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welcome to the lecture on the types of weight and search in this lecture we will do the following concepts types of weight and search one of the searches which is patentability search understanding the invention disclosure process there are different types of patent searches undertaken worldwide in relation to search one type of search is the patentability search which is essentially to identify whether a given invention is patentable the second type of search is called the validity search or is also called the invalid research this is typically done post grant of a patent to address the issues of validity of a particular pattern the third type of search is called the freedom to operate search this type of search is essential before you bring the product into the market to look at if there are any patents which are possibly going to be infringed the fourth type of search is called the landscape search which is an extensive search to understand technology trends in relation to a given area utilizing patent data information today we will discuss the aspects of patentability search before we go into the aspects of understanding patentability search it is important to take into consideration the requirements of an invention under patent law to understand the requirements one needs to keep in mind that patents are given to inventions and inventions must meet the following criteria is that an invention must be eligible that is it should be eligible under the law for patenting the second criteria is novelty third one is non-obviousness then comes utility novelty non-obviousness and utility are essentially the patentability criteria so we have patent eligibility and then we have patentability criteria all of these must be in in the form of disclosure so therefore there are norms with respect to how this information must be disclosed in patent applications patent eligibility is about the subject matter that is open for patenting different jurisdictions differ with respect to the eligibility in relation to patents some jurisdictions have a very inclusive approach in which the provision of the law is open in terms of not specifically mentioning what is not patentable under the law and broadly giving certain subject areas or subject matter with respect to patenting so in a given provision under the law you may have that new methods new apparatus new machines or combinations of those could be patentable if they are useful that is a very very simplistic way of looking at a eligibility provision whereas in many other jurisdictions which includes India there is a restrictive way or rather the exclusive way of providing the options in relation to eligibility so under these laws what are not inventions is specifically mentioned so where a statute mentions what are not inventions it means that certain subject matter is excluded from the purview of patenting so which means that those laws are very restrictive in their scope in relation to a certain subject matter so therefore there are other conditions also which can be imposed in relation to eligibility for instance public order one there could be conditional aspects in relation to eligibility so therefore the jurisdictions vary from what we call absolute terms limited sometimes and in terms of the exceptions there are different subject matter that can be coming under the purview of patent eligibility so when we say subject matter it is essentially the concept which is claimed as part of the claims so here we are looking at a given product or a process or a system or it could be a combination of any of these which could be the scope of subject matter in a given patent application so for instance we are looking at machines we can have different machines or apparatus the combinations of different structures which could be taken as part of patents so the apparatus claims device claims are these which are structure related now in the area of unpredictable arts which the area of pharma and biotech belong to we have the we have them taken as in the composition of matter so composition of matter claims are essentially about the use of different ingredients chemicals even the area of biotechnology where they're modified genes and the constructs are taken and their interventions these come under the world purview of what we call composition of matter under the given provision which can be implemented under the law moving on in India patent eligibility from the point of view of section 3 has certain connotations under Section 3 it starts with section 3a and goes up to section 3 P so almost a significant part of the English alphabets you can imagine a 2 P so these are the different provisions under section 3 and subsections which indicate to what are not inventions which means these are not allowed as inventions under the but intact some of the examples are for instance inventions which are frivolous cannot be taken as inventions mere discoveries or ideas are not patentable the expression of an idea is patentable provided there is utility and it is in a tangible way in terms of a product or a process those inventions they could be very novel not obvious but which are against public order again cannot be allowed as invention so that is one those which are harmful to the environment and those which are harmful to living organisms are also not patentable the connotation under the law is that those which are primarily so it is possible that there are chemical inventions which are secondarily harmful for the environment those don't come under the purview of the restricted subject matter those which are primarily harmful come under the purview of the subject matter so it's also important to understand the scope of the restriction that is provided under a given provision under the law another important category of inventions which are not allowed under the Indian Patent Act are the the specific reading of section 3d in which there is new form new property new use so new form of a known substance in India will not be patentable unless there is an impure fricassee one can recall the recent case of know whatis vs. in North India where this was discussed from beginning from the the high code to the our way up to the Supreme Court so what is the issue here it is about a particular compound whose salt form is taken as a patent in India well I was moved as a patent application India it was rejected by the Patent Office this went down to the IPA be the intellectual property appellate board post which it went to the Madras I could and from there it went to series of steps to the Supreme Court they issue here in consideration is that it is not an allowable subject matter the cost in 1993 the freebase of that particular compound was already patentable was already patented and in India the salt form of it was being moved as a patent application so since it's a restricted subject matter under the Indian Patent Act the new form of a known substance would not be patentable it can be patentable only when there is enhanced efficacy and today enhanced efficacy is interpreted under the law to be therapeutic efficacy another reading of s
Thanks for your comment Ignacio Mariacher, have a nice day.
- Ocie Babione, Staff Member
welcome back to the session 4 day 4 of the workshop and today we are going to focus on patent searching and the types of patent searching i hope yesterday's session was not very hectic and all the basic information about patents to set a platform to understand patent searching and patent drafting was triggered and i hope to receive many questions from your side in view of that because since the basic foundation would be unclear it would be very difficult to understand the requirements of various parts various sections of patent draft or patent specification or patent application and thus i would expect many questions from your side if at all any of the concepts are not clear or any of the points you want me to re i treat today's session is though the contents of the specification are not much but today's session would be another hectic session wherein i shall try to explain you the importance of the searching different types of the searching and the perspective on which the searching can be taken forward apart from that we are also going to see how a particular search is actually performed on some of the databases i am going to show some live demonstrations to you in this particular session very easy but maybe you may not be aware of those things and that is the reason why you may feel that searching is something which is very different or difficult so that will help you to yourself perform some of the searches for the inventions that you may have or your friends or your family members may have so let us proceed further before going directly to the prior searching and the requirements of patent searching let me just come on the same page with the requirements as in terms of why patent searching is really required from the perspective of filing a patent application or getting a grant of it this particular flowchart is the flowchart which we discussed yesterday about the cycle of operated application and this is all the steps that are involved in the granting of a patent application you may note that in these steps there is no mentioning of a patent search right all these steps are performed at the patent office side for example filing once we do it the publication examination and the issuance of the examination report everything happens at the patent office side so where does the role of patent searching comes into picture it is really essential to understand one more point that you need to appreciate is like in the step number 105 that is once the request for examination is filed an examination of a patent application is performed that is a scrutiny of the application which we have filed in step 101 is performed at step 106. the examiner to whom the case is allocated he performs a search and this search is referred to as patent search now since the examiner is the person who is performing the patent search then why are we discussing about it in this particular session a very obvious question that may come to your mind but the essential of the patent search is that which i also discussed indirectly with you is that if in step 106 examiner finds out that there was something exactly like your invention or overlapping concept like your invention already available in the literature or the prior art you will not get a patent because there will be no differences between your invention and their prior reference which he has cited similarly if in this step number 106 if he finds that you yourself have published an ieee research paper or a journal or a thesis which has your invention in detail or explained in detail he will still not be in state of granting your patent because novelty is absolute in nature and any publication or disclosure prior to the filing of a patent application is considered as novelty destroying this concept was also seen by us yesterday i hope you recall that now the patent searching what we are going to discuss today is something different from what the examiners do though though it is on the similar line but the step where this patent search is to be performed is completely different from the step 105 we or i am planning to discuss with you that the searching or a prior ad searching or also referred to as patentability searching is recommended to be performed before the step 101 that is before you file a patent application you should be sure that whatever contents i am writing in my complete specification or whatever subject matter that i want to indicate that it is my invention which solves this particular problem and provides a solution for that is not at all disclosed or not at all available before i file a patent application for it right thus this particular session will be focused completely on the steps which are performed before the filing of a patent application right this is very important to understand let us move on what is a prior ad search as the name indicates prior art these are two different terms i i guys i hope you you must have noted that whatever terms that are introduced in intellectual property right i strongly recommend you to break them to understand the meaning of it same concept was seen while we discussed about trademark a mark which represents a trade same was happened with uh trade secret secret which is associated with the trade same is the concept of prior art you break the terms and you will automatically understand the meaning of it prior as a normal english it means it is earlier or existing and art is nothing but an art or let us say a literature or a knowledge that is available before before something so earlier or existing knowledge that is a simple understanding and simple explanation of the term prior art i hope there is no question on this because it is very simple confirmation let us go on let us move on to our next particular thing prior art from the perspective of patents is actually you know considered and non-considered so what things actually during the priority in patents are considered and not considered that is what this particular slide talks about so for example whenever you do a priority search all the information that is available in public domain is considered so what all things can be available in public domain when as the name indicates public domain means any knowledge of a person that may be in written form or that may be an oral form so for example any public display document or any published document that is available in the art what is the source of publication one is books other is newspaper third is internet absolutely so electronic documents whichever are published in public domain that may also be considered as a kind of published database or a you know publicly displayed information so in short whenever we try to say that which particular database or which particular source is considered while we consider for patent searching then the immediate answer that comes to your mind is that whatever is available on the internet is considered as published knowledge right so nowadays even the books that we studied in you know from first under till the graduation or post graduation and even after that everything is available on the internet and thus internet is a
Thanks PosavkamaJ your participation is very much appreciated
- Ocie Babione
About the author
I've studied entrepreneurship at Central Michigan University in Mount Pleasant and I am an expert in graph theory. I usually feel geeky. My previous job was sewing machine operators I held this position for 12 years, I love talking about decorative birds and volleyball. Huge fan of Shania Twain I practice fishing and collect beanie babies.
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