Dr. W.M. DHUMANE SENIOR JOINT CONTROLLER OF PATENTS & DESINGS,

PATENT OFFICE , MUMBAI

e-mail: wmdhumane@rediffmail.com

IPR ADVANTAGE :

Recent Advances

Creation of Human Intellect

IPR- A Key component for success in Business

INTELLECTUAL PROPERTY

Knowledge Assets – Tradable Commodities - capital

IPR - “New wealth of Nations

Tool for Competitiveness

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 2002Geographical 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)

AREASAREAS

• 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 ?

• 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

• A new product or process• involving an Inventive Step

and • capable of Industrial

application

• 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 • 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 ProcedurePatent 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 PRIOR

worldwide in India 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

Andthe 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 non- obvious

• 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 non-obviousness

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

• 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

Enacted w.e.f.1-1-2005

Both product and process patent provided.

Publication of applications after 18 months with facility for early publication.

Examination on request.

Both pre-grant and post-grant opposition.

Fast track mechanism for disposal of appeals.

Provision for protection of bio-diversity and traditional knowledge.

Term of patent: 20 years

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

drugs at reasonable prices.

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 - BENEFITS OF PATENTS TO PANTENTEE - II

• Exclusive Right-

to 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- IIBENEFITS 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- Planning R & D Planning strategic protection for IP- assets Forging strategic alliances Identifying possible collaborators /competitors

Benefits of PatentsBenefits 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 IPOFocus

• 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.

Patent Office

RECS

IPOJRMID

E&G GPMGPM

Tech G-4

Tech G-3

Tech G-2

Tech G-1

RMID-4

RMID-3

RMID-2

RMID-1

RECS-3

RECS-2

RECS-1

GPM-3

GPM-3

GPM-2

GPM-2

GPM-1

GPM-1

New Patent Office Procedure

Comparative Trends of IPRs Granted/Registered

34

Year2004-05 2005-06 2006-07 2007-08 2008-09

Patents

1911 43207539 15316 16061

Designs

3728 41754250 4928 4772

Trade Marks

45015 184325

109361 100857 102257

G.I.R.3 24 3 31 45

Patenting Activity In India

• 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…• 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 industry-specific

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

www.ipindia.nic.in

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”

www.ipindia.nic.in