IP and Technology

Dr. Latha Rangan

Department of Biotechnology, IIT Guwahati

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Source: pganguli
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Source: IITKG
Technology Communication

• Article
• Short communication/Rapid communication
• Review article
• Report
• Research Correspondence
• Books
• Bulletins
• Theses
• Patent Specification

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Source: IITKG
 Inventor Attribution
• There can be many inventors – no limit
• Better name than not name/omit any person – non-mentioning can lead to
patent invalidity
• Consistent guidelines should be established on which inventorship is based
• Each person to have made an inventive contribution to at least 1 claim but
not necessarily every claim. Contributions of individuals should be considered
in view of the claims and should be Documentation of claims is essential as
claims may be cancelled during prosecution time
• All the individuals involved in the project should be consulted or interviewed
• Who can decide on the number of inventors
– Group
– Research head
– Collaborating groups
– Patent Lawyer 5
Source: IITKG
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 Gillette

• Manufacturers of male and female grooming products, writing instruments and

correction products, tooth brushes, oral care appliances, and alkaline batteries.

• Products include blades, razors, shaving preparations and hair epilation devices
among others.

• Internationally recognized brand names such as BRAUN,

PARKER PEN, WATERMAN, LIQUID PAPER, ORAL
B, DURACEL….. Flagship Brand .. GILLETTE

• Products protected and nurtured by Trademarks in various parts of the world

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PATENT
Filing

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 Filing of the patent application

• Application for patent can be filed only on

the payment of full Fee
• Filing fee is now charged on the basis of
number of pages and number of claims made
in the patent document
• No extra fee is charged upto 30 pages and 10
claims
• Different fee for natural person, Small entity,
and Other Legal Entity
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 Indian Patent Law

HISTORICAL DEVELOPMENT …
• The Act of 1856 based on UK Act Of 1852
• The Act of 1859,
• The Patterns & Designs Protection Act, of 1872
• The Protection of Invention Act, of 1883
• The Patents & Designs Act 1911
• The Patents Act of 1970
• Further Amendments to The Patents Act of 1970
– 1999, 2002
– 2005

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 First Patent Granted in 1856

Early bird: George Alfred DePenning (First Indian patent “Punkah Pulling Machine”)

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 Patents (Amendment) Act, 2005

20 years term

Product patent allowed

Early publication introduced [Section 11 A(2)]
Pre-Grant (any time before grant of patent) opposition [Section 25(1)]
Post Grant Opposition (up to one year after grant of patent) [Section 25(2)]

162 Sections, 139 Rules

4 Schedules
Schedule I : Prescribed fees for different purposes
Schedule II : Prescribed forms for different purposes
Schedule III : Prescribed form of the Patent (LP)
Schedule IV : Prescribed costs to be awarded in various
proceedings before the Controller
(www.ipindia.nic.in)
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 The Patents (Amendments) Act 2005

• Product/Process patent for inventions in all fields of

technology
• New forms of known substances excluded in order to
prevent ever-greening of patent
• Rationalization of opposition procedure
– Introduction of pre-grant opposition by
representation and
– Post – grant opposition
• Compulsory license for manufacture and export of
pharmaceutical products to any country having
insufficient or no manufacturing capacity

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 Brief Patenting Procedure
Pre-filing : Why?
Who?
When?
What & What not?
Drafting of specification
Unity of invention
Types of application
Types of patent specification
Filing: Where?
How?
Processing: Formal requirements
Technical requirements
Granting: Term of patent
Date of patent

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 Pre-filing

Who???
Individual (Natural Person) i.e, Inventor
Assignee
Legal entity
When???
Sooner the better (First to file practice)
Immediately after invention is completed/developed for
commercialisation (in certain cases immediately after
conceptualization). Before any publication or commercial
usage or communication to others
Delay in filing may cause
Other invention of substantially same nature by competitor may
take the advantage of priority, depriving the true and first inventor
Prior publication of invention by inventor or others may damage the
novelty

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 Pre-filing……

What ???
Patentable Inventions which are Novel
Inventive
Industrially Applicable
u/s 2 (1) j of the Act
Invention
Prior Art

[So, complexity of invention is not a

criterion for patentability]

What Not ????

Non-patentable Inventions as detailed u/s 3, 4, 35 of the Act
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 Pre-filing……

Types of Application

Ordinary: Application originating from India (Sec 7)

Convention : Application originating from convention countrie

(Sec 135)

PCT National Phase : Application entered India through PCT

route

Patent of Addition : When application is made in respect of

improvement or modification of the main invention

Divisional Application : When more than one invention is

disclosed in a single specification (Sec 16)
 Fees(Rs) at the time of application (Schedule – I)(E-Filing)

Natural person Small Entity OTHERS

Application for Grant of Patent 1600 4000 8000
(For 30 sheets & 10 claims)
Request for Examination 4000 10000 20000
(Form-18)
Request for Expedite Examination 8000 25000 60000
(Form-18A)(only online)
Request for Early Publication 2500 6250 12500
(optional)(Form-9)
Fees After Grant of Patent 76,800 1,92,000 3,96,000
Renewal Fees (for 20 years)
(For physical filing – 10% more) (Declaration of Small entity on Form-28)
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 Inventions Related to Biological Materials

If any invention is based on research on

biological resources obtained from India, the
applicant has to get the approval from National
Biodiversity Authority, India, before grant of
the patent.

Section 6 of Biodiversity Act, 2002

www.nbaindia.org
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 Examination Procedure
Filing of the application
Request For Examination
( RFE)

Publication under section

11A

Pre-grant
Opposition
Examination

Post-grant
Grant of Patent Opposition
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 Examination
• Examination: Not automatic
• Request to be made by applicant or third
parties, Examination report to applicant only
• A request for examination can be filed in form
18 within 48 months from the priority date or
filing date whichever is earlier
• Expedite Examination for startup applicant or
application where India is elected as ISA/IPEA

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 Technical groups
 All the controllers and examiners have been divided
into 4 groups
 Groups have been constituted according to field of
technology namely Chemical, Biotechnology,
Electrical and electronics and Mechanical and allied
engineering
 The applications are referred to examiners as per
their field of Specialization
 Applications are examined as per serial order of
the request for examination
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 Examination [u/s 12, 13]

Formal Examination (prior to technical examination)

Forms, Fees, Dates, Documents (Priority, assignments etc.)
Specification ,Abstract ,Sequence list (also soft copy),
Power of attorney

Technical/Substantive Examination

Patentability - Exclusions - u/s 3 (non-patentable)

u/s 4 (atomic energy inventions)
u/s 35-38 (defense related)

Novelty test
Sec 2(1) Inventive step
j Industrial applicability

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 Revocation [Section 64-66]
At any time during term of patent, on petition of any person or of the Central
Government, by the Appellate Board or on a suit for infringement of the patent, by
the High Court on any of the following grounds
Not in public interest (Section 66)
Failure to comply with the request of the Govt. to make the patented
invention
Non-working of the patent Prior claiming in patent granted
wrongfully obtained Lacking in novelty with regard to prior
knowledge or prior use
Does not involve inventive step
Invention is not useful (invention will not work out/or may not give
desired result)
Not enabled (does not describe the method by which invention is to
be performed )
Claims are not fairly based on the matter disclosed in the
specification 26
 Compulsory License

Provided to any person only after 3 years of grant of patent, if

Public requirement not satisfied, or

Not available to public in affordable price, or
Not worked in India

• SURRENDER OF PATENT
A patentee at any time by giving
notice to the Controller, may offer to
surrender his/her patent

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