basic requirements for patentability of microorganisms can microorganisms be patented in india patenting of living organisms in india
budapest treaty, intellectual property strategist, INTELLECTUAL PROPERTY STRATEGY, Patent Innovative Ideas, Patent Micro Organisms, tech corp legal

Can Micro-organisms be Patented?

You Might wonder weather Micro-organisms can be Patented or not?

Intellectual Property Protection in the form of a patent is granted for an invention which is novel, has an inventive step and is capable of being made or used in an industry.  But when an invention is said to be novel? An invention is new if it is not in the public domain by publication in any document or used in the country or anywhere in the world before the date of filing of patent application with full specification.  

As per the criteria for filing a patent- MICROORGANISMS in their NATIVE or ORIGINAL form cannot be patented as such!

With the advancement in the field of Microbiology and Biotechnology, Man has been developing tailor-made microorganisms to exploit their economic potential.

Prior to 1980, Inventions pertaining to microorganisms and other biological entities were subject to product patents in India i.e patents were granted for processes and products obtained using microorganisms but no patents were given for microbes as such.

For example- Louis Pasteur received a U.S. Patent No 141072 for process of fermenting beer but no patent was given for the living entity “yeast” per say. However, in 1980, Ananda Mohan Chakrabarty developed a “genetically modified” bacterium capable of breaking down crude oil.  This property of degrading crude oil was not not found in the naturally occurring bacteria and thus this invention was thought to have significant value for cleaning up oil spills.

Ananda Mohan Chakrabarty filed a US Patent for this genetically modified bacteria but his claim on a living entity was rejected by USPTO (United States Patent and Trademark Office). But the Supreme Court decision went in the favor of Ananda Chakrabarty. The Supreme Court stated that new microorganisms not found in nature were either ‘manufactured’ or ‘composition of matter’. The ‘product of nature’ objection therefore failed and Ananda Mohan Chakrabarty was granted US Patent No. 4,259,444 in 1981.

Thus, Genetically Modified Microorganisms are PATENTABLE!

However, when an invention involves a microorganism, completely describing said invention in the description to enable a third person put the invention into practice becomes difficult.  It would be virtually impossible to describe the microbial strain, its isolation, selection and modification to guarantee that the other person will obtain the same strain from the same environment. In such a situation, the microorganism itself will form an essential part of the disclosure and a sample of the microorganism must be deposited in a recognized institution for its availability to the public.

But while drafting a patent application, it has to be taken care that the description part of the patent application must enable a person skilled in the relevant area of technology to put the invention into practice.

In order to patent an invention involving microorganism in several countries, it is necessary not only to file a written description but also to deposit a sample of the microorganism with a specialized institution.

Because the handling and preservation of microorganisms require special expertise and equipments, such a process of depositing microorganism with a specialised institute for every country is complex and costly.

The “BUDAPEST TREATY” is an International Treaty administered by World Intellectual Property Organization (WIPO), signed in Budapest, Hungary in 1977 and came into force in 1980. The treaty allows or requires the Contracting States (80 Contracting Parties) to deposit a sample of microorganism for the purpose of patent with any Internationally recognized authority (IRA) irrespective of whether such authority is on or outside the territory of the said State. This means that it is no longer required to submit microorganisms to each and every national authority in which patent protection is required no longer exists.

There are 80 Contracting Parties of Budapest Treaty. For the list of Contracting States of Budapest Treaty refer to-

 http://www.wipo.int/treaties/en/ShowResults.jsp?lang=en&treaty_id=7

There are 46 on record INTERNATIONAL DEPOSITARY AUTHORITIES (IDA) under article 7 of the Budapest Treaty. For the list of INTERNATIONAL DEPOSITARY AUTHORITIES (IDA) under article 7 of the Budapest Treaty refer to-

http://www.wipo.int/export/sites/www/treaties/en/registration/budapest/pdf/idalist.pdf

However the depositor should, in particular, ensure that the deposit is made in the name of the applicant for the patent and a sample of the microorganism is deposited to an International Depositary Authority before filing the patent application. There should be sufficient time for delays in the mail or customs formalities (if the sample is being sent by mail). If the sample is found to be non-viable by the International Depositary Authority (IDA), a replacement sample has to be provided by the applicant for the patent.

India became a member of Budapest Treaty on 17 December 2001. In India, Microbial Type Culture Collection and Gene Bank (MTCC) at the Institute of Microbial Technology (IMTECH), Chandigarh, is a recognized International Depository Authority (IDA) of microorganisms.

Patent Application Filing Procedure-Process in India
Patent Filing India, patent filling steps, Patent Innovative Ideas, patent research service, PATENT STRATEGY, tech corp legal

7 Step Strategy for Preliminary Patent Searches

This article provides a 7 step strategy for searching and evaluating relevant prior-art or any publication that discloses the invention for which a patent is to be filed.

1). The First and the most important step is to Brainstorm Terms that describe your invention. Begin by analysing and describing in written the purpose, composition and use of invention. Note down the important keywords and synonyms of words that describe the invention.

2). The second step involves identification of relevant Cooperative Patent Classification (CPC) using the keywords identified in the previous step from the USPTO (United States Patent & Trademark Office) Website Search Feature. Go to the USPTO Home Page and enter “CPC scheme (Key words describing invention)” on the top right search box and scan the results thus obtained.

In the following example we have identified the CPC scheme for shape (contour and architect are its synonyms used).

Look for the relevant results from the list obtained. If no relevant search reults are obtained repeat the step using other keywords & their synonyms identified in the previous step.

 

3). In the Third step verify the Cooperative Patent Classification (CPC) identified in the previous step by reviewing the definitions. CPCs are hyperlinked to a CPC classification definition. Definitions are helpful in establishing you have determined the most relevant classification.

4). Retrieve and Review all the patent applications assigned to the most relevant CPC classification. Focus on the abstract and representative drawings on the front page of the patent applications and narrow down the most relevant patent applications.

5). Conduct In-depth review of patents selected based on their front page information for similarity to your own invention paying close attention to the claims, additional drawings and specifications. References cited in the previously identified Patents may lead you to additional relevant patents.

6). Retrieve and Review in depth all the published patent applications under the Cooperative Patent Classification (CPC) previously identified for similarity to the invention paying close attention to claims, drawings and specifications of the patent.

7.   After completion of the preliminary search you may broaden your search based upon available time and resources. You may broaden your search by identifying International Patent Classification (IPCs)U.S. Patent Classification (USPC). Rerun your search using Espacenet, IPIndia and WIPO. Since inventions can be publicly disclosed in a variety of non-patent literature and electronic publications, you can choose to search books, journals, websites, technical catalogs and conference proceedings as well.

You may choose to hire a registered patent attorney or patent agent to review your search and conduct a follow-up search of his/her own.For further information on patents and patent filling in India connect with our highly skilled and experienced patent lawyers and IP strategists.

Go-to patent consultant for all time zones, be it new product launch in Asia, IP landscape across EU, freedom-to-operate analysis in Japan or patent invalidation for litigation in US.

Every business has a #strategy. WE 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 believe in BASICs.

Schedule a call today via clarity to get #strategic #advice #patents #brandbuilding #brandtrademarkstrategist

Patents | Intellectual Property India

Advantages of filing a provisional application
brand trademark, Madrid System, Provisional Filling Of India, trademark filling in India, trademark infringement, Uncategorized

Provisional Refusal of International Trademarks in India

 

Under the Madrid System, Trademarks are registered worldwide in a convenient and cost-effective way. The Madrid Protocol is one centralized system to apply for protection of trademark in 115 countries by filing a single application.

“An image is not simply a trademark, a design, a slogan or an easily remembered picture. It is a studiously crafted personality profile of an individual, institution, corporation, product or service”. – Daniel J. Boorstin

When an applicant who is interested in a global Trademark files an application for registration of its trademark with its respective Intellectual Property Office (IP Office), the information is given to the International Bureau of World Intellectual Property Rights. The International Bureau of World Intellectual Property Rights examines and closely inspects the application based upon the requirements of Madrid Protocol. If the application fulfils all the criteria, the trademark is published in the International Gazette of Trademark and thereafter it is notified to all the designated countries.

“If you want something new, you have to stop doing something old” ― Peter F. Drucker

The Indian Trademark Office examines and allots an International Registration Designating India (IRDI) number to every International trademark registration designating India received from the International Bureau of WIPO.

The Brand trademark is examined by the trademark examiner on the basis of its uniqueness and similarities to trademarks registered and in the pipeline before the Indian Trademark Registry.

“It isn’t all over; everything has not been invented; the human adventure is just beginning.” ― Gene Roddenberry.

If there is any objection while examining the trademark application, for protection of such trademark registration in India, a Provisional refusal is notified to the International Bureau of WIPO within 18 months from the date the International registration was notified to India.

“Innovation is the specific instrument of entrepreneurship…the act that endows resources with a new capacity to create wealth.” ― Peter F. Drucker

Trademark Objections under Provisional Refusal In India

The objection is raised under Section 9(1) (a) of the Trade Marks Act 1999, if the mark is not unique and as such it is not efficient to distinguish the services of one person from those of others.

The objection is raised under Section 11(1) of the Trade Marks Act, 1999, if the mark is similar to the trademarks previously filed. There exists a possibility of confusion on the part of the public.

“Excellence must be achieved through the eyes of those who judge us; once achieved it can only be maintained with constant innovation.” ― Tom Collins.

Provisional refusal is basically an Examination Report containing objections.  The International Bureau provides the details of such provisional refusal to the trademark applicant of the International Trademark registration and records the provisional refusal in the International Register along with the date on which the notification was sent.

The provisional refusal is also published in the WIPO Gazette, with an indication as to whether the refusal is total (i.e. relates to all the goods and services covered by the designation) or partial (i.e., relates to only some of those goods and and services covered).

“Innovation needs preparation, collaboration and the light of the soul. Every challenge provides that light – a greater depth of understanding about life and truth.” ― Amit Ray,

How should the International Trademark applicant respond to Provisional Refusal Issued by the Indian Trademark Office under the Madrid Protocol ?

The normal deadline to revert to trademark objections raised by the Indian TrademarkOffice is 1 month from the date of receipt of the provisional refusal notification by the trademark applicant.

The International trademark applicant can also engage a trademark agent or an Indian trademark attorney having address in India by executing a Power of Attorney in the favour of the agent/attorney in the Form TM-48.

For an extension of timeline to respond to trademark objections, the Indian trademark attorney can file FORM TM-56 application for extension of time by 1 month prescribed by Rule 79 or by rule 80(4) and is at the discretion of the trademark office.

The Trade Marks Registry (TMR) office of India then considers the response of the trademark applicant of the international registration and may either confirm the refusal or move for advertisement of the international registration in the Trade Marks Journal.

“Be the initiator of things you wish to see, but can’t see. Be the originator of things you wish you feel but can’t feel.” ― Israelmore Ayivor,

Apply for TM Registration and discuss your brand strategy and understand importance of brand, logo and tagline with expert consultants at Tech Corp International Strategist India TCIS, India.

IF YOUR STRATEGY AND DOCUMENTATION ARE IN PLACE WE GET”YOUR” TRADEMARK REGISTERED IN TWO- THREE WEEKS.

We at Tech Corp International Strategist India(TCIS) provide Trademark services:

TRADEMARK OFFICE ACTION RESPONSES

We at TCIS,India evaluate your office action after client discussion and understanding his business quotes and let you know if there is a fair chance to get your trademark application approved. If you decide to hire our trademark lawyers / trademark attorneys at TCIS to draft a response to the office action, cost effective flat rates are available.

As experienced trademark attorneys we at TCIS are well versed in responding to office action letters issued by trademark examining attorneys at the Indian Patent Office(IPO) and Indian Trademark Office.

Trademark Monitoring Services

We at TCIS,India also offers trademark monitoring services for OUR clients. This service is designed to protect the client’s trademark by periodically reviewing the records of the Indian Patent Office(IPO) and Indian Trademark Office, and additional sources, depending on the monitoring service requested, for applications to register, or use of, confusingly similar marks.

Other Services

The firm offers a variety of services, including representation in cancellation and opposition proceedings at the Trademark Trial and Appeal Board.

CALL NOW FOR YOUR FREE CONSULTATION WITH TRADEMARK ATTORNEY at 011 6654 4992 OR SEND AN EMAIL TO legal_desk@patentbusinessidea.com

When you contact Trademark attorney at TCIS,India whether by phone or email, you can expect to receive prompt, professional, efficient and courteous service.

Clients of the firm enjoy the following:-

  • Free initial trademark consultation with an experienced trademark attorney
  • Review of office actions by an experienced trademark attorney
  • Trademark attorney personal attention to their matters
  • Firm ideology of involvement that requires “going the extra mile”
  • Firm policy to return client phone calls and respond to emails immediately whenever practical
  • Cost-effective flat rates