“The scope of improvement is infinite, precisely because perfection is unattainable”.
Often, after filing a patent for an invention, additional modifications and improvement of the invention surface. The improvements or modifications may take place as a result of further experimentation to improve the invention, or as a result of feedback received from the industry.
In such a scenario, where the invention is already protected by a patent, the improvement or modification over the original patented product or process may be protected by a “Patent of Addition” in India.
“Patent of Addition” falls under Sections 54, 55 and 56 of the Patents Act, 1970. A patent of addition facilitates the addition of new subject matter in the form of modifications and improvements to an existing disclosure of the parent application, while retaining the priority date for claims based on the original disclosure by the patentee.
Filing a new patent application is another option, but the priority date of the new patent will be different from that of the previously filed application (or parent application). The claims of the patent of addition inherit the priority date of the parent application. As a result, claims in the patent of addition can have a priority date that is before the filing of the patent of addition.
However, the applicant must be the same for the parent patent application and the patent of addition. If the improvement or modification involves an additional applicant, a patent of addition may not be pursued.
A patent of addition effectively enables an applicant to make incremental improvements and add embodiments that might not justify their own patent applications without needing to file parallel applications. More specifically, the applicant need not pay a renewal fee for a patent of addition, thereby saving costs.
A patent of addition is a suitable and attractive option for applicants to add additional features onto previously filed patent applications, it may not always be the right tool for the job, it has its own disadvantages.
In contrast to the perception that the patent of addition inherits the priority date of a parent application, certain claims may have their own priority dates. Only the claims fully supported by the disclosure of the parent patent application are entitled to the priority date of the parent patent application.
A term of a patent is 20 years from the date of filing of patent application and the term of patent of addition is limited to its parent application’s term. For example, a patent of addition filed in 2017 that claims priority to a parent application filed in 2013 will expire in 2033, as opposed to 2037 if a new patent application was filed instead of patent of addition application. This reduced patent tenure might result in loss of significant revenue from products or methods that pertains to the new patent claims supported by the patent of addition.
Further, introduction of new claims in the patent of addition may leave the door open for an opponent to assert the invalidity of parent application if the disclosure in the parent application do not justify the additional claims. In situations where support for the new subject matter of the patent of addition is not clearly set out in the parent application, it may be advantageous to file a separate application to utilise the distinctiveness of the new claims, and to obtain the benefit of a full patent term.
Accordingly, a patent applicant must look at all the pros and cons before making a decision to apply for a patent of addition.
International Patent Research Workshop for Intrigued Genius Minds
Take your intelligence to next level. Welcome to the world of understanding innovations happening in cutting edge technologies across the globe. Learn more about current technology trends that will shape up economic disruptions across the globe. Learn more about innovations happening in the field of Artificial Intelligence, Cognitive Computing, understand use of chatbots, virtual agents, virtual assistants, wearables – augmented and virtual reality, IoT, Blockchain and other state of the art technology.
Albert Einstein, Thomas Alva Edison and Wolfgang Amadeus Mozart all were genius people in their lifetime.
Now what set these people apart from the rest and made them achieve what they did?
It’s pretty simple really: they all simplified the existence of existing laws and the way of seeing life in different way.
Every human is eligible to attain that height of being genius. CHOICE is YOUR whether to BELIEVE in YOUR IDEAS and #makeithappen
Imperfection is beauty, madness is genius and it’s better to be absolutely ridiculous than absolutely boring. – Marilyn Monroe
International Patent Research Workshop
Venue: Aerocity, New Delhi
Demystifying Patent Research Basics
The patent research workshop will cover holistic view of the legal viewpoint
As to how to perform patentability search?
How to perform state of the art searches?
How to perform validity patent searches?
How to perform Infringement searches and freedom to operate searches?
As a company it is important to understand the type of research which needs to be performed to identify the OPPORTUNITIES to create your own niche in the competitive market. For example, patentability search can be performed if any person or any innovator of a company has an idea or is doing a research.
WHEN to perform patentability search before filing a patent or after filing provisional patent application?
The company would like to know What is the SWOT analysis or in simple terms, identifying what are the different innovations or research which has already happened across the globe.
As a business owner knowing what happens in 2-3 years from now is a strategic move
When to protect intellectual property?
It’s very tough question to answer and it is not very easy to protect every creation of mind. Yes, there are some ways in which you can actually add some pointers and then file a patent application. Ideas are creation of mind and it might happen at one point of time the same idea is bouncing in multiple minds at neutron level across the globe.
First very important factor for an innovation to be PATENT WORTHY is that an idea should be new. New means that idea should be new concept all over the world not only in India. So the idea actually qualify for even being patent worthy is performing patentability research. Many patent databases are very helpful to perform the patentability. One example is WIPO which stands for world intellectual property organisation.
The WIPO database is worldwide patent database. Other important databases are espacenet, and USPTO.
Many times we get patent queries regarding what kind of patent databases are you using for performing your any kind of patentability or any kind of patent research?
Our BELIEVE is SIMPLE we use our intellect and use non paid patent tools.
Obviously, when you are using a paid database it is expensive. However, you are not using your intellect as a patent attorney or as a patent researcher to come up with ways and means to do your research in a manner which suffice the purpose of that particular invention or idea so that is very very important.
Over the years we have been able to find out better results by defining the kind of scope of work which we plan when we get a patent research query.
There is no STEP WISE MANTRA that would be applicable in all the patent searches. What is important is to analyse CRUX of the invention or the innovative features of the invention use your intellect as a patent researcher, and make the key strings.
What kind of strings will work better and if you have less time how to go about doing state of the art searches?
State of art search is basically talks about what kind of innovation already has happened in a particular sector. For example it can be a solar sector where by solar energy is being used to light up the lamp or it can be a LED sector where the technology relates to packaging of the LED to reduce the heat sink capacity.
However, what is important to understand what kind of approach or parameters are you going to take into considerations as a patent researcher.
KEY LEARNINGS FROM THE WORKSHOP
We will be discussing a lot on different kind of technologies. It is exciting to know that YOU don’t have to be an expert in a particular technology to do a patent research. Obviously, if you are a scientist or Phd in particular area it will take less time to understand the technology but at the same time as a patent researcher or as a patent attorney one should understand your job is to identify the innovative features.
Imbibing the acumen of a researcher and techno legal domain will is helpful when you are responding to office section response. The office action response is issued by the patent examiner and the patent examiner performs the search on a particular invention and will come up with objections so as a patent expert or patent attorney you need to respond to those objections. How to respond to office action response will be part of different workshop which we would be doing in the coming months.
How different kind of strategies can be applied as there is no one strategy which will be applicable to all patent searches but of course that key take away from the workshop would be that you would be able to understand what are the parameters you should actually look when you are doing the research.
Multinationals are coming in India so there is lot of job opportunities which are going to be there in near future and if you are already in the league of understanding how to perform patent research and can STRATEGISE a BUSINESS PLAN for the startup you get yourself a high package job.
You will be in a position to help the companies with their day to day activities whereby a lot of research is being performed by the scientists and many a times they have no clue whatsoever.
What kind of research is of prime importance?
What kind of research should be finished first?
What kind of research is being done by competitors?
Pharmaceutical based Inventions Filed before the Indian Patent Office
The patent examination guidelines for pharmaceutical based inventions cover the following points:
1. Patent Claims Of Pharmaceutical Inventions which includes Markush claims
2. Comprehensive patent search strategy for conducting prior art search by the Patent Examiner
3. Definition of “invention” under section 2(1)(j) of the Indian Patent Act
4. Assessment of Novelty aspect of the invention
5. Assessment of Inventive Step
6. Industrial applicability of the technology
7. Subject matter of Inventions which are not patentable
8. Sufficiency of description, clarity and support of the patent claims in the specification
9. Unity of invention
Patent Search Strategy for Pharmaceutical Inventions:
Comprehensive patent search strategy will be followed by the Indian Patent examiners. The patent search strings will include a combination of various search parameters.
The search parameters will be a combination of keywords, International Patent Classification (IPC), and compound searches. Thorough prior art search is expected to be carried out in patent as well as non-patent databases.
Pharmaceutical Compounds can be searched and identified from the various databases:
a) Molecular formula and structural formula searching;
b) Name searching using IUPAC nomenclature;
c) Compound searching using CAS Registry Numbers;
d) Generic name searching (INN); and
e) Search using International Patent Classification (IPC)
Many a times pharmaceutical compounds which are derivatives of known compounds having established pharmaceutical activities are claimed in the patent specification in the form of generic names (International Non-Proprietary Names, INN). In such cases, the patent examiner will search the prior art with INNs prior art search string. Moreover, in numerous pharmaceutical based inventions the patent applicant claims the second use or an indication in the form of a product claim of an already known pharmaceutical compound or a new form of a known pharmaceutical compound.
Even though, the patent examiner can seek information about the INN of the said pharmaceutical substance claimed in the patent application from the patent applicant there are chances that the conclusions drawn from the information provided may mislead the patent examiner. In my view, the Indian patent examiner can find out more information about the International Non-Proprietary Names by analysing data from the Electronic Orange Book.
Prior Art Search Strategy for Conducting Drug Patent Search in India
Search on Electronic Orange Book: Approved Drug Products with Therapeutic Equivalence Evaluations
Search String based on
Therefore, prior art patentability search for patents covering (International Non proprietary Names – INN) as listed in the USFDA Electronic Orange Book should be taken into consideration. However, the Orange Book only provides US patent data. The patentability search can be extended and this information can be further used to conduct patent family searches on EPO website. Further, patentability search can be performed by analysing forward citation and backward citation of the identified patent specifications.
Biological Material and Micro-organism Deposit Details to be Disclosed in the Indian Patent Application
If the invention relates to a biological material which is not possible to be described in a sufficient manner and which is not available to the public, the application shall be completed by depositing the material to an International Depository Authority (IDA) under the Budapest Treaty. The deposit of the material shall be made not later than the date of filing of the application in India and a reference of the deposit shall be given in the specification within three months from the date of filing of the patent application in India. All the available characteristics of the material required for it to be correctly identified or indicated are to be included in the specification including the name, address of the depository institute and the date and number of the deposit.
Every business has a #strategy. We at TCIS,India facilitate the process of identifying Key issues and help amplify business goals of any business (short term goals and long term goals). Everything is simple we tend to complicate and use heavy words to prove our point. We at TCIS believe in BASICs.