Patents & IPR

Lecture 7

IPR - Definition
Intellectual Property Rights:

Intellectual Property Rights are statutory rights once granted allows the creator(s) or owner(s) of the intellectual property to exclude others from exploiting the same commercially for a given period of time. It allows the creator(s)/owner(s) to have the benefits from their work when these are exploited commercially. IPR are granted to an inventor or creator, designer in lieu of the discloser of his/her knowledge.

Indian IPR laws

Governing Laws in India for IPR as follows: 1. Patent Act 1970 2. Trade Marks Act (1958 original) 1999 3. The Copyright Act 1957 4. The design Act 2000 5. Geographical Indication of Goods (Registration and Protection) Act 1999 6. Plant Variety and Farmers Right Protection Act 2001

IPR - components
Intellectual Property commonly encompasses the following:

Patent Trademarks Industrial Design Copyright Geographical Indication of Goods Integrated Circuit Protection of Undisclosed Information such as Trade Secrets

Inventions/innovations IPR ?

An invention means: a new product or process involving an inventive step and capable of industrial application. An Innovation means: The successful exploitation of new ideas in the form of a useful machinery or process, by any person, using own intellect is called as innovation. Every innovation may not be patentable invention but every invention is an innovation. All the inventions are the innovations and are patentable, but all the innovations are not the patentable inventions.

Nike files patent for 'Back to the Future' sneakers

What is a Patent?

Patent enables its owners to exclude from making, using and selling its inventions. Term of patent: The term of patent is for twenty years (20), provided the maintenance fee is paid at the end of every year. Territorial Scope: Patent laws are territorial; a separate patent must be obtained in each country. Indian patent office protects invention only filed in India.

Why patent ?
Recent IPR battles

Apple v/s Samsung Rice Tec Inc. v/s Indian govt. Pfizer v/s Teva viagra Seagate v/s Western Digital

Blackberry's new angular keypad

Financial Patents

Patent activity among financial services firms began to soar in the late 1990s, prompted by the boom in new technology and by the fact that banks were spending enormous sums to upgrade their in-house systems. A federal court decision(USA) in 1998 that software and business methods could be patented also fed the rush to seek patents.

Financial Patents

Cash Management Trading and risk analysis systems Software-based pricing Credit card ETFs Exotic derivatives

Financial Patents

Cash Management Trading and risk analysis systems Software-based pricing Credit card ETFs Exotic derivatives

Financial Patents

Patent activity among financial services firms began to soar in the late 1990s, prompted by the boom in new technology and by the fact that banks were spending enormous sums to upgrade their in-house systems. A federal court decision(USA) in 1998 that software and business methods could be patented also fed the rush to seek patents.

Steps in patenting
1st Step : Patentability searches

Patentability search is a search for invention in hope of not finding the invention. The patentability search is an universal concept since inventions cannot be boundary constraint. But it is to be noted that the patent laws are territorial. No search will "guarantee" the patentability of any invention.

Ref : http://patinfo.nic.in/

Steps in patenting
2nd Step : Documentation 1. Application Form (form 1), 2. Specification (Provisional/Complete) [Form 2], 3. Drawings (if any), 4. Undertaking under section 8 (form 3), and 5. Power of Authority (if the patent application is filed through a patent attorney)

Steps in patenting
3rd : Patent filing

Initially, a patent examiner examines the patent applications and then communicates the objections, if any, to the applicant via first examination report. The applicant has to meet up with the compliance of the patent office within specific time frame (15 months), if the applicant fails in doing so the application shall be abandoned.

How does a patent expire?

A patent can expire in the following ways: 1. The patent has lived its full term i.e. the term specified by the patent act of the country. Generally it is 20 years from the date of filing. 2. The patentee has failed to pay the renewal fee. A patent once granted by the Government has to be maintained by paying annual renewal fee. 3. The validity of the patent has been successfully challenged by an opponent by filing an opposition either with the patent office or with the courts.

Can my invention be protected abroad?

Yes! India is member of the following treaties governing patents:

Convention establishing World Intellectual Property Organization (WIPO) Trips Agreement under the World Trade Organization. Paris Convention for the protection of Industrial Property with effect from Dec. 7, 1998. Patent Cooperation Treaty (PCT) with effective from Dec. 7, 1998

Patent Cooperation Treaty (PCT)

The PCT is an international agreement that helps to simplify the process of filing patent applications in several countries. PCT has been administered by WIPO (World Intellectual Property Organization). As on 1 May 2011, the WIPO recorded a total of 143 contracting states to the Patent Cooperation Treaty (PCT). The PCT application has two phases: International and National. The National Phase follows the International Phase and consists of processing the application in the Patent Office of specific countries following the same procedure as processing a national application entry in India .

Patent Cooperation Treaty (PCT)

The delayed processing benefit with PCT

An inventor/assignee can file an application for grant of Patent via PCT route in his own home country (called International Application) After search and examination of his invention for novelty, patentability etc., he can file his application for grant of Patent in other countries (called entry into National Phase PCT Patent Application). The National Phase PCT Patent application in India under Chapter II can be filed within 31 months of the international filing date or date of filing in India.

Traditional Knowledge Digital Library Why?

It has been observed that in the past years patents have been wrongly granted to traditional knowledge related inventions which do not fulfill the requirement of novelty and inventive step, particularly due to existence of relevant prior art. For instance, this has happened in the case of Turmeric, Neem, Basmati etc.

TKDL Why?

The practical obstacle underlying the issue was that patent examiners they did not have access to traditional knowledge information in their classified non-patent literature. The reasons for this non-accessibility were that the Indian traditional knowledge exists in local languages such as Sanskrit, Urdu, Arabic, Persian, Tamil, etc. which either was not available or not understood by patent examiners. TKDL breaks the language and format barrier and makes available this information in English, French, Spanish, German and Japanese in patent application format

What is TKDL?

TKDL contains the scanned images of medicinal formulations from the original books. TKDL covers over two lakh formulations which have been taken from Ayurveda, Unani, Siddha and Yoga texts. It is pertinent to note that TKDL does not contain the entire information existing in the Indian Systems of Medicine. Rather than comprehensive, TKDL is a dynamic database, where formulations will be continuously added and continuously updated according to the inputs from the users of the database.

Thank you