Patenting is Prestigious – I did it! And I was first! Develop reputation in the market Easy Publication – no editors. Promotion of Research & Development Revenue through licensing/assignment/commercialization. Prevent competitors from copying

1. PATENTING: AN OVERVIEW
PAWAN KUMAR PORWAL
ASSOCIATE PROFESSOR
DEPT. OF QUALITY ASSURANCE
ISF COLLEGE OF PHARMACY
WEBSITE: - WWW.ISFCP.ORG
EMAIL: PAWANKPORWAL@GMAIL.COM
ISF College of Pharmacy, Moga
Ghal Kalan, GT Road, Moga- 142001, Punjab, INDIA

2. Why Patent?
 Patenting is Prestigious –
 I did it!
 And I was first!
 Develop reputation in the market
 Easy Publication – no editors.
 Promotion of Research & Development
 Revenue through licensing/assignment/commercialization.
 Prevent competitors from copying
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3. •TECHNO-LEGAL
•COMMERCIAL
DOCUMENT
A patent is an exclusive right granted for an invention, which is a product or a process that
provides, in general, a new way of doing something, or offers a new technical solution to a
problem. To get a patent, technical information about the invention must be disclosed to the
public in a patent application
PAT E N T 3

4. Patenting Sequence
 Identifying an Invention
 Invention Disclosure Form
 Prior art searches
 Preparing patent specifications
 Ascertaining ownership
 Filing a patent application
 Prosecuting through Patent Offices
 Patent registration and Issue
 Renewals
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5. 1. Innovation/
development
2. Patenting strategy
Filing program
Publication
Examination
3. Patent prosecution
Amendments
4. Issuance
5. Commercialization
6. Infringement/validity
Patenting Trail 5

6. Provisional Application
 Not a rough draft or skeleton of complete spec.
 Establishes a filing date (earliest priority date)
 Examination process does not begin
 Clock does not start running on lifetime of patent
 Has simpler filing requirements
 Although a claim is not required in a provisional application, the written description and any drawing(s) of the
provisional application must adequately support the subject matter claimed in the later filed non-provisional
application in order to benefit from the provisional application filing date. (35 USC 111(b))
New Railhead Mfg. LLC v. Vermeer Mfg. Co. et al., 298 F.3d 1290; 63 U.S.P.Q.2d 1843 (Fed. Cir. 2002
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7. Complete Specification
 Title (15 words)
 Applicant/Inventor/Assignee
 Abstract (150 words)
 Field of The Invention
 Background of The Invention
 Object of The Invention
 Summary of The Invention
 Detailed Description
 Examples, Drawings, Deposit
 Claims
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8. IPA Section 10 (4)
Every complete specification shall-
 Fully & particularly describe the invention and its operation or use and the
method by which it is to be performed
 Disclose the best method of performing the invention which is known to the
applicant and for which he is entitled to claim protection
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9. 35 USC 112
The specification shall contain a written description of the invention, and
of the manner and process of making and using it, in such full, clear,
concise, and exact terms as to enable any person skilled in the art to
which it pertains, or with which it is most nearly connected, to make
and use the same, and shall set forth the best mode contemplated by
the inventor of carrying out his invention.
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10. Claims
 A claim is one of the numbered paragraphs that appear at the end of a patent
and defines the scope of protection given to the owner of the patent (i.e.,
the right to prevent others from making, using, selling, offering for sale, or
importing the claimed invention).
 Each claim is treated separately for purposes of determining validity and
infringement.
 For example, claims may be directed toward apparatus, methods, products,
and compositions of matter and new and useful improvements thereof.
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11. Claims
 35 USC 112
 The specification shall conclude with one or more claims particularly
pointing out and distinctly claiming the subject matter which the applicant
regards as his invention.
 EPC Article 84
 The claim shall define the matter for which protection is sought. They shall
be clear and concise and be supported by the description
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12. Who is an Inventor?
 A person who makes inventive contribution to atleast one claim as claimed in the patent
application (US, Canada).
 A person who is the actual deviser of the invention (UK)
 A person who contributes towards the development of patentable features i.e. novelty, inventive
step and industrial application (India).
 A person whose contribution has a “material effect” on the final concept of the invention
(Australia).
 It is not necessary for a joint inventor to be able to identify a specific component of the invention
as his own idea. He must be able to say that he contributed to its conception
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13. Who is not an Inventor?
 A person who participates only in the reduction of the invention without contributing anything to the
final, complete conception of the invention.
 A person who only makes financial contribution
 A person who provides ideas to produce the “germs of the invention” need not himself/herself carry
out the experiments, construct the apparatus or make the drawings.
 The person may take the help of others. Such persons who have helped in conducting the
experiments etc., without providing any intellectual inputs are not entitled to be named inventors.
 If the invention can be put into effect, or reduced to practice, by routine work once the idea is there,
then the person who does the routine work may be regarded as the “extended technical arm” of the
inventor, and is not himself an inventor.
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14. Patent Filing Options
Separate national filings
Regional Patent Convention (EPC)
Patent Co-Operation Treaty (PCT)
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15. Patent Cooperation Treaty (PCT)
 Agreement for international cooperation in the field of patents
 Treaty for rationalization & cooperation with regard to filing,
searching & examination of patent application and
dissemination of information
 Not patent granting mechanism
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16. Patent cooperation treaty
 PCT entered into force on 24 January 1978, became
operational on 1st June 1978 with an initial 18 contracting
states
 Presently 132 contracting states
 India joined PCT on 7th December 1998
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17. 17Countries UNDER PCT

18. General remarks on the PCT system
 The PCT system is a patent “filing” system, not a patent “granting” system. There is
no “PCT patent”
 The PCT system provides for
 an international phase comprising:
 filing of the international application
 international search and written opinion of the ISA
 international publication and
 international preliminary examination
 a national/regional phase before designated Offices
 The decision on granting patents is taken exclusively by national or regional Offices
in the national phase
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19. General remarks on the PCT system
 Only inventions may be protected via the PCT by applying for patents, utility
models and similar titles.
 Design and trademark protection cannot be obtained via the PCT. There are
separate international conventions dealing with these types of industrial
property protection (the Hague Agreement and the Madrid Agreement and
Protocol, respectively).
 The PCT is administered by WIPO as are other international treaties in the
field of industrial property, such as the Paris Convention.
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20. Separate National Filing
FAMILY
FILING IN
DIFFERENT
COUNTRIES
0 12 month
Convention route
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21. Traditional patent system vs. PCT system
0 12
File local
application
File
applications
abroad
(months)
Traditional
(months)
File PCT
application
12 30
International
search report &
written opinion
16 18
International
publication
(optional)
File demand for
International preliminary
examination
File local
application
Enter
national
phase
22 28
(optional)
International
preliminary report on
patentability
PCT 0
Fees for:
- translations
- Office fees
- local agents
Fees for:
- translations
- Office fees
- local agents
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22. The PCT system
Chapter I
(months)
File PCT
application
Enter
national
phase
120
30
30
International
search report and
written opinion of
the ISA
16 18
or, optional
International
publication
File local
application
20
Enter
national
phase
Chapter II
International
Preliminary
examination
File demand
SIS
Request
(optional)
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23. PCT Filing Trends (1978 – 2005)
* In 2005, over 134’000 PCT international applications were filed,
* 9.3% increase over the previous year.
* The graph below shows the growth in the number of international applications filed since 1978.
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24. Patent Prosecution
 “Prosecution” is the term given to the back-and-forth between
the patent office and the applicant (or his attorney/agent)
 Grant of Patent
 Renewal
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25. Patent Term
 In majority of the countries, including India (20th May 2003) the
patent term is now 20 years from the date of filing as required
by the TRIPS agreement
 In US for applications filed before 8th June, 1995 the term is
20 years from filing or 17 years from grant whichever is longer.
For applications filed after 8th June, 1995 the term is 20 years
from the first US filing date.
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26. Patent Kind Codes
 USA
 A - US Patent
 A1 - Patent Application Publication
 A2 - Patent Application Publication (Republication)
 B1 - Patent (No previously published pre-grant publication)
 B2 - Patent (Having a previously published pre-grant publication)
 RE - Reissued Patent
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27. Patent Kind Codes
 Europe
 A1 - Publication of application and search report.
 A2 - Publication of application without search report.
 A3 - Publication of search report.
 A4 - Supplementary search report.
 B1 - Patent
 B2 - Patent after modification
 PCT
 A1 - Publication of the international application with international search report.
 A2 - Publication of the international application without international search report.
 A3 - Subsequent publication of international search report.
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28. THANK YOU
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