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Analyzing

Patentability of
Inventions
By
Dr. Kalyan Chakravarthy Kankanala.
kalyan@brainleague.com
Blog: www.sinapseblog.com
Course Materials: www.onlineipcourses.com

© Brain League IP Service -2007


Patentability
requirements
Patentable subject matter
Industrial Applicability
Novelty
Inventive Step
Specification

© Brain League IP Service -2007


INVENTIONS Kalyan’s Patent
Filter Model
Subject Matter

Usefulness

Novelty

Non-obviousness

Specification

PATENTS
© Brain League IP Service -2007
Patentable Subject
Matter
Product or Process - Section 2(1)(j)

Computer Program
Genetically modified pig
Business method
Massage technique

© Brain League IP Service -2007


Exclusions
Section 3(d)

New form
Efficacy
New property or use
Mere use of known process
New product
New reactant

© Brain League IP Service -2007


Exclusions
Explanation: Salts, Esters, Ethers,
Polymorphs, Metabolites, Pure forms,
Particle size, Isomers, Mixture of isomers,
Complexes, Combinations and other
Derivatives of a known substance
considered same substance
Efficacy
Novartis case

© Brain League IP Service -2007


Exclusions
Plants, Animals and Parts (Section
3(j))
Computer Programs Per Se (Section
3(k)
Medical Methods (Section 3(i))
Traditional Knowledge (Section 3(p))

© Brain League IP Service -2007


Example
Ram, a researcher at IISc, isolates the gene
responsible for milk production in cows.
He modifies the gene and inserts it into a
cow and creates a genetically modified
cow that produces higher quantities of
milk.

Ram approaches you for advise on


patentability. Is his invention patentable
subject matter?

© Brain League IP Service -2007


Example
Vishnu develops a computer program for
playing movies in all formats. His program
is very special because of its small size
and suitability for installation on symbion,
android and other mobile operating
systems.

Is this invention patentable subject matter?

© Brain League IP Service -2007


Example
Manu invents a process of massaging that includes the
following steps:

Use of a combination of kerala, thai and european massage


techniques;
Playing specific music for each technique to enhance
relaxation; and
Application of an ayurvedic paste with gentle massage.

The purpose of the massage is to de-stress and relax.

Is it patentable subject matter?

© Brain League IP Service -2007


Example
Banana Nair inherits traditional knowledge
with respect to ayurvedic formulations for
improving immunity and promoting
healthy living from his ancestors. After
researching on the formulations, he
isolates active ingredients from three of
the formulations and prepares tablets for
enhancing immunity.

Is his invention patentable subject matter?

© Brain League IP Service -2007


Industrial Applicability
Section 2(1)(ac) - Capable of Industrial
Application

Make
Use
Repeat

Industry

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Novelty
Section 2(1)(l) - New Invention

Prior Publication
Public Knowledge
Public Use
On Sale
Public Display
Public Working

Single prior art reference


Inherent anticipation

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Inventive Step
Section 2(1)(ja)

Technical Advance or Economic


Significance and

Not obvious to a person skilled in the


Art.

© Brain League IP Service -2007


Secondary Indicia
Commercial Success
Copying
Praise by expert
Unexpected results
Long felt need

© Brain League IP Service -2007


Example
Invention

Chair with Wheels

Prior Art

Chairs
Tables with wheels

© Brain League IP Service -2007


Specification
Section 10

Written Description
Enablement
Best Mode
Claims

Object: Notice and Dissemination

© Brain League IP Service -2007


Example
Stent coated with Taxol

Prior Art

Stent
Taxol and other Anti-cancer agents

© Brain League IP Service -2007


Patentability Report
Invention Details
Facts
Short opinion
Patentability Analysis
Subject Matter
Industrial Applicability
Novelty
Inventive Step
Opinion on Patentability
Recommendations
Disclaimer

© Brain League IP Service -2007


References

Novelty Cases

Lakhpat Rai and Ors. Vs. Sri Kishan Das and Ors., MANU/UP/0155/1918.

Monsanto Company Vs. Coramandal Indag Products (P) Ltd., MANU/SC/0317/1986

Laxmi Dutt Roop Chand Vs. Nankau and Ors., MANU/UP/0012/1964.

Inventive Step Cases

Bishwanath Prasad Radhey Shyam Vs. Hindustan Metal Industries, AIR 1982 SC 1444.

Bilcare Limited Vs. Amartara Private Limited, MANU/DE/0889/2007.

Dhanpat Seth and Ors. Vs. Nil Kamal Plastic Crates Ltd., AIR 2008 HP 23

Novartis AG Vs. Union of India (UOI), MANU/IC/0034/2009.

© Brain League IP Service -2007


Thank you

Reading Materials
Chapter 2, Indian Patent Law and Practice, Dr.
Kalyan Kankanala, Arun Narasani and Vinita
Radhakrishnan, OUP India Publication.
www.onlineipcourses.com
www.sinapseblog.com

© Brain League IP Service -2007

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