CONCEPTS RELATED TO PATENTABILITY

BySomashekar Ramakrishna

Brain League IP Services Now BananaIP

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Industrial applicability/Utility

Industrial Applicability/Utility

Industrial Application The invention is capable of being made or used in an industry Sec 2(1)(ac)

No Industrial applicability If vague and speculative possible objectives are indicated (MPPP Sec 3.25.3)

For processes or articles alleged to operate in a manner contrary to well-established physical laws (MPPP 3.25.5)

For method of treatment of the human or animal body by surgery or therapy or of diagnosis practiced on the human or animal body (MPPP 3.25.6)

For parts/pieces of the human or animal body to be used in transplants (MPPP 3.25.6)

e.g. Scheme for exchanging all or part of a prison sentence for corporal punishment Lacks Industrial Applicability Melia’s Applicaton (BL O/153/92)

Anticipation

Anticipation (l) “new invention” means any invention

or technology which has not been anticipated by publication in any document or used in the country or elsewhere in the world before the date of filing of patent application with complete specification, i.e. the subject matter has not fallen in public domain or that it does not form part of the state of the art;

Anticipation

Patentable Subject Matte

r

Invention Prior Art

Utility F

ilter

Anticipation Prior Art

Prior PublicationPublic Knowledge and Public UsePublic displayOn sale

Anticipation Prior Publication

Date of filing of

CSIndian Patent application

PublicationSection 13(1) a

Indian Patent application Publication

Section 13(1)b

Publication in India or elsewhere in any

documentSection 13(2)

No limit on the age of the disclosure

Anticipation Prior Publication

if ‘X’ files a patent application on 25th September, 2009 relating to an invention and if Y’s application relating to the same invention, which was filed on 25th September, 2007, is published on 25th October, 2009, the invention of X will not be novel.

Anticipation Exceptions/No Anticipation by Prior

Publication if 1) the patentee proves:

a) Wrongful Obtainment; and b) Application for patent was filed as soon as

reasonably practical after learning about the publication (Sec 29 (2) (a) and (b))

e.g. if ‘X’ takes information relating to an invention from Y’s lab and publishes it without Y’s knowledge, such publication will not anticipate the invention provided Y files a patent application after learning about the publication within a reasonable period of time.

Anticipation

2) a complete specification was filed by a person and thereafter the invention is published or used by contravening the rights of the true and first inventor or any person deriving rights from him. (Sec 29(3))

○ e.g. if ‘X’ is the true and first inventor of an invention and if ‘Y’ his colleague files for a patent over the invention without informing X and permits ‘A’ to use it, Y’s application when published or use of the invention by A will not anticipate the patent application filed by X

Anticipation

3) the invention is communicated to the Government or to any person authorized by the Government to Investigate the invention or its merits (Sec 30)

Anticipation4) If the invention in a paper is read by the true

and first inventor before a learned society or published with the inventor’s consent in the transactions of such a society IF

if an application for a patent relating to the invention is filed within twelve months (12) of the date of publication (Sec 31 (d))

Anticipation• Public Knowledge and Public Use

Knowledge already in the public domain or knowledge easily accessible to the public.

ExceptionIf the use of the invention was by way of imposing

secrecy then it is not a public use .

Anticipation Public Display

Public Display of an invention before the filing date of the patent application will anticipate the invention.

ExceptionHowever, if an invention is displayed by the inventor at an

exhibition notified by the Central Government in the official gazette, such a public display or use of the invention at the exhibition or publication of details of the invention as a consequence of the exhibition will not anticipate the invention provided a patent application is filed within twelve (12) months from the date of such public display

AnticipationOn Sale

○ If an invention is on sale or is commercially worked in India by the applicant…. before the date of the patent application, it will not be considered to be novel.

(Exception) However, if the invention was on reasonable trial, it will not be anticipated. Section 29(2)(b), Section 31(1)(a) and (b),

AnticipationOn Sale

e.g. if the inventor sells his novel road roller to the government, he cannot get a patent over it as the sale negates novelty of the invention.

However, if the inventor tests the functioning of a Road Roller in public under a government contract, such a test will not anticipate the invention.

Anticipation Subject Matter in the Prior Art

Thumb Rule: A Prior publication will anticipate…….ONLY if it contains …..ALL the features of the invention Farbewerke Hoechst Aktiengesellschaft

vormals meister Lucius &Bruning a Corporation etc. Vs. Unichem Laboratories and Ors MANU/MH/0064/1969

The anticipatory disclosure must be entirely contained within a single document. (MPPP 3.3.4)

AnticipationExampleA chair

4 legsEach leg is provided with a wheel

Prior Art 1 chair with 4 legsPrior Art 2 wheels in toy chair.

Anticipation

Invention

Prior Art

Inventive step/non-obviousness

Inventive Step Inventive step –

○ 1) Technically advanced in the light of the prior art or should have economic significance ; and

○ 2) The invention should be non-obvious to a person skilled in the art

“inventive step” means a feature of an invention that involves technical advance as compared to the existing knowledge or having economic significance or both and that makes the invention not obvious to a person skilled in the art; Sec 2(ja)

Inventive Step Person skilled in the art

Presumed to be an ordinary practitioner aware of what was common general knowledge in the art at the relevant date (MPPP 3.51.2)

A notional skilled person who would perform a transfer of technology from a neighboring field to his specific filed of interest, if this transfer involved routine experimental work comprising only routine trails (MPPP 3.51.3)

Inventive Step Some Issues Involved in determining

Inventive step What was the problem which the patented

development addressed? How long had that problem existed? How significant was the problem seen to be? How widely known was the problem and how

many were likely to seeking a solution?.........

Inventive Step Indicators of inventive step

Distance- b/n the Subject matter and the prior art

Unexpected effectLong felt need Failure of others Commercial success

Inventive Step Lack of Inventive step

Invention provides equivalent

Prior art is incomplete and the invention lies in filling the gap which would readily occur to a person skilled in the art

New use of a known material

Inventive Step In determining Inventive Step

Mosaicing multiple documents is permitted All information in any set of documents can

be combined provided they are all in the same art (analogous)

No hindsight should be employed (taking the solution and working backwards)

Inventive Step Biswanath Prasad Radhey Shyam Vs. Hindustan Metal

industries, AIR 1982 SC 1444 Patent: Means for holding utensils for turning purposes Prior Art: Lathe (tailstock)

To be patentable the improvement or the combination must produce a new result, or a new article or a better or cheaper article than what was already existing

Improvement or combination should be something more than the mere workshop improvement

Inventive Step Haberman and another v. Jackel International Ltd

(1999) FSR 683

Patent: ANWY CUP, a trainer cup for toddlersHad a valve fitted to the lidWould open when baby sucked and closed when it stopped

Immediate commercial success. Defendant: launched rival product: ‘super-seal” Suit for infringement: claim of obviousness.

Justice Laddie:‘ though involved a very small and simple

step, it is sufficiently inventive. It had solved a problem (that is the long-felt need for a spill-proof cup)’

Inventive Step Garewall ropes Ltd. Vs. Mr. Anant Kanoi

MANU/GJ/8265/2006

Patent:Prefabricated collapsible gabion product made

from synthetic ropesGabions are well known (since 7000 years)Rope gabions and polymer gabions were being

used in Maharashtra since 1991 and in Bihar since 1987

Held: Substituting elements of common knowledge in a product would not give rise to inventive step

Inventive Step Example:

Device for manually collecting the agricultural produce has

container (Plastic) open at the top and closed at the bottom

wall of the container has a contour adapted to proximate the back of a human bodyStraps and buckles for securing the container to the individual

Traditional product made out of bamboo.

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