on Training of Trainers on Effective IP Asset

on Training of Trainers on Effective IP Asset Management Patentable and Non Patentable Inventions in Key Jurisdictions, Drafting a Patent Specification, Patent Cooperation Treaty (PCT) and Budapest Treaty G. Deepak Sriniwas, Partner K&S PARTNERS

Discussion on § Patentable and Non Patentable Inventions in Key Jurisdictions § Drafting a Patent Specification § Patent Cooperation Treaty (PCT) § Budapest Treaty

Patentable and Non Patentable Inventions § Pharma; Biotech § Software; methods Mathematical; Business

WHAT IS PATENTABLE? § Patents Act 1970 Patentable inventions any product or process which is : § novel § not obvious to a person skilled in the art § capable of industrial application

WHAT IS NOT PATENTABLE? (section 3) (d) New use of known substance/process Polymorphs, esters, salts, combinations, derivatives that do not show enhanced therapeutic efficacy over known main substance (e) Mere admixtures (as opposed in synergistic mixtures) and processes thereof (i) Method of treatment of human beings/animals (j) Plants, animals parts thereof

WHAT IS NOT PATENTABLE? (section 3) Section 3(d) The mere discovery of a new form of a known substance which does not result in the enhancement of the known efficacy of that substance or the mere discovery of any new property or new use for a known substance or of the mere use of a known process, machine or apparatus unless such known process results in a new product or employs at least one new reactant.

WHAT IS NOT PATENTABLE? (section 3) Section 3(d) (contd. ) Explanation: For the purpose of this clause, salts, esters, ethers, polymorphs, metabolites, pure from, particle size, isomers, mixtures of isomers, complexes, combinations and other derivatives of known substance shall be considered to be the same substance, unless they differ significantly in properties with regard to efficacy. § Examples: § Toxic – non-toxic § Stable – shelf life

WHAT IS NOT PATENTABLE? (section 3) (e) a substance obtained by a mere admixture resulting only in the aggregation of the properties of the components thereof

WHAT IS NOT PATENTABLE? (section 3) (i) any process for the medicinal / surgical / curative, prophylactic / diagnostic / therapeutic or other treatment of human beings or similar such process for treatment in animals.

SECOND MEDICAL USE

Case Law- GLIVEC § Test of 3(d) and the product patent regime. § Novartis AG filed patent application No. 1602/MAS/98 on July 17, 1998 for “crystal modification of N-Phenyl-2 -Pyrimidineamine derivative, processes for its manufacture and its use” § Specifically beta form of N-{5 -[4 -(4 -Methyl-piperazino-methyl)benzoylamido]-2 -methyl-phenyl}-4 -(3 -p yridyl)-2 -pyrimidine-amine salt. ( β form of methanesulfonic acid addition salt of a pyrimidine compound and XRD pattern of β form was provided)

Case Law- GLIVEC § Notable statement in specification “It goes without saying that all the indicated inhibitory and pharmacological effects of β form are also found with the free base”. § No enhanced efficacy shown § Established β form was pre-existing § Application was rejected by the Patent Office § Limited appeal to DB Chennai, case rejected § Limited issue before IPAB-case rejected § Challenged IPAB decision by way of write in SC

WHAT IS NOT PATENTABLE? (section 3) (j) Plants and animals in whole or in part thereof other than microorganisms but including seeds, varieties and species and essentially biological processes for production or propagation of plants and animals.

PRODUCT PATENTS All products of molecular biology: whether for use as drug or food product § Novel micro-organism (genetically engineered) § Novel gene and peptide sequences § Promoter, Marker § Novel cassette, construct § Vaccine § New viral strain

MICRO-ORGANISMS § Not defined by Act § Possibly includes yeast, bacteria, recombinants, DNA sequences, vectors § Are isolated microbes and colonies “mere discovery” ? § Isolates, if characterized, deposited in ID and utility found – are they patentable Genetically modified organisms: patentable § Source and origin of Biological material to be provided in specification §

MICRO-ORGANISMS EUROPE EP case T 396/93: Micro-organism includes bacteria, yeast, fungi, algae, protozoa, virus…. Biotechnology Directive : § Defines biological material not micro-organism § Includes microbes, cell lines, viruses…. § Excludes cell lines used for modifying germ line of human beings

MICRO-ORGANISMS USA- PATENTABLE § Diamond v. Chakrabarty, 447 U. S. 303 (1980) § genetically engineered bacteria are patentable § “anything under the sun that is made by man” § Patents granted for : § Yeast lines, § Virus, hybridoma, oyester § Harvard Mouse

MICRO-ORGANISMS INDIA § Micro-organism § Isolated ? § Mutant ? § Genetically modified ? § No distinction between isolated and genetically modified micro-organism § Many argue: Isolated micro-organism is no invention, only Genetically Modified § Deposit in international depository prior to date of Indian filing

GENES § Gene sequences if isolated and utility found, patentable § Are they ‘part of animal or human being’ ? § Antibodies, including chimeric antibodies are patentable

ISOLATED DNA § EUROPE-PATENTABLE Held in RELAXIN CASE -Isolated DNA sequence is a chemical compound; can be patented

ISOLATED DNA § US - PATENTABLE § An isolated and purified DNA molecule, RNA molecule, or amino acid molecule § isolated chemical compounds § Full-Length Genetic Sequences patentable § Corresponding amino acid sequence patentable § Partial nucleic acid sequences if proved useful (eg: as encoding protein responsible for diagnosis of a specific disease) = patentable

Example US PATENT NO. 6, 616, 950 § What is claimed is: 1. A fermented fruit based herbal health drink composition useful as an antioxidant, cardio-tonic, diuretic, digestive, choleretic, nervine relaxant and immuno-modulant, comprising extract from plant Andrographis with concentration ranging between 0. 5 to 10% in the total herbal health drink, extract from fruit, and ethanol ranging between 3 to 13% in the total herbal health drink, optionally extract from plant Tinospora and other additives.

Example US PATENT NO. 6, 558, 940 A biologically pure culture of Streptomyces sp. CIMAP A. sub. 1 strain bearing ATCC Accession No. PTA-4131 and capable of inhibiting the growth of phytopathogenic fungi.

Example US PATENT NO. 6, 696, 284 § 1. A biological filter for the purification of waste gases, comprising a housing with at least one inlet and at least one outlet, and a bed of active micro-organisms contained in a carrier material consisting of pith extracted from coconut husks, the carrier material being provided in the housing such that the waste gases flowing in through the at least one inlet contact the bed of carrier material before exiting through the at least one outlet.

PROCESS PATENT § Method of protein purification, downstream processing § Process using microorganisms to obtain chemicals § Patentable

SCREENING ASSAYS § Diagnostic assays: grey area § Is it ex-vivo or in-vivo? § Does the result of the method indicate that subject is suffering from a disorder? § If yes, not patentable

METHOD FOR REGENERATION OF ORGANS § A method for regenerating organs in humans using: § stem cells § from contiguous embryonic peritoneal layer § formation of mesodermal organs in vitro § avoids use of exogenous tissue § 5 organs regenerated

METHOD FOR REGENERATION OF ORGANS F Patent Act, 1970 F sec 3(i) “any process for the medical, surgical, …. treatment of human beings or …render them free of disease ……” F invention in question hit by above provision F currently not patentable in India F US 6, 227, 202 obtained

SOFTWARE PATENTS & BUSINESS METHOD PATENTS

SOFTWARE PATENTS INDIA § Why Software is protected? § Copyright does not protect “ideas” behind software § Promote development of the software industry and computer-related industry § Software also exhibits technical behavior § Advantage for SMEs and independent Software developers.

SOFTWARE PATENTS - INDIA § WHAT IS NOT PATENTABLE? SECTION 3 (k) a mathematical or business method or a computer programme per se or algorithms;

Sec. 3 (k): Problem Areas § All computer implemented methods NEED NOT qualify to be called as computer programs § All computer implemented methods CAN NOT be considered as non-patentable – merely a computer program per se is not patentable

Sec. 3 (k): Problem Areas (Contd. . ) § a computer program per se is merely directed towards code; hence, a claim of the following nature is non-patentable A method of addition of two numbers comprising: § The claim should express it in simple statement which is readable and understandable by the Patent Office such as: A a method of addition of two numbers comprising: (a) obtaining value for a first variable from the user; (b) obtaining value for a second variable from the user; (c) …. .

Sec. 3 (k): Problem Areas (Contd. . ) Merely adding a conventional hardware to a program is not patentable; hence, a claim of the following nature is not patentable. A computer for implementing a method of addition of two numbers comprising: (a)obtaining value for a first variable from the user; (b)obtaining value for a second variable from the user; (c) …. .

Sec. 3 (k): Problem Areas (Contd. . ) merely mentioning a hardware which performs same necessary operation of the method (mere automation) – hit by section 2 (1) (j) WE CLAIM: A computer implemented method for controlling access to a portion of a document, the document comprising a plurality of portions, the method performed by at least one processor, the method comprising: § receiving a request to access the document portion; § determining whether to provide access to the requested document portion based on data describing past accesses of other portions of the document; and § responding to the request based on the determination.

Sec. 3 (k): Problem Areas (Contd. . ) A method is restricted to a specific area of technology A method for controlling access to a portion of a legal document which governs contractual obligations between two parties, the document comprising a plurality of portions, the method comprising: § receiving a request to access the document portion which pertains to contractual obligations between two parties; § determining whether to provide access to the requested document portion based on data describing past accesses of other portions of the document; and § responding to the request based on the determination.

Sec. 3 (k): A Solution to Problem A method should provide technical effect for being patentable; A method should solve a technical problem instead of merely avoiding the problem Technical Effect: It is defined as solution to a technical problem, which the invention taken as a whole, tends to overcome. Few general examples of technical effect are as follows 1) Higher speed 2) Reduced hard-disk access time 3) More economical use of memory 4) More efficient data base search strategy 5) More effective data compression techniques 6) Improved user interface 7) Better control of robotic arm 8) Improved reception/transmission of signal

Sec. 3 (k): Better Solution A method provides technical effect and at the same time, contains details of the hardware that can perform the necessary function

Various Categories of Claims § Method / Process § Apparatus / System § Computer Program Product

Method / Process Claims § It is possible to obtain grant if: § the claimed method possess “Technical Effect”; and § Mode of implementation is preferably by hardware (conventional in nature) and the same is clearly mentioned in the specification along with details of the hardware; and § Claims contain hardware limitation Example: A method for processing seismic data, comprising the steps of collecting the time varying seismic detector output signals for a plurality of seismic sensors placed in a cable, comprising: (a) …… (b) …… Steps involving technical effect

Apparatus / System Claims § A novel hardware implementing a conventional method § Clearly define inventive constructional hardware features Example: A register for storing data (process limitation) § Means should be defined Example: Means for mapping a set of points What “means” are used? Some of the workable means to be mentioned in the specification and in the sub-claims Input means – mouse, key pad, CD reader, touch screen, joy stick etc.

Computer Program Product Claims Example: - A computer program product in computer readable medium - A computer-readable storage medium having a program recorded thereon § Software program products are computer program per se if simply recorded on a medium. Hence, not patentable

Examples of software per se: - A computer program product in computer readable medium - A computer-readable storage medium having a program recorded thereon - A method for generating a new computer program using a software development tool - Scheme or method of bookkeeping - Business method in the field of accounting - Method of tax collection

ALLOWABLE SUBJECT MATTER A method having technical effect and having hardware limitation EXAMPLE: - A method for transmitting data across an open communication channel on a wireless device that selectively opens and closes a communication channel to a wireless network, and each wireless device including a computer platform and including a plurality of device resources that selectively utilizes a communication channel to communication with other devices across the network, said method comprising:

PATENTABLE SUBJECT MATTER - US § 35 U. S. C. Section 101 § “whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefore. . ” § Process= “process, art or methods” § No technical effect or technical contribution requirement

EXCEPTIONS-BY CASE LAWS § Diamond Vs Chakrabarty : ”anything under the sun made by man” is patentable---life form § Diamond Vs Diehr : laws of nature, abstract ideas, natural phenomena are exceptions to patentability § In re Allapat : practical application of an abstract idea, however is statutory

EXCEPTIONS-BY CASE LAWS § Before Diamond v. Diehr (1981), software was deemed as similar to mathematics and laws of nature, both of which are un patentable § Before State Street Bank v. Signature Financial Group case (1998 ), business method were considered per se un patentable.

BUSINESS METHODS PATENTS § Why Business method need to be protected? Innovative business methods equally contribute to a country’s economic development.

BUSINESS METHODS PATENTS § A business method that provides a “useful, concrete, and tangible result” is patentable subject matter. (State Street Bank v. Signature Financial, 1998) Example: Amazon’s one-click shopping

BUSINESS METHOD PATENTS Examples- Contd. . § Internet Purchasing § Advertising and Marketing § Auction on the Internet § Method of Funding College Tuition § Miscellaneous Finance § Training and Instruction § Accounting and Management System

PATENTABLE/ NONPATENTABLE INVENTIONS - EUROPE § Article 52(1)- patentable inventions are § New § Involve an Inventive Step § Susceptible of Industrial Application § Article 52(2) and (3)- non-patentable inventions are § Schemes, rules and methods for doing business as such § Programs for computers as such

PATENTABLE SUBJECT MATTER - EUROPE “Inventions” must be of technical character - must relate to a technical field - must be concerned with a technical problem - must have technical features in terms of which the matter for which protection is sought

SOFTWARE PATENTSEPO GUIDELINES EPO Guidelines Draft of EC Directive (2000) Computer Software “As such” are not patentable May be claimed Program which As a product through the exhibits the execution of software necessary technical effect May not be Program has no claimed technical effect Make a non-obvious “technical contribution” to the state-of-art, are patentable Computer program products either in a stand-alone format or on a carrier

PATENTABLE / NONPATENTABLE INVENTIONS - CHINA § “Invention”- any new technical solution relating to a product, a process or improvement thereof. § “Rules and methods for mental activities” are not patentable.

PATENTABLE INVENTIONS - CHINA Subject matters not patentable (Article 25 of the Chinese Patent Law) § Scientific discoveries; § Rules and methods for mental activities; § Methods for the diagnosis or the treatment of diseases; § Animal and plant varieties; § Substance obtained by means of nuclear transformation § Software is not expressly included here.

PATENTABLE / NONPATENTABLE INVENTIONS - CHINA Examples- Patentable Inventions 1. An invention using a computer program for measuring the viscosity of liquid 2. An invention employing a virtual memory management program to increase the capacity and the processing speed

CHINA. . Three conditions of inventions under Chinese Patent Law Novelty Inventiveness Practical Applicability New technical solution according to Article 2 paragraph 1 of the Implementing Rules Product Process Improvements

PATENTABLE INVENTIONS EXAMPLES. . § Used in industrial process control § Used to improve computer internal process § Used in measurement, control of measurement or test processes § Used in external data processing § Used in coding and imputing Chinese characters

CHINA Unacceptable Claims: § Pure software § Software recorded on carrier § The simple fit-together of software stored in the computer memory with processing equipment Legal Basis: Such descriptions do not express the technical solution of the software.

CURRENT SCENARIO CHINA Exemplary Claim A computer program for. . . A machine-readable medium having instruction codes stored thereon, . . . An apparatus comprising: a processor; and a memory having stored thereupon instructions, which, . . . US, JP India, China OK if Not patentable produces useful, concrete and tangible results

SOFTWARE PATENTS - JAPAN § Software-related inventions can be patented as: § § § Device Process Medium Computer Program Data Construction

DRAFTING A PATENT SPECIFICATION

BEFORE DRAFTING § What is the invention ? § Is invention patentable ? § Is invention novel, inventive ? § Prior art/prior disclosure ? § Oral disclosure ? § Prior printed publication available to the public ? § Prior public use ?

BEFORE DRAFTING- Contd. . VERIFY THE FOLLOWING: ü Conduct search ü ü ü ü Enlist problems in prior art What is the problem sought to be solved by the invention? What is the novelty? Is the solution obvious? Is it artificially excluded ? Has publication ensued? Ascertain the type of application -whether complete or provisional is to be filed ü Decide the area and nature of protection- Paris convention, PCT, ordinary application.

PATENT SPECIFICATION Read by: § Patent Office § Licensee/Assignee § Court § Technical peers/skilled persons § Competitors § Commercial players § General public

KINDS OF SPECIFICATION § PROVISIONAL SPECIFICATION § COMPLETE SPECIFICATION

KINDS OF APPLICATIONS § Ordinary or Non-Conventional Application § Conventional (Paris/PCT) Application § Divisional Application § Patent of addition

PROVISIONAL SPECIFICATION o o o Is a document describing the invention and need not contain claims Disclose as much as possible Decides the date of the application

COMPLETE SPECIFICATION § Is a techno-legal document, describing and specifically claiming the invention § FORM 2 “ The following specification particularly describes the invention and the manner in which it is to be performed. ”

PATENT SPECIFICATION Description Claims • Description discusses the invention • Claims define boundary of monopoly

DESCRIPTION § Description must describe the invention comprehensively § Should fully explain the problem to be solved with examples § No ambiguity § Should be adequate and sufficient so as to enable a person skilled in the art to perform and repeat the invention without inventor’s further inputs

CONTENTS OF THE DESCRIPTION § Title § Field of the Invention § Background of Invention § Prior Art details § Objects of Invention § Statement of Invention § Detailed description of Invention

TITLE § A concise statement providing the crux of the invention § Care should be taken to incorporate all major aspects claimed § Product-Process-Apparatus § Example: § Pen- A writing instrument § Brush- A cleaning article

FIELD OF THE INVENTION § More details than the title § Provides utility § Sometimes used as a tool for search in the absence of abstract

BACKGROUND § Provides the technical background of the invention § May include description of prior arts

WHAT IS A PRIOR ART? § Is a brief write-up of what is known before the invention; sets out the problems associated with each of the known art; and describes the problem proposed to be solved by the invention § In India, this is not mandatory

BACKGROUND. . § Un-solved problems § Prior art solution not working § Describe new solution adequately

OBJECT(S) OF THE INVENTION § Provides purpose of the invention § Main object(s) and Ancillary object(s) § Essential aspects and preferred/optional aspects.

STATEMENT OF THE INVENTION § Statement forms the main claim or claims in verbal agreement § It is essential only when there is a omnibus claim(s).

DETAILED DESCRIPTION OF THE INVENTION § Sets out best mode of performing the invention § Describes the invention in greater detail with examples/illustration/tables/graphs/Diagrams, etc § Description sufficient to enable a skilled person to put the invention into practice

CLAIM(S) § Is the operative part of the specification § Defines the monopoly to be conferred by the patent § Define the metes and bounds of the invention: at the time of infringement proceedings, only claims will be interpreted § If you do not claim, you disclaim

CLAIMS § The main claim defines the essential features and the sub-claims define the preferred / optional / additional features § The important, main properties need not be merged into the other claim. § A separate claim has to be formed for the important feature(s).

DO’s AND DON’T’s § Specification must describe the invention concisely § should explain the problem solved fully with examples § no ambiguity § should be adequate and sufficient so as to enable in the art to perform the invention

DO’s AND DON’T’s § Claiming too broadly (covering prior art): § No Protection at all § Claiming too narrow (terminology, features): § Competitor can use the invention § Claiming just right: § This is an art and requires lots of imagination § Claiming what is not supported by the description: § This can and must be avoided § Not claiming what the client wants § Claiming what the client does not use or need

A One way road § You cannot broaden the claims of a granted patent § You cannot broaden the disclosure and the claims § § § beyond what has been included when drafting the application that was filed You do not get a second chance except for simple clarifications and for narrowing the claims when further prior art is taken into account You are responsible for fulfilling the requirement of full and clear disclosure You are responsible for getting the scope of protection that the inventor deserves

INDEPENDENT CLAIMS DRAFTING INDEPENDENT CLAIMS- § Easy to understand the invention § Easy to search § Easy to license § Easy to establish infringement

CHARACTERIZATION IN CLAIMS § Characterization not possible in many cases § Need not be characterized § Even if characterized, sub-claims need not be restricted to characterized part

DRAFTING CLAIMS - CHEMICAL PATENTS § Substance per se -broad coverage § Substance can be defined in terms of nomenclature, general formula, structural formula, constituents, properties, constructional or structural features, use, etc § Process a) Starting materials b) Steps of the process c) Various parameters involved in each step, and d) End product.

DRAFTING CLAIMS - CHEMICAL PATENTS § Product per se § Composition/synergy § 2 nd generation product enhanced efficacy § Describe essential ingredients of product/composition § Ratio/percentage of the ingredients § Their effective amounts § Any optional/additional ingredients

DRAFTING TIPS § Proportions: Provide a broad workable range unless an exact amount is crucial and essential to the success of the invention § Specify the class and specific chemicals used Ex: All the oxidants that would enable the invention, all alkali/acids that would help to work the invention

DRAFTING TIPS Avoid negative examples Example; - Vast difference in the IC 50 values of anticancer drugs with two different hosts. -An anticancer drug effective against a subject may not be providing the similar result with a subject of another genus.

ELEMENTS OF A CLAIM § Preamble –indicates the subject matter for which the protection is sought § Connecting link- such as “comprising” or “consisting” or “wherein” etc § Body of the claim – indicates the feature of the invention

CLAIMS § The number of the claims shall be reasonable in consideration of the nature of the invention claimed. § If there are several claims, they shall be numbered consecutively in Arabic numerals. § Claims shall not rely in respect of the technical features of the invention, on references to the description or drawings. (Self explanatory)

PRINCIPAL/ INDEPENDENT CLAIM § Claim has to distinguish subject matter over prior art § Principal claim = generic term from prior art + one or more feature(s) § Note: Definition of generic term as short and as generic as possible

DEPENDENT CLAIMS § Any claim stating the essential features of an invention may be followed by one or more claims concerning particular embodiments of that invention. [ e. g. reaction conditions] § Dependent claims should bring restrictions to the claims from which it claims dependency.

GROUPING OF DEPENDENT CLAIMS All dependent claims referring back to a single previous claim, and all dependent claims referring back to several previous claims, shall be grouped together to the extent and in the most practical way possible.

An Example of Chemical Claim IN 235798 A N-phenyl- (2 R, 5 S) dimethylpiperazine derivative represented by the following general formula (I) or a salt thereof: Wherein: R 1: Cl, Br, -CF 3 or –O-CH 3 R 2: H or F Cy: 2 -cyclopropylpyrimidin-5 -yl, 2 -methylpyrimidin-5 -yl, or 6(trifluoromethyl)pyridin-3 -yl provided that R 1 is Br when Cy is 6 -(trifluoromethyl)pyridin-3 -yl.

An Example of Chemical Claim US PATENT NO. 6, 884, 421 A pharmaceutical composition for treating hyperglycemic condition, said composition comprising a pharmaceutically effective amount of: § Butyric acid § An insoluble wheat bran fibre; and § Guar gum fibre as a soluble hypoglycemic agent

Example of an Indian Claim - In Communications field INDIA A method for decoupling forward and reverse link carriers, said method comprising: assigning one or more forward link carriers to transmit data from a base station to a mobile station; assigning one or more reverse link carriers to transmit data from the mobile station to the base station; and limiting reverse link transmissions corresponding to each of the forward link carriers by …

Example of a US claim USA A method comprising: assigning one or more forward link carriers to transmit data from a base station to a mobile station; assigning one or more reverse link carriers to transmit data from the mobile station to the base station; and limiting reverse link transmissions corresponding to each of the forward link carriers wherein said limiting…

Example of EP claim A method comprising: assigning one or more forward link carriers to transmit data from a base station to a mobile station; assigning one or more reverse link carriers to transmit data from the mobile station to the base station; characterized by limiting reverse link transmissions corresponding to each of the forward link carriers by …

§ Inventor’s Idea of the Invention: § NOVELTY: Providing an end cap locator of the shape as shown in the figure § NEED: to make the entire device more attractive § WISH: Imparting a Unique Selling Proposition (USP) to the product

What are the main claims? An electronic device comprising: § a housing with an end cap locator; § a retractable elongate radio frequency radiating element passing through an aperture associated with the end cap locator, the radiating element being electrically connectable to an electrical circuit provided in the housing and being movable from a retracted position when substantially located in the housing to an extended position when substantially protruded outside the housing; § an end cap located on a free end of the radiating element, the end cap operatively engaging the end cap locator when the radiating element is in the retracted position thereby aligning the end cap in a predetermined orientation relative to the housing.

What are the main claims? An antenna assembly comprising: § an inner telescopic elongate element; § a collar element provided about a periphery of the said inner telescopic tube section and comprising therein an end cap locator; § a forward end of the said inner telescopic tube section being configured to receive an end cap; § wherein the end cap operatively engages with the end cap locator when the inner telescopic element is in the retracted position thereby aligning the end cap in a predetermined orientation relative to the collar element.

What does the main claims cover?

What do the main claims cover?

Patent Corporation Treaty (PCT) ØSigned by India, effective December 7, 1998 ØAbout 142 countries are members (as on January 14, 2010).

Common Approach UK H KO U G SA ON N G FIRST ITALY CHINA APPLICATION AN JAPAN KO R FR EA CE

WHY PCT ? Ø For protection in Multiple countries Ø If patent has inherent merits PCT IS THE ANSWER PCT IS NOT AN INTERNATIONAL PATENT!!!!

WHAT IS PCT ? ØPCT is a window through which an applicant can file a single patent application and secure priority in the designated states - procedure ØSearch Report: evaluates invention ØExamination Report (optional)

HOW TO FILE A PCT APPLICATION ? An applicant may file a PCT application in the Designated National Patent Office PCT HQ (Geneva)

THE PROCEDURE Months Filing of priority -founding application Filing of International application 12 Search report 6 Amendment in response 16 Publication of application 18

THE PROCEDURE THEN THE NATIONAL LAW OF THE CONCERNED STATES TAKES OVER AND EVENTUALLY PATENT IS GRANTED

Budapest Treaty India signed this treaty on 17 th December 2001

Budapest Treaty § Deposition of the Microorganism for the purpose of Patent. § Made available to public after grant

Budapest Treaty § International recognized depository § IMTECH- Chandigarh

Any Queries?

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