Patent & Drafting exercise

Sardar Vallabhbhai Patel Institute of Technology, Vasad

1

Patent and Drafting Exercise

SVIT-Vasad

Prepared By:Mitali Sonar


2 Main Outline Intellectual Property Right What is Patent? Few Examples of Patent What can be and cant be Patented? Patent search Drafting of Patent Application Patent Filing Process


3 IPR are the rights

given to persons over the

creations of their minds

E.g. for inventions; literary and

artistic works; designs; and

symbols, names and images

It enable people to earn the

recognition or financial benefit from

what they invent or create


4 Intellectual Property Right (IPR)


5

Trademark

Sign capable of distinguishing the goods or services of one enterprise from other enterprises

Copyright The rights that creators have over their literary and artistic works. (Books, music, paintings, sculpture and films, to computer programs, databases, advertisements, maps)

Plant breeders right

Rights granted to the breeder of a new variety of plant

Intellectual Property Right (IPR)


6

Industrial designs

A design may consist of three-dimensional features, such as the shape or surface of an article, or of two-dimensional features, such as patterns, lines or color

Geographical indications

Signs used on goods that have a specific geographical origin and possess qualities, a reputation

Trade secret Its a formula, practice, process, design, instrument, pattern, commercial method, or compilation of information which is not generally known

Intellectual Property Right (IPR)


7 What is Patent ?

It’s a exclusive

Grant of property right to the inventor

For a limited period of time

It prevent others from

Using, selling or manufacturing the patented

invention during period of patent protection


8 What is Patent ? A Patent is for an invention Invention

May either for Product or Process Should have Innovativeness (novelty)

Involving an Inventive steps Capable of Industrial application

Fig. 1. Invention


9 Few Categories of Product Patent

Product means any object that is manufactured. Following are the few categories of product patent

•Carpet designs•Clothing accessories & designs•Cosmetics•Electrical inventions•Electronic circuits

•Food inventions•Fabrics & fabric design•Furniture design•Jewelry•Machines•Computer software (software functions which uses algorithms and mathematics, if it produces some concrete and useful results)


10 Examples of Product Patent An Antistatic Carpet Dust (Carpet Design) Double-Layer Sound Absorbing Carpet For Automobile

(Carpet Design) Infant clothing and accessories with permanent teething

element (Clothing Design) Removable decorations for clothing (Clothing Accessories) Cosmetic facial wrinkle moisturizer instrument

(Cosmetics) Stepper motor with integrated brake and drive circuit

(Electrical Inventions) Variety of Tropical Mango (Food Inventions) A Food Processor Steamer Components (Food Inventions)


11 Examples of Product Patent (Cont..)

A new fire escape curtains (Fabric) One Kind Of Foldable Table Legs (Furniture) A Simple Collapsible Chairs (Furniture) Digital Necklace Pendant (Jewelry) Vacuum Heat Pump Clothes Drying Method And

Dryer (Machines) Online Cloud Transcoding Service System Software

(Software) Software Configurable Network Switching Device

(Software)


12 Process Patent A process or method for producing a useful,

concrete, and tangible result Following are the few areas/ disciplines /industry for

process patents e.g. Genetic engineering

• E-commerce and internet innovations• An investment model• Business model• Insurance, banking and tax compliance models• Chemical formulas


13 Examples of Process Patent Gene targeting and genetic modification of plants via

rna-guided genome editing (Genetic Engg) Product pricing in e-commerce (E-commerce) E-Commerce Consumer-Based Behavioral Target

Marketing Reports (E-commerce) Wireless internet gateway (Internet) Nationwide table routing of voice over internet protocol

(VOIP) emergency calls (Internet) Asset allocation, rebalancing, and investment

management system (Investment) Service delivery platform and development of new

client business models (Business Model)


14 Examples of Process Patent (cont..)

Out-of-sequence endorsement processing in

insurance policy management system (Insurance)

International banking system and method (Banking)

Personal online banking with integrated online

statement and checkbook user interface (Banking)

Method for managing tax return information (Tax)

Thermoplastic resin composition (Chemical )


15 How to define Invention ? Its defined as

• New and original solution to a technical problem• Solving unsolved problems of unaddressed issues• The creation of

• An entirely new device,• Product, method or process

• May simply be an incremental improvement to a known product or process.

Merely finding something that already exists in nature generally does not qualify as an invention


16 What can be Patented? A feature of an invention that

Involves technical advancement

Must be capable of being made or used in any

industry

New product or process

Which has not been anticipated by

• Publication in any document

• Used in the country or in the world


17 What can’t be Patented ? Simple arrangement or re-arrangement or duplication

of known devicesExamples: Umbrella with fan

Bucket fitted with torch Scientific theories and mathematical methods Methods for performing mental acts / games / business Presentations of information/ Artistic creations Mere admixtures and processes thereof Law of nature Methods of treatment by surgery or therapy of the human

or animal body Diagnostic methods practiced on the human body


18 Patent Filing Scenario


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First to file (FTF) and first to invent (FTI)

Do you possess Patentable Invention?

What does it mean for inventors?In the past, the Patent Office granted a patent to whoever invented it first. Now, the patent will go to whoever filed the application first.


20 Patent Search Where we can search for already published patents? Following are the site where we can find out

published patent Indian Patent office’s Website :

http://www.ipindia.nic.in/ European Patent office’s (EPO) patent database’s

(Espacenet) Website : https://www.epo.org/searching.html

World Intellectual Property Organization's (WIPO) patent database’s Website : https://patentscope.wipo.int/search/en/search.jsf


21 Indian Patent Database Home page of Indian Patent Office Website:

http://www.ipindia.nic.in/


22 Indian Patent Database Click on patent


23 Indian Patent Database Click on granted Patents/ Published Application

to search for patents


24 Indian Patent Database You can search a Patent by Title Of Invention,

Abstract, Application Number, Applicant Address, Patent No. , Date Of Filing, Inventor Name, Date Of Grant, Publication Date.


25 European Patent Database Espacenet Open homepage and click on open Espacenet at

EPO


26 European Patent Database Espacenet

Click on Advancesearch


27 European Patent Database Espacenet No. of Results/Hits getting with specified Search String used


28 WIPO Patent Database Search National/International Patent Collections on WIPO database Website athttp://patentscope.wipo.int/search/en/search.jsf


29 WIPO Patent Database Click on advanceSearch to search Patents of differentregions


1. Ordinary Application (Provisional / Complete)

2. Convention Application (Forign countries)

3. PCT ( Patent Corporation treaty) International

Application (if 12 months complete then grant 30

months for decision)

4. PCT National Phase Application ( Select country for

filing)

5. Application for Patent of Addition (if editation required

for rejected patent)

6. Divisional Application

Types of Patent Application

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31 How to Draft a Patent Application ?


32 Precautions To Be Taken Before Drafting

VERIFY THE FOLLOWING: Is invention patentable ?Conduct search Has it been published?Ascertain whether complete or provisional is to be

filedEnlist problems in prior art What is the problem sought to be solved by the

invention? What is the novelty? Is the solution obvious?


33 Drafting of patent applications Patent application is analogous to

a contract between inventor & government Patent application drafting is like

Writing a technical or scientific paper Patent application starts with patent specification

• Description discusses the invention• Claims define boundary of monopoly


34 Patent Specification- Description Specification shall

Fully and particularly describe the invention Its operation/ use/ method

Contents are

1. Title

2. Field of the Invention & Background of Invention

3. Use of Invention : A brief statement

4. Prior Art details

5. Objects of Invention

6. Detailed description of Invention

7. Best method of working of the invention

8. Statement of claims


35 Patent Specification- Description (Cont..)

TITLE • A concise statement providing the core of the invention

FIELD OF THE INVENTION

• Provides utility• Sometimes used as a tool for search in

the absence of abstract BACKGROUND

• Technical background of invention

PRIOR ART • A brief write-up of what is known before the invention

• The problems associated with each of the known art

• Describes the problem proposed to be solved by the invention


36 Patent Specification- Description (Cont..)

OBJECTS • Purpose of the invention• Essential aspects and optional aspects.

DETAILED DESCRIPTION

• Describes the invention with examples Text/illustration/tables/graphs/diagrams…

• Best mode of performing the inventionSTATEMENT OF CLAIMS

• The main claim or claims in verbal agreement

• The main claim defines the essential features

• sub-claims define the preferred / optional / additional features


37 GTU innovation council PSAR


38 GTU innovation council PSAR


39


40 Patent Specification- Claim Claims are the legally operative part of a patent

application It defines

• The matter for which protection is required• The essential / preferred / optional / additional

features• Monopoly to be conferred by the patent

They Refer to

Physical Entity Activity

Product System Device UseProcessMethod


41 Drafting the Claim

Describe (“limit”) each of the identified elements.

Limitations necessarily inherent in an element

need not be explicitly introduced.

For example, a square necessarily has 4 equal

sides.

Describe the relationships between the elements


42 Structure of claimo Preamble

Sets up general technical environment Defines a work piece, or states a purpose or use for

the inventiono Transitional phrase

“comprises of”, “consisting of”, “consisting essentially of”

o Main body Lists main components of the invention in a legal form List the elements of the composition or method of the

claimed invention.


Example: The invention

A ball that is fun to use, easy to catch and looks nice.

How can you protect it from imitation?

• "Fun to use" → cannot be protected• "Looks nice" → registered design• "Easy to catch" = technical function → patent

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How to patent this invention: claim it!

Making a ball "easy to catch" is a technical problem. Problems cannot be patented – but specific solutions can! What is the technical feature that makes the ball easy to catch?

Patent Claim: "A ball that is easy to catch."

Patent Claim: "A ball comprising a core region and plural elastomeric filaments radiating from the core region."

You don’t want anyone circumventing the patent by replacing the ball shape with something else!

Patent Claim: "An amusement device comprising a core region and plural elastomeric filaments radiating from the core region."

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Claim to protect the inventionClaim to be filed:

"An amusement device comprising a core region and plural elastomeric filaments radiating in plural angularly offset planes from the core region."

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46 Patent life CycleProvisional

patent. The date on which patent is

filing.

Patent Examine

stage. Decide whether

granted or not

Complete Patent. After 12

months of giving

specificationPublication

.

After granting

claim rights

given for 20 years

After 20 years

anybody can use it


47 Provisional & Complete Specification

Provisional Patent Specification

Complete Patent Specification

To establish Priority of the invention in case of disclosed invention is only at conceptual stage

A delay is expected in submitting full and specification description

No patent is granted on the basis of provisional specification

It’s a document in which all the details of the invention for which patent protection is desired are disclosed


48 Main steps of Patenting Procedure


49 Patent Offices in India Head office is at Kolkatta Other offices are at……

Delhi Chennai Mumbai


50 Regional Patent Office’s Jurisdiction


51 Filling Provisional Patent Form–1:

• Application for Grant of Patent Form- 2:

• Application with Provisional Specification Form-3 :

• Statement and Undertaking regarding foreign filing Form-26:

• Form of authorization of Patent Agent OR • Power of Attorney form on non-judicial stamp paper

Proof of Right of Assignment (In favor of applicant by Inventor)


52 Filing of Complete application Form–1: Application for Grant of Patent Form- 2: Application with Complete Specification Form-3 : Statement and Undertaking regarding foreign

filing Form-5: Declaration as to Inventor ship Form-9: Request for express publication From-18: Request for examination Form-26:

• Form of authorization of Patent Agent/Patent Attorney• Power of Attorney form on non-judicial stamp paper

Proof of Right of Assignment (In favor of applicant by Inventor)


53 Fees for Provisional Application

Fees Form–1 Form- 2 Form-3 Form-26

Nat. Person

1000/-+ 100/- (>30 pages)

-NA- + 100/- (>30 pages)

No Fee No Fee

Legal entity

4000/-+ 400/- (> 30 pages)

-NA- + 400/-(> 30 pages)

No Fee No Fee


Fees for Complete application15

Form\Fees Nat. Person Legal entityForm-1 1,000/-

+ 100/- (>30 pages)+ 200/- (>10 claims)

4,000/-+ 400/- (>30 pages)+ 800/- (>10 claims)

Form-2 -NA-+ 100/- (>30 pages)+ 200/- (>10 claims)

-NA-+ 400/- (>30 pages)+ 800/- (>10 claims)

Form-3 No Fee No FeeForm-5 No Fee No FeeForm-9 2,500/-* 10,000/-*

Form-18 2,500/- 10,000/-Form-26 No Fee No Fee


55 E filing of the Patent E-filing is a service provided by the Intellectual

Property Office, India to apply for a Patent on-line

Benefits of e-Filing? Receive a Patent application number immediately On-line verification to assure error-free filing Speed up the registration process Print the completed application data and receive

fee acknowledgement Save the data locally in PC


56 Who can file a patent application on-line?

- Any Individual (Indian national or foreigner)

- Registered Patent Agent

- Proprietor

- Organization


57 Digital Signature Certificate The Information Technology (IT) Act, 2000 provides

for use of Digital Signatures on the documents submitted in electronic form in order to ensure the security and authenticity of the documents filed.

You may obtain your Class III DSC (Digital Signature Certificates) from the following Certifying Authorities in India :

(n) Code Solutions TCS Safe Script


58 E filing of the patent Step 1: Acquire Class 3 Digital Signatures

Class 3 Digital SignaturesTCS

Code solutions

Safe Script


59 Step 2: Do Online Registration

Sardar Vallabhbhai Patel Institute of Technology, Vasad60

Step-3: Login into the System

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Step 4: Download The client software

Step-4: Download client software

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62 The Detailed Steps are as follow


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Step-5: Create New Application

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65 Click on 1st button ‘ Create New Application’ to create new application & the following screen is displayed


66 At the bottom of form there are buttons to attach documents (like Complete Specification, Drawings, Priority Documents, Translation of Priority documents, Statement and Undertaking (Form-3), Power of attorney, Declaration of Inventor-ship (Form-5))


Step-6: Upload digitally signed New Application [.xml]

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Step-7: Payment of Fee (EFT/Credit card)

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Step-8: Generate & Print Acknowledgment

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“Innovation is a journey from mind to market,

Concept to commercialization.”

3Ps PrinciplePATENT PUBLISH PROSPER

70 Take Home Message…


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Patent & Drafting exercise

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