Intellectual Property Rights

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A Story to Start with..



How many of us know this guy?

Well before you go on to find who he is, first thank him. Thank him for what? for saving your life. Well he is Dr. Jonas Salk the Inventor of Polio Vaccine. His invention may or may not be a great thing, but whats great about him is he did not patent the vaccine and make personal profit. If he had patented the vaccine, he would have been a very rich man but millions of poor children would have been deprived of the life saving vaccine. When he was asked in a televised interview who owned the patent to the vaccine, Salk replied: "There is no patent. Could you patent the sun?". The world celebrates bill gates, steve jobs, etc for giving us high tech gadgets, but here is a man who has saved many of our lives but we dont even remember him now, How sad..
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Scope of talk
      

What is IP? What is a Patent? How are patents used? Patent filing strategies Copyright and other IP rights Agreements for collaboration Sum up

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What are intellectual property Rights?



Intellectual property refers to creations of the mind: inventions, literary and artistic works, and symbols, names, images, and designs used in commerce. IP protection allows people to own their creativity and innovation in the same way that they can own physical property. The owner of IP can control and be rewarded for its use, and this encourages further innovation and creativity to the benefit of us all.
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Categories of Intellectual Property

 

IP is of two categories: Industrial property - includes inventions (patents), trademarks, industrial designs, and geographic indications of source Copyright - includes literary and artistic works such as novels, poems and plays, films, musical works, artistic works such as drawings, paintings, photographs and sculptures, and architectural designs.
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Industrial Property
   

Patents Trademarks Industrial designs Geographic indications of source

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What is a patent?


A patent gives an inventor the exclusive right for a limited period to stop others from making, using or selling an invention without the permission of the inventor. It is a deal between an inventor and the state in which the inventor is allowed a short term monopoly in return for allowing the invention to be made public.

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Patent is a property right

 

A patent is a property right and hence, can be gifted, inherited, assigned, sold or licensed. As the right is conferred by the State, it can be revoked by the State under very special circumstances even if the patent has been sold or licensed or manufactured or marketed in the meantime.

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Patent is territorial in nature

 

The patent right has territorial limitation. Inventors/their assignees will have to file separate patent applications in countries of their interest, along with necessary fees, for obtaining patents in those countries. There is no global or international patent.

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Obligation of the applicant



In return for exclusive limited monopoly, a patentee must disclose the invention in a patent document for anyone to practice it after the expiry of the patent or practice it with the consent of the patent holder during the life of the patent.

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Conditions for patenting

   

An invention must satisfy the following three conditions of : (i) Novelty (ii) Inventiveness (Non-obviousness) (iii) Usefulness/utility

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Novelty


 

An invention will be considered novel if it does not form a part of the global state of the art. Information appearing the magazines, technical journals, books, newspapers etc. constitute the state of the art. Oral description of the invention in a seminar/conference can also spoil novelty. This is ascertained through Prior art search
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Novelty


Novelty is assessed in a global context. An invention will cease to be novel if it has been disclosed in the public through any type of publications anywhere in the world before filing a patent application in respect of the invention. Prior use of the invention in the country of interest before the filing date can also destroy the novelty.
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Inventiveness (Non-obviousness)


A patent application involves an inventive step if the proposed invention is not obvious to a person skilled in the art i.e., skilled in the subject matter of the patent application. The prior art should not point towards the invention implying that the practitioner of the subject matter could not have through about the invention prior to filing of the patent application
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Usefulness/Utility


An invention must possess utility for the grant of patent. No valid patent can be granted for an invention devoid of utility.

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Innovations could be simple

 

Patents are about functional and technical aspects of products and processes. Most patents are for incremental improvements in known technology evolution rather than revolution. The technology does not have to be complex.

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What are patentable inventions in India?

  

Art, process, method or manner of manufacture Machine, apparatus or other article Substances produced by manufacture, and includes any new and useful improvements of any of them and an alleged invention

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What are not patentable



An invention may satisfy the conditions of novelty, inventiveness and usefulness but it may not qualify for a patent under the following situation. (i) An invention which is frivolous or which claims anything obviously contrary to well established natural laws e.g., different types of perpetual motion machines.
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What are not patentable



(ii) An invention the primary or intended use of which would be contrary to law or morality or injurious to public health e.g., a process for the preparation of a beverage which involves use of a carcinogenic substance, although the beverage may have higher nourishment value

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What are not patentable



iii) The mere discovery of a scientific principal or formulation of an abstract theory e.g., Raman effect. (iv) The mere discovery of any new property or new use of known substance or the mere use of a known process, machine or apparatus unless such a known process results in a new product or employs at least one new reactant.
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What are not patentable



(v) A substance obtained by mere admixture resulting only in the aggregation of the properties of the components thereof or a process for producing such substance. (vi) The mere arrangement or rearrangement or duplication of features of known devices each functioning independently of on another in a known way.
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What are not patentable



(vii) A method or process of testing applicable during the process of manufacture for rendering the machine, apparatus or other equipment more efficient. (viii) A method of agriculture or horticulture

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What are not patentable



(ix) Any process for medical, surgical, curative, prophylactic or their treatment of human being, or any process for a similar treatment of animals or plants. (x) Inventions relating to atomic energy.

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Term of a patent
 

Twenty years from the time of filing the patent application TRIPS agreement

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When should you file a patent?



Can be filed very early, to establish priority of the invention in case the disclosed invention is only at a conceptual stage and a delay is expected in submitting full and specific description of the invention. It is called a Provisional Specification filing

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When should you file a patent?



Complete specification must be submitted within 12 months of filing the provisional specification, extendable by 3 months. It is not necessary to file an application with provisional specification before the complete specification. An application with complete specification can be filed right at the first instance.

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Contents of complete specification

It would include the following: (i) Title of the invention (ii) Field to which the invention belongs iii) Background of the invention including prior art giving drawbacks of the known inventions & practices. (iv) Complete description of the invention along with experimental results.

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Contents of complete specification

(v) Drawing etc. essential for understanding the invention. (vi) Claims, which are statements, related to the invention on which legal proprietorship is being sought. Claims are very critical in patents. They have to be drafted very carefully.

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Who could be the inventors?

They are usually decided on the following criteria. (i) All persons who contribute towards development of patentable features of an invention should be named inventor(s). (ii) All persons, who have made intellectual contribution in achieving the final results of the research work leading to a patent, should be named inventor(s)
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Maintain records
Patent is a techno-legal document and a property right  Bickering often occurs among inventors before, during and after filing of a patent application  To avoid controversy, it is very essential that all scientists engaged in research should keep factual, clear and accurate record of daily work done in the lab notebook consecutively numbered and signed both by the scientists and the team leader


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Does patenting prevent publishing?

No, but publishing can prevent patentingif not done in the proper order!  In most countries in the world, you must file a patent before the first public disclosure of your invention But you can file in just one country (e.g., India) before the publication Can wait another year after the first filing before filing in other countries PCT System allows most of the expense of later foreign filing to be delayed for several years
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You can publish immediately after filing



 

Can publish in any country after the initial filing, even though the patent is initially filed in only one country Do not have to wait until the patent is issued But decisions whether or not to file patents need to be made fairly quickly in order not to delay academic publication unduly

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U.S. rules have a peculiar exception the grace period

For a U.S. patent, you can publish first and file secondprovided that you apply for the patent within a year following publication  But you will lose patent rights in most other countries Sometimes used as a backup if the US market is important and publication was inadvertently made


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How the patenting process works

  

Researcher identifies a finding which might have commercial potential if patented Researcher files an New invention report with the university (before publication) IPR/Technology Licensing Office evaluates invention to decide whether to patent it

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Criteria for deciding whether to patent

 

Is it patentable? (novel, non-obvious, useful) Might it attract investment? (technical feasibility, potential market size, competition, profitabilityor even licensee already identified) OR Is there a public health need which might be met if market is small but sufficient for one company and protected by patent

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If the decision is made to file a patent

Patent agent/attorney drafts the patent application  Submits (files) patent application to government Patent Office: Patent Pending  Patent prosecution: correspondence back-andforth between Patent Office and agent regarding novelty, non-obviousness, adequate description (can take several years)  Patent is allowed and granted (issued): Patented


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Copyright
 

 

In the case of literary, dramatic or musical work, not being a computer program To reproduce the work in any material form including the storing of it in any medium by electronic means; To issue copies of the work to the public not being copies already in circulation; To perform the work in public, or communicate it to the public;
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Copyright
   

To make any cinematograph film or sound recording in respect of the work To make any translation of the work To make any adaptation of the work; To do, in relation to a translation or an adaptation of the work, any of the acts specified in relation to the work

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What is the term of a copyright?

 

If published within the life time of the author of a literary work the term is for the life time of the author plus 60 years. For cinematographic films, records, photographs, posthumous publications, anonymous publication works of government and international agencies the term is 60 years from the beginning of the calendar year following the year in which the work was published For broadcasting the term is 25 years from the beginning of the calendar year following the year, in which the broadcast was made

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Copyright


When a work is published by authority of the copyright owner, a notice of copyright may be placed on publicly distributed copies. As per the Berne Convention for protection of literary and artistic work, to which India is a signatory, use of copyright notice is optional. But it would be a good idea to incorporate a copyright notice.
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Design


Design means only the features of shape, configuration, pattern, ornament or composition of lines or colours applied to any article whether in two dimensional or three dimensional or in both forms, by any industrial process or means, whether manual, mechanical or chemical, separate or combined, which in the finished article appeal to and are judged solely by the eye; but does not include any mode or principle or construction or anything which is in substance a mere mechanical device.

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Trademark
A trade mark is any sign which can distinguish the goods and services of one trader from those of another.  A sign includes words, logos, colours, slogans, threedimensional shapes and sometimes sounds and gestures.  A trade mark is therefore a "badge" of trade origin. It is used as a marketing tool so that customers can recognise the product of a particular trader


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Agreements inventors should know

Confidentiality (Secrecy)/ Non-disclosure agreement  Material Transfer Agreement  Development Agreement (in which the licensee assumes all responsibility for further development)  Co-development agreement (Both parties have a role in development)


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Confidentiality Agreement
Discussions to establish a business relationship concerning a proprietary health product will probably involve confidential information  The confidential information can be of many kinds :  Laboratory data and other research data, sources of materials, methods of production, nature of licensing agreements, detailed design of specialised equipment, staff training requirements, countries in which the developer would like to sell the product etc.


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Confidentiality Agreement (contd)

Usually before entering into serious discussions about a relationship with another party, it is wise to conclude a confidentiality agreement.  The key reason for having the confidentiality agreement, besides the obvious one of protecting confidential information, is to assure that both parties are treating the discussions with seriousness.


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Materials Transfer Agreement

Before agreeing to sign a license for further product development, a potential licensee may wish to evaluate the new product or process to see if it works well in their hands  The Licensor should be willing to provide the samples but has an interest in assuring that the prospective licensee does not misuse the samples. Misuse could include passing on a portion of the sample to some third party or using the sample to generate additional material for future use without concluding a license.  Public sector research organisations in India have to follow Transfer Biological Materials Agreement of the Ministry of Health & Family Welfare, Govt of India.

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Invitations to Collaboration
In the course of its research programs, most research institutes will either acquire and/or develop various IP  As a research program approaches the point where health product candidates will be prepared and clinical trials launched, there will be a need to find a partner with which to proceed because few labs have facilities for upscaling or high quality production facilities of their own  The industry partner should be chosen carefully


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Sum-up
IP is of two kinds Industrial property Copyright  Patents Criteria What is patentable When to patent  Patent and publish  Enter into appropriate Agreements before collaboration

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Finally..
Does anyone remember how many patents did Rancho had in the climax of movie 3-idiots.. ..

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Thank you

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