Detailed Notes on Introduction to Patent: Definition, Concepts, and Patentability

Introduction to IP Identification Tool

 Week 4 of the course "Roadmap for Patent Creation."

 By this point, concepts such as patents, patent reading, terminologies, and patent
structure have been covered.

 Intellectual Property (IP) identification is a significant challenge.

 Example: Genentech case – The inventor did not recognize the IP potential in his
work, leading to its publication before patent filing.

 To prevent such cases, an IP Identification Tool is introduced.

 This tool is an algorithm that helps in identifying potential IP and in better research
planning.

Steps in IP Identification Process

1. Idea Generation

 Ideas constantly emerge in a researcher’s mind.

 Not every idea is pursued as a project.

 Selection of an idea from the pool is the first task.

2. Prior Art Search

 Essential before proceeding with research.

 Equivalent to an in-depth literature review.

 Difference from traditional literature review:

o Traditional review includes research papers, magazines, and newspapers.

o Prior art search includes patents alongside the above sources.

 Advantages:

o Provides insights into the current technological landscape.

o Prevents redundancy by identifying prior work.

o Helps refine research topics and objectives.

3. Research Activity

 Once gaps are identified, research progresses.

 Includes experimentation and methodology implementation.

4. Invention Disclosure

 Important step in the research process.

 Timeline review is necessary (e.g., every six months) to check if something is

patentable.

 Key rule: No publication without patent filing (First-to-File principle).

 General timeline for invention disclosure:

o PhD research: Typically occurs in the 3rd or 4th year.

o MSME, student projects, corporate R&D: Can occur within 1 year.

5. Patentability Search

 Determines if an invention meets the criteria for patentability.

 Key factors checked:

o Novelty: Is it new?

o Inventive Step: Does it involve a non-obvious advancement?

o Industrial Applicability: Can it be applied in an industry?

 Public patent databases can be used for checking novelty.

 Upcoming course modules cover how to use public patent databases.

6. Patent Filing Procedure

 If the organization has an IP management system, the process is simpler.

 If no such system exists, seek a patent attorney’s assistance.

 Concerns about invention theft:

o Use a Non-Disclosure Agreement (NDA) before disclosing the invention.

o Consider filing a provisional patent to establish priority and secure rights.

Provisional vs. Complete Patent Specification

  Provisional Specification:

o Broad, initial write-up of research.

o Easier to draft compared to complete specification.

o Filing this secures priority and allows further development.

 Complete Specification:

o Detailed description of the invention.

o Requires expertise; recommended to seek a patent attorney’s help.

7. Freedom to Operate (FTO) Search

 Ensures that commercialization does not infringe existing patents.

 Conducted before launching a product into the market.

 Corporations frequently perform FTO searches to avoid infringement risks.

8. Invention Commercialization

 After confirming freedom to operate, commercialization begins.

 Commercialization strategies include:

o Technology Transfer:

 Joint ventures, collaborations, licensing (exclusive or non-exclusive),

selling, etc.

o Patent Licensing:

 Allows companies to use patented technology legally.

Best Practices for Research and IP Management

Maintaining a Lab Notebook

 Essential for tracking research progress.

 Serves as evidence of invention ownership in case of disputes.

 Should document:

o Research progress (daily updates).

 o Important findings (positive and negative results).

o Any ideas that emerge.

Technology and Assignee Mapping

 Technology Mapping: Identifying gaps in existing technology to develop new ideas.

 Assignee Mapping:

o Identifies key players in a technology domain.

o Useful for collaboration, licensing, or joint ventures.

Practical Implementation of the IP Identification Tool

 Step 1: Write down ideas.

 Step 2: Check feasibility.

 Step 3: Conduct a prior art search.

 Step 4: Plan research with patentability in mind.

 Step 5: File for a provisional or complete patent.

 Step 6: Conduct an FTO search before commercialization.

Example:

 If working in mechanical or chemical engineering, start with ideas.

 Define timelines for invention disclosure.

 Conduct a patentability search.

 Refine research topics based on search results.

 File for provisional or complete patent.

 Perform FTO search before commercialization.

Conclusion

 IP Identification Tool helps in structured patent identification and research

planning.

 Encourages researchers to think about patent potential early in the research cycle.
  Applying this tool can increase patent filings and commercialization success.

Next Session: Introduction to the Patentability Tool.

Notes on Patentability Tool

Step I: Check if the Invention is a Discovery

 Discoveries cannot be patented (as per the Patent Act).

 Discovery: Finding something that already exists in nature (e.g., microorganisms,

planets, elements).

 Exception: Genetically modified microorganisms can be patented if human

intervention is involved.

Step II: Maintaining Confidentiality

 An invention should not be publicly disclosed before filing a patent.

 Confidentiality questions to consider:

o Is the invention known to the public?

o Has it been discussed in meetings, conferences, exhibitions, or research

papers?

o Has it been presented in contests or lectures?

 Why confidentiality matters?

o If an invention enters the public domain, it loses its patentability.

o The first-to-file rule applies, meaning the first person to apply gets the patent.

o Solution: File at least a provisional patent before making it public.

Step III: Patentability Criteria

1. Industrial Application

o The invention must be useful for industry.

o Identify the core industry sector (e.g., food, automobile, pharma, chemical).

2. Non-Obviousness

o The invention should have an inventive step (not obvious to a skilled person).

o It must show economic importance or technical advancement.

3. Stability

o The invention should produce consistent results every time.

 o Example: If a microorganism produces a hormone/enzyme, it must work the
same way every time.

4. Novelty

o The invention should be new (not part of prior art or traditional knowledge).

o Conduct patent & literature search in:

 Free databases: Google Patents, IPO, USPTO, Espacenet.

 Paid databases: Derwent Innovation, Questel-Orbit.

5. Efficiency

o The invention must substantially improve efficiency.

o Example: A process that increases output by 60% compared to prior art.

Step IV: Compliance with the Indian Patent Act

 Section 3: Lists non-patentable inventions.

 Section 4: Covers secrecy directions.

By following these steps, inventors can assess whether their invention is eligible for a
patent.
Notes on IP Audit Framework

What is IP Audit?

 A systematic review of all Intellectual Property (IP) and related agreements owned or
acquired by individuals, organizations, or institutions.

 Helps in assessing risks and implementing best practices in IP management.

How to Conduct an IP Audit?

 Can be applied to research projects, organizations, academic institutions,

MSMEs, or individuals.

 Helps in mapping existing IP assets, identifying gaps, and planning future IP

activities.

Categories in the IP Audit Framework

1. Copyright

 Automatically granted upon creation (no registration needed).

 Examples of copyright assets in an academic institute:

o Conference papers (national/international)

o Research publications

o Books or book chapters

o Graphic designs, posters, monograms

o Technical bulletins, manuals, field guides

o Educational videos

o Databases (student, industry, product)

o Photographs (technical/nature-specific)

o Musical works and sound recordings

o Films (educational or event-related)

o Sculptures, adapted works, architectural designs

 Individuals can also audit their own copyright ownership.

2. Patents

 Key patent data to record:

 o Total number of patents

o Number of PCT, USA, EPO, and Indian applications

o Country-wise patent distribution

o Product vs. Process patents

o Expired and invalidated patents

o Active, licensed, commercialized, and sold patents

o Potential patents for commercialization

o Collaboration-based patents

o Granted patents and their filing dates

 Additional considerations:

o Patent expiry

o Patent invalidation

o Patent technology market size

o Active vs. inactive patents

3. Other Intellectual Property Rights (IPR)

 Trademarks: Academic institutions may create independent brands/products

requiring trademarks.

 Geographical Indications (GI): Possible if the institution operates in a specific

region with a unique product.

 Industrial Designs: Novel designs with industrial applications (e.g., mechanical

products, game designs).

4. Agreements & Trade Secrets

 Important IP-related agreements to track:

o Material Transfer Agreements (MTA)

o Licensing contracts

o Trade secret agreements

o Franchise contracts

o Non-Disclosure Agreements (NDA)

 o Work-for-hire contracts

o Technology transfer contracts

 Trade Secrets & Know-How: Confidential information with restricted access that
needs secure handling.

5. Human & Relational Capital

 Human Capital: Track personnel involved in IP activities for resource management.

 Relational Capital: Includes data on vendors, funding sources, collaborations, and

alumni networks.

6. IP Valuation

 Revenue & Cost Tracking:

o Expected vs. actual revenue from IP

o Revenue from licensing, selling patents, or in-house application

o Cost of patent maintenance and filing

How to Use the IP Audit Framework?

1. List existing IP assets.

2. Identify gaps and opportunities for new IP.

3. Plan activities for the next 6-12 months.

4. Periodically update the audit to improve the IP portfolio.

By following this IP Audit Framework, organizations and individuals can better manage,
protect, and commercialize their intellectual property.
Public Patent Databases – Notes

Introduction

 There are two types of patent databases:

1. Public (Free) Patent Databases – Available for free access.

2. Paid Patent Databases – Require a subscription fee.

 This module focuses on free patent databases that provide valuable patent-related
information.

Understanding Databases

 A database is a structured collection of information.

 Patent databases contain detailed patent-related data, including:

o Filing date, priority date, publication date, grant date

o Inventor details, assignee details

o Patent classification (IPC, CPC), patent status

 Patent databases are useful for patent analytics, commercialization, and research.

Major Free Patent Databases

1. India: IP India (www.ipindia.nic.in)

 Hosted by the Controller General of Patents, Designs, and Trademarks

(CGPDTM).

 Provides access to patents, industrial designs, trademarks, and GI.

 Main sections:

o Comprehensive E-Filing

o Public Search

o Patent Register

o Application Status

 Search options:

o By title, abstract, application number, applicant name, publication type

(granted or published patents).

2. Europe: EPO - Espacenet (www.epo.org)

  Hosted by the European Patent Office (EPO).

 Provides access to worldwide patent information.

 Search methods:

o Smart Search

o Advanced Search

o Classification Search (CPC)

3. USA: USPTO (www.uspto.gov)

 Hosted by the United States Patent and Trademark Office (USPTO).

 Patent search tools:

o USPTO Patent Full-Text and Image Database (PatFT)

o USPTO Patent Application Full-Text and Image Database (AppFT)

o Global Dossier, PAIR, Public Search Facility, CCD

o Advanced search options available

4. Japan: JPO (www.jpo.go.jp)

 Hosted by the Japan Patent Office (JPO).

 Provides multiple search options:

o Number search

o Classification search

o Text search

5. Canada: CIPO (www.ic.gc.ca/eic/site/cipointernet)

 Hosted by the Canadian Intellectual Property Office (CIPO).

 Patent search options:

o Basic Search

o Boolean Search

o Advanced Search

6. WIPO: Patentscope (www.wipo.int/patentscope)

 Hosted by the World Intellectual Property Organization (WIPO).

  Provides international patent search, including PCT applications.

7. Google Patents (patents.google.com)

 Google’s dedicated patent search engine.

 Allows advanced patent searches across multiple jurisdictions.

Key Takeaways

 Free patent databases provide valuable insights into patents globally.

 They help in patent analysis, prior art search, and commercialization.

 Periodic exploration of these databases can enhance research and innovation

efforts.
Q and A Video

1. Intellectual Property (IP) & Intellectual Property Rights (IPR)

 IP: Creations of the mind or intellect.

 IPR: Legal rights granted by the sovereign state to protect creativity.

2. Intangible Property vs. Industrial Property

 Intangible Property includes:

o Intellectual Property (IP) (Industrial Property & Copyrights).

o Intellectual Capital (knowledge, skills, and goodwill).

 Industrial Property is related to business activities and includes patents,

trademarks, industrial designs, and geographical indications.

3. Examples of IP in a Product (Washing Machine)

 Industrial Design: External appearance.

 Trademark: Brand identity (e.g., Whirlpool, LG).

 Copyright: Instruction manual and software.

4. Patent Ownership (Employer vs. Employee)

 If an employee develops a product using an organization’s resources, the

organization’s policy determines ownership.

 Example: If a professor at IIT develops an invention, IIT is the assignee and owns
the IP, while the professor remains the inventor.

 If developed using personal resources, the employee can file for personal
ownership of the patent.

5. Student Patent Rights in Academic Institutes

 Students get inventorship credit, but the institute (e.g., IIT) is the assignee/owner.

 If developed independently (outside academic resources), the student can own the
patent.

6. First-to-File Rule

 A patent must be filed before publication or commercialization.

 If an invention is published before filing, it loses patentability.

7. Invention vs. Innovation

 Invention is a new, novel, and patentable creation.

 Innovation is an incremental improvement in an existing product.

 Incremental innovations can be patented if they meet novelty and economic

benefits criteria.

8. Indian Patent Office Kind Codes

 A – Published applications.

 B – Granted patents.

 P & R – PCT applications.

9. Largest Patent Repository

 Espacenet is one of the largest free public patent databases.

10. Patent Informatics

 Patent Informatics is the analysis of patent data to identify trends, collaboration

opportunities, and career prospects.

11. Cost of Patent Filing & Earnings

 Patent search report: ₹8,000 – ₹15,000

 Provisional patent filing: ₹10,000 – ₹25,000

 Complete specification: ₹30,000 – ₹1,50,000

 FER drafting: ₹7,000 – ₹15,000

 A single patent can generate crores if commercialized successfully.

12. How to Identify If an Idea is Already in the Market?

 Patent analytics help track technology trends and market gaps.

13. Career Opportunities in Patents

 Patent Drafting & Prosecution

 Patent Analytics

 Patent Litigation