Lecture by Preethi Narayanan, Patent Consultant, Chennai Contact - - PowerPoint PPT Presentation

Lecture by Preethi Narayanan, Patent Consultant, Chennai Contact no: 9445661902 Mail id: preethinarayanan86@gmail.com

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What is patent?  Is my idea or project patentable?  How to apply for patent in India?  What are the requirements for filing patent?  How much it cost to get patent in India?  How can I make money from my patent?

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What is Patent?

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• Patent is an exclusive right that gives an inventor the right to

stop other people making or using their invention.

• It is a monopoly right granted to the inventor.
• Patent

protection means that the invention cannot be commercially made, used or sold without the patent owner’s concern.

• The patent specification is a techno-legal document.
• The term of patent is for 20 years.
• Filing of patent application should be given priority to obtain

appropriate protection for your research work.

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Is my idea or project patentable???

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First step towards patenting your invention is checking for patentability.. Gathering the details about your invention such as: Field of invention, Background study, Materials used, Method or process involved, working of the invention, examples, experimental procedure and data, comparative study, advantages of the invention, industrial utilization, drawings, flow chart, process.

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Second Step: Check for patentability:  Novelty or new: the subject matter of the invention should not be published or know to or available to public in India or elsewhere before the date of filing of the patent.  Inventiveness: patent description should have an inventive step means ie., an aspect of the invention that involves a Technical advance or economic significance or both with respect to existing knowledge, thus making invention non obvious to a person skilled in the art.

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 Industrial applicability: invention to be patented should have a utility that is it is capable of being made and used in an industry.  Non-patentable subject matter: Invention should not fall under the non- patentable subject matter such as:

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• harmful to human, animal or plant life or to environment.
• Eg. The genetically modified onco mouse to develop cancer for

the purpose of medical research is not patentable because cancer can be transmitted to public.

• Discovery of living things or non living substances in nature.
• Eg. Newton’s law.

discovery of microorganism.

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• New use or new property of known substance .
• Eg. New use of neem, turmeric.

new use of aspirin for heart ailments.

• Mere admixture resulting only in the aggregation of the

properties of the components.

• Eg. Solution of sugar and color additives of water to form a soft

drink.

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• mere arrangement or arrangement of or duplication of known

devices Eg: an umbrella with fan bucket fitted with torch

• Methods of agriculture or horticulture.
• Eg. Cultivation of algae,

producing new form of known plant.

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• Method of medical treatment.
• Eg. application of medical composition for removal of warts or

moles.

• Plants & animals in whole; Parts of plants & animals;

Seeds; Varieties & species; Essentially biological processes for propagation or production

• f the animals & plants.

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• Mathematical method, computer program, algorithms, business

method.

• Eg. Online chatting method.
• method of performing mental act or method of playing game.

Eg: scheme for learning a language, method of solving a cross word puzzle.

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• Presentation of information.
• Traditional knowledge.
• Eg. Wound healing property of turmeric.
• inventions falling under atomic energy.

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Third step is to go for prior art search to find whether there is any similar or relevant patent available in public domain. Results of prior art search gives you:

• An idea about which part or feature or embodiment of your

invention is already covered and what could be novelty feature...

• it helps to focus on further research or development work to

get maximum level of protection for your invention..

• Further it gives a clear picture about whether it is appropriate

to proceed with patent filing process.

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How to apply for patent in India?

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Who can file patent application???

The patent application may be filed by any of the following persons either alone or jointly with any other person: True and first inventor, True and first inventor’s assignee, Legal representative of deceased true and first inventor or his/her assignee.

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Where to file Patent your application?

Indian patent offices are located at Kolkata, Delhi, Chennai, Mumbai. The patent application has to be filed in the appropriate office based on Place of residence or business of applicant, Place from where the invention actually originated.

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How to file patent application

Application can be filed in patent office :

• Sending the completed documents through post
• Submitting the documents in person to Patent office
• through Online – Indian patent office portal

https://ipindiaonline.gov.in/epatentfiling/

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Types of Patent Application

• 1. Ordinary Application : An application filed in patent office

without claiming priority from any application or without reference to any other application under process in the patent

• ffice.
• 2. Divisional Application: a application divided from main

application in case of plurality of inventions disclosed in the main application

• 3. Patent of Addition: An application which may be filed

subsequent to filing of an application for patent, for an improvement or modification.

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• 4. Convention Application: Filing a patent application in a Paris

Convention country, then file separate patent applications in

• ther Paris Convention countries within 12 months from the

filing date of that first patent application, giving you the benefit in all those countries of claiming the filing date of the first application.

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• 5. PCT application: PCT (Patent Cooperative treaty) is an

international application which has two phases such as international phase and national phase. It is route for filing patent application in all the designating states by claiming the priority of first filed patent application in the regional patent office.

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PCT procedure

• Filing of international application in regional or WIPO,
• International search report,
• International publication,
• Supplementary international search opinion (optional),
• International preliminary examination report (optional),
• Entering into national phase (time limit- 30/31 months).

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What are the Requirements for filing patent?

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• 1. Covering letter -

addressing to the Controller of patents, patent

• ffice,

Chennai (appropriate jurisdiction) with mentioning the list of enclosed documents,

• 2. Application for Grant of Patent in Form 1,
• 3. Statement and Undertaking in Form 3,
• 4. Declaration of Inventor-ship in Form 5,
• 5. Power of Attorney in Form 26 (in original)

(if filed through attorney),

Hard copy should be submitted to patent office in case of e-filing

• 6. Complete/Provisional specification in Form 2,
• 7. Prescribed fees (in DD – if filed in physical mode or the CBR if

filled through e-filing mode),

• 8. Request for early publication in Form 9 (optional),
• 9. Request for Examination in Form 18, and
• 10. If filing under small entity or startup category then Form 28

should be submitted.

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The details that should be provided in the respective forms in Patent techno-legal document are given below: Legal Information and Forms: Form 1 – Application for grant of patent

• name and address of the inventor(s),
• name and address of the applicant(s),
• Communication address or address of service,
• Information corresponding to prior patent applications,

Form 3 – Statement and undertaking under section 8 Details of foreign filing.

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Form 18 - Request for examination

• Should be filed within 48 months from the date of filing.
• The patent office will not consider the patent application for

examination unless this form is filed. Form 26 – Power of attorney

• Should be submitted in non-judicial stamp paper.

Form 28 – startup and small entity

• To be filed to claim either small entity status or start up status

(along with proof).

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Technical Information:

Technical details of the information should be furnished along with Form 2. Types of patent specification:

• 1. Provisional Specification
• 2. Complete specification

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Contents of Provisional Specification

• 1. Title of the invention
• 2. Description of the invention starts with preamble ‘The

following Specification describes the invention.’

• 3. The description contains
• a. The field of invention,
• b. background of the invention,
• c. Object of the invention,
• d. Brief description of the invention,
• e. Diagrams (if any).

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The contents of complete specification are:  Title of Invention  Field of Invention  Background  Objects of the invention  Summary of Invention  Brief description of drawings  Description of invention  Examples if any, working of the invention  Abstract  Claims  Drawing / diagram / flow-chat

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How much it costs for patent filing?

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Particular Natural person Small entity other than natural person

For filing patent application (Form 1) 1600 4000 8000 For early publication (Form 9) 2500 6250 12500 For request of examination (Form 18) 4000 10000 20000

Fee structure for e-filing

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Particular Natural person Small entity

• ther than

natural person

For filing patent application (Form 1) 1760 4400 8800 For early publication (Form 9) 2750 6875 13750 For request of examination (Form 18) 4400 11000 22000

Fee structure for physical filing

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How can I make money from my patent?

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A patented technology is considered invalid if the commercial worth of the technology cannot be demonstrated and exploited. Before taking big financial decisions and filing patent application, you should consider the following points:  There has to be a commercial demand for the invention that you are patenting.  You should research about the companies or business that may use your invention and pay you royalties.  You should seek for the opportunity where companies could buy out your patent (if you wish to sell of course).

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Outright Sale

The quickest way to monetize patent rights is to sell the patent to an interested buyer. If you have a patent of high industrial utilization value, but you don’t have manufacturing facilities or resources to make use of it, then selling your patent to a company that has the infrastructure to make use of the patent immediately is one of the easiest way to gain from your patent.

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Licensing

Licensing the patent to another party allows that party to make use of your invention in exchange for paying you a royalty. Licensing agreements can include many different types of permissions and restrictions on use, but finally your patent rights into cash flow.

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Summary

 start with a problem,  bring solution to the problem by research and development (invention),  protect the solution by patents and  Make money from the solution by licensing or selling it.

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An invention should satisfy which of the following to be patentable:

• a. Novelty
• b. Inventiveness
• c. Industrial application
• d. (a), (b) and (c)

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Is discovery of a new variety of sea shell can be patented??

• a. Yes
• b. No

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Who can file patent application??

• a. Any one interested
• b. True and first inventor
• c. Owner of the company
• d. Relatives of inventor

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Find the type of patent application?

• a. Application filed without claiming priority –
• b. Application divided from parent application -
• c. Application

which is an improved

• f

the already filed application-

• d. Application which designations more than two countries -

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Form 18 is filed for:

• a. Request of early publication
• b. Request for examination
• c. Application for grant of patent
• d. Power of attorney

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• -------------------- and -------------------------- are the two ways of

making money from your patents.

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Contents of provisional specification:

• a. Field of invention, abstract, claims, description, objects and

background

• b. Field of invention, background, brief description, summary and

claims

• c. Field of invention, background, objects, summary and brief

description

• d. Field of invention, background, abstract, claims and drawings

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Foreign filing information of your patent application should be provided in

• a. Form 1
• b. Form 3
• c. Form 18
• d. Form 2
• e. Form 9

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