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

2. Intellectual Property Rights
 Patents
 Designs
 Trade Marks
 Copyrights
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3. 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.
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4. Pharmaceutical Product
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5. 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
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6. 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
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7. Validity of Patent not guaranteed
Obligation of Patentee to work & inform Controller to the extent of commercialization
Importance of Patent Document
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8. 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)
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9. Patent System Introduced in 1856
Comprehensive Patents & Designs Act, 1911
 Uniform Term of Patent for 16 Years
 No Discrimination on Nature of Invention
PROVIDES
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10. 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
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11. 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
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12. 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
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13. (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
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14. Applications of Patents by Indians & Foreigners
  Year Indians Foreigners Total
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15. 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%
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16. SKM

17. 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)
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18. 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
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19. Invention Vs. Discovery
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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

20. 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
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21. NEW COMPOUNDS Industrially useful compounds - patentable
Theoretically interesting compounds
Not Patentable
Useful intermediates for the preparation of
other compounds – patentable
Non-obvious compounds – patentable
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22. 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
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23. PHARMACEUTICAL COMPOSITIONS
Combination preparations
New drug delivery system
c) Compound not used previously as a drug conventional carrier or excipient.
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24. 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
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25. 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
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26. 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
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27. 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)
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28. 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
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29. 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
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30. 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
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31. 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
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32. 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.
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33. 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
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34. 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
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35. 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
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37. 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)
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38. 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
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39. IMPORTANT FEES IN DIFFERENT PROCEEDINGS
(Amount in Rupees)
Individual Legal Entity
Application for Grant of Patent
Request for Examination of Application
Request for Publication
Substitution of Applicant
Notice of Opposition
Restoration of Lapsed Patent
Renewal Fees (for 20 years)
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40.  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
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41. 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 
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42. 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
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43. 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
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44. 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
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45. Fees for International Application
Natural Person Legal Entity
 Transmittal Fee (RO/IN) INR
Fee for Priority Document INR
& Transmission
Application Fee (IB) US$ *
(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
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46. 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)
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47. 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
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48. Technology Development through Patent
 Off Patent (Ceased / Term Over)
 Invention not protected by Indian Patent Law
Technology Development
 R&D Activity
 Transfer of Technology
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49. 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
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50. Transfer of Technology
Know-How
Patent
 The Patents Act, 1970
 License Agreement (Exclusive/Non-exclusive)
 Compulsory License
 The Contract Act, 1872
 Contractual License
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51. Distribution of Knowledge Network of R&D Resource
Academia
Network of R&D Resource
Research Institutions
Industries
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52. 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
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54. 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
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55. 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
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56. THANK YOU
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