origiin newsletter july 2013

7/28/2019 Origiin Newsletter July 2013

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All rights reserved (c) Origiin IP Solutions LLP 2013

x

is issue

ity of invention......P.1

News Bulletin .............................P.3

ws from Indian Patentfice....................................................P.4

onthly IPO Statistics ....P.5

eresting patent of thenth................P.6

rtificate course on Patent specificationafting ..P.7

A monthlyNewsletter on issuesrelating to

IntellectualProperty

Rights

S U E ( Vo l u m e )

M O N T H

July

Y E A R

2 0 1 3

6 (3) Origiin Newsletter

Unity of Invention: Indian Patent law perspective

As per Indian Patent

Law, one patent

application shall

relate to a single

invention. However, if more than one

inventions are to be claimed in single

application, it is necessary to establish

that the inventions so claimed have

unity and they form a single inventive

concept. The golden rule is that the

claim (s) of a complete specification shall

relate to a single invention, i.e. the

concept of unity of invention shall be

there.

According to Section 10 of the Patents

Act 1970, if claims refer to a group of

inventions, such inventions shall form a

single inventive concept. The claims

shall be clear and succinct and shall be

fairly based on the matter disclosed in

the specification and moreover, a single

inventive concept may be recognized

between independent claims of

different categories.

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ats new in this issue?

nthly statistics from Indian

ent Office June 2013

bsites

w.origiin.com w.origiinipa.com

gs iinipae.blogspot.com ntorshub.blogspot.com

tors a Kaliaira A

Painting courtesy Pranay Kukreja (6 years)

The invention comprising of a polymer,

process to prepare polymer and commercial

utility of polymer can be claimed in the

single patent application because even

though the invention has three main

components, all of them relate to a single

invention and have unity. On the other

hand, the invention relating to two

independent formulations used to treat

cancer and HIV/AIDS shall not be claimed in

a single patent application as both

formulations are independent of each other

and hence lack unity of invention.

The purpose of this requirement of unity of

invention is administrative, as well as

financial. That is, the requirement serves to

prevent the option of filing one patent

application for several inventions, while

paying only one set of fees, such as, fee for

filing application, examination, early

publication or annual renewal etc.

Moreover, the concept of unity of invention

also makes the technical classification

easier
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Under section 16 of the Indian Patents Act, 1970, if a

single patent application has been filed with more than

one invention and invention so claimed lacks unity, the

applicant may divide main application into divisional

application. However, the further application (divisional

application) and the complete specification

accompanying it shall be deemed to have been filed on

the date on which the first mentioned application had

been filed, and the further application shall be

proceeded with as a substantive application and be

examined when the request for examination is filed

within the prescribed period.

According to Section 10 of the Patents Act

1970, if claims refer to a group of

inventions, such inventions shall form a

single inventive concept. The claims shall be

clear and succinct and shall be fairly based

on the matter disclosed in the specification

and moreover, a single inventive concept

may be recognized between independent

claims of different categories.

However, during the process of examination of the

patent application, the examiner may also ask the

applicant to divide the application into two or more

applications and file divisional application. It is

interesting to note that both parent application and

divisional application will have the same priority date

though divisional application is often filed later than

parent application. For example:

Date of filing provisional application and priority date:

15th November 2006

Date of filing complete specification: 13th November

2007

Publication and examination of the patent application

takes place and the Controller raises the objection that

the invention lacks unity of invention and hence the

application shall be split into two applications i.e., main

parent application and divisional application. Here, the

date of filing divisional application will be 10th Jan 2009.

In such a case, both parent application and divisional

application will have priority date of 15th November

2006 even though the divisional application was filed

10th Jan 2009, which also mean that both parent

application and divisional application expire on the same

date irrespective of the date of filing.

A specification in respect of a divisional application under

section 16 shall contain specific reference to the number

of the original application from which the divisional

application is made. The request for examination in case

of divisional application shall be filed within 48 months

from the date of filing or priority of the parent

application or within six months from the date of filing

the divisional application, whichever expires later.

Request for divisional application shall be filed only after

filing request for the parent application to ensure the

requirement of section 16(3).

Moreover, the complete Specification of a divisional

application should not include any matter not in

substance disclosed in the complete specification of thefirst application. The reference of parent application

should be made in the body of the specification. A

divisional application has to be filed before the grant for

a parent application.

Though it sounds economical to club multiple inventions

together and file for a single application, it is logical to

follow the concept of unity of the invention and ensure

that separate applications are filed for each invention.

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Application) with a Paragraph IV Certification that seeks

FDA-marketing approval for DRL generic versions of

AbbVie's paricalcitol injection products prior to expiration

of the patents-in-suit. The US Drug maker requested the

court to pass an order to restrain DRL from commercially

manufacturing, using, offering for sale, selling, marketing,

distributing, or importing DRL's generic paricalcitol

injectable products prior to the expiration of said patents.

WIPO Treaty Boosting Access to Books for Blind and

Visually Impaired Persons

The Diplomatic Conference concluded successfully on

June 28 with the adoption of the Marrakesh Treaty toFacilitate Access to Published Works for Persons who are

Blind, Visually Impaired, or otherwise Print Disabled.

Around 600 delegates from among the 186 members of

the World Intellectual Property Organization (WIPO)

joined in the debate leading to the adoption of the treaty

in the Kingdom or Morocco, which hosted the Diplomatic

Conference to Conclude a Treaty to Facilitate Access to

Published Works by Visually Impaired Persons and

Persons with Print Disabilities.

The Marrakesh Treaty to Facilitate Access to Published

Works for Persons who are Blind, Visually Impaired, or

otherwise Print Disabled addresses the book famine by

requiring its contracting parties to adopt national law

provisions that permit the reproduction, distribution and

making available of published works in accessible formats

through limitations and exceptions to the rights of

copyright right holders. To the 300 million who are

visually disabled, this new treaty is a major step toward

access to the basics: such as works in formats such as

braille, large print text and audio books. On June 28,

2013, 51 member states signed the treaty and 129 signedthe final act of the treaty. Signing the treaty at the end of

a diplomatic conference does not necessarily bind a

country to its provisions.

IP NEWS BULLETIN

Patenting human genes

The US Supreme Court said that companies cannot

patent parts of naturally-occurring human genes. The

case concerned patents held by Myriad Genetics, an Utah

company, on genes that correlate with an increased risk

of hereditary breast and ovarian cancer. The patents

were challenged by scientists and doctors who said their

research and ability to help patients had been frustrated.

Myriad did not create anything, Justice Clarence

Thomas wrote for the court. To be sure, it found an

important and useful gene, but separating that gene fromits surrounding genetic material is not an act of

invention.

Apple Facing Patent Lawsuit over iPhone Features

USA based Bluebonnet Telecommunications has filed a

complaint against Apple, claiming that its iPhone

handsets infringe on a call-forwarding patent. Thecompany claims that Apple is infringing its patent,

number 5,485,511 (the 511 patent), which covers a

"method and apparatus for determining the telephony

features assigned to a telephone." when applied in the

iPhone 4S and iPhone 5 for a call-forwarding feature that

the smartphones offer. The lawsuit claims that the

infringing features within the iPhone "have no substantial

use other than infringing the 511 patent".

Dr Reddy's sued for 'infringement' of thyroid

injection patent

US-based drug maker AbbVie Inc, has dragged Dr Reddy's

Lab to court for allegedly infringing its patented drug

Zemplar, concerning three patents. According to a

petition filed by AbbVie, DRL committed an act of

infringement by filing an ANDA (Abbreviated New Drug

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4IMPORTANT NEWS FROM INDIAN PATENT

OFFICE (CGPDTM)

Draft Patent (Amendment) Rules, 2013 notified

Comments are invited and the details may be viewed at:

http://www.ipindia.nic.in/iponew/DraftRules_2013.pdf

Working of Patented inventions

CGPDTM publishes information received from Patentees

regarding working of Patented inventions in accordance

with section 146(3) of the Patents Act, 1970 read with

rule 131(3) of the Patents Rules, 2003 for the year 2012

(24 June, 2013).

http://ipindiaservices.gov.in/workingofpatents

First Examination Report

CGPDTM makes available a dynamic utility to view "The

Month of Request for Examination for which First

Examination Report is being issued" for each

examination group of all jurisdiction of Patent Office (17

June, 2013)

http://ipindiaservices.gov.in/rqstatus/

Madrid Protocol

Public Awareness Session about the India's accession to

the Madrid Protocol at Chennai, Ahmedabad, Kolkata,

Mumbai (20 June, 2013)

Draft guidelines for Computer related inventions

CGPDTM releases Draft guidelines for Computer related

inventions inviting public comments. Guidelines provide

clarity on key definitions, such as, invention, inventive

step, and industrial utility. Section 3 (k), 3 (l), (3 (m), 3 (n)

have been explained in detail. Commonly used terms,

such as, Computer

Computer Network, Computer System, Computer

related inventions, data, information, algorithm,

function, software, Computer Program, per se,

Firmware, Hardware, Embedded Systems, Technical

Effect, Technical advancement, Mathematical

methods, Business Methods.

Applications concerning Computer Related Inventions

(CRIs) broadly fall under the categories,

Method/process, Apparatus/system, Computer

readable medium, Computer program product. For

resolving the cases belonging to the claim category of

means plus function , the claims in means plus

function form are not be allowed if the structural

features of those means are not disclosed in the

specification.

Detailed procedure of examination of the computer

related patent application has been explained along

with case-laws which is extremely useful to the

attorneys and agents working in computer related

domain. Computer Related inventions in the field of

Bio-informatics/bio-technology have been explained

along with examples on methodology of dealing with

claims in the field of bio-informatics/bio-technology

concerning CRIs.

This document intends to achieve uniformity of

practice while dealing with patent applications

concerning CRIs. Illustrative examples and the flowchart for examination of these categories of

inventions will certainly prove to be effective tools

towards achieving the objectives. Further, the

examining division shall keep itself abreast with the

latest orders of CGPDTM and various judicial

pronouncements on the subject.

The comments may be sent by mail to

[email protected] till 19th July, 2013.

http://www.ipindia.nic.in/iponew/draft_Guidelines_C

RIs_28June2013.pdf
http://www.ipindia.nic.in/iponew/DraftRules_2013.pdfhttp://ipindiaservices.gov.in/workingofpatentshttp://ipindiaservices.gov.in/rqstatus/http://c/Users/Sony/AppData/Local/Microsoft/Windows/Temporary%20Internet%20Files/Content.Outlook/FGJE6EDE/[email protected]://c/Users/Sony/AppData/Local/Microsoft/Windows/Temporary%20Internet%20Files/Content.Outlook/FGJE6EDE/[email protected]://www.ipindia.nic.in/iponew/draft_Guidelines_CRIs_28June2013.pdfhttp://www.ipindia.nic.in/iponew/draft_Guidelines_CRIs_28June2013.pdfhttp://www.ipindia.nic.in/iponew/draft_Guidelines_CRIs_28June2013.pdfhttp://www.ipindia.nic.in/iponew/draft_Guidelines_CRIs_28June2013.pdfhttp://c/Users/Sony/AppData/Local/Microsoft/Windows/Temporary%20Internet%20Files/Content.Outlook/FGJE6EDE/[email protected]://ipindiaservices.gov.in/rqstatus/http://ipindiaservices.gov.in/workingofpatentshttp://www.ipindia.nic.in/iponew/DraftRules_2013.pdf


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MONTHLY STATISTICS FROM INDIAN PATENT OFFICE: JUNE 2013

Top 10 Patent Grantees in June 2013

In the month of June 2013, nearly 191 Patent have been granted by Patent office (all the branches of Patent

office, such as, Chennai, Mumbai, Kolkata and Delhi).

The top 10 patentees in the month of June 2013 are, Hindustan Unilever Limited, followed by Samsung India

Software Operations Private Limited, BASF SE, Council of Scientific & Industrial Research, LG Chem ltd, Bose

Corporation, GM Global Technology Operations Inc, LG Electronics Inc, Qualcomm Inc and Research in Motion

etc.

Branch wise distribution of granted patents

Comparison of granted patents among IPO branches indicates that maximum number of patents have beengranted by Delhi branch, followed by Chennai, Kolkata and Mumbai. However, number of PCT national phaseapplications is quite high compared to Non-PCT national phase applications in each branch office.

0

5

10

15

20

25

3035

40

45

50

Delhi Chennai Kolkata Mumbai

Branch wise distribution of Granted Patents

PCT-NP

Non PCT-NP N o : o

f

P a t e n t G r a n t e

d

Patent Office Branch


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IPC distribution of granted patents

Segregation of patents granted in the month of June 2013 on the basis of basic International Patent Classification

reveal that maximum patents have been granted in Class C (Chemistry; Metallurgy), followed by Class H

(Electricity), Class A (Human Necessities), Class B (Performing; Operations; Transporting).

INTERESTING PATENT OF THE MONTH

Frameless glasses attaching to

body piercing studs

Inventors: Rose, John (Susanville, CA)

Application Number: 10/199353

Publication Date: 05/06/2003

Filing Date: 07/18/2002

Abstract

A frameless glassware assembly attaching to body piercing studs. Design consisting of an elastomeric C-clipfixedly attached to one distal end of a metal arm, which is attached to a frameless glass lens assembly. Designallows for frameless eyeglass attachment to the eyebrow studs or to the nose studs of a user via the elastomericC-clip. One embodiment allows the frameless glassware to attach to eyebrow studs and the second allows theframeless glassware to attach to a nose stud. Both designs are frameless and avoid side wire earpieces commonto hold glassware to the face of a user.

Main claim1. In combination with a body piercing eyebrow studs, a left stud fastened outbound on a left eyebrow, and aright stud fastened outbound on a right eyebrow, an improvement comprising: a left eyeglass member having aC shaped clamp fastened to an outbound section of the eyeglass member; a right eyeglass member having a Cshaped clamp fastened to an outbound section of the eyeglass member; a connecting bridge joining the left tothe right eyeglass member; and; wherein each C shaped clamp snaps onto the respective left or right stud.

01020304050607080

IPC CODE

Count of IPC CODE


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All i h d ( ) O i ii S l i 2013

Certificate course on Patent Specification Drafting

Origiin IP Academy launches Certificate course on Patent Specification Drafting . Drafting patent specification is anart, wherein it is critical to identify elements to be claimed, drafting specification and claims, segregating elements tobe claimed carefully in comparison to the prior art.

We at Origiin have developed course on patent specification drafting that covers topic such as anatomy of patent,drafting provisional and non-provisional specification, preparing drawings etc.

This course can be taken up by the candidates keen to pursue career in IPR as well as the candidates preparing forIndian Patent Agent Examination.

Duration: 30 hr (contact class 15 hr, project 15 hr)Dates: 3rd (Saturday), 4th (Sunday) and 10th (Saturday) August 2013

Eligibility: Candidate shall be at least Bachelor in science such as BE, B.Tech., B.Sc.

Who should join?: The course is useful to any person keen to pursue career in IPR, fresh students as well as workingIP Professionals who want to enhance skills and experience in performing various kinds of patent searches.

How to register: Download the registration form from www.origiinipa.com and send us the filled form along withpayment to register.

Venue: Origiin IP Academy#35, First Main, Vysya Bank Colony, BTM 2nd stage, Bangalore-560076Mobile: +91-98456 93459, +91- 98802 13204

Website : http://www.origiinipa.com

Email : [email protected], [email protected]

Our other certificate courses1. Patentability search2. Clearance search3. Technology Landscape analysis4. Invalidation/validation search5. IP audit and commercialization (coming soon)

Disclaimer : The purpose of this Origiin newsletter is for providing general information to the readers on IPR & is not

intended as a substitute for professional consultation and advice in a particular matter. For specific issues, kindly seek legal assistance. The IP News and IPO statistics have been compiled from the information available in public domainsand Origiin is not as such, responsible for any error, omission, and mistake or misfiled particulars contained or omitted

from the said records. Column in the Newsletter is based on authors experience in the area of IPR and views reflected in column are purely of the authors. Please mail us at [email protected] for your valuable feedback/comments.
http://www.origiinipa.com/http://www.origiinipa.com/mailto:[email protected]:[email protected]:[email protected]:[email protected]:[email protected]:[email protected]:[email protected]:[email protected]://www.origiinipa.com/http://www.origiinipa.com/

origiin newsletter july 2013

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