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Title: EXAMINATION OF APPLICATION FOR PATENT engg.invention particularly hardware and software


1
EXAMINATION OF APPLICATION FOR PATENT
(engg.invention particularly hardware and
software)
by N.K.MOHANTY Assistant Controller of
Patents and Designs, Patent Office,
Mumbai mohanty_nalini_at_yahoo.co.uk nk.mohanty_at_nic.i
n
2
EXAMINATION
  • Application with a complete specification is
    taken up for examination if a request for
    examination is filed within the prescribed period
    of 48 months from the date of priority or the
    date of filing whichever is earlier.
  • If the request for examination is not filed
    within the due date,the application shall be
    treated as withdrawn by the applicant.

3
Applications are taken up for examination
according to the order in which the request of
examination is made (R. 24B(2)(i))  
The examination of the application consists of a
study of the application for compliance with the
legal requirements and a search through patent
database and other available literature, to see
if the claimed invention is new and non obvious .
4
Examiner shall make a report to the
Controller ordinarily within a period of 1 month
from the date of such reference (S.12 (2)
R.24B(2)(ii))and Controller shall ordinarily
dispose off the report within a period of 1 month
from the date of receipt of such report. This
Report is called First Examination Report (FER)
and   sent to the applicant for compliance.
The time for putting the application in order for
grant( sec. 21) is 12 months from the date of
FER.
5
The examination of an application for patent
is carried out at the Patent Office(where the
application has been filed) in two stages
i.e.,    
Formal examination and
Substantive / Technical examination
6
ORDINARY APPLICATION
  • JURISDICTION AS PER THE ADDRESS OF THE APPLICANT
    or AS PER THE ADDRESS FOR SERVICE IN CASE OF
    FOREIGN APPLICANT (RULE 4)
  • FEE (RULE 7)
  • ADDRESS FOR SERVICE (RULE 5)
  • PROOF OF RIGHT FROM INVENTORS (assignment)
  • DECLARATION AS TO INVENTORSHIP(FORM-5)
  • (along with the complete specification if the
    application is filed with provisional
    specification)
  • PA/GPA IF AGENT IS EMPLOYED
  • DUPLICATE SET

7
DIVISIONAL APPLICATION
  • TO BE FILED BY THE APPLICANT AT ANYTIME BEFORE
    THE GRANT OF PATENT (TO ORIGINAL APPLICATION)
  • ALL OTHER FORMALITIES ARE LIKE IN
  • ORDINARY/CONVENTIONAL/PCTNP APPLICATION

8
PATENT OF ADDITION
  • TO BE FILED BY THE APPLICANT AT ANY TIME BETWEEN
    THE DATE OF FILING THE MAIN APPLICATION AND THE
    EXPIRY OF THE PATENT TERM
  • ALL OTHER FORMALITIES ARE LIKE IN
  • ORDINARY/CONVENTIONAL/PCTNP APPLICATION

9
CONVENTION APPLICATION
  • TO BE FILED WITHIN 12 MONTHS FROM THE EARLIEST
    PRIORITY DATE
  • JURISDICTION AS PER THE ADDRESS FOR SERVICE (RULE
    4)
  • SINGLE BASIC FILING FEE IF ONE PRIORITY
  • BASIC FILING FEE IS MULTIPLE OF NUMBER OF
    PRIORITIES
  • DECLARATION AS TO INVENTORSHIP(FORM-5)
  • CERTIFIED COPY OF PRIORITY DOCUMENT(S)/ENGLISH
    TRANSLATION(IF REQUIRED)

10
CONVENTION APPLICATION(CONTD.)
  • ADDRESS FOR SERVICE IN INDIA(RULE 5)
  • ASSIGNMENT FROM INVENTORS/APPLICANT IN CONVENTION
    COUNTRY (assignment)
  • PA/GPA IF AGENT IS EMPLOYED
  • DUPLICATE COPIES

11
PCT NATIONAL PHASE APPLICATION
  • TO BE FILED WITHIN 31 MONTHS FROM THE
    INTERNATIONAL FILING DATE OR FROM THE EARLIEST
    PRIORITY DATE
  • JURISDICTION AS PER THE ADDRESS FOR SERVICE (RULE
    4)
  • SINGLE BASIC FEE IF NO OR ONE PRIORITY
  • BASIC FILING FEE IS THE MULTIPLE OF NUMBER OF
    PRIORITIES
  • PROCESSING SHOULD NOT START BEFORE 31 MONTHS FROM
    THE DATE OF PRIORITY.

12
PCT NATIONAL PHASE APPLICATION (contd.)
  • PRIORITY DOCUMENT(S) ALONG WITH DULY VERIFIED
    TRANSLATION(IF REQUIRED)IF NOT FILED WITH
    INTERNATIONAL BUREAU (IB) OR WITH RECEIVING
    OFFICE (RO) SHOULD BE FILED WITHIN 31 MONTHS
  • DECLARATION AS TO INVENTORSHIP(FORM-5)
  • DULY VERIFIED ENGLISH TRANSLATIONS OF
    INTERNATIONAL APPLICATION, IF REQUIRED
  • ADDRESS FOR SERVICE IN INDIA(RULE 5)
  • ASSIGNMENT FROM INVENTORS/APPLICANT IN CONVENTION
    COUNTRY (assignment)
  • PA/GPA IF AGENT IS EMPLOYED
  • DUPLICATE COPIES

13
CHANGE IN THE NAME OF THE APPLICANT
POSSESION OF RIGHT WITH SAME PERSON FORM
13 Document in support of change of name from
competent authority
SUBSTITUTION OF APPLICANT
Transfer of right form 6 Document in the form
of assignment deed,legal heir certificate or
succession certificate etc.
14
FOREIGN FILING PARTICULARS
  • FILED IN OTHER COUNTRIES BEFORE FILING IN INDIA
  • DETAILS SHALL BE FURNISHED ALONG WITH APPLICATION
    OR WITHIN SIX MONTHS FROM THE DATE OF FILING THE
    APPLICATION.
  • FURTHER EXTENTION OF ONE MONTH IS ALLOWED BY
    FILING A PETITION U/R 138 WITHIN THE SAID SIX
    MONTH PERIOD.

15
FOREIGN FILING PARTICULARS (contd.)
  • FILED IN OTHER COUNTRIES AFTER FILING IN INDIA
  • WITHIN 6 MONTHS FROM THE DATE OF FILING IN A
    FOREIGN COUNTRY.
  • EXTENTION OF TIME for one month IS ALLOWABLE BY
    FILING A PETITION UNDER RULE 138.

16
FOREIGN FILING PARTICULARS (contd.)
WHEN REQUIRED BY THE CONTROLLER UNDER SECTION
8(2) INFORMATIONS REGARDING THE PROSECUTION OF
THE APPLICATION IN OTHER COUNTRIES SHOULD BE
FILED WITHIN 3 MONTHS FROM THE DATE OF SUCH
COMMUNICATION. DETAILS INCLUDE OBJECTION
REGARDING PATENTABILITY OF THE
INVENTION EXTENTION OF ONE MONTH TIME IS
POSSIBLE BY FILING A PETITION UNDER RULE 138
17
MISCELLANEOUS
APPLICANTS NAME ,ADDRESS AND NATIONALITY, INVET
ORS NAME ,ADDRESS AND NATIONALITY, ADDRESS FOR
SERVICE AND TITLE OF THE INVENTION SHOULD
BE CONSISTENT IN ALL THE DOCUMENTS.

18
MISCELLANEOUS
RELEVANCE TO DEFENSE ,SECRECY DIRECTION TO BE
IMPOSED THE TITLE OF THE INVENTION MAY CONTAIN
NOT MORE THAN 15 WORDS SUBJECT MATTER OF
ABSTRACT MAY NOT CONTAIN MORE THAN 150
WORDS DRAWINGS IF ANY SHALL BE SEPARATE FROM THE
DESCRIPTION AND SHOULD BE PREPARED FOLLOWING
RULE 15.

19
SUBSTANTIAL EXAMINATION
  • Whether the subject matter is an invention
    within the meaning of Section 2(l)(j), based on
    the criteria of novelty, inventive step and
    industrial applicability. (N,IS,IA)
  • Whether the invention is one, which is not
    patentable under Sections 3 4(EXCLUSION LIST)
  • Whether the specification complies with the
    requirements of Section 10 regarding contents of
    specifications.(UNITY ,CLARITY AND WORKABILITY)

20
Patent means a patent for any invention
granted under this Act. -S. 2(1)(m)
Invention means a new product or process
involving an inventive step and capable of
industrial application. -S. 2(1)(j)
AN INVENTION SHALL BE CONSIDERED TO BE NEW IF
IT DOES NOT FORM PART OF THE STATE OF THE ART.
21
Inventive step is a feature of an invention that
involves technical advance as compared to
existing knowledge or having economic
significance or both, making the invention non
obvious to a person skilled in art. To judge the
inventive step, the following question is to be
borne in mind- Would a non-inventive mind have
thought of the alleged invention?. If the answer
is No, then the invention is non-obvious. -S.
2(1)(ja)
  • Capable of industrial application means
    invention is capable of being made or used in
    industry.
  • -S. 2(1)(ac)

22
1.TITLE
The title should sufficiently indicate the
subject matter to which the invention relates
There should not be any fancy title
23
2.ABSTRACT
1. SHALL COMMENCE WITH THE TITLE OF THE
INVENTION 2. SHALL CONTAIN A CONCISE SUMMARY OF
THE MATTER CONTAINED IN THE SPECIFICATION.
(TECHNICAL FIELD,THE TECHNICAL PROBLEM,SOLUTION
PROVIDED AND PRINCIPAL USE OR USES OF THE
INVENTION. 3. WHERE NECESSARY, THE ABSTRACT
SHALL CONTAIN THE CHEMICAL FORMULA, WHICH
CHARACTERISES THE INVENTION.
24
2.ABSTRACT(contd.)
  • 4. IF THE SPECIFICATION CONTAINS ANY DRAWING, THE
    APPLICANT SHALL INDICATE ON THE ABSTRACT THE
    FIGURE, OR EXCEPTIONALLY, THE FIGURES OF THE
    DRAWINGS WHICH MAY ACCOMPANY THE ABSTRACT WHEN
    PUBLISHED. EACH MAIN FEATURE MENTIONED IN THE
    ABSTRACT AND ILLUSTRATED BY A DRAWING SHALL BE
    FOLLOWED BY THE REFERENCE SIGN USED IN THAT
    DRAWING.
  • 5. THE ABSTRACT SHOULD BE AN EFFICIENT INSTRUMENT
    FOR THE PURPOSES OF SEARCHING IN THE PARTICULAR
    TECHNICAL FIELD.

25
3.DESCRIPTION
  • THIS PART OF THE COMPLETE SPECIFICATION IS
    ADDRESSED TO THE PERSON SKILLED IN THE ART
  • EVERY SPECIFICATION, WHETHER PROVISIONAL OR
    COMPLETE, SHALL DESCRIBE THE INVENTION
  • IN CASE OF ENGINEERING INVENTION DRAWINGS SHOULD
    BE GIVEN ALONG WITH THE SPECIFICATION ,WHICH
    BECOMES A PART OF THE SPECIFICATION.
  • COMPLETE SPECIFICATION SHOULD FULLY AND
    PARTICULARLY DESCRIBE THE INVENTION AND ITS
    OPERATION OR USE AND THE METHOD BY WHICH IT IS TO
    BE PERFORMED

26
3.DESCRIPTION (CONTD.)
  • IT SHOULD ALSO DISCLOSE THE BEST METHOD OF
    PERFORMING THE INVENTION WHICH IS KNOWN TO THE
    APPLICANT AND FOR WHICH HE IS ENTITLED TO CLAIM
    PROTECTION

27
4.CLAIMS
  • EACH COMPLETE SPECIFICATION SHOULD END WITH A
    CLAIM OR CLAIMS DEFINING THE SCOPE OF THE
    INVENTION FOR WHICH PROTECTION IS SOUGHT.
  • THE CLAIM OR CLAIMS OF A COMPLETE SPECIFICATION
    SHALL RELATE TO A SINGLE INVENTION OR TO A GROUP
    OF INVENTIONS LINKED SO AS TO FORM A SINGLE
    INVENTIVE CONCEPT.
  • SHALL BE CLEAR AND SUCCINCT AND SHALL BE FAIRLY
    BASED ON THE MATTER DISCLOSED IN THE
    SPECIFICATION.

28
NON PATENTABLE INVENTIONS
  • INVENTIONS FRIVOLOUS CONTRARY TO WELL
    ESTABLISHED NATUTRAL LAWS eg.perpetual motion
    machine
  • INVENTIONS CONTRARY TO LAW/ MORALITY/ INJURIOUS
    TO PUBLIC HEALTH eg. An apparatus for gambling
    or burgling or adulteration of food,a police
    radar detector,however it can be patented if
    claimed as a tester to see if the radar is
    working or as a device to remind driver to watch
    their speed.
  • DISCOVERY OF A SCIENTIFIC PRINCIPLE/ FORMULATION
    OF ABSTRACT THEORY eg. Emc2

29
NON PATENTABLE INVENTIONS
  • 3(d) The mere discovery of a new form of a known
    substance which does not result in the
    enhancement of the known efficacy of that
    substance
  • or the mere discovery of any new property or new
    use for a known substance or of the mere use of a
    known process, machine or apparatus unless such
    known process results in a new product or employs
    at least one new reactant.

30
NON PATENTABLE INVENTIONS
  • Explanation-
  • For the purposes of this clause, salts, esters,
    ethers, polymorphs, metabolites, pure form,
    particle size, isomers, mixtures of isomers,
    complexes, combinations and other derivatives of
    known substance shall be considered to be the
    same substance, unless they differ significantly
    in properties with regard to efficacy.

31
NON PATENTABLE INVENTIONS
  • I. Mere discovery of new property is not
    patentable invention e.g. a mere
  • discovery of a new property of the substance such
    as aspirin for use of
  • treatment of some other disease cannot be
    considered patentable in mere use
  • of Aspirin for cardio-vascular disease, which was
    earlier used for analgesic purpose, is not
    patentable.

32
NON PATENTABLE INVENTIONS
  • II. New use for a known substance is also not
    patentable it means 2nd or 3rd use for a known
    substance cannot be allowed.
  • III. Mere use of a known process is not
    patentable unless such known process results in a
    new product or employs at least one new reactant.
  • "Metric time showing Device" (101/Bom/72) was
    held not patentable.

33
NON PATENTABLE INVENTIONS
  • COMPOSITION OBTAINED BY MERE ADMIXTURE ITS
    PREPARATION PROCESS eg. Sand and salt mixture not
    showing any new property
  • MERE ARRANGEMENT REARRANGEMENT OF KNOWN
    DEVICES eg. Umbrella with fan and bucket
    fitted with torch

34
NON PATENTABLE INVENTIONS
  • METHODS OF AGRICULTURE /HORTICULTURE eg.. Method
    of cultivation of Algae or Mushroom
  • PROCESS OF TREATMENT OF HUMAN BEING/ANIMAL

    eg. A method of treatment of Cancer/Removal of
    Dental Plaque
  • Plants and animals in whole,or any part thereof
    other than micro-organisms

35
NON PATENTABLE INVENTIONS

3(k) a mathematical or business method or a
computer programme per se or algorithms
3(l) any aesthetic creation (literary/dramatic/
musical/artistic) 3(m) mere scheme of performing
mental act/playing a game
36
NON PATENTABLE INVENTIONS

3(n) a presentation of information 3(o)
topography of integrated circuits 3(p)
traditional knowledge Sec 4 Inventions
relating to atomic energy not patentable
37
DIFFERENT ASPECTS OF SOFTWARE PATENTING
WHAT IS SOFTWARE   Software A program relating
to the operation of a computer. Program A
sequence of instructions suitable for a computer
to perform a particular processing.
Instruction set of codes
38
WHAT IS SOFTWARE PATENT   "A patent intended to
prevent others from using some programming
technique".
39
DIFFERENT ASPECTS OF SOFTWARE PATENTING
HISTORY The first software patent ever granted
is probably a patent for a "computer having slow
and quick access storage, when programmed to
solve a linear programming problem by an
iterative algorithm, the iterative algorithm
being such that (...)" applied for in 1962 by
British Petroleum Company
40
Computer programs having the effect of
controlling computers to operate in a particular
way, where such programs are embodied in physical
form, were held to be patentable. Burroughs
corporation application (1974) RPC 147.  
41
Diamond v. Diehr 450 Us 175(1981)   US became
first country to formally recognize patentability
of software after Supreme Court ruling in this
case. Invention Rubber curing process that was
controlled by software. Held -Since the patent
was for rubber curing and not software per se, it
was patentable.
42
It was decided that invention must be looked on
as a whole not just at what was novel about
it. Thus computer controlled process could be
patentable even if the process, whether
controlled by other mean was already known, if
the application of the programme used in the
process was not obvious.
43
VICOM Systems Application (1987)
 Invention- method of digitally processing images
in the form of a two-dimentional data array by an
operator matrix  Board held that if a
mathematical method is used in a technical
process , that process is carried out on a
physical entity by some technical means
implementing the method and provides as its
result in certain change in that entity and
allowed the application. The board further held
that Decisive is what technical contribution the
invention makes to the known art.
44
KOCH STERZEL (T26/86 EPO OJ 1998
Invention- an x-ray apparatus incorporating a
data processing unit operating in accordance with
a routine was patentable?   COURT HELD- the
claims related neither to a computer program in
the form of a recording on a disc carrier nor to
a known general purpose computer in combination
with a program  
45
The routine was held to produce technical
effect. It controlled the x-ray tube so that by
establishing a certain parameter priority,
optimum exposure was combined with adequate
protection against overloading of the x-ray
tube,and thus was held patentable.
46
SOFTWARE PATENT POLICIES IN EPO
The European Patent Convention excludes "computer
programs as such. To be patentable, an invention
must have technical character.   This means that
the invention must relate to a technical field
and solve a technical problem. A computer program
has a technical character if it causes a
technical effect when run on a computer. In the
words of the Board of Appeals (T 1173/97 and T
935/97), the technical effect must go beyond the
"normal" physical interactions between program
and computer. If such an effect can be found, the
program is not excluded and hence a patentable
invention.(IBM DECESSIONS)
47
Technical Effect It is defined as Solution to a
technical problem, which the invention taken as a
whole, tends to overcome. Few general examples
of technical effect are as follows-  
1)   Higher speed 2)   Reduced hard-disk access
time 3)   More economical use of memory 4)   More
efficient data base search strategy 5)   More
effective data compression techniques 6)  
Improved user interface 7)   Better control of
robotic arm 8)   Improved reception/transmission
of a radio signal
48
Technical effect may be viewed in   1)   The
problem to be solved 2)   The implementation of
solution 3)   The function of that
implementation 4)   And its effect.
49
SOFTWARE PATENTS UNDER THE INDIAN PATENT ACT.
3.2 EXCLUSION FROM PATENTABILITY Section 3
(k) a mathematical method or a business method
or a computer program per se or algorithms   (l)
a literary, dramatic, musical or artistic work or
any other aesthetic creation whatsoever including
cinematographic works and television
productions  
50
SOFTWARE PATENTS UNDER THE INDIAN PATENT ACT.
(m) a mere scheme or rule or method of performing
mental act or method of playing game   (n) a
presentation of information     (n) a
presentation of information  
51
Hardware resources Physical devices or physical
elements used for processing, operation or
realization of functions.
Firmware System software written onto read-only
memory (ROM), it is a combination of software and
hardware.
Algorithm A finite set of well-defined
instructions for accomplishing some task which,
given an initial state, will result in a
corresponding recognizable end-state. Algorithms
can be implemented by computer programs with the
help of suitable hardware resources.
52
Computer program product A computer-readable
storage medium having a program recorded
thereon, etc. In such cases the claims are
treated as relating to software perse,
irrespective of the medium of its storage and are
not held patentable.
Embedded Systems An embedded system is a special
purpose computer system usually built into a
smaller device. An embedded system is required to
meet very different requirements than a
general-purpose personal computer. E.g. ATM.
53
VARIOUS CATEGORIES OF CLAIMS
       Method/process       
Apparatus/system        Computer program
product
54
Method/process
  • The method claim should clearly define the steps
    involved in carrying out the invention.
  • It should have a technical character.
  • The claims should incorporate the details
    regarding the mode of the implementation of the
    invention via. hardware or software, for better
    clarity.
  •  The claim orienting towards a process/method
    should contain a hardware or machine limitation.

55
A claim directed to a technical process which
process is carried out under the control of a
program (whether by means of hardware or
software), cannot be regarded as relating to a
computer program per se.
Example   A method for processing seismic
data, comprising the steps of collecting the time
varying seismic detector output signals for a
plurality of seismic sensors placed in a
cable.   Here the signals are collected from a
definite recited structure and hence allowable.
56
A contents display method for displaying contents
on a screen, A method for controlling an
information processing apparatus,
for communicating via the Internet with an
external apparatus, A method for transmitting
data across an open communication channel on a
wireless device that selectively opens and closes
a communication channel to a wireless network,
and each wireless device including a computer
platform and including a plurality of device
resources that selectively utilizes a
communication channel to communicate with other
devices across the network All the above methods
though utilise computer programs for its
operation,are not computer programs as such and
hence allowable
57
On the other hand, A method of executing a
computer program, in which at least part of the
copy of the program available for execution is
analysed to determine whether or not any change
has been made thereto, and in the event that a
change is detected, a further copy of the program
is retrieved and caused to be executed instead of
the first copy, A method for generating a new
computer program using a software development
tool, These are the programs solely intellectual
in its context and hence not allowable. .
58
Apparatus/system
  • The apparatus claim should clearly define the
    inventive constructional hardware features.
  • The claim for an apparatus should incorporate a
    process limitation for an apparatus.
  • As a general rule, a novel solution to a problem
    relating to the internal operations of a
    computer, although comprising a program or
    subroutine, will necessarily involve
    technological features of the computer hardware
    or the manner in which it operates and hence may
    be patentable

59
Example   A computer comprising -   -means for
storing signal data, - a first resistor for
storing data, The clause starting with
for describes the function or process carried
out by the apparatus, and form the part of
process limitation here.
60
Computer program product
  • The claims relating to software program product
    are nothing but computer program per se simply
    expressed on a computer readable storage medium
    and as such are not allowable.
  • Example
  • If the new feature comprises a set of
    instructions (programs) designed to control a
    known computer to cause it to perform desired
    operations, without special adoption or
    modification of its hardware or organization,
    then no matter whether claimed as a computer
    arranged to operate etc or as a method of
    operating a computer, etc., is not patentable
    and hence excluded from patentability

61
  • The claim might stipulate that the instructions
    were encoded in a particular way on a particular
    known medium but this would not affect the issue.
    E.g., A program to evaluate the value of PI or to
    find the square root of a number are held not
    allowable.
  • An invention consisting of hardware along with
    software or computer program in order to perform
    the function of the hardware may be considered
    patentable. E.g., Embedded systems.

62
Thank you
63
Acoustic Data Compression -- MP3 Base
Patent Iteratively perform certain calculations
on acoustic data until a certain value is
reached. Claim 1 Digital coding process for
transmitting and/or storing acoustic signals,
specifically music signals, comprising the
following steps.          N samples of the
acoustic signal are converted into M spectral
coefficients          said M spectral
coefficients are subjected to quantisation at a
first level          after coding by means of
an entropic encoder the number of bits required
to represent all the quantized spectral
coefficients is checked         
64
when the required number of bits does not
correspond to a specified number of bits
quantization and coding are repeated in
subsequent steps, each at a modified quantization
level, until the number of bits required for
representation reaches the specified number of
bits, and   additionally to the data bits the
required quantization level is transmitted and/or
stored.
65
  Different categories of independent claims
stating unity of invention      Product, process
for its manufacture and use of the product   
Process and apparatus for carrying out the
process Product, process for its manufacture and
apparatus for carrying out the process
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