• UNIT II: Patents: Patents: Patents- Patentability

Criteria, Types of Patents-Process, Product &

Utility Models, Software Patenting and protection,
Overview of Patent Search-Types of Searching,
Public & Private Searching Databases, Basics of
Patent Filing & Drafting, Indian Patents Law
Patents - Elements of Patentability: Novelty, Non
Obviousness (Inventive Steps), Industrial
Application - Non - Patentable Subject Matter -
Registration Procedure, Rights and Duties of
Patentee, Assignment and license , Restoration of
lapsed Patents, Surrender and Revocation of
Patents, Infringement, Remedies & Penalties -
Patent office and Appellate Board
Overview of Patent Search-Types of
Searching
• Investing in comprehensive patent
searches can uncover insights that help
your innovations, as well as your
organization as a whole, stand out in your
industry. As your organization and its
inventions move through the innovation
cycle, different types of patent searches
become necessary. Many of these patent
searches contain similar processes, yet
their purposes are unique. 
 5 Types of Patent Searches
• 1. Patentability Search
• Also known as a novelty search, a patentability search helps
identify whether or not an idea is novel and nonobvious. The
most complete searches include all types of prior art to give an
inventor or organization a comprehensive look at the
technology landscape. A patentability search should be
completed during the ideation phase, as well as prior to
disclosure. 
• 2. Freedom to Operate Search
• A freedom to operate search, often abbreviated as FTO,
determines how similar your product is to existing patents, and
therefore how likely you are to infringe on a patent by making
and marketing your invention. You may also see this type of
search called a patent infringement search or right-to-use
search. 
• Completing an FTO search early in the innovation cycle helps
R&D teams design around existing patents. Later on, the
results of the search can identify whether you may need to
license other patents to bring your product to market. 
• 3. State of the Art Search
• Completing a state of the art search (also known as a product
clearance or patent landscape search) allows you to examine
the literature related to a specific industry, rather than around a
certain technology, which may be applicable across industries.
Using a state of the art search helps businesses find
competitors and existing products within their field. These
insights allow researchers, engineers, and leaders to make
strategic decisions at any point within the innovation cycle.
• 4. Invalidity Search
• To assess the strength of a specific patent, companies will use
an invalidity search. This is also called a validity search. The
results of this search determine whether or not the patent
holder can claim infringement. They can also be used to
decide licensing fees or value. If an invalidity search finds
evidence in the form of existing, yet undiscovered, prior art, the
patent should not have been granted and is unenforceable.
This type of patent search is completed after a patent is
granted.
• 5. Evidence of Use Search
• Some organizations actively seek out products that
infringe on their patent rights. This type of search is
called an evidence of use search. To find these products,
an organization or inventor will review similar patents
and look for evidence the patent is utilized in a way that
infringes on the searcher’s rights. Evidence of use
searches happen after a patent is granted and as it
matures.
• Done correctly, each of these searches can slow down
an innovation team. To bring your invention to market
faster
 Public & Private Searching
Databases
• Free patent search websites are ideal for gaining quick
leads. It makes no sense to pay hefty amounts for a
gigantic database only to search for a patent or two.
Below listed are few free patent databases that might
help you in your pursuit of patent data search and
analysis. 
• Google Patents
• Espacenet
• USPTO Web Patent Database
• PQAI
• Patentscope by WIPO
• Lens.org
• Google Patents
• Launched on 14 December 2006 as an experiment,
Google Patents started with just a repository of patents.
It quickly became a preferred option for most of the
people in the industry because of its speed to access a
patent. Back then, if you had to read a patent, you would
avoid reading it on USPTO or Espacenet – they were
slow and provided a bad user interface. Google got this
one thing right and stuck to it.
• If you have a patent number that you want to read, all it
requires is to enter that patent in the address bar of your
Chrome browser and press enter. The first result would
always be a direct link to the patent. This made reading a
patent a two-click job which was earlier very
cumbersome. 
• Over the period of time, Google patents started working
on its coverage and now it indexes more than 87 million
patents with full text from the patent offices of 17
different countries, including:
• United States Patent and Trademark Office (USPTO)
• European Patent Office (EPO)
• China’s National Intellectual Property
Administration (CNIPA)
• Japan Patent Office (JPO)
• Korean Intellectual Property Office (KIPO)
• World Intellectual Property Organization (WIPO)
• Deutsches Patent- und Markenamt (DPMA)
• Canadian Intellectual Property Office (CIPO)
• and patent data from various other patent offices of
countries including Russia, UK, France, Spain, Belgium,
Denmark, Finland, Luxembourg, and the Netherlands.
 Basics of Patent Filing & Drafting, Indian
Patents
• As it is well known, inventions are created and protected
under patent rights and a strongly drafted patent
application determines the potential of an invention.
• The patent process includes various steps, including,
prior art patent search, patentability analysis, drafting
and filing provisional patent application, drafting and
filing complete (non-provisional) patent application,
patent prosecution, patent grant and patent renewal.
• For each step, the strength of patent depends upon
quality of drafting patent application, specifically
prosecution before the patent office. Therefore, drafting
a patent application is a crucial and challenging process.
 Patent Drafting India
• Drafting of patent application in India requires
compliance with provisions of Indian Patents Act, 1970.
Specifically, Section 10 of Indian patent law states
“Contents of specifications”, which requires every patent
specification, whether provisional of complete, to
describe the invention.
• This section requires that every patent application filed
in India shall begin with a title sufficiently indicating the
subject-matter to which the invention relates and shall
include drawings (patent figures or patent illustrations)
as part of the patent specification.
• The Indian Patents Act further states that if required, in
any particular case, the Controller of Patents may ask
the patent applicant or inventor to further provide a
model or sample of anything illustrating the invention or
alleged to constitute an invention.
• Patent Drafting and Writing Strong Patent Applications
for Creating & Protecting Inventions by Technology
Experts and Patent Attorneys from TechLaw.Attorney
• Every patent application that is to be filed with Indian
patent office shall:
• Fully and particularly describe the invention, its
operation or use and the method by which it is to be
performed;
• Disclose the best method of performing the invention
known to the patent applicant and for which the claim
protection is sought;
• Patent claim or claims defining the scope of the
invention for which protection is claimed; and
• An abstract to provide technical information on the
invention.
 Indian Patents Law Patents
• Indian Patent Law is defined by various provisions of the
Patents Act, 1970. Under this law, patent rights are
granted for inventions covering a new and inventive
process, product or an article of manufacture that are
able to satisfy the patent eligibility requirements of
having novelty, inventive steps, and are capable of
industrial application.
• Patents Act in India – Overview
• What is a 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. To get a patent, technical
information about the invention must be disclosed to the
public in a patent application.
• The history of Patent law in India starts from 1911 when
the Indian Patents and Designs Act, 1911 was enacted.
• The Patents Act, 1970 is the legislation that till date
governs patents in India. It first came into force in 1972.
• The Office of the Controller General of Patents, Designs
and Trade Marks or CGPDTM is the body responsible for
the Indian Patent Act.
• The Patent Office has its headquarters in Calcutta and
has branches in New Delhi, Chennai and Mumbai. The
office of the CGPDTM is based in Mumbai. Nagpur hosts
the office of the Patent Information System and also the
National Institute for Intellectual Property Management.
• The Controller General supervises the Act’s
administration and also offers advice to the government
on related matters.
• The Patents Act has been repeatedly amended in 1999,
2002, 2005, 2006 respectively. These amendments were
required to make the Patents Act TRIPS compliant.
TRIPS stands for Trade-Related Aspects of Intellectual
Property Rights.
• The major amendment in the Patent Act was in 2005,
when product patents were extended to all fields of
technology like food, drugs, chemicals and
microorganisms. The Rules under Patent Act were also
• Patent Law Amendment Act 2005 
• Salient features of the Patents (Amendment) Act 2005
related to product patents:
• Extension of product patent protection to products in
sectors of drugs, foods and chemical.
• Term for protection of product patent shall be for 20
years.
• Introduction of a provision for enabling grant of
compulsory license for export of medicines to countries
which have insufficient or no manufacturing capacity;
provided such importing country has either granted a
compulsory license for import or by notification or
otherwise allowed importation of the patented
pharmaceutical products from India (in accordance with
the Doha Declaration on TRIPS and Public Health)
• Section 3 (d) regarding patentability.
• Rights granted by a Patent
• If the patent is for a process, then the patentee has the
right to prevent others from using the process, using the
product directly obtained by the process, offering for
sale, selling or importing the product in India directly
obtained by the process.
• If the grant of the patent is for a product, then the
patentee has a right to prevent others from making,
using, offering for sale, selling or importing the patented
product in India. 
 Elements of Patentability
• Sections 3 and 4 of the Indian Patents Act, 1970
specifically state exclusions to what can be patented in
India.
• There are, however, certain criteria that are required to
be met in order to make an invention patentable. The
patentability of an invention is determined by its ability
to meet the criteria.
• Even before delving into the criteria, it is important to
understand the and invention meaning and patented
meaning. According to Section 2(j) of the Indian Patents
Act, 1970 an invention means "a new product or process
involving an inventive step and capable of industrial
application.", such invention protected under the
• The following criteria determine what can be patented in India:
• 1. Patentable subject matter:
 The foremost consideration is to determine whether the invention
relates to a patentable subject-matter. Sections 3 and 4 of the
Patents Act list out non-patentable subject matter. As long as the
invention does not fall under any provision of Sections 3 or 4, it
means it has patentable subject matter (subject to the satisfaction
of the other criteria).
• 2. Novelty:
• Novelty is an important criterion in determining patentability of an
invention. novelty or new invention is defined under Section 2(l) of
the Patents Act as "any invention or technology which has not been
anticipated by publication in any document or used in the country or
elsewhere in the world before the date of filing of patent application
with complete specification, i.e., the subject matter has not fallen in
public domain or that it does not form part of the state of the art".
• Simply put, the novelty requirement basically states that an
invention should never have been published in the public domain. It
must be new with no same or similar prior arts.
• 3. Inventive step or Non-Obviousness:
• Inventive step is defined under Section 2(ja) of the
Patents Act as "a feature of an invention that involves
technical advance as compared to the existing
knowledge or having economic significance or both and
that makes the invention not obvious to a person skilled
in the art". This means that the invention must not be
obvious to a person skilled in the same field as the
invention relates to. It must be inventive and not obvious
to a person skilled in the same field.
• 4. Capable of Industrial Application:
• Industrial applicability is defined under Section 2(ac) of
the Patents Act as "the invention is capable of being
made or used in an industry". This essentially means that
the invention cannot exist in abstract. It must be capable
of being applied in any industry, which means that the
invention must have practical utility in order to be
Non - Patentable Subject Matter
 Non - Patentable Subject Matter
• An invention which is frivolous, or which claims anything obviously
contrary to well established natural laws
• An invention the primary or intended use or commercial exploitation
of which could be contrary to public order or morality or which
causes serious prejudice to human, animal or plant life or health or
to the environment
• The mere discovery of a scientific principle or the formulation of
discovery of any living thing or non-living substances occurring in
nature
• The mere discovery of a new form of a known substance which
does not result in the enhancement of the known efficacy of that
substance or the mere discovery of any new property or new use for
a known substance or of the mere use of a known process, machine
or apparatus unless such known process results in a new product or
employs at least one new reactant
• A substance obtained by a mere admixture resulting only
in the aggregation of the properties of the components
thereof or a process for producing such substance.
• The mere arrangement or re-arrangement or duplication
of known devices each functioning independently of one
another in a known way
• A method of agriculture or horticulture
• Any process for the medicinal, surgical, curative,
prophylactic diagnostic therapeutic or other treatment of
human being or any process for a similar treatment of
animals to render them free of disease or to increase
their economic value or that of their products
• Plants and animals in whole or any part thereof other
than microorganisms but including seeds, varieties and
species and essentially biological processes for
production or propagation of plants and animals
• A mathematical or business method or a computer
program per se or algorithms
• A mere scheme or rule or method of performing mental
act or method of playing game
• A presentation of information
• An invention which in effect, is traditional knowledge or
which is an aggregation or duplication of known
properties of traditionally known component or
components
• Inventions relating to atomic energy and the inventions
prejudicial to the interest of security of India
- Registration Procedure
Rights and Duties of Patentee, Assignment
and license
 • Restoration of lapsed Patents
• The Patents Act provides certain safeguards for restoring a lapsed
patent. Accordingly a patent that is ceased to have effect because
of failure to pay the prescribed fees within the prescribed period
under Section 53 of the Act or within such period, allowed under
Section 142 of the Act.
• The patentee of his legal representative, may, make an application
in the prescribed manner for the restoration of the lapsed patent.
• In the case where the patent was held by two or more persons
jointly then with the leave of the Controller one or more of them
without joining others may submit the application for restoration
within eighteen months from the date on which the patent is
ceased to have effect.
• Though the renewal fees can be paid by any person, the application
for the restoration of a lapsed patent, the application has to be
made by the patentee or his legal representative.
Surrender and Revocation of Patents
Infringement, Remedies & Penalties
Patent office and Appellate Board