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Analyzing Patentability ofInventions

ByDr. Kalyan C. Kankanala

kalyan@brainleague.com

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

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Patentability requirements

Patentable subject matter

Industrial Applicability

Novelty

Inventive Step

Specification

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InventionsSubject Matter

Usefulness

Novelty

Non-obviousness

Specification

Patents

KalyansPatent Filter

Model

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Patentable Subject Matter

Product or Process - Section 2(1)(j)

Computer Program

Genetically modified pig

Business method

Massage technique

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Exclusions

Section 3(d)

New formEfficacy

New property or use

Mere use of known processNew product

New reactant

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Exclusions

Explanation: Salts, Esters, Ethers,

Polymorphs, Metabolites, Pure forms,

Particle size, Isomers, Mixture of isomers,

Complexes, Combinations and otherDerivatives of a known substance

considered same substance

Efficacy

Novartis case

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Exclusions

Plants, Animals and Parts (Section

3(j))Computer Programs Per Se (Section

3(k)

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

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Example

Ram, a researcher at IISc, isolates thegene responsible for milk production in

cows. He modifies the gene and inserts itinto a cow and creates a geneticallymodified cow that produces higherquantities of milk.

Ram approaches you for advise onpatentability. Is his invention patentablesubject matter?

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ExampleVishnu develops a computer program for

playing movies in all formats. His program

is very special because of its small sizeand suitability for installation on symbion,

android and other mobile operating

systems.

Is this invention patentable subject matter?

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ExampleManu invents a process of massaging that includes thefollowing steps:

Use of a combination of Kerala, Thai and Europeanmassage techniques;

Playing specific music for each technique to enhancerelaxation; and

Application of an Ayurvedic paste with gentle massage.

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

Is it patentable subject matter?

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ExampleBanana Nair inherits traditional knowledgewith respect to Ayurvedic formulations for

improving immunity and promotinghealthy living from his ancestors. Afterresearching on the formulations, heisolates active ingredients from three ofthe formulations and prepares tablets forenhancing immunity.

Is his invention patentable subject matter?

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

Application

Make

Use

RepeatIndustry

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Novelty

Section 2(1)(l) - New Invention

Prior Publication

Public KnowledgePublic Use

On Sale

Public Display

Public Working

Single prior art reference

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Inventive StepSection 2(1)(ja)

Technical Advance or Economic

Significance and

Not obvious to a person skilled in the

Art.

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Secondary Indicia

Commercial Success

CopyingPraise by expert

Unexpected results

Long felt need

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ExampleInvention

Chair with Wheels

Prior Art

Chairs

Tables with wheels

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SpecificationSection 10

Written Description

Enablement

Best ModeClaims

Object: Notice and Dissemination

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Example

Pencil with Eraser fastened to it

Prior Art

PencilsErasers

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Thank you

For more Info:

www.sinapseblog.comwww.ipracademy.com

www.onlineipcourses.com