Law of Patents

MONETISING innovations & business- an overview of IPR

Law

MarketLab

1. 2007 brand valueReliance Industries Rs. 26801 CroresTCS Rs. 19592 Crores Indian Oil Corporation Rs. 17987 Crores. IOCLs brand value formed 40% of the company’s total value.

2. 2010 brand value of Google US $114250 Mn. Its brand is its strongest barrier to entry of competitors.

3. Nestle’s balance sheet 2009 discloses: Property, plant and equipment US $ 21 599 MnGoodwill and intangible assets US $ 34 160 Mn

4. Pfizer’s balance sheet 2009 discloses: Property, plant and equipment US $ 22 789 MnGoodwill and intangible assets US $ 110 391 Mn

Agric

ultu

ral

Econ

omy

Knowledge growth was over

generations

tradesecrets

Indu

stria

l Ec

onom

y

Capital controlled IP

Development of IP litigation

2 kinds of knowledge:

- Scientificdevelopment on

platforms

- Standardisation and rationalisation

Know

ledg

eEc

onom

y

Use of IP – FTO-Business process IP- brand value - control over ownership

-Short life-cycle technologies-over-lapping innovation

-Software patents and increased IP complexity

Crea

tive

Econ

omy

Creativity as the key driver- IP value independent of physical carrier-transform information-ideas to assets-human capital-in sourcing

Difficult to create, easy to infringe

Producers and

consumers

corporations Flat world

Big corporations

Skilled People

Niche-driven

GreenExpertise

ProducerAs

Consumer

Social networks

Mass consumption struggle for better share of benefits

Segmented markets

Aggregation of Apex

consumers

Information society

Aggregation of larger

communities of consumers

Network society (or

social networks?)

PROSUMER

Monetisation

1. How do we transform Ideas to assets

2. How do we focus on monetisable IP?

"If you don't make things for your own surprise, you become like a baker, everyday making the same round bread to sell." Dasarath Patel, Co-founder of National Institute of Design, Ahmedabad

“In most people’s vocabularies, design means veneer. It’s interior decorating. It’s the fabric of the curtains of the sofa. But to me, nothing could be further from the meaning of design. Design is the fundamental soul of a human-made creation that ends up expressing itself in successive outer layers of the product or service.” – Fortune

“That’s not what we think design is. It’s not just what it looks like and feels like. Design is how it works” – NYT, The Guts of a New Machine, 2003

http://money.cnn.com/magazines/fortune/fortune_archive/2000/01/24/272277/index.htm

STEPS IN AN IP STRATEGY

Asset identifica

tion

Prioritisation

Protection

Valuation

monetisation

Prioritisation

core peripheral

Secondary Results of R&D

Shared IP

Core:• produce• Protect• Replicate• Transfer• Translate • transport

Peripheral• License

out• License –

in to bundle

• Co-brand• Protect to

monetise

Secondary Results: • Assign• License

out• Protect

to monetise

Shared IPIdentify, value and protect Classify as core / not core

EXPECT THESE TO CHANGE OVER TIME

Legal

Registration

Confidentiality

Technical

IT due diligence

Using technological innovations

PROTECTION

1. Rights managed and royalty free images

2. < 100 mn images3. Bettman archives4. For revolving display of digital artwork

on digital frames5. Acquiring pics from pro-ams6. Privately owned company of Bill Gates

The brand name for a range of precisely-cut crystal (a particular type of glass) and related luxury products produced by Swarovski AG of Wattens, Austria.

POETRY of PRECISION: Swarovski is the synonym for crystal.

In 1895, Daniel Swarovski pursued his dream of creating a crystal so perfect that it captured both the eye and the heart. .

Swarovski, now the undisputed world leader in cut crystal has remained fully independent since its foundation in Wattens, Austria. The company employs 26,000 people and maintains a presence in more than 120 countries worldwide.

The company draws its richness of expression from the cultural heritage of Central Europe and its talents from forging links between the arts, science and economics. .

So Is IP about:

Monopoly or Collaboration

Necessary Cost or Desirable Investment

Risk management or Business Strategy

Enhancement of profit or Multiplying Revenue Streams

- A hut on the goldmine?

Thank you.Let’s discuss…

Source: IP dome/ nalsarpro materials

Patents Regime

Dr.V.C.VivekanandanNALSAR University of Law

[email protected]

What is a Patent ?

• Patent is an exclusive monopoly right given by the sovereign to an inventor for an invention

• An invention to be patented should fulfill the criteria of the patent legal regime of a country

• It is for a limited period of time (20 years)• To get the Patent the Inventor should disclose

the invention fully

– The What ?

• Exclusive monopoly to the inventor means to exclude any one from manufacturing, using or selling the invention during the period of the patent.(a negative right !)

• This exclusive right is only in the country(ies) in which the patent is granted.

What is not patentable

• Discoveries are not patentable

• Ideas are not patentable

• Laws of nature

What Can Be Patented

• New and useful• Process, • Machine, • Manufacture• Composition of matter, • Or any new and useful improvement thereof

What ?

• Patents are granted for inventions “patentable” under the legal regime of a country based on -

• Novel- • New in the global context • not published• Worked• used –anywhere• This constitutes prior art

Prior Art- everything made available to the public by means of:

PRIOR ART

Determining Prior Art

Publicationany document from any source can in fact be used as

prior art. It does not matter in which language the document is

written, in how many copies it was made available, or whether any copies where in fact bought or read by third parties.

The only thing that matters is that the document was available to the public before the critical date.

All rights Reserved Prof.vivek 28

Determining Prior Art• Publicly available material

• It is irrelevant whether the public in fact accessed the document, or how easy it was to find the document.

• Publicly available products also count as prior art, even though it may be very difficult to determine exactly what the product is made of or how it works.

• If a device is put on the market before the patent application filed on a feature in that device, the feature is no longer novel

• If the product is not sold, but only demonstrated to the public, then only those features which the public could observe count as prior art.


Determining Prior Art

• Oral disclosures• Oral disclosures, such as lectures or non confidential

discussions between the inventor and a third party, usually also count as prior art.

• The problem with oral disclosures is usually how to prove that they took place and what was disclosed exactly.

• In some cases a transcript or recording may be available.

• This can serve as evidence of what was orally disclosed, although establishing the date of the oral disclosure may still be difficult.


Determining Prior Art Internet publications Internet publications are special case. As most patent offices

perform their search and examination several months after filing of the application, a search on the Internet will not be of much use.

In the intervening months pages on the Web may have been updated, added or removed, which makes it impossible to determine whether the invention was published on the Internet before the day of filing.

But if it can be proven that a web page with particular contents was publicly accessible the day before the filing date, then that web page will count as prior art.

A site such as The Internet Archive could be very useful in such cases


PRIOR ART -NOVELTY

• The prior art has to be from a single source

• Combination of prior arts cannot invalidate Novelty


What ?

Non- obvious- /Inventive StepShould not be obviousPerson skilled in the art will judge The patent examiner is the person skilled in

the art Should involve inventive stepSubject of many litigations


Non Obviousness- Inventive Step

• Inventive step is a feature of an invention that involves technical advance

• as compared to existing knowledge or having economic significance or

• both, making the invention non obvious to a person skilled in art.

• Here definition of inventive step has been enlarged to include economic significance of the invention apart from already existing criteria for determining inventive step.


Non Obviousness- Inventive Step• To judge the inventive step, the

following question is to be borne in mind-

• “Would a non-inventive mind have thought of the alleged invention?”.

• If the answer is “No”, then the invention is non-obvious.


Obviousness

• Definition of one of ‘ordinary skill in the art’

• Combining two or more prior art references

• Motivation to combine• Some teaching, suggestion, or

motivation to modify or combine found either in the references themselves or in the knowledge generally available to one of ordinary skill in the art


Obviousness• M/s. Bishwanath Prasad Radhey Shyam

Appellant v. M/s. Hindustan• Metal Industries, “It is important that in

order to be patentable an improvement on something known before or a combination of different matters already known, should be something more than a mere workshop improvement; and must independently satisfy the test of invention or an ‘inventive step’.


Obiviousness

• To be patentable the improvement or the combination must produce a new result, or a new article or a better or cheaper article than before. The combination of old known integers may be so combined that by their working interrelation they produce a new process or improved result. Mere collection of more than one integers or things, not involving the exercise of any inventive faculty, does not qualify for the grant of a patent.”


What ?

• Industrial application-• Should demonstrate industrial utility

Industrial Utility

• An invention is capable of industrial application if it satisfies three conditions, Cumulatively:

• Can be made;• Can be used in at least one field of

activity;• Can be reproduced with the same

characteristics as many times as necessary

The Test

• Novelty

• Utility

• Non-Obviousness

• Statutory Bar

• NUNS TEST

TYPES OF PATENTS

• PRODUCT

• PROCESS

–Who gets the Patent

• Inventor • Assignee of the Inventor• Any legal entity assigned by the inventor

INDIAN PATENT ACT

• NON INVENTIONS UNDER SECTION 3

Sec.3:- What are not inventions?

The following are not inventions within the meaning of this Act,-

(a) An invention which is frivolous or which claims anything obviously contrary to well established natural laws;


(b) 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;


(c) the mere discovery of a scientific principle or the formulation of an abstract theory or discovery of any living thing or non-living substance occurring in nature.

Sec.3:- What are not inventions?(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 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.

Explanation:-

For the purposes of this clause, salts, esters, ethers, poly-morphs, metabolites, pure form, 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.


(e) 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 substance.Ex. Oral Rehydrating Solution containing Glucose, Sodium chloride, sodium bicarbonate, and potassium chloride.

Sec.3:- What are not inventions?(f) The mere

arrangement or re-arrangement or duplication of known devices each functioning independently of one another in a known way;


(h) a method of agriculture or horticulture.

(i) any process for the medicinal, surgical, curative, prophylactic [diagnostic, therapeutic] or other treatment of human beings or any process for a similar treatment of animals to render them free of disease or to increase their economic value or that of their products;


(j) plants and animals in whole or any part thereof other than micro organisms but including seeds, varieties and species and essentially biological processes for production or propagation of plants and animals;


(k) a mathematical or business method or a computer program per se or algorithms;

(l) a literary, dramatic, musical or artistic work or any other aesthetic creation whatsoever including cinematographic works and television productions;

21



(m) a mere scheme or rule or method of performing mental act or method of playing game;


(n) a presentation of information;

(o) topography of integrated circuits;

23


(p) an invention which, in effect, is traditional knowledge of which is an aggregation or duplication of known properties of additionally known component or components.

Patent Prosecution

May 3, 2023

59

Patent application filing

Publication

18 months

Request for Examination(Express Examination Possible)

within 48 months from the date of priority

Issue of Examination Report

within 6 months from the request

Request for Early Publication any time before 18 months

Pre Grant Opposition

Patent Prosecution (contd.)

60

Reply to Examination Report

Grant

Post Grant Opposition

within 12 months from the date of grant of patent

Renewals

compliance within 12 months from the date of issue of examination report

Opposition Procedure Pre Grant Opposition Under Section 25(1)

Post Grant Opposition Under Section 25(2) Revocation before IPAB

Counter claim of invalidity in any Infringement case

May 3, 2023 61

Pre-Grant Opposition- Procedure

18 months publication

Opposition By way of Representation by Anyone

Request for Examination

Notice to Applicant

Applicant’s reply to the Notice

May 3, 2023

62

Within 6 months of the first publication or at anytime before grant

Considered only after the Applicant files for Request for Examination

Within three months from date of notice

Pre-Grant Opposition- Procedure (Contd.)

Consideration of Applicant’s reply

Satisfactory Not Satisfactory

Grant Amendment Suggested

Hearing

Rejection

MCO 63

Within one month from the above submission

Post Grant Opposition

Notification of Grant

Notice of Opposition

Constitution of Opposition Board

Reply statement and evidence by applicant

Reply by Opponent

Hearing64

Within 2 months from date of date of receipt of copy of written statement

Within 1 month from the date of receipt of copy of applicant’s reply statement

Within 12 months from date of notification

With written statements and evidence

Drafting a Patent

• Provisional application• Final specification• 12months to file a final specification• Should be in the format specified by

the patent office

TITLE

BACKGROUND OF INVENTIONSUMMARY OF INVENTIONDETAILED DESCRIPTION OF INVENTION

ExamplesCLAIMSFIGURESOTHER ATTACHMENTSABSTRACT

Best Mode / Preferred Embodiments

Do’s and Dont’s of Drafting

• There is a main Claim and dependent claims

• Each claim should be a single sentence which can run into many lines.

• Widest claim as possible• Should not be laudatory• Should be clear and understandable

67

Do’s and Dont’s of Patent drafting

• Figures are important• The Claims are the crux of the patent• Prior art convinces the examiner of

the non-obvious factor• Best mode is important• Title is the choice of the inventor• Patent office can redo it if it is not

relevant68

Do’s and don’t’s of Patent drafting

• There are claim limits• Additional claim will have additional

fee• The title should not exceed 15 words• Claims can be amended within the

scope of the invention• Difference between ‘compirising’ and

‘consisting’ ?69

Let us play the inventor

A Sample Claim

• I claim: 1. A disposable toothbrush comprising: a cap including an opening for receipt of a fingertip,a flat surface located on one side of said cap having bristles projecting therefrom for brushing of teeth, a layer of dehydrated toothpaste being located on said bristles, and at least one dental hygiene accessory located on a side of said cap opposite to said one side, said at least one dental hygiene accessory being located within a capsule slidably mounted on said cap.

• 2. A disposable toothbrush as claimed in claim 1, wherein said capsule surrounds said at least one dental hygiene accessory.

3. A disposable toothbrush as claimed in claim 1, wherein said cap is biodegradable.

Patent Cooperation Treaty• The Patent Cooperation Treaty is an agreement for

international cooperation in the field of patents.

• It is a treaty for rationalization and cooperation with regard to the filing, searching and examination of patent applications and the dissemination of the technical information contained therein.

• The PCT does not provide for the grant of “international patents”: the task of and responsibility for granting patents

• remains exclusively in the hands of the patent Offices of, or acting for, the countries where protection is sought (the “designated Offices”).

pct• The Patent Cooperation Treaty or “PCT”

entered into force• n 24 January 1978, and became operational

on 01 June 1978, with an initial 18 Contracting States.

• Presently more than 130 Contracting States had adhered to the PCT.

• Came into force for India on• 07 December, 1998.

• Filing and not granting.

THANK YOU• ANY QUESTIONS?

• VISIT –www.nalsarpro.org for our courses on Patents Law/Cyber laws – at centres of Pune/Mumbai/Delhi/Bangalore/Hyderabad/Ahmedabad and Chennai

• ACKNOWLEDGMENT• NALSAR PRO MATERIALS• MURALIDHARAN- VISITING FACULTY -NALSARPRO• ANINDYA SIRCAR- VISITING FACULTY-NALSARPRO• PVS GIRIDHAR- VISITING FACULTY-NALSARPRO• SWAPNA SUNDAR –VISITING FACULTY-NALSARPRO• NET RESOURCES

Documents

Law of Patents