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Analyzing Patentability ofInventions
ByDr. Kalyan C. Kankanala
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
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