Dr Nagender Aneja

Dr Nagender Aneja

Workshop on Patents

Bachelor/Master's Degree, Universiti Brunei Darussalam, 2021

Students will learn the Introduction to Patents and Patents Search.

Introduction

Can you patent an idea?

  • What is the idea?
    • Result
    • Idea is a machine, process, manufacture, or composition of matter

What are the types of inventions that can be patented?

  • Useful inventions
    • protected by utility patents.
  • Ornamental inventions
    • protected by design patents.
  • Plant inventions
    • protected by plant patents.

Useful Inventions

  • Process
  • Machine
  • Manufacture
  • Compositions of matter

Excluded - depends on a country

  • Scientific Theories
  • Mathematical Models
  • Plant or Animal Variety
  • Commercial or Business Methods
  • Computer Programs per se
  • Diagnostic or Surgical Methods for treatment of humans or animals (opposed to medical products)

Ornamental Inventions

  • Any type of surface ornamentation

Plant Inventions

  • Any new and distinctive plants

Legal Requirements to get a Patent

  • Is your Invention Useful?
    • Utility Requirement
  • Is your Invention a Machine, Process, Manufacture, Composition of Matter
    • Eligibility Requirement
  • Is your Invention New?
    • Novelty Requirement
  • Is your Invention Not-Obvious?
    • Non-obviousness Requirement

Process patents

  • A process is a series of steps, acts, or methods.

    • patent on the method of doing something.
  • Different method claims can protect different aspects of the invention.

Machine patents

  • A machine is an apparatus or a group of assembled components that achieves a result.

    • Examples: a computer, a car, and a desk.

Manufacture

  • Material that is milled, cut, treated into a new form, quality, or property.

    • similar to a machine, and in some instances, the subject matters overlap.
    • distinction is that a manufacture is a single piece of material that is shaped, whereas a machine is assembled components.
    • Examples: screwdriver tip, screw or nut.

Composition of matter

  • A composition of matter is a composition of two or more substances.
    • chemically or mechanically joined
    • Gasses, fluids, powders, or solids are forms of a composition of matter.
    • Examples: concrete, fiberglass, and ceramic.

Novelty Requirement: Is the invention novel?

  • Relative Novelty
    • Inventor can disclose the invention to others before filing the patent application
  • Absolute Novelty
    • Inventors are not allowed to disclose the invention before filing of the patent application

Nonobviousness requirement: Is the invention non-obvious?

  • The invention must be non-obvious to get a patent.
    • it is not an obvious variant of the prior art
      • To a person of ordinary skill in the art
  • If a combination of old things requires a significant redesign, the combination is not obvious.
  • If one of the references taught away from the combination of two references, then it is nonobvious.

U.S. Food and Drug Administration

  • Patents and Exclusivity
    • Patents are a property right granted by the IP Office anytime during the development of a drug and can encompass a wide range of claims.
    • Exclusivity refers to certain delays and prohibitions on approval of competitor drugs available under the statute that attach upon approval of a drug or of certain supplements.
    • A new drug application (NDA) or abbreviated new drug application (ANDA) holder is eligible for exclusivity if statutory requirements are met.
  • Term
    • Periods of exclusivity and patent terms may or may not run concurrently.
    • Patent - 20 years from the date on which the application for the patent was filed
    • Exclusivity - depends on drug type

Prior Art Search

  • What is a Prior Art?
    • Published Content in any language anywhere before the filing date
      • whether inventor knows or not
      • It can invalidate your claims if available to public before priority date
    • Novelty Search, Prior Art Search, Patentability Search, Patent Search
    • Validity Search, Invalidity Search
    • Freedom-to-Operate Search, Clearance Search
  • Does a patent search help?
    • Determine if the invention is Novel and Non-obvious
      • Reduce the chance of extensive amendments after filing
      • Describe your invention as improvement over relevant prior art
  • What happens to a Patent Application after Examiner found a Prior Art?
    • Patent Application will be rejected by the Patent Office
    • However, the Patent Application Claims can be amended and can be re-submitted for further examination
  • How to conduct Prior Art Search
    • Determine Point of Novelty
    • Brainstorm keywords that describe the invention
    • Determine top Applicants, Inventors in the area
    • Search the Patents and Non-Patent Literature
    • Do Forward and Backward Citation Search
    • Save all results
  • Search
    • Search Patent
    • Search Non-Patent
      • Google, Bing, You
      • Google Scholar
      • IEEE
      • Springer
      • Elsevier
      • Lens
  • Prior Art Search Report
    • Invention Title
    • Summary of the Invention
    • Keywords
    • List of Patent Literature
    • Title, Patent Number, and Related Text
    • List of Non-Patent Literature
    • Title, URL, Related Text

Quiz

  • A patent can only be obtained for product
  • A patent can be obtained for Medical Product
  • A patent can be obtained for novel and non-obvious surgical method
  • A patent can be obtained for minor improvement

Patent Search

FreePatentsOnline.com

  • ABST/”cardboard box”
  • ABST/”cardboard box”~5
  • ABST/card*
  • ABST/*ectomy
  • ACLM/”cardboard box”
  • SPEC/aluminum
  • TTL/aluminum
  • Classification
    • IPC
      • IPC/A63F13/00 or IPC/A63F13/*
    • IPC Revised
      • IPCR/A63F13/00
      • IPC/A63F13/*
    • US Class
      • CCL/100/50
    • Field of Search
      • FOS/714/100
      • FOS/714/*
  • Assignee
    • AN/smith
    • ACN/US
  • Inventor
    • IC/Munich
    • ICN/GB
    • IN/smith
  • Filing Date
    • Single Date: APD/1/5/2012
    • Range: APD/1/1/2010->12/31/2020
    • Math: APD/NOW-20YEAR->NOW

USPTO

  • Patent Search
  • Publication Search
  • TTL/(tennis and (racquet or racket))
  • ABST/(tennis and (racquet or racket))
  • ACLM/(tennis and (racquet or racket))
  • SPEC/(tennis and (racquet or racket))
  • Dates
    • Application Date (APD)
      • APD/1/$/2020->12/$/2020
      • APD/Jan/$/2020->Dec/$/2020
      • APD/January/$/2020->December/$/2020
    • Issue Date (ISD) for grant
    • Publication Date (PD) for published
  • Assignee
    • Assignee City (AC)
    • Assignee Country (ACN)
    • Assignee Name (AN)
    • Assignee State (AS)
  • Classification
    • Cooperative Patent Classification (CPC)
      • CPC/C07H19/10
    • Current CPC Classification Class (CPCL)
    • International Classification (ICL)
      • ICL/G06F019/00
    • Current US Classification (CCL)
      • CCL/427/$
  • Inventor
    • Inventor City (IC)
    • Inventor Country (ICN)
    • Inventor Name (IN)
    • Inventor State (IS)

Google Patent Search

[WIPO]

EPO Patent Search