on
Training of Trainers on Effective IP
Asset Management
Patentable and Non Patentable
Inventions in Key Jurisdictions,
Drafting a Patent Specification,
Patent Cooperation Treaty (PCT) and
Budapest Treaty
G. Deepak Sriniwas, Partner
K&S PARTNERS
Discussion on
 Patentable and Non Patentable Inventions
in Key Jurisdictions
 Drafting a Patent Specification
 Patent Cooperation Treaty (PCT)
 Budapest Treaty
Patentable and Non Patentable
Inventions
 Pharma; Biotech
 Software;
methods
Mathematical;
Business
WHAT IS PATENTABLE?
 Patents Act 1970
Patentable inventions
any product or process
which is :
 novel
 not obvious to a person
skilled in the art
 capable
of industrial
application
WHAT IS NOT PATENTABLE?
(section 3)
(d) New use of known substance/process
Polymorphs, esters, salts, combinations,
derivatives that do not show enhanced
therapeutic efficacy over known main
substance
(e) Mere admixtures (as opposed in synergistic
mixtures) and processes thereof
(i) Method of treatment of human
beings/animals
(j) Plants, animals parts thereof
WHAT IS NOT PATENTABLE?
(section 3)
Section 3(d)
3(d) 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.
WHAT IS NOT PATENTABLE?
(section 3)
Section 3(d) (contd.)
Explanation: For the purpose of this clause, salts,
esters, ethers, polymorphs, metabolites, pure
from, particle size, isomers, mixtures of isomers,
complexes, combinations and other derivatives
of known substance shall be considered to be
the same substance, unless they differ
significantly in properties with regard to efficacy.
 Examples:
 Toxic – non-toxic
 Stable – shelf life
WHAT IS NOT PATENTABLE?
(section 3)
(e) a substance obtained by a mere
admixture resulting only in the aggregation
of the properties of the components
thereof
WHAT IS NOT PATENTABLE?
(section 3)
(i) any process for the medicinal / surgical /
curative, prophylactic / diagnostic / therapeutic
or other treatment of human beings or similar
such process for treatment in animals.
SECOND MEDICAL USE
Case Law- GLIVEC
 Test of 3(d) and the product patent regime.


Novartis AG filed patent application No. 1602/MAS/98 on July 17,
1998 for “crystal modification of N-Phenyl-2-Pyrimidineamine
derivative, processes for its manufacture and its use”
Specifically beta form of N-{5-[4-(4-Methyl-piperazino-methyl)benzoylamido]-2-methyl-phenyl}-4-(3-p
yridyl)-2-pyrimidine-amine
salt.
( β form of methanesulfonic acid addition salt of a pyrimidine
compound and XRD pattern of β form was provided)
Case Law- GLIVEC

Notable statement in specification “It goes without saying that all
the indicated inhibitory and pharmacological effects of β form
are also found with the free base”.

No enhanced efficacy shown

Established β form was pre-existing

Application was rejected by the Patent Office

Limited appeal to DB Chennai, case rejected

Limited issue before IPAB-case rejected

Challenged IPAB decision by way of write in SC
WHAT IS NOT PATENTABLE?
(section 3)
(j) Plants and animals in whole or in part thereof
other than microorganisms but including seeds,
varieties and species and essentially biological
processes for production or propagation of
plants and animals.
PRODUCT PATENTS
All products of molecular biology: whether for
use as drug or food product
 Novel micro-organism (genetically engineered)
 Novel gene and peptide sequences
 Promoter, Marker
 Novel cassette, construct
 Vaccine
 New viral strain
MICRO-ORGANISMS

Not defined by Act

Possibly
includes
yeast,
bacteria,
recombinants, DNA sequences, vectors

Are isolated microbes and colonies “mere
discovery” ?

Isolates, if characterized, deposited in ID and
utility found – are they patentable

Genetically modified organisms: patentable
 Source and origin of Biological material to be
provided in specification
MICRO-ORGANISMS
EUROPE
EP case T396/93:
Micro-organism includes bacteria, yeast, fungi,
algae, protozoa, virus….
Biotechnology Directive :
 Defines biological material not microorganism
 Includes microbes, cell lines, viruses….
 Excludes cell lines used for modifying germ
line of human beings
MICRO-ORGANISMS
USA- PATENTABLE
 Diamond v. Chakrabarty, 447 U.S. 303 (1980)
 genetically engineered bacteria are patentable
 “anything under the sun that is made by man”
 Patents granted for :
 Yeast lines,
 Virus, hybridoma, oyester
 Harvard Mouse
MICRO-ORGANISMS
INDIA
 Micro-organism
 Isolated ?
 Mutant ?
 Genetically modified ?
 No distinction between isolated and genetically modified
micro-organism
 Many argue: Isolated micro-organism is no invention,
only Genetically Modified
 Deposit in international depository prior to date of Indian
filing
GENES

Gene sequences if isolated and utility found,
patentable

Are they ‘part of animal or human being’ ?

Antibodies, including chimeric antibodies are
patentable
ISOLATED DNA
 EUROPE-PATENTABLE
Held in RELAXIN CASE -Isolated DNA
sequence is a chemical compound; can
be patented
ISOLATED DNA
 US - PATENTABLE
 An isolated and purified DNA molecule, RNA
molecule, or amino acid molecule
 isolated chemical compounds
 Full-Length Genetic Sequences patentable
 Corresponding amino acid sequence patentable
 Partial nucleic acid sequences if proved useful (eg:
as encoding protein responsible for diagnosis of a
specific disease) = patentable
Example
US PATENT NO. 6,616,950
 What is claimed is:
1. A fermented fruit based herbal health drink
composition useful as an antioxidant, cardio-tonic,
diuretic, digestive, choleretic, nervine relaxant and
immuno-modulant, comprising extract from plant
Andrographis with concentration ranging between 0.5 to
10% in the total herbal health drink, extract from fruit,
and ethanol ranging between 3 to 13% in the total herbal
health drink, optionally extract from plant Tinospora and
other additives.
Example
US PATENT NO. 6,558,940
A biologically pure culture of Streptomyces sp. CIMAP
A.sub.1 strain bearing ATCC Accession No. PTA-4131
and capable of inhibiting the growth of phytopathogenic
fungi.
Example
US PATENT NO. 6,696,284
 1. A biological filter for the purification of waste gases, comprising a
housing with at least one inlet and at least one outlet, and a bed of
active micro-organisms contained in a carrier material consisting of
pith extracted from coconut husks, the carrier material being
provided in the housing such that the waste gases flowing in through
the at least one inlet contact the bed of carrier material before
exiting through the at least one outlet.
PROCESS PATENT
 Method of
purification,
downstream
processing
protein
 Process using microorganisms to obtain
chemicals
 Patentable
SCREENING ASSAYS
 Diagnostic
assays:
grey area
 Is it ex-vivo or in-vivo?
 Does the result of the
method indicate that
subject is suffering from
a disorder?
 If yes, not patentable
METHOD FOR REGENERATION
OF
ORGANS

A method for regenerating organs in humans
using:

stem cells

from contiguous embryonic peritoneal layer

formation of mesodermal organs in vitro

avoids use of exogenous tissue

5 organs regenerated
METHOD FOR REGENERATION
OF
ORGANS
 Patent Act, 1970
 sec
3(i) “any process for the medical, surgical, ….
treatment of human beings or …render them free of
disease ……”
 invention
in question hit by above provision

currently not patentable in India

US 6,227,202 obtained
SOFTWARE PATENTS
&
BUSINESS METHOD PATENTS
SOFTWARE PATENTS
INDIA
 Why Software is protected?
 Copyright does not protect “ideas” behind
software
 Promote development of the software industry
and computer-related industry
 Software also exhibits technical behavior
 Advantage for SMEs and independent
Software developers.
SOFTWARE PATENTS
- INDIA
 WHAT IS NOT PATENTABLE?
SECTION 3
(k) a mathematical or business method or
a computer programme per se or
algorithms;
Sec. 3 (k): Problem Areas
 All computer implemented methods NEED NOT
qualify to be called as computer programs
 All computer implemented methods CAN NOT be
considered as non-patentable –
merely a
computer program per se is not patentable
Sec. 3 (k): Problem Areas
(Contd..)
 a computer program per se is merely directed
towards code; hence, a claim of the following nature
is non-patentable
A method of addition of two numbers comprising:
<script type="text/javascript"> function AddJavaSc()
{
var k, l;
l=parseInt(document.getElementById("txtVal1").value);
k=parseInt(document.getElementById("txtVal2").value);
document.getElementById("txtVal3").value=l + k;
}
</script>
 The claim should express it in simple statement
which is readable and understandable by the Patent
Office such as:
A a method of addition of two numbers comprising:
(a) obtaining value for a first variable from the user;
(b) obtaining value for a second variable from the user;
(c) …..
Sec. 3 (k): Problem Areas
(Contd..)
Merely adding a conventional hardware to a
program is not patentable; hence, a claim of
the following nature is not patentable.
A computer for implementing a method of
addition of two numbers comprising:
(a) obtaining value for a first variable from the
user;
(b) obtaining value for a second variable from
the user;
(c) …..
Sec. 3 (k): Problem Areas
(Contd..)
merely mentioning a hardware which performs same
necessary operation of the method (mere automation) – hit
by section 2 (1) (j)
WE CLAIM:
A computer implemented method for controlling access to a
portion of a document, the document comprising a plurality
of portions, the method performed by at least one
processor, the method comprising:
 receiving a request to access the document portion;
 determining whether to provide access to the requested
document portion based on data describing past accesses
of other portions of the document; and
 responding to the request based on the determination.
Sec. 3 (k): Problem Areas
(Contd..)
A method is restricted to a specific area of
technology
A method for controlling access to a portion of a
legal document which governs contractual
obligations between two parties, the
document comprising a plurality of portions, the
method comprising:
 receiving a request to access the document
portion which pertains to contractual
obligations between two parties;
 determining whether to provide access to the
requested document portion based on data
describing past accesses of other portions of
the document; and
 responding to the request based on the
determination.
Sec. 3 (k): A Solution to Problem
A method should provide technical effect for being
patentable; A method should solve a technical problem
instead of merely avoiding the problem
Technical Effect: It is defined as solution to a technical
problem, which the invention taken as a whole, tends to
overcome.
Few general examples of technical effect are as
follows1)
2)
3)
4)
5)
6)
7)
8)
Higher speed
Reduced hard-disk access time
More economical use of memory
More efficient data base search strategy
More effective data compression techniques
Improved user interface
Better control of robotic arm
Improved reception/transmission of signal
Sec. 3 (k): Better Solution
A method provides technical effect and at the
same time, contains details of the hardware that
can perform the necessary function
Various Categories of Claims
 Method / Process
 Apparatus / System
 Computer Program Product
Method / Process Claims
 It is possible to obtain grant if:
 the claimed method possess “Technical Effect”; and
 Mode of implementation is preferably by hardware (conventional
in nature) and the same is clearly mentioned in the specification
along with details of the hardware; and
 Claims contain hardware limitation
Example:
A method for processing seismic data, comprising the steps of
collecting the time varying seismic detector output signals for a
plurality of seismic sensors placed in a cable, comprising:
(a) ……
(b) …… Steps involving technical effect
Apparatus / System Claims
 A novel hardware implementing a conventional
method
 Clearly define inventive constructional hardware
features
Example: A register for storing data (process limitation)
 Means should be defined
Example: Means for mapping a set of points
What “means” are used? Some of the workable means to be
mentioned in the specification and in the sub-claims
Input means – mouse, key pad, CD reader, touch screen, joy stick
etc.
Computer Program Product
Claims
Example:
- A computer program product in computer
readable medium
- A computer-readable storage medium having a
program recorded thereon
 Software program products are computer
program per se if simply recorded on a medium.
Hence, not patentable
Examples of software per se:
- A computer program product in computer
readable medium
- A computer-readable storage medium having a
program recorded thereon
- A method for generating a new computer
program using a software development tool
- Scheme or method of bookkeeping
- Business method in the field of accounting
- Method of tax collection
ALLOWABLE SUBJECT
MATTER
A method having technical effect and having hardware
limitation
EXAMPLE:
- A method for transmitting data across an open
communication channel on a wireless device that
selectively opens and closes a communication channel
to a wireless network, and each wireless device
including a computer platform and including a plurality of
device
resources
that
selectively
utilizes
a
communication channel to communication with other
devices across the network, said method comprising:
PATENTABLE SUBJECT
MATTER - US
 35 U.S.C. Section 101
 “whoever invents or discovers any new and
useful process, machine, manufacture, or
composition of matter, or any new and useful
improvement thereof, may obtain a patent
therefore..”
 Process= “process, art or methods”
 No technical effect or technical contribution
requirement
EXCEPTIONS-BY CASE
LAWS
 Diamond Vs Chakrabarty :”anything under
the sun made by man” is patentable---life
form
 Diamond Vs Diehr : laws of nature,
abstract ideas, natural phenomena are
exceptions to patentability
 In re Allapat : practical application of an
abstract idea, however is statutory
EXCEPTIONS-BY CASE
LAWS
 Before Diamond v. Diehr (1981), software
was deemed as similar to mathematics
and laws of nature, both of which are un
patentable
 Before State Street Bank v. Signature
Financial Group case (1998 ), business
method were considered per se un
patentable.
BUSINESS METHODS
PATENTS
 Why Business method need to be
protected?
Innovative business methods equally
contribute to a country’s economic
development.
BUSINESS METHODS
PATENTS
 A business method that provides a “useful,
concrete, and tangible result” is patentable
subject matter.
(State Street Bank v. Signature Financial,
1998)
Example: Amazon’s one-click shopping
BUSINESS METHOD
PATENTS
Examples- Contd..







Internet Purchasing
Advertising and Marketing
Auction on the Internet
Method of Funding College Tuition
Miscellaneous Finance
Training and Instruction
Accounting and Management System
PATENTABLE/ NON-PATENTABLE
INVENTIONS - EUROPE
 Article 52(1)- patentable inventions are
 New
 Involve an Inventive Step
 Susceptible of Industrial Application
 Article 52(2) and (3)- non-patentable inventions
are
 Schemes, rules and methods for doing business as
such
 Programs for computers as such
PATENTABLE SUBJECT
MATTER - EUROPE
“Inventions” must be of technical character
- must relate to a technical field
- must be concerned with a technical
problem
- must have technical features in terms of
which the matter for which protection is
sought
SOFTWARE PATENTSEPO GUIDELINES
EPO
Guidelines
Draft of EC Directive
(2000)
Computer
Software
“As such” are not
patentable
Make a non-obvious
“technical contribution” to
the state-of-art, are
patentable
May be
claimed
Program which
exhibits the
necessary
technical effect
As a product through the
execution of software
May not be
claimed
Program has no
technical effect
Computer program products
either in a stand-alone
format
or on a carrier
PATENTABLE / NONPATENTABLE INVENTIONS CHINA
 “Invention”- any new technical solution
relating to a product, a process or
improvement thereof.
 “Rules and methods for mental activities”
are not patentable.
PATENTABLE INVENTIONS
- CHINA
Subject matters not patentable
(Article 25 of the Chinese Patent Law)
 Scientific discoveries;
 Rules and methods for mental activities;
 Methods for the diagnosis or the treatment of diseases;
 Animal and plant varieties;
 Substance obtained by means of nuclear transformation
 Software is not expressly included here.
PATENTABLE / NONPATENTABLE INVENTIONS CHINA
Examples- Patentable Inventions
1. An invention using a computer program
for measuring the viscosity of liquid
2. An invention employing a virtual
memory management program to increase
the capacity and the processing speed
CHINA..
Three conditions of inventions under Chinese
Patent Law
Novelty
Inventiveness
Practical Applicability
New technical solution according to Article 2
paragraph 1 of the Implementing Rules
Product
Process
Improvements
PATENTABLE INVENTIONS
EXAMPLES..
 Used in industrial process control
 Used to improve computer internal
process
 Used in measurement, control of
measurement or test processes
 Used in external data processing
 Used in coding and imputing Chinese
characters
CHINA
Unacceptable Claims:
 Pure software
 Software recorded on carrier
 The simple fit-together of software stored
in the computer memory with processing
equipment
Legal Basis: Such descriptions do not
express the technical solution of the
software.
CURRENT SCENARIO
CHINA
Exemplary Claim
A computer program for ...
A machine-readable medium having
instruction codes stored thereon, ...
An apparatus comprising:
a processor; and
a memory having stored thereupon
instructions, which, ...
US, JP
OK if
produces
useful,
concrete and
tangible
results
India, China
Not patentable
SOFTWARE PATENTS
- JAPAN
 Software-related inventions can be patented as:





Device
Process
Medium
Computer Program
Data Construction
DRAFTING A PATENT
SPECIFICATION
BEFORE DRAFTING




What is the invention ?
Is invention patentable ?
Is invention novel, inventive ?
Prior art/prior disclosure ?
 Oral disclosure ?
 Prior printed publication available to the public
?
 Prior public use ?
BEFORE DRAFTING- Contd..
VERIFY THE FOLLOWING:
 Conduct search







Enlist problems in prior art
What is the problem sought to be solved by the invention?
What is the novelty?
Is the solution obvious?
Is it artificially excluded ?
Has publication ensued?
Ascertain the type of application -whether complete or provisional is
to be filed
 Decide the area and nature of protection- Paris convention, PCT,
ordinary application.
PATENT SPECIFICATION
Read by:







Patent Office
Licensee/Assignee
Court
Technical peers/skilled persons
Competitors
Commercial players
General public
KINDS OF SPECIFICATION
 PROVISIONAL SPECIFICATION
 COMPLETE SPECIFICATION
KINDS OF APPLICATIONS
 Ordinary or Non-Conventional
Application
 Conventional (Paris/PCT)
Application
 Divisional Application
 Patent of addition
PROVISIONAL
SPECIFICATION
o
o
o
Is a document describing the
invention and need not contain claims
Disclose as much as possible
Decides the date of the application
COMPLETE SPECIFICATION
 Is a techno-legal document,
describing and specifically claiming
the invention

FORM 2 “ The following specification
particularly describes the invention and the
manner in which it is to be performed.”
PATENT SPECIFICATION
Description
Claims
• Description discusses the invention
• Claims define boundary of monopoly
DESCRIPTION
 Description must describe the invention comprehensively
 Should fully explain the problem to be solved with
examples
 No ambiguity
 Should be adequate and sufficient so as to enable a
person skilled in the art to perform and repeat the
invention without inventor’s further inputs
CONTENTS OF THE
DESCRIPTION
 Title
 Field of the Invention
 Background of Invention
 Prior Art details
 Objects of Invention
 Statement of Invention
 Detailed description of Invention
TITLE
 A concise statement providing the crux of
the invention
 Care should be taken to incorporate all
major aspects claimed
 Product-Process-Apparatus
 Example:
 Pen- A writing instrument
 Brush- A cleaning article
FIELD OF THE INVENTION
 More details than the title
 Provides utility
 Sometimes used as a tool for search in the
absence of abstract
BACKGROUND
 Provides the technical background of
the invention
 May include description of prior arts
WHAT IS A PRIOR ART?
 Is a brief write-up of what is
known before the invention;
sets out the problems
associated with each of the
known art; and describes
the problem proposed to be
solved by the invention
 In India, this is not
mandatory
BACKGROUND..
 Un-solved problems
 Prior art solution not working
 Describe new solution adequately
OBJECT(S) OF THE
INVENTION
 Provides purpose of the invention
 Main object(s) and Ancillary object(s)
 Essential aspects and preferred/optional
aspects.
STATEMENT OF THE INVENTION
 Statement forms the main claim or claims
in verbal agreement
 It is essential only when there is a
omnibus claim(s).
DETAILED DESCRIPTION OF
THE INVENTION
 Sets out best mode of performing the invention
 Describes the invention in greater detail with
examples/illustration/tables/graphs/Diagrams,
etc
 Description sufficient to enable a skilled person
to put the invention into practice
CLAIM(S)
 Is the operative part of the specification
 Defines the monopoly to be conferred by the
patent
 Define the metes and bounds of the invention:
at the time of infringement proceedings, only
claims will be interpreted
 If you do not claim, you disclaim
CLAIMS
 The main claim defines the essential
features and the sub-claims define the
preferred / optional / additional features
 The important, main properties need not
be merged into the other claim.
 A separate claim has to be formed for the
important feature(s).
DO’s AND DON’T’s
 Specification must describe the invention
concisely
 should explain the problem solved fully
with examples
 no ambiguity
 should be adequate and sufficient so as to
enable in the art to perform the invention
DO’s AND DON’T’s
 Claiming too broadly (covering prior art):
 No Protection at all
 Claiming too narrow (terminology, features):
 Competitor can use the invention
 Claiming just right:
 This is an art and requires lots of imagination
 Claiming what is not supported by the description:
 This can and must be avoided
 Not claiming what the client wants
 Claiming what the client does not use or need
A One way road
 You cannot broaden the claims of a granted patent
 You cannot broaden the disclosure and the claims
beyond what has been included when drafting the
application that was filed
 You do not get a second chance except for simple
clarifications and for narrowing the claims when further
prior art is taken into account
 You are responsible for fulfilling the requirement of full
and clear disclosure
 You are responsible for getting the scope of protection
that the inventor deserves
INDEPENDENT CLAIMS
DRAFTING INDEPENDENT CLAIMS-
 Easy to understand the invention
 Easy to search
 Easy to license
 Easy to establish infringement
CHARACTERIZATION IN CLAIMS
 Characterization not possible in many
cases
 Need not be characterized
 Even if characterized, sub-claims need not
be restricted to characterized part
DRAFTING CLAIMS - CHEMICAL
PATENTS
 Substance per se -broad coverage
 Substance can be defined in terms of
nomenclature, general formula, structural
formula, constituents, properties, constructional
or structural features, use, etc
 Process
a)
b)
c)
d)
Starting materials
Steps of the process
Various parameters involved in each step, and
End product.
DRAFTING CLAIMS - CHEMICAL
PATENTS
 Product per se
 Composition/synergy
 2nd generation product enhanced efficacy
 Describe essential ingredients of
product/composition
 Ratio/percentage of the ingredients
 Their effective amounts
 Any optional/additional ingredients
DRAFTING TIPS
 Proportions: Provide a broad workable
range unless an exact amount is crucial
and essential to the success of the
invention
 Specify the class and specific chemicals
used
Ex: All the oxidants that would enable the
invention, all alkali/acids that would help to
work the invention
DRAFTING TIPS
Avoid negative examples
Example;
- Vast difference in the IC 50 values of anticancer
drugs with two different hosts.
-An anticancer drug effective against a subject
may not be providing the similar result with a
subject of another genus.
ELEMENTS OF A CLAIM
 Preamble –indicates the subject matter for
which the protection is sought
 Connecting link- such as “comprising” or
“consisting” or “wherein” etc
 Body of the claim – indicates the feature of
the invention
CLAIMS
 The number of the claims shall be reasonable in consideration of the
nature of the invention claimed.
 If there are several claims, they shall be numbered consecutively in
Arabic numerals.
 Claims shall not rely in respect of the technical features of the
invention, on references to the description or drawings. (Self
explanatory)
PRINCIPAL/ INDEPENDENT
CLAIM
 Claim has to distinguish subject matter
over prior art
 Principal claim = generic term from prior
art + one or more feature(s)
 Note: Definition of generic term as short
and as generic as possible
DEPENDENT CLAIMS
 Any claim stating the essential features of an
invention may be followed by one or more claims
concerning
particular
embodiments
of
that
invention. [ e.g. reaction conditions]
 Dependent claims should bring restrictions to the
claims from which it claims dependency.
GROUPING OF DEPENDENT
CLAIMS
All dependent claims referring back to a
single previous claim, and all dependent
claims referring back to several previous
claims, shall be grouped together to the
extent and in the most practical way
possible.
An Example of Chemical
Claim
IN235798
A N-phenyl- (2R, 5S) dimethylpiperazine derivative represented by the
following general formula (I) or a salt thereof:
R1
O
N
N
N
N Cy
H
（I)
Wherein:
R2
R1: Cl, Br, -CF3 or –O-CH3
R2: H or F
Cy: 2-cyclopropylpyrimidin-5-yl, 2-methylpyrimidin-5-yl, or 6(trifluoromethyl)pyridin-3-yl
provided that R1 is Br when Cy is 6-(trifluoromethyl)pyridin-3-yl.
An Example of Chemical Claim
US PATENT NO. 6,884,421
A pharmaceutical composition for treating hyperglycemic
condition, said composition comprising a
pharmaceutically effective amount of:
 Butyric acid
 An insoluble wheat bran fibre; and
 Guar gum fibre as a soluble hypoglycemic agent
Example of an Indian Claim - In
Communications field
INDIA
A method for decoupling forward and reverse link
carriers, said method comprising:
assigning one or more forward link carriers to
transmit data from a base station to a mobile station;
assigning one or more reverse link carriers to
transmit data from the mobile station to the base station;
and
limiting reverse link transmissions corresponding to
each of the forward link carriers by …
Example of a US claim
USA
A method comprising:
assigning one or more forward link carriers
to transmit data from a base station to a mobile
station;
assigning one or more reverse link carriers
to transmit data from the mobile station to the
base station; and
limiting reverse link transmissions
corresponding to each of the forward link
carriers wherein said limiting…
Example of EP claim
A method comprising:
assigning one or more forward link carriers
to transmit data from a base station to a mobile
station;
assigning one or more reverse link carriers
to transmit data from the mobile station to the
base station;
characterized by
limiting reverse link transmissions
corresponding to each of the forward link
carriers by …
 Inventor’s Idea of the
Invention:
 NOVELTY: Providing an
end cap locator of the
shape as shown in the
figure
 NEED: to make the entire
device more attractive
 WISH: Imparting a Unique
Selling Proposition (USP)
to the product
What are the main claims?
An electronic device comprising:
 a housing with an end cap locator;
 a retractable elongate radio frequency radiating element passing
through an aperture associated with the end cap locator, the
radiating element being electrically connectable to an electrical
circuit provided in the housing and being movable from a retracted
position when substantially located in the housing to an extended
position when substantially protruded outside the housing;
 an end cap located on a free end of the radiating element, the end
cap operatively engaging the end cap locator when the radiating
element is in the retracted position thereby aligning the end cap in
a predetermined orientation relative to the housing.
What are the main claims?
An antenna assembly comprising:
 an inner telescopic elongate element;
 a collar element provided about a periphery of
the said inner telescopic tube section and
comprising therein an end cap locator;
 a forward end of the said inner telescopic tube
section being configured to receive an end cap;
 wherein the end cap operatively engages with
the end cap locator when the inner telescopic
element is in the retracted position thereby
aligning the end cap in a predetermined
orientation relative to the collar element.
What does the main claims cover?
What do the main claims cover?
Patent Corporation Treaty (PCT)
Signed by India, effective December 7,
1998
About 142 countries are members (as
on January 14, 2010).
Common Approach
UK
FIRST
APPLICATION
JAPAN
ITALY
WHY PCT ?
 For protection in Multiple countries
 If patent has inherent merits
PCT IS THE ANSWER
PCT IS NOT AN INTERNATIONAL
PATENT!!!!
WHAT IS PCT ?
PCT is a window through which an
applicant can file a single patent
application and secure priority in
the designated states - procedure
Search Report: evaluates invention
Examination Report (optional)
HOW TO FILE A PCT
APPLICATION ?
An applicant may file a PCT application in the
Designated National
Patent Office
PCT HQ
(Geneva)
THE PROCEDURE
Months
Filing of priority -founding application
Filing of International application
12
Search report
Amendment in response
Publication of application
6
16
18
THE PROCEDURE
THEN THE NATIONAL LAW OF THE
CONCERNED STATES TAKES OVER
AND EVENTUALLY PATENT IS
GRANTED
Budapest Treaty
India signed this treaty on 17th December
2001
Budapest Treaty
 Deposition of the Microorganism for the
purpose of Patent.
 Made available to public after grant
Budapest Treaty
 International recognized depository
 IMTECH- Chandigarh
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