Patent_P_Presentation on IP Knowing to Owning

8/3/2019 Patent_P_Presentation on IP Knowing to Owning

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Presentation on IP knowing to owning:

Identification;

Protection-

Cost;

Time;

Remarks

Management;

commercialisation;



What is an invention:

Definition: ³An invention means a new product or process involving an

inventive step and capable of industrial application´ (S. 2(1)(j));

the criteria for an invention to be patentable are,

(1) An invention must be novel

(2) has an inventive step and

(3) is capable of industrial application

New solution to a technical problem and includes any inventions, whether

processes or products, in all areas of technology.

Example of inventions:

band - aid,electric iron,

safety pin,

ball point pen,

telephone, etc.

All invention may not patented;



Why Protect Invention?

Defensive-

Protect creative assets

CounterattackReduce risk of innovation

Offensive - Exclude others from-

making,

using,

selling,offering for sale or

importing the patented invention and

can also exclude commercialization.

This exclusion is only applicable in the countries where the

invention is protected by a patent;

Market-

Generate income

Product and service distinctions

Strategic funds, partners, customers, employees

Increase valuation



Statutory exclusions from patentability:

Frivolous/contrary natural laws; Contrary order public or morality;

Prejudice to human or animal or plant life or health or environment;

Abstract theory or scientific principle;

Mere new property or new use;

Mere admixture;

Mere arrangement or rearrangement; Method of agriculture or horticulture;

Process for treatment or prophylaxis of human beings or animals;

Seeds, varieties or species of plants or animals;

Computer program per se;

Mathematical method, business method or algorithm; Aesthetic creation;

Method of playing games;

Presentation of information;

Topography of integrated circuits;

Traditional knowledge;

Inventions relating to atomic energy;



Questionnaire for Identification of an invention:

What type of invention you wish to patent? Is it a product/process?

At what stage is the invention? Is it at the concept stage? Is itcomplete?

Has it been tested?

Has there been any disclosure of the invention? If so, how, when

and where?

Is the invention an improvement of an existing product/process? Please supply information about the field to which the invention

relates.

Have you carried out any patent/literature search for prior art? If

so, please give details.

What is the main feature of the invention? How does it solveproblems of the prior art? Please enumerate the advantages of the

present technology over prior art.

For preparing the specification, please send write up of the

invention and complete set of drawings if any.

If it is a process patent, please provide a flow chart.



PROTECTION:

Who may apply for patent?

Where one may file an Application for Patent?

Filing requirements for patent Follow-up and the prosecution;

Maintenance by paying annuity



Minimum documents required for patent filing in India:

Form 1 - Application for the grant of patent;

Form 2 - Provisional or Complete Specification;

Every CS shall- Description of invention and a title

sufficiently indicating the subject matter, Fully and

particularly describe the invention, Disclose the best

method of performing the invention, Claim(s), Abstract,Drawings if any, Model or sample of anything illustrating

the invention as the Controller may require etc;

Form 3 - Statement and undertaking by the applicant;

Form 5 - Declaration as to inventorship;

Form 26 - Authorization of patent agent; Priority document, if it is a convention application;

Proof of right;

Prescribed official fees



Prescribed official fees:

Form

Title

Prescribed official fees (INR)

Natur al person Other

1 Application for Gr ant of Patent 1000 4000

2 Provisional/Complete Specification No fee* No fee*

3 Statement and Undertaking Under Section 8 No fee No fee

5 Declar ation as to Inventorship No fee No fee

9 Request for Publication (optional) 2500 10000

18 Request for Examination of Application for Patent 2500 10000



Patent Grant ProcedurePatent Grant Procedure

Filing of patent application

Publication after 18 months

Pre Grant Opposition /

Representation by any person.

Request for examination

Examination: Grant or Refusal

Publication of Grant of patent

Post Grant Opposition to grant of patent

(Constitution of Opposition Board)

Early Publication

Decision By Controller



HOW TO RESPOND TO AN OFFICIAL ACTION ²

Law and Practice:

Objections(a) Technical

(b) Formal

Technical objections- -Sections of the Indian Patents Act and Rules.

- wordings of the claims. - citations under X and Y category.

Formal objections- - Formal documents

- Drawings

- Assignment -Power of Attorney

- Petitions



FIRST EXAMINATION REPORT [BIOTECHNOLOGY]





One or more official actions (OA) can be raised.

File a response ASAP. Do not wait for the deadline.

OA can be issued even on the last date.

If Examiner maintains his objections or is adamant even proximate tofinal date, ask for a formal hearing under Section 14, at least ten daysin advance, no official fee payable.

If adverse order received after hearing file Review Petition Section 77and Rule 130 within one month (Form 24).

Appeal before the board (IPAB).



A patent can be abandoned due to the following reasons:

If a complete specification is not filed within a year;

If a request for examination is not filed within four years;

If all the objections are not met within a year after the issue of FER to anapplicant;

If a hearing is unattended by an applicant in case of opposition.

If the Controller is not informed about the working of an invention as and whenrequired.

Defect in the post-grant opposition;

The voluntary surrender of the Application or the patent;

Non-renewal of a granted patent

ABANDONMENT OF PATENTS

Documents

Patent_P_Presentation on IP Knowing to Owning