Overview: Patents

Speaker: Praveen Pani

September 08, 2010


2/20 Copyright 2008
Contents
General Procedures
Patentability and Important Statutes
Types of Patents and Applications
Structure of a Patent Document Sections and Terms
Requirements for Complete Specifications


3/20 Copyright 2008
From Raw Idea to Market
Identification of Patentable ideas/inventions

Patentability evaluation & Business considerations

Does it meet the patentability criteria?
Which countries should be covered ?
Business considerations, ROI (tangible/intangible)
Competitive/License/conventional launch
Will it survive opposition/revocation proceedings.



4/20 Copyright 2008
Information & documentation for
Patent Application
Inventors to maintain proper Log-books (First to
invent: US)

A confidentiality agreement is a document
designed to protect the confidentiality of ideas,
inventions, notes, and any other technical or
proprietary information; It should be signed by the
researcher/inventor and anyone outside the
company involved in a discussion regarding
research.



5/20 Copyright 2008
Patentability: US
35 USC 100 Definitions
(a) Invention means invention or discovery
(b) Process means process, art or method and includes
a new use of a known process, machine , manufacture,
composition of matter, or a material.


35 USC 101
Any person who invents or discovers any new and
useful process, machine, manufacture, or composition of
matter, or any new and useful improvement thereof,
may obtain a patent, subject to the conditions and
requirements of this title.



6/20 Copyright 2008
Patentability: US Contd.
What is not patentable:

laws of nature, physical phenomena, and abstract ideas
are not patentable subject matter.
Useful: Refers to the condition that the subject matter
has a useful purpose and also includes operativeness,
that is, a machine which will not operate to perform the
intended purpose would not be called useful, and
therefore would not be granted a patent.
mere idea or suggestion are not patentable



7/20 Copyright 2008
Tests of Patentability

New or Novel: The invention must be demonstrably different from
publicly available ideas, inventions, or products (so-called "prior art").
This does not mean that every aspect of an invention must be novel.
For example, new uses of known processes, machines, compositions of
matter and materials are patentable. Incremental improvements on
known processes also may be patentable.

Useful: The invention must have some application or utility or be an
improvement over existing products and/or techniques.

Non-Obvious: The invention cannot be obvious to a person of
"ordinary skill" in the field; non-obviousness usually is demonstrated by
showing that practicing the invention yields surprising, unexpected
results.



8/20 Copyright 2008
Important Statutes
Prior art search to evaluate patentability w.r.t. 35 US 102

35 U.S.C. 102 Conditions for patentability; novelty and loss
of right to patent.

A person shall be entitled to a patent unless -
(a) the invention was known or used by others in this country, or
patented or described in a printed publication in this or a foreign
country, before the invention thereof by the applicant for patent,




9/20 Copyright 2008
Important Statutes Contd.
35 USC 103
A patent may not be obtained, if the differences
between the subject matter and the prior art
are such that the subject matter as a whole
would have been obvious to a person having
ordinary skill in the art to which said subject
matter pertains. (frequent objection)




10/20 Copyright 2008
Types of Patents
Utility Patents
May be granted to anyone who invents or discovers any
new and useful process, machine, article of manufacture,
or composition of matter, or any new and useful
improvement thereof

Design Patents
May be granted to anyone who invents a new, original,
and ornamental design for an article of manufacture

Plant Patents
may be granted to anyone who invents or discovers and
asexually reproduces any distinct and new variety of plant


11/20 Copyright 2008
Types of Applications
National Application
National applications are generally filed at a national patent office,
such as the United Kingdom Patent Office, to obtain a patent in the
country of that office. The application may either be filed directly at
that office, or may result from a regional application or from an
international application
Regional Application
A regional patent application is one which may have effect in a range
of countries. The European Patent Office (EPO) is an example of a
Regional patent office.
International Application
The PCT system enables an applicant to file a single patent
application in a single language. The application, called an
international application, can, at a later date, lead to the grant of a
patent in any of the states contracting to the PCT.


12/20 Copyright 2008
Types of Applications
Provisional (PPA)
Complete/Regular (RPA)/Non-provisional
Continuation Application (CP)
Continuation-in-part (CIP)
Divisional




13/20 Copyright 2008
USPTO process
Filing
Examination
Office action
Submissions from the applicant/agent
Subsequent Office action
Further submissions
Re-examination U/S 302 OR 311




14/20 Copyright 2008
Structure of a patent document


15/20 Copyright 2008
Sections in a Patent Documents
Title
Field of the Invention
Background
Summary
Brief Description of Figures
Drawings
Definitions
Detailed Description
Claims
Abstract



16/20 Copyright 2008
Patent Document - Terms
Assignee
Inventor
Filing date
Grant/Issue date/Date of Patent
Priority date
Patent Number
Publication Number
Application Number
IPC class



17/20 Copyright 2008
35 U.S.C. 112: Specification
The specification shall contain a written description
of the invention, and of the manner and process of
making and using it, in such full, clear, concise, and
exact terms as to enable any person skilled in the art
to which it pertains, or with which it is most nearly
connected to, to make and use the same, and shall
set forth the best mode contemplated by the inventor
of carrying out his invention.



18/20 Copyright 2008
Title 37 CFR 1.71
Specifications must:
Set forth the precise invention claimed
Distinguish between the invention and prior art
Describe completely a specific embodiment
Explain the mode of operation or principle, where applicable
Point out the specific part or parts of process, machine,
manufacture or composition of matter to which the
improvement relates, if the invention represents an
improvement
In case of the invention being an improvement, the description
should be confined to the specific improvement and to such
parts as necessary to cooperate with it
Unity of invention (37 CFR 1.141)
Two or more independent and distinct inventions may not be
claimed in one application



19/20 Copyright 2008
Requirements: Specification
Description Requirement: To draw the boundary covered by
the invention (support for claims)


Enablement Requirement : To enable a person skilled in the
art to make and use; Need not explain the scientific principles

Best Mode Requirement: disclose what the inventor believes
to be the best mode

Utility Requirement: Sufficient to prove just one utility;
Should also satisfy the requirements of 35 USC 101



Thank you!!