IP and Technology: Department of Biotechnology, IIT Guwahati
IP and Technology: Department of Biotechnology, IIT Guwahati
IP and Technology: 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
• Products include blades, razors, shaving preparations and hair epilation devices
among others.
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PATENT
Filing
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Filing of the patent application
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
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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
Types of Application
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
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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]
Technical/Substantive Examination
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
• 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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