Patent Protection &Drafting for SMEs Dr. S.K. Mitra Kolkata

Intellectual Property Rights  Patents  Designs  Trade Marks  Copyrights SKM

Patent An invention on remote control mechanism can be protected by Patent Law. Patent right is valid for 20 years from the date of Patent as new technology Trade Mark Trademark “SONY” can be protected by Trademark Law. Trademark right is valid for 10 years from the date of registration and renewable for whole life SONY Design A design of TV set can be protected by Design Law. Design right is valid for 15 years from the date of its registration. SKM

Pharmaceutical Product SKM

Role of Patent System Encouragement for Improvement of Technology Providing Reward as Exclusive Rights for disclosure Making profits or earning Royalty through putting the Invention into Practice Transferring into public property after expiry of term or cessation of Patent SKM

What is Patent ? Intellectual Property Industrial Intellectual Property Ownership  Nature of Property Intangible Transferable  Grant from the Government  Monopoly of right  to the owner  for invention  on application  for limited period SKM

Validity of Patent not guaranteed Obligation of Patentee to work & inform Controller to the extent of commercialization Importance of Patent Document SKM

Bibliographic Information Technical Information Patent Document Bibliographic Information Technical Information Date of Filing & Publication  Name & Address of Applicant  Title, Classification, Abstract, Drawing, Formula etc.  Corresponding Priority Application /Patent  State of Art  Description  Drawings  Claim(s) SKM

Patent System Introduced in 1856 Comprehensive Patents & Designs Act, 1911  Uniform Term of Patent for 16 Years  No Discrimination on Nature of Invention PROVIDES SKM

Basics of The Patents Act 1970 Reduce Term (7 Years) Drug and Food  Differential Term of Patent Full Term (14 Years) Other Inventions  Restriction of Product Patent  Product Patent Not Allowable on Drug, Food & Chemical Produced by Chemical Process  Process Patent Allowable on Any Kind of Inventions  Compulsory License & License of Right with More Grounds SKM

Effect of The Patents Act, 1970  Substantial Development of Public Sector and Small Scale Unit  Increases Collaborative Research in National Laboratories  Reduces Activity of Multi National Companies Criticized by Multi National Companies for Narrow Protection SKM

INTELLECTUAL PROPERTY RIGHTS UNDER TRADE RELATED ASPECTS ON  PATENTS  DESIGNS  TRADEMARKS  COPYRIGHTS  GEOGRAPHICAL INDICATION  LAYOUT DESIGNS OF INTEGRATED CIRCUITS  PROTECTION OF UNDISCLOSED INFORMATION  CONTROL OF ANTI COMPETITIVE PRACTICES IN CONTRACTUAL LICENCES SKM

(Part of WTO Agreement) Trade Related Intellectual Property Rights(TRIPs) (Part of WTO Agreement) Minimum Patent Term : 20 years from filing  Pharmaceuticals : Patentable as products  Importation : Accepted as working a Patent Compulsory licensing : Special circumstances only  Burden of proof (process) : Reversed SKM

Applications of Patents by Indians & Foreigners   Year Indians Foreigners Total 1993-1994 1266 2603 3869 1994-1995 1741 3589 5330 1995-1996 1606 5430 7036 1996-1997 1661 6901 8562 1997-1998 1926 8229 10155 1998-1999 2247 6707 8954 1999-2000 2206 2618 4824 2000-2001 2179 6324 8503 2001-2002 2371 8221 10592 2002-2003 2620 8846 11466 2003-2004 3218 9395 12613 2004-2005 3630 13836 17466 2006-2007 6252 22610 28862 2008-2009 6161 30651 36812 SKM

Trend of Invention Chemicals including Foods & Drugs 42% Electronics & Telecommunication 37% Mechanical 12% Textiles 4% Miscellaneous including Metallurgy, Bio-technology, Civil, Public health, Bio-medical etc. 5% SKM

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INVENTION Statutory Non-Statutory New Product or Process involving an Inventive step & capable of Industrial Application Solution of specific problem in the field of technology (Product/Process) SKM

INVENTION TO WHOM IT IS OBVIOUS Inventive Step Non-obvious Application Industrial Novel Product / Process Obviousness: Open to the eye or mind and perfectly evident to a person thinking on the subject. TO WHOM IT IS OBVIOUS  A skilled technicians acquainted with techniques  Inventors  Experts SKM

Invention Vs. Discovery SKM Invention Vs. Know-how Invention: Does not require to disclose the information in the specification, be sufficient for Commercial Exploitation of invention Know-how: Covers all informations necessary to commercialise the invention e.g. setting up a production plant, details of production method, the design, drawing, etc. Know-how is traded when transferring technology Invention Vs. Discovery Invention: Adds to the amount of human knowledge but not merely by disclosing something. It involves suggestion of the act while results new process, products etc. Discovery: Adds only to the amount of human Knowledge Unity of Invention: Singh Inventive Concept Obviousness: Something which is open to the eye or mind and perfectly evident to a person thinking on the subject To Whom it is obvious ? (a) A skilled technician – Acquainted with techniques (b) Inventor (C) Expert

NOVELTY NONOBVIOUSNESS LACK OF NOVELTY IS ANTICIPATION EACH ELEMENT IS TO BE DISCLOSED IN A SINGLE PRIOR ART REFERENCE LACK OF INVENTIVE STEP IS OBVIOUSNESS IS THE SUBJECT MATTER OBVIOUS TO A PERSON SKILLED IN THE ART SKM

NEW COMPOUNDS Industrially useful compounds - patentable Theoretically interesting compounds Not Patentable Useful intermediates for the preparation of other compounds – patentable Non-obvious compounds – patentable SKM

New Synthetic Processes New process for manufacturing known compounds Patentable Known process for manufacturing new compounds Improvements in known processes Method of treatment Not Patentable SKM

PHARMACEUTICAL COMPOSITIONS Combination preparations New drug delivery system c) Compound not used previously as a drug + conventional carrier or excipient. SKM

Inventions Not Patentable  Frivolous or contrary to well-established natural laws  Contrary to law or morality or injurious to public health  Scientific principle or formulation of abstract theory  New property or use of known substance  Mere use of known process, machine or apparatus  Substance by mere admixing  Mere arrangement/rearrangement/duplication of known devices  Method of agriculture/horticulture  Method of treatment of human beings, animals  Plants & Animals in whole or any part other than microorganisms SKM

Inventions Not Patentable  Mathematical/Business method/Computer program per se/ Algorithms  Mere scheme/Rule/Method of performing mental Act/ Playing game  Presentation of information  Topography of integrated circuits  Invention on traditional knowledge/Aggregation or duplication of known properties of traditionally known components  Related to atomic energy SKM

When to File a Patent Application ? Filing should be made immediate after the invention is developed for commercial working Delay in filing may involve certain risks  Other invention of substantially same nature may take the advantage of priority, depriving the true and first inventor  An inadvertent publication of invention by inventor or others may damage the novelty of invention Patent should be filed before any kind of publication or commercial using or communication to others SKM

Filing Procedure & Formalities Applicant True & first inventor or assignee or legal representative separately or jointly  Application  One application in prescribed form (duplicate) for one invention in appropriate jurisdiction with prescribed fee  Information &  Abroad filing & status of filing in Undertaking prescribed form (duplicate)  Declaration of  Filing complete specification after Inventorship provisional specification or filing convention application  Priority  Certified copy of basic application in Document convention country  Provisional / Complete Specification (duplicate)  Power of Attorney (Where applicable) SKM

Jurisdiction for Filing Patent Applications and Union Territories (UT) Head Office (Kolkata) Branch Office (Delhi) Branch Office (Mumbai) Branch Office (Chennai) Haryana, Punjub, Delhi, Himachal Pradesh (HP) Jammu & Kashmir (J&K) Rajasthan, Chandigarh (UT) Uttar Pradesh (UP), Uttarakhand Maharashtra, Gujarat, Madhya Pradesh (MP) Goa, Daman & Diu (UT) Dadar & Nagar Haveli (UT), Chattisgarh, Andhra Pradesh (AP), Kerala, Tamil Nadu, Karnataka, Pondicherry (UT), Laccadive, Minicoy & Amindivi Island (UT) Rest of States and Union Territories (UT) Kolkata SKM

Contents in Specification  Provisional Specification  Description of essential features of invention  Need not include claims & manner of performing invention Advantage  Provisional protection from early stage of invention  Cognating of two or more provisional specifications & constitute one final complete specification during different stages of invention  Complete Specification Field of invention (Title)  Prior art/state of art Setting for invention  Object of invention Statement of invention  Statement of Drawings (if any) Description with Ex. Set of claims  Abstract SKM

Prior Art  Prior knowledge from the publication both in Patent and Non- patent literature  Required to establish novelty and non-obviousness of invention  Information given in prior document must be sufficient to enable the instructed reader to perceive and understand discovery without making further experiments  Not mandatory in specification  Advantage :  Better understanding of invention by way of finding out lacuna in Prior Art  Setting up the invention by removing the defects  Improvements over Prior Art SKM

Patent Search Essential before filing patent application To draft the complete specification, particularly in prior art portion To justify the invention novel and nonobviousness  To face the future opposition, if entered SKM

Access to Technical Information Where to get Search Materials ?  Non-Patent Literature Search  Patent Search Where to get Search Materials ?  Books, Journals, Patent Specifications  Electronic Database in CD-ROMs  Website of different foreign Patent Offices  Website of Indian Institutions e.g. TIFAC, CSIR etc. SKM

Patent Application filed at Appropriate Patent Office PROCEDURE Patent Application filed at Appropriate Patent Office Notified at the end of 18 months Substantive Examination on request within 48 months from First Application 12 months from FER to meet Official Requirements & No Pre-grant representation U/S 25(1) Refused Granted Appeal to IPAB Allowed Notified in Official Journal Rejected Post Grant Opposition Opposition decided Appeal to IPAB in favour or against applicant Rejected Allowed SKM

Opposition to Grant of Patent  Grant Notification  Opponent enters within twelve months Grounds of Opposition (1) Wrongful obtaining (2) Prior publication (3) Prior claiming (4) Prior public knowledge and use in India (5) Obviousness (6) Not an invention or not patentable invention (7) Insufficiency (8) Information regarding foreign filing not filed or false (9) Convention application not made within 12 months (10) Not disclosed or wrongly mentioned source/geographical origin (11) Anticipated by knowledge, oral/otherwise SKM

Criteria for Grant Not opposed through Pre-grant Representation [Sec 25(1)] Opposed but decided in favour of applicant Not refused (U/S 15) Granted with Serial Number & Simultaneous Notification in Official Journal SKM

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Term of Patent Date of Patent Twenty years for any invention from date of patent Date of Patent Date of application filed in India (Ordinary Application) International Application date in Receiving Office (PCT Application) SKM

Rights of Patentee Use, Exercise, Sell or Distribute of Article/Substance from Date of notification but after grant of Patent Use or Exercise the method/process of manufacturing Article/Substance from Date of notification but after grant of Patent Use or Exercise the product & method for Mail Box Application from the grant of Patent SKM

IMPORTANT FEES IN DIFFERENT PROCEEDINGS (Amount in Rupees) Individual Legal Entity Application for Grant of Patent 1000 4000 Request for Examination of Application 2500 10000 Request for Publication 2500 10000 Substitution of Applicant 500 2000 Notice of Opposition 1500 6000 Restoration of Lapsed Patent 1500 6000 Renewal Fees (for 20 years) 48000 192000 SKM

 Filing of international application  International search Patent Cooperation Treaty (PCT) System  International Phase  Filing of international application  International search  International publication in PCT gazette  International preliminary examination  National Phase  Before designated office/elected office  Decision on granting patent SKM

Patent Cooperation Treaty (PCT)   Patent filing system  Patent granting system  International filing system  Filing in single office in one language having effect in each contracting state  SKM

Patent Cooperation Treaty (PCT) Benefit of Filing International Application  Seeking Protection Simultaneously  More Decision Time to Enter National Phase  Strength of Invention through Search and Examination  Opportunity to have Foreign Counterparts  90% Rebate in Fees for Natural Persons of India BRAZIL CANADA FRANCE DENMARK SKM

Elements to accompany International Application Bibliography Fees Calculation Sheet Check List  Request (Form PCT/RO/101) Description with one or more claims Abstract Drawings (Where applicable) Fees Power of Attorney (PA) / General Power of Attorney (GPA) (Where applicable) Requirement RO/IN : Three copies [Home copy (RO/IN), Record copy (IB), Search copy (ISA)] RO/IB : One copy SKM

Where International Application to be Processed ? The Patent Office, Kolkata & its Branch Offices at Delhi, Competent Chennai & Mumbai (RO/IN) Receiving Office (RO) International Bureau (RO/IB) What Language to be Filed ? RO / IN : Hindi or English RO / IB : Any Language SKM

Fees for International Application Natural Person Legal Entity  Transmittal Fee (RO/IN) INR 2000 8000 Fee for Priority Document INR 1000 4000 & Transmission Application Fee (IB) US$ 1300* 1300 (For 30 pages Including PCT/RO/101 & Excluding GPA & Calculation Sheet) Fee per sheet over 30: USD15* PCT Easy – US $98 (Rebate) ISA / AT  US $ 2515 ISA / AU  US $ 1397 ISA / EP  US $ 2485** ISA / CN  US $ 307 ISA / SE  US $ 2485 ISA / US  US $ 2080 * 90%&**75% Rebate for Natural Person of Contracting States SKM

International Search & Preliminary Examination Authorities Austrian Patent Office (AT) Australian Patent Office (AU) Chinese Patent Office (CN) European Patent Office (EP) Swedish Patent Office (SE) United States Patent & Trade Mark Office (US) SKM

Available Technical Information  70% Technical information published in Patent Literature  About 40 million off Patents left for utilization  Less than 1% Foreign Patents granted from India  99% Technical Knowledge not covered under Indian Patent SKM

Technology Development through Patent  Off Patent (Ceased / Term Over)  Invention not protected by Indian Patent Law Technology Development  R&D Activity  Transfer of Technology SKM

Essential for Industries  Follow weekly Publication of Patent in Gazette of India Make License Agreement with Applicant for Working with Right  Avoid Penalty for Infringing the Right of Patent Holder  Show Encouragement for Further Research & Development  Utilize Potential Manpower to Stop Brain Drain SKM

Transfer of Technology Know-How Patent  The Patents Act, 1970  License Agreement (Exclusive/Non-exclusive)  Compulsory License  The Contract Act, 1872  Contractual License SKM

Distribution of Knowledge Network of R&D Resource Academia Network of R&D Resource Research Institutions Industries SKM

Role of Patent Attorney Drafting of Specification Possible equivalent variations Broadest valid claim Avoid any pitfall Submission against Office Objections and related Proceedings To face Opposition Proceedings Execution of Licence Agreement, Deed of Assignment and other Legal Matters SKM

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Role of SSI in Indian Economy 3.5 Million Units generate direct 45 Million Employments 300 Million Overall Employment Generation through Service Institute 35% Direct contribution in Economy 45% Overall contribution in Production SKM

Suggestions What to Do ?  Share Benefit of Patent System  Utilize Resource through Organized R&D Activities  Capture Global Market Judiciously  Earn Profit through Protected Market SKM

THANK YOU SKM