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8/14/2019 A Complete Focus

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A complete Focus

IPR ToolsPatents


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o A patent is an exclusive right granted for an invention.

o Invention can be a product or a process that provides a new way of doing

something, or offers a new technical solution to a problem.

o A patent provides protection for the invention to the owner of the patent.

o The protection is granted for a limited period, generally 20 years.[Territorial right (Patent act 1970)]

What is a patent?


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Protection offered by Patents

o Patent protection means that the invention cannot be

commercially made

Used

distributed or

sold

without the patent owners consent.

o Patent rights are usually enforced in a court, which holds the authority to

stop patent infringement.

o A court can also declare a patent invalid upon a successful challenge by a

third party.


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Rights of a patent owner

o A patent owner has the right to

decide who may or may not use the patented invention for the

period in which the invention is protected.

give permissionor licenseto other parties - to use the invention on

mutually agreed terms.

sell the rightof the invention to someone else, who will then become

the new owner of the patent.

o Once a patent expires, the protection ends, and an invention enters the public

domain.

o The owner no longer holds exclusive rights to the invention, which becomes

available to commercial exploitation by others.


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Are patents necessary?

o Patentsprovide incentives to individuals by offering them

recognition for their creativity and

material reward for their marketable inventions.

o These incentives encourage innovation, which assures that the quality of

human life is continuously enhanced.


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Role of Patents in everyday life

o Patented inventions have pervaded every aspect of human life from

electric lighting (patents held by Edison and Swan)

plastic (patents held by Baekeland)

ballpoint pens (patents held by Biro)

microprocessors (patents held by Intel).

o All patent owners are obliged, in return for patent protection, to publicly

disclose information on their invention in order to enrich the total body of

technical knowledge in the world.


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o It is an ever-increasing body of public knowledge that promotes further

creativity and innovation in others.

o Patents provide not only protection for the owner but valuable information

and inspiration for future generations of researchers and inventors.

Role of Patents in everyday life


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How is a patent granted?

o The first step is the filing of a patent application.o Thepatent application generally contains

the title of the invention

indication of its technical field

the background and a description of the invention and

enough detail to use or reproduce the invention.

To describe it better, descriptions are usually accompanied by

visual materials such as

Drawings

plans or

diagrams

The application also contains various claims, i.e., information

which determines the extent of protection granted by the patent.


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What all can be patented?

o An invention must meet several requirements to be eligible for patent

protection.

o These include, in particular, that the claimed invention:

Consists of patentable subject matter

Is new (novelty requirement)

Involves an inventive step

Is capable of industrial application

Is disclosed in a clear and complete manner in the patent application


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o Finally, its subject matter must be accepted as patentable under law.

o The following are generally not patentable in many countries:

scientific theories

mathematical methods

plant or animal varieties

discoveries of natural substances

commercial methods

methods for medical treatment

What all can be patented?


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o Generally the first step is toperform a prior art search.

o Prior Art

All information available prior to the date of filing of the relevant patent

application against which the patentability of the invention will be

determined.

o There is a serious risk that some reference, or combination of references,

may render your invention non-novel or obvious, and, therefore, unpatentable.

o A prior art patentability search can prevent you from wasting money on a

patent application if the search uncovers prior art references that are likely to

preclude the patenting of your invention.

Procedures for securing a Patent protection


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o A prior art search should extend to all relevant non patent literature, including

Technical and scientific journals

Textbooks

Conference proceedings

Theses

Websites

company brochures

Trade publications and

Newspaper articles.



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o Patent information is a unique source of classified technical information,

which companies may find of great value for their strategic business

planning.

o Most significant inventions are disclosed to the public for the first time only

when the patent or patent application is published.

o Patents and published patent applications provide means of learning about

current research and innovations before the relevant innovative product

appears on the market.

o Patent searches should be part of the essential inputs to any companys R&D

effort.



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o Patents and patent applications published by many patent offices are

accessible on-line, thus making it easier to conduct prior art searches.

o A list of IP offices that have made their patent databases available online,

free-of-charge, may be found at: www.wipo.int/ipdl/en/resources/links.jsp.

o Most national patent offices offer patent search services for a fee.

o It is not easy to perform a high-quality patent search.

o Patent jargon is often complex and obscure and professional searching

requires considerable knowledge and expertise.

How and where can you conduct a prior art search?


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o A Prior Art search is performed.

o A patent application has to be prepared and submitted to the relevant

national or regional patent office.

o The application will include

a full description of the invention

the patent claims that determine the scope of the patent applied for

drawings and

an abstract.

How to apply for patent protection?


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o Who will prepare the application?

The task of preparing a patent application is generally performed by a

patent attorney or agent who will represent your interests during the

application process.

o Is there difference in procedure across countries?

Note that there may be important variations between countries and it is

always best to check with the patent office of the relevant country or a

patent law firm in the relevant country to obtain up-to-date information

on procedures and applicable fees.

How to apply for patent protection?


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Patent Application Processing


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o Patent protection should be applied for as soon as all the information required

for drafting the patent application is available.

o Reasons for ensuring that the application is filed early include the following:

In most countries worldwide patents are granted on a first-to-file basis.

Filing an application early is important to ensure that you are the first to file an

application on that particular invention so that you do not lose your invention to

others.

Applying for patent protection early will generally be useful if you are seeking

financial support or wish to license your invention to commercialize it.

Patent can be enforced only after it has been granted by the relevant patent

office, which is a procedure that may take a few years.

When should you file a patent application?


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o Once you have filed your application in one country or region, you normally

have 12 months to file an application for the same invention in all the

countries of interest to your business in order to enjoy the benefit of the filing

date of your first application.

o This may be a problem if the costs of applying in various countries and paying

the maintenance fees are too high for your company.

o One way of mitigating this problem, is by postponing the payments of

translation and national fees for a period of 30 months by using the Patent

Cooperation Treaty (PCT).



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o When deciding on the timing for filing a patent application, it is important to

bear in mind that the application should be filed before disclosing the

invention.

o Any disclosure before filing the application (e.g., for test-marketing, to

investors or other business partners) should be done only after signing a

confidentiality or nondisclosure agreement.



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The legislation of some countries provides a grace period of 6 or 12 months,

from the moment an invention was disclosed by the inventor or the applicant

until the application is filed, in which the invention does not lose its

patentability because of such disclosure.

A company may disclose its invention, for example by displaying it in a trade

show or publishing it in a company catalogue or technical journal, and file the

patent application within the grace period without the invention losing

patentability and being barred from obtaining a patent.

What is Grace period?


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Patents Examples


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Patents Examples


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Case Study

CASES Patents


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Nike Vs Adidas

o CASE NAME : Nike Vs Adidas

o PLAINTIFF : Nike International Ltd. ("Nike")

o DEFENDANT : Adidas

o CAUSES OF ACTION : Patent Infringement

o TRIAL COURT : U.S. District Court for the Eastern District of Texas.

o DATE : 17 Feb 2006


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o The well known sports giant NIKE had invested heavily in its SHOX cushioning

technology, which debuted in the year 2000.Also it was protected by 19 separate

patents.

o In spite of the fact that Nike had properly registered and patented its SHOX

cushioning technology, Adidas has indulged in the manufacturing and selling of shoes

by refashioning Nikes technology. Adidas calls it as the a3 cushioning system

Inference:

o Since Nike has already patented its technology, Adidas had no right to use it and

hence its clearly a case of Patent infringement.

o Also, by manufacturing its products on Nikes technology, Adidas has caused a

damage to the uniqueness of Nikes footwear.

Nike Vs Adidas

presented by Anusha Murthy, B.F Tech 2004 - 2008

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