Marketing Advertising and Marketing Auction on the Internet Auction on the Internet Method of Funding College Tuition Method of Funding College Tuition Miscellaneous Finance Miscellaneous Finance Training and Instruction Training and Instruction Accounting and Management System Accounting and Management System

51 PATENTABLE/ NON- PATENTABLE INVENTIONS - EUROPE Article 52(1)- patentable inventions are Article 52(1)- patentable inventions are New New Involve an Inventive Step Involve an Inventive Step Susceptible of Industrial Application Susceptible of Industrial Application Article 52(2) and (3)- non-patentable inventions are Article 52(2) and (3)- non-patentable inventions are Schemes, rules and methods for doing business as such Schemes, rules and methods for doing business as such Programs for computers as such Programs for computers as such

52 PATENTABLE SUBJECT MATTER - EUROPE Inventions must be of technical character - must relate to a technical field - must be concerned with a technical problem - must have technical features in terms of which the matter for which protection is sought

53 SOFTWARE PATENTS- EPO GUIDELINES EPO Guidelines Draft of EC Directive (2000) Computer Software As such are not patentable As such are not patentable Make a non-obvious technical contribution to the state-of-art, are patentable May be claimed Program which exhibits the necessary technical effect As a product through the execution of software May not be claimed Program has no technical effect Computer program products either in a stand-alone format or on a carrier

54 PATENTABLE / NON- PATENTABLE INVENTIONS - CHINA Invention- any new technical solution relating to a product, a process or improvement thereof. Invention- any new technical solution relating to a product, a process or improvement thereof. Rules and methods for mental activities are not patentable. Rules and methods for mental activities are not patentable.

55 PATENTABLE INVENTIONS - CHINA Subject matters not patentable (Article 25 of the Chinese Patent Law) Scientific discoveries; Scientific discoveries; Rules and methods for mental activities; Rules and methods for mental activities; Methods for the diagnosis or the treatment of diseases; Methods for the diagnosis or the treatment of diseases; Animal and plant varieties; Animal and plant varieties; Substance obtained by means of nuclear transformation Substance obtained by means of nuclear transformation Software is not expressly included here. Software is not expressly included here.

56 PATENTABLE / NON- PATENTABLE INVENTIONS - CHINA Examples- Patentable Inventions 1.An invention using a computer program for measuring the viscosity of liquid 2.An invention employing a virtual memory management program to increase the capacity and the processing speed

57 CHINA.. Three conditions of inventions under Chinese Patent Law Novelty Novelty Inventiveness Inventiveness Practical Applicability Practical Applicability New technical solution according to Article 2 paragraph 1 of the Implementing Rules Product Product Process Process Improvements Improvements

58 PATENTABLE INVENTIONS EXAMPLES.. Used in industrial process control Used in industrial process control Used to improve computer internal process Used to improve computer internal process Used in measurement, control of measurement or test processes Used in measurement, control of measurement or test processes Used in external data processing Used in external data processing Used in coding and imputing Chinese characters Used in coding and imputing Chinese characters

59 CHINA Unacceptable Claims: Pure software Pure software Software recorded on carrier Software recorded on carrier The simple fit-together of software stored in the computer memory with processing equipment The simple fit-together of software stored in the computer memory with processing equipment Legal Basis: Such descriptions do not express the technical solution of the software.

60 CURRENT SCENARIO CHINA Exemplary Claim US, JP India, China A computer program for... OK if produces useful, concrete and tangible results Not patentable A machine-readable medium having instruction codes stored thereon,... An apparatus comprising: a processor; and a processor; and a memory having stored thereupon instructions, which,... a memory having stored thereupon instructions, which,...

61 SOFTWARE PATENTS - JAPAN Software-related inventions can be patented as: Software-related inventions can be patented as: Device Device Process Process Medium Medium Computer Program Computer Program Data Construction Data Construction

62 DRAFTING A PATENT SPECIFICATION

63 BEFORE DRAFTING What is the invention ? What is the invention ? Is invention patentable ? Is invention patentable ? Is invention novel, inventive ? Is invention novel, inventive ? Prior art/prior disclosure ? Prior art/prior disclosure ? Oral disclosure ? Oral disclosure ? Prior printed publication available to the public ? Prior printed publication available to the public ? Prior public use ? Prior public use ?

64 BEFORE DRAFTING- Contd.. VERIFY THE FOLLOWING: Conduct search Conduct search Enlist problems in prior art Enlist problems in prior art What is the problem sought to be solved by the invention? What is the problem sought to be solved by the invention? What is the novelty? What is the novelty? Is the solution obvious? Is the solution obvious? Is it artificially excluded ? Is it artificially excluded ? Has publication ensued? Has publication ensued? Ascertain the type of application -whether complete or provisional is to be filed Ascertain the type of application -whether complete or provisional is to be filed Decide the area and nature of protection- Paris convention, PCT, ordinary application. Decide the area and nature of protection- Paris convention, PCT, ordinary application.

65 PATENT SPECIFICATION Read by: Patent Office Patent Office Licensee/Assignee Licensee/Assignee Court Court Technical peers/skilled persons Technical peers/skilled persons Competitors Competitors Commercial players Commercial players General public General public

66 KINDS OF SPECIFICATION PROVISIONAL SPECIFICATION PROVISIONAL SPECIFICATION COMPLETE SPECIFICATION COMPLETE SPECIFICATION

67 KINDS OF APPLICATIONS Ordinary or Non-Conventional Ordinary or Non-ConventionalApplication Conventional (Paris/PCT) Conventional (Paris/PCT)Application Divisional Application Divisional Application Patent of addition Patent of addition

68 PROVISIONAL SPECIFICATION o Is a document describing the invention and need not contain claims o Disclose as much as possible o Decides the date of the application

69 COMPLETE SPECIFICATION Is a techno-legal document, describing and specifically claiming the invention Is a techno-legal document, describing and specifically claiming the invention FORM 2 The following specification particularly describes the invention and the manner in which it is to be performed. FORM 2 The following specification particularly describes the invention and the manner in which it is to be performed.

70 PATENT SPECIFICATION DescriptionClaims Description discusses the invention Claims define boundary of monopoly

71 DESCRIPTION Description must describe the invention comprehensively Description must describe the invention comprehensively Should fully explain the problem to be solved with examples Should fully explain the problem to be solved with examples No ambiguity No ambiguity Should be adequate and sufficient so as to enable a person skilled in the art to perform and repeat the invention without inventors further inputs Should be adequate and sufficient so as to enable a person skilled in the art to perform and repeat the invention without inventors further inputs

72 CONTENTS OF THE DESCRIPTION Title Title Field of the Invention Field of the Invention Background of Invention Background of Invention Prior Art details Prior Art details Objects of Invention Objects of Invention Statement of Invention Statement of Invention Detailed description of Invention Detailed description of Invention

73 TITLE A concise statement providing the crux of the invention A concise statement providing the crux of the invention Care should be taken to incorporate all major aspects claimed Care should be taken to incorporate all major aspects claimed Product-Process-Apparatus Product-Process-Apparatus Example: Example: Pen- A writing instrument Pen- A writing instrument Brush- A cleaning article Brush- A cleaning article

74 FIELD OF THE INVENTION More details than the title More details than the title Provides utility Provides utility Sometimes used as a tool for search in the absence of abstract Sometimes used as a tool for search in the absence of abstract

75 BACKGROUND P rovides the technical background of the invention P rovides the technical background of the invention May include description of prior arts May include description of prior arts

76 WHAT IS A PRIOR ART? Is a brief write-up of what is known before the invention; sets out the problems associated with each of the known art; and describes the problem proposed to be solved by the invention Is a brief write-up of what is known before the invention; sets out the problems associated with each of the known art; and describes the problem proposed to be solved by the invention In India, this is not mandatory In India, this is not mandatory

77 BACKGROUND.. Un-solved problems Un-solved problems Prior art solution not working Prior art solution not working Describe new solution adequately Describe new solution adequately

78 OBJECT(S) OF THE INVENTION Provides purpose of the invention Provides purpose of the invention Main object(s) and Ancillary object(s) Main object(s) and Ancillary object(s) Essential aspects and preferred/optional aspects. Essential aspects and preferred/optional aspects.

79 STATEMENT OF THE INVENTION Statement forms the main claim or claims in verbal agreement Statement forms the main claim or claims in verbal agreement It is essential only when there is a omnibus claim(s). It is essential only when there is a omnibus claim(s).

80 DETAILED DESCRIPTION OF THE INVENTION Sets out best mode of performing the invention Sets out best mode of performing the invention Describes the invention in greater detail with examples/illustration/tables/graphs/Diagrams, etc Describes the invention in greater detail with examples/illustration/tables/graphs/Diagrams, etc Description sufficient to enable a skilled person to put the invention into practice Description sufficient to enable a skilled person to put the invention into practice

81 CLAIM(S) Is the operative part of the specification Is the operative part of the specification Defines the monopoly to be conferred by the patent Defines the monopoly to be conferred by the patent Define the metes and bounds of the invention: at the time of infringement proceedings, only claims will be interpreted Define the metes and bounds of the invention: at the time of infringement proceedings, only claims will be interpreted If you do not claim, you disclaim If you do not claim, you disclaim

82 CLAIMS The main claim defines the essential features and the sub-claims define the preferred / optional / additional features The main claim defines the essential features and the sub-claims define the preferred / optional / additional features The important, main properties need not be merged into the other claim. The important, main properties need not be merged into the other claim. A separate claim has to be formed for the important feature(s). A separate claim has to be formed for the important feature(s).

83 DOs AND DONTs Specification must describe the invention concisely Specification must describe the invention concisely should explain the problem solved fully with examples should explain the problem solved fully with examples no ambiguity no ambiguity should be adequate and sufficient so as to enable in the art to perform the invention should be adequate and sufficient so as to enable in the art to perform the invention

84 DOs AND DONTs Claiming too broadly (covering prior art): Claiming too broadly (covering prior art): No Protection at all No Protection at all Claiming too narrow (terminology, features): Claiming too narrow (terminology, features): Competitor can use the invention Competitor can use the invention Claiming just right: Claiming just right: This is an art and requires lots of imagination This is an art and requires lots of imagination Claiming what is not supported by the description: Claiming what is not supported by the description: This can and must be avoided This can and must be avoided Not claiming what the client wants Not claiming what the client wants Claiming what the client does not use or need Claiming what the client does not use or need

85 A One way road You cannot broaden the claims of a granted patent You cannot broaden the claims of a granted patent You cannot broaden the disclosure and the claims beyond what has been included when drafting the application that was filed You cannot broaden the disclosure and the claims beyond what has been included when drafting the application that was filed You do not get a second chance except for simple clarifications and for narrowing the claims when further prior art is taken into account You do not get a second chance except for simple clarifications and for narrowing the claims when further prior art is taken into account You are responsible for fulfilling the requirement of full and clear disclosure You are responsible for fulfilling the requirement of full and clear disclosure You are responsible for getting the scope of protection that the inventor deserves You are responsible for getting the scope of protection that the inventor deserves

86 INDEPENDENT CLAIMS DRAFTING INDEPENDENT CLAIMS- Easy to understand the invention Easy to understand the invention Easy to search Easy to search Easy to license Easy to license Easy to establish infringement Easy to establish infringement

87 CHARACTERIZATION IN CLAIMS Characterization not possible in many cases Characterization not possible in many cases Need not be characterized Need not be characterized Even if characterized, sub-claims need not be restricted to characterized part Even if characterized, sub-claims need not be restricted to characterized part

88 DRAFTING CLAIMS - CHEMICAL PATENTS Substance per se -broad coverage Substance per se -broad coverage Substance can be defined in terms of nomenclature, general formula, structural formula, constituents, properties, constructional or structural features, use, etc Substance can be defined in terms of nomenclature, general formula, structural formula, constituents, properties, constructional or structural features, use, etc Process Process a) Starting materials b) Steps of the process c) Various parameters involved in each step, and d) End product.

89 DRAFTING CLAIMS - CHEMICAL PATENTS Product per se Product per se Composition/synergy Composition/synergy 2 nd generation product enhanced efficacy 2 nd generation product enhanced efficacy Describe essential ingredients of product/composition Describe essential ingredients of product/composition Ratio/percentage of the ingredients Ratio/percentage of the ingredients Their effective amounts Their effective amounts Any optional/additional ingredients Any optional/additional ingredients

90 DRAFTING TIPS Proportions: Provide a broad workable range unless an exact amount is crucial and essential to the success of the invention Proportions: Provide a broad workable range unless an exact amount is crucial and essential to the success of the invention Specify the class and specific chemicals used Specify the class and specific chemicals used Ex: All the oxidants that would enable the invention, all alkali/acids that would help to work the invention

91 DRAFTING TIPS Avoid negative examples Example; - Vast difference in the IC 50 values of anticancer drugs with two different hosts. - Vast difference in the IC 50 values of anticancer drugs with two different hosts. -An anticancer drug effective against a subject may not be providing the similar result with a subject of another genus. -An anticancer drug effective against a subject may not be providing the similar result with a subject of another genus.

92 ELEMENTS OF A CLAIM Preamble –indicates the subject matter for which the protection is sought Preamble –indicates the subject matter for which the protection is sought Connecting link- such as comprising or consisting or wherein etc Connecting link- such as comprising or consisting or wherein etc Body of the claim – indicates the feature of the invention Body of the claim – indicates the feature of the invention

93 CLAIMS The number of the claims shall be reasonable in consideration of the nature of the invention claimed. The number of the claims shall be reasonable in consideration of the nature of the invention claimed. If there are several claims, they shall be numbered consecutively in Arabic numerals. If there are several claims, they shall be numbered consecutively in Arabic numerals. Claims shall not rely in respect of the technical features of the invention, on references to the description or drawings. (Self explanatory) Claims shall not rely in respect of the technical features of the invention, on references to the description or drawings. (Self explanatory)

94 PRINCIPAL/ INDEPENDENT CLAIM Claim has to distinguish subject matter over prior art Claim has to distinguish subject matter over prior art Principal claim = generic term from prior art + one or more feature(s) Principal claim = generic term from prior art + one or more feature(s) Note: Definition of generic term as short and as generic as possible Note: Definition of generic term as short and as generic as possible

95 DEPENDENT CLAIMS Any claim stating the essential features of an invention may be followed by one or more claims concerning particular embodiments of that invention. [ e.g. reaction conditions] Any claim stating the essential features of an invention may be followed by one or more claims concerning particular embodiments of that invention. [ e.g. reaction conditions] Dependent claims should bring restrictions to the claims from which it claims dependency. Dependent claims should bring restrictions to the claims from which it claims dependency.

96 GROUPING OF DEPENDENT CLAIMS All dependent claims referring back to a single previous claim, and all dependent claims referring back to several previous claims, shall be grouped together to the extent and in the most practical way possible.

97 IN235798 A N-phenyl- (2R, 5S) dimethylpiperazine derivative represented by the following general formula (I) or a salt thereof: following general formula (I) or a salt thereof: Wherein: R1: Cl, Br, -CF3 or –O-CH3 R2: H or F Cy: 2-cyclopropylpyrimidin-5-yl, 2-methylpyrimidin-5-yl, or 6- (trifluoromethyl)pyridin-3-yl provided that R1 is Br when Cy is 6-(trifluoromethyl)pyridin-3-yl. An Example of Chemical Claim

98 US PATENT NO. 6,884,421 A pharmaceutical composition for treating hyperglycemic condition, said composition comprising a pharmaceutically effective amount of: Butyric acid Butyric acid An insoluble wheat bran fibre; and An insoluble wheat bran fibre; and Guar gum fibre as a soluble hypoglycemic agent Guar gum fibre as a soluble hypoglycemic agent

99 Example of an Indian Claim - In Communications field INDIA A method for decoupling forward and reverse link carriers, said method comprising: assigning one or more forward link carriers to transmit data from a base station to a mobile station; assigning one or more reverse link carriers to transmit data from the mobile station to the base station; and limiting reverse link transmissions corresponding to each of the forward link carriers by …

100 Example of a US claim USA A method comprising: assigning one or more forward link carriers to transmit data from a base station to a mobile station; assigning one or more reverse link carriers to transmit data from the mobile station to the base station; and limiting reverse link transmissions corresponding to each of the forward link carriers wherein said limiting…

101 Example of EP claim A method comprising: assigning one or more forward link carriers to transmit data from a base station to a mobile station; assigning one or more reverse link carriers to transmit data from the mobile station to the base station; characterized by limiting reverse link transmissions corresponding to each of the forward link carriers by …

102 Inventors Idea of the Invention: Inventors Idea of the Invention: NOVELTY: Providing an end cap locator of the shape as shown in the figure NOVELTY: Providing an end cap locator of the shape as shown in the figure NEED: to make the entire device more attractive NEED: to make the entire device more attractive WISH: Imparting a Unique Selling Proposition (USP) to the product WISH: Imparting a Unique Selling Proposition (USP) to the product

103 What are the main claims? An electronic device comprising: a housing with an end cap locator; a housing with an end cap locator; a retractable elongate radio frequency radiating element passing through an aperture associated with the end cap locator, the radiating element being electrically connectable to an electrical circuit provided in the housing and being movable from a retracted position when substantially located in the housing to an extended position when substantially protruded outside the housing; a retractable elongate radio frequency radiating element passing through an aperture associated with the end cap locator, the radiating element being electrically connectable to an electrical circuit provided in the housing and being movable from a retracted position when substantially located in the housing to an extended position when substantially protruded outside the housing; an end cap located on a free end of the radiating element, the end cap operatively engaging the end cap locator when the radiating element is in the retracted position thereby aligning the end cap in a predetermined orientation relative to the housing. an end cap located on a free end of the radiating element, the end cap operatively engaging the end cap locator when the radiating element is in the retracted position thereby aligning the end cap in a predetermined orientation relative to the housing.

104 What are the main claims? An antenna assembly comprising: an inner telescopic elongate element; an inner telescopic elongate element; a collar element provided about a periphery of the said inner telescopic tube section and comprising therein an end cap locator; a collar element provided about a periphery of the said inner telescopic tube section and comprising therein an end cap locator; a forward end of the said inner telescopic tube section being configured to receive an end cap; a forward end of the said inner telescopic tube section being configured to receive an end cap; wherein the end cap operatively engages with the end cap locator when the inner telescopic element is in the retracted position thereby aligning the end cap in a predetermined orientation relative to the collar element. wherein the end cap operatively engages with the end cap locator when the inner telescopic element is in the retracted position thereby aligning the end cap in a predetermined orientation relative to the collar element.

105 What does the main claims cover?

106 What do the main claims cover?

107

108 Patent Corporation Treaty (PCT) Signed by India, effective December 7, 1998 Signed by India, effective December 7, 1998 About 142 countries are members (as on January 14, 2010). About 142 countries are members (as on January 14, 2010).

109 UK JAPAN ITALY CHINA FRANCE KOREA USA HONG KONG FIRST APPLICATION Common Approach

110 WHY PCT ? For protection in Multiple countries If patent has inherent merits PCT IS THE ANSWER PCT IS NOT AN INTERNATIONAL PATENT!!!!

111 WHAT IS PCT ? PCT is a window through which an applicant can file a single patent application and secure priority in the designated states - procedure PCT is a window through which an applicant can file a single patent application and secure priority in the designated states - procedure Search Report: evaluates invention Search Report: evaluates invention Examination Report (optional) Examination Report (optional)

112 HOW TO FILE A PCT APPLICATION ? An applicant may file a PCT application in the Designated National Patent Office PCT HQ (Geneva)

113 THE PROCEDURE Months Filing of priority -founding application Filing of International application 12 Search report 6 Amendment in response 16 Publication of application 18

114 THE PROCEDURE THEN THE NATIONAL LAW OF THE CONCERNED STATES TAKES OVER AND EVENTUALLY PATENT IS GRANTED

115 Budapest Treaty Budapest Treaty India signed this treaty on 17 th December 2001

116 Budapest Treaty Budapest Treaty Deposition of the Microorganism for the purpose of Patent. Deposition of the Microorganism for the purpose of Patent. Made available to public after grant Made available to public after grant

117 Budapest Treaty Budapest Treaty International recognized depository International recognized depository IMTECH- Chandigarh IMTECH- Chandigarh

118 Any Queries?

119 Thank You


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