INTELLECTUAL PROPERTY: A Quick Guide for Scientists and Technologists

Manjula Sandirigama

ii

Reviews
One ingredient for a successful IP system is education. Individual engineers, scientists and other innovators need to know how the IP system works. In this way, individual innovators can learn how to use the IP system to their own benet and ensure they are properly rewarded for their contributions. Properly done, everyone benets as individual innovative contributions eventually fall into the public domain for everyones use. To that end, this work provides an important underpinning of the IP system. It goes a long way to achieving the important goal of teaching how the IP system works on a practical, day-to-day level that is accessible to individual innovators, without hiding behind the sometimes lofty world of law. Well done. I hope you enjoy reading this as much as I have. T. Andrew Currier, BSEE, LLB, P.Eng., Barrister and Solicitor (Ontario), Patent Agent, Trademark Agent, co-author with Stephen Perry of the forthcoming textbook Canadian Patent Law from Butterworths This is an admirable eort to educate engineers in the ways of intellectual property, in an accessible and understandable way. Conor McCourt, J.D., Canada At the present stage of development, knowledge on the IP systems becomes important as new innovations and ndings of individuals and organizations become commercially attractive and valuable. It is the IP rights that give the proper incentive for them to go on with more and more new creations. In this context, it is timely that a textbook be available for the education of IP aspects. This book will shed light on these relevant areas for all sectors of society, including scientists, technologists, innovators and even the ordinary citizens. The book covers most of the aspects that are of importance to students on IP systems. I congratulate the author and would like to share this valuable information with everyone. Sarath Seneviratne, Senior Lecturer in Mechanical Engineering, University of Peradeniya, Sri Lanka

iii

About the Book

This book is the outcome of my teaching Intellectual Property (IP) for engineering undergraduates in the Faculty of Engineering, University of Peradenya and some other universities and institutes in Sri Lanka. The teaching to them necessitated a text book which they could use during the course and thereafter as a regular quick reference. The intended target group obviously is the science and technology undergraduates, but anyone who wishes to get an overall picture of IP, their protection, and how IP systems work will also nd this a very useful reference. The book covers all the areas from conceptual ideas to commercialization of such conceptual ideas. Simplicity is my philosophy, even in teaching. The facts are presented with simplicity in terms of content and language as I strongly believe that the science and technology personnel and innovators who make the world comfortable for everyone should be able to know their rights in simple terms before seeking advice in the lofty world of law, as mentioned by a reviewer. Wish you an enjoyable and informative reading.

iv

Acknowledgments
My students, by and large, have been the greatest driving force in writing this text. I thank them for providing a platform for practicing and furthering my knowledge. Roshan Ragel, my colleague in my department who himself is an author, gave his valuable comments promptly and in detail on the initial draft. I thank him for building my condence in completing the work. I also wish to thank the reviewers Andrew Currier, Conor McCourt, Sarath Seneviratne and Asanka Perera for their valuable reviews and comments. I extend my special thanks to Prof. Vijaya Kumar and Dr. Nihal Somaratne of University of Peradeniya for their very careful and thoughtful suggestions for improving the quality of the work. I thank Amila Wijeratne for formatting the gures in the text and Senaka Yatigammana for designing the the cover page. For making my eort available to the readers, I wish to thank Dr. Shelton Perera, Prof. HMN Bandara and the Committee of Science Education Unit, University of Peradeniya. Last but not least, my gratitude goes to my wife Anoma for encouraging me to make the best use of my knowledge and capabilities and for being with me always - even when things go wrong.
Manjula Sandirigama PhD, M.Sc., B.Sc.Eng., Attorney-at-Law (Sri Lanka) Senior Lecturer, Department of Computer Engineering University of Peradeniya, Sri Lanka IP Consultant

To my parents for the encouragement and support in life To my teachers for moulding me and my students for motivating me

Contents
1 Intellectual Property (IP) 1.1 Introduction . . . . . . . . . . . . . . . . . . 1.2 Protection of IP Rights . . . . . . . . . . . 1.2.1 The Need for Protecting IP Rights . 1.2.2 Title Deeds of Intellectual Property 5 5 7 7 8 11 11 12 13 13 14 14 15 17 17 19 20 20 21

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2 Dierent Types of IP and Their Protection 2.1 Patents . . . . . . . . . . . . . . . . . . . . . 2.2 Copyrights . . . . . . . . . . . . . . . . . . . 2.3 Trademarks . . . . . . . . . . . . . . . . . . . 2.4 Industrial Designs . . . . . . . . . . . . . . . 2.5 ICT (Integrated Circuit Topographies) . . . . 2.6 Geographical Indications . . . . . . . . . . . . 2.7 Proprietary Databases . . . . . . . . . . . . . 3 Patents 3.1 The Meaning of a Patent . . . . . . . . . . . 3.2 The Duration of a Patent Validity . . . . . . 3.3 The Eective Geography of a Patent Validity 3.4 Patents vs. Trade Secrets . . . . . . . . . . . 3.5 Commercialization . . . . . . . . . . . . . . . 1

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CONTENTS 23 23 25 25 26 28

4 Acquiring Patent Rights 4.1 Patentable Subject Matter . . . . . . . . . . . 4.2 Sucient Disclosure of the Invention . . . . . 4.3 Patent - An Inventive Subject Matter . . . . 4.4 Patentability Testing . . . . . . . . . . . . . . 4.4.1 Patentability requirement case study: Beloit vs. Valmet Oy . . . . . . . . .

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5 Patent Prior Art Searches 31 5.1 The Meaning and the Need of Prior Art Searches . . 31 5.2 Scope of Prior Art Search . . . . . . . . . . . . . . . 32 5.3 Prior Art Search on Patent Databases . . . . . . . . 33 5.3.1 Prior Art Search on Online Patent Databases 34 5.3.2 Prior Art Search: An example . . . . . . . . 37 5.4 Dierent Types of Prior Art Searches . . . . . . . . . 41 5.4.1 Name Search . . . . . . . . . . . . . . . . . . 42 5.4.2 State of the Art Searches . . . . . . . . . . . 42 5.4.3 Technological Activity Search . . . . . . . . . 42 5.4.4 Legal Status Search . . . . . . . . . . . . . . 43 5.4.5 Infringement Search (Freedom to Operate Search) 43 5.4.6 Patentability Search . . . . . . . . . . . . . . 43 6 Patent Drafting 6.1 Structure of a Patent 6.1.1 Title . . . . . 6.1.2 Abstract . . . 6.1.3 Description . 6.1.4 Claims . . . . 45 45 46 46 48 50

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7 Application for a Patent 61 7.1 Making a Local Application . . . . . . . . . . . . . . 62 7.2 Making a Foreign Application . . . . . . . . . . . . . 64

CONTENTS 8 Patent Examination and Granting Process 8.1 Revision of Applications . . . . . . . . . . . 8.2 Examination of Applications . . . . . . . . 8.3 Patent Maintenance Fees . . . . . . . . . . . 8.4 Appeals Against Examiners Decisions . . . 9 Post Patent Issues 9.1 Commercialization . . . . . . . . . . 9.1.1 Exploitation . . . . . . . . . . 9.1.2 Assignment . . . . . . . . . . 9.1.3 Licensing . . . . . . . . . . . 9.1.4 Licensing Fees and Royalties 9.2 Potential Legal Implications . . . . .

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10 A Sample Patent 81 10.1 US Patent 7,161,651 . . . . . . . . . . . . . . . . . . 81 10.1.1 Title: Method of resizing a liquid crystal display . . . . . . . . . . . . . . . . . . . . . . . 81 10.1.2 Bibliographical Data . . . . . . . . . . . . . . 81 10.1.3 Abstract . . . . . . . . . . . . . . . . . . . . . 81 10.1.4 Claims . . . . . . . . . . . . . . . . . . . . . . 82 10.1.5 Description . . . . . . . . . . . . . . . . . . . 83

CONTENTS

Chapter 1

Intellectual Property (IP)

1.1 Introduction

People own dierent kinds of property. Conventionally, such properties have a value in their physical characteristics. Examples of such properties are lands, buildings, vehicles, houses, furniture etc.. Traditionally, these properties are divided into two categories, namely, movable and immovable. Immovable properties mean that their location cannot be changed. Examples are lands and buildings. The locations of movable properties could be changed as desired. Examples are vehicles, furniture etc.. There is another categorization of property, namely tangible and intangible properties. Tangible properties mean that the property, movable and immovable, can be touched and felt. All the conventional movable or immovable properties fall into this category. Intangible properties, on the other hand, are the properties that cannot be touched and felt. Intellectual property falls into the intangible category. The value of such property is not generally in 5

CHAPTER 1. INTELLECTUAL PROPERTY (IP)

the physical characteristics of the tangible nal product made using the intangible property (ideas, creations etc.) but in the creativity and innovativeness one has put into the creation of such property. A key characteristic of intellectual property is that such properties were not in existence before the creation or they are not made by already known processes. WIPO (World Intellectual Property Organization) denes intellectual property as creations of mind: inventions, literary work, marks, symbols, designs etc.. Another key characteristic of intellectual property is that the property is just an idea of creation, and there is no tangible value in them. For example, when we buy a book, there is tangible value in the amount of papers which is not signicant; more value is in what is written in the book. When we buy a car, if we consider the tangible value, it is in the amount of steel and plastic which is not very signicant; more value is in the mechanisms of driving, electronic fuel system, anti-lock brake system all of which are ideas of creation of someone. When we pay for a book or car, we mostly pay for the intangible idea in them which are intellectual property. We may buy books or cars for our use but we cannot copy and make them for our own commercialization. The creator is protected by governments by oering him or her what are known as intellectual property rights. Once Intellectual property rights are given to someone, others cannot violate them meaning that others cannot use the same idea to produce duplicates. If they do, the creator can take legal action and claim compensation. Obviously, these intellectual property rights are negative, in the sense that it excludes others from doing something copying. Just like people could claim traditional properties to be their own by possessing a document such as a deed or ownership certicate, intellectual property also can be owned by means of a special document which will be described later. Ownership of traditional properties are perpetual subject to a way of disposal such as a sale or a transfer, but ownership of intellectual property is generally limited for a certain time. Intellectual property could also be disposed of by way of sale or transfer. The

1.2. PROTECTION OF IP RIGHTS

reasons for such limited ownership will be discussed later. It is important to mention a word about the dierence between a (new) creation and a discovery. Both discoveries and creations are new revelations to the world, but if the new revelation is something that has been existing in nature, it is a discovery. For something to be a (new) creation, a new feature has to be added to the existing thing so that it is converted into something that has not been existing in nature, or create something totally new that has not been in existence. For an example, if a scientist nds a new bacterium, it is a mere discovery, but after the discovery, if he adds his knowledge and skills to convert the bacterium into a medicine usable to treat some disease, then there is a (new) creation and he could claim intellectual property rights for it. In todays technologically advanced world, which is growing by leaps and bounds, IP rights play a major role and it is very essential for science and technology students to know what their IP rights are when they do research and development. Although the key players in intellectual property are scientists and technologists, like with other properties, regulation of intellectual property rights is looked after by the legal system. The next chapter describes dierent types of intellectual property and how such properties are protected.

1.2
1.2.1

Protection of IP Rights
The Need for Protecting IP Rights

It is reasonable for a novice to ask the question "why do we need to protect IP rights ?" The simple answer is that all what we enjoy today food, medicine, transport, communication, entertainment etc. are available to us because there has been protection of IP rights. What does this mean? Creation of Intellectual Property consumes considerable amount of time and money. Someone has to develop his idea by way of

CHAPTER 1. INTELLECTUAL PROPERTY (IP)

research or otherwise to make the idea into a product, process, or a piece of literature. In fact, the amount of time and money may far exceed the amount of time and money one has to spend to acquire a physical property such as a land or a building. For example, to develop a medicine, one has to do several years of research that costs a lot of time and money. To write a book, one may have to spend several years. After the research is done or the book is written, they become known to the public, and if there is no mechanism of protection by the state to protect the ownership rights of the people who spent their time and money on this work, others will simply copy it and try to make money from these work. Consequently, people will not feel secure and they will lose their motivation to do research or to produce literary work. There would be no progress in society, and we would not have the comforts and entertainment that we enjoy today. When protection is given for the new revelations in exchange for revealing the knowledge, the revealer will reveal his/her knowledge, and society can use the same knowledge to make improvements. All what we enjoy today have been improvements on what had been existing in the past.

1.2.2

Title Deeds of Intellectual Property

As we know, conventional property ownerships are guaranteed by deeds or ownership certicates. If the property is a land or a building, the ownership is protected by a deed of ownership, or a rental/lease agreement in case of temporary ownership. If it is a vehicle, the ownership is protected by an ownership certicate, or a rent or a lease agreement in case of temporary ownership. If the property is furniture, electronic equipment etc., the ownership is guaranteed by the receipt of the payment made at the time of the purchase. Similarly, intellectual property also has a title document (like a deed, or an ownership certicate) that protects the ownership.

1.2. PROTECTION OF IP RIGHTS

Dierent types of intellectual property have dierent kinds of ownership certicates. In the next chapter, such ownership documents are described after providing a brief description of what dierent kinds of intellectual properties are, namely patents, copyrights, trademarks, industrial designs, Integrated Circuit (IC) topographies, geographical locations and proprietary databases.

10

CHAPTER 1. INTELLECTUAL PROPERTY (IP)

Chapter 2

Dierent Types of IP and Their Protection

2.1 Patents

Patents are the intellectual property rights granted by the state for inventions. An invention means a creation of a new product or a process that has not been known to the public or has not been in existence in nature. Simple examples of such product inventions are a pen, a tool, a machine, and a medicine. Examples of process inventions are the method of extraction of salt from sea water, process of manufacturing a drug, and the process of making a tool. There can be some inventions which fall into both product and process inventions like making a drug. The process as well as the product are inventions. When we buy such a product, we not pay not only for the mere physical value of them, but also for the creativity that is embedded in the product. For example, when we buy electronic equipment, the physical value may be very low, but the purchase price is de11

12CHAPTER 2. DIFFERENT TYPES OF IP AND THEIR PROTECTION termined by the added value for the creativity and innovativeness of putting the electronic elements together. Such inventive ideas are protected by a certicate known as a patent. A patent is granted on application. Detailed descriptions of patents will be provided in the later part of the book. To obtain a patent right, one must make an application to the relevant national oce. Such rights are granted for a limited period of time, generally 20 years, sometimes more, depending on the legal provisions of the country concerned. Trade secrets, which may also be inventive, have similarities as well as dierences compared to patents. They will be described when patents are discussed in a following chapter.

2.2

Copyrights

Copyright is an ownership right one gets when a literary work is created. Literary work does not have to be written, and there is a wide range of literary work, both conventional and modern. Conventional copyrights include writings (novels, poems, technical literature etc.) and other literary works such as paintings, sculpture, carvings, plays, and dramas. Modern copyrights include electromagnetic signals (television signals, radio signals etc.), music and movie disks and computer programs. (Note that computer programs fall both into patents and copyrights. The method of the solution in the program is the patentable part whereas the program alone is the copyrightable part.) Copyright simply means that the right of copying is restricted and unauthorized copying is prohibited. Most of you may have noticed this right explicitly expressed in books by using c or the phrase Copy Rights Reserved. There is what is known as the Fair Use of copyrighted material. This means that one can copy copyrighted material for purely personal, educational or research work. Fair Use prohibits the copying of the material for commercial use.

2.3. TRADEMARKS

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Unlike patents, copyright is gained by the mere creation of the work and one does not need to make a special application to the national oce. However, by registering such work in the relevant national oce, one could get a stronger legal claim for the work, specially in case of a dispute. According to the Berne convention, for which most countries are signatories, copyright is limited to 50 years after the death of the author.

2.3

Trademarks

Trademark is a design of a word, an image or a combination of them that is used to distinguish a product or a service of one person/company from that of another. Such marks are useful marketing tools because the customers usually want to buy dependable products or services that have a good track record, and a trade mark is a unique identication of such track records. Unlike patents and like copyrights, to get protection, trademarks need not necessarily be registered in the national oce. The mere prolonged usage is sucient to establish ownership of a trademark. However, like copyrights, by registering trademarks in the relevant national oce, one could get a stronger legal claim for it, specially in case of a dispute. Such registrations are valid for a certain period (for example, it is 15 years in Canada) and renewable. Registered trademarks carry the symbol "R" whereas unregistered trademarks carry the symbol TM. Examples of such marks are Bata, TATA, Coca Cola, KFC (Kentucky Fried Chicken), Toyota etc..

2.4

Industrial Designs

An industrial design means the exterior outlook of an article, product, billboard or even a building. The exterior outlook may be the

14CHAPTER 2. DIFFERENT TYPES OF IP AND THEIR PROTECTION shape, pattern, conguration or a combination of these features. The subject design is a tangible object and could range from a shape of a tool to a shape of an automobile. For example, dierent car manufacturers own industrial propriety rights for the shape of the cars they have designed. A certicate of ownership of the design could be obtained from the national intellectual property oce on application.

2.5

ICT (Integrated Circuit Topographies)

This is a recent addition to intellectual properties. An Integrated Circuit (IC) is a layout of enormous amounts of electronic components inside what is known as a chip. These components are combined to form a circuit that does a specic function. Under Integrated Circuit Topography category, these circuits can be owned by the designers. A certicate of ownership of the circuit topography could be obtained from the national intellectual property oce on application

2.6

Geographical Indications

This is also a recent addition to intellectual property which recognizes that the manufacturer of some product could attribute a geographical location to it to increase the value of the product. For example, wines made in some specic geographical locations could be dierent from those made other in other locations due to climate and the method of manufacture, so the manufacturers can attribute dierent geographical location to wines, such as French champagne. Another example is Ceylon Tea where a value addition is done by the word "Ceylon" to tea, and it is an oense to call tea made in another country Ceylon Tea. A certicate of ownership of the geographical location could be obtained from the national intellectual property oce on application.

2.7. PROPRIETARY DATABASES

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2.7

Proprietary Databases

This is a very recent addition to intellectual property. As information technology developed over the last few decades, data has become an integral and important part of information technology systems. People and companies spend enormous amounts of time to collect, process and compile such data. The data could range from the names and addresses of customers to geographical information systems. Developers of such data have an intellectual property right to them. The Rest of the Book In the following chapters, intellectual property rights relating to patents are discussed.

16CHAPTER 2. DIFFERENT TYPES OF IP AND THEIR PROTECTION

Chapter 3

Patents
For scientists and technologists, what is of importance is patents intellectual property rights for inventions. The aim of this book is to give a basic understanding of patents, patent application and the granting process, and post patent implications to scientists and technologists.

3.1

The Meaning of a Patent

A patent is a document that is granted by the intellectual property oce of a government endorsing the inventorship of an invention. An invention is dened by patent laws of dierent countries. The following are some of them: Sri Lanka: Intellectual Property Act No. 36 of 2003 62. (1) For the purposes of this Part, invention means an idea of an inventor which permits in practice the solution to a specic problem in the eld of technology. (2) An invention may be, or may relate to, a product or process. 17

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CHAPTER 3. PATENTS India: Patent Act 1970 (as amended by The Patent Act 2002) S2(j) "invention" means a new product or process involving an inventive step and capable of industrial application USA: Patent Act 35 USC Invention Patentable 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 therefor subject to the conditions and requirements of this title Canada: Patent Act S(2) "invention" means any new and useful art, process, machine, manufacture or composition of matter, or any new and useful improvement in any art, process, machine, manufacture or composition of matter

Irrespective of the dierent denitions of inventions by dierent legal systems, there are some universal key elements that are necessary for a revelation to be an invention. They will be discussed in a later section. If a revelation satises those criteria, the person who made the revelation can get a patent right to it. A patent is similar to a deed of a conventional property. Just as a deed describes the biographical data (name, address etc.) and the description/ boundary of land or a building, a patent describes the biographical data of the inventor, description of the invention and the boundary of the invention (known as the claims that will be described in detail later in the book). By possessing the patent, one could prove the ownership of the invention. Once a patent is granted, the knowledge involved in the invention becomes public property. This does not mean that the public

3.2. THE DURATION OF A PATENT VALIDITY

19

can copy the invention. It only means that the knowledge is available to the public. In fact, after some specied period (the duration of the patent), anybody can use the knowledge to make the same product,. One could use this knowledge to make improvements even before the patent expires. The objective of granting a patent is the revealing of the knowledge to the public for the betterment of the society while protecting the IP rights of the inventor. Thus, a patent can be regarded as a bargain between the state/ society and the inventor. A bargain literally means that two parties compromise on something. The bargain involved in a patent is that the state/ society gives protection of IP rights to the inventor in exchange for disclosure of his knowledge to prevent duplication of research and to make improvements.

3.2

The Duration of a Patent Validity

Unlike conventional property right which are in force indenitely subject to alienation by sale or otherwise, patent rights are limited for a specic period of time. The reason for this limit is that, if there is no limit, the inventors could own it indenitely like conventional property, and there would be no opportunity for the public to use the knowledge to make the product for ever or even to add improvements to the base product. It then becomes an unfair monopoly of the inventor, and consequently there would be no transfer of knowledge to the society. The validity of a patent, therefore, is limited to a specic period of time. This period varies depending on the county but in many countries, it is the minimum period of 20 years.

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CHAPTER 3. PATENTS

3.3

The Eective Geography of a Patent Validity

Patent validly is limited to countries where patent applications are made, and subsequently granted. There is nothing called an international patent, and one must apply in separate countries if they wish to obtain patent rights in those countries. There are however a patent application mechanisms known as Paris Convention and PCT (Patent Cooperation Treaty administered by WIPO - World Intellectual Property Organization) to facilitate patent application in multiple countries. These systems will be discussed in detail in later chapters. In spite of the fact that there is nothing called an international patent and that the eective geography of a patent is local, to obtain patent in any country, the invention should be international in the sense that it the should be a rst in the world. This aspect will be discussed in the patentability requirement section.

3.4

Patents vs. Trade Secrets

Now, it is worth considering what trade secrets are. Trade secrets could be new revelations or not, but it is another way of monopolizing knowledge. While a patent gives a monopoly protected by the state for a denite period of time, one can also keep a monopoly by keeping the knowledge as a secret, and these are known as Trade Secrets. Obviously, secrets may be kept for ever, and if so, the monopoly can be eternal. However, there is no guaranteed protection for trade secrets by the state, so if the secret leaks out by some chance for example, by breaching a condentiality agreement by an employee the secret will be known by the public and there is no redress given to the holder of the secret by the courts. But, one can ask for damages if the secret was made public by a breach of contract. This will be a civil law suit between the secret holder and the breacher

3.5. COMMERCIALIZATION

21

and anybody who has commercially gained by the breach and compensation may be paid and commercial production stopped. In contrast, when a patent is granted, a limited time monopoly is granted by the state in exchange of knowledge that other people can use after the expiry of the patent term. A good example of a trade secret is the recipe of Coca Cola, so no one else will ever be able to make an identical Coca Cola unless and until the trade secret is leaked out by someone. That is very unlikely to happen since any one person may not know the complete composition of ingredients.

3.5

Commercialization

The purpose of ownership is to get some return on investment. This is true with intellectual property too. Once the patent is granted, the inventor may make a prot from his invention. Government will not do it for him, and all what the government does is give the inventor a right to exclude others from copying and making duplicates. The inventor himself has to nd ways to make a prot and it is called commercialization of patents and will be discussed towards the end of this book.

22

CHAPTER 3. PATENTS

Chapter 4

Acquiring Patent Rights

To get a patent, the new revelation should satisfy some requirements. Despite the fact that these requirements are dened with slight variations by dierent legislations, the requirements are common in the features described below. 1. The revelation should be a patentable subject matter. 2. The revealer should provide sucient information to the public. 3. The revelation should be an invention. The following discussion of the above mentioned requirements is based on Sri Lanka National Intellectual Property Act (2003) but as mentioned above, there are common requirements in most countries.

4.1

Patentable Subject Matter

Patentable subject matters are dened in every countrys national legislation. Generally, patentable subject matters are dened negatively, meaning that what is dened is the subject matters that are not patentable. So if the new revelation is not falling into the 23

24

CHAPTER 4. ACQUIRING PATENT RIGHTS

dened categories, then the subject matter is presumed patentable. Though all the countries legislations are not expressed in identical wordings, they are almost the same. According to section 62(3) of Sri Lanka National Intellectual Property Act, the following subject matters are not patentable. 62. (3) The following, notwithstanding they are inventions within the meaning of subsection (1), shall not be patentable (a) discoveries, scientic theories and mathematical methods ; (b) plants, animals and other micro organisms other than transgenic micro organisms and an essentially biological process for the production of plants and animals other than non-biological and microbiological processes : Provided however, that a patent granted in respect of micro-organisms shall be subject to the provisions of this Act; (c) schemes, rules, or methods for doing business, performing purely mental acts or playing games ; (d) methods for the treatment of the human or animal body by surgery or therapy, and diagnostic methods practiced on the human or animal body : Provided however, any product used in any such method shall be patentable; (e) an invention which is useful in the utilization of special nuclear material or atomic energy in an atomic weapon ; (f) any invention, the prevention within Sri Lanka of the commercial exploitation of which is necessary to protect the public order, morality including the protection of human, animal or plant life or health or the avoidance of serious prejudice to the environment.

4.2. SUFFICIENT DISCLOSURE OF THE INVENTION

25

Similar or the same provisions exist in other jurisdictions and an interested reader may verify it by referring to them. There are reasons why these subject matters are not patentable, but such explanations are beyond the scope of this book.

4.2

Sucient Disclosure of the Invention

As mentioned earlier, the whole objective of granting patent rights by the state to individuals is the dissemination of knowledge to the society for its betterment. In this light, it is necessary that the patent document describes the invention in full with sucient details so that someone could make the same product after reading the document. This does not mean that people can copy what is in the document during the period of validity of the patent. In fact, after the expiry of the patent, others can copy it exactly, and this is what is done by generic drug manufacturers. They wait until the patent is expired, and as soon as it is expired, they make generic drugs according to the recipe revealed by the expired patent. During the validity of the patent too, people can use the knowledge by way of making improvements to what is mentioned in the revelation, and if the improvement is not obvious, as will be explained in subsequent sections, the improvement can be patented.

4.3

Patent - An Inventive Subject Matter

There are 3 core requirements for a revelation to be inventive. These are also dened and described in national legislations. The words used in dierent legislation vary slightly, but they are uniform and same in terms of their meaning. What constitutes inventions, according to section 63 of Sri Lankan National Intellectual Property Act, are the revelations satisfying the following three requirements:

26

CHAPTER 4. ACQUIRING PATENT RIGHTS 63. An invention is patentable if it is new, involves an inventive step and is industrially applicable. They are described in the act as follows: 64. (1) An invention is new if it is not anticipated by prior art. 65. An invention shall be considered as involving an inventive step if, having regard to the prior art relevant to the patent application claiming the invention, such inventive step would not have been obvious to a person having ordinary skill in the art. 66. An invention shall be considered industrially applicable if it can be made or used in any kind of industry.

These requirements are explained by using an example in the following section. Synonyms used by other legislations are novelty, non-anticipation (for new), non-obviousness, inventiveness (for inventive step), and utility, usefulness (for industrial applicability) and as mentioned above, their meanings are the same.

4.4

Patentability Testing

Having described the patentability criteria, it is now possible to explain patentability testing. When a patent is applied for by someone, patent examiners in the national intellectual property oce carry out these tests to ascertain whether the revelation is patentable. The inventors who apply for patents also do these tests in order to make sure that their revelation is patentable. This is because the patent application to granting process (known as patent prosecution) is quite expensive and people want to make sure, to the best of their knowledge, that they will not lose money by a patent rejection by an examiner in the examination process.

4.4. PATENTABILITY TESTING

27

Firstly, one has to make sure that the revelation does not fall into subject matter that are not patentable. After this, it should be tested whether, at the end of the reading of the document, the revelation is described in full with sucient details. These are two straightforward requirements. The core requirements test has to be done next. The most straightforward core requirement is utility or industrial applicability. What this means is that the revelation should have some use. Mere ideas are therefore not patentable. In fact, a patent examiner is allowed to ask the inventor for a prototype in the examination process if the examiner does not feel that the revelation is practical and has some use. The next requirement is the novelty (new, non-anticipatory) requirement. This simply means that the revelation should be new meaning that it has to be the rst in the word. People cannot get a patent for what was existing before even if no one has claimed patent rights for them. To ascertain novelty, the inventors and examiners have to do what is known as a prior art search (described later). By doing a prior art search, all the related knowledge (patent literature, scientic journals, newspaper articles, exhibitions, product launches, and in short whatever that was in the public domain known to the public) is researched. After the research, it should be clear whether the revelation is not already known. This is not very straightforward but still is a somewhat easier to decide requirement than the non-obviousness requirement described in the next paragraph. Non obviousness or inventiveness is the most complicated and dicult to decide requirement. Most of the things that are in use today are not totally new, but are improvements of earlier products and knowledge. So when an improvement is introduced to what has been known, it is new because it was not there earlier but the question arise whether the improvement is signicant enough to warrant a patent. For example, there maybe a product already in use which is made in some shape, and if another product is made with a dierent shape, is the new one patentable? The answer is

28

CHAPTER 4. ACQUIRING PATENT RIGHTS

No and Yes. It is not patentable if the new shape only serves a particular purpose which was foreseen by the earlier inventor. It is patentable if it serves a purpose unforeseen or oversighted by the earlier invention. For example, the new shape maybe a shape where a user has easy operability that makes the product more marketable. Similarly, a drug which has been patented to cure a certain disease can be patented again for curing another disease. In legal jargon, this requirement is described as "not being obvious" to a person skilled in the art. (Skilled in the art means that there is basic knowledge of the sciences encompassing the subject matter.) The outcome on this test is subjective. It is the main cause of patent invalidating, which will be described later. The legal case study in the following section gives an illustration of novelty, and non obviousness requirements.

4.4.1

Patentability requirement case study: Beloit vs. Valmet Oy

This was a legal case based on a dispute between the two parties Beloit (herein after called A) and Valmet Oy (herein after called B) in Canada. It involved both novelty and non-obviousness issues. The following is the background of the case. The case was with regard to the press section of a paper manufacturing machine. The paper manufacturing process basically involves the following four stages: Making a slurry Pressing the slurry Pulling the pressed slurry Drying the pressed slurry The economy of production greatly depends on the pressing stage where the water in the slurry is removed. An increased efciency of the pressing makes the pulling stage faster thereby increasing productivity.

4.4. PATENTABILITY TESTING

29

In this case, both A and B had invented two dierent pressing mechanisms and both of them obtained patent rights for their respective inventions. At a later stage, the party which invented the pressing stage rst (party A) tried to invalidate the patent right of B (who invented the second mechanism) on the ground of novelty and obviousness.

The pressing is achieved by rotating rollers through which the wet slurry passes. Above gure depicts the mechanisms of pressing stages of A and B. The mechanism of party A (labeled as prior art: bi-nip) has three rollers that provide two pressing stages while the mechanism of party B (labeled as claimed invention: tri-nip) has four rollers providing three pressing stages. The additional pressing stage in Bs machine makes the pulling process faster thereby increasing the productivity. Both A and B got patent rights to their respective mechanisms. Eventually, Bs machine became more marketable. Then A sued B alleging that B was infringing on the patent rights of A. A argued that Bs mechanism was not inventive on the grounds of novelty

30

CHAPTER 4. ACQUIRING PATENT RIGHTS

and obviousness and therefore, Bs patent was invalid. The case was argued in Canadian courts of law. At the trial, the trial court judge accepted the arguments of A citing that a mere addition of a roller is an obvious improvement anybody skilled in the art could do. The judge also took the view that it is not even novel because there was enough literature published by dierent parties that the manufacturing process can be made faster by better pressing. B then appealed against the decision of the trial court judge. The appeal court judge reversed the decision of the trial court judge and stated that Bs invention with an additional roller was also inventive. The opinion of the appeal court judge with regard to the novelty of the invention was that if one makes a machine by referring to dierent existing inventions and literature, the composite machine can still be inventive (in terms of novelty) and just because the composite invention is composed of already patented inventions, the composite invention cannot be invalidated on the grounds of not being novel. The appeal court judges argument with regard to the obviousness was that even if it was true that it was a mere addition of another roller, that addition made the machine more productive (about 25 per cent increase of production speed) and the machine became a market success. If it were very obvious to those skilled in the art, why was it not done before. Along these arguments, the appeal court judge decided that Bs patent was also valid and that there was no infringement of As patent rights. The gist of the case is that novelty and obviousness do not have straightforward answers. They are subjective decisions and the decision has to be made after considering all the encompassing facts and wisdom. With this knowledge, it is possible to study another important area of IP known as prior art search.

Chapter 5

Patent Prior Art Searches

5.1 The Meaning and the Need of Prior Art Searches

It is clear from the previous chapter that it is necessary to look at the previous work done with respect to a revelation when deciding its patentability. In intellectual property jargon, previous work is known as prior art. Prior art search hence means the search for previous work. There are dierent types of prior art searches one could perform for dierent purposes, and these will be discussed at the end of this chapter. Prior art is dened in Sri Lanka National Intellectual Property Act as follows: 64. (1) An invention is new if it is not anticipated by prior art. (2) Prior art shall consist of 31

32

CHAPTER 5. PATENT PRIOR ART SEARCHES (a) everything disclosed to the public, anywhere in the world, by written publication, oral disclosure, use or in any other way, prior to the ling or, where appropriate, priority date of the patent application claiming the invention ; (b) the contents of patent applications made in Sri Lanka having an earlier ling or, where appropriate, priority date than the patent application referred to in paragraph (a), to the extent that such contents are included in the patent granted on the basis of the said patent application made in Sri Lanka.

5.2

Scope of Prior Art Search

As mentioned above, to get a patent, despite the fact that the patent rights enforceability is local, the revelation has to be internationally new. This condition is tested by referring to everything known to the public prior to the potentially patentable revelation. Everything in the public domain means already patented inventions, research literature, newspaper publications, exhibitions, or any other public disclosure. It could even be a leaking out of information by a research mate or a company employee. However, it is practically impossible to search all these areas, and generally the search is done on patent databases of dierent jurisdictions and research articles. Even after passing the test of patentability by referring to patent material and research article, it still does not absolutely mean that it was not in existence before. But it is generally accepted to be so. If someone nds that a patented invention is not patentable due to being publicly known, he/she can challenge the validity of the patent. Traditional knowledge is a good example of this. Someone could formulate a new compound using traditional knowledge (herbal recipes etc.) and get a patent, but someone else could invalidate the patent if he/she could prove that it was already known to their ancestors.

5.3. PRIOR ART SEARCH ON PATENT DATABASES

33

Prior art searches are mainly done in two stages. First stage is where the search is done by the inventors or their agents prior to lodging a patent application in the government oce. This is done in order to get sucient condence that the revelation is inventive and not rejected by examiners in the examination process. The patent application to granting process, which is known as patent prosecution, is costly and if the application is rejected, the applicant may lose a lot of money and time. The search by inventors or their agents is done on free online patent databases hosted by respective countries because unless the inventor or the agent is a specialized person in the area, they may not have access to subscribed research literature. The second stage of prior search is done at the national intellectual property oce by examiners in the examination process. This examination is rigorous and done carefully since after the examination, a patent application is allowed (patent grant) or rejected (patent reject). This decision can, of course, be challenged by other parties (in case of a grant) or by the applicant himself (in case of a reject) in courts of law. The grant or reject decision may involve millions and billions of rupees if the application is with regard to cutting edge technology and research. Generally, the oce has access to subscribed scientic research literature other than free public patent literature. In the following section, prior art search on patent databases is discussed.

5.3

Prior Art Search on Patent Databases

Each country has a national intellectual property oce responsible for intellectual property related matters. In case of patents, this oce administers patent related matters, and hosts a free public patent database which the public could search. This is similar to a land registry where land titles are kept for public search. As we all know, before the explosion of ICT (Information and

34

CHAPTER 5. PATENT PRIOR ART SEARCHES

Communication Technology), we did not have the luxury of accessing remote data. When it was necessary to refer to some data, we had to go where the data is kept. Patent oces are no exception. Until a few decades ago, people had to go to the patent oce to do some reference, and nding what you want in that heap of information was quite exhausting. However, there were dierent classications available in order to carry out manual searches easily. International search was next to impossible then; who would go to a foreign country to do a patent search spending signicant amount of money. Thanks to ICT, we can now search the databases even from our hand held devices from any part of the globe.

5.3.1

Prior Art Search on Online Patent Databases

As mentioned above, when one wants to determine the patentability of a revelation, he/she has to search all the literature. But since this is not possible, generally search is limited to online databases. Even searching online databases in all the countries is very time consuming and may not be worth the eort. It is therefore considered sucient to search in specic countries (or regions) where one expects the possibility of prior art search. The selection of countries greatly depends on the potential invention. For example, if one knows that particular research similar to the potential invention is done in a specic country, he/she may search only in that country. The following are the generally searched patent databases. WIPO (World Intellectual Property Organization): www.wipo.org EU (European Union): www.epo.org USPTO (United States Patent and Trademark Oce): www.uspto.gov

5.3. PRIOR ART SEARCH ON PATENT DATABASES CIPO (Canadian Intellectual Property Oce): www.cipo.gc.ca KIPO (Korean Intellectual Property Oce): www.kipo.go.kr JIPO (Japanese Intellectual Property Oce): www.jpo.go.jp IP Australia (Australian Patent Oce): www.ipaustralia.gov.au

35

All these databases are interfaced with a search engine and a user interface. Below is a snapshot of the search engine user interface of WIPO.

Searches can be done on dierent elds, namely, Inventor Name, Applicant Name, Application Number, Publication Number etc..

36

CHAPTER 5. PATENT PRIOR ART SEARCHES

These are straightforward search tools and are useful if specic information is known about a patent or specic information is required about a patent. Most of the time, specic details are not known. All what an inventor or the agent knows is some key words relating to the invention and the task is to nd whether similar work has been done elsewhere. Key words can be of dierent formats and order. For example, if the search is relating to a robotic arm for cleaning drains, one could write the invention as, A robot for cleaning drains and another could write it as A robotic drain cleaning arm. When the search is done, the best yield will be given if the search can nd all these possibilities. We can use search grammar to make composite search phrases to catch almost all these possibilities. There is dierent grammar used in dierent search engines and they are described in the help pages of the search interface. Most important of these are Boolean operators and wildcards. Boolean operators are simple logical operation of OR and AND, and the key words can be joined by these so that the order of the key words in the text does not matter. Wildcards are used to catch synonyms of words. For example, if the search is done for robo* (some search engines use ? instead of *), the words robot, robotic, robotically etc. will be detected. Key words combined with dierent operators could be used to search anywhere in the patent document. As will be described later, a patent document mainly has an abstract description of the invention, detailed description of the invention and what are known as claims. The most eective and economical place to search is on the abstract because abstract contains almost all about the invention. In the next section, a demonstration of a prior art search is illustrated.

5.3. PRIOR ART SEARCH ON PATENT DATABASES

37

5.3.2

Prior Art Search: An example

Let us suppose that we have designed a new machine to extract oil from oil deposits in sand and soil. We now want to patent it, and before doing so, we have to make sure that no one has ever made such a machine and if a similar one has been made, we want to make sure that our one is not obvious when compared with what is already made. We want to do this by doing a patent prior art search. For a product like this, it is necessary that we do the search in all the countries having oil deposits because similar research may be going on in almost all of those countries. If the products usability is restricted to a particular country or a region, it is sucient to look at only those databases. For example, if the potential invention is a new snowmobile design, it is not necessary to look at databases in tropical countries like Sri Lanka. A prior art search on Canadian patent database on oil extraction from oil deposited sand is illustrated below. Extraction of petroleum oil from oil sands is an economical industry in Alberta, Canada. One method of extracting oil from oil mixed sand is by adding hydrogen peroxide to the oil slurry. Suppose that a person has manufactured a machine where this process is improved and he wants to determine the patentability of his potential invention by doing a prior art search. As mentioned earlier, the best place to do a search is on the abstract. The search key words and how they are connected have to be decided rst and the search could then be done on the abstract. The words hydrogen peroxide has to be there necessarily. They can be used as hydrogen peroxide as one phrase, but to be on safe side, it can be used as hydrogen AND peroxide to detect abstracts where the word hydrogen and peroxide are separately used for some reason. Then the words that can be used for the word oil have to be selected. One such word is oil itself. The other are the word petro and gas but they can be used as petroleum, gasoline etc.

38

CHAPTER 5. PATENT PRIOR ART SEARCHES

as well, so we have to use wildcards to detect all the possibilities. Accordingly, they can be formed and joined as oil OR petro* OR gas*. Following are the results obtained when the search is done using this keyword combination on Canadian patent database. Query Submitted: ((hydrogen AND peroxide <IN> ABSTRACT) <AND> (gas* OR oil OR petro*<IN> ABSTRACT)) 533 documents out of 2,084,695 matched your query. Click on its number to view the details of the document. The above results show that there are 533 patent documents in the whole database of more than 2 million documents. Are we to read all these 533 and is it really worth the eort? No, we have to look only at the ones that are relevant to our invention. Visual ltration by looking at the title has to be done now. Let us look at the rst 10 results. 1. Patent Number 2627218 - ACTIVATED PEROXIDE SOLUTIONS AND PROCESS FOR THE PREPARATION THEREOF 2. Patent Number 2578119 - VAPOR STERILIZATION USING A NON-AQUEOUS SOURCE OF HYDROGEN PEROXIDE 3. Patent Number 2310839 - A LARGE INTEGRATABLE HYDROGEN PEROXIDE INTERMEDIATE STAGE OR STAND ALONE TANK FOR THE PURPOSE OF PURIFYING FUELS USING HIGH STRENGTH HYDROGEN PEROXIDE IN FUELS 4. Patent Number 2253975 - METHOD FOR MEASURING THE CONCENTRATION OF HYDROGEN PEROXIDE VAPOR

5.3. PRIOR ART SEARCH ON PATENT DATABASES 5. Patent Number 2280941 - STERILIZING METHOD FOR MEDICAL STERILIZATION PACKAGING AND INJECTION PACK 6. Patent Number 2465081 - STERILIZATION SYSTEM AND METHOD 7. Patent Number 2465078 - METHOD OF RELEASING GAS OR VAPOR FROM A SOLID MATERIAL 8. Patent Number 2350387 - METHOD FOR RAPIDLY DETERMINING THE ACCEPTABILITY OF LOADS TO BE STERILIZED 9. Patent Number 2235941 - VAPOR STERILIZATION USING INORGANIC HYDROGEN PEROXIDE COMPLEXES 10. Patent Number 1144180 - PROCESS AND APPARATUS FOR PREPARATION OF PHENOLS

39

By inspection, we can conclude that only 3 and 7 are relevant. This exercise has to be done for the whole list of 533 documents (which can be done in less than an hour). This is left as an exercise. The second ltration has to be done by looking at the abstracts of the documents keeping the invention in mind. Let us look at the above two (3 and 7) abstracts. A LARGE INTEGRATABLE HYDROGEN PEROXIDE INTERMEDIATE STAGE OR STAND ALONE TANK FOR THE PURPOSE OF PURIFYING FUELS USING HIGH STRENGTH HYDROGEN PEROXIDE IN FUELS This 50-30,000 barrel tank is a facility to Oxidize and Purify a variety of fuels using Hydrogen Peroxide (in 30-99 pc purity) before the fuel is sent to market. The attachments and scheme are designed in an open air fashion so that the Hydrogen Peroxide can not cause a

40

CHAPTER 5. PATENT PRIOR ART SEARCHES pressure buildup as it performs its oxidation process on the fuel. The roof is designed to protect the contents of the tank from weather, and, hold sealed lighting for the work area. The Grid Iron work area is of sucient size ( covering about 25 per cent of the top of the tank) to allow for two to three persons to perform the tank operations, which are to receive the barrels, measure the Hydrogen Peroxide, and operate the mixer as the Hydrogen Peroxide is added to the fuel. After the Fuel stands in the tank for 24 -48 hours, it will be suctioned out to a preliminary or nal storage tank or taken on beard a tanker truck for market. There will be a nominal amount of water and dust settled at the bottom of the subject tank, which will be hosed out of the tank at its lowest corner, and put into barrels, and shipped in water to a handling facility. The tank will be constructed of a suciently strong combination of Re-bar concrete and Metallic or Plastic lining (nonreactive surfaces for the Hydrogen Peroxide). There will be a covered electric or gas motored lift shaft to the side of the tank for bringing the Hydrogen Peroxide barrels from ground level to above the top of the tank, or a separate tank holding the hydrogen peroxide from which it will be piped into the tank, where it will be administered to the fuel in measured quantities. METHOD OF RELEASING GAS OR VAPOR FROM A SOLID MATERIAL A method of releasing hydrogen peroxide vapor from a solid hydrogen peroxide complex capable of releasing the hydrogen peroxide vapor so as to sterilize an object is described. The solid hydrogen peroxide complex is sealed within a gas permeable material. The solid hydrogen peroxide complex is heated to thereby release the hydrogen peroxide vapor through the gas permeable

5.4. DIFFERENT TYPES OF PRIOR ART SEARCHES material. The object is contacted with the vapor.

41

By reading the abstracts on the computer screen itself while keeping the abstracts of the invention in mind, irrelevant abstracts can be ruled out. Finally, we will end up with relevant documents to our invention, and such documents have to be read and compared with the invention more closely. Generally, on a search, a few patent documents are obtained as relevant ones. Then it is necessary to read them carefully after downloading the whole document. While reading, we have to see whether the new revelation is inventive, that is whether it is new and non-obvious with regard to the prior art. The primary purpose of prior art search is to ascertain the patentability and it is called a patentability search. There are other types of searches as well, but basically searching is the same, but the ltration is done with a dierent motive. The next section discusses dierent kinds of searches.

5.4

Dierent Types of Prior Art Searches

The basic purpose of prior art searches is to nd out what has been done with regard to the technological activity done by the inventor. However, the overall purpose of the search maybe dierent with regard to what the purpose of the search is, and basic search can be customized according to the need. Following are some important searches one could perform to fulll a specic need. Name Search State of the Art Search Technological Activity Search Legal Status Search

42

CHAPTER 5. PATENT PRIOR ART SEARCHES Infringement Search (Freedom to Operate Search) Patentability Search

5.4.1

Name Search

This is a search done when specic information on the patent is known to the searcher. For an example, if the inventor, assignee or the application country is known, a searcher can perform a search on what the specic inventor has patented, what the specic company has patented or whether a patent application or a patent is available in the specic country with regard to the work the searcher is interested in knowing.

5.4.2

State of the Art Searches

This type of search is done to learn the present state of the art technologies available. Such information is useful if one wants to avoid reinventing the wheel because if the searcher is going to do the same invention, it is going to be a complete wastage of time and energy if someone has already claimed for the invention. This search is also useful if one is interested in doing improvements to what is in existence. State of the art search is very useful to researchers who embark on new research activities. By knowing the present state of the technology, they can do their research more economically and eectively.

5.4.3

Technological Activity Search

This is similar to a state of the art search. The specic purpose of technological activity search is to nd the active competitors or countries where some new technology research is being done.

5.4. DIFFERENT TYPES OF PRIOR ART SEARCHES

43

5.4.4

Legal Status Search

Legal status search is to nd the present legal status of a patent. The main concern in this search is to nd out whether the patent has lapsed after the expiry of the patent monopoly or abandoned. This information is very useful for companies that make generic products of the patented invention after the patent is lapsed.

5.4.5

Infringement Search (Freedom to Operate Search)

Infringement search or freedom to operate search is done in order to see whether an infringement of a patent right will be done by engaging in the research or the production of a certain product. Such information is useful when making new things (specically drugs) because if someone else later sues and proves of an infringement being done, compensation could be very costly.

5.4.6

Patentability Search

Patentability search is done in order to ascertain whether a new invention is patentable by fullling the requirements of novelty and non-obviousness. This is the most widely done search by patent applicants and patent examiners. The search is more time consuming and rigorous than any of the earlier mentioned searches. Synonyms to this search are pre-application search, and novelty/non obviousness search.

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CHAPTER 5. PATENT PRIOR ART SEARCHES

Chapter 6

Patent Drafting
After the prior art search is done, if the inventor or his agent is of the opinion that the new revelation is inventive and therefore patentable, the invention has to be written according to a standard format. This is called patent drafting. As mentioned earlier, the whole objective of the government (society) granting a patent right (a monopoly) is to make the inventor reveal the invention so that any other person skilled in the art should be able to use it after the expiry of the patent or do improvements while the patent is valid. To do so, the invention has to be written in full and clearly so that anybody can read and use it. A patent document is written in separate sections. It is similar to the structure of a standard research paper except that the patent document also has a section known as Claims.

6.1

Structure of a Patent
Title 45

The following are the sections of a patent document.

46 Abstract

CHAPTER 6. PATENT DRAFTING

Description: Background of the invention, Present state of the technology, Disclosure of the invention Claims Drawings These requirement are described in the patent laws and rules of a country. In Sri Lanka, they are mentioned in Section 71 of the National Intellectual Property Act, No. 36 of 2003

6.1.1

Title

The title is the briefest description of the invention. It has to be complete and should not be misleading. By looking at the title, one should be able to know what the invention is. Some examples are: "Solar Powered Drain Cleaning Robot, Nano Fibres for Manufacture of Textiles etc.. One of the main purposes of giving a complete and concise title is to be able to extract them when a search is done.

6.1.2

Abstract

The abstract is a brief description of the invention. Similar to the main purpose of the title, the main purpose of the abstract is to enable an eective search. In addition to this requirement, it should also be possible to read the abstract and to lter it. Therefore, it should describe the invention in the shortest possible way. Some legislation limit the number of words in the abstract. For example, in Canada, it is 150 words. Following are some sample abstracts extracted from Manual of Patent Oce Practice, CIPO (Canadian Intellectual Property Oce). 1: A heart valve with an annular valve body dening an orice and having a plurality of struts forming a pair of

6.1. STRUCTURE OF A PATENT cages on opposite sides of the orice. A spherical closure member is captively held within the cages and moved by blood ow between open and closed positions in check valve fashion. A slight leak or backow is provided in the closed position by making the orice slightly larger than the closure member. Blood ow is maximized in the open position of the valve by providing a convex prole on the orice-dening surfaces of the body. An annular rib is formed in a channel around the periphery of the valve body to anchor a suture ring used to secure the valve within the heart. 2: Amides are produced by reacting an ester of a carboxylic acid with an amine, using as catalyst an alkoxide of an alkali metal. The ester is rst heated to at least 75 degrees Celsius under a pressure of no more than 500 mm. of mercury to remove moisture and acid gases which prevent the reaction, and then converted to an amide without further heating. 3: Process for the production of semiconductor devices, wherein a silicon oxide lm is formed on a surface of a semiconductor substrate, followed by deposition of a layer of lead on the lm. This combination is then heated at 500-700oC. for at least 10 minutes in an oxidizing atmosphere, whereby a passivating lm forms, consisting essentially of silicon oxide and lead oxide. The temperatures employed are substantially lower than those conventionally used, and prevent deterioration of the device. 4: Wool is heated at 50-65 degrees Celsius for less than 15 minutes in an aqueous dispersion of 0.1-2 percent calcium hydroxide, washed, and then acidied to render it receptive to dyestus without adversely aecting the physical properties of the wool.

47

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CHAPTER 6. PATENT DRAFTING

6.1.3

Description

Description is composed of three sections, namely, background, the present state of the technology, and the disclosure of the invention. This can be thought of as a chronologically ordered story of the invention. We rst start with the need for the invention (background) and secondly, what has been done so far to fulll the need (present state) and nally, describe the potential invention and justify its patentability by comparing it with what has already been done. This is a very logical way not only of looking at the patent description but also at a research paper. The following extract from the Canadian Patent Oce Practice Manual gives an overview on the requirements for a description. The description must provide a clear and complete disclosure of the invention such that the person skilled in the art: (1) can unambiguously identify what has been invented; and (2) is enabled to practice this invention. As mentioned earlier, the purpose of granting a patent right is the anticipation that the inventor reveals his/ her knowledge to society so that the public can use it after the expiry of the patent or do improvements while the patent is in force. This has to be done by someone based on the description. The following extract from the Canadian Patent Oce Practice Manuals quotation of a judges view in a legal case emphasizes this requirement. In Consolboard Inc. v. Macmillan Bloedel (Saskatchewan) Ltd., Dickson J. noted that the inventor must, in return for the grant of a patent, give to the public an adequate description of the invention with suciently complete and accurate details as will enable a workman, skilled

6.1. STRUCTURE OF A PATENT in the art to which the invention relates, to construct or use that invention when the period of the monopoly has expired. The description must be able to answer the questions What is your invention?: How does it work? such that when the period of the monopoly has expired the public will be able, having only the specication, to make the same successful use of the invention as the inventor could at the time of his application.

49

The requirements of a proper disclosure are described in the patent legislation of dierent countries. There may be slight variations in dierent jurisdictions but the main features are uniform in all the countries. According to Canadian Patent Act subsection 27(3): The specication of an invention must (a) correctly and fully describe the invention and its operation or use as contemplated by the inventor; (b) set out clearly the various steps in a process, or the method of constructing, making, compounding or using a machine, manufacture or composition of matter, in such full, clear, concise and exact terms as to enable any person skilled in the art or science to which it pertains, or with which it is most closely connected, to make, construct, compound or use it; (c) in the case of a machine, explain the principle of the machine and the best mode in which the inventor has contemplated the application of that principle; and (d) in the case of a process, explain the necessary sequence, if any, of the various steps, so as to distinguish the invention from other inventions. Sample disclosures are too long to quote here but an interested reader could easily nd examples by accessing an online patent

50

CHAPTER 6. PATENT DRAFTING

database. A complete sample patent is also found at the end of the book for quick reference. Illustrative drawings may be included to the description, however they have to be drawn on separate sheets and no wording should be included. This is done for eective automatic language translation.

6.1.4

Claims

The most signicant part of a patent as far as the inventor is concerned is what is known as the claims. Claims can basically be dened as the boundary of the invention just like a boundary of the land one is owning. What one could enjoy in case of a land is what is enclosed in the boundary, and so is the case for a patent; what one can legally enjoy as his own is what is enclosed in the patent claim. Just like one has to enclose the physical boundary of a land securely so that others cannot encroach, patent claims have to be drafted so that others cannot creep though them and use the invention without legal infringement. Patent drafting is professional work that needs a signicant amount of expertise. Patent legislations dene claims more formally, and according to Canadian Patent Act, the claims must dene distinctly and in explicit terms the subject matter of the invention for which protection is sought (section 27(4) of the Patent Act). Claims should necessarily contain what is invented but should not contain what is already in the public domain. All what is claimed has to be justied in the disclosure where the invention and what was already known could be cited for comparison purposes. General Structure of Claims A claim essentially is composed of three parts: Preamble or introductory phrase Transitional phrase

6.1. STRUCTURE OF A PATENT Body

51

Preamble is an introduction to what follows. This introduction is what is already in the public domain. What the preamble does is to state that what follows is related to what is mentioned in the preamble. Examples: A bottle opener comprising . . . . . . .. A robot for cleaning drains comprising . . . . . . . . . . A composition for decomposing oil spills on water comprising . . . . . . . . . . By looking at the preamble, one can say that the invention is related to a bottle opener, a drain cleaning robot and an oil spill decomposing composition where such equipment, robots and compositions are already available and the present invention is about a new bottle opener, a new drain cleaning robot, and a new oil spill decomposing composition described after the transitional word "comprising", hitherto unknown to the public. The preamble is connected to the following body the inventionby a transitional word/phrase of a language. In English, some such transitional words/ phrases are: comprising, composed of, consisting of, which comprises, made of, including, having etc.. All what the transition word/phrase does is the transition from the preamble to the body, the connection, or the division of what is in the public domain and what is the invention. The body of the claim describes the invention clearly and completely. It may contain what is already known to the public but the composite body should be not known to the public before. What this means is that an invention may contain things that are already known but the composite invention should be new to the existing public domain knowledge. However, no legal right is given to the inventor for what is already known, and the protection is only given to the parts that are new.

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CHAPTER 6. PATENT DRAFTING

As an example, let us suppose that someone invents an explosive triggering device by sending a SMS using a mobile phone. Let us also assume that mobile phones and a short message (SMS) usage are already known to the public but explosive triggering using SMS is not yet known. The claim can be worded as An explosive triggering device comprising a mobile phone and a SMS gateway". The inventor does not have any legal right to either mobile phones or SMS gateways but only for the triggering device composed of a mobile phone and a SMS gateway. The invention could be a product or a process. In case of a product, the claim is with respect to the parts or components of it. If the invention is a process, it is with respect to the process and sub processes of the invention. There can also be claims that claim both the product and the process. The best example is the new drug and its manufacturing process. Both the drug and the process of manufacture are patentable and can be claimed as a legal right. Before it became mandatory to enforce product patents, India for example, used to not recognize product patents and it was possible for Indian researchers to apply for patents for new processes to manufacture products like pharmaceuticals already patented elsewhere. However, it is not possible now to patent such processes without the concurrence of the holder of the product patent. We will now look at some examples of claims. These are extracted from Canadian Intellectual Property database. 1. Title: An Electroluminescent Device Claim: An electroluminescent device comprising a transparent substrate for facing a viewer in front of said substrate; a transparent electrode disposed behind said substrate on a side of said substrate opposite from said viewer; a partially-absorbing layer disposed behind said electrode; an electroluminescent emitting layer disposed behind said partially-absorbing layer; a reective rear electrode disposed behind said emitting layer, said emit-

6.1. STRUCTURE OF A PATENT ting layer being made from a material operable to emit light towards when a potential is applied between said electrodes; said partially absorbing layer and said emitting layer each being made from a material and having a thickness that are chosen to cooperate with said reective rear electrode such that at least a portion of ambient light incident on said device is reduced.

53

The invention is about an electroluminescent (devices emitting luminence when an electric current is applied to the terminals) device which is already known. The inventive part is a new way to make it by combining dierent layers of material with dierent thicknesses to form a composite unit that has contrast enhancement capability. Some of these layers may be already known but the composite unit is new. 2. Title: An Outer Wall Cleaning Robot Claim: An outer wall cleaning robot comprising: an arm pivotable about a rst rotation axis that extends in a substantially horizontal direction in approximately parallel relation to an outer wall surface of a building; an arm driving mechanism for driving said arm; a rotational body supported by said arm in such a manner that said rotational body is pivotable about a second rotation axis extending in parallel with said rst rotation axis; a rotational-body driving mechanism for driving said rotational body independently of driving of said arm by said arm driving mechanism; a wiping-squeegee mounting mechanism attached to said rotational body; and a wiping squeegee attached to said mounting mechanism. The invention is about outer wall cleaning robots which are already known. The inventive part is a new way of making an outer wall cleaning robot by combining dierent components. Some of these may be already known but the composite unit is new.

54

CHAPTER 6. PATENT DRAFTING 3. Title: Well Treatment Compositions and Methods of Utilizing Nano Particles Claim: A method of cementing comprising: introducing a cement composition into a subterranean formation, wherein the cement composition comprises cement, water, and at least one nano particle selected from the group consisting of particulate nano-silica, nano-alumina, nano-zinc oxide, nano-boron, nano-iron oxide, and combinations thereof

The invention is about a method of cementing wells which is already known. The invention is a new way of doing so using a special compound. Some of these may be already known but the composition is new. What are mentioned above are independent claims which are also known as main claims. Most of the time the content of this claim is the same as what is in the abstract. For example, the abstracts of the above claims extracted from the CIPO database are as follows: 1. Title: An Electroluminescent Device Abstract: An aspect of the invention provides an electroluminescent device that incorporates a partially-absorbing layer which is disposed in front of an emitting electroluminescent layer and a reective rear electrode. The thickness and material of the partially-absorbing layer cooperates with the thickness of the electroluminescent layer to cause at least some reduction in ambient light incident of the display. 2. Title: An Outer Wall Cleaning Robot Abstract: An outer wall cleaning robot includes an arm pivotable about a rst rotation axis and a rotational body supported by the arm for pivotal movement about a second rotation axis. The rotational body can be

6.1. STRUCTURE OF A PATENT driven independently of a pivotal movement of the arm. To the rotational body are attached respective mounting mechanisms for a wiping squeegee and a receiving squeegee. 3. Title: Well Treatment Compositions and Methods of Utilizing Nano Particles Abstract: Disclosed embodiments relate to well treatment uids and methods that utilize nano-particles. Exemplary nano-particles are selected from the group consisting of particulatenano-silica, nano alumina, nanozinc oxide, nano-boron, nano-iron oxide, and combinations thereof. Embodiments also relate to methods of cementing that include the use of nano-particles. An exemplary method of cementing comprises introducing a cement composition into a subterranean formation, wherein the cement composition comprises cement, water and a particulate nano-silica. Embodiments also relate to use of nano-particles in drilling uids, completion uids, stimulation uids, and well clean-up uids.

55

There are also what are known as dependent or sub claims. As the name implies, the dependent claims are dependent on the independent claim, and make a reference to the independent claim as as claimed in (independent claim) and emphasize on a special instance of the independent claim. In fact, what the dependent claim claims are special cases of the claimed subject matter of the independent claim. The inter-relation of dependent and independent claims can be depicted as a Venn diagram where sub groups fall inside a group. The necessity for dependent claims is in case of an invalidation of the independent claim on the grounds that the independent claim is too broad, there is still a fall back option for the inventor to claim the dependent claims. If there are no dependent claims, the

56

CHAPTER 6. PATENT DRAFTING

inventor would be left with nothing if the main independent claim is declared invalid. As an example, if the invention is about fabrication of semiconductor devices using Silicon or Germanium, with sucient justication in the disclosure as to the potential use of other elements in the same group of the Periodic Table, he/she can draft the independent claim as . . . . . . . . . . . . . . . . . . . . . using any material in the Group Four of the Periodic Table of Elements and claim the device made of Silicon or Germanium by writing the dependent claim as . . . . . . . . . . . . . . . .the device as claimed in (independent claim) wherein the element is Silicon or Germanium". If by some chance, someone challenges that the use of Carbon (in Group Four of the Table) in making the device had already been known to the ancient Romans, the inventor could fall back to the claims of Silicon or Germanium ! Following are dependent claims relating to the above examples extracted from the CIPO database. It will be noticed that some dependent claims refer to many dependent or independent claims. 1. Title: An Electroluminescent Device Dependent Claims: The device according to claim 1 wherein said transparent front electrode is made from ITO. The device according to claim 1 wherein said rear electrode is made from Aluminium. The device according to claim 1 wherein said electroluminescent layer is made from a material selected from the group consisting of ZnS:Mn, Alq3, PPV. 2. Title: An Outer Wall Cleaning Robot Dependent Claims: An outer wall cleaning robot as dened in claim 1 which further comprises a receivingsqueegee mounting mechanism pivotably supported relative to said rotational body, a receiving squeegee at-

6.1. STRUCTURE OF A PATENT tached to said receiving-squeegee mounting mechanism so as to be positioned below said wiping squeegee, for receiving soiled water resultant from cleaning of the outer wall, a clutch mechanism for connecting or disconnecting said receiving squeegee to or from said rotational body, and a stopper mechanism for preventing said receiving squeegee from pivoting downward from a predetermined position. An outer wall cleaning robot as dened in claim 1 or 2 wherein said arm mounting mechanism and said rotationalbody driving mechanism are provided separately from said arm. An outer wall cleaning robot as dened in claim 2 wherein said receiving-squeegee mounting mechanism includes a slider base, a slider mounted to said slider base for sliding movement along said slider body in a forward and rearward direction, and drive means for driving said slider, and wherein said receiving squeegee is xed to said slider. 3. Title: Well Treatment Compositions and Methods of Utilizing Nano Particles Dependent Claims: The method of claim 1, wherein the introducing the cement composition into the subterranean formation comprises introducing the cement composition into a space between a pipe string and the subterranean formation and allowing the cement composition to set in the space. The method of claim 2, comprising running the pipe string into a well bore penetrating the subterranean formation. The method of claim 1, wherein the method comprises allowing the cement composition to set in the subterranean formation.

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58 Unity of Invention

CHAPTER 6. PATENT DRAFTING

There is what is known as unity of invention in claims. As the phrase implies, it means that the claims should be a unit of invention. What this means is that one patent document should contain only one inventive subject matter. The relevant legal provision in Sri Lanka in this regard according to Sri Lanka National Intellectual Property Act is as follows: 74. An application shall relate to one invention only or to a group of inventions which are so linked to each other so as to form a single general inventive concept. As stated in the legal provision, unity of invention does not mean that the claims should be focused on one product or a process. Many products and processes could be joined if they form one well related composite invention. For an example, in a drug manufacturing process, the main product as well as the by products could be claimed if they satisfy patentability requirements. Similarly, the main process as well as the sub processes of the manufacturing process could be claimed in the same application if they are satisfying the patentability requirements. Scope of Claims As mentioned above, claims provide legal protection to inventors and are, therefore, of importance. Claims should be the point to start drafting the patent document because the rest of the documentation depends on the claims. The abstract is similar to a summarization of claims, and the description is an expansion of claims with justication including the background and the prior art. Just as people try to expand the boundaries of physical lands duly or unduly, inventors try to get protection as broad as possible,

6.1. STRUCTURE OF A PATENT

59

and in the examination process, examiners make it justiably narrow. Even after the patent is granted, if someone could nd that the inventor has encroached into what is already known by making his/her claims too broad, he/she could try to invalidate the claim to the extent of encroachment. If the claims are too narrow, the inventor might nd that by a minor change in his/ her product or patent, which has not been covered by his/her claims, someone could legally manufacture a similar product or use a similar process. Therefore, formulating claims is a special task for which it may be necessary to obtain professional help.

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CHAPTER 6. PATENT DRAFTING

Chapter 7

Application for a Patent

After the patent is drafted, the next step is to lodge the document with a petition (a standard form containing biographical data of the applicant and some facts regarding the invention) in the national patent oce of the country. An exception is that when an applicant makes a PCT application where the applicant makes the application in a depository known as the PCT (Patent Cooperation Treaty); PCT will be explained later. Before making the application, care should be taken not to make any public disclosures because if someone can prove that the invention was known to the public before the application date, the patent rights can be invalidated. Exception is available in some countries where an applicant himself/herself may reveal the invention but still can make the application within a certain period. For example, in United States, the applicant can enjoy a grace period of one year after the disclosure before making the application. However, it is advisable that no disclosure is made because it might aect patent rights in other countries where such exceptions are not allowed. It may be, however, necessary to discuss the invention with other stakeholders like researchers and marketing personnel or potential investors. Such discussions should be done after signing a 61

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CHAPTER 7. APPLICATION FOR A PATENT

Non-Disclosure Agreement (NDA) (also known as Condentiality Agreement) binding the other party to keeping the information condential. A breach of the agreement may be compensated, but the amount of compensation may not be sucient to cover the cost of the damages caused. In United States, there was a system earlier where the rst to invent was given priority over the rst to le. Due to practical diculties in proving the rst to invent, this has been changed in a recent change in the law.

7.1

Making a Local Application

As mentioned above, a national or a PCT application has to be made to get a patent grant. The legal requirement of making a local application is described in legislation. According to Sri Lanka legislation, it is as follows: 71. (1) (a) An application for the grant of a patent shall be made to the Director General in the prescribed form and shall contain (i) a request for the grant of the patent ; (ii) a description of the patent ; (iii) a claim or claims ; (iv) a drawing or drawings, where required ; (v) an abstract ; (vi) date and number of any application for a patent led by the applicant abroad (hereinafter referred to as the foreign application), if any, relating to the same, or essentially the same invention as that claimed in the present application ; (vii) a declaration that the applicant or his predecessor in title has not obtained a patent abroad before the

7.1. MAKING A LOCAL APPLICATION application was led relating to the same or essentially the same invention as that claimed in the application.

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When the application is lodged in the national patent oce, a ling date is assigned and this proves that the invention was led on that particular date, and inventors may reveal the invention thereafter without any risk. The inventor could also use the phrase Patent Pending even though the patent right has not yet been granted, in order to warn others that copying may result in patent infringement. The ling date could be transferred to other applications that may be led in other countries and therefore it is also known as the priority date. The concept of priority date will be discussed in detail later. After the application is lodged, processing will begin and they will be discussed in the next chapter. How this initial ling date will be carried forward to other countries will be discussed in the next section. Revisions of Applications Patent applications may be revised if new subject matter is not included. Following is the legal provision in Sri Lanka in this regard. 75. (1) An applicant may amend the application, provided that the amendment shall not exceed the limits of the disclosure in the initial application. (2) (a) An applicant may divide the application into two or more applications (hereinafter referred to as divisional applications) provided that each divisional application shall not exceed the limits of disclosure in the initial application. (b) Each divisional application shall be entitled to the ling, or where applicable, priority, from date of the initial application.

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CHAPTER 7. APPLICATION FOR A PATENT

7.2

Making a Foreign Application

As mentioned above, patent enforcement is local which means that once a patent is granted, its application or enforceability is restricted to only that jurisdiction. (Note here that to get a patent in any jurisdiction, the invention should be new to the world). Does this mean that one can get a patent only in one country? No, he/she can get patents in other countries too. But then, when an application is made in a dierent country, will he/she get a patent because it has been revealed in another country (where the patent was granted)? One might think that if simultaneous applications are made in dierent countries, this problem is solved. It is theoretically true but is not practicable. The inventor can get a patent in dierent countries if he/she transfers the original ling date (in the country where it was granted) to the new country where he/she is seeking patent rights. So there has to be some internationally accepted mechanism to transfer the ling date of one country to another. When the ling date is transfered to another country in this fashion, the original ling date is known as the priority date because the applicant is claiming a priority based on an earlier application. The Paris convention is an accepted international treaty. Almost all the countries in the world are signatories to this convention, and all signatories can use the convention in patent application matters. According to the convention, an inventor can make a foreign application within one year of the original application and still claim the original priority (as a priority date). Accordingly, if someone les an application on January 1, he can make an application till December 31, and still claim that his application be considered to have been led on January 1. Another international treaty called PCT (Patent Cooperation Treaty) administered by WIPO World Intellectual Property Organization). This treaty is augments the Paris convention and makes the system more exible, and almost all the countries in the world are signatories to it. According to this convention, if one makes

7.2. MAKING A FOREIGN APPLICATION

65

a PCT application with WIPO, he/she can make local application in any signatory countries within 30 months (31 months in some countries) of the original application. If the applications are not made within these time periods, the inventor loses the right to make applications in other countries. It is also possible to get the combined eects of the Paris convention and the PCT. Accordingly, one can make a local application in one country, and make a PCT application within one year (according to the Paris Convention) and then make local applications (according to PCT) within 30 months of the original application. As an example, if one make a original local application in June 2010, and makes a PCT in December 2010, he can make local application in PCT signatory countries till December 2012. As a real life example, lets look at the data in the below snapshot taken from CIPO database.

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CHAPTER 7. APPLICATION FOR A PATENT

This application was originally made in United States on 200208-28. Subsequently, a PCT application was made on 2003-06-06 which is within a year of the original United States application. Finally, it has entered into Canada on 2005-02-16, which is within 30 months of the original Unites States application. The legislature of a country makes provisions for the Paris Convention and the PCT. Following is the relevant section in Sri Lanka Intellectual Property Act. 76. (1) An application may contain a declaration claiming the priority, pursuant to the Convention, of one or more earlier national, regional or international applications led by the applicant or his predecessor in title in or for any State party to the said Convention. According to section 28 of Canadian Patent Act, An applicant for a patent in Canada may request priority in respect of the application on the basis of one or more previously regularly led applications. Once the application is made, the applicant may wish to revise the document subject to the condition that no new subject matter is introduced as mentioned earlier. After an application is made, in most countries, the oce will keep the documents condential until 18 months and publish them thereafter for public inspection. An applicant may however request early publication.

Chapter 8

Patent Examination and Granting Process

8.1 Revision of Applications

On receiving the application, the patent will oce will check the application for consistency. If the application is not in order, the oce will request the applicant to do the necessary revisions within particular a time period. The relevant legal provisions according to Sri Lanka National Intellectual Property Act are follows: 78. (1) The Director-General shall examine the application and shall satisfy himself as to the fulllment of the following : (a) where applicable, the requirements of paragraph (b)of subsection (1) of section 71 ; (b) the requirements of paragraph (a) of subsection (2) of section 71 ; 67

68CHAPTER 8. PATENT EXAMINATION AND GRANTING PROCESS (c) where applicable, the requirements of paragraph (b) of subsection (2) of section 71 ; (Note: Section 71 describes the requirements for completeness of the application) (d) the description, the claims and where applicable, the drawings, which comply with the prescribed requirements ; (e) the essential elements of the invention claimed in the application have not been unlawfully derived from a patent already granted in Sri Lanka ; (f) the application contains an abstract ; (g) the search report referred to in section 73 has been submitted. 78.(2) Where the Director-General nds that the conditions referred to in subsection (1) are not fulled he shall request the applicant to le the required correction within a period of three months from the date of such request ; where the applicant fails to so comply the application shall, subject to the provisions of subsection (3), be rejected. 78.(3) Where no correction is provided in response to a request under subsection (2), the Director-General shall, on payment of the prescribed fee within the prescribed period, include the corrections into the application and if the prescribed fee is not paid within the prescribed period the application shall be rejected. 78.(4) Where the Director-General nds that the essential elements of an invention claimed in an application are unlawfully derived from a patent already granted in Sri Lanka, such application shall be rejected. 78.(5) The Director-General shall notify the applicant of any decision under subsections (2), (3) and (4) and

8.2. EXAMINATION OF APPLICATIONS any decision taken to reject the application shall be in writing stating the reasons for such rejection.

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8.2

Examination of Applications

Within 4 years of the original application date (in most countries), the inventor has to request the examination of the patent document. If no request is made, it will be abandoned, and nobody in the world can make an application for the same invention thereafter. When the examination is requested, the examiners will test the revelation against the patentability requirements industrial applicability, novelty and non-obviousness and if they decide that the revelation is inventive, the patent is granted. The following are the relevant legal provisions in Sri Lanka. 79. (1) The grant of a patent shall not be refused and a patent shall not be invalidated on the ground that the commercial exploitation of the claimed invention is prohibited by any law except where the prevention of the commercial exploitation of the claimed invention is necessary in order to protect public order, and morality including the protection of human, animal or plant life or health or for the avoidance of serious prejudice to the environment. 79.(2) Where the applicant fullls the requirements of subsection (1) of section 78 to the satisfaction of the Director- General, he shall grant the patent, and shall forthwith (a) record the particulars relating to patent in the Register of patents required to be maintained in accordance with the provisions of section 80 ; 79.(b) issue a certicate to the applicant in respect of the grant of a patent together with a copy of the patent documents including the search report :

70CHAPTER 8. PATENT EXAMINATION AND GRANTING PROCESS Consequently, the inventor will enjoy patent rights for his invention for 20 years form the date of application. Following is the legal provision in Sri Lanka in this regard. 83. (1) Subject and without prejudice to the other provisions of this Part a patent shall expire twenty years after the ling date of application for its registration.

8.3

Patent Maintenance Fees

Upon receiving the patent, the inventor is required to pay an annual maintenance fee to keep the patent in force. If the payment is not made, the patent will become invalid. In certain countries, even before the patent is granted, a maintenance fee has to be paid in order to keep the application valid. If the patent becomes invalid for this reason, it has already become public knowledge and nobody anywhere in the world could make a patent claim for the relevant subject matter. The legal provisions with regard to maintenance fees are as follows: 83. (2) Where a patentee intends at the expiration of the second year from the date of grant of the patent to keep the same in force he shall, twelve months prior to the date of expiration of the second and each succeeding year during the term of the patent, pay the prescribed annual fee:

8.4

Appeals Against Examiners Decisions

If the patent examiner is not satised with the inventiveness of the subject matter or there are other defects in the document, they will send what is known as Oce Actions to the applicant. The applicant has to respond to them within a specied time limit. Upon

8.4. APPEALS AGAINST EXAMINERS DECISIONS

71

receiving the responses, the examiners will redo the examination and grant the patent if satised. It is also possible for examiners to reject the patent for defects in the application or non-fulllment of patentability requirements. The defects may be rectied. But if the subject matter does not fulll the patentability requirements, nothing can be done and the examiners will reject the patent application. In some countries, it is possible to appeal against the decisions of the examiners to a patent appeal board in the patent oce itself, and further appeals could be made in the courts of law.

72CHAPTER 8. PATENT EXAMINATION AND GRANTING PROCESS

Chapter 9

Post Patent Issues

When a patent is issued, the inventor can prevent others in the countries where the invention is patented from using the invention without his/her permission. However, people in countries where the invention is not patented can use the invention without the permission from the inventor (the owner of the patent). The inventor can also prevent the import of the patented invention manufactured in a country where it is not patented to countries where the invention is patented. The patent right, therefore, is a negative right that prevents others from using the invention. But nobody will take any action to ensure that the inventor makes an economic gain. The inventor himself has to do something in order to realize an economic gain. Using the patent for such economic gains is known as commercialization. A discussion on commercialization follows. Like conventional property, there could be legal disputes as to the authenticity and the trespass/ unlawful gaining of property in case of intellectual properties. In the case of intellectual property, these issues are known as validity and infringement. Validity and infringement are discussed later. 73

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CHAPTER 9. POST PATENT ISSUES

9.1

Commercialization

Three ways in which an inventor can commercialize a patent are: 1. Exploitation 2. Assignment 3. Licensing These provisions are available in Section 84 of Sri Lanka Intellectual Property Act. 84. (1) Subject and without prejudice to the other provisions of this Part, the owner of a patent shall have the following exclusive rights in relation to a patented invention: (a) to exploit the patented invention ; (b) to assign or transmit the patent ; (c) to conclude license contracts.

9.1.1

Exploitation

Exploitation means that the inventor manufactures the invention by himself or collaboratively under a collaborative agreement and the provisions are given in Section 84(3). 84.(3) For the purposes of this Part exploitation of a patented invention means any of the following acts in relation to a patent : (a) when the patent has been granted in respect of a product: (i) making, importing, oering for sale, selling, exporting or using the product ; (ii) stocking such product for the purpose of oering for sale, selling, exporting or using ;

9.1. COMMERCIALIZATION (b) when the patent has been granted in respect of a process: (i) using of the process ; (ii) doing any of the acts referred to in paragraph (a), in respect of a product obtained directly by means of the process ; (iii) preventing any person using that process or using, selling or importing any product obtained directly by means of that process unless such person is authorized to do so.

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The risk factor is high in exploitation because marketing and running the business lies in the hands of the inventor, who probably has very little business experience.

9.1.2

Assignment

Assignment of patent rights means that the inventor assigns his/her right to someone else for a consideration; consideration in legal terms means something one gets in return for another. The legal provisions in Sri Lanka according to Sri Lanka National Intellectual Property Act are as follows: 88. (1) A patent application or patent may be assigned or transmitted and such assignment or transmission shall be in writing signed by or on behalf of the contracting parties. The person granting the assignment is called the assignor and the person receiving the assignment is called the assignee. Assignment can be forced by an employment agreement or can be voluntary. Voluntary assignment is where the inventor by his/her own wish sells the patent right to someone for a lump sum consideration. Assignment is forced when the inventor is an employee of an organization, and the invention is made as a result of employment, when patent rights usually belong to the employer. Such provisions are included in modern day employment contracts. However, sometimes as an incentive to employees there can be a separate IP

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CHAPTER 9. POST PATENT ISSUES

(Intellectual Property) policy between the employer and the employee where economic gains are shared by them in some agreed proportion. There is no risk factor in assignment but the inventor will not get anything more than the agreed consideration even if the manufactured product may become a huge revenue earner.

9.1.3

Licensing

Licensing gives limited rights to another person just like a rent or a lease of tangible properties. This too is through an agreement and the person giving the license agreement is called the licensor and the person receiving the license is called the licensee. When a license is given to a licensee, he/she can do some limited work in a limited area of the patent during a limited time; these conditions form vital parts of the license agreement. For example, a patent holder can give a license to someone to manufacture in China one hundred thousand number of components during a xed period. Following are the legal provisions in Sri Lanka in regard to licensing. 90. For the purposes of this Part license contract means any contract by which the owner of a patent (hereinafter referred to as the licensor) grants to another person or enterprise (hereinafter referred to as the the licensee) a license to do all or any of the acts referred to in paragraph (a) of subsection (1) and subsection (3) of section 84. 91. (1) A license contract shall be in writing signed by or on behalf of the contracting parties. (2) Upon a request in writing signed by or on behalf of the contracting parties, the Director-General shall, on payment of the prescribed fee, record in the register such particulars relating to the contract as the parties thereto might wish

9.1. COMMERCIALIZATION to have so recorded : Provided that the parties shall not be required to disclose or have recorded any other particulars relating to the said contract. 92. In the absence of any provision to the contrary in the license contract, the licensee shall (a) be entitled to do all or any of the acts referred to in paragraph (a) of subsection (1) and subsection (3) of section 84 within the territory of Sri Lanka, without limitation as to time and through application of the patented invention ; (b) not be entitled to assign or transmit his rights under the license contract or grant sub-licences to third parties.

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Licensing lies between exploitation and assignment in terms of both risk factor and prot factor. There are three kinds of licensing agreements, namely exclusive, sole and non-exclusive. Exclusive licensing means licensing to some entity with exclusive rights in certain aspects. For example, it can be a geographically exclusive, where the license is given to manufacture in one particular country. The inventor has the freedom to give licenses for other countries but not to anybody else in that country. When a sole license is granted, the licensor as well as the licensee has rights to the patent. Non-exclusive licensing means licensing is done without any restrictions mentioned above on the usage of the patent, and the inventor could grant as many licenses as he/she wishes. Depending on the manufacturing cost, marketability of the product and other circumstances, one could decide on the best licensing model. There is what is known as a compulsory license where the patent holder is forced by the government to issue licenses. This situation arises when the inventor wants to make an undue monopoly of his invention. If the government (or any other interested party) feels that the patented invention is of great social benet, government (or the interested party) through the patent oce could ask

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CHAPTER 9. POST PATENT ISSUES

the inventor to license his invention so that others could make the product, and as a consequence, society will benet more than if it were only done by the inventor himself/herself. For example, if the invention is a cure for cancer, inventors would not want to license the product because of the huge potential prots, but due to benet society gets, governments make compulsory licenses so that inventor ceases to have monopoly and the drug could be manufactured in competition and be freely available.

9.1.4

Licensing Fees and Royalties

Licensing agreements usually involve the payment of a licensing fee which could be a lump sum or in installments or both. If the licensee requires technical assistance from the licensor he/ she may prefer to pay the sum in installments when certain milestones in the transfer of technology process are achieved. This would ensure that the licensee receives the support of the inventor during the commercialization process. Most licensing agreements also involve payment of royalties by the licensee to the licensor. The payment typically 0.5-5 per cent of the total sales of the licensed product for a dened period, usually 5-10 years, has to be paid regularly (monthly, quarterly, semi annually, annually) to the licensor. Royalties while providing the licensor with a regular income from his/ her invention, often reduces the lump sum payment which would be helpful to an industrialist embarking on a new venture. Royalties also help to ensure that the licensee or the inventor has a stake in the success of his/ her product. Although royalty payment in industrialized countries can be properly accounted for and paid, there is often understating of sales by industrialists in developing countries and this may aect royalty payments.

9.2. POTENTIAL LEGAL IMPLICATIONS

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9.2

Potential Legal Implications

When a patent is granted, there is no guarantee that the government will actively protect the rights of the inventor. If any infringement of patent rights occur, it is the responsibility of the inventor to take remedial action. If the inventor does not take remedial action, the infringer will enjoy the patent without a penalty. Infringement of patent rights means the copying of the invention without permission. It is basically stealing, in case of tangible property. In case of a tangible property theft, the government will take criminal action against the stealer because stealing is considered a wrong doing against the whole society. In case of stealing intellectual property, it leads to a civil dispute between two parties, but it can also be a criminal act. Infringement can usually be defended by invalidating the patent. Invalidating a patent means that the validity of the patent is disputed due to time lapses (expiry of the patent) or by arguing that the invention is not patentable in terms of patentable requirements of novelty and non- obviousness. When a patent is invalidated by courts after looking at the circumstances of the case, the invention becomes public knowledge and anybody can use it without the permission of the inventor. In the case study Beloit Canada vs. Valmet Oy, the case was regarding infringement and validity. One party alleged the other had infringed on their patent right by invalidating the patent the other party had obtained. Generally, infringement and validity go hand in hand because when someone alleges infringement, the best defense one can adopt is that the allegers claim is invalid or that his/her method is also inventive.

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Chapter 10

A Sample Patent
Following is a patent extracted from United States Patent and Trademark Oce (USPTO) database.

10.1
10.1.1 10.1.2

US Patent 7,161,651
Title: Method of resizing a liquid crystal display Bibliographical Data

Inventor:Smovzh; Anatoliy (Oakville, Canada) Assignee:Luxell Technologies Inc. (Mississauga, Canada)

10.1.3

Abstract

A method of resizing a liquid crystal display connected to at least one ex board, wherein the liquid crystal display has multiple layers including a liquid crystal layer contained between a pair of glass substrates and a pair of polarizers on opposite sides of respective 81

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CHAPTER 10. A SAMPLE PATENT

ones of the glass substrates. The method comprises applying pressure sensitive tape for protecting the polarizers, dicing through the layers, including the polarizers, using a dicing wheel with predetermined diamond particle size to a specied depth and width of groove, cutting through the ex board using a UV laser, breaking o unwanted portions of the liquid crystal display and ex board dened by the dicing and cutting operations, and sealing remaining portions of the liquid crystal display.

10.1.4

Claims

What is claimed is: 1. A method of resizing a liquid crystal display connected to at least one ex board, said liquid crystal display having a liquid crystal layer between a pair of glass substrates and a pair of polarizers on opposites sides of respective ones of said glass substrates, the method comprising: applying pressure sensitive tape for protecting said polarizers; dicing through said layers, including said polarizers, to a specied depth and width of groove using a dicing wheel of predetermined diamond particle size; cutting through said ex board; breaking o unwanted portions of said liquid crystal display and ex board dened by said dicing and cutting; and sealing remaining portions of said liquid crystal display. 2. The method of claim 1, wherein said predetermined diamond particle size is in the range of 40 70 microns. 3. The method of claim 1, wherein said specied width is approximately 10 mils. 4. The method of claim 1, wherein said specied depth is approximately 30 40 5. The method of claim 4, wherein said breaking o unwanted portions of said liquid crystal display and ex board comprises applying a breaking force to said one of said pair of glass substrates. 6. The method of claim 1, wherein said sealing comprises applying a UV curable adhesive to said remaining portions of said liquid crystal display.

10.1. US PATENT 7,161,651

83

10.1.5

Description

BACKGROUND OF THE INVENTION 1. Field of the Invention The present invention is directed to liquid crystal displays, and more particularly to a method of resizing a liquid crystal display without rst removing the polarizer. 2. Description of the Related Art Liquid crystal displays (LCDs) are well known in the electronic arts for displaying images and data to a user (e.g. avionics, computer displays, cellular telephones, etc.) A liquid crystal cell is typically provided with two glass substrates having thin transparent ITO (indium tin oxide) layers evaporated on the inner surfaces thereof (referred to herein as the TFT glass and the color lter glass, respectively). Polyimide layers (or any homogenous alignment material such as silane, evaporated silicon monoxide, etc.) are coated on top of the respective ITO layers for aligning the liquid crystal molecules within the cell. Thus, for a left-hand twisted cell, the polyimide layer on the bottom substrate is rubbed along the 0.degree. direction (Cartesian coordinates), while the top polyimide layer is rubbed along the 90.degree. direction (according to the right hand rule in Cartesian coordinates). The glass substrates are bonded together to form a cell using epoxy or thermoplastic material. Next, the cell is lled with liquid crystal by either vacuum lling or by a capillary method. After lling, the cell is sealed and uniform pressure is applied over the cell to improve the uniformity of the cell gap. Bottom and top polarizers are laminated with respective transmission directions perpendicular to the rub directions of the bottom and top polyimide layers. Finally, a reective layer is deposited on the top polarizer. Conventional LCDs are available in standard sizes that, in some cases, do not t the intended application. For example, human factors and space limitations may dictate a smaller than conventional LCD be used for avionics display in the cockpit of an aircraft (military or civilian). Methods are known in the art for resizing LCDs

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to t an intended application. U.S. Pat. No. 6,204,906 (Tannas) discloses a method of changing the physical shape of an electronic display, wherein the display comprises a front plate, a back plate, and a perimeter seal spacing apart the plates, and wherein the image-generating medium is sealed in an area between the plates and within the borders of the perimeter seal. The method comprises cutting the display along desired dimensions, resulting in a target display portion and an excess display portion, thereby breaking the perimeter seal of the display. A seal is applied between the plates along an exposed edge of the target display portion, wherein the seal includes an adhesive having mechanical properties for preserving cell spacing between the front and back plates. WO 99/19765 (Marconi Avionics (Holdings) Limited) sets forth a method of resizing an LCD having a liquid crystal sealed between rst and second parallel transparent plates forming an operative area of the display. In its broadest aspect, the method comprises removing an excess region of the display by cutting through the rst and second plates to isolate the excess region of the rst and second plates and to expose cut edges along the operative areas of the rst and second plates. U.S. Pat. No. 6,509,949 (Lu et al) sets forth a method of resizing a liquid crystal display comprising the removal of any tape automated bonding strips (TABs) and ex circuits corresponding to undesired portions of the LCD. Any circuit boards, or portions thereof, corresponding to the undesired portion of the LCD are then cut and removed. The display panel is cut to remove a portion of the display panel corresponding to the undesired portion of the LCD and, nally, the cut edge of the display panel is sealed. Each of the foregoing prior art LCD resizing methods also specifically includes removal of the polarizer before cutting, which adds to the processing costs and time required to resize the display. Also, the prior art is silent on any preferred approach to ex PCB (printed circuit board) cutting.

10.1. US PATENT 7,161,651

85

SUMMARY OF THE INVENTION It is an aspect of the present invention to provide a method of resizing an LCD that does not require removal of the polarizer before cutting. Another aspect of the invention is to provide ex PCB cutting that minimizes conductor short circuits. The above aspects can be attained by a method that includes dicing through the polarizer and other LCD layers using a dicing wheel with specied diamond particle size, as well as specied depth and width of groove, followed by UV laser ex PCB cutting. These together with other aspects and advantages which will be subsequently apparent, reside in the details of construction and operation as more fully hereinafter described and claimed, reference being had to the accompanying drawings forming a part hereof, wherein like numerals refer to like parts throughout. BRIEF DESCRIPTION OF THE DRAWINGS FIG. 1 is a owchart of a method for resizing an LCD, according to the preferred embodiment. FIG. 2 is scanned electron microscope images of an LCD cut using the method of FIG. 1. FIG. 3 is a scanned electron microscope image of a ex PCB board trimmed according to the preferred embodiment of FIG. 1. DETAILED DESCRIPTION OF THE PREFERRED EMBODIMENTS FIG. 1 is a owchart showing the steps in a preferred embodiment of the LCD resizing process. First, at step 1, an initial functionality test is performed consisting of illuminating the LCD and verifying optical performance. Next, at step 2, a determination is made as to the desired size of the display, based on the intended application. At step 3, pressure sensitive tape is applied to the tops of both polarizers for protection against glass particles generated during dicing. According to an important aspect of the invention, at step 4, a dicing wheel is used to cut through all layers of the LCD, including the polarizers. The result of this cutting operation and consecutive breaking is shown in FIG. 2, discussed in greater detail below. Con-

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trary to the teachings of the prior art, the inventor has discovered that by careful selection of the diamond particle size of the cutting wheel, an appropriate depth and width of the groove are provided which does not damage the polarizers or cause delaminating of the LCD layers, thereby eliminating the prior art requirement of rst removing the polarizers. According to a successful implementation, the cutting step 4 was performed using a KandS 7100 dicing saw with a 10 mils thick diamond wheel. It was determined that diamond particles size should be in range 40 70 microns. The use of lower particle size leads to dicing wheel clogging and overheating of the LCD in the vicinity of the cut. Diamond particles greater than 70 microns give rise to an increase of the chip-out region. Depth of cutting depends on glass thickness and mechanical properties. It was determined that in order to achieve mechanical rigidity of the diced LCD panel for secure handling and easy breaking, the depth of dicing should be dierent for the TFT and color lter glass layers of the LCD. This result is achieved under conditions that one of the glasses is diced to 30 40 Next, at step 5, UV laser cutting is performed for trimming the PCB ex board. Normally, ex board is made of PVA materials bearing densely populated narrow (.about.10 mils) copper conductive lines. A UV laser is used in the preferred embodiment to avoid short circuits due to copper spreading during mechanical trimming (i.e. machining of PVA requires UV irradiation). At step 6, the sections of unwanted LCD and ex board are broken and separated. In order to facilitate panel separation, it is preferable that the breaking force be applied to the glass having the shallower groove. The remaining LCD is sealed with UV curable adhesive at step 7. An additional UV curable sealant may also be applied for protection against moisture. A nal functionality test is performed at step 8, similar to the initial test discussed above in connect ion with step 1. The results of dicing and breaking of the LCD (steps 4 and 6)

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87

are shown in FIG. 2 which depicts a vertical cross-section through the cut LCD, from which there will be noted an absence of polarizer and the other lm residues on the diced areas of both glasses. Some polarizer residues are evident sticking to the polarizer. However, the presence of these residues does not aect LCD performance after resizing FIG. 3 is an image of a ex PCB board trimmed using a Spectraphysic.RTM. SSDP laser at 5 W power and 246 nm wavelength, according to the preferred embodiment. Resistivity between two adjacent conducting lines after laser trimming was measured in excess of 20 Megaohms. The many features and advantages of the invention are apparent from the detailed specication and, thus, it is intended by the appended claims to cover all such features and advantages of the invention that fall within the true spirit and scope of the invention. Further, since numerous modications and changes will readily occur to those skilled in the art, it is not desired to limit the invention to the exact construction and operation illustrated and described, and accordingly all suitable modications and equivalents may be resorted to, falling within the scope of the invention.

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CHAPTER 10. A SAMPLE PATENT