Patent

Status of India in IP (intellectual property)

• India Ranked 44th out of 50 Countries on 2018’s Global IP Index.

• In 2016, India had no university among the top 50 Patent Cooperation
Treaty (PCT) applicants for universities.
No profit to India?
Billion dollar companies with patents
 Worth of patents

• 70% to 80% of a company's market capitalization comes in the form of intangible

assets which includes IP

• 86% of winners (venture-capital-backed companies) had strong (versus typical)

intellectual property portfolios

• Cohen Boyer patent, the basic gene-splicing patent devised by two Stanford
professors that helped launch the biotech industry.
• …
 • The University of California at 505
(granted only)
• Massachusetts Institute of Technology at
Academic 278
patenting – • Stanford University at 244

top • No Indian academic institute in top 100

universities universities in patents

• We can’t afford this situation to prolong

in India
 Types of
Intellectual
properties
 What is Intellectual Property?

• Intellectual property (IP) refers

– to creations of the mind,
– such as inventions; literary and artistic
works; designs; and symbols, names and
images
– used in commerce
Patents
Copyright
Trademarks
Industrial
design
Geographical
indications
 Trade secrets
• A TS is a formula Practice , process, commertial method or
compilation of information in a product or process. Not
generally known to public or reasonably ascertainable by
others by which a business can obtain an economical
advantage over competitors.
• Eg. Tirunelveli Halwa, palkova
 Why they should be protected?
• Intellectual property (IP) rights are valuable assets for your business - possibly among the most important it possesses.
• Why is it important to protect intellectual property rights?
• Your IP rights are important because they can:
• set your business apart from competitors
• be sold or licensed, providing an important revenue stream
• offer customers something new and different
• form an essential part of your marketing or branding
• be used as security for loans
• You may be surprised at how many aspects of your business can be protected. Your name and logo, designs, inventions, works of creative or
intellectual effort or trade marks that distinguish your business can all be types of IP. Explore the different types of IP in detail in our guides:
– trade marks
– get patent protection for your business
– copyright for your business
– protecting and handling your design
• Some IP rights are automatically safeguarded by IP law, but there are also other types of legal protection you can apply for.
• To exploit your IP fully, it makes strong business sense to do all you can to secure it. You can then:
• protect it against infringement by others and ultimately defend in the courts your sole right to use, make, sell or import it
• stop others using, making, selling or importing it without your permission
• earn royalties by licensing it
• exploit it through strategic alliances
• make money by selling it
Breakdown of Smartphone Patents
 Contents of
granted patent
First page
Key items
FIELD OF INVENTION
BACKGROUND
OF INVENTION
SUMMARY OF INVENTION
DETAILED DESCRIPTION OF INVENTION
Figures
 Caveat?

A patent caveat, often shortened to caveat, was a legal document filed with
the United States Patent Office. ... A patent caveat was an official notice of
intention to file a patent application at a later date. A caveat expired after
one year, but could be renewed by paying an annual fee of $10.
claims
 Abstract
• INID code for
abstract
• International
identification
Patent applications: the three criteria
Patent applications must satisfy the following three criteria:
Novelty
This means that your invention must not have been made public – not even by yourself
– before the date of the application.
Inventive step
This means that your product or process must be an inventive solution. It cannot be a
solution that would be obvious to a manufacturer. Take the example of a different
attachment method. Instead of welding the tubes of a swing together, they might be
screwed together. This may well be a new method of making swings. But for someone
involved in making them, it is too obvious a solution to be called an inventive step.
Industrial applicability
This criterion implies that it must be possible to actually manufacture the new
invention. In other words, you can apply for a patent on a new kind of playing card that
is easier to hold than existing cards. But you can’t obtain a patent for an idea for a new
card game.
 Differences
• invention“ can be defined as the creation of a product or
introduction of a process for the first time. “Innovation,” on the
other hand, occurs if someone improves on or makes a
significant contribution to an existing product, process or
service.
Incremental Innovation – improvements to an existing product,
service, or process. Breakthrough Innovation – changes to an
existing product, service, or process that has a significant
impact on the business.
 Novelty
• Novelty is obtained from the Latin word novus which means
New. ... However, novelty in patent law is part of the legal test
to determine whether an invention is patentable.

The concept of novelty in patent law embodies the principle that only truly new inventions deserve
patent protection. Novelty means "new compared to prior art"; it states the requirement that, to be
patentable, an invention must somehow be different from all published articles, known techniques,
and marketed products. At the time of filing of the application for a patent the invention must not
already have been made available to the public. An invention is finding out something which has not
been found by others.
 • protect the ornamental or aesthetic aspects i.e. shape or appearance of
objects.
Industrial designs • are typically used in such fields as technical and medical instruments,
electrical appliances and vehicles.

• in some countries under a special law, and

The layout design (topography) of •
in other countries under more general Intellectual Property laws, e.g.
integrated circuits may be copyright, patents, utility models, industrial designs, or unfair
protected competition

alternatives Computer programs may be • although computer programs in form of computer implemented

to patents protected through copyright; inventions may also be patentable

Trademark is a sign capable of

distinguishing the goods or • Trademark protection may be appropriate to avoid other people from
services of one enterprise from trading on .
those of other enterprises.

Any confidential business

information which provides an
enterprise a competitive edge may
be considered a trade secret.
 Patents are a rich source of technical and business information. A search
performed in order to determine prior arts, available in any part of the world and
in any form or language, in relevant field of technology is referred as a state of the
art search
Putting a new product on the market in a particular country without doing a
freedom to operate or infringement search, to discover whether there are any
active patents in force in that country that the product might infringe, can result in
The value and expensive court actions; and possibly the award of damages

uses of patent Patent information can be used to track market trends and develop knowledge
about competitors
Information
If the company is a foreign entity, this could lead to technology transfer through
licensing and Foreign Direct Investment (FDI) in the company.

“As patents have a strictly territorial effect, industries in these countries could take
the information out of patents as disclosed at foreign patent offices and use it
freely as these technologies were not patented in their own territories”
 Search sites - exercises

• Open following websites

• [Link]
[Link]
• [Link]
arch?locale=en_EP
• [Link]
[Link]
• [Link]
• [Link]
Types of patent
search
Types of searches
 Format of search details
Item name Item values
Database name: Indian patent office database
Internet address [Link]
Item searched inventor’s patents
Fields chosen for keywords Name of inventor
Keywords used for search Piriyakumar
Number of results found 17
Notes on how results are Click on application number to get further info
presented:

Need of machine translation No, already in English

Other observations Click on application status to know any action item
 State-of-the art search
• When will one do this search?
– to review the level of development in a particular technical field or research area
– To know the availability of solutions to a particular technical problem in patent
documents
• What happens if we don’t do it?
– Waste of millions of dollars every year on research which is already in the patent
literature.
– Serious consequences if not done while licensing in or buying into a specific
technology
• Starts from a date backwards, preferably current date
Worked out example (WoE) Air pollution sensor
• Insert the phrase ‘air AND pollution AND sensor’ into the second box down in
Espacenet at
• [Link]
• Select smart search
• Key in these keywords and notes the number of patents in that area
• Click on any title to bibliographic data
• Try to get the original document
• Click on “Global dossier”
 Novelty/patentability search
• When will one do this search?
– An invention is developed by an inventor
– And the inventor interested in applying for patent to ascertain the novelty and
involves inventive step
• What happens if we don’t do it?
– If it is already available, inventor/applicants have wasted of money, efforts and time
– Huge problem, if a product is introduced and already another has a patent, the
product owner has to face court case of infringement
• Starts from a date backwards, from the date of filing
 WoE - Plough
• [Link]

• Try plough first, then try farming tool, farming AND tool (incorrect farming or
tool), “farming tool”
• Click analysis button
• Try plough – Be careful plough may cover – snow plough also
• Try soil plough or try alternate spelling - plow
 Validity search
• When will one do this search?
– In case of infringement of patent (/patent application)
– General pre grant/ post grant opposition
– While negotiating licensing agreement
• What happens if we don’t do it?
– Dire consequences if not done while introducing new product in the market and
similar/same patent
• Starts from a date backwards, preferably current date for 20 years only
 Woe – Bicycle frame with magnesium alloy
• Assume that you have to invalidate or check the validity of this patent whose
principal claim starts as …
• Try magnesium bicycle frame
• Try (magnesium OR Mg) AND bicycle AND frame
• Check which patents are filed before the date of filing
• Pick a Chinese patent and try machine translation
• Check the legal status also in multiple databases
 Name search
• When will one do this search?
– patent documents involving specific companies or individuals, as applicants,
assignees, patentees or inventors
– Verify the technical areas of interest of competitors company/person
– To market a product based on patent in a particular country
• What happens if we don’t do it?
– Waste of millions of dollars every year on research which is already in the patent
literature.
– Serious consequences if not done while introducing a new product in the
market/country
• Search all patents by names
 Woe – Wind-up radio
• [Link]
• Read the news quickly – meant for LDC
• Fix the technology and find the players in the same field
• Assume that You know one inventor in the field, Trevor Baylis from Freeplay Energy
• From the results, try to find which one the right one - Trevor Baylis
• Goto Advanced search, use Trevor Baylis as inventor from Freeplay Energy as
applicant
• Note IPC/CPC symbol like F21L13/06
 Technological activity search
• When will one do this search?
– to look at a particular technology in detail
– to see if there is a dominant company, inventor or country in the field
– or to examine how the technology has evolved over time.
• What happens if we don’t do it?
– We may miss crucial business knowledge
• Starts from a date backwards, preferably current date
 WOE – Honey medicament
• Try medic* AND honey in patentscope
• Try analysis with graphs and pie charts
• Note the majority IPC or CPC and check for relevance
• [Link]
 Freedom to operate and legal status search
• When will one do this search?
– to find any patents which might be infringed by putting a particular invention on
the market in a particular country.
– find out the legal status of any relevant patents
• What happens if we don’t do it?
– Serious consequences - if not done while marketing the product in a particular
country/ies
• Starts from a date backwards in a particular country only for twenty years from now
 WOE - icopod
• First find the inventor
• Then find the patent
• Check whether it is
still in force in India
• Can you market it in
France?
• Check INPADOC legal
status also.
 Search exercises

Do the following
1. Find the inventor
2. Then find the patent
3. Check whether it is still in force in India
4. Check INPADOC legal status also

1. Find the patent related to neem filed in one of the developed

country.
2. Find the patent related Turmeric (Haldi in Hindi or Manjal in
tamil) for its medical value.
3. Find the basic patent which started the mobile phone
industry.
Techniques for
searching
 Techniques for searching

• Truncation
• Boolean logic
• Proximity searching
• Field searching
• Phrase searching
 Truncation / stemming
• Trimming or shortening the search term to include alternatives with the same
stem
– Electrical, electronics, … -> elect*
– Be careful, it include election, electorate, …
– Sulphate, Sulfate -> Sul*ate but Sulfoaluminate is included
– Tyre, tire -> t?re -> but no texture
– Use “? “ Wildcard character which will allow only one character
– Stemming may not be automatically selected
Boolean logic
- OR, AND, NOT
• Which is only operator if
operated, produces
measurable outcome?
• P and A but not T ?
 Proximity searching – “near”
• To search for terms that appear near one another
• The two terms appear within a preset number of characters of each other
• (within 5 characters in Patentscope)
• The number of characters can be specified by the searcher.
• [Link]
 Field searching
• To choose which field to search in
• Better focussed if you limited the search to the field of Inventor’s Name or the field
of Applicant’s Name as appropriate.
• Try lot of combination
• The right combination is the holy grail
 Phrase searching
• To allow phrases to be searched ie a group of words which is treated as a single
search terma
• Optical mouse -> optical AND mouse
• “optical mouse” single word
• Notice the difference in the search results
 Search exercises

• Check whether a patent exist for

• (Always find the earliest patent)
[Link] imaging
[Link] machine
[Link] pin
 International
patent
classification (IPC)
8 sections
 Structure

• Sections -> classes -> sub classes -> groups -> sub groups
• C – Chemistry (section)
• C 21 - Metallurgy of iron (class)
• C21B – Manufacture of iron or steel (Sub class)
• C21B 7/00 Blast furnaces (main group/group)
• C21B 7/02 Internal forms of blast furnaces (subgroup)
• [Link]
• What is you area of research?
Still deeper …
Patent families - INPADOC patent family

When can patent families be particularly useful?

 Search sites - exercises
• Find the IPC classification of
1. Fractal antenna design
2. Autonomous mobile robot
3. SpO2 sensor
Specialized
searches
Pharmaceutical and biotechnological products
• [Link]
• [Link]
ndapproved/approvalapplications/therapeuticbiologicapplications/biosimilars/ucm4
[Link]
• [Link]
• [Link]
• [Link]
 Chemical structure searching
• In Patent scope, show a simple example with anacin.
 TRADITIONAL KNOWLEDGE - TKDL India
• [Link]
L=Eng
Computer software, mathematical methods and methods
for doing business
• Computer software per se is NOT patentable
• Mere a mathematical formulation is also NOT patentable
• Use case in a business or embedded system is patentable
• USA differs significantly unlike in India (business process is not patentable in India)
• The 1-click method is covered by US patent, US5960411 owned by Amazon - find
the principal claim.
Simple patent
searches
 Simple patent search - exercises
1. Identify the correct invention behind zovirax
2. Find the application number that has the inventors name C. Dampeirou on the Chinese
patent search site.
3. Find the application that has the inventor name Andrew Michael SCOTT in the New
Zealand patent database available at
• [Link]
4. Imagine your farm machinery company is interested in acquiring a company named
Trima AB. You need to see if this company has any valid patents in Australia. Go to the
Australian patent search site:
[Link]
5. Find the application number, and locate the patent document of the pop-up toaster by
Charles Strite applied for in 1920 .
 6. Find the well known US invention of 1970
described in this abstract:
• ‘Infusible, solvent-dispersible, solvent-insoluble, inherently
tacky, elastomeric copolymer microspheres consist essentially
of about 90 percent to about 99.5 percent by weight of at least
one alkyl acrylate ester and about 10 to about 0.5 percent by
weight of at least one monomer selected from the group
consisting of substantially oil-insoluble, water-soluble, ionic
monomers and maleic anhydride. The microspheres are
prepared by aqueous suspension polymerization utilizing
emulsifier in an amount greater than the critical micelle
concentration in the absence of externally added protective
colloids or the like.’
 Conclusion
• Use multiple patent databases
• Choose correct keywords for relevant fields
• IPC is the key for patent search