UNIT-3

INTRODUCTION TO PATENT LAW

Syllabus: Rights and Limitations – Rights under Patent Law –Patent Requirements –
Ownership and Transfer – Patent Application Process and Granting of Patent – Patent
Infringement and Litigation – International Patent Law –Double Patenting– Patent
Searching–Patent Cooperation Treaty–New developments in Patent Law.

1Q.INTRODUCTION:

Meaning of Patent: A patent is a legal right to exclude others from practicing the patented
inventionfor alimitedperiodoftime inexchangefor disclosingthedetailsofthe inventionto the
public.

What can be patented?

Any useful, new and non obvious process, machine, article that is made, or chemical
composition, or improvement of any of the above can be patented. Business methods and
softwarecanalso bepatented, but lawsofnatureandabstract ideas cannot be patented. Types of
patents There are three types of patents

1. Design Patent: may be granted to anyone who invents a new, original, and
ornamental design for an article of manufacture .simple way External shape
of the product.
2. Utility Patent: may be granted to anyone who invents or discovers any new
and useful process, machine, article of manufacture ,or composition of matter,
or any new and useful improvement thereof Examples: Manufacturing
Process, Composition matters.
3. Plant Patent: may be granted to anyone who invents or discovers and
asexually reproduces any distinct and new variety of plant. Examples:
poinsettia plant named “Eckaddis”.
4. Reissue patents: Reissued patents with revised claims.

Patent process
1. Filing: Submit a patent application to the patent office.
2. Examination: The patent office reviews the application.
3. Allowance: The patent is granted.
4. Maintenance: Pay fees to keep the patent in force.
 Patent rights and limitations

1. Exclusive rights: Patent owners can exclude others from making, using, or
selling the invention.
2. Territoriality: Patents are country-specific.
3. Time limits: Patents have a limited term.
4. Exceptions: Certain activities, like research and development, may be exempt
from patent infringement.

Why patent law matters

1. Encourages innovation: Patents incentivize inventors to create new

technologies.
2. Protects investments: Patents safeguard investments in research and
development.
3. Promotes competition: Patents encourage companies to innovate and
improve existing technologies.

2Q.RIGHTS UNDER PATENT LAW:

RIGHTS OF OWNER OF A PATENT: The owner of the patent has the right to preclude
any person from exploiting the protected invention by any of the following acts –

When the patent has been granted in respect of a product (Invention Is a Product)

 making, importing, offering for sale, selling and using the product; or

 stocking such product for the purposes of offering it for sale, selling or using the
product;

When the patent has been granted in respect of a process (Invention Is a Process) Using
the process, or doing any of the acts referred to in paragraph (1), in respect of a product
obtained directly by means of the process.
Enforcement of rights:

The owner of a patent has the right–

 To obtain an injunction to restrain the performance or the likelyperformance, byany

person without his authorization, of any of the acts referred to above; and
 To claim damages from any person who, having knowledge of the patent, performed
any of the acts referred to above, without the owner’s authorization.
 To claim compensation from any person who, without his authorization, performed
any of the inventions, claimed in the published application, as if a patent had been
granted for that invention; Provided that the said person, at the time of the
performance of the act.
Under patent law, patent owners have the following rights:

1. Exclusive right to make, use, and sell: The patent owner has the exclusive right to
make, use, and sell the invention.
2. Right to license: The patent owner can license others to use the invention.
3. Right to assign: The patent owner can assign the patent to another party.
4. Right to enforce: The patent owner can enforce the patent against infringers.
5. Right to defend: The patent owner can defend against challenges to the patent's
validity.

Patent owners also have the right to:

1. Receive damages: Receive damages for past infringement.

2. Seek injunctive relief: Seek a court order to stop infringement.
3. Claim attorney's fees: Claim attorney's fees in some cases.

Additionally, patent owners have the right to:

1. Mark products with the patent number: Mark products covered by the patent with
the patent number.
2. Use the patent to negotiate: Use the patent to negotiate with other companies.
3Q.LIMITATIONS OF PATENT RIGHTS:

 The rights under the patent act done for industrial or commercial purposes and in
particular not to acts done for scientific research.
 The rights under the patent do not extend to acts in respect of articles which have
been put on the market in Kenya or in anyother countryor imported into Kenya.
 The limitationonthe rights under apatent above extends to acts inrespect ofarticles
that are imported from a country where the articles were legitimately put on the
market.Therightsunderthepatentdonotextendtotheuseofarticlesonaircraft,
land vehicles or vessels of other countries, which temporarily or accidentally enterthe
airspace, territory, or waters of Kenya. The rights under the patent are limited by the
provisions of the terms of the patent. The rights under the patent are limited bythe
provisions on compulsory licenses’ for reasons of public interest or based on
interdependence of patents and by the provisions on State exploitation of patented
inventions. The rights ofthe patent do not extend variants or mutants of living forms
orreplicablelivingmatterthatisdistinctively differentfrom theoriginalforwhich

patentswereobtainedwheresuchmutantsorvariantsaredeservingofseparate patents.

4Q.PATENT REQUIREMENTS:

Whoever invents or discovers any new and useful process, machine, manufacture, or
composition of matter, or any new and useful improvements thereof, may obtain a patent,
subject to the conditions and requirements of this title.

Unfortunately, the actual test for patentability is a bit more complicated than this
sentence suggests. an invention is patentable only I fit meets the following four requirements,
which are discussed in more detail below:

To be eligible for a patent, an invention must meet the following requirements:

1. Novelty: The invention must be new and not obvious to others in the same field.

2. Non-obviousness: The invention must be significantly different from existing

technology.

3. Utility: The invention must have a practical application or benefit.

 4. Subject matter: The invention must fall within a category of eligible subject matter
(e.g., processes, machines, manufactures, compositions of matter).

5. Enablement: The patent application must provide enough detail for someone skilled
in the field to replicate the invention.

6. Written description: The patent application must include a clear and concise written
description of the invention.

7. Best mode: The patent application must disclose the best mode of carrying out the
invention.

 The invention must be Statutory

 The invention must be New:
o The invention was known to the public before the applicant filed for patent
protection;
o The invention was described in a printed publication before the applicant filed
for patent protection; or
o The invention was described in a published patent application or issued patent
that was filed before the applicant filed for patent protection.
 The invention must be Useful: The patent law specifies that the subject matter must
be "useful." This means that the invention must have a usefulpurpose. In most cases,
the usefulness requirement is easily met in the context of computer and electronic
technologies. The requirement is more important when attempting to patent a
pharmaceutical or chemical compound, as it is necessary to specify a practical or
specific utility for the new compound.
 The invention must be non-obvious/Novel.
Additionally, patent applications must meet formal requirements, such as:

1. Filing fee: Paying the required fee.

2. Background of the invention: Providing context for the invention.

3. Summary of the invention: Briefly summarizing the invention.

4. Detailed description: Providing a detailed description of the invention.

5. Claims: Defining the scope of the invention.

6. Abstract: Providing a brief summary of the invention.

 7. Drawings: Including drawings or diagrams to illustrate the invention.

5Q.OWNERSHIP AND TRANSFER:

Meaning of patent transfer: A patent assignment is the transfer of an owner's property

rights in a given patent or patents, and any applications for such patents. These transfers may
occur on their own or as parts of larger asset sales or purchases.

As objects of intellectual property or intangible assets, patents and patent applications

may be transferred. A transfer of patent or patent application can be the result of a financial,
such as an assignment, a merger, a takeover or a demerger, or the result of an operation of
law, such as in an inheritance process, or in a bankruptcy.

Ownership and transfer of patents refer to the legal rights and processes involved in
owning and transferring patents. Here are some key aspects:

Ownership:

1. Initial ownership: The inventor or creators of the patent typically own the patent
rights.

2. Assignment: Ownership can be transferred through assignment, where the owner

transfers their rights to another party.

3. Employment: Inventions created by employees may be owned by the employer,

depending on the employment contract.

Transfer:

1. Assignment: A written agreement transferring ownership of the patent.

2. License: Granting permission to use the patent without transferring ownership.

3. Sale: Transferring ownership of the patent in exchange for payment.

4. Inheritance: Patent rights can be transferred through inheritance.

5. Bankruptcy: Patent rights can be transferred or sold during bankruptcy

proceedings.

Recordation:
 1. Patent office recordation: Recording assignments, licenses, or other transfers with
the patent office.

Implications:

1. Ownership disputes: Disputes can arise over patent ownership, especially in

collaborations or employment situations.

2. Transfer restrictions: Some agreements or laws may restrict the transfer of patent
rights.

3. Tax implications: Transferring patents can have tax implications, such as capital
gains tax.

RIGHTS OF THE PATENTEE:

Patentee meaning: A person or organization that obtains or holds a patent for something or
The person or organization that owns the legal right to make or sell something.

Rights:

 Right to exploit the patent on the patentee

 The patentee can transfer the patent right by assignment or license
 The patentee can anytime surrender the patent
 The patentee, his assignee, licensee or agent has the right to institute a civil suit in
court not lower than district court in case of any infringement.

6Q.PATENT APPLICATION PROCESS AND GRANTING OF PATENT:

A patent application is a request pending at a patent office for the grant of a patent for the
invention described and claimed by that application. An application consists of a description
of the invention (the patent specification), together with official forms and correspondence
relating to the application.

The term patent application is also used to refer to the process of applying for a
patent, or to the patent specification itself (i.e. the content of the document filed with a viewto
initiating the process of applying for a patent.

Here's an overview of the patent application process and granting of a patent:

Patent Application Process:

1. Filing: Submit a patent application to the patent office.

 2. Formalities Check: Verify that the application meets formal requirements.

3. Search: Conduct a search of existing patents and publications.

4. Examination: Evaluate the application for novelty, non-obviousness, and utility.

5. Office Actions: Respond to examiner's objections or requests.

6. Amendments: Make changes to the application in response to office actions.

7. Allowance: Receive notice of allowance if the application meets requirements.

Granting of Patent:

1. Issue Notification: Receive notification of patent issuance.

2. Patent Grant: Receive the granted patent.

3. Patent Term: Patent is granted for a specific term (usually 20 years).

4. Maintenance Fees: Pay fees to maintain the patent.

Timeline:

- Filing to First Office Action: 12-18 months

- First Office Action to Allowance: 6-12 months

- Allowance to Patent Grant: 2-4 months

Note: The timeline may vary depending on the jurisdiction and complexity of the
application.

Post-Grant:

- Patent Enforcement: Enforce the patent against infringers.

- Maintenance: Pay maintenance fees to keep the patent in force.

- Reexamination: Request reexamination of the patent.

GRANTINGOFPATENT:

A patent is an exclusive right which is granted by the Government for an invention,

for a limited time period. This exclusive right of a patentee allows him to prevent a third
party from using, selling or claiming the invention for which patent has been granted, in an
un authorized and illegal manner, while the term of the patent subsists. An invention which
was granted patent can be used freely by the public after the term of the patent has expired or
has ceased to have an effect.

The Third Schedule of the Patents Rules prescribes the Form that is issued on the
grant of patents. Section 43ofthe Patents Act, 1970 deals with the Grant of patents. Where a
patent application has not been refused by the Controller or the patent application does not
contravene any provisions of the Act and is deemed to be in order for grant of the patent,
the applicant shall be granted the patent immediately. 1 The patent must bear the seal of the
patent office and an entry should be made in the register mentioning the date of grant of
patent.
 Once the patent has been granted, the fact that the patent has been granted must
be published by the Controller, following which the patent application, specification
and other documents related to the patent are open for public inspection.
The Third Schedule of the Patents Rules specifies the Form for grant of the
patent, which may be modified based on the circumstances of the case and it should
bear the applicationnumber. The patent certificate should be issued within7 days
fromthe dateofthe grant of patent. On a written request to the Controller, the patent
application along with the complete and provisional specification, drawings, abstract
and other documents can be inspected by paying the requisite fee.

Conditions for Grant of Patents:

The grant of a patent under the Patents Act, 1970 is not absolute. It is subject to
certain conditions prescribed under Section 47of the Act. Therefore, the grant of a
patent is subject to the following conditions:5
 the patent granted for any machine, apparatus, article or any article made by using
a process, can be imported or made by the government or on its behalf solely for
its own use;
 a patent granted for any process can be used by the Government or on its behalf
for its own use;
 a patent granted for any machine, apparatus, article or any article made by using a
processor where a patent is granted for anyprocess, canbe made or used
byanyperson, for research or experiment purpose which also includes conveying
instructions to students;
 where a patent is granted for any medicine or drug, the Government can import
suchdrug or medicine solely for its own use or distribution in Government-
supported dispensaries, hospitals, and other medical institutions and also those
rendering public service.
 7Q.PATENT INFRINGEMENT AND LITIGATION:

PATENT INFRINGEMENT:

Meaning:Patent infringement isthe act ofmaking, using, selling, oroffering to

sella patented invention, or importing into the United States a product covered by a
claim of a patent without the permission of the patent owner.
ExamplesforPatentInfringement.

This can include:

1. Direct infringement: Making, using, or selling a patented invention without permission.

2. Indirect infringement: Encouraging or assisting others to infringe a patent.
3. Contributory infringement: Selling or importing components that are specifically designed
for infringing a patent.
4. Induced infringement: Encouraging or instructing others to infringe a patent.

Remedies for Patent Infringement:

 Equitable Remedy: An equitable remedy is one which does not involve the
payment of pecuniary (money) damages, but rather involves a court order to
 take some action or cease from some behavior.
 Civil Action: When the law permits one private party to sue another private
party it is known as a civil action, as opposed to criminal actions which are
brought by governmental entities (the state, the federal government, etc.)
 Treble Damages: The law sometimes permits a court, at its discretion, to
award triple damages to a plaintiff, which is known as treble damages.
 Injunctions: an authoritative warning order.

Exceptions to patent infringement /Non infringement activities:

 Governmentuse:section47ofIndianpatentAct1970
 Research exemption
 Supply of patented drugs to health institutions
 Use of patented invention on foreign vessels
Patent infringement can have serious consequences, including:

1. Lawsuits and legal action

2. Damages and financial penalties
3. Injunctions to stop infringing activities
4. Loss of business reputation and credibility

To avoid patent infringement:

1. Conduct thorough patent searches

2. Obtain necessary licenses or permissions
3. Design around existing patents
4. Consult with patent attorneys and experts

If you suspect patent infringement, consider:

1. Sending a cease and desist letter

2. Filing a lawsuit
 3. Seeking arbitration or mediation
4. Contacting the patent office for assistance

PATENT LITIGATION:

Meaning: A patent litigation suit is filed when the patent owner and the alleged
infringer cannot agree to enter into a licensing agreement or if the patent owner is not
willing to share his technology at all. Patent litigation suits are typically very costly,
especially in the US, can last for many years and may cause expenses of millions of
dollars.

RemediesforpatentLitigation:
 Monetary Damages: The partyaccused for patent infringement is sentenced in
court and compensates the patent owner. Such compensations include the
patent owner being entitled lost profits and/or royalties from the infringer.
 Exclusion Order: If the case is taken to the International Trade Commission
they might issueanexclusionorder.This isthesameas apermanent injunctionthat
forbids the patent infringer fromimporting the productthat usesthe infringed
technologyinto
the markets coveredbythepatent.
 Mediation: Using a mediator to settle the litigation outside of the courtroom
and to avoid a potentially long and costly trial.
 Negotiated Settlement: If the patent owner has support from an experienced
and well-financedfirm itmightbeabletoavoidgoing to trial
andnegotiateasettlement
withthe infringer. Thissettlement usuallyincludesa licensing agreement
betweenthe parties. Most infringement cases are settled like this.
 Injunctive Relief: The infringing party is forced to cease production and/or
sale ofthe infringing product or service. This does not provide the patent owner
with any compensation, but it puts pressure on the infringing company.

8Q.INTERNATIONALPATENTLAW:
 As per Section 39 of the Indian Patent Act, any inventor of India seeking for
International patent are required to file the patent application initially in India. Upon
patent application filing in India, the inventor can request for an International patent
application within twelve months of the date from the filing of the first patent
application.

Any person who is a resident in India will not apply for the grant of the patent for
an invention outside India from the concerned authority or controller until the
following conditions are satisfied. They are

 An application for a patent for the corresponding invention has been performed
in India, which should not be less than six weeks for making the application
outside India.
 No direction is givenunder sub-section(1)ofsection35concerning the application
in India, or all such directions have been revoked.

The controller can dispose of application in case if the invention is relevant for
defence purpose or atomic energy, the grant of permission from the central government
is not approved.

Section 39 is not applicable to an invention for an application filed for outside

India bya person who is not a resident of India.
International patent law refers to the global framework governing patents, ensuring
inventors' rights are protected across borders.
Key aspects include:
1. Paris Convention (1883): Allows for right of priority, enabling inventors to file
patents in multiple countries within 12 months.
2. Patent Cooperation Treaty (PCT) (1970): Streamlines patent applications,
enabling simultaneous filing in multiple countries.
3. World Trade Organization (WTO) TRIPS Agreement (1994): Establishes
minimum standards for intellectual property protection, including patents.
 4. European Patent Convention (EPC) (1973): Creates a unified patent system
for European countries.
5. Patent Law Treaty (PLT) (2000): Harmonizes patent application and
examination procedures.
6. Hague Agreement (1999): Allows for international registration of industrial
designs.
International patent law aims to:

1. Promote innovation
2. Encourage global trade
3. Protect inventors' rights
4. Simplify patent procedures
5. Foster cooperation among nations

Key organizations involved in international patent law include:

1. World Intellectual Property Organization (WIPO)

2. European Patent Office (EPO)
3. United States Patent and Trademark Office (USPTO)
4. International Patent Institute (IPI)

9Q.DOUBLE PATENTING:

Double patenting applies to: 1) same inventors, and 2) common

owner/assignee, even if different inventors. If there is no common ownership, terminal
disclaimer will not apply and 2nd application will not be allowed to issue.

Double patenting prevents the same inventor or owner form obtaining a second
patent on the same invention or an obvious variant thereof. Double patenting only
concerns cases of two or more patents or applications with common inventors or
owners.

Double patenting issues can arise between two or more applications, an

application and a patent, or in reexam or international application if us is involved.

Double patenting occurs when two or more patents are granted for the same
invention or substantially similar inventions, often to the same inventor or assignee.
This can happen due to:

1. Overlapping applications: Filing multiple patent applications with similar

claims.

2. Divisional applications: Filing divisional applications that overlap with

parent applications.

3. Continuation applications: Filing continuation applications that claim the

same invention.

4. Reissue applications: Reissuing patents with broader claims.

Provisional double patenting rejections–

Provisional doublepatentingrejectionsisproperifthefirstfiledapplicationhasnotyet issued

as a patent at the time the rejection of claims in the second application occurs
Types of double patenting–

1) Statutory(same invention–type)double patenting –inventor is allowed only a single

patent on an invention:

 Same inventor or owner

 At least one application must be involved
 Identical subject matter
 Analysis is claim by claim
 Solutions–1)cancel offending claims or 2) amend claims
2) Non-statutory(obvious-type)double patenting –designed to prevent improper time
extensions by patenting something that is not patently distinct from the parent.
 Same inventor or owner
 At least one app must be involved
 “does any claim in the application define an invention that is merely an obvious
variant of an invention claimed in the patent?”

 Double patenting can lead to:

 1. Unfair extension of patent term

 2. Increased costs for competitors

 3. Uncertainty and confusion

 4. Invalidation of patents

 To avoid double patenting:

 1. Conduct thorough searches

 2. Carefully draft patent claims

 3. Use terminal disclaimers

 4. File clear and distinct applications

 Terminal disclaimers can help avoid double patenting by:

 1. Disclaiming overlapping claims

 2. Preventing extension of patent term

 3. Clarifying patent scope

Restriction and double patenting:
Restriction practice features–

 Restriction practice is always discretionary with the examiner.

 Lack of restriction is not a defect in a patent.
 No shifts are allowed from elected to non-elected subject matter; the following are
not considered shifts:
 1) where a process is rejected as obvious, the only invention being in the product
made, presenting claims to the product is not a shift,
2) if a product is elected, there is no shift where the examiner holds the invention
to be in the process, or
3) if a genus is allowed, an applicant may prosecute a reasonable number of
additional species there under and it’s not a shift.

Criteria for restriction: The examiner must show the application claims independent
or distinct inventions and examining all claimed inventions in a single application
would be a serious burden. A restriction may be required in a divisional application,
even though inventions were grouped together in a requirement in a parent application.

Restriction procedure–

 Restriction is usually done before first search.

 The examiner gives reasons for restriction(can be by phone).
 The applicant thas one month to respond (extendable for upto5months).
 The applicant must elect an invention for examination, with or without traverse.
 If election is without traverse, no right to petition later on.
 The applicant must point out reasons why examiner erred.
 If no traversal, examiner withdraws non-elected claims from consideration – same
result if traversal is improper.
 Only claim elected are examined.
 If traversal is proper, examiner will either withdraw the requirement or make It final.

10Q.PATENT SEARCHING:

Patent searches are performed automatically by the patent office whenever a

utility patent application is filed. The search is necessary because no patent will issue
on an invention if the applicant was not the first person to make the invention, or if
another filed for patent protection before the applicant. If the patent office discovers a
patent containing the same invention as described in the application, or one that
renders the applied for invention obvious, the patent application will be rejected.
 The Indian Patent Advanced Search System, InPASS, was introduced on
27.02.2015. Prior to InPASS, IPAIRS [Indian Patent Information Retrieval System]
was used to conduct patent search in India. InPASS is an updated version of IPAIRS as
it allows for a full-text search of all Indian patents and Patent Applications. Apart from
this InPASS also allows a personto conduct a patent search using Wild Cards and
Boolean Operators. Now, InPASS is the Indian patent office database used to conduct
an advanced patent search in India.

Patent Search in India

In the 'Patent Search' tab, there are two check boxes provided those allow you
to search for either Granted patents or Published applications or both.

After choosing that you can search for patents or applications published based
on any of the following search parameters:

Applicant Name Search: The Indian patent search database allows you to search for
patent applications/patents by entering the name of the applicant against the relevant
row. All you have to do is enter the Applicant's name and press search. The result will
display the title of all inventions published or granted in the name that you entered.
Inventor Name Search: Similar to the applicant name search, you can also search the
name in the relevant row and the result display.

In addition to the above searches, you can perform various search queries to
retrieve the results based on your requirements. You may also read the 'Help' provided
on the tab to learnmoreabouthowtouseBooleanoperatorsandWildcards.Ifyouarefamiliar
withUSPTO patent searchor WIPO patentsearch, you can easily conduct the
patentsearch in India.

Patent E-register
The Indian patent search database allows you to the check the legal status of the
granted patent.Inthe 'Patent E-register'tab, enterthe patent number along the displayed
code and click to Show E-register. The result will display the legal status of the patent,
date next renewal date, and Bibliographic data of patent.

Application Status
Similar to patent grant search, the Indian patent search database allows you to
check the status of the patent application. In the 'Application Status' tab, enter the
application number along withthe displayed code and click on 'Show
ApplicationStatus'. The result will displaythedetailsofapplicationsuchasapplication
number, applicant number, dateoffiling, priority date, title of the invention, publication
date and also application status. Besides, you will be able to view all the documents
relevant to the patent application in the 'View Documents' tab provided at the bottom
page of result.

Types of patent searches:

1. Novelty search: Determines if an invention is new and non-obvious.

2. Validity search: Analyzes prior art to assess patent validity.

3. Freedom-to-operate search: Ensures a product or process doesn't infringe

existing patents.
 4. State-of-the-art search: Identifies existing technology and trends.

5. Patent landscape search: Maps patents in a specific technology area.

Patent search tools and databases

1. Google Patents

2. United States Patent and Trademark Office (USPTO) database

3. European Patent Office (EPO) database

4. World Intellectual Property Organization (WIPO) database

5. Commercial databases like Thomson Innovation, LexisNexis, and Questel

Best practices for patent searching:

1. Use multiple databases and tools

2. Employ various search strategies (e.g., keyword, classification, and citation

searching)

3. Analyze search results carefully

4. Stay up-to-date with new patents and developments

5. Consult with patent professionals if needed

11Q.PATENT CO OPERATION TREATY:

The Patent Cooperation Treaty was established to streamline patent

applications in multiple countries at the same time.

Its formation was centered on resolving multi-country patent application issues.

This article will provide a comprehensive overview of the PCT's operation, its purpose,
and its procedure. This information is essential for anyone who wishes to understand
how to protect their invention as they begin the global commercialization of their
innovation.
 THEPATENTCOOPERATIONTREATY(PCT)MAKESITPOSSIBLETO SEEK PATENT PROTECTION FOR AN

INVENTION SIMULTANEOUSLY IN EACHOF A LARGE NUMBER

OFCOUNTRIESBYFILINGAN"INTERNATIONAL"PATENTAPPLICATION.SUCHANAPPLICATION

MAYBEFILEDBYANYONEWHOISANATIONALORRESIDENTOFAPCTCONTRACTINGSTATE .IT

MAY GENERALLY BEFILED WITH THENATIONALPATENTOFFICEOFTHECONTRACTINGSTATE OF WHICH THE

APPLICANT IS A NATIONALOR RESIDENTOR ,ATTHE APPLICANT'S OPTION,WITH THE INTERNATIONAL

BUREAU OF WIPO IN GENEVA.

The Patent Cooperation Treaty (PCT) standardizes how patent applications are
filed, allowing inventors and business owners to protect their inventions in 150
countries at the same time. As a result, anyone with a novel idea can safeguard it by
filing a single internationalpatent application rather than multiple nationaland
regionalpatent applications.
The Advantages of PCT for Inventors
 Applying for PCT confers significant benefits for patents because it is administered
by the World Intellectual Property Organization (WIPO).
 The PCT establishes a streamlined procedure for filing patent applications in each
country that has agreed to process PCT applications. As a result, the treaty makes a
wide range of technical knowledge and information related to those inventions more
accessible to the public.
 The PCT has increased the likelihood of the patent office granting protection.
Currently, there are an estimated 156 contracted countries worldwide, including the
United Arab Emirates.
It is essential to remember that just because a PCT application is referred to as
an "international patent application," that does not mean that all contracting states
willgrant the patent automatically.
Ingeneral, there is no suchthingasaglobalpatent. Tobe moreprecise, a"patent"
isa privilege or right granted by each country or region. Whether or not a PCT
application is granted depends on the national or regional law in each country.
ThePCT applicationmust be filed byacertaindate forthe innovationto moveontoa
national or regional phase. During this phase, the patent can be evaluated and accepted
based on the laws of the contracting nations where the patent is being sought. This
provides businesses with an abundance of chances to expand their innovation and
global influence.
 Insight into the PCT Application Procedure
To begin the patenting process, you must first file an "international
patentapplication" with the appropriate patent office, known as a Receiving Office
(RO).
 Youmustfileaninternationalapplication,alsoknownasaPCTapplication.

 The application is then filed in the language of the applicable jurisdiction, although a
translation of the application may be required for the international search and
publication procedure.

Expert Insight: This largely depends on the official language of the country of
application and the International Searching Authority tasked with evaluating the
patent.

 The PCTapplicationwillbeinvalidatedif atleastone of theapplicantsisnota native or

resident of one of the PCT contracting states.

 Prior to an incorrectly assigned PCT filing date, it is vital for the applicant to confirm
that they are nationals of a contracting state.
Intheeventthatthisisnotdone,the"ReceivingOffice,"orRO,maydeclarethe
applications to be repealed or withdrawn within four months of the filing date.
Iftheapplicant'snationalityorplaceofresidencechangesinthefuture,the international
application will remain valid.

Moving Forward:
 AfterfilingaPCTapplication,thepatentapplicationisautomaticallyassignedtoallcontracti

ng states for examination.

 Ineachofthestateslisted inthePCT filingdate, avalidPCT applicationthat complieswith
thenational patentlawswill havethesameeffectasa regular,singlenational application.

 The filing dateofthePCT application is considered theactualfiling date

ineachdesignated state.
 PCT Time line and Fees:
 By filing a PCTapplication,you can avoid paying national filingfees,attorney fees,and
translation fees for up to 30 months after filing your patent
application.

 Afterfiling,aninternational patentofficecanprovideinformationaboutthepotentialor
patentability of your innovation.

 Key features:

1. Simplified application process: File a single international application instead of

multiple national applications.
2. International search report: Receive a comprehensive search report identifying
prior art.
3. International preliminary examination report: Get an opinion on patentability
before entering national phases.
4. Delayed national phase entry: Enter national phases up to 30 months after the
initial filing date.
5. Priority claim: Claim priority from an earlier application filed in a PCT member
country.

 Benefits:
1. Cost-effective: Reduce translation and filing costs.
2. Time-efficient: Postpone national phase entry and focus on commercialization.
3. Increased patent coverage: Seek protection in over 150 countries.
4. Improved patent quality: Benefit from international search and examination
reports.

 PCT stages:
1. International filing: File the PCT application.
2. International search: Receive the search report.
3. International publication: Application is published.
4. International preliminary examination: Receive the examination report.
5. National phase entry: Enter national phases in selected countries.

12Q.NEW DEVELOPMENTS IN PATENT LAW:

Whoever invents or discovers any new and useful process, machine,

manufacture, or composition of matter, or any new and useful improvements thereof,
may obtain a patent, subject to the conditions and requirements of this title.
Business method and software patent:

Many of the cutting-edge issues in patent law related to patents for

computersoftware. For several years, the conventional wisdom has been that unless a
computer program had significant commercial value and application patent protection
was often counterproductive or ineffective in that the PTO often took two years to
issue a patent, roughly the same time it took for the software program to become
absolute.

Biotechnology patent: Medicines, Science, agricultural and pharmacology present the

other cutting-edge issues in patent law. Research into genes may hold the key to curing
disease throughout the world. Agricultural research may hold the key to providing
sufficient food for the world’s ever increasing population.

The development of strains of plants and crops that are resistant to brought and disease
has also led to an increasing number of patents issued, and attendant litigation. In the
field of “agbiotech”

.
13Q.Invention Developers and Promoters:

Invention developers and promoters play a crucial role in bringing new ideas to life. Here are some
key players:

1. Inventors: Create new ideas, concepts, and products.

2. Product Designers: Refine and develop inventions into functional products.

3. Prototype Developers: Build working prototypes to test and demonstrate inventions.

4. Patent Attorneys: Help protect inventions through patent applications and intellectual property
law.

5. Innovation Consultants: Provide guidance on developing and commercializing inventions.

6. Incubators and Accelerators: Support startups and early-stage companies in developing and
launching inventions.

7. Crowd funding Platforms: Enable inventors to raise funds and generate buzz around their
inventions.

8. Licensing Agents: Connect inventors with companies interested in licensing their inventions.
9. Manufacturing Partners: Help scale up production and bring inventions to market.

10. Marketing and Sales Experts: Assist in promoting and commercializing inventions.

These players work together to transform ideas into successful products and businesses, driving
innovation and progress.