Transcript IPR- ADVANTAGE BUISINESS INDIAN PATENT SYSTEM …

IPR ADVANTAGE :
Recent Advances
Dr. W.M. DHUMANE
SENIOR JOINT CONTROLLER OF PATENTS & DESINGS,
PATENT OFFICE , MUMBAI
e-mail: [email protected]
INTELLECTUAL PROPERTY
Creation of Human Intellect
Knowledge Assets – Tradable Commodities
- capital
IPR- A Key component for success in
Business
Tool for Competitiveness
IPR - “New wealth of Nations
INTELLECTUAL PROPERTY
• Not just a tool of exploitation, but a tool of
empowerment
• Knowledge-based economy Characterized by
creation, possession, utilization and proliferation
of knowledge assets
• Countries which pay adequate attention to
innovation and protection of IPRs win in
international competition;
• Knowledge assets are fast gaining importance
over physical assets in Industry
INTELLECTUAL PROPERTY
• There will be no self-relied innovation
without protection of IPRs.
• To protect IPRs is necessary for inspiriting
domestic self-relied innovation
• To protect IPRs is to respect work, respect
knowledge, respect talents and respect
creation
• IPR is to encourage technological
innovation and improve IP awareness of
the whole society
Legislative Framework
Department of IP &P covers
Patents Act, 1970 (as amended in 2005);
Patents Rules, 2003(amended in 2006)
Designs Act, 2000 ; Designs Rules, 2001
Trade Marks Act 1999; Trade Marks Rules 2002
Geographical Indications of Goods Act, 1999;
Geographical Indications of Goods Rules, 2002
The Protection of Plant Varieties and Farmers’ Rights
Act, 2001 & Rules 2003
Department of Education covers
Copyrights Act 1957 (amended in 1999)
AREAS
• PATENTS:
- Inventions
-Technical Solution to a Technical problem
• INDUSTRIAL DESIGNS:
- External features appealing to an eye
- New Shape, Pattern or Configuration
• TRADE MARK:
- A Visual Symbol as Word, Name, Logo,
Label etc
- Applied on Article of Manufacture or Service
- To indicate the origin of manufacture/service.
• COPYRIGHT Artistic creation
 Proprietary right
 comes into existence as soon as the work is created
• GEOGRAPHICAL INDICATIONS
 Identifies agricultural,natural or manufactured
goods
 originating from a definite territory in India
 possessing special quality or reputation
 based upon unique characteristics of the
geographical location
What is a Patent ?
• A new product or process
• involving an Inventive Step and
• capable of Industrial application
• New (novel), if it does not form a part of state of the art
• Inventive Step A feature of an invention that involves technical advance as
compared to the existing knowledge or having economic
significance or both and that makes the invention not obvious
to a person skilled in the art
• Capable of industrial application means- invention is
capable of being made or used in any kind of industry
• Patent is an exclusive monopoly right  granted by Government of India
 for an Invention
 to the Inventor or his Assignee
 as a Territorial Right
 In lieu of Disclosure of invention to the Government
 Term of Patent: 20 years from date of filing
“ Arth Karicheye Vidhya’ (create wealth from knowledge) –
Chanakya
“ Patents add fuel of interest to the fire of genius’ -
Abraham Lincon
“Patents are like knowledge check posts on the Innovation
Highway
Patent System - Objectives
• To encourage inventions
• Patents to be worked in India on commercial
scale and to the fullest extent without undue delay
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Benefits to be available to the public at affordable price
Not granted merely to enjoy right for Importation
Not to impede protection of Public Health and Nutrition
Not to prohibit Govt to Protect Public Interest, specially in
sectors of vital importance for socio- economic and
technological development of India
• Not to be abused by a patentee and to ensure that the
patentee does not resort to practices which unreasonably
restrain trade or adversely affect international transfer of
Technology
• To give Mutual Advantage to Producers and Users
• To ensure Balance of Rights and Obligations
INVENTIONS – NOT Patentable ( S. 3 & 4 )
• (a) An Invention Which is frivolous or which claims anything
obviously contrary to the well established Natural Laws
• (b) Primary or intended use or commercial exploitation of
which could be Ccntrary to Public order or morality or
which causes serious prejudice to human, animal or plant life
or health or to the environment
• (c ) Mere Discovery of a Scientific Principle or Formulation of
an Abstract Theory or discovery of any living thing or
discovery of non–living substance occurring in nature
• (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
INVENTIONS – NOT Patentable ( S. 3 & 4 )
• 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
3 d : Explanation :
For the purposes of this clause,
• salts, esters, ethers, polymorphs, metabolites, pure form,
particle size,
• isomers, mixture of isomers, complexes, combinations and
other derivatives of known substances
shall be considered to be the same substance, unless they
differ significantly in properties with regard to efficacy.
• (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
• (f) Mere arrangement or re-arrangement or duplication of
known devices, each functioning independently of one
another in a known way
• (h) Method of Agriculture or Horticulture
• (i) Any process for medicinal, surgical, curative, prophylactic,
diagnostic, therapeutic or other treatment of human beings
or a similar treatment of animals to render them free of
disease or to increase their economic value or that of their
products
j)
Plants & 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
(k) A mathematical method or a business method or
algorithms or
a computer programme per se
(l)
A literary,dramatic, musical or artistic work or any other
aesthetic creation including cinematographic work and
television productions
( m) A mere scheme or rule or method of performing mental act
or method of playing game
n) Presentation of information
O) Topography of integrated circuits.
p) An invention which, in effect, is the
Traditional Knowledge or an aggregation or duplication
of known properties of traditionally known component or
components
Section (4) : Inventions relating to atomic energy falling
within the section 20(1) of the ATOMIC ENERGY ACT,
1962.
Patent Grant Procedure
Filing of patent application
Early Publication
Publication after 18 months
Opposition By Third Party
Representation ( Pre Grant Opposition)
Request for examination
Examination: Grant or Refusal
Publication of Grant of patent
Opposition to the patent
(Post Grant Opposition)
Decision By Controller
NOVELTY
RELATIVE NOVELTY
ANTICIPATION
[MEANS CHALLENGE TO NOVELTY OF CLAIMED INVENTION ]
PRIOR PUBLICATION PRIOR CLAIM
worldwide
in India
PRIOR
PUBLIC USE
in India
PATENT LITERATURE
NON-PATENT LITERATURE
The invention should be new [novel] to the public on the date
of filing the application or on a priority date
NO ANTICIPATION
NO ANTICIPATION,
if the invention is :
• Published in pursuance of application filed
before 1-1-1912
OR
• Obtained from the applicant and published without his
consent OR
• Communicated to the Govt for investigation purpose OR
• A) Displayed / exhibited /used with the consent of inventor
at an industrial or other exhibition, notified by Govt and / or
published as a consequence thereof OR
B) RESEARCH PAPER on invention read by the inventor
before a learned society and/ or published with the
consent of the inventor in transactions of such society
And
the application for patent is filed
within twelve months from such
display / exhibition / reading / publication
• Prior Use• if publicly worked in India only for the reasonable
trial which was reasonably necessary and
• An application for patent is filed within
one year from the date of such trial
• Used/published in India or elsewhere after filing
Provisional /Conventional Application
Inventive Step
• When the invention is just an automatic or
obvious extension of Prior Art, the invention
lacks in inventive step.
• To judge the inventive step, the question to be
answered is“ Would a person with ordinary skills in the art
have thought of the alleged invention?
• If the answer is No, then the invention is nonobvious
• The question -“ Is there an inventive step “?
arises only if there is novelty
Inventive Step
• It is not enough that the invention is novel
i.e.,difference exists over the state of art,
but that this difference must be substantial
and significant
• For constituting an Inventive Step, Prior Art as a
whole is to be considered.
Thus, the subject matter is compared with
combination of publications or other disclosures ,
unlike in novelty
Single Inventive Concept
• Patent is granted for - A single invention or
group of inventions , linked so as to form a single
inventive concept and there is a technical
relationship among those inventions
• There may be number of independent claims in the
same or different categories
• The common Single technical feature must be
inventive enough to fulfill the requirement of nonobviousness
Sufficiency of Disclosure
• Application must disclose the invention
 as a whole,
 in a sufficiently clear and complete manner,
 to enable the person skilled in the art, to whom the
invention relates , to make and use the invention
• The skilled person may use his common general
knowledge to supplement the invention
• He is not expected to carry out comprehensive search
to obtain further details and
• He should be able to reproduce the claimed step using
information given in the application without any
inventive efforts
INDIAN PATENT SCENARIO
Pre- Modernization Scenario:
• Legislative limitations, Limited Scope for patenting ,
• Limited Patent Term
• Patent Act not in tune with global scenario
• Lack of proper search facility
• Long Delay in Processing and Grant
• Processing totally Manual
• Lack of Trained Manpower
• Lack of proper Infrastructure and Logistic
• Lack of computerized environment
• Low awareness
• Low Filing
Patenting
…Now
Patent Act totally revamped:
Running the Race Successfully
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Patentability Criteria
Publication & Examination
Processing simplified; No of forms reduced
Patent Term
Compatibility in global atmosphere
Meeting rights and Obligations
Patents Act ( As amended), 2005
- Salient Features
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Enacted w.e.f.1-1-2005
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Both product and process patent provided.
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Publication of applications after 18 months with facility
for early publication.
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Examination on request.
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Both pre-grant and post-grant opposition.
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Fast track mechanism for disposal of appeals.
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Provision for protection of bio-diversity and traditional
knowledge.
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Term of patent: 20 years
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Substantially reduced time-lines.
Safeguards for Users and Society in
Patents Law (1)
• Concerns : Public health, national security and public
interest
• No ever greening: No patent for a new use of a known drug
or substance (Section 3):
• Compulsory licences (Section 84) : Availability of products
at reasonable price ensured
• Special Provision of Compulsory license during national
emergency, extreme urgency or public non-commercial use
(section 92) to ensure availability of
prices.
drugs at reasonable
Safeguards for Users and Society in Patents
Law(2)
• Government use of Patents for public purpose :
Compensation by mutual agreement between the Government
and patent holder failing which by the High Court (Section 102)
• Revocation for Patent for non-working of the patented
invention ; not being available to the public at reasonably
affordable price (Section 85).
• Revocation of Patent by the Government in public interest
(Section 66)
• Bolar provison (Section 107). : facilitates availability of
generic version of the patented product at competitive prices
immediately on expiry of the patent.
• Patent can be revoked in the interest of security of India
(Section 157 A).
BENEFITS OF PATENTS TO PANTENTEE - I
• Exclusive Rightto make, use, exercise, sell or distribute an
Invented Article or Process in India.
• Right can be shared , licensed or sold
• Right to initiate Legal Proceedings
against Infringement.
• The Invention can be commercially
exploited without fear of copying,
imitation or unauthorised use during
Term of Patent.
BENEFITS OF PATENTS- II
 Published patent specifications: An ocean of
scientific Knowledge and technological information
 Patented inventions - Open to public for free use
after the term expires or ceases to be in force
 Avoids duplication of Research and acts as a
stepping Stone for further Research.
 “You need not reinvent the wheel”
 Patents give valuable guidance for
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Planning R & D
Planning strategic protection for IP- assets
Forging strategic alliances
Identifying possible collaborators /competitors
Benefits of Patents III
• Helps industry to improve existing
technology to give cheaper and better products
• Identifies emerging technologies, research areas
and business opportunities
• Patent Portfolio- Measure of Company’s
Success
• Tool for increasing negotiating power
• Establishes as a Pre-eminent Player
in the market
• Patent - A Tool for International Trade
Modernization of IPO
Focus
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Physical infrastructure Development
Human resources Strengthening
Computerization
RE-engineering of IP-procedures
IP Promotion & Awareness
Updating Search Facilities; Patent Databases
Dissemination of IP data
IP- Manuals being finalized
Updating basic Services
IPO-functioning transparent, user-friendly and
speedy.
New Patent Office Procedure
Patent Office
RMID
RMID1
RMID2
RMID3
RMID4
RECS
Tech G-1
E&G
Tech G-2
Tech G-3
Tech G-4
RECS
-1
RECS
-2
RECS
-3
GPM1
GPM2
GPM3
IPOJ
GPM
Comparative Trends of IPRs
Granted/Registered
Year
2004-05 2005-06 2006-07 2007-08 2008-09
4320
1911
7539
15316
Patents
16061
4175
3728
4250
4928
Designs
4772
45015
184325
3
24
Trade
Marks
G.I.R.
109361 100857
3
31
102257
45
34
Patenting Activity In India
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Myths about patents
Concept- knowledge is not a tradable commodity
Insufficient institutional infrastructure
Inadequate focus during project planning and
execution
Pro-reverse engineering mindset
General complacent attitude
Temptation to acquire short term gains
Professional and financial insecurity
Major part of R&D being in Govt sector
Less emphasis on IPR- oriented research in PROs
Lack of Public awareness
Must Do…
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Promote Cultivation of IP Culture
Increase Capacity to Create IPRs
Encouraging IP- Commercialization and Utilization
Expediting Development of Legal System for IP
Strengthening IP- Administration, examination and
registration
• Formulate and implement region and industryspecific strategies on IP
• Strengthen IP-information dissemination and
international cooperation
• Enhance professional training so as to raise the
competence
Strong Academia - Industry partnership
• Leads to Economic value addition to S&T
• Academia ought to unlock the innovation potential of its
knowledge base
• Academia-industry should move to long term trust-based
relationship
• Collaboration should address the gaps between R & D and
market ; undertake cooperative programs with industry
• Industry should be involved at an early stage in
Technology Development and R&D project implementation
• Successful Enterprises should integrate R&D (in-house /
outsourced) in their long term corporate strategy
Vision
“To transform Indian IPO by 2012
into a World class Organization
through adoption of transparent,
automated, customer friendly
procedures assuring time bound
quality services”
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