Analyzing Patentability of Inventions

By Dr. Kalyan C. Kankanala kalyan@brainleague.com Blog: www.sinapseblog.com Course Materials: www.onlineipcourses.com

Brain League IP Service -2011

Patentability requirements
Patentable subject matter Industrial Applicability Novelty Inventive Step Specification

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Inventions Subject Matter Usefulness Novelty Non-obviousness

Kalyans Patent Filter Model

Specification Patents
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Patentable Subject Matter

Product or Process - Section 2(1)(j) Computer Program Genetically modified pig Business method Massage technique
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Exclusions
Section 3(d) New form Efficacy New property or use Mere use of known process New product New reactant
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Exclusions
Explanation: Salts, Esters, Ethers, Polymorphs, Metabolites, Pure forms, Particle size, Isomers, Mixture of isomers, Complexes, Combinations and other Derivatives of a known substance considered same substance Efficacy Novartis case
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Exclusions
Plants, Animals and Parts (Section 3(j)) Computer Programs Per Se (Section 3(k) Medical Methods (Section 3(i)) Traditional Knowledge (Section 3(p))

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Example
Ram, a researcher at IISc, isolates the gene responsible for milk production in cows. He modifies the gene and inserts it into a cow and creates a genetically modified cow that produces higher quantities of milk. Ram approaches you for advise on patentability. Is his invention patentable subject matter?
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Example
Vishnu develops a computer program for playing movies in all formats. His program is very special because of its small size and suitability for installation on symbion, android and other mobile operating systems. Is this invention patentable subject matter?

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Example
Manu invents a process of massaging that includes the following steps: Use of a combination of Kerala, Thai and European massage techniques; Playing specific music for each technique to enhance relaxation; and Application of an Ayurvedic paste with gentle massage. The purpose of the massage is to de-stress and relax. Is it patentable subject matter?
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Example
Banana Nair inherits traditional knowledge with respect to Ayurvedic formulations for improving immunity and promoting healthy living from his ancestors. After researching on the formulations, he isolates active ingredients from three of the formulations and prepares tablets for enhancing immunity. Is his invention patentable subject matter?
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Industrial Applicability
Section 2(1)(ac) - Capable of Industrial Application Make Use Repeat Industry

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Novelty
Section 2(1)(l) - New Invention Prior Publication Public Knowledge Public Use On Sale Public Display Public Working
Brain League IP Service -2011 Single prior art reference

Inventive Step
Section 2(1)(ja) Technical Advance or Economic Significance and Not obvious to a person skilled in the Art.
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Secondary Indicia
Commercial Success Copying Praise by expert Unexpected results Long felt need

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Example
Invention Chair with Wheels Prior Art Chairs Tables with wheels
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Specification
Section 10 Written Description Enablement Best Mode Claims Object: NoticeBrain LeagueDissemination and IP Service -2011

Example
Pencil with Eraser fastened to it Prior Art Pencils Erasers

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Brain League IP Service -2011