Patent-1

What is Patent?

—  A patent is an exclusive right granted for an invention, which is a product or a process that provides, in general, a new way of doing something, or offers a new technical solution to a problem.  In order to be patentable, the invention must fulfil certain conditions.

—  A patent is the right granted by the State to an inventor to exclude others from commercially exploiting the invention for a limited period, in return for the disclosure of the invention, so that others may gain the benefit from the invention.

—  Patent is provided for an entirely new contribution to human technological knowledge.

—  Invention means any manner of new manufacture and includes an improvement and an alleged invention. (sec. 2(8)), Patents and  Designs Act, 1911.

—  In the draft Patent Act of Bangladesh it has mentioned that:

—  “invention” means any new, sufficiently inventive and useful-

      (a) art, process, method or manner of manufacture,

      (b) machine, apparatus or other article,

      (c) substance produced by manufacture.

      and includes any new, sufficiently inventive and useful improvement of any of

      them, and an alleged invention.

—  Invention means a solution to a specific problem in the field of technology.

—  An invention may relate to a product or a process.

—  An invention is patentable if it is new, involves an inventive step and is industrially applicable.

  What does a Patent do?

    A patent provides protection for the invention to the owner of the patent. The protection is granted for a limited period, generally for 20 years but in Bangladesh for 16 years.

 Why are Patents necessary?

    Patents provide incentives to individuals by offering them recognition for their creativity and material reward for their marketable inventions. These incentives encourage innovation, which assures that the quality of human life is continuously enhanced.

What Role do Patents Play in Everyday Life?

Patented inventions have, in fact, pervaded every aspect of human life, from electric lighting (patents held by Edison and Swan) and plastic (patents held by Baekeland), to ballpoint pens (patents held by Biro) and microprocessors (patents held by Intel, for example).

    All patent owners are obliged, in return for patent protection, to publicly disclose information on their invention in order to enrich the total body of technical knowledge in the world. Such an ever-increasing body of public knowledge promotes further creativity and innovation in others. In this way, patents provide not only protection for the owner but valuable information and inspiration for future generations of researchers and inventors.

What kinds of Inventions can be Protected?

    An invention must, in general, fulfil the following conditions to be protected by a patent.:

   

•       It must be of practical use.   

•       It must show an element of novelty, that is, some new characteristic which is not known in the body of existing knowledge in its technical field. This body of existing knowledge is called "prior art".

•  The invention must show an inventive step which could not be deduced by a person with average knowledge of the technical field.

   

Finally, its subject matter must be accepted as "patentable" under law. In many countries, scientific theories, mathematical methods, plant or animal varieties, discoveries of natural substances, commercial methods, or methods for medical treatment (as opposed to medical products) are generally not patentable.

Conditions of Patentability:

—  An invention must meet several criteria to be eligible for patent protection. These include, most significantly, that 

1. The invention must consist of patentable subject matter,
2. the invention must be new (novel),
3. it must exhibit a sufficient “inventive step” (be non-obvious),
4. it must be industrially applicable (useful)
5. and the disclosure of the invention in the patent application must meet certain standards

Patentable subject matter

Discoveries and Inventions: A discovery (including the laws of nature physical phenomena and abstract ideas) is not a patentable invention even where a statute provides that ‘whoever invents or discovers any new and useful process, machine manufacture may obtain a patent therefore,’

  

—       The general rule being that patent protection shall be available for inventions in all fields of technology (see Article 27.1 of the TRIPS Agreement). While there are differences between countries, the following are generally excluded from patentability (see also Article 27.2 and 27.3 of the TRIPS Agreement):

—  discoveries of materials or substances already existing in nature;

—  scientific theories and mathematical methods;

—  aesthetic creations (which may be protected by industrial designs);

—  schemes, rules and methods for performing mental acts;

—  newly discovered substances that occur naturally in the world;

—  any invention that may affect public order, good morals or public health;

—  diagnostic, therapeutic and surgical methods of treatment for humans or animals (but not products for use in such methods);

—  plants and animals other than micro-organisms, and essentially biological processes for the production of plants or animals other than non-biological and microbiological processes.

—  In order to be eligible for patent protection, an invention must fall within the scope of patentable subject matter.

Novelty

—  Novelty is a fundamental requirement in any examination as to substance and is an undisputed condition of patentability.

—  Novelty is not something which can be proved or established; only its absence can be proved.

—  This means that an invention is considered to be new (or novel) if it does not form part of the prior art (or prior knowledge). The prior art is, in general, all the knowledge that has been made available to the public prior to the filing date (or priority date, if the priority of an earlier application was claimed) of the relevant patent application.

—  In many countries, any invention described through a publication (printed or made available electronically), or known anywhere in the world constitutes prior art and as a result can destroy the novelty of invention. In disclosing an invention through publishing or teaching about an invention (before filing for patent), a patentee risks not meeting one of the requirements of patentability.

—  Some countries such as the US provide for ‘Grace Period’ of up to 12 months from the moment an invention is disclosed by the inventor without losing novelty if a patent application is filed by the inventor within this period.

Inventive Step (or non-obviousness)

—  An invention is considered to involve an inventive step (or to be non-obvious) when, having regard to the prior art, the invention is not obvious to a person skilled in the particular field of the invention.

—  The non-obviousness requirement is meant to ensure that patents are only granted in respect of truly inventive achievements, and not to developments that a person with ordinary skill in the art could easily deduce from what already exists.

—  The question as to whether or not the invention “would have been obvious to a person having ordinary skill in the art” is perhaps the most difficult of the standards to determine in the examination as to substance.

 

—  The expression “ordinary skill” is intended to exclude the “best” expert that can be found. It is intended that the person be limited to one having the average level of skill reached in the field in the country concerned.

—  The expression “inventive step” conveys the idea that it is not enough that the claimed invention is new, that is, different from what exists in the state of the art, but that this difference must have two characteristics. Firstly, it must be “inventive,” that is, the result of a creative idea, and it must be a step, that is, it must be noticeable. There must be a clearly identifiable difference between the state of the art and the claimed invention. This is why, in some jurisdictions, there is the concept of an “advance” or “progress” over the prior art. Secondly, it is required that this advance or progress be significant and essential to the invention.

—  Some examples of what may not qualify as inventive, as established by past court decisions in some countries, are: mere change of size; making a product portable; the reversal of parts; the change of materials; aggregation; or the mere substitution by an equivalent part or function.

Industrial Applicability (or utility)

—  To be patentable, an invention must be capable of being made or used in industry.

—  This means that the invention cannot be a mere theoretical phenomenon, but it must be useful and provide some practical benefit.

—  If the invention is intended to be a product or part of a product, it should be possible to make that product. And if the invention is intended to be a process or part of a process, it should be possible to carry that process out or “use” it (the general term) in practice.

—  The term “industrial” should be considered in its broadest sense, including any kind of industry. In common language, an “industrial” activity means a technical activity on a certain scale, and the “industrial” applicability of an invention means the application (making use) of an invention by technical means on a certain scale. National and regional laws and practices concerning the industrial applicability requirement vary significantly. At one end of the spectrum, the requirement of industrial applicability is met as long as the claimed invention can be made in industry without taking into account the use of the invention. However, an idea of a certain new product alone cannot in itself be patented, unless it is an invention that is considered to have an industrial applicability. At the other end of the spectrum, the “usefulness” of the claimed invention is taken into account for the determination of the industrial applicability. The subject of utility and application extend to the sphere of agricultural industry in which patentable subject matter concern living things or processes by which biological material can be a product. A new enzyme engineered by a scientist might be novel, and meet the industrial applicability test without having any utility. It should be noted that, some countries do not require industrial applicability, but utility.

Sufficient Disclosure/Enabling Disclosure

—  An additional requirement of patentability is whether or not the invention is sufficiently disclosed in the application. The application must disclose the invention in a manner sufficiently clear and complete for the invention to be carried out by a person skilled in the specific technical field “person skilled in the art.”

—  The description should set out at least one mode for carrying out the invention claimed. This should be done in terms of examples, where appropriate, and with reference to the drawings, if any. In some countries, the description is required to disclose the best mode for carrying out the invention known to the applicant. For patents involving microorganisms, many countries require that the microorganism be deposited at a recognized depositary institution, if it cannot be fully disclosed otherwise.

—  In Patents and  Designs Act, 1911 this condition is found as specification.

What is specification? What are the contents of specification? Classify specification. Describe the importance of specification.

—  Specification

     Specification is a technical document which describes the nature of an invention. It is a legal document. It is an elaborated description of the thing which has been invented. Specification is a condition precedent for submission of patent application.

—  Contents of specification

    The specification should contain following matters:

—  Specification begins with a title sufficiently indicating the subject matter of invention.

—  A full description of the nature of invention. The total manner or method of performance must be described in the specification.

—  It must end with a specific claim defining the scope of invention.

—  If it is required drawing, diagram, map etc. of any particular invention can be included in the specification.

—  If the controller requires any model or sample of any invention it should be submitted. But they are not essential requirement.

—  Classification of specification

      Specification is divided into two classes as follows:

      Provisional specification

       Complete specification

—  Provisional specification

      It is not a full description of an invention. A provisional specification should contain the following things:

       It must begin with a title

       There must be general description of the invention

       The field of the invention

       The anticipated result of the invention

      The object of provisional specification is to give the inventor prior opportunity to gain for filing application.

      When a provisional specification is submitted, a complete specification should be submitted within 9 months (12 months in Draft Patent Act). The controller may extend one more month(3 months in Draft Patent Act) for submitting complete specification and the applicant must pay for it. If complete specification is not submitted within 12 months the application will be abandoned. This time is given so that the inventor can conduct further research and further improvement of invention. All the development and improvement must be included in the complete specification.

—  Complete specification

—  It is the full description of the invention. A complete specification should contain following things:

—  The title containing the invention

—  A full description of the invention containing all kinds of information and document so that a man of reasonable prudence can understand the claim of invention

—  The technical field where the invention is related

—  An indication of the back ground of the inventors work

—  The best method of carrying out the invention

—  The novel features of the invention compared with any background work

—  Drawing or drawings if necessary

—  Industrial application of the invention

—  The statement of the specific claim

Importance of specification

q  The specification is important for following three reasons:

—  It makes an invention available to the public

—  It makes other people aware about the boundary of the inventor or monopoly right of the inventor

—  It saves the time and energy of researchers from duplicating the invention

—  Under section 4(6) of the Patent and Designs Act 1911, the inventor gets a provisional protection from the date of application and sealing.

—  What kind of Protection does a Patent offer?

     Patent protection means that the invention cannot be commercially made, used, distributed or sold without the patent owner's consent. These patent rights are usually enforced in a court, which, in most systems, holds the authority to stop patent infringement. Conversely, a court can also declare a patent invalid upon a successful challenge by a third party.

—  What Rights does a Patent Owner have?

    A patent owner has the right to decide who may - or may not - use the patented invention for the period in which the invention is protected. The patent owner may give permission to, or license, other parties to use the invention on mutually agreed terms. The owner may also sell the right to the invention to someone else, who will then become the new owner of the patent. Once a patent expires, the protection ends, and an invention enters the public domain, that is, the owner no longer holds exclusive rights to the invention, which becomes available to commercial exploitation by others.

Who grants Patents?

—  A patent is granted by a national patent office or by a regional office that does the work for a number of countries, such as the European Patent Office and the African Regional Intellectual Property Organization. Under such regional systems, an applicant requests protection for the invention in one or more countries, and each country decides as to whether to offer patent protection within its borders. The WIPO-administered Patent Cooperation Treaty (PCT) provides for the filing of a single international patent application which has the same effect as national applications filed in the designated countries. An applicant seeking protection may file one application and request protection in as many signatory states as needed.

Who can apply for patent?

—  Under section 3 of the Patent Act 1911, any person whether he is citizen or not may apply for patent. A person may apply for patent alone or jointly with other person. The following persons are entitled to make a patent application:

—  By the actual inventor

—  By the assignee of the inventor

—  By legal representative of any such persons who entitled before his death

Time for application

—  The patent application must be made first in point of time.

—  If a person having an idea expresses his idea to another person who get a practical shape of that idea, in this case the person who invented the idea is the true inventor and is entitled to patent right if applies within a limited time.

—  If an employee makes an invention in the course of employment the right of patent depends upon the contract of employment. If the nature of employment is for the research and development the employer will get the patent but if the nature of employment is research the employee get the patent. If the contract is silent both the employer and employee will get the patent.

—  The application must be submitted with specification and it must be made with prescribed form and fee.

Discuss the procedure for granting patent

—  The whole procedure of granting patent is described in five steps as follows:

—  Submission of application

—  Examination of application

—  Advertisement of acceptance

—  Opposition and

—  Grant and sealing of patent

—  Submission of application (Section 3)

—  The application must be submitted to the DPDT in prescribed form and with prescribed fee. It must be submitted with a declaration of possession of an invention and with specification whether it is provisional or complete. If a person submits provisional specification he must complete specification within 9 months. If specification is not submitted at all the application shall be abandoned.

—  Examination of the application (Section 5)

—  After an application has been made to the Registrar, the Registrar shall refer it to an examiner. The examiner will consider the following matter:

—  Whether the application complies with all requirements

—  Whether there exists any lawful ground of objection

—  Whether the invention has already been published or claimed by any other person.

—  The examiner will submit report to the Registrar about his examination and the Registrar may decide the application to be granted or may require for amendment.

—  Order of amendment (section 5)

—  In following cases the Registrar may order for amendment of an application:

—  If the nature of invention and the manner of performance is not described in the complete specification

—  If the application, specification and drawing are not made in the prescribed form

—  If the title of specification dose not indicate the invention

—  The claim dose not define the invention

—  The invention described in the provisional specification and complete specification is not the same

—  The invention is not a manner of new manufacture

—  The specification relates to more than one invention

—  Patent addition or the improvement described does not match with the specification

—  Under section 5(2) if the controller gives an order of amendment or does not accept the application the applicant can make appeal to the competent authority.

—  Section 4 of the patent and designs Act 1911 provides if the application has not been answered or left in the Registrar office for 24 months it shall be deemed to be refused.

—  Advertisement (section 6)

—  The Registrar shall make an advertisement to make it open to the public so that anyone can object.

—  Opposition (section 8)

—  Within 4 months from the advertisement any person can put notice of opposition. The notice shall be given to the controller and he will decide the matter.

—  Ground of opposition (section 9)

—  Under 5 grounds any person can give notice of opposition:

1. The applicant has obtained the invention from him or as a legal representative

2. The invention has been claimed in any specification prior to the application

3. The nature and manner of invention has not been described in the application

4. The invention has been publicly used in Bangladesh or publicly known

5. Complete specification differs from provisional specification

—    The objection hearing and decision is subject to appeal.

—  Grant and sealing

—  If application is successful without objection or objection is not justified, patent office will issue a certificate of patent registration with seal of the office.