Benefits of Patent and Patentability Search: Dr. (Prof.) Prashant B. Maheshwary

Benefits of Patent and
Patentability Search
Dr. (Prof.) Prashant B. Maheshwary

Associate Dean (Academics), DBATU of Maharashtra
Director, J D College of Engineering and Management
What did you learn so far ?
A. Important Terminology
Intellectual: It refers to products that comes out of our ability to think and understand
ideas. An idea is a product of careful mental efforts.
Property: It is a form of regulation. It is intangible, doesn’t exist in time and space.
Right: A legal entitlement which is recognized and can be protected and the violation
of which is deemed as unlawful and leaves the right-holder with a remedy.
IP: It emanates from human creative labour. It may include original ideas, research
results, critical business information, design, geographical indications.
IPR: Intellectual property rights are those which protect applications of idea and
information that has commercial value. Rights which protect products of human creative
labour i.e. patents, copyrights etc.
Patent: Protects technological invention. It should have novelty, inventive concept and
capable of industrial application. It gives right to make, sell, use, offer for sale, or import
an invention.
Copyright: Right to print, publish, perform or record the subject matter. It protects
creative work i.e. literary and artistic work. It doesn’t require compulsory registration.
Trade Mark: It protects work/symbol which acts as source indicator of goods/services.
Design: It protects visually appealing work and not their functional aspect.
Geographical Indicators (GI): It protects source of goods. Darjeeling Tea, Banaras Saree,
Roquefort Cheese, Mysore Agarbatti, Muga Silk of Asaam etc.
Invention: A new product or process involving an inventive step and capable of industrial
application.
Inventive Step: 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 the person skilled in the art.
Capable of Industrial Application: It is in relation to an invention. It means the invention is
capable of being made or used in an industry.
Patent Agent: A person for the time being registered under the patents act of 1970.
Patentee: The person for time being entered on the register as the grantee or proprieter of
the patent.
B. Duration of IP:
Limited life IP – Can go to public domain

Patents – 20 years (to be renewed every year)
Copyright – Age of authors plus 60 years
Unlimited life IP – Subject to renewal

Trade mark – Granted for 10 years and can be renewed thereafter.
Design – Granted for 15 years and can be renewed thereafter.
GI - Granted for 10 years and can be renewed thereafter.
C. Abbreviations
IPO: Indian Patent Office.

WTO: World Trade Organization.
WIPO: World Intellectual Property Organization.
TRIPS: Trade Related Aspects of Intellectual Property.
PCT: Patent Cooperation Treaty.
Act: Patents act of 1970 as amended time to time.
D. Important Steps in filing Patents
• Patent Specification
• Scrutiny by Patent Office
• Patent Prosecution
• Patent laws in India
• Who can apply for patent
• Requirements of application
• Types of applications.
Benefits of Patent and Patentability Search 5

Contents….
1. Publish or Patent
2. Why People Invent?
3. How Inventions Look?
4. Where to look for Inventions?
5. How to catch an Invention?
6. Getting a Working Disclosure
7. Searching with the Disclosures
8. Outcome of Search
9. What is Patentability Search?
10. Reasons for Ordering Patentability Search.
11. When a Patentability Search is not Required?
12. How to Order a Patentability Search?
13. Limits of Patentability Search
14. Patentability Search Report
1. Publish or Patent
Late Realisation: Rob Perneczky Professor in Imperial College London

What’s Bad about Publication
 Kills Novelty
 Grace period : Take a conscious decision
 Publication : Public domain
 Patenting by others : Credit and stall
commercialization

Strategies that Exist
 File a provisional before disclosure

 NDAs
 Approach the TTO/IPM cell before disclosing
 Strategic disclosure : Limit disclosure to main
result – “what” the technology can do, and
not the “how”

Educating Professors on IPR rules
 Long process
 Default : “Publish or perish”
 Incentives : Promotion, Research Grants

The Grace Period as it Exists
• Section 31, Patents Act

The description of the invention in a paper read by the true
and first inventor before a learned society or published with
his consent in the transactions of such a society
If the application for the patent is made by the true and first
inventor or a person deriving title from him (not later than
twelve months) after the opening of the exhibition or the
reading or publication of the paper, as the case may be.

What needs to be done
 Take a Call : Significant implications
 Time to commercialize the decision on
resources on patenting
 Average patent earns less money that it costs
to get it
 Only about 10% will be commercially
successful

National Institutional Ranking Framework (NIRF)
 This framework outlines a methodology to
rank institutions across the country.
– Teaching, Learning and Resources
– Research and Professional Practices
– Graduation Outcomes
– Outreach and Inclusivity
– Perception
Also ARIIA
NAAC, NBA, Autonomy
 National Assessment and Accreditation

Council
– Assesses and accredits higher education

Institutions in India
 Quality Indicator framework
– Research, Innovation, and Extension
• Number of patents obtained

UGC & AICTE
 UGC requests universities and affiliated

colleges to provide IPR as elective
 The AICTE approval process handbook

mentions the creation of IPR Cell

2. Why people Invent

Patenting has its own reasons
Not all inventions are patentable

Not all inventions need patents
Utility (capable of industrial application)

Mass production (replicability)
Upfront cost (cost benefit analysis)
New and Useful
 Old definition: “Manner of manufacture”
 “Vendibility test” – whether manufacturer
results in a vendible or a sellable product
 Utility connects the invention to business
 Acts of infringement – manufacture, sale,
marketing are acts of business (commercial
activity)
3. How Inventions Look

Electric Bulb

The Printing Press

Telephone

4. Where To Look for Inventions

 Research publications / outcome
 Thesis
 Problem – solving exercises
 Brainstorming sessions
 Projects
Inventions manifest in different places
 Schools : Science Projects

 University : Professor & Students
 Startups: Knowledge Based
 Research Laboratories : Scientists
 Companies : R&D Departments

Look for disclosures
 Publications (can kill novelty)

 Written disclosures (lab notes and thesis)
 Prototypes
 Demonstrations (use)
 Beta – versions (computer related inventions)

5. How to catch inventions
 Look for the disclosure

• Physical embodiments are different from
written disclosure
• Invention disclosure form
• Interviewing the inventor

Importance of disclosure
Disclosure
 Search the prior art
 Draft the patent specification

Requirements of disclosure
 Fully and particularly describe the invention
 Fully and particularly describe its operation / use
 Fully and particularly describe method of
performance
 Disclose the best method of performance – claim
 Claims
–Clear and succinct
–Fairly based on matter disclosed

6. Getting a working disclosure
Through an IDF (Invention disclosure form)

A basic document for identifying and capturing
the IP pertaining to an invention, useful for
understanding the scope of invention and its
enablement.

Parts of IDF
 Contact Information of the Inventor(s)
 Technical Information for Patent
 Public Disclosure & Prior Art
 Market Valuation and Licensing

By interviewing the inventor
 In person over phone

 Series of questions
 Focus on inventive step
 Description, background etc.

Online questionnaire

 Broad questions
 Follow up questions based on the answer to
the earlier questions
 Sample : www. techgrapher.com/ip-clinic

7. Searching with the disclosure
Search within the disclosure
 Search result based on quality of disclosure

 Identify keywords
 Find synonyms for keywords
 Expert / Layman terms
 Avoid Trademarks

Answer for the questions

 What is the object of the invention?
 What is the best method of working the
invention?
 What is the impact of the invention?

Tips for Search
• Avoid Synonyms:
• e.g. Current (Update) / Current (flow of water)
• Search databases (Lesson on “Prior Art”)
• Find Patents
– Related Patents
– Use classification code (Lesson on “Patent
Classification”)
8. Outcome of search
Three Outcomes
 Favorable
 Negative
 Neutral

Patentability Report
Patentability criteria
Novelty
Inventive step

Industrial Application

The Importance of search
 Identify white space: where you can patent
 Avoid patent office objections
 Understand the field – prepare for drafting

9. What is Patentability Search?
 Search for Obviousness
 Search for Inventive Step
 Patentability search not directed towards
novelty
 S.30 – Search for anticipation by previous
publication or Prior claim

List of Sequences
 Search Request
– Time and Cost
– Defines the invention
 Searching for the references using patent databases
 Review the references
 Report the results

Implications in Patentability search
 Does not warrant the validity of any Patent

 Different from enquire of validity of a Patent
 S.12 and S.13 refers to aspect of search
 S.64 refers to the aspect of validity

Patent validity report
 Initiated by a Defendant in an Infringement

Suit
 Initiated by a Patentee to challenge the

invalidity questioned by the defendant
 Initiated by a licensee

10. Reasons for ordering patentability
search
Why Patentability Search?
 Save cost
 Increase the chances of getting a grant
 Improves the quality of drafting
 Analyse Patentable and Non-Patentable features
 Use Prior art references in the application
Commercial Reasons
 Achieving Exclusivity
 Overcome through alternatives
 Add value to your invention

Prosecution history estoppel
 Prosecution history estoppel

- Narrowing down the claim
 Festo Principle
- Understanding the field through the
patentability search
 Patentability report will help in taking
decisions regarding International filing
11. When a patentability search is not
needed?
 Cost on the client

 Time factor
 Vague Technology
 Obscurity in literature

12. How to order a Patentability search
Factors considering the report
 Identify a searcher
 Furnish appropriate information
 Define the scope of search

– Indian Filing
– Foreign Filing / Country specific
– Patent / Non-Patent Literature
 Define the Budget

13. Limits of patentability search
 Availability of databases / record

 Negative approach in searching
 Input given to the searcher
 Absence of key references
 Restricted key words
 Inappropriate IPC Class

14. Patentability Search Report
 Subject matter of the Search
 References constituted from the search
 Discussions on relevant references
 Patentability Criteria
 Conclusion
– Favourable
– Negative
– Neutral
Limitations of Negative Report
 Report may be wrong
 Negative report could be used in Litigation in a

suit
 There is no perfect search

What is an IP Centre
• Many names:
– IP Centre
– IPM Cell
– Technology Transfer Office
– Technology Licensing Office
• Centre or Office that manages IP
• Management:
– Identifying IP (awareness & education)
– Screening IP (patent search)
– Protecting IP (registration)
– Maintaining IP (renewal, enforcement & licensing)

Functions of IP Centre
 Identifying IP (awareness & education)
 Screening IP (Due Diligence)
 Protecting IP (registration)
 Maintaining IP (renewal, enforcement & licensing)

Function: IP Education
 Awareness:
– Clearing doubts on IPR
– Forum for exchanging ideas and information
 Education:
– Basic: Different Types of IP and how to identify/distinguish
them
– Ongoing: Keeping track of new developments in IP
– Advanced: Careers in IP for Professors and Students (IP
Professional, Patent Agent)

Function: Due Diligence
• Quality of IP = Commercialisation Potential
– Different levels of understanding of IP
– Different skills of IP Professionals who draft patents
– IP = Publications
• Quality Test: Patentability Search Report
– Before filing Complete Specifications
– Before post-dating Patent Applications
– Before converting Provisional to Complete Specifications
– By someone who is not drafting the patent

Function: Registration
 Copyright (No registration)
 Patents, Trademarks, Designs etc


Function: Maintenance
 Record keeping
– Renewals, Surrenders, Abandonments, Withdrawals
 Licensing
– Exclusive Licences
– Non-exclusive Licences (Open Licensing Models)
– Patent Pools: Cross-Licences
 Enforcement (Litigation)
– Cease-and-desist Notices
– Infringement Suits (Declaratory suits)
Research Output: IP Protection
 Research Spending (Budget): Input
 IP Protection: Output

What can IP Policy do?
 Synchronise
 Align the mission of the IP centre with the

mission of the institution
– IP Centre: Commercialisation of Research
 Influence the quality and quantity of research

output


 Spell out the mission statement of the IP centre
– Service (Fully subsidised)
– Economic development (create jobs, growths)

IP facilitation Centres
(or)
Research perks
 Mission:
 “to serve and assist researchers in the transfer of institutions
research results to industry for commercial application,
consumer development and public benefit”
 Social responsibility
– Business offices in academia
– CSR funding
– Sustainable development goals 2030 (UN)
– Public research – societal welfare
 What IP Policy will contain

Cost of IP Centre
 AUTM, 2003 Annual Licensing Survey
 One formal disclosure for every $2 million in
research activity in US universities
 One US patent filed for every $5 million in
research expenditure
 One tech transfer or licensing agreement entered
for every $8.5 million in research expenditure

Cost of IP Centre
• 100m research budget / per year
– 50 disclosures
– 20 Patent applications
– 11-12 licensed
• Long-term investment
• > 5 years for licensed technology to become a marketable product
• TTOS need 7-10 years to become successful
• Subsidise the expenses of the office till revenue sets on
• Other options if not internal

Cost of IP Centre
 Long-term investment
– Deal with external organisations on an adhoc
basis
– Set up a smaller office (lesion)
– Many institutions can come together to set up one
(IUCIPRS)
– Government funded TTO’s

The Need for an IP Centre
 Regulatory requirements
 Institutes missions:
– Alignment with the objectives
– Research is the objective, what about commercialisation of research?
– Dissemination = commercialisation (diffusion)

 Quality and quantity of research
– Choice of the type of IP Centre
– Internal, external or mixed

The Need for an IP Centre
 Association of University Technology Managers
(AUTM) 4 reasons for public research
organisations to advance tech transfer

– Commercialisation of research for public good
– Reward, retain, recruit high-quality researchers
– Build closer ties with industry
– Generate income for further research

Types of IP Centers
• Types of Professionals
– Scientists, lawyers, business managers & patent agents.

• Types of IP Centers
– Internal (IPM cell) – Universities and administration
– External (company) – Independent Entity
– Mixed (IPM Cell / Company)

• Infrastructure
– Internal (Dedicated)
– External / mixed (Limited)

Innovation Eco System
• Public sector / Private sector
• Collective Character of innovation

– Horizontal diffusion
– Open innovation systems
• Not Just R&D spending

– Diffusion of new knowledge through the economy

Innovation Eco System
 State to take the risks the private sector will
not take – reap benefits
 Public Policy: Role in the interplay between

sectors and institutions diffusion of
knowledge.

Research Commercialization
 State to take the risks the private sector will
not take – reap benefits

 Public Policy: Role in the interplay between
sectors and institutions diffusion of
knowledge.


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Benefits of Patent and

Dr. (Prof.) Prashant B. Maheshwary

Property: It is a form of regulation. It is intangible, doesn’t exist in time and space.

Trade Mark: It protects work/symbol which acts as source indicator of goods/services.

Inventive Step: A feature of an invention that involves technical advance as compared to

Limited life IP – Can go to public domain

Unlimited life IP – Subject to renewal

IPO: Indian Patent Office.

D. Important Steps in filing Patents

Benefits of Patent and Patentability Search 5

Late Realisation: Rob Perneczky Professor in Imperial College London

Benefits of Patent and Patentability Search 7

Benefits of Patent and Patentability Search 8

 File a provisional before disclosure

Benefits of Patent and Patentability Search 9

Benefits of Patent and Patentability Search 10

• Section 31, Patents Act

Benefits of Patent and Patentability Search 11

Benefits of Patent and Patentability Search 12

 National Assessment and Accreditation

– Assesses and accredits higher education

Benefits of Patent and Patentability Search 15

 UGC requests universities and affiliated

 The AICTE approval process handbook

Benefits of Patent and Patentability Search 16

Benefits of Patent and Patentability Search 17

Not all inventions are patentable

Utility (capable of industrial application)

Benefits of Patent and Patentability Search 21

Benefits of Patent and Patentability Search 22

Benefits of Patent and Patentability Search 23

Benefits of Patent and Patentability Search 24

 Problem – solving exercises

 Schools : Science Projects

Benefits of Patent and Patentability Search 26

 Publications (can kill novelty)

Benefits of Patent and Patentability Search 27

 Look for the disclosure

Benefits of Patent and Patentability Search 28

 Search the prior art

 Draft the patent specification

Benefits of Patent and Patentability Search 30

Benefits of Patent and Patentability Search 31

Through an IDF (Invention disclosure form)

 Technical Information for Patent

 Public Disclosure & Prior Art

 Market Valuation and Licensing

 In person over phone

Benefits of Patent and Patentability Search 34

Benefits of Patent and Patentability Search 35

 Search result based on quality of disclosure

Benefits of Patent and Patentability Search 36

Benefits of Patent and Patentability Search 37

Benefits of Patent and Patentability Search 39

Benefits of Patent and Patentability Search 40

 Identify white space: where you can patent

 Avoid patent office objections