Professional Documents
Culture Documents
TO PATENTABILITY
By
Somashekar Ramakrishna
Brain League IP Services
Industrial Application The invention is capable of being made or used in an industry Sec 2(1)
(ac)
No Industrial applicability
If vague and speculative possible objectives are indicated (MPPP Sec 3.25.3)
For processes or articles alleged to operate in a manner contrary to well-established
physical laws (MPPP 3.25.5)
For method of treatment of the human or animal body by surgery or therapy or of
diagnosis practiced on the human or animal body (MPPP 3.25.6)
For parts/pieces of the human or animal body to be used in transplants (MPPP 3.25.6)
e.g. Scheme for exchanging all or part of a prison sentence for corporal punishment
Lacks Industrial Applicability Melia’s Applicaton (BL O/153/92)
Anticipation
Anticipation
(l) “new invention” means any
invention or technology which has
not been anticipated by publication
in any document or used in the
country or elsewhere in the world
before the date of filing of patent
application with complete
specification, i.e. the subject matter
has not fallen in public domain or
that it does not form part of the state
of the art;
Anticipation
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Date of
filing of
Indian Patent application
Publication
CS Indian Patent application
Publication
Section 13(1) a Section 13(1)b
Publication in India or
elsewhere in any document
Section 13(2)
Exception
If the use of the invention was by way of imposing
secrecy then it is not a public use .
Anticipation
Public Display
Public Display of an invention before the filing
date of the patent application will anticipate the
invention.
Exception
However, if an invention is displayed by the inventor
at an exhibition notified by the Central
Government in the official gazette, such a public
display or use of the invention at the exhibition or
publication of details of the invention as a
consequence of the exhibition will not anticipate
the invention
provided a patent application is filed within
twelve (12) months from the date of such public
display
Anticipation
On Sale
○ I f an invention is on sale or is commercially
worked in India by the applicant…. before
the date of the patent application, it will not
be considered to be novel.
Anticipation
Subject Matter in the Prior Art
MANU/MH/0064/1969
The anticipatory disclosure must be
entirely contained within a single
document. (MPPP 3.3.4)
Anticipation
Example
A chair
4 legs
Each leg is provided with a wheel
Prior Art 1
chair with 4 legs
Prior Art 2
Prior Art
Invention
Inventive step/non-obviousness
Inventive Step
Inventive step –
○ 1) Technically advanced in the light of the
prior art or should have economic
significance ; and
○
○ 2) The invention should be non-obvious to
a person skilled in the art
○
“inventive step” means a feature of an invention that
involves technical advance as compared to the
existing knowledge or having economic significance
or both and that makes the invention not obvious to a
person skilled in the art; Sec 2(ja)
Inventive Step
Person skilled in the art
Presumed to be an ordinary practitioner
aware of what was common general
knowledge in the art at the relevant date
(MPPP 3.51.2)
A notional skilled person who would
perform a transfer of technology from a
neighboring field to his specific filed of
interest, if this transfer involved routine
experimental work comprising only
routine trails (MPPP 3.51.3)
Inventive Step
Some Issues Involved in determining
Inventive step
What was the problem which the patented
development addressed?
How long had that problem existed?
How significant was the problem seen to be?
How widely known was the problem and how
many were likely to seeking a
solution?.........
Inventive Step
Indicators of inventive step
Distance- b/n the Subject matter and the
prior art
Unexpected effect
Long felt need
Failure of others
Commercial success
Inventive Step
Lack of Inventive step
Invention provides equivalent
Prior art is incomplete and the invention
lies in filling the gap which would readily
occur to a person skilled in the art
New use of a known material
Inventive Step
In determining Inventive Step
Mosaicing multiple documents is permitted
All information in any set of documents
can be combined provided they are all in
the same art (analogous)
No hindsight should be employed (taking
the solution and working backwards)
Inventive Step
Biswanath Prasad Radhey Shyam Vs. Hindustan Metal
industries, AIR 1982 SC 1444
Patent:
Means for holding utensils for turning purposes
Prior Art:
Lathe (tailstock)
To be patentable the improvement or the combination must
produce a new result, or a new article or a better or
cheaper article than what was already existing
Improvement or combination should be something
more than the mere workshop improvement
Inventive Step
Haberman and another v. Jackel International Ltd
(1999) FSR 683
Patent:
ANWY CUP, a trainer cup for toddlers
Had a valve fitted to the lid
Would open when baby sucked and closed when it
stopped
Immediate commercial success.
Defendant: launched rival product: ‘super-seal”
Suit for infringement: claim of obviousness.
Justice Laddie:
‘ though involved a very small and simple
step, it is sufficiently inventive. It had
solved a problem (that is the long-felt
need for a spill-proof cup)’
Inventive Step
Garewall ropes Ltd. Vs. Mr. Anant Kanoi
MANU/GJ/8265/2006
Patent:
Prefabricated collapsible gabion product made
from synthetic ropes
Gabions are well known (since 7000 years)
Rope gabions and polymer gabions were
being used in Maharashtra since 1991 and
in Bihar since 1987
Held: Substituting elements of common
knowledge in a product would not give rise to
inventive step
Inventive Step
Example:
Device for manually collecting the
agricultural produce has
container (Plastic) open at the top
and closed at the bottom
wall of the container has a contour
adapted to proximate the back of a human
body
Straps and buckles for securing the
container to the individual
Traditional product made out of
bamboo.
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