overview of patents

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Overview: Patents

Speaker: Praveen Pani

September 08, 2010


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ContentsGeneral Procedures

Patentability and Important Statutes

Types of Patents and Applications

Structure of a Patent DocumentSections and Terms

Requirements for Complete Specifications


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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.


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Information & documentation for

Patent Application Inventors to maintain proper Log-books (First to

invent: US)

A confidentiality agreement is a documentdesigned to protect the confidentiality of ideas,inventions, notes, and any other technical orproprietary information; It should be signed by theresearcher/inventor and anyone outside thecompany involved in a discussion regardingresearch.


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Patentability: US35 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 anduseful process, machine, manufacture, or composition ofmatter, or any new and useful improvement thereof,may obtain a patent, subject to the conditions andrequirements of this title.


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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 theintended purpose would not be called useful, and

therefore would not be granted a patent. mere idea or suggestion are not patentable


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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 ofmatter and materials are patentable. Incremental improvements onknown processes also may be patentable.

Useful:The invention must have some application or utility or be animprovement 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 byshowing that practicing the invention yields surprising, unexpectedresults.


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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, orpatented or described in a printed publication in this or a foreigncountry, before the invention thereof by the applicant for patent,


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Important Statutes Contd.

35 USC 103

A patent may not be obtained, if the differences

between the subject matter and the prior artare such that the subject matter as a wholewould have been obvious to a person havingordinary skill in the art to which said subject

matter pertains. (frequent objection)


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Types of Patents Utility Patents

May be granted to anyone who invents or discovers anynew and useful process, machine, article of manufacture,

or composition of matter, or any new and usefulimprovement thereof

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

Plant Patentsmay be granted to anyone who invents or discovers andasexually reproduces any distinct and new variety of plant


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Types of ApplicationsNational Application

National applications are generally filed at a national patent office,such as the United Kingdom Patent Office, to obtain a patent in thecountry of that office. The application may either be filed directly at

that office, or may result from a regional application or from aninternational application

Regional ApplicationA regional patent application is one which may have effect in a rangeof countries. The European Patent Office (EPO) is an example of aRegional patent office.

International ApplicationThe PCT system enables an applicant to file a single patentapplication in a single language. The application, called aninternational application, can, at a later date, lead to the grant of apatent in any of the states contracting to the PCT.


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Types of Applications

Provisional (PPA)

Complete/Regular (RPA)/Non-provisional Continuation Application (CP)

Continuation-in-part (CIP)

Divisional


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USPTO process

Filing Examination Office action Submissions from the applicant/agent Subsequent Office action Further submissions

Re-examination U/S 302 OR 311


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Structure of a patent document


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Sections in a Patent Documents Title

Field of the Invention

Background

Summary

Brief Description of Figures

Drawings

Definitions

Detailed Description

Claims

Abstract


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Patent Document - Terms Assignee

Inventor

Filing date Grant/Issue date/Date of Patent

Priority date

Patent Number

Publication Number Application Number

IPC class


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35 U.S.C. 112: Specification

The specification shall contain a written descriptionof the invention, and of the manner and process of

making and using it, in such full, clear, concise, andexact terms as to enable any person skilled in the artto which it pertains, or with which it is most nearlyconnected to, to make and use the same, and shallset forth the best mode contemplated by the inventor

of carrying out his invention.


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Title 37 CFR 1.71Specifications 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 theimprovement relates, if the invention represents animprovement

In case of the invention being an improvement, the descriptionshould be confined to the specific improvement and to suchparts 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


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Requirements: Specification Description Requirement: To draw the boundary covered by

the invention (support for claims)

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

Best Mode Requirement: disclose what the inventor believesto be the best mode

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


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Thank you!!