the e book on ip by dr.manjula sandirigama

8/18/2019 The e Book on Ip by Dr.manjula Sandirigama

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INTELLECTUAL PROPERTY:A Quick Guide

for Scientists and Technologists

Manjula Sandirigama


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Reviews“One ingredient for a successful IP system is education. Individual en-gineers, scientists and other innovators need to know how the IP system works. In this way, individual innovators can learn how to use the IP sys-tem to their own benet and ensure they are properly rewarded for their contributions. Properly done, everyone benets as individual innovative contributions eventually fall into the public domain for everyone’s use. Tothat end, this work provides an important underpinning of the IP system.It goes a long way to achieving the important goal of teaching how the IP system works on a practical, day-to-day level that is accessible to individ-ual innovators, without hiding behind the sometimes lofty world of law.

Well done. I hope you enjoy reading this as much as I have.” T. Andrew Currier, BSEE, LLB, P.Eng., Barrister and So-licitor (Ontario), Patent Agent, Trademark Agent, co-authorwith Stephen Perry of the forthcoming textbook ‘CanadianPatent Law’ from Butterworths.

“This is an admirable effort to educate engineers in the ways of intel-lectual property, in an accessible and understandable way.”

Conor McCourt, J.D., Canada

“At the present stage of development, knowledge on the IP systems be-comes important as new innovations and ndings of individuals and orga-nizations become commercially attractive and valuable. It is the IP rights that give the proper incentive for them to go on with more and more new creations. In this context, it is timely that a textbook be available for the education of IP aspects. This book will shed light on these relevant areas for all sectors of society, including scientists, technologists, innovators and even the ordinary citizens. The book covers most of the aspects that are of importance to students on IP systems. I congratulate the author and would like to share this valuable information with everyone.”

Sarath Seneviratne, Senior Lecturer in Mechanical Engineer-ing, University of Peradeniya, Sri Lanka


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About the Book

This book is the outcome of my teaching Intellectual Property (IP)for engineering undergraduates in the Faculty of Engineering, Uni-versity of Peradenya and some other universities and institutes inSri Lanka. The teaching to them necessitated a text book whichthey could use during the conduct of the course and thereafter as aregular quick reference.

The intended target group obviously are the science and technol-ogy undergraduates, but anyone who wish to get an overall pictureof IP, their protection, and how IP systems work will nd this a

very useful reference. The book covers all the areas from conceptualideas to commercialization of such conceptual ideas.Simplicity is my philosophy, even in teaching. The facts are

presented with simplicity in terms of contents and language as Istrongly believe the science and technology personnel and innovatorswho make the world comfortable for everyone should know theirrights in simple terms without seeking advice in lofty world of law,as mentioned by a reviewer.

Wish you an enjoyable and informative reading.


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Acknowledgments

The students, by and large, have been the greatest driving force inwriting this text. I thank them for making a platform for practicingand furthering my knowledge.

Roshan Ragel, my colleague at my department who himself is anauthor, gave his valuable comments very promptly and in detail onthe initial draft. I thank him for building my condence in complet-ing the work, and doing the nal proofreading before publication.

I also wish to thank the reviewers Andrew Currier, Conor Mc-Court, Sarath Senevratne and Asanka Perera for giving valuable

reviews and comments.I thank Amila Wijeratne for formatting the cover page and thegures in the text.

Last not but least, my gratitude to my wife Anoma for encour-aging me to get the best use of my knowledge and capabilities andbeing with me when things go wrong.

Manjula SandirigamaPhD, M.Sc., B.Sc.in Engineering, Attorney-at-Law (Sri Lanka)

Senior Lecturer, Department of Computer Engineering, University of Per-adeniya, Sri Lanka IP Consultant


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To my mother and father who encouragedme in my studies


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Contents

1 Intellectual Property 51.1 Introduction to Intellectual Property (IP) . . . . . . 51.2 Protection of IP Rights . . . . . . . . . . . . . . . . 7

1.2.1 The Need for Protecting IP Rights . . . . . . 71.2.2 Title Deeds of Intellectual Property . . . . . 8

2 Different Types of IP and Their Protection 11

2.1 Patents . . . . . . . . . . . . . . . . . . . . . . . . . 112.2 Copyrights . . . . . . . . . . . . . . . . . . . . . . . 122.3 Trademarks . . . . . . . . . . . . . . . . . . . . . . . 132.4 Industrial Designs . . . . . . . . . . . . . . . . . . . 132.5 ICT (Integrated Circuit Topographies) . . . . . . . . 142.6 Geographical Indications . . . . . . . . . . . . . . . . 142.7 Proprietary Databases . . . . . . . . . . . . . . . . . 15

3 Patents 173.1 The Meaning of a Patent . . . . . . . . . . . . . . . 173.2 The Duration of a Patent Validity . . . . . . . . . . 193.3 The Effective Geography of a Patent Validity . . . . 193.4 Patents Vs. Trade Secrets . . . . . . . . . . . . . . . 203.5 Commercialization . . . . . . . . . . . . . . . . . . . 21

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2 CONTENTS

4 Acquiring Patent Rights 234.1 Patentable Subject Matter . . . . . . . . . . . . . . . 23

4.2 Sufficient Disclosure of the Invention . . . . . . . . . 254.3 Patent - An Inventive Subject Matter . . . . . . . . 254.4 Patentability Testing . . . . . . . . . . . . . . . . . . 26

4.4.1 Patentability requirement case study:Beloit Vs. Valmet Oy . . . . . . . . . . . . . 28

5 Patent Prior Art Searches 315.1 The Meaning and the Need of Prior Art Searches . . 31

5.2 Scope of Prior Art Search . . . . . . . . . . . . . . . 325.3 Prior Art Search on Patent Databases . . . . . . . . 33

5.3.1 Prior Art Search on Online Patent Databases 345.3.2 Prior Art Search: An example . . . . . . . . 36

5.4 Different Types of Prior Art Searches . . . . . . . . . 405.4.1 Name Search . . . . . . . . . . . . . . . . . . 415.4.2 State of the Art Searches . . . . . . . . . . . 415.4.3 Technological Activity Search . . . . . . . . . 41

5.4.4 Legal Status Search . . . . . . . . . . . . . . 415.4.5 Infringement Search (Freedom to Operate Search) 425.4.6 Patentability Search . . . . . . . . . . . . . . 42

6 Patent Drafting 436.1 Structure of a Patent . . . . . . . . . . . . . . . . . . 43

6.1.1 Title . . . . . . . . . . . . . . . . . . . . . . . 446.1.2 Abstract . . . . . . . . . . . . . . . . . . . . . 44

6.1.3 Description . . . . . . . . . . . . . . . . . . . 466.1.4 Claims . . . . . . . . . . . . . . . . . . . . . . 48

7 Application for a Patent 597.1 Making a Local Application . . . . . . . . . . . . . . 607.2 Making a Foreign Application . . . . . . . . . . . . . 61


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CONTENTS 3

8 Patent Examination and Granting Process 658.1 Revision of Applications . . . . . . . . . . . . . . . . 65

8.2 Examination of Applications . . . . . . . . . . . . . 678.3 Patent Maintenance Fees . . . . . . . . . . . . . . . . 688.4 Appeals Against Examiners’ Decisions . . . . . . . . 68

9 Post Patent Issues 719.1 Commercialization . . . . . . . . . . . . . . . . . . . 72

9.1.1 Exploitation . . . . . . . . . . . . . . . . . . . 729.1.2 Assignment . . . . . . . . . . . . . . . . . . . 739.1.3 Licensing . . . . . . . . . . . . . . . . . . . . 74

9.2 Potential Legal Implications . . . . . . . . . . . . . . 7610 A Sample Patent 79

10.1 US Patent 7,161,651 . . . . . . . . . . . . . . . . . . 7910.1.1 Title: Method of resizing a liquid crystal display 7910.1.2 Bibliographical Data . . . . . . . . . . . . . . 7910.1.3 Abstract . . . . . . . . . . . . . . . . . . . . . 7910.1.4 Claims . . . . . . . . . . . . . . . . . . . . . . 8010.1.5 Description . . . . . . . . . . . . . . . . . . . 81


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4 CONTENTS


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Chapter 1

Intellectual Property

1.1 Introduction to Intellectual Property(IP)

People own different kinds of property. Conventionally, such proper-ties have a value in their physical characteristics. Examples of suchproperties are lands, buildings, vehicles, houses, furniture etc.. Tra-ditionally, those properties are divided into two categories, namely,movable and immovable. Immovable properties mean that their lo-cation cannot be moved. Examples are lands and building. Thelocations of movable properties could be changed as desired. Exam-ples are vehicles, furniture etc..

There is another categorization of property, namely tangible andintangible properties. Tangible properties mean that the property,movable or immovable, that can be touched and felt. All the con-ventional movable or immovable properties fall into this category.

Intangible properties, on the other hand, are the properties thatcannot be touched and felt. Intellectual property falls into the intan-gible category. The value of such property is not generally in theirphysical characteristics but in the creativity and innovativeness one

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6 CHAPTER 1. INTELLECTUAL PROPERTY

has put into the creation of such properties.A key characteristic of intellectual property is that such proper-

ties were not in existence before the creation or they are not madeby already known processes. WIPO (World Intellectual PropertyOrganization) denes intellectual property as creations of mind: in-ventions, literally work, marks, symbols, designs etc..

Another key characteristic of intellectual property is that theproperty is just an idea of creation, and there is no tangible valuein them. For example, when we buy a book, there is tangible valuein the amount of papers which is not signicant; more value is inwhat is written in the book. When we buy a car, if we considerthe tangible value, it is in the amount of steel and plastic whichis not very signicant; more value is in the mechanisms of driving,electronic fuel system, anti-lock brake system all of which are ideasof creation of someone. When we pay for a book or car, we mostlypay for the intangible idea in them which are intellectual property.

We may buy books or cars for our use but we cannot copy andmake them for our own commercializations. The creator is protectedby governments by offering the creator what are known as intellec-tual property rights. Once Intellectual property rights are given tosomeone, others cannot break them meaning that others cannot usethe same idea to produce duplicates, and if they do, the creator cantake legal action and claim compensation.

As obvious, these intellectual property rights are negative, in thesense that it excludes others from doing something – copying in caseof intellectual property.

Just like people could claim traditional properties of their own bypossessing a document like a deed, ownership certicate, intellectualproperty also can be owned by possessing a special document whichwill be described later.

Ownership of traditional properties are perpetual subject to away of disposal such as a sale or transfer, but ownership of intel-lectual property is generally limited for some time, and intellectualproperty could also be disposed by way of sale or transfer. Thereason of such limited ownership will be discussed later.


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1.2. PROTECTION OF IP RIGHTS 7

It is important to mention a word about the difference of a (new)creation and a discovery. Both discoveries and new creations are new

revelations to the world, but if the new revelation is something thathas been existing in the nature, it is a mere discovery. For somethingto be a new creation, a new feature has to be added to the existingthing so that it is made something that has not been existing in thenature. For an example, if a scientist nds a new bacteria, it is amere discovery, but after the discovery, if he adds his knowledge andskill to make the bacteria usable to treat some disease, then there isa new creation and he could claim intellectual property rights for it.

In the technologically advanced world of today which is growingby leaps and bounds, IP rights play a major role and it is veryessential for science and technology students to know what their IPrights are when they do research and development. Although thekey players of intellectual property are scientists and technologists,like in other properties, regulation of intellectual property rights islooked after by the legal system.

The next chapter describes different types of intellectual propertyand how such properties are protected.

1.2 Protection of IP Rights

1.2.1 The Need for Protecting IP Rights

It is a reasonable question to ask by a novice why we need to protectIP rights. The simple answer is all what we enjoy today – food,medicine, transport, communication, entertainment – are availableto us because there has been protection of IP rights. What does thismean?

Creation of Intellectual Property consumes considerable amountof time and money. Somebody has to develop his ideas by way of research or otherwise to make his idea into a product, process, or apiece of literature. In fact, the amount of time and money may farexceed the amount of time and money one has to spend to acquire


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a physical property such as a land or a building. For example, todevelop a medicine, one has to do several years of research that

costs lot of time and money. To write a book, one may have tospend several years.After the research is done or the book is written, they become

known to the public, and if there is no protection by the system of the country to protect the ownership rights of the people who spenttheir time and money on this work, others will simply copy it andthey will try to make money from those research work or books.Consequently, people will not feel secure and they will lose theirmotivation to do research or to produce literally work. There willbe no progress in the society then, and we wouldn’t have had thecomforts and entertainment that we enjoy today.

When the protection is given for the new revelations in exchangeof revealing the knowledge, the revealer will reveal his/her knowl-edge, and the society can use the same knowledge to make improve-ments. All what we enjoy today have been improvements of whathad been exiting in the past.

1.2.2 Title Deeds of Intellectual PropertyAs we know, conventional property ownerships are guaranteed bydeeds or ownership certicates. If the property is a land or a build-ing, the ownership is protected by a deed of ownership, or a rental/leaseagreement in case of temporary ownership. If it is a vehicle, the own-ership is protected by a ownership certicate, or a rent or a leaseagreement in case of temporary ownership. If the property is furni-ture, electronic equipment etc., the ownership is guaranteed by thereceipt of the payment made at the time of the purchase.

Similarly, intellectual property also has a title document (like adeed, and ownership certicate) that protects the ownership. Differ-ent types of intellectual property have different kinds of ownershipcerticates.

In the next chapter, such ownership documents are described af-ter providing a brief description of what different kinds of intellectual


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1.2. PROTECTION OF IP RIGHTS 9

properties are, namely patents, copyrights, trademarks, IntegratedCircuit (IC) topographies, geographical locations and proprietary

databases.


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Chapter 2

Different Types of IP andTheir Protection

2.1 Patents

Patents are the intellectual property rights granted by the state forinventions.

An invention means a creation of a new product or a process thathas not been known to the public or has not been in existence in thenature. Simple examples of such product inventions are a pen, a tool,a machine, a medicine etc.. Examples of such process inventions areextraction of salt from sea water, process of manufacturing a drug,a process of making a tool etc.. There can be some inventions whichfall into both product and process inventions like making a drug.The process as well as the product are inventions.

When we buy such a product, we not only pay for the merephysical value of them, but also for the creativity that is embedded inthe product. For example, when we buy an electronic equipment, thephysical value may be very low, but the purchase price is determinedby the added value for the creativity and innovativeness of putting

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12CHAPTER 2. DIFFERENT TYPES OF IP AND THEIR PROTECTION

the electronic elements together.Such inventive ideas are protected by a document known as a

patent. A patent is granted on application. Detailed descriptions of patents will be covered in the later part of the book.To get a patent right, one must make an application to the rel-

evant national office, and the right is given for a limited period of time, generally 15-20 years depending on the legal provisions of therelevant country.

Trade secrets, which are also inventions, have similarities as wellas differences compared to patents. They will be described whenpatents are discussed in a following chapter.

2.2 CopyrightsCopyright is an ownership right one gets when a literary work isdone. The literary work does not merely mean a writing. Thereis a wide range of literary work, both conventional and modern.Conventional copyrights include writings (novels, poems, technicalliterature etc.) and other literary works such as paintings, sculpture,carvings, plays, and dramas. Modern copyrights include electromag-netic signals (television signals, radio signals etc.), music and moviedisks and computer programs. (Note that computer programs fallboth into patents and copyrights. The method of the solution inthe program is the patentable part whereas the program alone is thecopyrightable part.)

Copyright simply means that the right of copying is restrictedand unauthorized copying is prohibited. Most of you may have no-ticed this right on the book by seeing c or the phrase “Copy RightsReserved”.

There is what is known as the “Fair Use” of copyrighted mate-rial. This means that one can copy copyrighted material for merepersonal, educational or research work. Fair Use prohibits the copy-ing of the material for commercial use.

Unlike patents, copyright is gained by mere creation of the work


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2.3. TRADEMARKS 13

and one does not need to make a special application to the nationaloffice. However, by registering such work in the relevant national

office, one could get a stronger legal claim for the work, specicallyin case of a dispute.According to Berne convention, for which most countries are sig-

natories, copyright is limited to 50 years after the death of the au-thor.

2.3 Trademarks

Trademark is a design of a word, an image or a combination of them that is used to distinguish a product or a service of one per-son/company from that of another. Such marks are useful marketingtools because the customers always want to buy dependable prod-ucts or services that have a good track record, and a trade mark isa unique identication of such track records.

Unlike patents and like copyrights, to get protection, trademarksneed not necessarily be registered in the national office. The mereprolonged usage is sufficient to establish ownership to a trademark.However, like copyrights, by registering trademarks in the relevantnational office, one could get a stronger legal claim for it, specicallyin case of a dispute. Such registrations are valid for a certain period(for example, it is 15 years in Canada) and renewable. Registeredtrademarks carry the symbol "R" whereas unregistered trademarkscarry the symbol “TM”.

Examples of such marks are Bata, TATA, Coca Cola, KFC (Ken-tucky Fried Chicken), Toyota etc..

2.4 Industrial DesignsAn industrial design means the exterior outlook of an article, prod-uct, billboard or even a building. The exterior outlook may be theshape, pattern, conguration or a combination of these features. The


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subject design is a tangible object and could range from a shape of atool to a shape of an automobile. For example, different car manu-

factures own industrial propriety rights for the shape of the car theyhave designed.A certicate of ownership of the design could be obtained from

the national intellectual property office on application.

2.5 ICT (Integrated Circuit Topographies)

This is a recent addition to intellectual properties. Integrated circuitis a layout of enormous amount of electronic components inside whatis known as a chip. These components are combined to form a circuitthat does a specic function, Under Integrated Circuit Topographycategory, these circuits can be owned by the designers.

A certicate of ownership of the circuit topography could beobtained from the national intellectual property office on application

2.6 Geographical Indications

This is also a recent addition to intellectual property where as themanufacturer of some products could attribute a geographical lo-cation to them to increase the value of the product. For example,wines made in specic geographical locations are better than otherlocations of manufacture due to climate and the method of man-ufacture, so the manufacturers can attribute different geographicallocation to wines, such as French wine. Another example is CeylonTea which where a value addition is done by the word "Ceylon" totea, and nobody in any other country could make Ceylon Tea.

A certicate of ownership of the geographical location could beobtained from the national intellectual property office on application


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2.7. PROPRIETARY DATABASES 15

2.7 Proprietary Databases

This is a very recent addition to intellectual property. As the in-formation technology developed over the last few decades, data hasbecome an integral and important part of information technologysystems. People and companies spend enormous amount of time tocollect, process and compile such data. The data could range fromthe names and addresses of customers to geographical informationsystems. Developers of such data have an intellectual property rightto them.

The Rest of the Book

In the following chapters of the book, intellectual property rightsrelating to patents are discussed.


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Chapter 3

PatentsFor scientists and technologists, what is of importance is patents –intellectual property rights for inventions. The aim of this book is togive a basic understanding of patents, patent application and grant-ing process, and post patent implications for scientists and technol-ogists. From here onwards, intellectual property rights relating topatents will be discussed.

3.1 The Meaning of a PatentA patent is a document that is given by the government endorsingthe inventorship of an invention. An invention is dened by patentlaws of different countries. The following are some of them:

Sri Lanka: Intellectual Property Act No. 36 of 200362. (1) For the purposes of this Part, “invention” meansan idea of an inventor which permits in practice the so-lution to a specic problem in the eld of technology.(2) An invention may be, or may relate to, a product orprocess.

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18 CHAPTER 3. PATENTS

India: Patent Act 1970

S(2) "invention" means any new and useful art, process,method or manner of manufacture; machine, apparatusor other article; substance produced by manufacture

USA: Consolidated Patent Laws

Invention is dened as any new and useful process, ma-chine, manufacture, or composition of matter, or any newand useful improvement thereof

Canada: Patent ActS(2) "invention" means any new and useful art, process,machine, manufacture or composition of matter, or anynew and useful improvement in any art, process, ma-chine, manufacture or composition of matter

Irrespective of the different denitions of inventions by differentlegal systems, there are some universal key elements that are neces-sary for a revelation to be an invention. They will be discussed in alater section. If the revelation satisfy those criteria, the person whorevealed it can get a patent right to it.

The patent is similar to a deed of a conventional property. Justlike a deed describes the biographical data (name, address etc.) andthe description/ boundary of land or a building, a patent describesthe biographical data of the invention, description of the inventionand the boundary of the invention (known as the claims that will bedescribed in detail later in the book). By possessing the patent, onecould prove the ownership of the invention.

Once the patent is granted, the knowledge involved in the inven-tion becomes a public property. This does not mean that the publiccan copy the invention. It only means that the knowledge is known.In fact, after some period (the duration of the patent), anybody canuse the knowledge to make the same product, or use the knowledgeto make improvements before the patent is expired. The idea of


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3.2. THE DURATION OF A PATENT VALIDITY 19

granting the patent is the revealing of the knowledge to the publicfor the betterment of the society.

Thus, a patent can be regarded as a bargain between the state/society and the inventor. A bargain literally means that two par-ties compromise on something. The bargain involved in a patent isthat the state/ society gives protection of IP rights to the inventorin exchange of his knowledge to be used for the betterment of thesociety.

3.2 The Duration of a Patent ValidityUnlike conventional property which are owned indenitely subject toalienation by sale or otherwise, patent rights are limited for a specicperiod of time. The reason for this limit is that, if there is no limit,the inventors could own it indenitely like conventional property,and there is no opportunity for the public to use the knowledge tomake the product for ever or even to add improvements to the baseproduct. It then becomes an unfair monopoly to the inventor, andconsequently there is no transfer of knowledge to the society.

The validity of a patent, therefore, is limited to specic periodof time. This period varies depending on the county but in mostcountries, it is 20 years.

3.3 The Effective Geography of a PatentValidity

Patent validly is limited to countries where patent applications aremade, and subsequently granted. There is nothing called an inter-national patent, and one must apply in separate countries if theywish to obtain patent rights in those countries. There are howevera patent application mechanisms known as Paris Convention andPCT (Patent Cooperation Treaty administered by WIPO - WorldIntellectual Property Organization) to facilitate patent application


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in multiple countries. Those systems will be discussed in detail inlater chapters.

In spite of the fact that there is nothing called an internationalpatent and the effective geography of a patent is local, to obtainpatent in any country, the invention should be an invention inter-nationally meaning that the invention should be rst in the world.This fact will be discussed in the patentability requirement section.

3.4 Patents Vs. Trade Secrets

Finally, it is worth mentioning what trade secrets are. Trade se-crets could be new revelations or not, but it is another way of mo-nopolizing knowledge. While a patent gives a protected monopolyby the state for a denite period of time, one can also keep themonopoly by keeping the knowledge as a secret, and they are knownas Trade Secrets. Obviously, secrets maybe kept for ever, and if so, the monopoly can be eternal. However, there is no guaranteedprotection for trade secrets by the state, so if the secret leaks outby some chance – by breaching a condentiality agreement by anemployee – the secret will be known by the public and there is noredress given to the holder of the secret by the courts. However, onecan ask for damages if the secret was made public by a breach of contract, but that will be a civil law suit between the secret holderand the breacher and the compensation may be minimal. In con-trast, when a patent is granted, a limited time monopoly is grantedby the state in exchange of knowledge that other people can useafter the expiry of the patent term. A good example of a trade se-cret is the recipe of Coca Cola, so no one will ever be able to makeidentical Coca Cola unless and until the trade secret is leaked outby someone. That is very unlikely to happen since no one may knowthe complete composition of ingredients.


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3.5. COMMERCIALIZATION 21

3.5 Commercialization

The purpose of an ownership is to get some return on investment.This is true with intellectual property too. Once the patent isgranted, the inventor has to make a prot from his invention. Gov-ernment will not do it for him, and all what the government does isgive the inventor a right to exclude others from copying and makingduplicates. The inventor himself has to nd ways to make a protand it is called commercialization of patents and will be discussedtowards the end of the book.


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Chapter 4

Acquiring Patent RightsTo get a patent, the new revelation should satisfy some requirements.Despite the fact this requirements are dened with slight variationsby different countries’ legislation, the requirements are uniform asdescribed below.

1. The revelation should be a patentable subject matter.2. The revealer should provide sufficient information so that

public will know all about it.3. The revelation should be an invention.The following discussion of the above mentioned requirements

are based on Sri Lanka National Intellectual Property Act (2003)but as mentioned above, these are uniform requirements in all thecountries.

4.1 Patentable Subject MatterPatentable subject matters are dened in every country’s nationallegislation. Generally, patentable subject matters are dened neg-atively, meaning that what is dened is the subject matters thatare not patentable. So if the new revelation is not falling into the

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24 CHAPTER 4. ACQUIRING PATENT RIGHTS

dened categories, then the subject matter is presumed patentable.Though all the countries’ legislations are not worded in exact

wordings, they are almost the same. According to section 62(3) of Sri Lanka National Intellectual Property Act, the following subjectmatters are not patentable.

62. (3) The following, notwithstanding they are inven-tions within the meaning of subsection (1), shall not bepatentable

(a) discoveries, scientic theories and mathematical meth-

ods ;(b) plants, animals and other micro organism other thantransgenic micro organism and an essentially biologicalprocess for the production of plants and animals otherthan non-biological and microbiological processes : Pro-vided however, that a patent granted in respect of micro-organisms shall be subject to the provisions of this Act;

(c) schemes, rules, or methods for doing business, per-

forming purely mental acts or playing games ;(d) methods for the treatment of the human or ani-mal body by surgery or therapy, and diagnostic meth-ods practiced on the human or animal body : Providedhowever, any product used in any such method shall bepatentable;

(e) an invention which is useful in the utilization of spe-cial nuclear material or atomic energy in an atomic weapon;(f) any invention, the prevention within Sri Lanka of thecommercial exploitation of which is necessary to protectthe public order, morality including the protection of hu-man, animal or plant life or health or the avoidance of serious prejudice to the environment.


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4.2. SUFFICIENT DISCLOSURE OF THE INVENTION 25

Similar or the same provisions exist in other jurisdictions and aninterested reader may verify them by referring to them.

There are reasons why these subject matters are not patentable,but such explanations are beyond the scope of this book.

4.2 Sufficient Disclosure of the InventionA mentioned earlier, the whole idea of grating patent rights by thestate to individual is the dissemination of knowledge to the societyfor it’s betterment. In this light, it is necessary that the patent

document describes the invention in full with sufficient details sothat someone could make the same product after reading the doc-ument. This does not mean that people can copy what is in thedocument during the validity of the patent. In fact, after the ex-piry of the patents, others can copy it exactly, and this is what isdone by generic drug manufacturers. They wait until the patent isexpired, and as soon as it is expired, they make copies. During thevalidity of the patent too, people can use the knowledge by way of making improvements to what is mentioned in the revelation, and if

the improvement is not obvious, as will be explained in subsequentsections, the improvement can be patented.

4.3 Patent - An Inventive Subject MatterThere are 3 core requirements for a revelation to be inventive. Theseare also dened and described in national legislations. The wordsused in different legislation vary slightly, but they are uniform and

same in terms of their meaning.What constitutes inventions, according to section 63 of Sri LankanNational Intellectual Property Act, are the revelations satisfying thefollowing three requirements:

63. An invention is patentable if it is new, involves aninventive step and is industrially applicable.


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They are described in the act as follows:

64. (1) An invention is new if it is not anticipated byprior art.65. An invention shall be considered as involving aninventive step if, having regard to the prior art relevantto the patent application claiming the invention, suchinventive step would not have been obvious to a personhaving ordinary skill in the art.66. An invention shall be considered industrially appli-

cable if it can be made or used in any kind of industry.These requirements are explained by using an example in the

following section.Synonyms used by other legislations are novelty, non-anticipation

(for new), non-obviousness, inventiveness (for inventive step), andutility, usefulness (for industrial applicability) and as mentionedabove, their meanings are the same.

4.4 Patentability TestingHaving described the patentability criteria, it is now possible toexplain patentability testing.

When a patent is applied by someone, patent examiners in thenational intellectual property office carry out these tests to ascertainthat the revelation is patentable. Even the inventors who apply forpatents do these tests in order to make sure that their revelationis patentable because patent application to granting process is quiteexpensive and people want to make sure, to the best of their reach toknowledge, that they will not loose the money by a patent rejectionby an examiner in the examination process.

Firstly, one has to make sure that the revelation does not fall intosubject matter that are not patentable. After doing so, it shouldbe obvious at the end of the reading of the document, that the


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a user has easy operability that make the product more marketable.Similarly, a drug which has been patented to cure a certain disease

can be patented again for curing another disease. In legal jargon, thisrequirement is described as "not being obvious" to a person skilledin the art. (Skilled in the art means that there is basic knowledgeof the sciences encompassing the subject matter.)

The decision of this test is subjective and is the main cause of patent invalidating, which will be described later.

A legal case study in the following section gives a better under-standing of novelty, and non obviousness requirement.

4.4.1 Patentability requirement case study:Beloit Vs. Valmet Oy

This was a legal case based on a dispute of two parties Beloit (hereinafter called A) and Valmet Oy (herein after called B) in Canada.The case involved both novelty and non-obviousness issues. Thefollowing is the background of the case.

The case was with regard to a press section of a paper manufac-turing machine. The paper manufacturing process basically involvesfour stages as follows:

Making a slurry

Pressing the slurry

Pulling the pressed slurry

Drying the pressed slurry

The economy of production greatly depends on the pressing stagewhere the water in the slurry is removed. An efficiency of the press-ing make the pulling stage faster thereby increasing the productivity.

In this case, both A and B had invented two different pressingmechanisms and both of them obtained patent right to their re-spective invention. At a later stage, the party which invented thepressing stage rst (party A) tried to invalidate the patent right of


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4.4. PATENTABILITY TESTING 29

B (who invented the second mechanism) on the ground of noveltyand obviousness.

The pressing is achieved by rotating rollers through which thewet slurry passes through. The above gure depicts the mechanismsof pressing stages of A and B.

The mechanism of party A (labeled as prior art: bi-nip) hasthree rollers that provides two pressing stages while the mechanismof party B (labeled as claimed invention: tri-nip) has four rollersproviding three pressing stages. The additional pressing stage inB’s machine makes the pulling process faster thereby increasing theproductivity. Both A and B got patent rights to their respectivemechanisms.

Eventually, B’s machine became more marketable, and then Asued B alleging that B was infringing on the patent rights of A inconsequent to their argument that B’s mechanism was not inventiveon the grounds of novelty and obviousness thereby saying that B’spatent was invalid. The case was argued in Canadian courts of law.

At the trial, the trial court judge took the arguments of B citingthat a mere addition of a roller in an obvious improvement anybody


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could do. The judge also took the view that it is not even novel be-cause there was enough literature published by different parties that

the manufacturing process can be made faster by faster pressing.B then appealed against the decision of the trial court judge.The appeal court judge reversed the decision of the trail court judgeand stated that B’s invention with an additional roller was also in-ventive. The argument of the judge with regard to the novelty of theinvention was that if one makes a machine by referring to differentexisting inventions and literature, the composite machine can still beinventive (in terms of novelty) and just because that the compositeinvention is composed of already patented inventions, the compositeinvention cannot be invalidated on the grounds of novelty.

The appeal judge’s argument with regard to the obviousness wasthat even if it was true that it was a mere addition of another roller,but that addition made the machine more productive (about 25 pcincrease of production speed) and the machine became a marketsuccess. If it were very obvious to those skilled in the art, whywasn’t it that someone else did it before.

Along these arguments, the appeal court judge stated that B’spatent was also valid and there was no infringement of A’s patentrights.

The gist of the case is that novelty and obviousness do not havestraightforward answers, and they are subjective decisions and thedecision has to be made after considering all the encompassing factsand wisdom.

With this knowledge, it is possible to study another importantarea of IP known as prior art search.


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Chapter 5

Patent Prior ArtSearches

5.1 The Meaning and the Need of Prior

Art SearchesIt is clear from the previous chapter that it is necessary to look atthe previous work done with respect to a revelation when decidingits’ patentability. Previous work in intellectual property jargon isknown as prior art. Prior art search hence means the search of previous work. There are different types of prior art searches onecould perform for various purposes, and the discussion on them willbe done at the end of this chapter.

Prior art is dened in Sri Lanka National Intellectual PropertyAct as follows:

64. (1) An invention is new if it is not anticipated byprior art.

(2) Prior art shall consist of

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32 CHAPTER 5. PATENT PRIOR ART SEARCHES

(a) everything disclosed to the public, anywhere in theworld, by written publication, oral disclosure, use or in

any other way, prior to the ling or, where appropriate,priority date of the patent application claiming the in-vention ;

(b) the contents of patent application made in Sri Lankahaving an earlier ling or, where appropriate, prioritydate than the patent application referred to in para-graph (a), to extent that such contents are included inthe patent granted on the basis of the said patent appli-cation made in Sri Lanka.

5.2 Scope of Prior Art SearchAs mentioned above, to get a patent, despite the fact that the patentrights enforceability is local, the revelation has to be internationallynew. This condition is tested by referring to everything known tothe public prior to the potentially patentable revelation. Everythingin the public domain means already patented inventions, researchliterature, newspaper publications, exhibitions, or any other publicdisclosure. It could even be a leaking out of information by a researchmate or a company employee.

However, it is practically impossible to search on all these areas,and generally the search is done on patent databases of different ju-risdictions and research articles. After passing the test of patentabil-ity by referring to patent material and research article, it does notstill mean absolutely that it was not in existance before there but it isgenerally the case. If someone nds that a patented invention is notpatentable due to some publicly known thing, he/she can challengethe validity of the patent. Traditional knowledge is a best examplefor this. Someone can formulate a new compound using traditionalknowledge (herbal recipes etc.) and get a patent, but another onecan invalidate the patent if he/she could prove that it was alreadyknown to our ancestors.


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5.3. PRIOR ART SEARCH ON PATENT DATABASES 33

The prior art searches are mainly done at two stages. One stageis where the search is done by the inventors or their agents prior to

lodging a patent application in the government office. This is donein order to get a sufficient condence that the revelation is inventiveand does not get rejected by government examiners in the exam-ination process; the patent application to granting process, whichis known as patent prosecution, is costly and if the application isrejected, the applicants loose lot of money and time. This searchby inventors or their agents is done on free online patent databaseshosted by respective countries because unless the inventor or theagent is a specialized person in the area, they may not be havingaccess to subscribed research literature.

The second stage of prior search is done at the government patentoffice by examiners in the examination process. This examination isrigorous and done carefully since after the examination, a patent ap-plication is allowed (patent grant) or rejected (patent reject). Thisdecision can, of course, be challenged by other parties (in case of agrant) or by the applicant himself (in case of a reject) in courts of law, but the grant or reject decision may be matter of millions andbillions of money if the application is with regard cutting edge tech-nology and research. Generally, the government office has access tosubscribed scientic research literature other than free public patentliterature.

In the following section, prior art search on a patent databasesis discussed.

5.3 Prior Art Search on Patent DatabasesEach country has a national intellectual property office responsiblefor intellectual property related matters. In case of patents, thisoffice administers the patent related matters, and hosts a free publicpatent database where public can search. This is similar to a landregistry where the estate titles are kept for public search.

As we all know, before the explosion of ICT (Information and


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Communication Technology), we did not have the luxury of accessingremote data. When it is necessary to refer to some data, we had to go

where the data is kept. Patent offices are no exception. Until aboutfew decades ago, people had to go to the patent office to do somereference, and nding what you want in that heap of information waseven more exhausting. However, there were different classicationsavailable in order to carry out manual searches easily. Internationalsearch was next to impossible then; who will go to a foreign countryto do a patent search spending signicant amount money.

Thanks to ICT, we can now search all the databases even fromour hand held device from anywhere in the globe.

5.3.1 Prior Art Search on Online Patent DatabasesAs mentioned above, when one wants to determine the patentabilityof a revelation, he/she has to search all the literature. But sincethis is not possible, generally search is limited to online databases.Even searching on online databases in all the countries is very timeconsuming and may not be worth the effort. It is therefore sufficientto search in the specic countries (or regions) when one want to doa prior art search. The selection of countries greatly depends on thepotential invention. For example, if one knows that particular re-search similar to the potential invention is done in a specic country,he/she may search only in that country.

The following are the generally searched patent databases.

WIPO (World Intellectual Property Organization): www.wipo.orgEU (European Union): www.epo.orgUSPTO (United States Patent and Trademark Office):www.uspto.govCIPO (Canadian Intellectual Property Office): www.cipo.gc.caKIPO (Korean Intellectual Property Office): www.kipo.go.krJIPO (Japanese Intellectual Property Office): www.jpo.go.jpIP Australia (Australian Patent Office): www.ipaustralia.gov.au


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write the invention as, “A robot for cleaning drains” and anothercould write it as “A robotic drain cleaning arm”. When the search

is done, the best yield will be given if the search can nd all thesepossibilities. We can use search grammar to make composite searchphrases to catch almost all these possibilities.

There is different grammar used in different search engines andthey are described in help pages of the search interface. Most im-portant of these are Boolean operators and wildcards. Boolean op-erators are simple logical operation of OR and AND, and the keywords can be joined by these so that the order of the key words inthe text does not matter. Wildcards are used to catch synonyms of words. For an example, if the search is done for robo* (some searchengines use ? instead of *), the words robot, robotic, robotically etc.will be detected.

Key words combined with different operators can be used in any-where in the patent document. As will be described later, a patentdocument mainly has an abstract description of the invention, de-tailed description of the invention and what are known as claims.The most effective and economical place to search is in the abstractbecause abstract contains almost all about the invention.

In the next section, a demonstration of a prior art search is il-lustrated.

5.3.2 Prior Art Search: An exampleLet us suppose that we have designed a new machine to extract oilfrom oil deposits in sand and soil. We now want to patent it, andbefore doing so, we have to make sure that no one has ever madesuch a machine and if a similar one has been made, we want to makesure that our one is not obvious when compared with what is alreadymade. We want to do this by doing a patent prior art search.

For a product like this, it is necessary that we have to do thesearch in all the countries having oil deposits because similar re-search maybe going in almost all of those countries. If the product’susability is restricted to a particular country or a region, it is suffi-


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cient to look at only those databases. For an example, if the potentialinvention is a new snowmobile design, it is not necessary to look at

tropical countries like Sri Lanka.A prior art search on Canadian patent database on oil extractionfrom oil deposited sand is illustrated below.

Extraction of petroleum oil from oil sands is an economical in-dustry in Alberta, Canada. One method of extracting oil from oilmixed sand is by adding hydrogen peroxide to the oil slurry. Supposethat a person has manufactured a machine where this process is im-proved and he wants to determine the patentability of his potentialinvention by doing a prior art search.

As mentioned earlier, the best place to do a search is on theabstract. The search key words and how they are connected have tobe decided rst and the search could then be done on the abstract.

The words “hydrogen peroxide” has to be there necessarily. Theycan be used as “hydrogen peroxide” as one phrase, but to be on safeside, it can be used as “hydrogen” AND “peroxide” to detect abstractswhere the word “hydrogen” and ”peroxide” are separately used forsome reason.

Then the words that can be used for the word “oil” have to beselected. One such word is “oil” itself. The other are the word “petro” and “gas” but they can be used as petroleum, gasoline etc. as well, sowe have to use wildcards to detect all the possibilities. Accordingly,they can be formed and joined as “oil OR petro* OR gas*”.

Following are the results obtained when the search is done usingthis keyword combination on Canadian patent database.

Query Submitted: ((hydrogen AND peroxide AB-STRACT) (gas* OR oil OR petro* AB-STRACT))533 documents out of 2,084,695 matched your query.Click on its number to view the details of the document.

The above results show that there are 533 patent documents inthe whole database of more than 2 million documents. Are we to


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read all these 533 and is it really worth the effort? No, we have tolook at the ones that are relevant to our invention only.

Visual ltration by looking at the title has to be done now. Letus look at the rst 10 results.

1. Patent Number 2627218 - ACTIVATED PEROXIDESOLUTIONS AND PROCESS FOR THE PREPARA-TION THEREOF

2. Patent Number 2578119 - VAPOR STERILIZATIONUSING A NON-AQUEOUS SOURCE OF HYDROGENPEROXIDE

3. Patent Number 2310839 - A LARGE INTEGRAT-ABLE HYDROGEN PEROXIDE INTERMEDIATE STAGEOR STAND ALONE TANK FOR THE PURPOSE OFPURIFYING FUELS USING HIGH STRENGTH HY-DROGEN PEROXIDE IN FUELS

4. Patent Number 2253975 - METHOD FOR MEASUR-ING THE CONCENTRATION OF HYDROGEN PER-OXIDE VAPOR

5. Patent Number 2280941 - STERILIZING METHODFOR MEDICAL STERILIZATION PACKAGING ANDINJECTION PACK

6. Patent Number 2465081 - STERILIZATION SYS-TEM AND METHOD

7. Patent Number 2465078 - METHOD OF RELEAS-ING GAS OR VAPOR FROM A SOLID MATERIAL

8. Patent Number 2350387 - METHOD FOR RAPIDLYDETERMINING THE ACCEPTABILITY OF LOADSTO BE STERILIZED

9. Patent Number 2235941 - VAPOR STERILIZATIONUSING INORGANIC HYDROGEN PEROXIDE COM-PLEXES


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10. Patent Number 1144180 - PROCESS AND APPA-RATUS FOR PREPARATION OF PHENOLS

By inspection, we can conclude that 3 and 7 only are relevant.This exercise has to be done for the whole list of 533 documents(which can be done in less than an hour). This is left as an exercise.

The second ltration has to be done by looking at the abstractsof the documents keeping the invention in mind.

Let us look at the above two (3 and 7) abstracts.

A LARGE INTEGRATABLE HYDROGEN PEROXIDEINTERMEDIATE STAGE OR STAND ALONE TANK

FOR THE PURPOSE OF PURIFYING FUELS USINGHIGH STRENGTH HYDROGEN PEROXIDE IN FU-ELSThis 50-30,000 barrel tank is a facility to Oxidize and Pu-rify a variety of fuels using Hydrogen Peroxide (in 30-99pc purity) before the fuel is sent to market. The attach-ments and scheme are designed in an open air fashionso that the Hydrogen Peroxide can not cause a pressurebuildup as it performs its oxidation process on the fuel.The roof is designed to protect the contents of the tankfrom weather, and, hold sealed lighting for the work area.The Grid Iron work area is of sufficient size ( coveringabout 25

METHOD OF RELEASING GAS OR VAPOR FROMA SOLID MATERIALA method of releasing hydrogen peroxide vapor from asolid hydrogen peroxide complex capable of releasing thehydrogen peroxide vapor so as to sterilize an object is de-scribed. The solid hydrogen peroxide complex is sealedwithin a gas permeable material. The solid hydrogenperoxide complex is heated to thereby release the hydro-gen peroxide vapor through the gas permeable material.The object is contacted with the vapor.


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By reading the abstracts on the computer screen itself while keep-ing the abstracts of the invention in mind, irrelevant abstracts can

be ruled out. Finally, we will end up with relevant documents to ourinvention, and such documents have to be read and compared withthe invention more closely.

Generally, on a search, few patent documents are obtained asrelevant ones. Then it is necessary to read them carefully afterdownloading the whole document.

While reading, we have to see whether the new revelation is in-ventive, that is whether it is new and non-obvious with regard tothe prior art.

The primary purpose of prior art search is to ascertain the patentabil-ity and it is called a patentability search. There are other types of searches as well, but basically searching is the same, but the l-tration is done with a different motive. The next section discussesdifferent kinds of searches.

5.4 Different Types of Prior Art Searches

The basic purpose of prior art searches is to nd out what has beendone with regard to the technological activity done by the inventor.However, the overall purpose of the search maybe different with

regard to what the purpose of the search is, and basic search can becustomized according to the need.

Following are some important searches one could perform to ful-ll a specic need.

Name Search

State of the Art SearchTechnological Activity SearchLegal Status SearchInfringement Search (Freedom to Operate Search)Patentability Search


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5.4. DIFFERENT TYPES OF PRIOR ART SEARCHES 41

5.4.1 Name SearchThis is a search done when specic information of the patent isknown to the searcher. For an example, if the inventor, assignee orthe application country is known, a searcher can perform a search onwhat the specic inventor has patented, what the specic companyhas patented or whether a patent application or a patent is avail-able in the specic country with regard to the work the searcher isinterested in knowing.

5.4.2 State of the Art SearchesThis type of search is done to learn the present state of the art tech-nologies available. Such information is useful if one wants to avoid “reinventing the wheel” because if the searcher is going to do thesame invention, it is going to be a complete wastage if someone hasalready claimed for the invention. This search is also useful if oneis interested in doing improvements for what is in existence. Stateof the art search is very useful to researches who embark on new re-search activities, and by knowing the present state of the technology,

they can do their research more economically and effectively.

5.4.3 Technological Activity SearchThis is similar to state of the art search. The specic purpose of tech-nological activity search is to nd the active competitors or countrieswhere some new technology research is being done.

5.4.4 Legal Status SearchLegal status search is to nd the present legal status of a patent. Themain concern in this search is to nd out whether the patent has beenlapsed after the expiry of the patent monopoly or abandoned. Thisinformation is very useful for companies that make generic prod-ucts of the patented invention after the patent is lapsed, and verycommon in generic drug production.


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5.4.5 Infringement Search (Freedom to OperateSearch)

Infringement search or freedom to operate search is done in order tosee whether an infringement of a patent right is done by engaging inthe research or the production of a certain product. Such informa-tion is useful when making new things (specically drugs) becauseif someone else later sues and proves of an infringement being done,compensation could be very costly.

5.4.6 Patentability SearchPatentability search is done in order to ascertain whether a new in-vention is patentable by fullling the requirements of novelty andnon-obviousness. This is the most widely done search by patent ap-plicants and patent examiners. The search is more time consumingand rigorous than any of the earlier mentioned searches. Synonymsto this search are pre application search, novelty/non obviousnesssearch.


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Chapter 6

Patent DraftingAfter the prior art search is done and if the inventor or his agentis of the opinion that the new revelation is inventive and thereforepatentable, the invention has to be written according to a standarddocument. This is called patent drafting. A discussion of patentdrafting follows.

As mentioned earlier, the whole idea of the government (society)for granting a patent right (a monopoly) is to make the inventorreveal the invention so that any other person skilled in the art shouldbe able to use it after the expiry of the patent or do improvementwhile the patent is valid. To do so, this invention has to be writtenin full and clear so that anybody can read and make it.

A patent document is written in separate sections. It is almostsimilar to the structure of a standard research paper except that thepatent document also has a section known as Claims.

6.1 Structure of a PatentThe following are the sections of a patent document.

Title

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6.1. STRUCTURE OF A PATENT 45

Sample 1: A heart valve with an annular valve bodydening an orice and having a plurality of struts form-

ing a pair of cages on opposite sides of the orice. Aspherical closure member is captively held within thecages and moved by blood ow between open and closedpositions in check valve fashion. A slight leak or backowis provided in the closed position by making the oriceslightly larger than the closure member. Blood ow ismaximized in the open position of the valve by provid-ing a convex prole on the orice-dening surfaces of thebody. An annular rib is formed in a channel around theperiphery of the valve body to anchor a suture ring usedto secure the valve within the heart.

Sample 2: Amides are produced by reacting an ester of a carboxylic acid with an amine, using as catalyst analkoxide of an alkali metal. The ester is rst heated toat least 75 degrees Celsius under a pressure of no morethan 500 mm. of mercury to remove moisture and acidgases which prevent the reaction, and then converted toan amide without further heating.

Sample 3: Process for the production of semiconductordevices, wherein a silicon oxide lm is formed on a surfaceof a semiconductor substrate, followed by deposition of alayer of lead on the lm. This combination is then heatedat 500-700oC. for at least 10 minutes in an oxidizing at-mosphere, whereby a passivating lm forms, consistingessentially of silicon oxide and lead oxide. The temper-atures employed are substantially lower than those con-ventionally used, and prevent deterioration of the device.

Sample 4: Wool is heated at 50-65 degrees Celsius for lessthan 15 minutes in an aqueous dispersion of 0.1-2 percentcalcium hydroxide, washed, and then acidied to render


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46 CHAPTER 6. PATENT DRAFTING

it receptive to dyestuffs without adversely affecting thephysical properties of the wool.

6.1.3 DescriptionDescription is composed of three sections, namely, background, thepresent state of the technology, and the disclosure of the invention.This can be thought of as a chronologically ordered story of theinvention. We rst start by the need of the invention (background)and secondly, what has been done so far to fulll the need (presentstate) and nally, tell about the potential invention and justify its’

patentability by comparing it with what has already been done. Thisis a very logical way of looking at the patent description or a researchpaper.

The following extract from the Canadian Patent Office PracticeManual gives overview requirements of a description.

“ The description must provide a clear and complete dis-closure of the invention such that the person skilled inthe art:

(1) can unambiguously identify what has been invented;and(2) is enabled to practice this invention.”

As mentioned earlier, the purpose of granting a patent right isin anticipation that the inventor reveals his/ her knowledge to thesociety so that the public can use it after the expiry of the patent ordo improvements while the patent is in force. This has to be done

by someone by looking at the description.The following extract from the Canadian Patent Office PracticeManual’s quotation of a judge’s view in a legal case emphasizes thisrequirement.

“ In Consolboard Inc. v. Macmillan Bloedel (Saskatchewan)Ltd., Dickson J. noted that “the inventor must, in return


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for the grant of a patent, give to the public an adequatedescription of the invention with sufficiently complete

and accurate details as will enable a workman, skilledin the art to which the invention relates, to construct oruse that invention when the period of the monopoly hasexpired”. The description must be able to answer thequestions “What is your invention?: How does it work?” such that “when the period of the monopoly has expiredthe public will be able, having only the specication, tomake the same successful use of the invention as the in-ventor could at the time of his application”.

The requirement of a proper disclosure are described in patentlegislation of different countries. There may be slight variations indifferent jurisdictions but the main features are uniform in all thecountries.

According to Canadian Patent Act subsection 27(3):

The specication of an invention must(a) correctly and fully describe the invention and its op-eration or use as contemplated by the inventor;(b) set out clearly the various steps in a process, or themethod of constructing, making, compounding or using amachine, manufacture or composition of matter, in suchfull, clear, concise and exact terms as to enable any per-son skilled in the art or science to which it pertains, orwith which it is most closely connected, to make, con-struct, compound or use it;

(c) in the case of a machine, explain the principle of themachine and the best mode in which the inventor hascontemplated the application of that principle; and(d) in the case of a process, explain the necessary se-quence, if any, of the various steps, so as to distinguishthe invention from other inventions.


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Sample disclosures are too long to quote here but an interestedreader can easily nd examples by accessing an online patent database.

A complete sample patent is also found at the end of the book forquick references.Illustrative drawings may be included to the description, however

they have to be drawn on separate sheets and no wording shouldbe included. This is done for the effective automatic translationpurposes.

6.1.4 Claims

The most signicant part of a patent as far as the inventor is con-cerned is what is known as the claims. Claims can basically bedened as the boundary of the invention just like a boundary of theland one is owning. What one can enjoy in case of a land is whatis enclosed in the boundary, and so as in case of a patent; what onecan legally enjoy as his own is what is enclosed in the patent claim.Just like one has to enclose the physical boundary of a land securelyso that others cannot encroach, patent claims have to be drafted sothat others cannot creep though them and use the invention withoutany infringement. Patent drafting is a professional work that needssignicant amount of expertise.

Patent legislations dene claims more formally, and according toCanadian Patent Act, the claims must dene distinctly and in ex-plicit terms the subject matter of the invention for which protectionis sought (section 27(4) of the Patent Act).

Claims should necessarily contain what is invented but shouldnot contain what was already in the public domain. All what isclaimed has to be justied in the disclosure where the invention andwhat was already known could be cited for comparison purposes.

General Structure of Claims

A claim essentially is composed of three parts as follows:

Preamble or introductory phrase


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As an example, let us suppose that someone invents an explosivetriggering device by sending and SMS using a mobile phone. Let

us also assume that mobile phones and a short message (SMS) us-age are already known to the public but explosive triggering usingSMS is not yet known. The claim can be worded as “An explosivetriggering device comprising a mobile phone and a SMS gateway".The inventor does not have any legal right to either mobile phonesor SMS gateway but only for the triggering device composed of amobile phone and a SMS gateway.

The invention could be a product or a process. In case of a prod-uct, the claim is with respect to the parts or components of it. If the invention is a process, it is the process and sub processes of theinvention. There can also be claims that claim both the productand process. The best example is the new drug and its’ manufac-turing process. Both the drug and the process of manufacture arepatentable and can be claimed as a legal right.

We will now see some examples of claims. These are extractedfrom Canadian Intellectual Property database.

Sample 1 (Extracted from CIPO database) Title: An

Electroluminescent DeviceClaim: An electroluminescent device comprising a trans-parent substrate for facing a viewer in front of said sub-strate; a transparent electrode disposed behind said sub-strate on a side of said substrate opposite from saidviewer; a partially-absorbing layer disposed behind saidelectrode; an electroluminescent emitting layer disposedbehind said partially-absorbing layer; a reective rearelectrode disposed behind said emitting layer, said emit-ting layer being made from a material operable to emitlight towards when a potential is applied between saidelectrodes; said partially absorbing layer and said emit-ting layer each being made from a material and having athickness that are chosen to cooperate with said reec-tive rear electrode such that at least a portion of ambient


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light incident on said device is reduced.

The invention is about an electroluminescent (devices emanatingluminance when an electric current is applied to the terminals) de-vice which are already known. The inventive part is a new way of making them by combining different layers of material with differentthickness to form a composite unit that has contrast enhancementcapability. Some of these layers maybe already known but the com-posite unit is new.

Sample 2 (Extracted from CIPO database) Title: AnOuter Wall Cleaning Robot Claim: An outer wall clean-ing robot comprising: an arm pivotable about a rst ro-tation axis that extends in a substantially horizontal di-rection in approximately parallel relation to an outer wallsurface of a building; an arm driving mechanism for driv-ing said arm; a rotational body supported by said armin such a manner that said rotational body is pivotableabout a second rotation axis extending in parallel withsaid rst rotation axis; a rotational-body driving mech-

anism for driving said rotational body independently of driving of said arm by said arm driving mechanism; awiping-squeegee mounting mechanism attached to saidrotational body; and a wiping squeegee attached to saidmounting mechanism.

The invention is about outer wall cleaning robots which are al-ready known. The inventive part is a new way of making an outerwall cleaning robot by combining different components. Some of

these maybe already known but the composite unit is new.Sample 3 (Extracted from CIPO database) Title: WellTreatment Compositions and Methods of Utilizing NanoParticlesClaim: A method of cementing comprising: introduc-ing a cement composition into a subterranean formation,


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wherein the cement composition comprises cement, wa-ter, and at least one nano particle selected from the group

consisting of particulate nano-silica, nano-alumina, nano-zinc oxide, nano-boron, nano-iron oxide, and combina-tions thereof

The invention is about a method of cementing wells which isalready known. The invention is a new way of doing so using aspecial compound. Some of these maybe already known but thecomposition is new.

What are mentioned above are independent claims which are also

known as main claims. Most of the time the content of this claim isthe same as what is in the abstract.For an example, the abstracts of the above claims are as follows:

Sample 1 (Extracted form CIPO database) Title: AnElectroluminescent DeviceAbstract: An aspect of the invention provides an electro-luminescent device that incorporates a partially-absorbinglayer which is disposed in front of an emitting electro-luminescent layer and a reective rear electrode. Thethickness and material of the partially-absorbing layercooperates with the thickness of the electroluminescentlayer to cause at least some reduction in ambient lightincident of the display.

Sample 2 (Extracted from CIPO database) Title: AnOuter Wall Cleaning RobotAbstract: An outer wall cleaning robot includes an armpivotable about a rst rotation axis and a rotationalbody supported by the arm for pivotal movement about asecond rotation axis. The rotational body can be drivenindependently of a pivotal movement of the arm. To therotational body are attached respective mounting mech-anisms for a wiping squeegee and a receiving squeegee.


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Sample 3 (Extracted from CIPO database) Title: WellTreatment Compositions and Methods of Utilizing Nano

ParticlesAbstract: Disclosed embodiments relate to well treat-ment uids and methods that utilize nano-particles. Ex-emplary nano-particles are selected from the group con-sisting of particulatenano-silica, nano alumina, nano-zincoxide, nano-boron, nano-iron oxide, and combinationsthereof. Embodiments also relate to methods of cement-ing that include the use of nano-particles. An exemplarymethod of cementing comprises introducing a cementcomposition into a subterranean formation, wherein thecement composition comprises cement, water and a par-ticulate nano-silica. Embodiments also relate to use of nano-particles in drilling uids, completion uids, stim-ulation uids, and well clean-up uids.

There are also what are known as dependent or sub claims. Asthe name implies, these dependent claims are dependent on the in-dependent claim, and make a reference to the independent claimas “as claimed in (independent claim)” and emphasizes on a spe-cial instance of the independent claim. In fact, what the dependentclaim claims is special cases of the claimed subject matter of theindependent claim.

The inter relation of dependent and independent claims can bedepicted as a Venn diagram where sub group fall inside a group.

The necessity for dependent claim is that just in case of an invali-dation of the independent claim on the ground that the independentclaim being too broad, there is still a fall back option for the inven-tor to claim dependent claims. If there is no dependent claim, theinventor would be left with nothing if the main independent claimbecomes invalid.

As an example, if the invention is about fabrication of semicon-ductor devices using Silicon or Germanium, with sufficient justi-cation in the disclosure as to the potential use of other elements


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in the same column in the Periodic Table of Elements, he/she candraft the independent claim as “. . . . . . . . . . . . . . . . . . . . . using any ma-

terial in the fourth column of Periodic Table of Elements” and claimthe device made of Silicon or Germanium by writing the depen-dent claim as “. . . . . . . . . . . . . . . .the device as claimed in (independentclaim) wherein the element is Silicon or Germanium. If by somechance, someone challenges that the use of Carbon (in the forth col-umn of the Table) in making the device had already been known toancient Romans, the inventor can at least fall back to the presentday with Silicon or Germanium !

Following are dependent claims relating to the above mentionedexample. It will be noticed that some dependent claims refer tomany dependent or independent claims.

Sample 1 (Extracted form CIPO database) Title: AnElectroluminescent DeviceDependant Claims:The device according to claim 1 wherein said transparentfront electrode is made from ITO.

The device according to claim 1 wherein said rear elec-trode is made from Aluminium.The device according to claim 1 wherein said electrolu-minescent layer is made from a material selected fromthe group consisting of ZnS:Mn, Alq3, PPV.

Sample 2 (Extracted from CIPO database) Title: AnOuter Wall Cleaning RobotDependant Claims: An outer wall cleaning robot as de-ned in claim 1 which further comprises a receiving-squeegee mounting mechanism pivotably supported rel-ative to said rotational body, a receiving squeegee at-tached to said receiving-squeegee mounting mechanismso as to be positioned below said wiping squeegee, for re-ceiving soiled water resultant from cleaning of the outer


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wall, a clutch mechanism for connecting or disconnectingsaid receiving squeegee to or from said rotational body,

and a stopper mechanism for preventing said receivingsqueegee from pivoting downward from a predeterminedposition.

An outer wall cleaning robot as dened in claim 1 or 2wherein said arm mounting mechanism and said rotational-body driving mechanism are provided separately fromsaid arm.

An outer wall cleaning robot as dened in claim 2 whereinsaid receiving-squeegee mounting mechanism includes aslider base, a slider mounted to said slider base for slidingmovement along said slider body in a forward and rear-ward direction, and drive means for driving said slider,and wherein said receiving squeegee is xed to said slider.

Sample 3 (Extracted from CIPO database) Title: WellTreatment Compositions and Methods of Utilizing Nano

ParticlesDependant Claims:

The method of claim 1, wherein the introducing the ce-ment composition into the subterranean formation com-prises introducing the cement composition into a spacebetween a pipe string and the subterranean formationand allowing the cement composition to set in the space.

The method of claim 2, comprising running the pipestring into a well bore penetrating the subterranean for-mation.

The method of claim 1, wherein the method comprisesallowing the cement composition to set in the subter-ranean formation.


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Unity of Invention

There is what is known as unity of invention in claims. As the phraseimplies, it means that the claims should be a unit of invention. Whatthis means is that one patent document should contain only oneinventive subject matter.

The relevant legal provision in Sri Lanka in this regard is asfollows:

74. An application shall relate to one invention only orto a group of inventions which are so linked to each otherso as to form a single general inventive concept.

As stated in the legal provision, unity of invention does not meanthat the claims should be focused on one product or a process. Manyproducts and processes could be joined if they form one well relatedcomposite invention.

For an example, in a drug manufacturing process, the main prod-uct as well as the by products could be claimed if they satisfypatentability requirements. Similarly, the main process as well as

the sub processes of the manufacturing process could be claimed inthe same application if they are satisfying the patentability require-ments.

Scope of Claims

As mentioned above, the claims are the ones that give legal pro-tection to inventors and therefore of importance to them. Claimsis the point to start drafting the patent document because rest of the documentation depends on the claims. The abstract is kind of a summarization of claims, and the description is an expansion of claims with justication including the background and the prior art.

Just like people try to expand their boundaries of physical landsduly or unduly, inventors try to get protections as broad as possi-ble, and in the examination process, examiners make it justiablynarrow. Even after the patent is granted, if someone can nd that


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the inventor has encroached into what is already known, he/she caninvalidate the claim to the extent of encroachment.


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Chapter 7

Application for a PatentAfter the patent is drafted, the next step is to lodge the documentwith a petition (a standard form containing bio graphical data of the applicant and some facts regarding the invention) in the nationalpatent office of the country. An exception is that when an applicantmakes a PCT application where the applicant makes the applicationin a depository known as PCT; PCT will be explained later.

Before making the application, care should be taken not to makeany public disclosures because if someone can prove that the inven-tion was known to the public before the application date, the patentright can be invalidated. Exception is available in some countrieswhere an applicant himself may reveal the invention but still canmake the application within a certain period. For an example, inUnited States, the applicant can enjoy a grace period of one yearafter the disclosure before making the application. However, it is ad-visable that no disclosure is done because it might affect the patentright when applying in other countries where such exceptions arenot allowed.

It maybe, however, necessary to discuss the invention with otherstakeholders like researchers and market personnel. Such discussionsshould be done after signing a Non-Disclosure Agreement (NDA)

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60 CHAPTER 7. APPLICATION FOR A PATENT

(also known as Condentiality Agreement) binding the other partynot to leak out the information. A breach of the agreement maybe

compensated, but the amount of compensation may not be sufficientto cover the cost of the damages caused.In United States, there was a system earlier where rst to invent

was given priority over rst to le. Due to practical difficulties inproving the rst to invent, this system has become obsolete.

7.1 Making a Local Application

As mentioned above, a national or a PCT application has to be madeto get a patent grant. The legal requirement of making the applica-tion is described in legislation. According to Sri Lanka legislation,it is as follows:

71. (1) (a) An application for the grant of a patent shallbe made to the Director General in the prescribed formand shall contain

(i) a request for the grant of the patent ;

(ii) a description of the patent ;

(iii) a claim or claims ;

(iv) a drawing or drawings, where required ;

(v) an abstract ;

(vi) date and number of any application for a patentled by the applicant abroad (hereinafter referred to asthe “foreign application”), if any, relating to the same,or essentially the same invention as that claimed in thepresent application ;

(vii) a declaration that the applicant or his predecessorin title has not obtained a patent abroad before the ap-plication was led relating to the same or essentially thesame invention as that claimed in the application.


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7.2. MAKING A FOREIGN APPLICATION 61

When the application is lodged in the national patent office, aling date is assigned and this proves that the invention was led on

that particular date, and inventors may reveal the invention there-after without any risk. The inventor could also use the phrase “Patent Pending” even though the patent right is not yet granted, inorder to warn others that copying may result in patent infringement.

The ling date could be transferred to other applications thatmaybe led in other countries and therefore it is also known as thepriority date. The concept of priority date will be discussed later.

After the application is lodged, office actions will follow and theywill be discussed the next chapter.

How this initial ling date will be carried forward to other coun-tries will be discussed in the next section.

Revisions of Applications

Patent applications maybe revised if the new subject matter is notincluded. Following is the legal provision in Sri Lanka in this regard.

75. (1) An a

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