By: Adv Swapnil J Gawande

Reg. patent and trademark consultant

Legal advisor(patent): business logic int.(India).

FROM PATENT TO PROFIT

By: Adv Swapnil J Gawande

Reg. patent and trademark consultant

Legal advisor(patent): business logic int.(India).

The Roman law- Theright to use and abuseone’s own within thelimits of the law

PROPERTY

TYPES OF PROPERTY

•TANGIBLE- House, Furniture.

•INTANGIBLE- Shares, Bonds, Debentures,Intellectual Property.

Creation of mind.

What is intellectual property?

CREATION OF MIND

Types of intellectual propertyINDUSTRIAL PROPERTY

Patent (protects invention)

Trademark (protects Identifier)

Industrial designs (protects structure)

Geographical indications (protectslocality)

ARTISTIC WORK

Copyright (protects authorship orartistry)

INDUSTRIAL PROPERTY

Patent (protects invention)

Trademark (protects Identifier)

Industrial designs (protects structure)

Geographical indications (protectslocality)

ARTISTIC WORK

Copyright (protects authorship orartistry)

Ways To Protect Invention

Trade secret

Patenting

Trade secret is information that derives value from not beingreadily ascertainable by others, and is the subject of

efforts reasonable under the circumstances to maintainits secrecy

Term:

Potentially forever-so long the above criteria are met

Term is as long as trade secret can be kept secret.

Trade Secret

Trade secret is information that derives value from not beingreadily ascertainable by others, and is the subject of

efforts reasonable under the circumstances to maintainits secrecy

Term:

Potentially forever-so long the above criteria are met

Term is as long as trade secret can be kept secret.

What is patent?

Governmental grant of exclusive monopoly rights for alimited period of time (20 years from the date offiling) to exclude others from making, using, selling,importing the invention.

Purpose: To foster technology

Inventor teaches technology via patent

For teaching inventor gets a monopoly of 20 years

Claimed in words.

Governmental grant of exclusive monopoly rights for alimited period of time (20 years from the date offiling) to exclude others from making, using, selling,importing the invention.

Purpose: To foster technology

Inventor teaches technology via patent

For teaching inventor gets a monopoly of 20 years

Claimed in words.

Patenting systems

First to invent(USA)

First to file (India)

INDIA A CRYING HORSE

• Patent filed:28940

• Foreign applications:23626(82%)

• 20 Indian filers in top200 at Indian patentoffice.

0

100000

200000

300000

400000

500000

USA japan china korea EPO India

• Patent filed:28940

• Foreign applications:23626(82%)

• 20 Indian filers in top200 at Indian patentoffice.

0

100000

200000

300000

400000

500000

USA japan china korea EPO India

IS PATETINGSO DIFFICULT?IS PATETINGSO DIFFICULT?

INVENTION [sec 2(1) j]NEW PRODUCT OR PROCESS

INVOLVING INVENTIVE STEP ANDCAPABLE OF INDUSTRIALAPPLICATION

[Raj prakashVs Mangat Ram]

So long as it is something novel and new is an inventionSo long as it is something novel and new is an invention

NEW PRODUCT OR PROCESSINVOLVING INVENTIVE STEP ANDCAPABLE OF INDUSTRIALAPPLICATION

[Raj prakashVs Mangat Ram]

INVENTOR George D Me Mestral

Product: VELCROVelcro sew onVelcro coinsVelcro tiesVelcro self adhesiveVelcro consumer range

Product: Post-Its –

Invented and patented by the 3M corporation; basicallya piece of paper with adhesive applied to it. The adhesivewas also a 3M invention, but the true innovation in Post-

Its was to add the adhesive strip to a piece of yellowpaper. It's a simple, useful invention. Before the patentexpired in the 1990s, 3M was the sole manufacturer of

this profitable invention.

Product: Post-Its –

Invented and patented by the 3M corporation; basicallya piece of paper with adhesive applied to it. The adhesivewas also a 3M invention, but the true innovation in Post-

Its was to add the adhesive strip to a piece of yellowpaper. It's a simple, useful invention. Before the patentexpired in the 1990s, 3M was the sole manufacturer of

this profitable invention.

TATA MOTORSFILED ABOUT40 PATENTAPPLICATIONSON ITS SINGLEPRODUCTNANO.

NANO

TATA MOTORSFILED ABOUT40 PATENTAPPLICATIONSON ITS SINGLEPRODUCTNANO.

What is patentable?INVENTION [sec 2(1) j]

1. Novelty

2. Inventive step

3. Capable of industrial application

Novelty

SUBJECT MATTER NOTFALLEN IN PUBLIC DOMAIN.

NOT PUBLISHED BEFOREFILING DATE IN ANYDOCUMENT IN ANY COUNTRY

NOT A PART OF KNOWLEDGEORAL OR OTHERWISEAVAILABLE IN ANY LOCAL ORINDIGINEOUS COMMNITY.

SUBJECT MATTER NOTFALLEN IN PUBLIC DOMAIN.

NOT PUBLISHED BEFOREFILING DATE IN ANYDOCUMENT IN ANY COUNTRY

NOT A PART OF KNOWLEDGEORAL OR OTHERWISEAVAILABLE IN ANY LOCAL ORINDIGINEOUS COMMNITY.

ANTICIPATION (Sec 29- 33)

Publication

Communication togovernment

Public display

Public working forreasonable trial

Publication

Communication togovernment

Public display

Public working forreasonable trial

Inventive step sec 2(1)(ja)

1. Technical advance

2. Economicsignificance

3. Invention notobvious to theperson skilled inthe art.

1. Technical advance

2. Economicsignificance

3. Invention notobvious to theperson skilled inthe art.

INDUSTRIALLY APPLICABLE

Must have some capability to be manufacturedor used in industry.

Lack of UTILITY is ground of revocation of patent64 (1)(g)

Lakhapati Rai Vs Srikissen Dass

Must have some capability to be manufacturedor used in industry.

Lack of UTILITY is ground of revocation of patent64 (1)(g)

Lakhapati Rai Vs Srikissen Dass

WHAT IS NOT PATENTABLE (Sec 3, 4)

Frivolous or claiminganything contrary towell establishednatural laws

Frivolous or claiminganything contrary towell establishednatural laws

contrary topublic order or

morality orprejudicial to

life orenvironment

contrary topublic order or

morality orprejudicial to

life orenvironment

Discovery

•Discovery of living or non living substance•New form or property or use of known substance•new use of a known process or machine or anapparatus not resulting in a new product.•Scientific principle or formulation

•Discovery of living or non living substance•New form or property or use of known substance•new use of a known process or machine or anapparatus not resulting in a new product.•Scientific principle or formulation

Admixture

Substance obtained from admixture of knowncomponents resulting in only aggregation oftheir properties.

Substance obtained from admixture of knowncomponents resulting in only aggregation oftheir properties.

REARRANGEMENT

Mere rearrangementor duplication ofknown devices.

A method ofagriculture orhorticulture.

A method ofagriculture orhorticulture.

METHOD OF TREATMENT

Medical treatment orprocedure of humans or ofanimals.

Non patentable subject matter

•Plants or animals or seeds and biologicalprocess of production or prorogation of these.•Mathematical or business method or computerprogram or algorithm.• Artistic or aesthetic creation like literary ordramatic or musical or cinematographic ortelevision production

Non patentable subject matter

•Plants or animals or seeds and biologicalprocess of production or prorogation of these.•Mathematical or business method or computerprogram or algorithm.• Artistic or aesthetic creation like literary ordramatic or musical or cinematographic ortelevision production

Non patentable subject matter

•Scheme or rule or method of performing anymental act or of a game.• Presentation of information.• Topography of integrated circuits.• Aggregation or duplication of known propertiesof components•Inventions relating to atomic energy underatomic energy act (sec 4)

•Scheme or rule or method of performing anymental act or of a game.• Presentation of information.• Topography of integrated circuits.• Aggregation or duplication of known propertiesof components•Inventions relating to atomic energy underatomic energy act (sec 4)

Things to do before filing or acquiring patent

Patentability search

www.uspto.org

www.ipindia.nic.in

www.googlepatent.com

Types of patentability search

Prior art search: identify potential of patentability ofyour invention

Infringement search: whether you can make, use, orsell an invention

validity search: determine if a patent is actuallyvalid and in force

Domestic Right

Is there a Global patent?

TYPES OF PATENT APPLICATION

DOMESTIC APPLICATION

ORDINARY APPLICATION

PATENT OF ADDITION

DIVISIONAL APPLICATION

INTERNATIONAL FILING

CONVENTIONAL APPLICATION

APPLICATION UNDER PCT

Forms of patent applicatonFORM 1

APPLICATION OF PATENT

APPLICANT /INVENTOR

FORM 2

PROVISIONAL/COMPLETE SPECIFICATION

TITLE

TECHNICAL FIELD

PRIOR ART

OBJECT

STATEMENT

BRIEF DESCRIPTION OF DRAWINGS

DETAIL DESCRPTION OF INVENTION

BEST METHOD OF PERFORMANCE

CLAIMS

ABSTRACT

FIGURES

PROVISIONAL/COMPLETE SPECIFICATION

TITLE

TECHNICAL FIELD

PRIOR ART

OBJECT

STATEMENT

BRIEF DESCRIPTION OF DRAWINGS

DETAIL DESCRPTION OF INVENTION

BEST METHOD OF PERFORMANCE

CLAIMS

ABSTRACT

FIGURES

CLAIMSThe complete specification should end with a statement ofclaims defining the scope of protection.

CLAIM IS STATEMENT OF TECHNICAL FACT EXPRESSED INLEGAL TERM

The claim should define the process, composition,substance, device and not their advantages and /or uses.

The first claim is a principal claim, which is called as anindependent claim and all other subsequent claims aredependent on the first claim. However, there can be morethan one independent claim in a single specificationdepending upon the nature of the invention.

The complete specification should end with a statement ofclaims defining the scope of protection.

CLAIM IS STATEMENT OF TECHNICAL FACT EXPRESSED INLEGAL TERM

The claim should define the process, composition,substance, device and not their advantages and /or uses.

The first claim is a principal claim, which is called as anindependent claim and all other subsequent claims aredependent on the first claim. However, there can be morethan one independent claim in a single specificationdepending upon the nature of the invention.

CLAIMS

SHOULD BE IN SINGLE SENTENCENO MONOPOLY IS OBTAINED ON MATTER DESCRIBED INCOMPLETE SPECIFICATION UNLESS IT IS CLAIMED IN CLAIMSTATEMENT OF CLAIMS SHALL BE PRECEEDED BYPREAMBLE “I OR WE CLAIM”SHALL RELATE TO SINGLE INVENTION OR GROUP OFINVENTION RELATE TO FORM A SINGLE INVENTION

There must be at least one claim in a patent, and thereasoning is that possible infringers must be able tounderstand what is and is not protected based on theclaims.

SHOULD BE IN SINGLE SENTENCENO MONOPOLY IS OBTAINED ON MATTER DESCRIBED INCOMPLETE SPECIFICATION UNLESS IT IS CLAIMED IN CLAIMSTATEMENT OF CLAIMS SHALL BE PRECEEDED BYPREAMBLE “I OR WE CLAIM”SHALL RELATE TO SINGLE INVENTION OR GROUP OFINVENTION RELATE TO FORM A SINGLE INVENTION

There must be at least one claim in a patent, and thereasoning is that possible infringers must be able tounderstand what is and is not protected based on theclaims.

Ask Yourself

Assuming this was patented by someone else

what will I do?

•Figure out possible solutions and patent them too…

•Just because one of your claims is objected to does notmean that the rest of your claims are invalid. Each claimis evaluated on its own merit. This is why it is importantto make claims on all aspects of your invention to ensurethat you receive the most protection possible.

Assuming this was patented by someone else

what will I do?

•Figure out possible solutions and patent them too…

•Just because one of your claims is objected to does notmean that the rest of your claims are invalid. Each claimis evaluated on its own merit. This is why it is importantto make claims on all aspects of your invention to ensurethat you receive the most protection possible.

CRITERIA FORDRAFTING CLAIMS

BE CLEARYour claim must be clear so that you do not cause the reader to speculate about the claim. If you find yourself using wordssuch as "thin", "strong", "a major part", "such as", "when required", then you are probably not being clear enough. Thesewords force the reader to make a subjective judgment, not an objective observation.

BE COMPLETEEach claim should be complete, so that it covers the inventive feature and enough elements around it to put the invention inthe proper context.

BE SUPPORTEDThe claims have to be supported by the description. This means that all the characteristics of your invention that form part ofthe claims must be fully explained in the description. In addition, any terms you use in the claims must be either found in thedescription or clearly inferred from the description.

BE CLEARYour claim must be clear so that you do not cause the reader to speculate about the claim. If you find yourself using wordssuch as "thin", "strong", "a major part", "such as", "when required", then you are probably not being clear enough. Thesewords force the reader to make a subjective judgment, not an objective observation.

BE COMPLETEEach claim should be complete, so that it covers the inventive feature and enough elements around it to put the invention inthe proper context.

BE SUPPORTEDThe claims have to be supported by the description. This means that all the characteristics of your invention that form part ofthe claims must be fully explained in the description. In addition, any terms you use in the claims must be either found in thedescription or clearly inferred from the description.

Creating a bulls eye

FORM 3

• STATEMENTANDUNDERTAKINGUNDERSECTION 8

• STATEMENTANDUNDERTAKINGUNDERSECTION 8

FORM 5

• DECLARATIONOFINVENTORSHIPIN CASE WHENPROVISIONALSPECIFICATIONIS FOLLOWEDBY COMPLETESPECIFICATION

• ONLINE FILING

• DECLARATIONOFINVENTORSHIPIN CASE WHENPROVISIONALSPECIFICATIONIS FOLLOWEDBY COMPLETESPECIFICATION

• ONLINE FILING

FORM 9

• REQUEST FOREARLYPUBLICATION

FORM 18

• REQUEST FOREXAMINATION

LIMIT TO NUMBER OF PAGES ANDCLAIMS

NO SUCH LIMIT ONLY FEE STRUCTURE VARIES• MORE THAN 30 PAGES- 100 PER PAGE• MORE THAN 10 CLAIMS-200 PER CLAIM

PCT Timeline

Myth: the inventor needs tomake a prototype before he

prepares a patent application.

Myth: the inventor needs tomake a prototype before he

prepares a patent application.

Misconceptions on patentability

Myth: the inventor needs tomake a prototype before he

prepares a patent application.

Myth: the inventor needs toscientifically explain how or why

his invention works.

Myth: the inventor needs toscientifically explain how or why

his invention works.

Describing theinvention in a

publication or publicpresentation;

Describing theinvention in a

publication or publicpresentation;

Offering theinvention for sale;

Offering theinvention for sale;

common premature disclosure mistakes:

Describing theinvention in a

publication or publicpresentation;

Offering theinvention for sale;

Disclosing theinvention without a

confidentialityagreement in place--

often to potentialinvestors.

Disclosing theinvention without a

confidentialityagreement in place--

often to potentialinvestors.

the inventor is required to disclose sufficient information sothat when the monopoly period expires, others can practicethe invention.

the inventor is required to disclose sufficient information sothat when the monopoly period expires, others can practicethe invention.

Full disclosure

the inventor is required to disclose sufficient information sothat when the monopoly period expires, others can practicethe invention.

Best method of performanceBest method of performance

Patentability vs. Marketability

Something might be marketable (desired by consumers whenoffered for sale) but not qualify for patent protection.

Something might be patentable (novel, useful and non-obvious)but not marketable to a mass of consumers.

Something might be marketable (desired by consumers whenoffered for sale) but not qualify for patent protection.

Something might be patentable (novel, useful and non-obvious)but not marketable to a mass of consumers.

Monetizing your IP

THANK YOU

Adv. Swapnil Gawande (Reg. Patent consultant IN/PA/1587)

sjgawande@gmail.comCell:9890333567Visit us at: www.businesslogicint.org

Monetizing your IP

THANK YOU

Adv. Swapnil Gawande (Reg. Patent consultant IN/PA/1587)

sjgawande@gmail.comCell:9890333567Visit us at: www.businesslogicint.org