dipp and wipo organized program on training of trainers on effective ip asset management patentable...

DIPP and WIPO Organized Program DIPP and WIPO Organized Program onon

Training of Trainers on Effective IP Training of Trainers on Effective IP Asset Management Asset Management

Patentable and Non Patentable Patentable and Non Patentable Inventions in Key Jurisdictions,Inventions in Key Jurisdictions,Drafting a Patent Specification,Drafting a Patent Specification,

Patent Cooperation Treaty (PCT) and Patent Cooperation Treaty (PCT) and

Budapest TreatyBudapest Treaty

G. Deepak Sriniwas, PartnerG. Deepak Sriniwas, Partner

K&S PARTNERSK&S PARTNERS

Discussion onDiscussion on

Patentable and Non Patentable Inventions Patentable and Non Patentable Inventions in Key Jurisdictionsin Key Jurisdictions

Drafting a Patent SpecificationDrafting a Patent Specification Patent Cooperation Treaty (PCT)Patent Cooperation Treaty (PCT) Budapest TreatyBudapest Treaty

Patentable and Non Patentable Patentable and Non Patentable InventionsInventions

Pharma; BiotechPharma; Biotech

Software; Mathematical; Business Software; Mathematical; Business methods methods

WHAT IS PATENTABLE?WHAT IS PATENTABLE?

Patents Act 1970Patents Act 1970

Patentable inventionsPatentable inventions

any product or process any product or process which is :which is :

novel novel not obvious to a person not obvious to a person

skilled in the artskilled in the art capable of industrial capable of industrial

applicationapplication

WHAT IS NOT PATENTABLE? WHAT IS NOT PATENTABLE? (section 3)(section 3)

(d) New use of known substance/process(d) New use of known substance/process Polymorphs, esters, salts, combinations,Polymorphs, esters, salts, combinations, derivatives that do not show enhancedderivatives that do not show enhanced therapeutic efficacy over known maintherapeutic efficacy over known main substancesubstance(e) Mere admixtures (as opposed in synergistic(e) Mere admixtures (as opposed in synergistic mixtures) and processes thereofmixtures) and processes thereof(i) Method of treatment of human(i) Method of treatment of human beings/animalsbeings/animals(j) Plants, animals parts thereof(j) Plants, animals parts thereof


Section 3(d) Section 3(d)

3(d) The mere 3(d) The mere discovery of a new form of a known discovery of a new form of a known substancesubstance which does not result in the which does not result in the enhancement of the known efficacy of that enhancement of the known efficacy of that substance or the substance or the mere discovery of any new mere discovery of any new property or new use for a known substanceproperty or new use for a known substance or of or of the mere use of a known process, machine or the mere use of a known process, machine or apparatus unless such known process results in apparatus unless such known process results in a new product or employs at least one new a new product or employs at least one new reactantreactant..


Section 3(d) (contd.)Section 3(d) (contd.)

Explanation: For the purpose of this clause, salts, Explanation: For the purpose of this clause, salts, esters, ethers, polymorphs, metabolites, pure esters, ethers, polymorphs, metabolites, pure from, particle size, isomers, mixtures of isomers, from, particle size, isomers, mixtures of isomers, complexes, combinations and other derivatives complexes, combinations and other derivatives of known substance shall be considered to be of known substance shall be considered to be the same substance, unless they the same substance, unless they differ differ significantly in properties with regard to efficacysignificantly in properties with regard to efficacy.. Examples:Examples:

Toxic – non-toxicToxic – non-toxic Stable – shelf lifeStable – shelf life


(e) a substance obtained by a mere (e) a substance obtained by a mere

admixture resulting only in the aggregation admixture resulting only in the aggregation

of the properties of the components of the properties of the components

thereof thereof


(i) any process for the medicinal / surgical / (i) any process for the medicinal / surgical / curative, prophylactic / diagnostic / therapeutic curative, prophylactic / diagnostic / therapeutic or other treatment of human beings or similar or other treatment of human beings or similar such process for treatment in animals.such process for treatment in animals.

SECOND MEDICAL USESECOND MEDICAL USE

Case Law- GLIVEC Case Law- GLIVEC Test of 3(d) and the product patent regime.Test of 3(d) and the product patent regime.

Novartis AG filed patent application No. 1602/MAS/98 on July 17, Novartis AG filed patent application No. 1602/MAS/98 on July 17,

1998 for “crystal modification of N-Phenyl-2-Pyrimidineamine 1998 for “crystal modification of N-Phenyl-2-Pyrimidineamine

derivative, processes for its manufacture and its use”derivative, processes for its manufacture and its use”

Specifically beta form of N-{5-[4-(4-Methyl-piperazino-methyl)-Specifically beta form of N-{5-[4-(4-Methyl-piperazino-methyl)-

benzoylamido]-2-methyl-phenyl}-4-(3-p yridyl)-2-pyrimidine-amine benzoylamido]-2-methyl-phenyl}-4-(3-p yridyl)-2-pyrimidine-amine

salt.salt.

( ( ββ form of methanesulfonic acid addition salt of a pyrimidine form of methanesulfonic acid addition salt of a pyrimidine

compound and XRD pattern of compound and XRD pattern of ββ form was provided) form was provided)

Case Law- GLIVECCase Law- GLIVEC

Notable statement in specification “Notable statement in specification “It goes without saying that all It goes without saying that all

the indicated inhibitory and pharmacological effects of the indicated inhibitory and pharmacological effects of ββ form form

are also found with the free baseare also found with the free base”.”.

No enhanced efficacy shown No enhanced efficacy shown

Established Established ββ form was pre-existing form was pre-existing

Application was rejected by the Patent OfficeApplication was rejected by the Patent Office

Limited appeal to DB Chennai, case rejectedLimited appeal to DB Chennai, case rejected

Limited issue before IPAB-case rejectedLimited issue before IPAB-case rejected

Challenged IPAB decision by way of write in SCChallenged IPAB decision by way of write in SC


(j) Plants and animals in whole or in part thereof (j) Plants and animals in whole or in part thereof other than microorganisms but including seeds, other than microorganisms but including seeds, varieties and species and essentially biological varieties and species and essentially biological processes for production or propagation of processes for production or propagation of plants and animals.plants and animals.

PRODUCT PATENTSPRODUCT PATENTS

All products of molecular biology: whether for All products of molecular biology: whether for use as drug or food productuse as drug or food product Novel micro-organism (genetically engineered)Novel micro-organism (genetically engineered)

Novel gene and peptide sequences Novel gene and peptide sequences

Promoter, MarkerPromoter, Marker

Novel cassette, constructNovel cassette, construct

VaccineVaccine

New viral strainNew viral strain

MICRO-ORGANISMSMICRO-ORGANISMS

Not defined by ActNot defined by Act

Possibly includes yeast, bacteria, recombinants, Possibly includes yeast, bacteria, recombinants,

DNA sequences, vectorsDNA sequences, vectors

Are isolated microbes and colonies “mere discovery” Are isolated microbes and colonies “mere discovery”

??

Isolates, if characterized, deposited in ID and utility Isolates, if characterized, deposited in ID and utility

found – are they patentablefound – are they patentable

Genetically modified organisms: patentableGenetically modified organisms: patentable Source and origin of Biological material to be Source and origin of Biological material to be

provided in specificationprovided in specification

MICRO-ORGANISMS MICRO-ORGANISMS

EUROPEEUROPEEP case T396/93:EP case T396/93:Micro-organism includes bacteria, yeast, fungi, Micro-organism includes bacteria, yeast, fungi, algae, protozoa, virus….algae, protozoa, virus….Biotechnology Directive : Biotechnology Directive : Defines biological material not micro-Defines biological material not micro-

organismorganism Includes microbes, cell lines, viruses….Includes microbes, cell lines, viruses…. Excludes cell lines used for modifying germ Excludes cell lines used for modifying germ

line of human beingsline of human beings


USA- PATENTABLEUSA- PATENTABLE Diamond v. Chakrabarty, 447 U.S. 303 (1980)Diamond v. Chakrabarty, 447 U.S. 303 (1980)

genetically engineered bacteria are patentablegenetically engineered bacteria are patentable ““anything under the sun that is made by man”anything under the sun that is made by man”

Patents granted for :Patents granted for : Yeast lines,Yeast lines, Virus, hybridoma, oyesterVirus, hybridoma, oyester Harvard MouseHarvard Mouse


INDIAINDIA

Micro-organismMicro-organism Isolated ?Isolated ? Mutant ?Mutant ? Genetically modified ?Genetically modified ?

No distinction between isolated and genetically modified No distinction between isolated and genetically modified micro-organism micro-organism

Many argue: Isolated micro-organism is no invention, Many argue: Isolated micro-organism is no invention, only Genetically Modified only Genetically Modified

Deposit in international depository Deposit in international depository prior toprior to date of Indian date of Indian filingfiling

GENESGENES

Gene sequences if isolated and utility found, Gene sequences if isolated and utility found,

patentablepatentable

Are they ‘part of animal or human being’ ?Are they ‘part of animal or human being’ ?

Antibodies, including chimeric antibodies are Antibodies, including chimeric antibodies are

patentablepatentable

ISOLATED DNAISOLATED DNA

EUROPE-PATENTABLEEUROPE-PATENTABLE

Held in RELAXIN CASE -Held in RELAXIN CASE -IsolatedIsolated DNA DNA sequence is a chemical compound; can sequence is a chemical compound; can be patentedbe patented

ISOLATED DNAISOLATED DNA

US - PATENTABLEUS - PATENTABLE An isolated and purified DNA molecule, RNA An isolated and purified DNA molecule, RNA

molecule, or amino acid moleculemolecule, or amino acid molecule isolated chemical compoundsisolated chemical compounds Full-Length Genetic Sequences patentableFull-Length Genetic Sequences patentable Corresponding amino acid sequence patentableCorresponding amino acid sequence patentable Partial nucleic acid sequences if proved useful (eg: Partial nucleic acid sequences if proved useful (eg:

as encoding protein responsible for diagnosis of a as encoding protein responsible for diagnosis of a specific disease) = patentablespecific disease) = patentable

ExampleExample

US PATENT NO. 6,616,950US PATENT NO. 6,616,950 What is claimed is:What is claimed is:

1. A fermented fruit based herbal health drink 1. A fermented fruit based herbal health drink composition useful as an antioxidant, cardio-tonic, composition useful as an antioxidant, cardio-tonic, diuretic, digestive, choleretic, nervine relaxant and diuretic, digestive, choleretic, nervine relaxant and immuno-modulant, comprising extract from plant immuno-modulant, comprising extract from plant Andrographis with concentration ranging between 0.5 to Andrographis with concentration ranging between 0.5 to 10% in the total herbal health drink, extract from fruit, 10% in the total herbal health drink, extract from fruit, and ethanol ranging between 3 to 13% in the total herbal and ethanol ranging between 3 to 13% in the total herbal health drink, optionally extract from plant Tinospora and health drink, optionally extract from plant Tinospora and other additives.other additives.

ExampleExample

US PATENT NO. 6,558,940US PATENT NO. 6,558,940

A biologically pure culture of Streptomyces sp. CIMAP A biologically pure culture of Streptomyces sp. CIMAP A.sub.1 strain bearing ATCC Accession No. PTA-4131 A.sub.1 strain bearing ATCC Accession No. PTA-4131 and capable of inhibiting the growth of phytopathogenic and capable of inhibiting the growth of phytopathogenic fungi.fungi.

ExampleExample

US PATENT NO. 6,696,284US PATENT NO. 6,696,284 1. A biological filter for the purification of waste gases, comprising a 1. A biological filter for the purification of waste gases, comprising a

housing with at least one inlet and at least one outlet, and a bed of housing with at least one inlet and at least one outlet, and a bed of active micro-organisms contained in a carrier material consisting of active micro-organisms contained in a carrier material consisting of pith extracted from coconut husks, the carrier material being pith extracted from coconut husks, the carrier material being provided in the housing such that the waste gases flowing in provided in the housing such that the waste gases flowing in through the at least one inlet contact the bed of carrier material through the at least one inlet contact the bed of carrier material before exiting through the at least one outlet. before exiting through the at least one outlet.

PROCESS PATENTPROCESS PATENT

Method of protein Method of protein

purification, purification,

downstream downstream

processingprocessing

Process using micro-Process using micro-

organisms to obtain organisms to obtain

chemicalschemicals PatentablePatentable

SCREENING ASSAYSSCREENING ASSAYS

Diagnostic assays: Diagnostic assays: grey areagrey area Is it ex-vivo or in-vivo?Is it ex-vivo or in-vivo? Does the result of the Does the result of the

method indicate that method indicate that subject is suffering from subject is suffering from a disorder?a disorder?

If yes, not patentableIf yes, not patentable

METHOD FOR REGENERATION METHOD FOR REGENERATION OF OF

ORGANSORGANS A method for regenerating organs in humans A method for regenerating organs in humans

using:using:

stem cellsstem cells from contiguous embryonic peritoneal layerfrom contiguous embryonic peritoneal layer

formation of mesodermal organs in vitroformation of mesodermal organs in vitro

avoids use of exogenous tissueavoids use of exogenous tissue

5 organs regenerated5 organs regenerated

METHOD FOR REGENERATION METHOD FOR REGENERATION OF OF

ORGANSORGANS Patent Act, 1970Patent Act, 1970

sec 3(i) “sec 3(i) “any process for the medical, surgical, …. any process for the medical, surgical, ….

treatment of human beings or …render them free of treatment of human beings or …render them free of

disease ……” disease ……”

invention in question hit by above provisioninvention in question hit by above provision

currently not patentable in Indiacurrently not patentable in India

US 6,227,202 obtainedUS 6,227,202 obtained

SOFTWARE PATENTSSOFTWARE PATENTS

&&

BUSINESS METHOD PATENTSBUSINESS METHOD PATENTS

SOFTWARE PATENTSSOFTWARE PATENTSINDIAINDIA

Why Software is protected?Why Software is protected? Copyright does not protect “ideas” behind Copyright does not protect “ideas” behind

softwaresoftware Promote development of the software industry Promote development of the software industry

and computer-related industryand computer-related industry Software also exhibits technical behaviorSoftware also exhibits technical behavior Advantage for SMEs and independent Advantage for SMEs and independent

Software developers.Software developers.

SOFTWARE PATENTSSOFTWARE PATENTS- INDIA- INDIA

WHAT IS NOT PATENTABLE?WHAT IS NOT PATENTABLE?

SECTION 3SECTION 3

(k) a mathematical or business method or (k) a mathematical or business method or a computer programme per se or a computer programme per se or algorithms;algorithms;

Sec. 3 (k): Problem AreasSec. 3 (k): Problem Areas

All computer implemented methods NEED NOT All computer implemented methods NEED NOT qualify to be called as computer programsqualify to be called as computer programs

All computer implemented methods CAN NOT be All computer implemented methods CAN NOT be considered as non-patentable – merely a considered as non-patentable – merely a computer program computer program per seper se is not patentable is not patentable

Sec. 3 (k): Problem Areas Sec. 3 (k): Problem Areas (Contd..)(Contd..)

a computer program per se is merely directed a computer program per se is merely directed towards code; hence, a claim of the following towards code; hence, a claim of the following nature is non-patentablenature is non-patentable

A method of addition of two numbers comprising: A method of addition of two numbers comprising: <script type="text/javascript"> function AddJavaSc() <script type="text/javascript"> function AddJavaSc() { { var k, l;var k, l;l=parseInt(document.getElementById("txtVal1").value);l=parseInt(document.getElementById("txtVal1").value);k=parseInt(document.getElementById("txtVal2").value);k=parseInt(document.getElementById("txtVal2").value);document.getElementById("txtVal3").value=l + k; document.getElementById("txtVal3").value=l + k; } } </script> </script>

The claim should express it in simple statement The claim should express it in simple statement which is readable and understandable by the which is readable and understandable by the Patent Office such as:Patent Office such as:

A a method of addition of two numbers comprising:A a method of addition of two numbers comprising:(a)(a) obtaining value for a first variable from the user; obtaining value for a first variable from the user; (b)(b) obtaining value for a second variable from the user;obtaining value for a second variable from the user;(c)(c) ……....


Merely adding a conventional hardware to a Merely adding a conventional hardware to a program is not patentable; hence, a claim of program is not patentable; hence, a claim of the following nature is not patentable. the following nature is not patentable.

A A computer for implementing computer for implementing a method of a method of addition of two numbers comprising:addition of two numbers comprising:

(a)(a)obtaining value for a first variable from the obtaining value for a first variable from the user; user;

(b)(b)obtaining value for a second variable from obtaining value for a second variable from the user;the user;

(c)(c)……....


merely mentioning a hardware which performs same merely mentioning a hardware which performs same necessary operation of the method (mere automation) – hit necessary operation of the method (mere automation) – hit by section 2 (1) (j)by section 2 (1) (j)

WE CLAIM:WE CLAIM:A A computer implemented computer implemented method for controlling access to a method for controlling access to a

portion of a document, the document comprising a plurality portion of a document, the document comprising a plurality of portions, the method performed of portions, the method performed by at least one by at least one processorprocessor, the method comprising:, the method comprising:

receiving a request to access the document portion;receiving a request to access the document portion; determining whether to provide access to the requested determining whether to provide access to the requested

document portion based on data describing past accesses document portion based on data describing past accesses of other portions of the document; andof other portions of the document; and

responding to the request based on the determination.responding to the request based on the determination.


A method is restricted to a specific area of A method is restricted to a specific area of technology technology

A method for controlling access to a portion A method for controlling access to a portion of a of a legal document which governs contractual legal document which governs contractual obligations between two partiesobligations between two parties, the , the document comprising a plurality of portions, the document comprising a plurality of portions, the method comprising:method comprising:

receiving a request to access the document receiving a request to access the document portion portion which pertains to contractual which pertains to contractual obligations between two partiesobligations between two parties;;

determining whether to provide access to the determining whether to provide access to the requested document portion based on data requested document portion based on data describing past accesses of other portions of describing past accesses of other portions of the document; andthe document; and

responding to the request based on the responding to the request based on the determination.determination.

Sec. 3 (k): A Solution to ProblemSec. 3 (k): A Solution to Problem

A method should provide technical effect for being A method should provide technical effect for being patentable; A method should solve a technical problem patentable; A method should solve a technical problem instead of merely avoiding the problem instead of merely avoiding the problem

Technical Effect: It is defined as solution to a technical Technical Effect: It is defined as solution to a technical problem, which the invention taken as a whole, tends to problem, which the invention taken as a whole, tends to overcome. overcome. Few general examples of technical effect are as Few general examples of technical effect are as follows-follows-

1) Higher speed1) Higher speed2) Reduced hard-disk access time2) Reduced hard-disk access time3) More economical use of memory3) More economical use of memory4) More efficient data base search strategy4) More efficient data base search strategy5) More effective data compression techniques5) More effective data compression techniques6) Improved user interface6) Improved user interface7) Better control of robotic arm 7) Better control of robotic arm 8) Improved reception/transmission of signal8) Improved reception/transmission of signal

Sec. 3 (k): Better SolutionSec. 3 (k): Better Solution

A method provides technical effect and at the A method provides technical effect and at the same time, contains details of the hardware that same time, contains details of the hardware that can perform the necessary functioncan perform the necessary function

Various Categories of ClaimsVarious Categories of Claims

Method / Process Method / Process Apparatus / SystemApparatus / System Computer Program ProductComputer Program Product

Method / Process ClaimsMethod / Process Claims It is possible to obtain grant if: It is possible to obtain grant if:

the claimed method possess “Technical Effect”; and the claimed method possess “Technical Effect”; and Mode of implementation is preferably by hardware (conventional Mode of implementation is preferably by hardware (conventional

in nature) and the same is clearly mentioned in the specification in nature) and the same is clearly mentioned in the specification along with details of the hardware; and along with details of the hardware; and

Claims contain hardware limitationClaims contain hardware limitation

Example:Example:A method for processing A method for processing seismic dataseismic data, comprising the steps of , comprising the steps of collecting the time varying collecting the time varying seismic detectorseismic detector output signals for a output signals for a plurality of plurality of seismic sensors seismic sensors placed in a placed in a cable, cable, comprising:comprising:(a) (a) …………(b)(b) …… Steps involving technical effect…… Steps involving technical effect

Apparatus / System ClaimsApparatus / System Claims

A novel hardware implementing a conventional A novel hardware implementing a conventional method method

Clearly define inventive constructional Clearly define inventive constructional hardwarehardware featuresfeaturesExample: A register for Example: A register for storing datastoring data ( (process limitation)process limitation)

Means should be definedMeans should be definedExample: Means for mapping a set of pointsExample: Means for mapping a set of pointsWhat “means” are used? Some of the workable means to be What “means” are used? Some of the workable means to be mentioned in the specification and in the sub-claimsmentioned in the specification and in the sub-claims

Input means – mouse, key pad, CD reader, touch screen, joy stick Input means – mouse, key pad, CD reader, touch screen, joy stick etc. etc.

Computer Program Product Computer Program Product ClaimsClaims

Example:Example:

- - A computer program product in computer A computer program product in computer readable mediumreadable medium

- - A computer-readable storage medium having a A computer-readable storage medium having a program recorded thereonprogram recorded thereon

Software program products are computer Software program products are computer program program per se per se if simply recorded on a medium.if simply recorded on a medium.

Hence, not patentableHence, not patentable

Examples of software Examples of software per se:per se:

- - A computer program product in computer A computer program product in computer readable mediumreadable medium

- - A computer-readable storage medium having a A computer-readable storage medium having a program recorded thereonprogram recorded thereon

- A method for generating a new computer - A method for generating a new computer program using a software development toolprogram using a software development tool

- Scheme or method of bookkeeping- Scheme or method of bookkeeping- Business method in the field of accounting- Business method in the field of accounting- Method of tax collection- Method of tax collection

ALLOWABLE SUBJECT ALLOWABLE SUBJECT MATTERMATTER

A method having technical effect and having hardware A method having technical effect and having hardware limitation limitation

EXAMPLE:EXAMPLE:- A method for transmitting data across - A method for transmitting data across an open an open

communication channel communication channel on a on a wireless devicewireless device that that selectively opens and closes a selectively opens and closes a communication channelcommunication channel to to a wireless networka wireless network, and each , and each wireless devicewireless device including including a computer platform and including a a computer platform and including a plurality of device plurality of device resourcesresources that selectively utilizes a that selectively utilizes a communication communication channelchannel to communication with to communication with other devicesother devices across the across the network, said method comprising: network, said method comprising:

PATENTABLE SUBJECTPATENTABLE SUBJECTMATTER - USMATTER - US

35 U.S.C. Section 10135 U.S.C. Section 101 ““whoever invents or discovers any new and whoever invents or discovers any new and

useful process, machine, manufacture, or useful process, machine, manufacture, or composition of matter, or any new and useful composition of matter, or any new and useful improvement thereof, may obtain a patent improvement thereof, may obtain a patent therefore..”therefore..”

Process= “process, art or methods”Process= “process, art or methods” No technical effect or technical contribution No technical effect or technical contribution

requirementrequirement

EXCEPTIONS-BY CASE EXCEPTIONS-BY CASE LAWSLAWS

Diamond Vs Chakrabarty Diamond Vs Chakrabarty :”anything under :”anything under the sun made by man” is patentable---life the sun made by man” is patentable---life formform

Diamond Vs Diehr Diamond Vs Diehr : laws of nature, : laws of nature, abstract ideas, natural phenomena are abstract ideas, natural phenomena are exceptions to patentabilityexceptions to patentability

In re Allapat In re Allapat : practical application of an : practical application of an abstract idea, however is statutoryabstract idea, however is statutory

EXCEPTIONS-BY CASE EXCEPTIONS-BY CASE LAWSLAWS

Before Diamond v. Diehr (1981), Before Diamond v. Diehr (1981), software was deemed as similar to software was deemed as similar to mathematics and laws of nature, both of mathematics and laws of nature, both of which are un patentable which are un patentable

Before State Street Bank v. Signature Before State Street Bank v. Signature Financial Group case (Financial Group case (1998 ), 1998 ), business business method were considered per se un method were considered per se un patentable. patentable.

BUSINESS METHODS BUSINESS METHODS PATENTSPATENTS

Why Business method need to be Why Business method need to be protected?protected?

Innovative business methods equally Innovative business methods equally contribute to a country’s economic contribute to a country’s economic development.development.

BUSINESS METHODS BUSINESS METHODS PATENTSPATENTS

A business method that provides a “useful, A business method that provides a “useful, concrete, and tangible result” is patentable concrete, and tangible result” is patentable subject matter.subject matter.

((State Street Bank v. Signature Financial, State Street Bank v. Signature Financial, 1998)1998)

Example: Amazon’s one-click shoppingExample: Amazon’s one-click shopping

BUSINESS METHOD BUSINESS METHOD PATENTSPATENTS

Examples- Contd..Examples- Contd..

Internet PurchasingInternet Purchasing Advertising and MarketingAdvertising and Marketing Auction on the InternetAuction on the Internet Method of Funding College TuitionMethod of Funding College Tuition Miscellaneous FinanceMiscellaneous Finance Training and InstructionTraining and Instruction Accounting and Management SystemAccounting and Management System

PATENTABLE/ NON-PATENTABLE/ NON-PATENTABLE INVENTIONS - PATENTABLE INVENTIONS -

EUROPEEUROPE Article 52(1)- patentable inventions are Article 52(1)- patentable inventions are

NewNew Involve an Inventive StepInvolve an Inventive Step Susceptible of Industrial ApplicationSusceptible of Industrial Application

Article 52(2) and (3)- non-patentable inventions Article 52(2) and (3)- non-patentable inventions areare Schemes, rules and methods for doing business Schemes, rules and methods for doing business as as

suchsuch Programs for computers Programs for computers as suchas such

PATENTABLE SUBJECTPATENTABLE SUBJECTMATTER - EUROPEMATTER - EUROPE

““Inventions” must be of technical characterInventions” must be of technical character

- must relate to a technical field- must relate to a technical field

- must be concerned with a technical - must be concerned with a technical problemproblem

- must have technical features in terms of - must have technical features in terms of which the matter for which protection is which the matter for which protection is sought sought

SOFTWARE PATENTS-SOFTWARE PATENTS-EPO GUIDELINESEPO GUIDELINES

EPO Guidelines

Draft of EC Directive(2000)

Computer Computer SoftwareSoftware

““As such” are not As such” are not patentablepatentable

Make a Make a non-obvious non-obvious “technical contribution“technical contribution” to ” to the state-of-art, are the state-of-art, are patentablepatentable

May be May be claimedclaimed

Program which Program which exhibits the exhibits the necessary necessary technical effecttechnical effect

As a product through the As a product through the execution of softwareexecution of software

May not be May not be claimedclaimed

Program has Program has no no technical effecttechnical effect

Computer program Computer program products either in a stand-products either in a stand-alone formatalone formator on a carrieror on a carrier

PATENTABLE / NON-PATENTABLE / NON-PATENTABLE INVENTIONS - PATENTABLE INVENTIONS -

CHINACHINA ““Invention”- any new technical solution Invention”- any new technical solution

relating to a product, a process or relating to a product, a process or improvement thereof.improvement thereof.

““Rules and methods for mental activities” Rules and methods for mental activities” are not patentable.are not patentable.

PATENTABLE INVENTIONSPATENTABLE INVENTIONS- CHINA - CHINA

Subject matters not patentableSubject matters not patentable (Article 25 of the Chinese Patent Law)(Article 25 of the Chinese Patent Law) Scientific discoveries;Scientific discoveries; Rules and methods for mental activities;Rules and methods for mental activities; Methods for the diagnosis or the treatment of diseases;Methods for the diagnosis or the treatment of diseases; Animal and plant varieties;Animal and plant varieties; Substance obtained by means of nuclear transformationSubstance obtained by means of nuclear transformation Software is not expressly included here.Software is not expressly included here.

PATENTABLE / NON-PATENTABLE / NON-PATENTABLE INVENTIONS - PATENTABLE INVENTIONS -

CHINACHINAExamples- Patentable InventionsExamples- Patentable Inventions

1.1. An invention using a computer An invention using a computer program for measuring the viscosity of program for measuring the viscosity of liquidliquid

2.2. An invention employing a virtual An invention employing a virtual memory management program to increase memory management program to increase the capacity and the processing speedthe capacity and the processing speed

CHINA..CHINA..

Three conditions of inventions under Chinese Three conditions of inventions under Chinese Patent Law Patent Law

NoveltyNovelty InventivenessInventiveness Practical ApplicabilityPractical Applicability

New technical solution according to Article 2 New technical solution according to Article 2 paragraph 1 of the Implementing Rulesparagraph 1 of the Implementing Rules

ProductProduct Process Process ImprovementsImprovements

PATENTABLE INVENTIONS PATENTABLE INVENTIONS EXAMPLES..EXAMPLES..

Used in industrial process controlUsed in industrial process control Used to improve computer internal Used to improve computer internal

processprocess Used in measurement, control of Used in measurement, control of

measurement or test processesmeasurement or test processes Used in external data processingUsed in external data processing Used in coding and imputing Chinese Used in coding and imputing Chinese

characterscharacters

CHINACHINA

Unacceptable Claims:Unacceptable Claims: Pure softwarePure software Software recorded on carrierSoftware recorded on carrier The simple fit-together of software stored The simple fit-together of software stored

in the computer memory with processing in the computer memory with processing equipmentequipment

Legal Basis:Legal Basis: Such descriptions do not Such descriptions do not express the technical solution of the express the technical solution of the softwaresoftware..

CURRENT SCENARIOCURRENT SCENARIOCHINACHINA

Exemplary ClaimExemplary Claim US, JPUS, JP India, ChinaIndia, China

A computer program for ...A computer program for ... OK if OK if produces produces useful, useful, concrete and concrete and tangible tangible resultsresults

Not patentableNot patentable

A machine-readable medium having A machine-readable medium having instruction codes stored thereon, ...instruction codes stored thereon, ...

An apparatus comprising:An apparatus comprising: a processor; anda processor; and a memory having stored thereupon a memory having stored thereupon instructions, which, ...instructions, which, ...

SOFTWARE PATENTS SOFTWARE PATENTS - JAPAN- JAPAN

Software-related inventions can be patented as:Software-related inventions can be patented as: DeviceDevice ProcessProcess MediumMedium Computer ProgramComputer Program Data ConstructionData Construction

DRAFTING A PATENT DRAFTING A PATENT SPECIFICATIONSPECIFICATION

BEFORE DRAFTINGBEFORE DRAFTING

What is the invention ?What is the invention ? Is invention patentable ?Is invention patentable ? Is invention novel, inventive ?Is invention novel, inventive ? Prior art/prior disclosure ?Prior art/prior disclosure ?

Oral disclosure ?Oral disclosure ? Prior printed publication available to the public Prior printed publication available to the public

?? Prior public use ?Prior public use ?

BEFORE DRAFTING- Contd..BEFORE DRAFTING- Contd..

VERIFY THE FOLLOWING:VERIFY THE FOLLOWING: Conduct search Conduct search

Enlist problems in prior artEnlist problems in prior art What is the problem sought to be solved by the invention?What is the problem sought to be solved by the invention? What is the novelty?What is the novelty? Is the solution obvious? Is the solution obvious? Is it artificially excluded ?Is it artificially excluded ? Has publication ensued?Has publication ensued? Ascertain the type of application -whether complete or provisional is Ascertain the type of application -whether complete or provisional is

to be filedto be filed Decide the area and nature of protection- Paris convention, PCT, Decide the area and nature of protection- Paris convention, PCT,

ordinary application.ordinary application.

PATENT SPECIFICATIONPATENT SPECIFICATION

Read by:Read by:

Patent OfficePatent Office Licensee/AssigneeLicensee/Assignee CourtCourt Technical peers/skilled personsTechnical peers/skilled persons Competitors Competitors Commercial playersCommercial players General public General public

KINDS OF SPECIFICATIONKINDS OF SPECIFICATION

PROVISIONAL SPECIFICATIONPROVISIONAL SPECIFICATION

COMPLETE SPECIFICATIONCOMPLETE SPECIFICATION

KINDS OF APPLICATIONSKINDS OF APPLICATIONS

Ordinary or Non-Conventional Ordinary or Non-Conventional ApplicationApplication

Conventional (Paris/PCT) Conventional (Paris/PCT) ApplicationApplication

Divisional ApplicationDivisional Application

Patent of additionPatent of addition

PROVISIONAL PROVISIONAL SPECIFICATIONSPECIFICATION

o Is a document describing the Is a document describing the invention and need not contain claimsinvention and need not contain claims

o Disclose as much as possibleDisclose as much as possible

o Decides the date of the applicationDecides the date of the application

COMPLETE SPECIFICATIONCOMPLETE SPECIFICATION

Is a techno-legal document, Is a techno-legal document, describing and specifically claiming describing and specifically claiming the inventionthe invention

FORM 2 FORM 2 “ “ The following specification The following specification particularly describesparticularly describes the invention and the the invention and the manner in which it is to be performed.”manner in which it is to be performed.”

PATENT SPECIFICATION PATENT SPECIFICATION

Description Claims

• Description discusses the invention

• Claims define boundary of monopoly

DESCRIPTIONDESCRIPTION

Description must describe the invention comprehensively Description must describe the invention comprehensively

Should fully explain the problem to be solved with Should fully explain the problem to be solved with examplesexamples

No ambiguityNo ambiguity

Should be adequate and sufficient so as to enable a Should be adequate and sufficient so as to enable a person skilled in the art to perform and repeat the person skilled in the art to perform and repeat the invention without inventor’s further inputsinvention without inventor’s further inputs

CONTENTS OF THE CONTENTS OF THE DESCRIPTIONDESCRIPTION

Title Title Field of the Invention Field of the Invention Background of InventionBackground of Invention Prior Art details Prior Art details Objects of Invention Objects of Invention Statement of Invention Statement of Invention Detailed description of InventionDetailed description of Invention

TITLETITLE

A concise statement providing the crux of A concise statement providing the crux of the inventionthe invention

Care should be taken to incorporate all Care should be taken to incorporate all major aspects claimedmajor aspects claimed

Product-Process-ApparatusProduct-Process-Apparatus Example:Example:

Pen- A writing instrumentPen- A writing instrument Brush- A cleaning articleBrush- A cleaning article

FIELD OF THE INVENTIONFIELD OF THE INVENTION

More details than the titleMore details than the title

Provides utilityProvides utility

Sometimes used as a tool for search in the Sometimes used as a tool for search in the absence of abstractabsence of abstract

BACKGROUNDBACKGROUND

PProvides the technical background of rovides the technical background of the inventionthe invention

May include description of prior artsMay include description of prior arts

WHAT IS A PRIOR ART?WHAT IS A PRIOR ART?

Is a brief write-up of what is Is a brief write-up of what is known before the invention; known before the invention; sets out the problems sets out the problems associated with each of the associated with each of the known art; and describes known art; and describes the problem proposed to be the problem proposed to be solved by the inventionsolved by the invention

In India, this is not In India, this is not mandatorymandatory

BACKGROUND..BACKGROUND..

Un-solved problemsUn-solved problems

Prior art solution not workingPrior art solution not working

Describe new solution adequatelyDescribe new solution adequately

OBJECT(S) OF THE OBJECT(S) OF THE INVENTIONINVENTION

Provides purpose of the inventionProvides purpose of the invention

Main object(s) and Ancillary object(s)Main object(s) and Ancillary object(s)

Essential aspects and preferred/optional Essential aspects and preferred/optional aspects.aspects.

STATEMENT OF THE INVENTIONSTATEMENT OF THE INVENTION

Statement forms the main claim or claims Statement forms the main claim or claims in verbal agreementin verbal agreement

It is essential only when there is a It is essential only when there is a omnibus claim(s).omnibus claim(s).

DETAILED DESCRIPTION OF DETAILED DESCRIPTION OF THE INVENTIONTHE INVENTION

Sets out best mode of performing the invention Sets out best mode of performing the invention

Describes the invention in greater detail with Describes the invention in greater detail with examples/illustration/tables/graphs/Diagrams, examples/illustration/tables/graphs/Diagrams, etcetc

Description sufficient to enable a skilled person Description sufficient to enable a skilled person to put the invention into practiceto put the invention into practice

CLAIM(S)CLAIM(S)

Is the operative part of the specificationIs the operative part of the specification Defines the monopoly to be conferred by the Defines the monopoly to be conferred by the

patentpatent Define the metes and bounds of the invention: Define the metes and bounds of the invention:

at the time of infringement proceedings, only at the time of infringement proceedings, only claims will be interpretedclaims will be interpreted

If you do not claim, you disclaimIf you do not claim, you disclaim

CLAIMSCLAIMS

The main claim defines the essential The main claim defines the essential features and the sub-claims define the features and the sub-claims define the preferred / optional / additional featurespreferred / optional / additional features

The important, main properties need not The important, main properties need not be merged into the other claim.be merged into the other claim.

A separate claim has to be formed for the A separate claim has to be formed for the important feature(s). important feature(s).

DO’s AND DON’T’sDO’s AND DON’T’s

Specification must describe the invention Specification must describe the invention concisely concisely

should explain the problem solved fully should explain the problem solved fully with exampleswith examples

no ambiguityno ambiguity should be adequate and sufficient so as to should be adequate and sufficient so as to

enable in the art to perform the inventionenable in the art to perform the invention

DO’s AND DON’T’sDO’s AND DON’T’s

Claiming too broadly (covering prior art): Claiming too broadly (covering prior art): No Protection at allNo Protection at all

Claiming too narrow (terminology, features): Claiming too narrow (terminology, features): Competitor can use the inventionCompetitor can use the invention

Claiming just right:Claiming just right: This is an art and requires lots of imaginationThis is an art and requires lots of imagination

Claiming what is not supported by the description:Claiming what is not supported by the description: This can and must be avoided This can and must be avoided

Not claiming what the client wantsNot claiming what the client wants Claiming what the client does not use or needClaiming what the client does not use or need

A One way roadA One way road

You cannot broaden the claims of a granted patentYou cannot broaden the claims of a granted patent You cannot broaden the disclosure and the claims You cannot broaden the disclosure and the claims

beyond what has been included when drafting the beyond what has been included when drafting the application that was filedapplication that was filed

You do not get a second chance except for simple You do not get a second chance except for simple clarifications and for narrowing the claims when further clarifications and for narrowing the claims when further prior art is taken into accountprior art is taken into account

You are responsible for fulfilling the requirement of full You are responsible for fulfilling the requirement of full and clear disclosureand clear disclosure

You are responsible for getting the scope of protection You are responsible for getting the scope of protection that the inventor deservesthat the inventor deserves

INDEPENDENT CLAIMSINDEPENDENT CLAIMS

DRAFTING INDEPENDENT CLAIMS-DRAFTING INDEPENDENT CLAIMS-

Easy to understand the invention Easy to understand the invention

Easy to searchEasy to search

Easy to license Easy to license

Easy to establish infringement Easy to establish infringement

CHARACTERIZATION IN CLAIMSCHARACTERIZATION IN CLAIMS

Characterization not possible in many Characterization not possible in many cases cases

Need not be characterized Need not be characterized

Even if characterized, sub-claims need not Even if characterized, sub-claims need not be restricted to characterized part be restricted to characterized part

DRAFTING CLAIMS - CHEMICAL DRAFTING CLAIMS - CHEMICAL PATENTSPATENTS

Substance per se -broad coverageSubstance per se -broad coverage Substance can be defined in terms of Substance can be defined in terms of

nomenclature, general formula, structural nomenclature, general formula, structural formula, constituents, properties, constructional formula, constituents, properties, constructional or structural features, use, etcor structural features, use, etc

ProcessProcessa) a) Starting materialsStarting materialsb) b) Steps of the processSteps of the processc) c) Various parameters involved in each step, andVarious parameters involved in each step, andd) d) End product.End product.

DRAFTING CLAIMS - CHEMICAL DRAFTING CLAIMS - CHEMICAL PATENTSPATENTS

Product per seProduct per se Composition/synergyComposition/synergy 22ndnd generation product enhanced efficacy generation product enhanced efficacy Describe essential ingredients of Describe essential ingredients of

product/compositionproduct/composition Ratio/percentage of the ingredientsRatio/percentage of the ingredients Their effective amountsTheir effective amounts Any optional/additional ingredientsAny optional/additional ingredients

DRAFTING TIPSDRAFTING TIPS

Proportions: Provide a broad workable Proportions: Provide a broad workable range unless an exact amount is crucial range unless an exact amount is crucial and essential to the success of the and essential to the success of the inventioninvention

Specify the class and specific chemicals Specify the class and specific chemicals usedusedEx:Ex: All the oxidants that would enable the All the oxidants that would enable the

invention, all alkali/acids that would help to invention, all alkali/acids that would help to work the inventionwork the invention

DRAFTING TIPSDRAFTING TIPS

Avoid negative examplesAvoid negative examples

Example;Example;

- Vast difference in the IC 50 values of anticancer - Vast difference in the IC 50 values of anticancer drugs with two different hosts.drugs with two different hosts.

-An anticancer drug effective against a subject -An anticancer drug effective against a subject may not be providing the similar result with a may not be providing the similar result with a subject of another genus.subject of another genus.

ELEMENTS OF A CLAIMELEMENTS OF A CLAIM

Preamble –indicates the subject matter for Preamble –indicates the subject matter for which the protection is soughtwhich the protection is sought

Connecting link- such as “comprising” or Connecting link- such as “comprising” or “consisting” or “wherein” etc“consisting” or “wherein” etc

Body of the claim – indicates the feature of Body of the claim – indicates the feature of the inventionthe invention

CLAIMSCLAIMS

The number of the claims shall be reasonable in consideration of The number of the claims shall be reasonable in consideration of

the nature of the invention claimed.the nature of the invention claimed.

If there are several claims, they shall be numbered consecutively in If there are several claims, they shall be numbered consecutively in

Arabic numerals.Arabic numerals.

Claims shall not rely in respect of the technical features of the Claims shall not rely in respect of the technical features of the

invention, on references to the description or drawings. (Self invention, on references to the description or drawings. (Self

explanatory)explanatory)

PRINCIPAL/ INDEPENDENT PRINCIPAL/ INDEPENDENT CLAIMCLAIM

Claim has to distinguish subject matter Claim has to distinguish subject matter over prior artover prior art

Principal claim Principal claim = generic term from prior = generic term from prior art + one or more feature(s)art + one or more feature(s)

Note:Note: Definition of generic term as short Definition of generic term as short and as generic as possibleand as generic as possible

DEPENDENT CLAIMSDEPENDENT CLAIMS

Any claim stating the essential features of an Any claim stating the essential features of an

invention may be followed by one or more claims invention may be followed by one or more claims

concerning particular embodiments of that concerning particular embodiments of that

invention. [ e.g. reaction conditions]invention. [ e.g. reaction conditions]

Dependent claims should bring restrictions to the Dependent claims should bring restrictions to the

claims from which it claims dependency.claims from which it claims dependency.

GROUPING OF DEPENDENT GROUPING OF DEPENDENT CLAIMSCLAIMS

All dependent claims referring back to a single All dependent claims referring back to a single previous claim, and all dependent claims previous claim, and all dependent claims referring back to several previous claims, referring back to several previous claims, shall be grouped together to the extent and shall be grouped together to the extent and in the most practical way possible.in the most practical way possible.

IN235798 IN235798 A N-phenyl- (2R, 5S) dimethylpiperazine derivative represented by the A N-phenyl- (2R, 5S) dimethylpiperazine derivative represented by the following general formula (I) or a salt thereof:following general formula (I) or a salt thereof:

Wherein:Wherein:R1: Cl, Br, -CF3 or –O-CH3R1: Cl, Br, -CF3 or –O-CH3R2: H or FR2: H or FCy: 2-cyclopropylpyrimidin-5-yl, 2-methylpyrimidin-5-yl, or 6-Cy: 2-cyclopropylpyrimidin-5-yl, 2-methylpyrimidin-5-yl, or 6-

(trifluoromethyl)pyridin-3-yl (trifluoromethyl)pyridin-3-yl provided that R1 is Br when Cy is 6-(trifluoromethyl)pyridin-3-yl.provided that R1 is Br when Cy is 6-(trifluoromethyl)pyridin-3-yl.

N NR1

NH

O

Cy

R2

NI)（

An Example of Chemical An Example of Chemical ClaimClaim

An Example of Chemical ClaimAn Example of Chemical Claim

US PATENT NO. 6,884,421US PATENT NO. 6,884,421

A pharmaceutical composition for treating hyperglycemic A pharmaceutical composition for treating hyperglycemic

condition, said composition comprising a condition, said composition comprising a

pharmaceutically effective amount of: pharmaceutically effective amount of:

Butyric acidButyric acid

An insoluble wheat bran fibre; andAn insoluble wheat bran fibre; and

Guar gum fibre as a soluble hypoglycemic agentGuar gum fibre as a soluble hypoglycemic agent

Example of an Indian Claim - In Example of an Indian Claim - In Communications field Communications field

INDIAINDIAA method A method for decoupling forward and reverse link for decoupling forward and reverse link carrierscarriers, said method comprising:, said method comprising:

assigning one or more forward link carriers to assigning one or more forward link carriers to transmit data from a base station to a mobile station;transmit data from a base station to a mobile station;

assigning one or more reverse link carriers to assigning one or more reverse link carriers to transmit data from the mobile station to the base station; transmit data from the mobile station to the base station; andand

limiting reverse link transmissions corresponding limiting reverse link transmissions corresponding to each of the forward link carriers by …to each of the forward link carriers by …

Example of a US claimExample of a US claim

USAUSAA method comprising:A method comprising:

assigning one or more forward link carriers assigning one or more forward link carriers to transmit data from a base station to a mobile to transmit data from a base station to a mobile station;station;

assigning one or more reverse link carriers assigning one or more reverse link carriers to transmit data from the mobile station to the to transmit data from the mobile station to the base station; andbase station; and

limiting reverse link transmissions limiting reverse link transmissions corresponding to each of the forward link corresponding to each of the forward link carriers wherein said limiting…carriers wherein said limiting…

Example of EP claimExample of EP claim

A method comprising:A method comprising:assigning one or more forward link carriers assigning one or more forward link carriers

to transmit data from a base station to a mobile to transmit data from a base station to a mobile station;station;

assigning one or more reverse link carriers assigning one or more reverse link carriers to transmit data from the mobile station to the to transmit data from the mobile station to the base station;base station;

characterized bycharacterized bylimiting reverse link transmissions limiting reverse link transmissions

corresponding to each of the forward link corresponding to each of the forward link carriers by …carriers by …

Inventor’s Idea of the Inventor’s Idea of the Invention:Invention: NOVELTY: Providing an NOVELTY: Providing an

end cap locator of the end cap locator of the shape as shown in the shape as shown in the figure figure

NEED: to make the entire NEED: to make the entire device more attractive device more attractive

WISH: Imparting a Unique WISH: Imparting a Unique Selling Proposition (USP) Selling Proposition (USP) to the productto the product

What are the main claims? What are the main claims?

An electronic device comprising: An electronic device comprising: a housing with an end cap locator; a housing with an end cap locator; a retractable elongate radio frequency radiating element passing a retractable elongate radio frequency radiating element passing

through an aperture associated with the end cap locator, the through an aperture associated with the end cap locator, the radiating element being electrically connectable to an electrical radiating element being electrically connectable to an electrical circuit provided in the housing and being movable from a retracted circuit provided in the housing and being movable from a retracted position when substantially located in the housing to an extended position when substantially located in the housing to an extended position when substantially protruded outside the housing; position when substantially protruded outside the housing;

an end cap located on a free end of the radiating element, the end an end cap located on a free end of the radiating element, the end cap operatively engaging the end cap locator when the radiating cap operatively engaging the end cap locator when the radiating element is in the retracted position thereby element is in the retracted position thereby aligning the end cap in aligning the end cap in a predetermined orientation relative to the housinga predetermined orientation relative to the housing. .

What are the main claims? What are the main claims?

An antenna assembly comprising: An antenna assembly comprising: an inner telescopic elongate element; an inner telescopic elongate element; a collar element provided about a periphery of a collar element provided about a periphery of

the said inner telescopic tube section and the said inner telescopic tube section and comprising therein an end cap locator; comprising therein an end cap locator;

a forward end of the said inner telescopic tube a forward end of the said inner telescopic tube section being configured to receive an end cap; section being configured to receive an end cap;

wherein the end cap operatively engages with wherein the end cap operatively engages with the end cap locator when the inner telescopic the end cap locator when the inner telescopic element is in the retracted position thereby element is in the retracted position thereby aligning the end cap in a predetermined aligning the end cap in a predetermined orientation relative to the collar element. orientation relative to the collar element.

What does the main claims cover?What does the main claims cover?

What do the main claims cover?What do the main claims cover?

Patent Corporation Treaty (PCT)Patent Corporation Treaty (PCT)

Signed by India, effective December 7, Signed by India, effective December 7, 19981998

About 142 countries are members (as About 142 countries are members (as on January 14, 2010).on January 14, 2010).

UK

JAP

AN

ITALY CHINA

FRANCEKOREA

USA

HONG KONG

FIRST

APPLICATION

Common Approach Common Approach

WHY PCT ?WHY PCT ?

For protection in Multiple countries

If patent has inherent merits

PCT IS THE ANSWER

PCT IS NOT AN INTERNATIONAL PATENT!!!!

WHAT IS PCT ?WHAT IS PCT ?

PCT is a window through which an PCT is a window through which an applicant can file a single patent applicant can file a single patent application and secure priority in application and secure priority in the designated states - procedurethe designated states - procedure

Search Report: evaluates inventionSearch Report: evaluates invention

Examination Report (optional)Examination Report (optional)

HOW TO FILE A PCT HOW TO FILE A PCT APPLICATION ?APPLICATION ?

An applicant may file a PCT application in the An applicant may file a PCT application in the

Designated NationalDesignated NationalPatent OfficePatent Office

PCT HQPCT HQ(Geneva)(Geneva)

THE PROCEDURE THE PROCEDURE

MonthsMonths

Filing of priority -founding applicationFiling of priority -founding application

Filing of International applicationFiling of International application 12 12

Search reportSearch report 6 6

Amendment in responseAmendment in response 16 16

Publication of applicationPublication of application 18 18

THE PROCEDURETHE PROCEDURE

THEN THE NATIONAL LAW OF THE THEN THE NATIONAL LAW OF THE CONCERNED STATES TAKES OVER CONCERNED STATES TAKES OVER AND EVENTUALLY PATENT IS AND EVENTUALLY PATENT IS GRANTEDGRANTED

Budapest Treaty Budapest Treaty

India signed this treaty on 17India signed this treaty on 17thth December December 20012001


Deposition of the Microorganism for the Deposition of the Microorganism for the purpose of Patent.purpose of Patent.

Made available to public after grantMade available to public after grant


International recognized depositoryInternational recognized depository

IMTECH- Chandigarh IMTECH- Chandigarh

Any Queries?Any Queries?

Thank YouThank You

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