Concepts Related to Patentability

8/14/2019 Concepts Related to Patentability

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CONCEPTS RELATEDCONCEPTS RELATED

TO PATENTABILITYTO PATENTABILITY

By

Somashekar Ramakrishna

Brain League IP Services

Brain League IP Services Pvt. Ltd


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Industrial applicability/Utility


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Industrial Applicability/Utility

Industrial Application The invention is capable of being made or used in an industry Sec 2(1)(ac)

No Industrial applicability

If vague and speculative possible objectives are indicated (MPPP Sec 3.25.3)

For processes or articles alleged to operate in a manner contrary to well-establishedphysical laws (MPPP 3.25.5)

For method of treatment of the human or animal body by surgery or therapy or ofdiagnosis practiced on the human or animal body (MPPP 3.25.6)

For parts/pieces of the human or animal body to be used in transplants (MPPP 3.25.6)

e.g. Scheme for exchanging all or part of a prison sentence for corporal punishmentLacks Industrial Applicability Melias Applicaton (BL O/153/92)


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Anticipation


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Anticipation

(l) new invention means anyinvention or technology which hasnot been anticipated by publication

in any document or used in thecountry or elsewhere in the worldbefore the date of filing of patentapplication with complete

specification, i.e. the subject matterhas not fallen in public domain orthat it does not form part of the stateof the art;


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Anticipation

Paten

table

Subject

Matte

r

Invention Prior Art

Utility

Filte

r


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Anticipation

Prior ArtPrior Publication

Public Knowledge and Public Use

Public displayOn sale


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Anticipation

Prior Publication

Date offiling ofCSIndian Patent application

Publication( )Section 13 1 a

Indian Patent applicationPublication

( )Section 13 1 b

Publication in India orelsewhere in any document

( )Section 13 2

No limit on the age of thedisclosure


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Anticipation

Prior Publication

if X files a patent application on 25thSeptember, 2009 relating to an invention andif Ys application relating to the sameinvention, which was filed on 25thSeptember, 2007, is published on 25thOctober, 2009, the invention of X will not benovel.


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Anticipation

Exceptions/No Anticipation by Prior Publicationif 1) the patentee proves:

a) Wrongful Obtainment; and

b) Application for patent was filed as soon asreasonably practical after learning about the publication (Sec 29(2) (a) and (b))

e.g. if X takes information relating to an invention from Ys laband publishes it without Ys knowledge, such publication willnot anticipate the invention provided Y files a patent applicationafter learning about the publication within a reasonable period oftime.


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Anticipation

2) a complete specification was filed by a personand thereafter the invention is published or used

by contravening the rights of the true and first

inventor or any person deriving rights from him.(Sec 29(3))

e.g. if X is the true and first inventor of an

invention and if Y his colleague files for a

patent over the invention without informing Xand permits A to use it, Ys application whenpublished or use of the invention by A will notanticipate the patent application filed by X


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Anticipation

3) the invention is communicated to theGovernment or to any person authorized bythe Government to Investigate the invention

or its merits (Sec 30)


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Anticipation

4) If the invention in a paper is read by the trueand first inventor before a learned society or

published with the inventors consent in thetransactions of such a society IF

if an application for a patent relating to theinvention is filed within twelve months (12) ofthe date of publication (Sec 31 (d))


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Anticipation

Public Knowledge and Public UseKnowledge already in the public domain or

knowledge easily accessible to the public.

Exception

If the use of the invention was by way of imposingsecrecy then it is not a public use .


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Anticipation

Public DisplayPublic Display of an invention before the filing

date of the patent application will anticipate theinvention.

Exception However, if an invention is displayed by the inventor

at an exhibition notified by the CentralGovernment in the official gazette, such a publicdisplay or use of the invention at the exhibition or

publication of details of the invention as aconsequence of the exhibition will not anticipatethe invention

provided a patent application is filed withintwelve (12) months from the date of such public

display


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Anticipation

On Sale If an invention is on sale or is commercially

worked in India by the applicant. beforethe date of the patent application, it will not

be considered to be novel.

(Exception) However, if the invention was onreasonable trial, it will not be anticipated. Section29(2)(b), Section 31(1)(a) and (b),


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Anticipation

On Sale

e.g. if the inventor sellshis novel road roller to thegovernment, he cannot get a patent over it as the salenegates novelty of the invention.

However, if the inventor tests the functioning of a RoadRoller in public under a government contract, such a

test will not anticipate the invention.


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Anticipation

Subject Matter in the Prior Art

Thumb Rule: A Prior publication will

anticipate.ONLY if it contains..ALL the features of the invention FarbewerkeHoechst Aktiengesellschaft vormals meister Lucius &Bruning a Corporation etc. Vs. Unichem Laboratories and Ors

MANU/MH/0064/1969

The anticipatory disclosure must beentirely contained within a singledocument. (MPPP 3.3.4)


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Anticipation

ExampleA chair

4 legs

Each leg is provided with a wheelPrior Art 1 chair with 4 legsPrior Art 2 wheels in toy chair.


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Anticipation

Invention

Prior Art


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Inventive step/non-obviousnessInventive step/non-obviousness


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Inventive Step

Inventive step 1) Technically advanced in the light of the

prior art or should have economicsignificance ; and

2) The invention should be non-obvious to

a person skilled in the art

inventive step means a feature of an invention thatinvolves technical advance as compared to theexisting knowledge or having economic significanceor both and that makes the invention not obvious to aperson skilled in the art; Sec 2(ja)


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Inventive Step

Person skilled in the artPresumed to be an ordinary practitioner

aware of what was common generalknowledge in the art at the relevant date(MPPP 3.51.2)

A notional skilled person who would

perform a transfer of technology from aneighboring field to his specific filed of

interest, if this transfer involved routineexperimental work comprising onlyroutine trails (MPPP 3.51.3)


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Inventive Step

Some Issues Involved in determiningInventive step What was the problem which the patented

development addressed?

How long had that problem existed?

How significant was the problem seen to be?

How widely known was the problem and howmany were likely to seeking a

solution?.........


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Inventive Step

Indicators of inventive stepDistance- b/n the Subject matter and the

prior art

Unexpected effectLong felt need

Failure of others

Commercial success


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Inventive Step

Lack of Inventive stepInvention provides equivalent

Prior art is incomplete and the inventionlies in filling the gap which would readilyoccur to a person skilled in the art

New use of a known material


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Inventive Step

In determining Inventive StepMosaicing multiple documents is permitted

All information in any set of documents

can be combined provided they are all inthe same art (analogous)

No hindsight should be employed (takingthe solution and working backwards)


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Inventive Step Biswanath Prasad Radhey Shyam Vs. Hindustan Metal

industries, AIR 1982 SC 1444 Patent: Means for holding utensils for turning purposes Prior Art: Lathe (tailstock)

To be patentable the improvement or the combination mustproduce a new result, or a new article or a better orcheaper article than what was already existing

Improvement or combination should be somethingmore than the mere workshop improvement


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Inventive Step Haberman and another v. Jackel International Ltd

(1999) FSR 683

Patent:ANWY CUP, a trainer cup for toddlersHad a valve fitted to the lidWould open when baby sucked and closed when it

stopped

Immediate commercial success. Defendant: launched rival product: super-seal Suit for infringement: claim of obviousness.


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Justice Laddie: though involved a very small and simple

step, it is sufficiently inventive. It hadsolved a problem (that is the long-feltneed for a spill-proof cup)


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Inventive Step

Garewall ropes Ltd. Vs. Mr. Anant KanoiMANU/GJ/8265/2006

Patent:Prefabricated collapsible gabion product made

from synthetic ropes

Gabions are well known (since 7000 years)Rope gabions and polymer gabions were

being used in Maharashtra since 1991 andin Bihar since 1987

Held: Substituting elements of commonknowledge in a product would not give rise toinventive step


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Inventive Step

Example:Device for manually collecting the

agricultural produce has container (Plastic) open at the top

and closed at the bottom wall of the container has a contour

adapted to proximate the back of a humanbody

Straps and buckles for securing the

container to the individual Traditional product made out of

bamboo.


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