from patent to profit - mr.rajiv ramesh bhandari · 2015-01-15 · from patent to profit. the roman...
TRANSCRIPT
By: Adv Swapnil J Gawande
Reg. patent and trademark consultant
Legal advisor(patent): business logic int.(India).
FROM PATENT TO PROFIT
By: Adv Swapnil J Gawande
Reg. patent and trademark consultant
Legal advisor(patent): business logic int.(India).
TYPES OF PROPERTY
•TANGIBLE- House, Furniture.
•INTANGIBLE- Shares, Bonds, Debentures,Intellectual Property.
Types of intellectual propertyINDUSTRIAL PROPERTY
Patent (protects invention)
Trademark (protects Identifier)
Industrial designs (protects structure)
Geographical indications (protectslocality)
ARTISTIC WORK
Copyright (protects authorship orartistry)
INDUSTRIAL PROPERTY
Patent (protects invention)
Trademark (protects Identifier)
Industrial designs (protects structure)
Geographical indications (protectslocality)
ARTISTIC WORK
Copyright (protects authorship orartistry)
Trade secret is information that derives value from not beingreadily ascertainable by others, and is the subject of
efforts reasonable under the circumstances to maintainits secrecy
Term:
Potentially forever-so long the above criteria are met
Term is as long as trade secret can be kept secret.
Trade Secret
Trade secret is information that derives value from not beingreadily ascertainable by others, and is the subject of
efforts reasonable under the circumstances to maintainits secrecy
Term:
Potentially forever-so long the above criteria are met
Term is as long as trade secret can be kept secret.
What is patent?
Governmental grant of exclusive monopoly rights for alimited period of time (20 years from the date offiling) to exclude others from making, using, selling,importing the invention.
Purpose: To foster technology
Inventor teaches technology via patent
For teaching inventor gets a monopoly of 20 years
Claimed in words.
Governmental grant of exclusive monopoly rights for alimited period of time (20 years from the date offiling) to exclude others from making, using, selling,importing the invention.
Purpose: To foster technology
Inventor teaches technology via patent
For teaching inventor gets a monopoly of 20 years
Claimed in words.
INDIA A CRYING HORSE
• Patent filed:28940
• Foreign applications:23626(82%)
• 20 Indian filers in top200 at Indian patentoffice.
0
100000
200000
300000
400000
500000
USA japan china korea EPO India
• Patent filed:28940
• Foreign applications:23626(82%)
• 20 Indian filers in top200 at Indian patentoffice.
0
100000
200000
300000
400000
500000
USA japan china korea EPO India
INVENTION [sec 2(1) j]NEW PRODUCT OR PROCESS
INVOLVING INVENTIVE STEP ANDCAPABLE OF INDUSTRIALAPPLICATION
[Raj prakashVs Mangat Ram]
So long as it is something novel and new is an inventionSo long as it is something novel and new is an invention
NEW PRODUCT OR PROCESSINVOLVING INVENTIVE STEP ANDCAPABLE OF INDUSTRIALAPPLICATION
[Raj prakashVs Mangat Ram]
Product: Post-Its –
Invented and patented by the 3M corporation; basicallya piece of paper with adhesive applied to it. The adhesivewas also a 3M invention, but the true innovation in Post-
Its was to add the adhesive strip to a piece of yellowpaper. It's a simple, useful invention. Before the patentexpired in the 1990s, 3M was the sole manufacturer of
this profitable invention.
Product: Post-Its –
Invented and patented by the 3M corporation; basicallya piece of paper with adhesive applied to it. The adhesivewas also a 3M invention, but the true innovation in Post-
Its was to add the adhesive strip to a piece of yellowpaper. It's a simple, useful invention. Before the patentexpired in the 1990s, 3M was the sole manufacturer of
this profitable invention.
TATA MOTORSFILED ABOUT40 PATENTAPPLICATIONSON ITS SINGLEPRODUCTNANO.
NANO
TATA MOTORSFILED ABOUT40 PATENTAPPLICATIONSON ITS SINGLEPRODUCTNANO.
What is patentable?INVENTION [sec 2(1) j]
1. Novelty
2. Inventive step
3. Capable of industrial application
Novelty
SUBJECT MATTER NOTFALLEN IN PUBLIC DOMAIN.
NOT PUBLISHED BEFOREFILING DATE IN ANYDOCUMENT IN ANY COUNTRY
NOT A PART OF KNOWLEDGEORAL OR OTHERWISEAVAILABLE IN ANY LOCAL ORINDIGINEOUS COMMNITY.
SUBJECT MATTER NOTFALLEN IN PUBLIC DOMAIN.
NOT PUBLISHED BEFOREFILING DATE IN ANYDOCUMENT IN ANY COUNTRY
NOT A PART OF KNOWLEDGEORAL OR OTHERWISEAVAILABLE IN ANY LOCAL ORINDIGINEOUS COMMNITY.
ANTICIPATION (Sec 29- 33)
Publication
Communication togovernment
Public display
Public working forreasonable trial
Publication
Communication togovernment
Public display
Public working forreasonable trial
Inventive step sec 2(1)(ja)
1. Technical advance
2. Economicsignificance
3. Invention notobvious to theperson skilled inthe art.
1. Technical advance
2. Economicsignificance
3. Invention notobvious to theperson skilled inthe art.
INDUSTRIALLY APPLICABLE
Must have some capability to be manufacturedor used in industry.
Lack of UTILITY is ground of revocation of patent64 (1)(g)
Lakhapati Rai Vs Srikissen Dass
Must have some capability to be manufacturedor used in industry.
Lack of UTILITY is ground of revocation of patent64 (1)(g)
Lakhapati Rai Vs Srikissen Dass
WHAT IS NOT PATENTABLE (Sec 3, 4)
Frivolous or claiminganything contrary towell establishednatural laws
Frivolous or claiminganything contrary towell establishednatural laws
contrary topublic order or
morality orprejudicial to
life orenvironment
contrary topublic order or
morality orprejudicial to
life orenvironment
Discovery
•Discovery of living or non living substance•New form or property or use of known substance•new use of a known process or machine or anapparatus not resulting in a new product.•Scientific principle or formulation
•Discovery of living or non living substance•New form or property or use of known substance•new use of a known process or machine or anapparatus not resulting in a new product.•Scientific principle or formulation
Admixture
Substance obtained from admixture of knowncomponents resulting in only aggregation oftheir properties.
Substance obtained from admixture of knowncomponents resulting in only aggregation oftheir properties.
Non patentable subject matter
•Plants or animals or seeds and biologicalprocess of production or prorogation of these.•Mathematical or business method or computerprogram or algorithm.• Artistic or aesthetic creation like literary ordramatic or musical or cinematographic ortelevision production
Non patentable subject matter
•Plants or animals or seeds and biologicalprocess of production or prorogation of these.•Mathematical or business method or computerprogram or algorithm.• Artistic or aesthetic creation like literary ordramatic or musical or cinematographic ortelevision production
Non patentable subject matter
•Scheme or rule or method of performing anymental act or of a game.• Presentation of information.• Topography of integrated circuits.• Aggregation or duplication of known propertiesof components•Inventions relating to atomic energy underatomic energy act (sec 4)
•Scheme or rule or method of performing anymental act or of a game.• Presentation of information.• Topography of integrated circuits.• Aggregation or duplication of known propertiesof components•Inventions relating to atomic energy underatomic energy act (sec 4)
Things to do before filing or acquiring patent
Patentability search
www.uspto.org
www.ipindia.nic.in
www.googlepatent.com
Types of patentability search
Prior art search: identify potential of patentability ofyour invention
Infringement search: whether you can make, use, orsell an invention
validity search: determine if a patent is actuallyvalid and in force
TYPES OF PATENT APPLICATION
DOMESTIC APPLICATION
ORDINARY APPLICATION
PATENT OF ADDITION
DIVISIONAL APPLICATION
INTERNATIONAL FILING
CONVENTIONAL APPLICATION
APPLICATION UNDER PCT
FORM 2
PROVISIONAL/COMPLETE SPECIFICATION
TITLE
TECHNICAL FIELD
PRIOR ART
OBJECT
STATEMENT
BRIEF DESCRIPTION OF DRAWINGS
DETAIL DESCRPTION OF INVENTION
BEST METHOD OF PERFORMANCE
CLAIMS
ABSTRACT
FIGURES
PROVISIONAL/COMPLETE SPECIFICATION
TITLE
TECHNICAL FIELD
PRIOR ART
OBJECT
STATEMENT
BRIEF DESCRIPTION OF DRAWINGS
DETAIL DESCRPTION OF INVENTION
BEST METHOD OF PERFORMANCE
CLAIMS
ABSTRACT
FIGURES
CLAIMSThe complete specification should end with a statement ofclaims defining the scope of protection.
CLAIM IS STATEMENT OF TECHNICAL FACT EXPRESSED INLEGAL TERM
The claim should define the process, composition,substance, device and not their advantages and /or uses.
The first claim is a principal claim, which is called as anindependent claim and all other subsequent claims aredependent on the first claim. However, there can be morethan one independent claim in a single specificationdepending upon the nature of the invention.
The complete specification should end with a statement ofclaims defining the scope of protection.
CLAIM IS STATEMENT OF TECHNICAL FACT EXPRESSED INLEGAL TERM
The claim should define the process, composition,substance, device and not their advantages and /or uses.
The first claim is a principal claim, which is called as anindependent claim and all other subsequent claims aredependent on the first claim. However, there can be morethan one independent claim in a single specificationdepending upon the nature of the invention.
CLAIMS
SHOULD BE IN SINGLE SENTENCENO MONOPOLY IS OBTAINED ON MATTER DESCRIBED INCOMPLETE SPECIFICATION UNLESS IT IS CLAIMED IN CLAIMSTATEMENT OF CLAIMS SHALL BE PRECEEDED BYPREAMBLE “I OR WE CLAIM”SHALL RELATE TO SINGLE INVENTION OR GROUP OFINVENTION RELATE TO FORM A SINGLE INVENTION
There must be at least one claim in a patent, and thereasoning is that possible infringers must be able tounderstand what is and is not protected based on theclaims.
SHOULD BE IN SINGLE SENTENCENO MONOPOLY IS OBTAINED ON MATTER DESCRIBED INCOMPLETE SPECIFICATION UNLESS IT IS CLAIMED IN CLAIMSTATEMENT OF CLAIMS SHALL BE PRECEEDED BYPREAMBLE “I OR WE CLAIM”SHALL RELATE TO SINGLE INVENTION OR GROUP OFINVENTION RELATE TO FORM A SINGLE INVENTION
There must be at least one claim in a patent, and thereasoning is that possible infringers must be able tounderstand what is and is not protected based on theclaims.
Ask Yourself
Assuming this was patented by someone else
what will I do?
•Figure out possible solutions and patent them too…
•Just because one of your claims is objected to does notmean that the rest of your claims are invalid. Each claimis evaluated on its own merit. This is why it is importantto make claims on all aspects of your invention to ensurethat you receive the most protection possible.
Assuming this was patented by someone else
what will I do?
•Figure out possible solutions and patent them too…
•Just because one of your claims is objected to does notmean that the rest of your claims are invalid. Each claimis evaluated on its own merit. This is why it is importantto make claims on all aspects of your invention to ensurethat you receive the most protection possible.
CRITERIA FORDRAFTING CLAIMS
BE CLEARYour claim must be clear so that you do not cause the reader to speculate about the claim. If you find yourself using wordssuch as "thin", "strong", "a major part", "such as", "when required", then you are probably not being clear enough. Thesewords force the reader to make a subjective judgment, not an objective observation.
BE COMPLETEEach claim should be complete, so that it covers the inventive feature and enough elements around it to put the invention inthe proper context.
BE SUPPORTEDThe claims have to be supported by the description. This means that all the characteristics of your invention that form part ofthe claims must be fully explained in the description. In addition, any terms you use in the claims must be either found in thedescription or clearly inferred from the description.
BE CLEARYour claim must be clear so that you do not cause the reader to speculate about the claim. If you find yourself using wordssuch as "thin", "strong", "a major part", "such as", "when required", then you are probably not being clear enough. Thesewords force the reader to make a subjective judgment, not an objective observation.
BE COMPLETEEach claim should be complete, so that it covers the inventive feature and enough elements around it to put the invention inthe proper context.
BE SUPPORTEDThe claims have to be supported by the description. This means that all the characteristics of your invention that form part ofthe claims must be fully explained in the description. In addition, any terms you use in the claims must be either found in thedescription or clearly inferred from the description.
FORM 5
• DECLARATIONOFINVENTORSHIPIN CASE WHENPROVISIONALSPECIFICATIONIS FOLLOWEDBY COMPLETESPECIFICATION
• ONLINE FILING
• DECLARATIONOFINVENTORSHIPIN CASE WHENPROVISIONALSPECIFICATIONIS FOLLOWEDBY COMPLETESPECIFICATION
• ONLINE FILING
LIMIT TO NUMBER OF PAGES ANDCLAIMS
NO SUCH LIMIT ONLY FEE STRUCTURE VARIES• MORE THAN 30 PAGES- 100 PER PAGE• MORE THAN 10 CLAIMS-200 PER CLAIM
Myth: the inventor needs tomake a prototype before he
prepares a patent application.
Myth: the inventor needs tomake a prototype before he
prepares a patent application.
Misconceptions on patentability
Myth: the inventor needs tomake a prototype before he
prepares a patent application.
Myth: the inventor needs toscientifically explain how or why
his invention works.
Myth: the inventor needs toscientifically explain how or why
his invention works.
Describing theinvention in a
publication or publicpresentation;
Describing theinvention in a
publication or publicpresentation;
Offering theinvention for sale;
Offering theinvention for sale;
common premature disclosure mistakes:
Describing theinvention in a
publication or publicpresentation;
Offering theinvention for sale;
Disclosing theinvention without a
confidentialityagreement in place--
often to potentialinvestors.
Disclosing theinvention without a
confidentialityagreement in place--
often to potentialinvestors.
the inventor is required to disclose sufficient information sothat when the monopoly period expires, others can practicethe invention.
the inventor is required to disclose sufficient information sothat when the monopoly period expires, others can practicethe invention.
Full disclosure
the inventor is required to disclose sufficient information sothat when the monopoly period expires, others can practicethe invention.
Best method of performanceBest method of performance
Patentability vs. Marketability
Something might be marketable (desired by consumers whenoffered for sale) but not qualify for patent protection.
Something might be patentable (novel, useful and non-obvious)but not marketable to a mass of consumers.
Something might be marketable (desired by consumers whenoffered for sale) but not qualify for patent protection.
Something might be patentable (novel, useful and non-obvious)but not marketable to a mass of consumers.
Monetizing your IP
THANK YOU
Adv. Swapnil Gawande (Reg. Patent consultant IN/PA/1587)
[email protected]:9890333567Visit us at: www.businesslogicint.org
Monetizing your IP
THANK YOU
Adv. Swapnil Gawande (Reg. Patent consultant IN/PA/1587)
[email protected]:9890333567Visit us at: www.businesslogicint.org