ISSUE (Volume)

26 (3)
MONTH

J u ly
YEAR

A monthly Newsletter on issues relating to Intellectual Property Rights

Origiin Newsletter

2013

In this issue
Unity of invention... ...P.1 IP News Bulletin .................... .........P.3 News from Indian Patent Office.......................................... ..........P.4 Monthly IPO Statistics . . ..P.5 Interesting patent of the month............. ...P.6 Certificate course on Patent specification drafting .. P.7

Painting courtesy Pranay Kukreja (6 years)

Unity of Invention: Indian Patent law perspective

Whats new in this issue? Monthly statistics from Indian Patent Office June 2013

As per Indian Patent

Law, one patent application shall relate to a single invention. However, if more than one inventions are to be claimed in single

The invention comprising of a polymer, process to prepare polymer and commercial utility of polymer can be claimed in the single patent application because even though the invention has three main components, all of them relate to a single invention and have unity. On the other hand, the invention relating to two independent formulations used to treat cancer and HIV/AIDS shall not be claimed in a single patent application as both

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application, it is necessary to establish that the inventions so claimed have unity and they form a single inventive concept. The golden rule is that the claim (s) of a complete specification shall relate to a single invention, i.e. the concept of unity of invention shall be there.

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formulations are independent of each other and hence lack unity of invention.

Editors
Anita Kalia Athira A

The purpose of this requirement of unity of According to Section 10 of the Patents Act 1970, if claims refer to a group of Contact us inventions, such inventions shall form a single inventive concept. The claims shall be clear and succinct and shall be fairly based on the matter disclosed in
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invention is administrative, as well as financial. That is, the requirement serves to prevent the option of filing one patent application for several inventions, while paying only one set of fees, such as, fee for filing application, or examination, renewal early etc.

the specification and moreover, a single inventive concept may be recognized between independent claims of

publication

annual

Moreover, the concept of unity of invention also makes the technical classification easier

different categories.

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2
Under section 16 of the Indian Patents Act, 1970, if a single patent application has been filed with more than one invention and invention so claimed lacks unity, the applicant may divide main application into divisional application. However, the further application (divisional application) and the complete specification Publication and examination of the patent application takes place and the Controller raises the objection that the invention lacks unity of invention and hence the application shall be split into two applications i.e., main parent application and divisional application. Here, the date of filing divisional application will be 10th Jan 2009. In such a case, both parent application and divisional application will have priority date of 15th November 2006 even though the divisional application was filed 10th Jan 2009, which also mean that both parent application and divisional application expire on the same date irrespective of the date of filing.

accompanying it shall be deemed to have been filed on the date on which the first mentioned application had been filed, and the further application shall be proceeded with as a substantive application and be examined when the request for examination is filed within the prescribed period.

According to Section 10 of the Patents Act 1970, if claims refer to a group of inventions, such inventions shall form a single inventive concept. The claims shall be clear and succinct and shall be fairly based on the matter disclosed in the specification and moreover, a single inventive concept may be recognized between independent claims of different categories.
However, during the process of examination of the patent application, the examiner may also ask the applicant to divide the application into two or more applications and file divisional application. It is interesting to note that both parent application and divisional application will have the same priority date though divisional application is often filed later than parent application. For example:

A specification in respect of a divisional application under section 16 shall contain specific reference to the number of the original application from which the divisional application is made. The request for examination in case of divisional application shall be filed within 48 months from the date of filing or priority of the parent application or within six months from the date of filing the divisional application, whichever expires later. Request for divisional application shall be filed only after filing request for the parent application to ensure the requirement of section 16(3). Moreover, the complete Specification of a divisional application should not include any matter not in substance disclosed in the complete specification of the first application. The reference of parent application should be made in the body of the specification. A divisional application has to be filed before the grant for a parent application. Though it sounds economical to club multiple inventions

Date of filing provisional application and priority date: 15th November 2006 Date of filing complete specification: 13th November 2007

together and file for a single application, it is logical to follow the concept of unity of the invention and ensure that separate applications are filed for each invention.

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IP NEWS BULLETIN
Patenting human genes
The US Supreme Court said that companies cannot patent parts of naturally-occurring human genes. The case concerned patents held by Myriad Genetics, an Utah company, on genes that correlate with an increased risk of hereditary breast and ovarian cancer. The patents were challenged by scientists and doctors who said their research and ability to help patients had been frustrated. Myriad did not create anything, Justice Clarence Thomas wrote for the court. To be sure, it found an important and useful gene, but separating that gene from its surrounding genetic material is not an act of invention.

Application) with a Paragraph IV Certification that seeks 3 FDA-marketing approval for DRL generic versions of AbbVie's paricalcitol injection products prior to expiration of the patents-in-suit. The US Drug maker requested the court to pass an order to restrain DRL from commercially manufacturing, using, offering for sale, selling, marketing, distributing, or importing DRL's generic paricalcitol injectable products prior to the expiration of said patents.

WIPO Treaty Boosting Access to Books for Blind and Visually Impaired Persons
The Diplomatic Conference concluded successfully on June 28 with the adoption of the Marrakesh Treaty to Facilitate Access to Published Works for Persons who are Blind, Visually Impaired, or otherwise Print Disabled. Around 600 delegates from among the 186 members of

Apple Facing Patent Lawsuit over iPhone Features

USA based Bluebonnet Telecommunications has filed a complaint against Apple, claiming that its iPhone handsets infringe on a call-forwarding patent. The company claims that Apple is infringing its patent, number 5,485,511 (the 511 patent), which covers a "method and apparatus for determining the telephony features assigned to a telephone." when applied in the iPhone 4S and iPhone 5 for a call-forwarding feature that the smartphones offer. The lawsuit claims that the infringing features within the iPhone "have no substantial use other than infringing the 511 patent".

the World Intellectual Property Organization (WIPO) joined in the debate leading to the adoption of the treaty in the Kingdom or Morocco, which hosted the Diplomatic Conference to Conclude a Treaty to Facilitate Access to Published Works by Visually Impaired Persons and Persons with Print Disabilities.

The Marrakesh Treaty to Facilitate Access to Published Works for Persons who are Blind, Visually Impaired, or otherwise Print Disabled addresses the book famine by requiring its contracting parties to adopt national law provisions that permit the reproduction, distribution and making available of published works in accessible formats

Dr Reddy's sued for 'infringement' of thyroid injection patent

US-based drug maker AbbVie Inc, has dragged Dr Reddy's Lab to court for allegedly infringing its patented drug Zemplar, concerning three patents. According to a petition filed by AbbVie, DRL committed an act of infringement by filing an ANDA (Abbreviated New Drug

through limitations and exceptions to the rights of copyright right holders. To the 300 million who are visually disabled, this new treaty is a major step toward access to the basics: such as works in formats such as braille, large print text and audio books. On June 28, 2013, 51 member states signed the treaty and 129 signed the final act of the treaty. Signing the treaty at the end of a diplomatic conference does not necessarily bind a country to its provisions.

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IMPORTANT NEWS FROM INDIAN PATENT OFFICE (CGPDTM)

Draft Patent (Amendment) Rules, 2013 notified Comments are invited and the details may be viewed at:
http://www.ipindia.nic.in/iponew/DraftRules_2013.pdf

Computer Network, Computer System, Computer

related inventions, data, information, algorithm, function, software, Computer Program, per se, Firmware, Hardware, Embedded Systems, Technical Effect, Technical advancement, Mathematical

methods, Business Methods. Applications concerning Computer Related Inventions Working of Patented inventions CGPDTM publishes information received from Patentees regarding working of Patented inventions in accordance with section 146(3) of the Patents Act, 1970 read with rule 131(3) of the Patents Rules, 2003 for the year 2012 (24 June, 2013). http://ipindiaservices.gov.in/workingofpatents (CRIs) broadly fall under the categories, Computer

Method/process,

Apparatus/system,

readable medium, Computer program product. For resolving the cases belonging to the claim category of means plus function, the claims in means plus function form are not be allowed if the structural features of those means are not disclosed in the specification. Detailed procedure of examination of the computer related patent application has been explained along with case-laws which is extremely useful to the attorneys and agents working in computer related domain. Computer Related inventions in the field of Bio-informatics/bio-technology have been explained along with examples on methodology of dealing with

First Examination Report

CGPDTM makes available a dynamic utility to view "The Month of Request for Examination for which First Examination Report is being issued" for each

examination group of all jurisdiction of Patent Office (17 June, 2013)

http://ipindiaservices.gov.in/rqstatus/

claims in the field of bio-informatics/bio-technology concerning CRIs. This document intends to achieve uniformity of practice while dealing with patent applications concerning CRIs. Illustrative examples and the flow chart for examination of these categories of

Madrid Protocol Public Awareness Session about the India's accession to the Madrid Protocol at Chennai, Ahmedabad, Kolkata, Mumbai (20 June, 2013)

Draft guidelines for Computer related inventions

CGPDTM releases Draft guidelines for Computer related inventions inviting public comments. Guidelines provide clarity on key definitions, such as, invention, inventive step, and industrial utility. Section 3 (k), 3 (l), (3 (m), 3 (n) have been explained in detail. Commonly used terms, such as, Computer

inventions will certainly prove to be effective tools towards achieving the objectives. Further, the examining division shall keep itself abreast with the latest orders of CGPDTM and various judicial pronouncements on the subject. The comments may be till sent 19th by mail to

birendrap.singh@nic.in

July,

2013.

http://www.ipindia.nic.in/iponew/draft_Guidelines_C RIs_28June2013.pdf All rights reserved (c) Origiin IP Solutions LLP 2013

MONTHLY STATISTICS FROM INDIAN PATENT OFFICE: JUNE 2013

Top 10 Patent Grantees in June 2013
In the month of June 2013, nearly 191 Patent have been granted by Patent office (all the branches of Patent office, such as, Chennai, Mumbai, Kolkata and Delhi). The top 10 patentees in the month of June 2013 are, Hindustan Unilever Limited, followed by Samsung India Software Operations Private Limited, BASF SE, Council of Scientific & Industrial Research, LG Chem ltd, Bose Corporation, GM Global Technology Operations Inc, LG Electronics Inc, Qualcomm Inc and Research in Motion etc.

Branch wise distribution of granted patents

Branch wise distribution of Granted Patents
50 45

40
No:of PatentGranted

35 30 25 20 15 10 5 0 PCT-NP Non PCT-NP

Delhi

Chennai

Kolkata

Mumbai

Patent Office Branch

Comparison of granted patents among IPO branches indicates that maximum number of patents have been granted by Delhi branch, followed by Chennai, Kolkata and Mumbai. However, number of PCT national phase applications is quite high compared to Non-PCT national phase applications in each branch office. All rights reserved (c) Origiin IP Solutions LLP 2013

IPC distribution of granted patents

IPC CODE
80 70 60 50 40 30 20 10 0

Count of IPC CODE

Segregation of patents granted in the month of June 2013 on the basis of basic International Patent Classification reveal that maximum patents have been granted in Class C (Chemistry; Metallurgy), followed by Class H (Electricity), Class A (Human Necessities), Class B (Performing; Operations; Transporting).

INTERESTING PATENT OF THE MONTH

Frameless glasses attaching to body piercing studs
Inventors: Rose, John (Susanville, CA) Application Number: 10/199353 Publication Date: 05/06/2003 Filing Date: 07/18/2002

Abstract A frameless glassware assembly attaching to body piercing studs. Design consisting of an elastomeric C-clip fixedly attached to one distal end of a metal arm, which is attached to a frameless glass lens assembly. Design allows for frameless eyeglass attachment to the eyebrow studs or to the nose studs of a user via the elastomeric C-clip. One embodiment allows the frameless glassware to attach to eyebrow studs and the second allows the frameless glassware to attach to a nose stud. Both designs are frameless and avoid side wire earpieces common to hold glassware to the face of a user.

Main claim
1. In combination with a body piercing eyebrow studs, a left stud fastened outbound on a left eyebrow, and a right stud fastened outbound on a right eyebrow, an improvement comprising: a left eyeglass member having a C shaped clamp fastened to an outbound section of the eyeglass member; a right eyeglass member having a C shaped clamp fastened to an outbound section of the eyeglass member; a connecting bridge joining the left to the right eyeglass member; and; wherein each C shaped clamp snaps onto the respective left or right stud. All rights reserved (c) Origiin IP Solutions LLP 2013

Certificate course on Patent Specification Drafting

Origiin IP Academy launches Certificate course on Patent Specification Drafting. Drafting patent specification is an art, wherein it is critical to identify elements to be claimed, drafting specification and claims, segregating elements to be claimed carefully in comparison to the prior art. We at Origiin have developed course on patent specification drafting that covers topic such as anatomy of patent, drafting provisional and non-provisional specification, preparing drawings etc. This course can be taken up by the candidates keen to pursue career in IPR as well as the candidates preparing for Indian Patent Agent Examination. Duration: Dates: 30 hr (contact class 15 hr, project 15 hr) 3rd (Saturday), 4th (Sunday) and 10th (Saturday) August 2013

Eligibility: Candidate shall be at least Bachelor in science such as BE, B.Tech., B.Sc. Who should join?: The course is useful to any person keen to pursue career in IPR, fresh students as well as working IP Professionals who want to enhance skills and experience in performing various kinds of patent searches. How to register: Download the registration form from www.origiinipa.com and send us the filled form along with payment to register. Venue: Origiin IP Academy #35, First Main, Vysya Bank Colony, BTM 2nd stage, Bangalore-560076 Mobile: +91-98456 93459, +91- 98802 13204 Website: http://www.origiinipa.com Email: info@origiin.com, origiin.training@gmail.com Our other certificate courses 1. Patentability search 2. Clearance search 3. Technology Landscape analysis 4. Invalidation/validation search 5. IP audit and commercialization (coming soon) Disclaimer: The purpose of this Origiin newsletter is for providing general information to the readers on IPR & is not intended as a substitute for professional consultation and advice in a particular matter. For specific issues, kindly seek legal assistance. The IP News and IPO statistics have been compiled from the information available in public domains and Origiin is not as such, responsible for any error, omission, and mistake or misfiled particulars contained or omitted from the said records. Column in the Newsletter is based on authors experience in the area of IPR and views reflected in column are purely of the authors. Please mail us at info@origiin.com for your valuable feedback/comments. All rights reserved (c) Origiin IP Solutions LLP 2013