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Patents, Process, Business Case & Career IPR Workshop, IPS Academy Indore
9th Apr 2016
By –
KRD Pravin email – [email protected]
Twitter - @krdpravin Mob – 0976.9378.150
All IP rights are with their respective owners
All IPs are used here for representative purpose only
© KRD Pravin 2016
1
Disclaimer
This workshop is for information purpose
No parts of this workshop should be construed as “expert advice on a specific matter”
Please consult the trainer or a legal expert separately for detailed view on specific case/situation or business scenario
2
© KRD Pravin 2016
+Business Example
+Contrary Examples
+Patent Commercialization
+Process for Patent
+ International Filing
+What’s not Patentable
+ Why and How?
+ Career Progression
+ What’s on offer
CONTENTS
+Brief on Patents
+Criteria for getting a Patent
Elaborating Patents
Business case for Patents
Process filing a Patent
Career in Patenting
01 02 03 04 INTRO
If you are tired of washing spoons, you have an option…
Edible Spoon
Does it remind you of
Can you patent these?
Source – http://ediblespoonmaker.com/ 4 © KRD Pravin 2016
Can you patent these?
Source – http://edriel.com/wp-content/uploads/2014/12/Captura-de-pantalla-2015-04-18-a-las-23.58.56.png 5 © KRD Pravin 2016
Intellect
• Idea
Property
• Expression
• Innovation/Invention
• Quality + Identity
• Appearance
• Confidential
Rights
• Copyrights
• Patent
• Trademark
• Design
• Trade secret
Remember…
Ideas and concepts are not protected
Protection is offered to tangible expression of idea and concept
The expression is termed as Intellectual Property
6 © KRD Pravin 2016
What is Patent?
A type of Intellectual Property
Granted for an invention for product or process
Patents are granted under the law of the land – There is nothing as Global or World-wide Patent currently
Offers monopoly rights to produce, market and prohibit others from doing the same (for patented invention)
20 years protection period from the date of filing of patent application
7 © KRD Pravin 2016
Criteria for Patented
Inventions in all fields of technology – no Atomic Energy though!
Products or processes
Criteria of Novel Non-obviousness (inventive step) Industrial application Not anticipated
8 8 © KRD Pravin 2016
Chapter 6
How I lost here?
Section 2.1.(ac)
Section 2.1.(j)
Criteria explained
Novel
Invention not known to public prior to claim by inventor
Inventive Step
Invention would not be obvious to a person with ordinary skill in the art
Industrial Application
Invention can be made or used in any useful, practical activity as distinct
from purely intellectual or aesthetic one
Not Anticipated
Not in public knowledge before filing of a patent 9 © KRD Pravin 2016
© KRD Pravin 2016
+Business Example
+Contrary Examples
+Patent Commercialization
+Process for Patent
+ International Filing
+What’s not Patentable
+ Why and How?
+ Career Progression
+ What’s on offer
CONTENTS
+Brief on Patents
+Criteria for getting a Patent
Elaborating Patents
Business case for Patents
Process filing a Patent
Career in Patenting
01 02 03 04 INTRO
Impact of Intellectual Property
0%
20%
40%
60%
80%
100%
1975 1985 1995 2005 2015*
17% 32%
68% 80% 84%
83% 68%
32% 20% 16%
Components of S&P 500 Market Value
Intangible Tangbile
Source – Ocean Tomo LLC, Link
Plant, equipment, machinery
Patents, Market share,
other IP
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© KRD Pravin 2016
Contrasting Examples – Coke
• Coca-Cola soft drink formula a secret • It is rumored that they are not allowed to travel
together
• Formula only know to a few people
• Those who know the secret formula have signed non-disclosure agreements
12 © KRD Pravin 2016
Contrasting Examples – LEGO
• LEGO Patented stud and tube coupling system (the way bricks hold together) in 1958
• Today the patents have long expired and the company tries hard to keep out competitors by using designs, trademarks and copyright
13 © KRD Pravin 2016
Commercialization
Product / Service
Marketing
Commercialization
Legal
Licensing Court
proceeding
14 © KRD Pravin 2016
Patent
Trademark
Trade Secret
Design
Copyright
Novel & Inventive
Confidential Info &
Undisclosed Tech
External Appearance
Package Insert / Information
Leaflet
Brand Name RealFlex
Intellectual Property
16 © KRD Pravin 2016
© KRD Pravin 2016
+Business Example
+Contrary Examples
+Patent Commercialization
+Process for Patent
+ International Filing
+What’s not Patentable
+ Why and How?
+ Career Progression
+ What’s on offer
CONTENTS
+Brief on Patents
+Criteria for getting a Patent
Elaborating Patents
Business case for Patents
Process filing a Patent
Career in Patenting
01 02 03 04 INTRO
PROCESS, JOURNAL, SAMPLE PATENT AND CERTIFICATE
Patent process takes about 48-60 months, lengthy process. Here is how you need to proceed
Process
Application
PCT Application
Publication
Certificate
18 © KRD Pravin 2016
Grant of Patent
Patents are granted by patent offices after publication and
substantial examination of the applications
In India provisions exist for pre-grant and post grant
opposition by others
Patents are valid within the territorial limits India
Foreigners can also apply for patents
Until recently (March 2013), US had ‘First-to-Invent’ clause for patent, now as per common practice, moved to
‘First-to-File’ 19 © KRD Pravin 2016
Process some pointers
Amendments can be done before grant of patent, with riders
Early publication request can be made
Fee to be paid time to time, for enforcement of patent
If fee not paid – patent will lapse
Anticipation (e.g. non-novel) Chapter 6 Sec 29-33 in certain situation Previous publication Previous communication to Govt Public display Public working
20 © KRD Pravin 2016
International agreements
PCT – Patent co-operation Treaty (Under WIPO)
PCT was done in 1970 in Washington
PCT application can be filed in 148 countries
Filing application in various countries through PCT
1 millionth application filed in 2004, next 1millionth in 2011
Only decline in Patent applications through PCT was in 2009 (Global slow down)!
21 © KRD Pravin 2016
PCT Process
(months)
File PCT application
12 0 30
International search report & written opinion
16 18
International publication
(optional) File demand for International preliminary examination
File local application
Enter national phase
22 28
(optional) International preliminary report on patentability
Generally, a patent application in the home country of the applicant
Generally filed in same national patent office--one set of fees, one language, one set of formality requirements--and legal effect in all PCT States
Report on state of the art (prior art documents and their relevance) + initial patentability opinion
Disclosing to world content of application in standardized way
Request an additional patentability analysis on basis of amended application
Additional patentability analysis, designed to assist in national phase decision-making
Express intention and take steps to pursue to grant in various states
22 © KRD Pravin 2016
What is not patentable?
Chapter 2 Sec 3. a an invention, that is frivolous or that claims anything obviously contrary to well established natural laws Machine giving more than 100% performance Perpetual motion machine Newton’s laws of gravitation
Chapter 2 Sec 3.b a machine whose primary or intended use or commercial exploitation of which could be contrary to Public order or morality or which causes serious prejudice to human, animal or plant life or health or to the environment device for house-breaking Biological warfare material or device
24 © KRD Pravin 2016
What is not patentable?
Chapter 2 Sec 3.c mere Discovery of a Scientific Principle or Formulation of an Abstract Theory or discovery of any living thing or non–living substance occurring in nature
Discovery – disclosing/finding something, not seen before
Archimedes Principle Not patentable
Invention – an action resulting in a new product or new process
Using Archimedes Principle and making a Ship – can be patented
25 © KRD Pravin 2016
What is not patentable?
Chapter 2 Sec 3.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 of the 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 For the purposes of this clause salt, esters, ethers, polymorphs,
metabolites, pure form, particle size, isomers, mixtures of isomers, complexes, combination and other derivatives of known substance shall be considered to be the same substance, unless they differ significantly in properties with regard to efficacy
26 © KRD Pravin 2016
What is not patentable?
Chapter 2 Sec 3.e a substance obtained by mere admixture resulting only in the aggregation of the properties of the components thereof or a process for producing such substance
Adding Salt and sugar and making a paste which taste sugary and salty taste (admixture) without any additional property
Used in Ever-greening of patent, not allowed in India
a mixture resulting in synergistic properties of mixture of ingredients e.g. lubricant
27 © KRD Pravin 2016
What is not patentable?
Chapter 2 Sec 3.f mere arrangement or re-arrangement or duplication of known devices, each functioning independently of one another in a known way An Umbrella with fan
A flour-mill provided with sieving
Chapter 2 Sec 3.h method of Agriculture or Horticulture Producing new form of a known plant,
preparation of an improved soil
However, Agricultural Equipments are patentable
28 © KRD Pravin 2016
What is not patentable?
Chapter 2 Sec 3.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 Process is not patentable but Product can be…
Chapter 2 Sec 3.j plants and animals in whole or any part thereof other than micro- organisms, but including seeds, varieties and species and essentially biological process for production or propagation of plants & animals Clones and new varieties of plants: A process for production of plants or animals if it consists entirely of natural
phenomena such as crossing or selection
29 © KRD Pravin 2016
What is not patentable?
Chapter 2 Sec 3.k a mathematical method or a business method or a computer program per se or algorithms
Computer program or mathematical process
Chapter 2 Sec 3.l a literary, dramatic, musical or artistic work or any other aesthetic creation including cinematographic work and television productions
These properties fall in which IP protection?
30 © KRD Pravin 2016
What is not patentable?
Chapter 2 Sec 3.m a mere scheme or rule or method of performing mental act or method of playing game
An innovative golf club, for better shot is patentable
Chapter 2 Sec 3.n presentation of information
This presentation can be what?
What type of protection one can apply for?
31 © KRD Pravin 2016
What is not patentable?
Chapter 2 Sec 3.o topography of integrated circuits
Chapter 2 Sec 3.p an invention which, in effect, is the traditional Knowledge or an aggregation or duplication of known properties of traditionally known component or components This is anyways not Novel Any addition to the traditional knowledge creating new product or process is
patentable
Chapter 2 Sec 4 Inventions relating to atomic energy not patentable
Chapter 2 Sec 5 inventions where only method or processes of manufacture patentable
32 © KRD Pravin 2016
© KRD Pravin 2016
+Business Example
+Contrary Examples
+Patent Commercialization
+Process for Patent
+ International Filing
+What’s not Patentable
+ Why and How?
+ Career Progression
+ What’s on offer
CONTENTS
+Brief on Patents
+Criteria for getting a Patent
Elaborating Patents
Business case for Patents
Process filing a Patent
Career in Patenting
01 02 03 04 INTRO
Why a Career in Patent Law?
Working with cutting edge technology Know what is happening well in advance.
New technology not previously disclosed.
Applied scientific knowledge Address real-world applications of the science
Opportunity to work on Diverse Technological Researches Exposure to a broader range of science and technology than does a
research career
Legal Intricacies Analyze scientific facts in a legal framework
34 © KRD Pravin 2016
Becoming a Patent Agent
Valid degree in science, engineering or technology (BE, BTech , BSc / MSc)
Indian citizen
21 years of age
Pass exam conducted by patent office Paper 1 on Patent Law
Paper 2 on Drafting & descriptive
Viva-voce
Pay registration fee
35 © KRD Pravin 2016
Jobs as a Patent expert
Corporates Filing
Licensing and valuation
Research Institutions / Academia
Govt jobs Patent Examiners with Patent Office
Advisor
KPOs
Law Firms
Entrepreneurship
36 © KRD Pravin 2016
Application Process & related works
Idea to Invention Application Publication Opposition if any
Resolution if applicable
Examination
• Opposition if any
• Resolution if applicable
Grant Maintenance
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Drawing Patent Search Office Action
Freedom to operate search
Invalidity search
State of art Search
Landscaping Prosecution
Spec Drafting
© KRD Pravin 2016
Infringement analysis Advisory services
Search results March 2016
IP intelligence Strategy formulation
38 © KRD Pravin 2016