Report. One Week Training Programe. Rajiv Gandhi National Institute of Intellectual Property Management (RGNIIPM) Civil Lines Nagpur,

Transcription

1 Report On One Week Training Programe at Rajiv Gandhi National Institute of Intellectual Property Management (RGNIIPM) Civil Lines Nagpur, In collaboration with Rashtriya Uchchatar Shiksha Abhiyan, Maharashtra (RUSA) From 26 to 30 Sep Submitted by Jagdish G. Chaudhari, EE, GHRCE, Nagpur.

2 Day 1 : ( Date : 26 th Sep. 2016, Monday) First session conducted by Mrs. Chhya Satute, Sr. Documentation officer,rgniipm, Nagpur on Introduction to organization & its advantages of protection to IPR. In her lecture,she had given detail about organization. This organization comes under ministry of commerce & industry ( DEPARTMENT OF INDUSTRIAL POLICY & PROMOTION). She classified the IPR in tangible and intangible properties and focus on patents with its draft manualand importance of IPR.Second session conducted by Introduction to IPR and its types by Mrs. Chhya Satute, Sr. Documentation officer,rgniipm, Nagpur. She said Intellectual property refers to creations of the mind: inventions; literary and artistic works; and symbols, names and images used in commerce. Intellectual property is divided into two categories: Industrial Property includes patents for inventions, trademarks, industrial designs and geographical indications. Copyright covers literary works (such as novels, poems and plays), films, music, artistic works (e.g., drawings, paintings, photographs and sculptures) and architectural design. Rights related to copyright include those of performing artists in their performances, producers of phonograms in their recordings, and broadcasters in their radio and television programs. Third session conducted by Mrs. Namrata Kavale,Dy. Controller of P& D, patent office Mumbai on What is invention? & patentability criteria. She explained an invention must, in general,fulfill the following conditions to be protected by a patent. It must be of practical use; it must show an element of novelty, meaning some new characteristic that is not part of the body of existing knowledge in its particular technical field. That body of existing knowledge is called prior art. The invention must show an inventive step that could not be deduced by a person with average knowledge of the technical field. Its subject matter must be accepted as patentable under law. In many countries, scientific theories, mathematical methods, plant or animal varieties, discoveries of natural substances, commercial methods or methods of medical treatment (as opposed to medical products) are not generally patentable. Fourth and Fifth session conducted by Mr. Pankaj Borkar, Head, RGNIIPM, Nagpur on Indian patent application filing procedure. He said, an Application for a Patent for an invention may be made by any of the following persons either alone or jointly with any other person: True and first inventor.true and first inventor s assignee Legal representative of deceased true and first inventor or his/her assignee. The term "person" as defined in the Patents Act includes government. The term person as defined in the General Clauses Act, 1897 includes any company or association or body of individuals, whether incorporated or not. In the case of a limited partnership, the Application may be in the names of all personally responsible partners.true and first inventor does not include either the first importer of an invention into India or a person to whom an invention is first communicated from outside India. The applicant is required to disclose the name, address and nationality of the true and first inventor. Assignee can be a natural person or other than a legal person such as a registered company, a research Section 6, 134, 135 Form-18 organization, an educational institute or Government. Assignee includes assignee of an assignee also. Wherever, the inventor(s) is/are not the applicant, a proof of right to apply by way of an endorsement in the Application form (Form 1) or an assignment deed shall be submitted.legal representative means a person who in law represents the estate of a deceased person. In such a case, the Legal Representative may be required to file appropriate legal instruments as Proof of Right. He also explained the contents of patent application.

3 Day 2 : ( Date : 27 th Sep. 2016, Tuesday) First session conducted by Mrs. Chhya Satute on importance of patent search. She had given brief idea about a patent search or a patentability search is a search conducted in patent databases as well as in the literature available to check whether any invention similar to your invention already exists. In other words, it evaluates your chances of getting a patent grant. Therefore, instead of going forth with the filing, if one conducts the patentability search, one can get a clear idea about the patentability of the invention; whether the application should be filed and the strengths and weakness of his invention. Second, Third, Fourth & Fifth session conducted by Mrs. Namrata Kavale on types of patent search, Methodology and Patent strategy and search on various databases. She narrated the things with the help of various types of patent searches, with each requiring its own unique search process. Differences between search processes are primarily based on scope and publication dates. Some different search types are provided below: A) Patentability: This type of search, normally performed after determining that an invention covers patentable subject matter and has utility, and that its potential return on investment warrants patent pursuance, focuses on finding prior art references that may be relevant to the invention s novelty and nonobviousness. These prior art references comprise a wide array of materials, such as issued patents, published patent applications, journals and other non-patent literature, etc., and can have been made public at any point prior to the invention s creation. A patentability search is also sometimes referred to as a novelty search, though patentability search is a better term because non-obviousness is also an important consideration.b) Clearance: Also referred to as a freedom to operate (FTO) search, a right to use search, or an infringement search, a clearance search concentrates on uncovering enforceable patents that might act as roadblocks to commercialization of a product or service. A clearance search can also be used to uncover pending patent applications that, if eventually issued as patents, might be infringed by a given product or solution. From 35 USC 154: a patent grant confers the right to exclude others from making, using, offering for sale, or selling the invention throughout the United States or importing the invention into the United States for a term beginning on the date on which the patent issues and ending 20 years from the date on which the application [or earlier priority application] for the patent was filed in the United States. After the patent term expires the patent owner no longer has this right. Therefore, a clearance search can be limited in scope to those patent documents that are or may be enforceable when a given product or service is commercialized. Also, note that to remain enforceable throughout the 20 year term, an issued patent must have its maintenance fees paid at the appropriate intervals. Any potentially problematic patent documents can be addressed in a number of ways, including formulating a sufficient and non-infringing workaround, obtaining a license from the patent owner, obtaining an opinion of non-infringement or invalidity from a patent attorney, etc.c) Validity: This type of search is similar to the patentability search in that part of its scope is to assess novelty and nonobviousness. In this case however, the assessment is made on a patent instead of for an invention. This type of search is often initiated either when a patent owner desires to assess the strength of a given patent in preparation for enforcement of that patent or when an accused infringer wants to ascertain the validity of an asserted patent. Other names for validity searches are invalidity search and enforcement readiness search. As with a patentability search, a validity search will include both patent documents and non patent literature. D) State-of-the-

4 Art: A state-of-the-art search is often executed in order to determine existing solutions and potential competitors within a given technological field. This type of search is sometimes referred to as a collection search, and includes not only patent documents but also non patent literature. E) Mining: A mining search is carried out in order to find and gather related patent assets owned by an entity mining searches are usually performed for at least one selected technology area. This type of search is often executed on behalf of an entity which owns many patent assets and which may therefore not be fully aware of the scope of their portfolio. The patent assets uncovered in mining searches may then be rated, and these ratings can be leveraged to gather related assets for licensing or divestiture collections, and can also be used for maintenance decisions. Day 3 : ( Date : 28 th Sep. 2016,Wednesday) First & Second session conducted by Mr. Subhajit Saha, IP Attorney, Hyderabad on patent Specifications & Patent search in database. He nicely explained the ideas about the specification, which is also called the disclosure, is a written description of an invention. The patent specification is drafted both to satisfy the written requirements for patentability, as well as to define the scope of the claims. Occasionally an engineer may need to read a patent specification. This can sometimes be an uncomfortable experience, the document seems to be unreasonably repetitive and in parts almost incomprehensible. But all patent specifications, whatever the country of origin, follow roughly the same format, and have the same aim and similar legal requirements. This is intended to help. Third, Fourth & Fifth session conducted by Mrs. Noopur Goel, Registered patent attorney, Delhi on Patent Competitive Intelligence, Practice exercise, Features of databases, and patent search in databases. She explained her idea about Intellectual Property Data Sources : While the Internet provides a wealth of free IP data, serious problems may arise if wrong assumptions are made regarding the coverage, currency and integrity of databases that are deficient. The databases hosted by Dialog, STN, Questel-Orbit and Lexis-Nexis tend to be deeply indexed, often include full-text searching, offer comprehensive coverage, provide product support and come with very powerful search engines. Derwent, Chemical Abstracts, and IFI are the best-known providers of quality patent data on these hosts. The free IP databases provided by Delphion, the US Patent Office, and the European Patent Office (Espacenet) tend to suffer from poor quality abstracts, slow updates, frustrating search menus, missing records, and a significant degree of error caused by case sensitivity and misspellings. These databases are useful tools, but results should be verified in other sources before making major decisions. Patent Searching Tools and Strategies : Beginner patent searchers often rely on their favorite technical keywords when searching. It should be kept in mind that over half of US patents are filed by non-americans, usually persons for whom English is not the first language. The chances are good that a translation from another language does not include the usual American jargon and techno-speak. Intelligent use of patent classification when searching is the best way around the language barrier and produces a much higher ratio of relevant patent retrieval. Patent lassification systems are very powerful tools for patent searchers, and the application of these tools varies tremendously from database to database. In theory, every claim of a patent should be reflected in the classification coding for that patent. The major systems are the International Patent Classification (IPC), ECLA (The European Patent Office modification of the IPC), and the US Patent Office Classification. (See the PATSCAN web page for a guide to searching

5 patents on the free Internet databases.) Citation searching is another useful tool. A highly cited patent represents core technology that other inventors have attempted to improve upon. When an important patent turns up in a search, the patents (and patent applications) citing it should be reviewed, as well as the older art that it cited. Often the first patent in a mechanical or chemical subject area is 100 years old. The person responsible for management of a patent portfolio should carefully scrutinize recently issued patents citing patents in his portfolio, since these may represent infringers who could be required to obtain a technology license to practice their patent. It is also a good idea to conduct citation searches on competitors' patents, since this may indicate new technologies entering the market. Day 4 : ( Date : 29 th Sep. 2016,Thursday) First, Second & Third session conducted by Mrs. Noopur Goel, on Significance and importance of various aspects of specifications and claims, Structure of specification & Drafting on complete specification without claims in two sessions. She explained Discuss the strategic value of patents; Discuss developing strategies that are difficult for competitors to replicate; Discuss life-cycle implications; Discuss the importance of technologies and processes; Discuss identifying potential new business areas. Identify competitors.,what needs to be learned, What are the best information sources, What are the industry trends, forecasts, projections or predictions, How can this information best be used to gain advantage,, Who will be responsible for implementing the plan, How can a culture of continuous CI activity flourish in the company. Fourth & Fifth session conducted by Mr. Subhajit Saha on Important aspects & precaution of drafting of specification and claims and drafting of complete specification without claims. Day 5 : ( Date : 30 th Sep. 2016, Friday) First, Second & Third session conducted by Mrs. Noopur Goel on Types of claims, language of claims,pct filing procedure. She explained everything for various databases of patents. The Patent Cooperation Treaty, or the PCT as it is typically referred to, came into existence in 1970, and has been subsequently several times. It is open to States party to the Paris Convention for the Protection of Industrial Property (1883). The Treaty, which like any other Treaty is a legal agreement entered into between various countries. The purpose of the PCT is to streamline the initial filing process, making it easier and initially cheaper to file a patent application in a large number of countries. By filing through the PCT process you can embark on the path to seek patent protection for an invention simultaneously in every country that is a member to the Treaty. You accomplish this by filing an international patent application. Indeed, the term PCT is largely synonymous with international patent application. So you will sometimes hear people talk of filing an international patent application or a PCT application.an international patent application may be filed by anyone who is a national or resident of a Member Country. A Member Country, also referred to sometimes as Contracting States, are simply those countries that are members to the international Treaty. In PCT speak, which can sometimes seem to be a language all to its own, those countries that have ratified the Patent Cooperation Treaty are referred to as Member Countries or Contracting States.The appeal of the

6 PCT process is that it enables patent applicants to file a single patent application and have that single, uniform patent application be treated as an initial application for patent in any Member Country. This single, uniform patent application is what is referred to as the international application. Filing an international patent application to start the patent process can frequently be a wise move if you are contemplating securing patent rights in multiple countries. It is, however, important to understand that obtaining international patent protection is not cheap. It is also important to understand that the international patent application you file will not mature into an international patent. Fourth & Fifth session conducted by Mr. Subhajit saha on Precaution of drafting of specification & claims exercise and exercise on drafting of claims. He focused on following issues :VERIFY THE FOLLOWING: Conduct search,enlist problems in prior art,what is the problem sought to be solved by the invention? What is the novelty? Is the solution obvious? Has publication ensued? Ascertain the type of application -whether complete or provisional is to be filed,decide the area and nature of protection- Paris convention, PCT, ordinary application. Delivered the presentation in the department on at 2.00 pm. The 08 faculties in the department attended the seminar. Jagdish G. Chaudhari, EE CC: 1) HoD,EE 2) Training Coordinator