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PATENT:
Patent is a right granted for a specified period (20 yrs) by the
government of country to an inventor when he discloses the procedure
leading to an invention to the Comptroller of Patent Office.
PATENTABILITY CRITERIA:
Patent
is granted to inventions in any fields. The invention should be new, novel
and should not be obvious to a
person
skilled in art. That means all that is known in that filed of art cannot
be granted patent. Invention is considered new and novel when it
removes any difficulty or substantially enriches the state of the art.
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Publication
of paper presented before learned society -
An invention claimed in a
complete specification shall not be deemed to have been anticipated by
reason only of-
(i) The description of the
invention in a paper read by the true and first inventor before a learned
society or published with his consent in the transactions of such a
society, if the application for the patent
is made by the true and first inventor or a person deriving title from him
[not later than twelve months] after the opening of the exhibition or the
reading or publication of the paper, as the case may be.
WHAT CONSTITUTES PUBLICATION? It is strongly advised to all inventors in
their own interest not to publish their invention or even disclose
their invention to any third party before applying for patent.
Though this is very difficult to
answer yet articles in newspapers, newsletters, bulletins, textbooks,
journals, theses, reports, and even letters to the editor all qualify as
publications. Oral presentations may constitute publication, as would
distribution of a paper at a public meeting. Disclosure through electronic
communications, such as e-mail, etc. is considered publication. The key
test is that the publication be enabling—it must describe the invention in
sufficient detail that it could be duplicated or put into
use.
In the United States, patent rights are granted to the
"first to invent" system is used and an inventor has a grace period of one
year to file a patent application after disclosure through
publication.
While in India the first to
file system is employed, in which, among persons having filed the same
invention, first one is granted a patent, therefore, a completed invention
should be filed promptly. The Indian Patent
Office suggestion (from Patent Office Web site) to the inventors
is,
"The most common
of mistake is to publish their inventions in newspapers or scientific and
technical journals, before applying for patents. Publication of an
invention, even by the inventor himself, would (except under
certain rare circumstances) constitute a bar for the subsequent patenting
of it. Similarly, the use of the invention in Public, or the commercial
use of the invention in public or even in secrecy, prior to the date
of filing patent application would be a fatal objection to the grant of a
patent for such invention, thereafter. There is, however, no objection to
the secret working of the invention by way of reasonable trial or
experiment, or to the disclosure of the invention to other
confidentially."
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WHAT ARE NOT PATENTABLE:
Inventions relating to Atomic Energy and following are not inventions
within the meaning of Patent Act,–
(a) an
invention which is frivolous or which claims anything obviously contrary
to well established natural laws;
(b) an
invention the primary or intended use or commercial exploitation of which
could be contrary to public order or morality or which causes serious
prejudice to human, animal or plant life or health or to the
environment;
(c) the
mere discovery of a scientific principle or the formulation of an abstract
theory or discovery of any living thing or non-living substance occurring
in nature;
(d) the mere
discovery of any new property or new use for a known substance or of the
mere use of a known process, machine or apparatus unless such known
process results in a new product or employs at least one new reactant;
(e) substance
obtained by a mere admixture resulting only in the aggregation of the
properties of the components thereof or a process for producing such
substance;
(f) the mere
arrangement or re-arrangement or duplication of known devices each
functioning independently of one another in a known way;
(h) a method
of agriculture or horticulture;
(i) any
process for the medicinal, surgical, curative, prophylactic diagnostic,
therapeutic or other treatment of human beings or any process for a
similar treatment of animals to render them free of disease or to increase
their economic value or that of their products.
(j) plants
and animals in whole or any part thereof other than micro-organisms but
including seeds, varieties and species and essentially biological
processes for production or propagation of plants and animals;
(k) a
mathematical or business method or a computer programme per se or
algorithms;
(l) a
literary, dramatic, musical or artistic work or any other aesthetic
creation whatsoever including cinematographic works and television
productions;
(m) a mere
scheme or rule or method of performing mental act or method of playing
game;
(n) a
presentation of information;
(o) topography
of integrated circuits;
(p) an
invention which, in effect, is traditional knowledge or which is an
aggregation or duplication of known properties of traditionally known
component or components.
Patent
is a territorial right and can be granted and enforced in a country only.
That means that if you want Patent protection in Japan then you will have
to file the Patent Application with patent office in Japan.
INVENTIONS NOT PATENTABLE
Section 3.
What are not inventions.- The following are not inventions
(hence nonpatentable under the Act) within the meaning of this
Act,-
(k) a
mathematical or business method or a computer program per se or
algorithms;
The words "as
such" or "per se" narrow the scope of excluded subject matter and
increase the probability of an invention to get patent protection, subject
to some conditions. The condition is to get a technical effect when
performed on some hardware.
So that means
computer program as such or mathematical algorithms can be patented if
they are guided towards solving of a technical problem prevailing in a
particular prior art. Since there is no case law or any other material
available in India.
INTERPRETATION OF SECTION 3(K) OF
THE PATENTS ACT, 1970.
The following
will be of persuasive value, in absence of direct materials:
-
1.
Case law laid down by
the US Supreme & Federal Circuits and by European Patent Office, if
facts are identical.
2.
Articles written in
various journals and law reviews relating to patentability of Computer
Program.
3.
International treaties
to which India is under obligation to amend her national laws to meet her
contractual obligations e.g. TRIPS, WTO, WIPO, etc.
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BENEFITS OF PATENT
In India Patent
is often considered as high profile activity contrary to its reality. It
is often perceived that Patent is only for researchers and scientists,
this is not true always. Innovative spirit is even found even in an
illiterate person, who is trained by his own experience.
We should
realize that the innovative spirit and creativity should be protected in
every person. The person inventing any invention should be able to
exploit it commercially. protect
advances made in a technical field. Patent is granted when the invention
is found to be new, novel, contain an inventive step, and capable of
industrial application.
New means that the invention does not
exists in the prior state of the art relating to a particular technical
field.
Novelty means that the invention must not
have been publicly disclosed, anywhere in the world, before the date of
filing of the patent application.
Inventive
Step means that
the invention should not be obvious or which can be anticipated by a
person skilled in that prior art.
Industrial
use is another
criterion which has to be fulfilled before grant of Patent. The invention
should be such that it is used in any industry not applicable across the
board. It should be used in particular field not be general.
A patent for an
invention is granted by the government to the applicant, and gives him the
right for a limited period to stop others from making, using or selling
the invention without permission. In return for this right, the applicant
discloses the details of his invention in sufficient detail so as to
enable a person skilled in prior art to perform the invention. When a
patent is granted, the applicant becomes the owner of the patent. Like any
other form of property, a patent can be bought, sold, licensed or
mortgaged. Patents are territorial rights, so an Indian patent will only
give the owner rights within India and rights to stop others from
importing products into Indian Territory.
A
study conducted by UKs European Social Research Council found that
there is under-use of patent information for technological information
searches.
The
barriers that we identified are as follows:
-
Patents are written in a
difficult mixture of technical and legal language.
-
Patent online searching services
are considered expensive.
-
SMEs would like to conduct (more)
patent searches but do not have the resources (financial and/or time)
either to start or to increase their level of use.
-
Patent information is perceived
by some SMEs as having no, or low relevance to them.
-
SMEs experience problems in
getting access to patent information.
-
It is likely that some SMEs who
could benefit from using patent information are not aware of its
potential.
In India also,
the non-utilization of Patent information and ignorance of the fact that
Patent information is not only for scientist but also for businesspersons
and Small Scale industries is major problem.
A patent
document contains:
TITLE:
Title defines in brief the Patented
invention.
ABSTRACT:
Abstract contains a concise summary
of the invention described in a patent application. It should include all
the most important technical features of the invention
DESCRIPTION:
Description
contains full and detailed explanation of the invention and how it
works.
DRAWINGS:
One or more
specially-prepared figures filed as a part of a patent application to
explain and describe the invention. As a rule, chemical patents will
include chemical formulae in the description of the invention and/or in
the examples.
So a Patent
contains wealth of information. More than 85% of the Patent information is
never published anywhere. It is exclusively found in Patent
Document.
Patent
information is particularly useful to small & medium Enterprises.
Patent information is useful for SMEs for a number of reasons. Probably
the most important one is that patents are the only source of technical
information which SMEs may find of great value for their business
planning. Most inventions are disclosed to the public for the first time
when the patent is published. Thus, patents provide a means of learning
about current technology, research and innovations often long before new
products appear on the market. The technical information contained in
patent documents can provide SME with important insights that may be used
to:
-
To reduce unnecessary expenses in
researching what is already known
-
Identify and evaluate technology
for licensing and technology transfer
-
Identify alternative technologies
-
Know the latest technologies in
desired field of expertise
-
Find ready solutions to technical
problems
-
Get ideas for further innovation
From the point
of view of the commercial strategy of the enterprise, patent information
would help to:
Finally, the
information contained in patent documents could also be used by SMEs
to:
-
Avoid possible infringement
problems
-
Assess patentability of your own
inventions
-
Oppose grant of patents wherever
they conflict with your own patent
Expired Patents
are good source to use the knowledge. Because as the Patent expires or
lapses anyone can make use of the invention.
It is high time
when one should realize the benefits of Patent information. This
information can give a boost to the small and medium enterprises going for
Product development, research and development
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RIGHTS OF A PATENT HOLDER:
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. The
patent owner may permit to, or license, other parties to use
the invention on mutually agreed terms as long as patent is in
force.
INTERNATIONAL PATENT
Though
the term international Patent only means that Patent filed in one country
can treated filed in other designated countries as on date of filing in
one country if filed within 12 months from date of application for the
purpose of priority date. So if one files an application for International
Patent in India that will be transmitted to an International Bureau that
will further transmit the application to the Patent Office of the
designated countries, which will then examine it whether it can be
Patented under their respective Patent Laws.
For
example: A scientist "Mr. X" files a Patent Application in Indian
Patent Office under Patent Cooperation Treaty (PCT) route on 1-1-2004 and
wants to file Patent Application in Denmark. So the Indian Patent Office
shall be the receiving office for such application and then transmit the
application to Patent Office of Denmark and then Mr. X has to file his
Patent Application in prescribed form under Patent Act of Denmark within
12 months starting from 1-1-2004.
Form for PCT Application
(International Patent)
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PRIOR ART
All
that is known in particular field of knowledge together forms prior art as
on the date of application is prior art. It should be noted that though
the Patent is granted in one country but any document published in any
country is called prior art.
PATENT SEARCH:
Patent
search is important, time consuming and complex process. There are many
different modes of search.
1.
Paper
based search is outdated as it involves search through application filed,
journals, etc. in Patent Office.
2.
Electronic
search is more popular it involves search through
a)
Electronic
Databases in CDs like Delphion. This process is costly and requires
frequent upgradation.
b) Online search like through
European Patent Office's esp@cenet which is a free
internet service from the European Patent Office. It makes a
search in 45 million patent documents and is constantly upgraded.
esp@cenet had data 38,3 million patents from 71 countries, of which 22.0
million have a title, 17 million have an ECLA class and 5.3 an abstract
in English.
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PATENT CLASSIFICATION: The International Patent
Classification is a hierarchical classification system comprising
sections, classes, subclasses and groups
(main groups and subgroups). The of the IPC, which is in
force from January 1, 2000, consists of 8 sections,
120 classes, 628 subclasses and approximately 69,000
groups.
Every subdivision of the IPC is indicated by a symbol and has a
title. The IPC divides all technological fields into eight
sections designated by one of the capital letters A through H. Each
section is subdivided into classes which symbols consist of the section
symbol followed by a two-digit number. In its turn, each class contains
one or several subclasses which symbols consist of the class symbol
followed by a capital letter, for example, A 01 B.
Each subclass is
broken down into subdivisions referred to as "groups", which are either
main groups or subgroups. Main group symbols consist of the subclass
symbol followed by a one- to three-digit number, the oblique stroke and
the number 00, for example, A 01 B 1/00. Subgroups form subdivisions under
the main groups. Each subgroup symbol includes the subclass symbol
followed by the one- to three-digit number of its main group, the oblique
stroke and a number of at least two digits other than 00, for example, A
01 B 1/02.
There are three
types of Patents granted : -
1.
Utility Patent: -
This is the most
important type of Patent it is granted on the functional aspect of the
invention. This type of Patent is most sought after and requires a lot of
skill in drafting of the application and prosecuting it before a Patent
Office. The functional utility of the invention is protected.
2.
Design
Patent: -This type of Patent
is granted to the ornamental or external appearance of the invention. If a
design is of functional necessity then it cannot be registered for Design
Patent. For e.g the aerodynamic shape of a plane cannot be registered as
design patent, as the shape is very important for the smooth functioning
of the invention itself.
3.
Plant Patent : -
This type of
Patent is granted for Plant variety made through asexual reproduction of
plant varieties.
A
Patent contains following things: -
(A) Title
of the invention this is the description of the invention by the
inventor himself.
(B)
Cross-reference to related applications, if there are any invention
which are found to be closely related to the subject matter under
application for grant of Patent.
(C)
Background of the invention, this is very important part of an invention
as it helps the patent examiner to ascertain what was the prevailing
problem in the particular state of the art, which led to the invention.
So a lot of importance should be given as it makes a lot easier,
practical and narrows the spectrum of the examiner, who need not have to
waste his time and resources in ascertaining the
(D) Specification
it includes Abstract, description, drawings and claims
(E)
Abstract this is brief description of the invention and should not
exceed more than 150 words according to Patent Rules,
2003.
(F)
Claim(s) this is a techno-legal part of the Patent and hence most
important part, as claims define the scope of invention. It is a
unilateral statement made by inventor in his own words to set boundaries
for his patent.
(G)
Drawings are integral part that gives a visual description of the
invention and often required by the Comptroller.
(H)
Description of the invention sought to be protected is an important
perquisite of grant of Patent. There is no hard and fast rule as
to what a description should contain but it should contain as much
information as would require a person skilled in prior art to make that
invention as directed.
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FILING OF PATENT:-
Patent
is filed in India under two modes:-
A)
National
Patent
B)
International Patent under PCT
route.
Forms
are prescribed under rule 2 of the Patents Rules, 2003 given in Schedule
II of the Patents Act 1970 as amended by the Patents Amendment Act,
2002.
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Patent of Computer Program : -
Computer
program is basically a means to make use of the hardware. Computer
program is set of detailed instructions that regulate interactions
between various components or peripherals of a device. Making it perform
a particular task upon receipt of an external stimulation.
It
is a popular myth regarding a computer program that the result or output
is only in either form of a graphics, text or any other form of data or
information, when we talk in terms of patent of computer program it may
be also in form of any effect perceived by our senses. For e.g movement
of a die cast on happening of a certain event controlled by software.
Normally
a computer program consists of a mathematical algorithm. A mathematical
algorithm need not be only related to numbers but it can also define
non-mathematical problems as well. Basically the algorithm represents
the act of thinking and for every invention this act is penultimate to
the invention itself.
"The
board took the following definition from C .Sippl and C .Sippl ,Computer
Dictionary and Handbook 23 (2d ed.1972):
algorithm
–
.a
fixed step by step procedure for accomplishing a given result ; usually
a simplified procedure for solving a complex problem, also a full
statement of a finite number of steps; 2.a defined process or set of
rules that leads and assures development of a desired output from a
given input. A sequence of formulas and/or algebraic / logical steps to
calculate or determine a given task; processing
rules."
An
algorithm is a procedure or, which is defined or controlled so as to
perform a predetermined task, whose result/output is a definite. And
further the procedure is fixed with a degree of certainty that is proved
by mathematical theory. Hence, if make certain calculations with a
particular algorithm with same input we will get the same output with
same quality even if we perform that calculation a million
times.
Supreme Court
in Benson Vs. Gottschalk 409 U.S. 63 described that a mathematical
algorithm means A procedure for solving a given type of mathematical
problem is known as an 'algorithm.' This was a very narrow definition
thus computer program incorporating a mathematical algorithm were
considered outside the purview of subject matter of
patents.
Supreme Court
in Diamond Vs. Diehr 450 U.S. 175 defined the term 'algorithm' in a
wider meaning than adopted previously:
A fixed
step-by-step procedure for accomplishing a given result; usually a
simplified procedure for solving a complex problem, also a full
statement of a finite number of steps.
A
defined process or set of rules that leads and assures development of a
desired output from a given input. A sequence of formulas and/or
algebraic/logical steps to calculate or determine a given task;
processing rule. So we see a change in definition makes the scope of
patent of computer program a lot easier.
Types
of Computer Programs: -
There
are generally two types program: -
1.
Utility
Program:
- This type of software is responsible to control the basic interaction
between the raw hardware, peripherals and various components and the
application software. It basically coordinates between the various
components to give an efficient and better use of the machine. It is
also very important from legal point of view, as normally all the log
files and records of the usage and extend is recorded by the Utility
Program. An example of this type programs are the operating
systems like Windows NT, UNIX, etc. A utility program is the first level
of software between the Hardware and the user. It usually coordinates
between the user’s commands and the Application Program,
2.
Application
Program:
- This type of software is highly specialized and advanced program.
And is used to perform highly specific and sophisticated
tasks.
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WHY PROTECT COMPUTER PROGRAMS THROUGH
PATENT
Earlier
Computer Programs received protection under Berne Convention as
copyright of literary works. India was also giving protection under her
Copyright Act, 1957. But since copyright protection is only extended to
the expression of the idea and not the idea itself. Protection was given
to source code, object code and screen displays as "look & feel"
theory.
The main benefit of protecting
computer software through the patent system is the strength and wide
area of protection provided by the patent laws. An owner of a patent may
prevent all others from making, using, or selling the patented
invention. A patent protection protects the basic underlying technical
idea or principle behind that invention.
On the contrary, copyright law
can only prevent the copying of a particular expression of an idea. In
context with computer software, copyright law can be used to prevent the
complete copy of a software program which is literal copying, as well as
the copying of a portion of software code.
The benefits of obtaining patent
protection can be beyond one's expectation, as demonstrated in Stac
Electronics' Vs. Microsoft Inc. Stac had brought many count's of claim
as Copyright infringement of Source code of the mathematical algorithm
used in a data compression software being developed as a joint venture,
they also brought breach of contractual obligations, under protection as
trade secret but they managed to win only on ground of patent
infringement. As a result they got a $120 million patent infringement
award against Microsoft based on data compression
patent.
Since
as of general trend in the world is that more than half of 128 countries
of the world are giving patent protection to computer programs, this
gives a clue that patent protection gives adequate protection to the
programmers. While copyright protects the source code, object code and
the look and feel appearance of the display on the screen.
In the appeal
filed by IBM before the Technical Board of Appeals against the decision
of examining division of European Patent Office. One of the argument put
forth was that the ideas and Principles underlying a computer program
are not capable of protection by copyright as literary
works
And should be
given protection by a patent, which is much wide spectrum protection. As
patent protection restrains any other person from getting same results
in a particular state of the art, from the subject matter of patent. As
a Patent protection to a computer program will enable a patent holder to
restrict all from using his underlying technical idea in his invention.
Moreover thinking that
computer programs did not always and necessarily concern non-technical
subject-matter is not a good practice.
And
finally the point raised in favor of patent protection of computer
programs is that the development of a computer programs require a lot of
investment of skilled human resources and lot of time and money on
expensive equipment, besides spending on the necessary infrastructure to
set up a software development unit. So if the developer or investor does
not get adequate protection for his invention this might retard the
growth of computer industry and this might be an obstacle in use of
computers in other fields of industrial and social use. Because use of
computers is evident in all the fields of life it makes things a lot
easier. The overall efficiency and cost effectiveness of a process
increases manifold. Another factor is the rate at which a technology in
computer field is rendered obsolete within a short span of time.
Though we are technically one of
the leaders in the world in Software & IT related development. So
there should have been a clear-cut, well-defined legal policy as regards
intellectual property protection of Computer Programs from initial
period, unfortunately this was not done to reasons unknown to the
author.
But it is
said that better late than never. We have come out with The Patents
(Amendment) Act, 2002 (No. 38 of 2002), which has given protection to
the Computer Programs. Before proceeding further we must see the
definition of the word "invention" since patent protection is given to
invention or inventive step, which is a statutory condition to be
fulfilled.
[Section
2(1)(j) defines word invention- "invention means a new product or
process involving an inventive step and capable of industrial
application"
Section
2(1)(ja) defines word inventive step- “inventive step means a feature
that makes an invention not obvious to a person skilled in art (read in
that related prior art).”] Substituted by the Patents (Amendment) Act,
2002.
The Patent
protection is possible Patents (Amendment) Act, 2002 the Section 3(k)
makes this much awaited thing happen in India for the first
time. Which
says:-
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CLAIMS:
Claim is the most
complicated and the most difficult part. Claims are
the parts of a patent which define the limitations or outer limits of a
patent. Patent claims are the legal basis for your patent protection.
They form a protective boundary line around your patent that lets the
world know when they are infringing on rights of a Patentee. The limits
of this line are defined by the words and phrasing of your
claims. Claim is a techno-legal part hence it is necessary that in
order to draft a Patent claim one has to have thorough knowledge of
Patent law & the technical knowledge of that field. It is very
important to know what you have invented so claim only that part not one
which is in prior art. If you claim more than what you have invented
than there is every possibility that the Patent shall be revoked or
invalidated during legal proceedings. Each claim in a patent should
have only one meaning it should not be ambiguous or
vague.
Patent claim
can be
1.
Broad;
or
2.
Narrow.
But a claim
can never both be broad and narrow at the same time. Broad claim has a
very vast coverage. Some mother inventions have these kinds of
claim. A mother invention is one that virtually excludes all persons
from performing the patented invention through any other means other
than by infringing upon the rights of a Patentee.
The
documents to be filed along with forms to get patents are as
follows:
Specifications should
contain:
1)
Title defining the
invention.
2)
Abstract: Brief summary of
invention including field of expertise, function & ideally the
difficulty in prior act sought to be removed.
3)
Description: This is very
important, as full detailed description of invention should be
given.
4)
Drawings to enable better
explanation of working of invention.
5)
Claims being a legal part that
defines scope of the protection sought. It should be broad enough to
cover the invention & exclude others to use the invention.
This is important as claim should not exceed the scope and contents
of specifications, otherwise this will be fround for rejection of application for grant of patent.
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PATENT
How to File a
Patent:
To get a
patent one needs to file the particulars of his invention with
relevant forms prescribed in schedule II of the patent rules, 2003.
There are total 30 forms in the second schedule to cover various
formalities required under Patent Act, 1970.
Patent can be
classified into two types:
A)
According to jurisdiction of
Patent Application
i)
Application for grant of a
patent in India.
ii)
Application corresponding to
an International Patent.
B) According to
specifications
i)
Application with Complete
Specification.
ii)
Application with Provisional
Specifications
Application for grant of
patent only in India, one has to fill form 1 in proforma given
in schedule II.
For getting Patent in other
countries one has to fill Form 1A.
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HOW TO FILL FORMS?
Filling of Forms is not very
complex in contrary to general belief that it is a very cumbersome
process.
For filling
the forms it is not necessary to have knowledge of PATENT ACT, 1970 or
some specialized legal knowledge.
But it us
desirable to read some of basic provisions of Patent Act, 1970 as
amended by latest amendments and the Patent rules,
2003.
To FILL FORM 1 :
The form should be filled in
waterproof black ink on durable A4 size.
New changes being
updated if any query please contact us.
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