Patents

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Patents

o A patent is an exclusive right granted for an invention.
o Invention can be a product or a process that provides a new way of doing
something, or offers a new technical solution to a problem.
o A patent provides protection for the invention to the owner of the patent.
o The protection is granted for a limited period, generally 20 years.
[Territorial right (Patent act 1970)]
What is a patent?

Protection offered by Patents
o Patent protection means that the invention cannot be
– commercially made
– Used
– distributed or
– sold
without the patent owner’s consent.
o Patent rights are usually enforced in a court, which holds the authority to
stop patent infringement.
o A court can also declare a patent invalid upon a successful challenge by a
third party.

Rights of a patent owner
o 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.
– give permission or license to other parties - to use the invention on
mutually agreed terms.
– sell the right of the invention to someone else, who will then become
the new owner of the patent.
o Once a patent expires, the protection ends, and an invention enters the public
domain.
o The owner no longer holds exclusive rights to the invention, which becomes
available to commercial exploitation by others.

Are patents necessary?
o Patents provide incentives to individuals by offering them
– recognition for their creativity and
– material reward for their marketable inventions.
o These incentives encourage innovation, which assures that the quality of
human life is continuously enhanced.

Role of Patents in everyday life
o Patented inventions have pervaded every aspect of human life from
– electric lighting (patents held by Edison and Swan)
– plastic (patents held by Baekeland)
– ballpoint pens (patents held by Biro)
– microprocessors (patents held by Intel).
o All patent owners are obliged, in return for patent protection, to publicly
disclose information on their invention in order to enrich the total body of
technical knowledge in the world.

o It is an ever-increasing body of public knowledge that promotes further
creativity and innovation in others.
o Patents provide not only protection for the owner but valuable information
and inspiration for future generations of researchers and inventors.
Role of Patents in everyday life

How is a patent granted?
o The first step is the filing of a patent application.
o The patent application generally contains
– the title of the invention
– indication of its technical field
– the background and a description of the invention and
– enough detail to use or reproduce the invention.
– To describe it better, descriptions are usually accompanied by
visual materials such as
 Drawings
 plans or
 diagrams
– The application also contains various “claims”, i.e., information
which determines the extent of protection granted by the patent.

What all can be patented?
o An invention must meet several requirements to be eligible for patent
protection.
o These include, in particular, that the claimed invention:
– Consists of patentable subject matter
– Is new (novelty requirement)
– Involves an inventive step
– Is capable of industrial application
– Is disclosed in a clear and complete manner in the patent application

o Finally, its subject matter must be accepted as “patentable” under law.
o The following are generally not patentable in many countries:
– scientific theories
– mathematical methods
– plant or animal varieties
– discoveries of natural substances
– commercial methods
– methods for medical treatment
What all can be patented?

o Generally the first step is to perform a prior art search.
o Prior Art
– All information available prior to the date of filing of the relevant patent
application against which the patentability of the invention will be
determined.
o There is a serious risk that some reference, or combination of references,
may render your invention non-novel or obvious, and, therefore, unpatentable.
o A prior art patentability search can prevent you from wasting money on a
patent application if the search uncovers prior art references that are likely to
preclude the patenting of your invention.
Procedures for securing a Patent protection

o A prior art search should extend to all relevant non patent literature, including
– Technical and scientific journals
– Textbooks
– Conference proceedings
– Theses
– Websites
– company brochures
– Trade publications and
– Newspaper articles.

o Patent information is a unique source of classified technical information,
which companies may find of great value for their strategic business
planning.
o Most significant inventions are disclosed to the public for the first time only
when the patent or patent application is published.
o Patents and published patent applications provide means of learning about
current research and innovations before the relevant innovative product
appears on the market.
o Patent searches should be part of the essential inputs to any company’s R&D
effort.

o Patents and patent applications published by many patent offices are
accessible on-line, thus making it easier to conduct prior art searches.
o A list of IP offices that have made their patent databases available online,
free-of-charge, may be found at: www.wipo.int/ipdl/en/resources/links.jsp.
o Most national patent offices offer patent search services for a fee.
o It is not easy to perform a high-quality patent search.
o Patent jargon is often complex and obscure and professional searching
requires considerable knowledge and expertise.
How and where can you conduct a prior art search?

o A Prior Art search is performed.
o A patent application has to be prepared and submitted to the relevant
national or regional patent office.
o The application will include
– a full description of the invention
– the patent claims that determine the scope of the patent applied for
– drawings and
– an abstract.
How to apply for patent protection?

o Who will prepare the application?
The task of preparing a patent application is generally performed by a
patent attorney or agent who will represent your interests during the
application process.
o Is there difference in procedure across countries?
Note that there may be important variations between countries and it is
always best to check with the patent office of the relevant country or a
patent law firm in the relevant country to obtain up-to-date information
on procedures and applicable fees.
How to apply for patent protection?

o Patent protection should be applied for as soon as all the information required
for drafting the patent application is available.
o Reasons for ensuring that the application is filed early include the following:
– In most countries worldwide patents are granted on a first-to-file basis.
– Filing an application early is important to ensure that you are the first to file an
application on that particular invention so that you do not lose your invention to
others.
– Applying for patent protection early will generally be useful if you are seeking
financial support or wish to license your invention to commercialize it.
– Patent can be enforced only after it has been granted by the relevant patent
office, which is a procedure that may take a few years.
When should you file a patent application?

o Once you have filed your application in one country or region, you normally
have 12 months to file an application for the same invention in all the
countries of interest to your business in order to enjoy the benefit of the filing
date of your first application.
o This may be a problem if the costs of applying in various countries and paying
the maintenance fees are too high for your company.
o One way of mitigating this problem, is by postponing the payments of
translation and national fees for a period of 30 months by using the Patent
Cooperation Treaty (PCT).

o When deciding on the timing for filing a patent application, it is important to
bear in mind that the application should be filed before disclosing the
invention.
o Any disclosure before filing the application (e.g., for test-marketing, to
investors or other business partners) should be done only after signing a
confidentiality or nondisclosure agreement.

 The legislation of some countries provides a “grace period” of 6 or 12 months,
from the moment an invention was disclosed by the inventor or the applicant
until the application is filed, in which the invention does not lose its
patentability because of such disclosure.
 A company may disclose its invention, for example by displaying it in a trade
show or publishing it in a company catalogue or technical journal, and file the
patent application within the grace period without the invention losing
patentability and being barred from obtaining a patent.
What is Grace period?

Nike Vs Adidas
o CASE NAME : Nike Vs Adidas
o PLAINTIFF : Nike International Ltd. ("Nike")
o DEFENDANT : Adidas
o CAUSES OF ACTION : Patent Infringement
o TRIAL COURT : U.S. District Court for the Eastern District of Texas.
o DATE : 17 Feb 2006

o The well known sports giant NIKE had invested heavily in its SHOX cushioning
technology, which debuted in the year 2000.Also it was protected by 19 separate
patents.
o In spite of the fact that Nike had properly registered and patented its SHOX
cushioning technology, Adidas has indulged in the manufacturing and selling of shoes
by refashioning Nike’s technology. Adidas calls it as the a3 cushioning system
Inference:
o Since Nike has already patented its technology, Adidas had no right to use it and
hence its clearly a case of Patent infringement.
o Also, by manufacturing its products on Nike’s technology, Adidas has caused a
damage to the uniqueness of Nike’s footwear.
Nike Vs Adidas
presented by Anusha Murthy, B.F Tech 2004 - 2008

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