SUCESSFUL IDEA/CONCEPT EXPERIENCE Need to patent your invention? - - PowerPoint PPT Presentation

ENDS WITH

SUCESSFUL

EXPERIENCE

BEGINS WITH

NOVEL IDEA/CONCEPT

Every Research…

A lot of new ideas are created or born but, quoting Brandt (2002),

“Most die a lonely death, never seeing the light of commercial success.”

4 3 2 1

Need to patent your invention?

NOVEL INVENTION PATENT SEARCH PATENT DRAFT FILE AN PATENT APPLICATION

✓ The Information contained in existing patent documents (patent information) plays an important role in the conception, screening and development of an idea. Such information can provide useful insight into whether an idea is new or not (state-of-the art) and whether to proceed further in developing an idea. With nearly 3 million patent applications being published annually around the globe, of which an estimated 70 percent of the information in patent documents is not available elsewhere they offer a wealth of information, such as information on the state-of-the-art, which can help an enterprise to avoid wasting resources

• WIPO

Why search Patent Literature?

Basic Structure of Patent

01

ABSTRACT

Crux of the invention

02

DESCRIPTION

Brief description of the invention

03

CLAIMS

Aspects to claim/monopolize

04

DRAWINGS

Image that best represents your invention

• Technical Field
• Background
• Description of Prior Art
• Summary or Brief Description
• Object of the Invention
• Detailed Description
• Examples
• Drawings Description

Description/Specification

• Sequentially Numbered
• Define Scope of Patent
• Range from broad to narrow
• Products/ Articles/ System, Product by Process,

Compositions, Methods of making, Methods of using…

Claims

Tools for Patent Search

Keyword Search Classification Search Number Search

Others E.g., Country, date etc.

Other useful links

Effective searching requires a good search strategy

• Keyword Search
• Classification Search
• Appropriate Field (s)
• Must contain appropriate terms for capturing

references

• Take into account all possible variations of

inventions

• Including other uses
• Combinations of compositions etc.

Searching

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Title

Title of the invention

Abstract

Abstract of the invention

Country

Country of an application

Date

Priority Date

Classification

International Classification

Search Fields

Filing Date Publication Date Issue / Grant Date Cooperative Classification

Inventor

Name of the inventor

Applicant

Name of the assignee

Citations

Citing and cited documents

Application Number

Application number

Patent number

Granted application number

Search Fields …

Specialized Searches

Chemistry & Biochemistry/ Biotechnology Fields

Chemical Structures

Systematic Name Trade Names Registry Number Chemical Structure https://www.surechembl.org/search//

R1 G

x

Sequences

https://www.lens.org/lens/bio/patseqexplorer#pse/homo_sapiens/latest

Peptides Nucleotides

• Backward Citations
• All references cited in a patent
• Includes references cited by applicant and examiner
• Useful in assessing strength of patent over cited art
• Forward Citations
• All references citing a patent
• Useful in assessing strength of patent
• Generally, breakthrough patents are referred to very often
• Citations are used to pick up patents that might otherwise be

missed

Citations

Types of Analyses

Use of search results for different purposes

• Anything that is known, described, used or sold is

considered prior art

• May be in any tangible or intangible form
• Printed or written matter
• Trade shows
• Brochures
• Patents
• Open literature
• …
• Recorded format
• CDs
• Cassettes
• …

Prior Art

Patentability

• Done to assess novelty and obviousness (inventiveness) of

invention over all prior art

• Industrial Applicability is generally not within the purview of such a

search

• Neither is patentable subject matter looked at
• Prior art includes patents and non patent literature
• An ongoing search that should be done regularly until a patent

application is filed

• Novelty assessment is a lower form where only NOVELTY is

assessed

Opposition/ Invalidation

• Administrative process available under the law of many

jurisdictions which allows third parties to formally challenge the validity of patents

• 2 types:
• Pre-grant opposition when a pending patent application is
• pposed
• Post grant opposition when a granted patent is opposed
• Search can encompass ALL kinds of literature
• Date of the document HAS to pre-date the priority date of

the patent application/ granted patent

FTO/FTP

• An assurance that any commercial use of a product or a process will

NOT violate the rights of a patent holder

• Rights of a patent holder determined by whatever is in the CLAIMS

section of the patent

• Search is limited to patent literature necessarily
• Preferably search in the claims section
• Database chosen accordingly

• Technology trends
• Provides the direction in which technology is moving towards (e.g. Materials used as

filaments in light bulbs)

• Useful for predicting next generation products and processes
• Also can predict maturation of technology
• Competitive landscape
• Provides a competitors’ direction in a technical field
• Used for predictive purposes as well
• Enables strategizing of business/research program
• Chronological trends
• Provides direction a technology is headed (e.g. Light bulb over the years)
• Similar to technology trend

Landscapes

• An inventor: Prior art awareness, avoid replication
• A researcher: analyze new and pending patents to understand present trends
• A company: Avoid infringement, assess competitors actions, exposed to technical

information

• An Entrepreneur: Identify new market that can be ventured by assessing

competitors

• Students and educators: Learn about latest developments in all industries
• General public: To be aware of developments in all works of life

Who benefits from Patent search?

Types of patent applications

 Temporary application which is filed when the invention is not finalized and is still under experimentation. Advantages of filing a provisional application  Applicant gets 12 months’ time to fully develop the invention and ascertain its market potential  Helps to establish “priority” right over the invention  Enables the applicant to use the term "patent pending” on their product  Less expensive to prepare and file the application  Enables the applicant to file International applications and claim priority within 12 months.

Provisional Application

• An application for patent filed in the Patent Office without claiming any

priority of application made in a convention country or without any reference to any other application under process in the office.

• An ordinary application must be accompanied with a complete specification

and claims.

Ordinary Application OR Non-Provisional Application

• An application for patent filed in the Patent Office, claiming a priority

date based on the same or substantially similar application filed in one or more of the convention countries.

• In order to get convention status, an applicant should file the application

in the Indian Patent Office within 12 months from the date of first filing of a similar application in the convention country.

Convention Application

 An international application governed by the Patent Cooperation Treaty, and can be validated in up to 142 countries. Advantages of filing a PCT Application  A single international patent application can be filed in order to seek protection for an invention in up to 142 countries throughout the world.  The priority date obtained by filing a PCT application is internationally recognized, and has an effect in each of the countries designated.  It gives the application 30/31 months to enter into various countries from the international filing date or the priority date, and therefore gives the applicant more time to assess the viability of the invention.

PCT International Application

• When an international application is made according to PCT

designating India

• An applicant can file the national phase application in India within 31

months from the international filing date or the priority date (whichever is earlier).

PCT National Phase Application

 When an applicant feels that he has come across an invention which is a slight modification of the invention for which he has already applied for

• r has obtained patent, the applicant can go for patent of addition if the

invention does not involve a substantial inventive step.  There is no need to pay separate renewal fee for the patent of addition during the term of the main patent and it expires along with the main patent.

Patent of Addition

 When an application made by applicant claims more than one invention, the applicant on his own or to meet the official objection may divide the application and file two or more applications, as applicable for each of the inventions.  This type of application, divided out of the parent one, is called a Divisional Application.  The priority date for all the divisional applications will be same as that claimed by the Parent Application.

Divisional Application

Types of patent specifications

• A provisional application can be briefed even as less

as in a single page only.

• A provisional application can be accompanied by one
• r more drawing describing the invention.
• A Claim statement is not required to be submitted with

the provisional application.

Provisional Specification

• Title
• Field of invention
• Background of Invention
• Summary of Invention
• Brief Description of Drawings
• Detailed Description of Invention
• Drawings (if any)
• Claims
• Abstract

Parts of the Complete Specification

• Briefly describes the area of technology in which the

invention falls.

• Often not more then one or two sentences.
• Useful in classification of patent.
• Often starts “This invention relates to--”

Field of Invention

• This section involves Discussion on progression of technology.
• Description of prior art i.e. the present state of technology

(state-of-art)

• Discussion on existing problems in prior art.
• Possible solutions offered by present invention.

Background

• Discloses a gist of present invention.
• Highlights “problems solved by present invention.”
• Reflects the broadest claim.

Summary of Invention

• Drawings are provided for better understanding of

invention.

• This section helps to identify the labels and figures

disclosed in drawings.

Brief Description of Drawings

• Starts with general overview of invention.
• Narrows down to details of theory and all the processes and methods for

making and using the invention.

• Invention described with help of preferred embodiments (Best Mode).
• Alternative embodiments can be disclosed.

Detailed Description of Invention

• Describe the essential elements and legal boundaries of an

invention.

• First claim or Independent claim is often the broadest.
• “comprising of ” –preferred term.
• -------”characterised in that”-to distinguish
• Dependent claims expand, qualify, limit, narrow, quantify the

elements in Claim 1.

Claims

• Independent Claim.
• Dependent Claims.
• Omnibus Claim

Basic Types of Claims

• Is the first claim.
• Stands alone.
• Often the broadest claim.
• Broadly describes the invention thereby preventing competitors to

circumvent the invention.

• Prior Art and “inventiveness” determines broadness of the Claim 1.

Independent Claim

• Depend on first claim.
• Refer to important distinguishing features of the invention as described

in Claim 1.

• Claims often narrow-down the scope of invention.
• Subject to “Unity of Invention”, more than one Independent Claim

possible.

• Claims must not be independent sentences.

Dependent Claims

 Claims examples or drawings described in description of patent.  E.g. “A [product or process] substantially as hereinbefore described with reference to any one of the Examples [or to any one of the accompanying drawings]”  to ensure protection for at least the exemplified embodiment(s) of a claimed invention .  to guard against any inadvertent weaknesses in the wording

• f the independent claims.

Omnibus Claim

 Complete description  Declaration of inventorship - a form having details of inventors  Statement of undertaking - filing status of application in foreign country, if any  Power of attorney - authorising agent to file the application  Priority document - in case of convention application  Claim(s) - a declaration on all the claims on the invention  Drawing(s) - describing the process involved in invention

Documents required to file a patent

IP Management

 IP Management is more crucial for institutions  to ensure lifetime of IP  to guard their rights at right time

Means of IP Commercialisation

Factors to be considered  Keep your ideas secret  Use IP databases and conduct FTO analysis  Keep the records  Protect IP  Enforce intellectual property rights

IP Commercialisation by its owners

IP Commercialization by Assignments

 transfer of ownership of an IPR  the assignee becomes the new owner of the IPR.  owner of the IP does not have enough capabilities and/or would like to realise an immediate cash flow from an IP asset,

IP Commercialization by Assignments

Factors to be considered:  Remember to sign NDAs  Analyse the risk by performing IP due diligence  Consider the key terms in the assignment agreements  The form of agreement  Identification of the IP  The payment  Warranties  Governing laws and settlement of disputes  Don’t forget to register the assignee of the IP at the relevant IP offices to record the new

• wner in the IP register

IP Commercialization by Licensing

 A licence is a contract under which the holder of an intellectual property (licensor) grants permission for the use of its intellectual property to another person (licensee), within the limits set by the provisions of the contract.  Licensing has a vital role in companies’ commercialisation strategies, since there are significant advantages of licensing IP , creating a win- win situation for both parties.

Types of Licensing

Key terms in the licensing agreement

 The form of the agreement  The term of the agreement  Identification of the IP  The type of licensing  Geographical scope and field of use

Differences between assignment and licensing agreements

Other means of commercialization

 Franchising  Joint ventures  Merges and acquisitions

Thanks for your Participation