intellectual property rights
TRANSCRIPT
Bindu Sharma
Origiin IP Solutions LLP
Bangalore
Email: [email protected]
Phone: 9845693459
IPR Protection Procedure with reference to
Biotechnology
Bindu SharmaOrigiin IP SolutionsBangalorePhone: +919845693459, +918025830363Website: www.origiin.comEmail: [email protected], [email protected]
The U.S. Constitution authorizes Congress to protect patents (Art. 1, Sec. 8, clause 8):
“Congress shall have the power … to promote the progress of science and useful arts, by securing for limited times to … Inventors the exclusive right to their … Discoveries.”
Indian constitution has no mention of IP but just the word “property”
Freedom to acquire, hold and dispose off property - Article 19
Protection from deprivation of property – Article 31
Property could be possessed or acquired for public purpose only by law and only on payment of compensation – Article 32
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Development of IP in India
• Known as the land of gurus and gurukuls• World's first university in Takshila in the 8th century BC, where
over 10,500 students from all over the world studied more than 60 subjects
• The University of Nalanda, built in the 4th century BC , one of the greatest achievements of ancient India
A structured education
system from ancient times
• The number system• Invention of “zero”• Ayurveda earliest schools of medicine known to mankind,
invented by Charaka 2500 years ago• Complicated surgeries conducted over 2600 years ago by
Sushrata, regarded as the father of surgery• The Indus Valley Civilization, or the Harappan Culture, known
for its scientific town planning
The birthplace
of immense knowledge
In Texas, RiceTecpatented
modified basmati rice,
traditionally grown in India
& Pakistan
In US, over 150 patents on
Yoga asanas which is used
in India for more than 5000
years
There are 200 medicinal
plants from our country
on which multinationals
are trying to take patents
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Non-monetization of knowledge
Monetization of traditional knowledge by countries Champagne from Champagne district in France Scotch whiskey from Scotland Havana cigars from Cuba Colombian coffee from Colombia
Neem, turmeric, basmati
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Patent filings by the Indian applicants in every year are growing only with a rate of about 11.6%, where as foreign applicant filing growing at a rate of about 31.7%. The patent filed by the Indian firms lag behind substantially as compared to foreign counterparts. The trend in patent filing by the Indian companies is not good signal to advance our Indian economy. Source : Annual reports of the Indian Patent Office
Why IP is ignored in India?
Vidya daan is greatest daan
There was strong funding support by Indian kings to promote education
Free education was imparted to students in gurukuls
There is subsidized higher education even today –only recently, there has been an attempt by the government to cut subsidy amidst great opposition
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Mr C.N. Rao, former Director
Of IISc published
1,000 papers but did not
file a single patent
Ryoji Noyori and Barry
Sharpless (2001 Nobel Prize
in Chemistry)
have 38 and 20 patents,
respectively
Some facts
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Researchers at the Indian Institute of Science (IISc) missed filing a patent regarding carbon nanotubes (with potential applications in power generation equipment), published it in Science
In Chicago, unauthorized use of Trademark, Nike resulted 43-year old man in confinement
Intel to pay AMD $1.25 billion to settle IP disputes
Apple Computer Inc. resolves its patent squabble with Creative Technology Ltd. by paying the Singapore-based company $100 million for a license to use a recently awarded patent.
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Patent
A patent is a statutory grant by Govt for new inventions conferring certain monopoly rights on the grantee for a defined period, subject to certain conditions
Patent rights are territorial
Term: 20 years from date of filing
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Brief history
In Venice, first patent was granted to a Germen engineer in 1323 for model grain mill, which could cater storage needs of entire Venice
In United States the first patent was granted in 1787 for specially designed grain elevator
In India first patent statute was passed in 1857
Patent act, 1970
landmark in industrial development in India
encourage inventions
inventions must be commercialized without undue delay
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Invention is more complex than the problem meritsInvention is not kept secret until the date of filing
Common myths
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The invention isn't new
Inventor hasn't fully considered the problem
An invention is safer if it's kept secret
Inventor has an unrealistic idea on value of invention
No-one wants it
Example
Chester Carlson was a patent agent who tired of having to make multiple copies of patent applications using the only duplication method available at the time: Carbon paper
In 1959 he came up with a new copying system and took it to IBM for evaluation
The "experts" at IBM determined potential sales to be only 5,000 units because people wouldn’t want to use a bulky machine when they had carbon paper
Carlson’s invention was the xerography process, the company founded on the system is Xerox
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Other reasons
Lack of awareness and don't know how to go about it
Funds
Lack of experts around
Tedious and complex process
Breaking trend is tough
Hesitation to approach law firms
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Simple inventions do get protection
Gillette Mach 3 is protected by 35 patents, which cover
Blade design
Razor design
Manufacturing processes
Post-it
Rubber band
Over 400 patents for improvements in paper clips have been filed till date
Thousands of patents on kids toys and household items
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What is an invention?
Invention as defined in Section 2, Indian Patent Act, 1970 -
“A new product or process involving an inventive step and capable of industrial application”
Novel
No prior use/claim/ publication
Capable of being made or
used in industry & reproduced
with the same characteristics as many times as necessary
Industrial utility
Should be non-obvious to a person skilled in the art
-Technical advancement
-Economic significance
Non-obviousnessNovel
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Novelty
Fomento v Mentmore
Improved nib for ball point pen
Continuous and uniform flow of ink
Published
Novelty was lost
Van Der Lely (c.) N.V. v. Bamfords Hay raking machine Anticipated by photograph in a journal
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Non-obviousness/inventive step
Question of law based heavily on underlying issues of fact
Scope and contents of the prior art
Level of ordinary skill in the art
Differences between the claimed invention and the prior art
Evaluating evidence of secondary considerations
Final gate keeper of the patent system
Technical advancement
Who is "person having ordinary skill in the art“?
Fictional person having the normal skills and knowledge in a particular technical field, without being a genius. He or she mainly serves as a reference for determining, or at least evaluating, whether an invention is non-obvious or not
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Non-obviousness/inventive step
Prior failure of other inventors
Long felt need
Unexpected results
Licenses
Commercial success
EPO- Problem solution method
Japanese-identify person having ordinary skill in the art
Case-laws
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Issues in biotechnology
All involve biological processes not under the direct control of the scientist
May be hazardous to health and biodiversity
There is no scientific basis to support the patenting of genes and genomes, which are discoveries at best
Unethical, contrary to public order and morality
Many patents involve acts of plagiarism of indigenous knowledge and biopiracy of plants (and animals) bred and used by local communities
Doctrine of product of nature
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Novelty and non-obviousness in biotechnology
Raw material is in public domain
Usually product of nature
Research is based on pre-existing biological material
Example: DNA, genes, tissues etc
NATURE AND EXTENT OF HUMAN INTERVENTION AND DEGREE OF VALUE BY SUCH INTERVENTION IS USUALLY RESORTED TO CHECK PATENTIBILITY
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Novelty in biotechnology inventions
Raw material is in public domain and usually product of nature
American Fruit Growers v Brogdex
Patent was denied to oranges coated with preservative on the ground that oranges are “products of nature”
Funk Brothers Seed co v Kalo Inoculant Co
Mixture of non-inhibiting nitrogen fixing bacteria
Patent was denied as patentee did not create new bacteria as bacteria in mixed culture are “products of nature”
Merck & Co v Olin Mathieson Chemical Corp
Purified Vitamin B12 isolated from fermentation materials which is cheap, abundant, free from toxins
Vitamin B12 naturally found in minute quantity in liver of cattle and certain microbes
Patent can be granted to products of nature provided it is a “new and useful composition of matter”
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Non-obviousness in biotechnology
Discovery vs invention
Exparte Erlich, the claim of the applicant was related to the use of hybridoma technology to produce monoclonal antibodies specific for human fibroblast inteferon.
Rejected on the basis that “the ordinary person skilled in the art would have done it with reasonable expectations of success”
INVENTION WAS CONSIDERED OBVIOUS TO A PERSON SKILLED IN THE ART
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Non-obviousness in biotechnology
Amgen Inc v Chugai Pharmaceutical Co Ltd Gene and DNA sequence encoding protein
erythropoietin (EPO) and protein itself in a highly purified state
Therapeutic potential in treating chronic anemia
Cloning of EPO was able to produce recombinant EPO in quantities exceeding those of EPO purified from natural sources
“Naturally occurring genes are not patentable and mere identification of same is just discovery. But “purified and isolated” gene sequences are different from those occurring in nature and hence patentable”
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Diamond v Chakrabarty
1980, USPTO:
Genetic engineering techniques to construct bacteria that could digest oil
It involved a process by which four different plasmids could be transferred by genetic engineering techniques and be maintained stably by Pseudomonas bacterium
By breaking down multiple components of oil, microbe promised efficient and rapid oil-spill treatment
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ProceedingsPatent claimed:
[1] process of producing a bacterial organism (inoculum and medium)[2] method of using a bacterial organism[3] the bacterial organism itselfExaminer allowed [1] and [2] but not [3] because:
Micro-organisms are “products of nature” and living organisms and hence are not patentable
Whether genetically modified organism is product of nature or human-made invention??
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US Supreme Court judgment
Invention was considered Human-made invention by 5 out of a bench of 9 judges and Court made a classic judgment:
“anything under sun made by man is patentable”
This decision opened the door for patenting living organisms for the first time
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Indian scenario
Microorganisms are patentable provided criteria of patentability is fulfilled
“Budapest treaty on the international recognition of the deposit of microorganisms” – 1980
31 International deposit authorities in 19 countries
Institute of microbial technology (IMTech), Chandigarh
Patent application has to specify the conditions necessary for the cultivation, storage and testing for the availability of microorganisms
Rights of patent owner
If the patent is for a product, the right to prevent others from
Making, using, offering for sale, selling, importing the patented product
If the patent is for a process, the right to prevent others from
Using the process, offering for sale, selling the product, importing the product using the process
Infringement of patent rights
Civil remedies - Injunction, Damages, Account of profit
Criminal remedies - Imprisonment (upto 6 months), Fine (1 to 5 lakh rupees) or Both
Top damages awarded
Polaroid V Kodak – US $ 873,200,200
Cordis V Boston Scientific –US $ 324,400,000
Cordis V Medtronic AVE – US $ 271,100,000
3M V Johnson & Johnson – US $ 107,300,000
Stac V Microsoft - $ 43,000,000 + $ 40,000,000 as investment settlement after $ 130,000,000 jury award
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Procedure of patent filing
18 months
48 months
Revocation
Post-grant opposition
Pre-grant opposition
Filing Publication Examination Grant
Provisional/Complete
Priority date
Patent Cooperation Treaty (PCT) filing
Report onpatentability
National Offices
Filing at national
office
IB Geneva ISA IPEA
International Phase National Phase
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Patenting Dos:
Keep accurate records and logbooks.
Determine if the invention is patentable.
Determine the value of the invention.
Determine its alternative embodiments/applications.
Disclose ALL information while patenting.
Patenting Don'ts:
Disclose invention to third parties before filing the patent.
Offer the invention for sale before filing.
Delay the patenting process, thereby allowing others to file an application for the same invention.
Precautions
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Challenges: bioinformatics patents
Uses computers to manage biological information
Large investments of time and money
Multidisciplinary nature of the technology involved
Diversity of patent claim types that may be necessary to ensure maximum patent protection
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Products of bioinformatics
Data
Genomics
Proteomics
Clinical
High-throughput assays
Tools
Software/hardware
Collection
Analysis
Visualization
Pattern recognition
Molecular modeling
Predictive
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Position in US
AT &T Case - declared that algorithms are patentable, if it has a “practical approach to produce a useful result”
Excel Case - all step by step processes whether they are electronic, chemical or mechanical, which involves an algorithm and if the algorithm is an integral part of a machine or a process which as a whole produced a useful result, then the invention might be patentable.
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Examples
The U.S. Patent No. 6,772,069, granted to the University of California -Los Angeles, for a software which determines protein function and interaction by genome analysis
Incyte Genomics, Inc., has been granted U.S. Patent No. 6,611,82 which is for to a graphical user interface for displaying biomolecular sequence data
U.S. Patent No. 6,510,391 is for a computer software for analyzing gene expression data
A study conducted by London-based firm Silico Research found that only 50 software related patents had been issued by the USPTO between 1996 and 2001 to companies operating in the the pharmaceutical, biotechnology, and genomics research.
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Patent-databases
Databases are not themselves patentable
Patent protection may be available for database-related inventions which put a sort of functional utility on the data-base itself, such as new applications for databases, algorithms for extracting or mining data, and systems which include databases
Under Section 3 (l) of Indian Patents act, following are not patentable:
Literary work such as a book, periodical, compilation of data or computer program code
Dramatic work such as stage shows
Musical work such a song and its graphical notation Artistic work such as work of sculpture or architecture Any other aesthetic creation whatsoever including cinematographic
works and television productions
However all these categories are subject matter of copyright protection and can be protected under various classes of Copyright Act.
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Copyright law
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Obviously, the highest type of efficiency is that which can utilize existing material to the best advantage.
Copyright
Inherent
Statutory rights
20th century- printing technology [prohibit the unauthorized copying and distribution of works ]
Original/creative works of authorship
Copyright notice is necessary
© 2007, Sony Music Entertainment (India) Limited. All Rights Reserved. Unauthorized copying, reproduction, hiring, lending, public performance and broadcasting prohibited.
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Legislations
Copyright Act, 1957
Compliant with most international conventions and treaties in the field of copyrights
Berne Convention of 1886 (as modified at Paris in 1971)
Universal Copyright Convention of 1951
Agreement on Trade Related Aspects of Intellectual Property Rights (TRIPS) Agreement of 1995
Literary Books, periodicals, computer programs,
databases, tables & compilation
Dramatic Recitation, scenic arrangement & work
capable of being performed by action
Musical Work consisting of music & graphical
notation of such work
Cinematographic
film and Sound
recording
Soundtrack in a film, video tapes
Artistic Painting, sculpture, drawing, photograph,
work of architecture & artistic craftsmanship
Literary Books, periodicals, computer programs,
databases, tables & compilation
Dramatic Recitation, scenic arrangement & work
capable of being performed by action
Musical Work consisting of music & graphical
notation of such work
Cinematographic
film and Sound
recording
Soundtrack in a film, video tapes
Artistic Painting, sculpture, drawing, photograph,
work of architecture & artistic craftsmanship
Literary Books, periodicals, computer programs,
databases, tables & compilation
Dramatic Recitation, scenic arrangement & work
capable of being performed by action
Musical Work consisting of music & graphical
notation of such work
Cinematographic
film and Sound
recording
Soundtrack in a film, video tapes
Artistic Painting, sculpture, drawing, photograph,
work of architecture & artistic craftsmanship
Literary Books, periodicals, computer programs,
databases, tables & compilation
Dramatic Recitation, scenic arrangement & work
capable of being performed by action
Musical Work consisting of music & graphical
notation of such work
Cinematographic
film and Sound
recording
Soundtrack in a film, video tapes
Artistic Painting, sculpture, drawing, photograph,
work of architecture & artistic craftsmanship
Literary Books, periodicals, computer programs,
databases, tables & compilation
Dramatic Recitation, scenic arrangement & work
capable of being performed by action
Musical Work consisting of music & graphical
notation of such work
Cinematographic
film and Sound
recording
Soundtrack in a film, video tapes
Artistic Painting, sculpture, drawing, photograph,
work of architecture & artistic craftsmanship
Computer program – ©
Copyright Registry, New Delhi
Source code: Literary work [Printed code, CD –3 copies]
Look and Feel: Artistic work [Screen shots, CD –3 copies]
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Conclusion
Understanding and awareness of IPR is essential for research/ innovation based organizations
Registration and commercialization of IPR can fetch you revenues, it’s a powerful tool
Awareness of IPR can prevent you from infringing other’s right: Remember that litigations result in huge loss of time n money.
It’s right time to start thinking about it…..
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“We should do something when people say it’s crazy. If people say something is “good”, it means that someone
else is already doing it”
Contact Information:Bindu Sharma
Origiin IP Solution, [email protected]
9845693459, 080-9880213204