The e Book on Ip by Dr.manjula Sandirigama

ii

INTELLECTUAL PROPERTY: A Quick Guide for Scientists and Technologists Manjula Sandirigama

ii

Reviews “One ingredient for a successful IP system is education. Individual engineers, scientists and other innovators need to know how the IP system works. In this way, individual innovators can learn how to use the IP system to their own benefit and ensure they are properly rewarded for their contributions. Properly done, everyone benefits as individual innovative contributions eventually fall into the public domain for everyone’s use. To that end, this work provides an important underpinning of the IP system. It goes a long way to achieving the important goal of teaching how the IP system works on a practical, day-to-day level that is accessible to individual innovators, without hiding behind the sometimes lofty world of law. Well done. I hope you enjoy reading this as much as I have.” T. Andrew Currier, BSEE, LLB, P.Eng., Barrister and Solicitor (Ontario), Patent Agent, Trademark Agent, co-author with Stephen Perry of the forthcoming textbook ‘Canadian Patent Law’ from Butterworths. “This is an admirable effort to educate engineers in the ways of intellectual property, in an accessible and understandable way.” Conor McCourt, J.D., Canada “At the present stage of development, knowledge on the IP systems becomes important as new innovations and findings of individuals and organizations become commercially attractive and valuable. It is the IP rights that give the proper incentive for them to go on with more and more new creations. In this context, it is timely that a textbook be available for the education of IP aspects. This book will shed light on these relevant areas for all sectors of society, including scientists, technologists, innovators and even the ordinary citizens. The book covers most of the aspects that are of importance to students on IP systems. I congratulate the author and would like to share this valuable information with everyone.” Sarath Seneviratne, Senior Lecturer in Mechanical Engineering, University of Peradeniya, Sri Lanka

iii

About the Book This book is the outcome of my teaching Intellectual Property (IP) for engineering undergraduates in the Faculty of Engineering, University of Peradenya and some other universities and institutes in Sri Lanka. The teaching to them necessitated a text book which they could use during the conduct of the course and thereafter as a regular quick reference. The intended target group obviously are the science and technology undergraduates, but anyone who wish to get an overall picture of IP, their protection, and how IP systems work will find this a very useful reference. The book covers all the areas from conceptual ideas to commercialization of such conceptual ideas. Simplicity is my philosophy, even in teaching. The facts are presented with simplicity in terms of contents and language as I strongly believe the science and technology personnel and innovators who make the world comfortable for everyone should know their rights in simple terms without seeking advice in lofty world of law, as mentioned by a reviewer. Wish you an enjoyable and informative reading.

iv

Acknowledgments The students, by and large, have been the greatest driving force in writing this text. I thank them for making a platform for practicing and furthering my knowledge. Roshan Ragel, my colleague at my department who himself is an author, gave his valuable comments very promptly and in detail on the initial draft. I thank him for building my confidence in completing the work, and doing the final proofreading before publication. I also wish to thank the reviewers Andrew Currier, Conor McCourt, Sarath Senevratne and Asanka Perera for giving valuable reviews and comments. I thank Amila Wijeratne for formatting the cover page and the figures in the text. Last not but least, my gratitude to my wife Anoma for encouraging me to get the best use of my knowledge and capabilities and being with me when things go wrong. Manjula Sandirigama

PhD, M.Sc., B.Sc.in Engineering, Attorney-at-Law (Sri Lanka) Senior Lecturer, Department of Computer Engineering, University of Peradeniya, Sri Lanka IP Consultant

To my mother and father who encouraged me in my studies

Contents 1

Intellectual Prop erty

1.1 1.2

2

Introdu oduction to Intellectual Proper perty (IP) . Protection of IP Rights . . . . . . . . . . . 1.2.1 The Need for Protecting IP Rights . 1.2.2 Title Deeds of Intellectual Proper perty

. . . .

. . . .

. . . .

. . . .

. . . .

Different Types of IP and Their Protection

2.1 2.2 2.3 2.4 2.5 2.5 2.6 2.7 3

5

Patents . . . . . . . . . . . . . . . . . Copyrights . . . . . . . . . . . . . . . Trademarks . . . . . . . . . . . . . . . Industrial Designs . . . . . . . . . . . ICT (Inte Integ grat rated Circu ircuit it Topogr pograaphie phiess) Geographical Indications . . . . . . . . Proprietary Databases . . . . . . . . .

. . . . . . .

. . . . . . .

. . . . . . .

11

. . . . . . .

. . . . . . .

. . . . . . .

. . . . . . .

. . . . . . .

Patents

3.1 3.2 3.3 3.3 3.4 3.5

5 7 7 8

11 12 13 13 14 14 15 17

The Meaning of a Patent . . . . . . . . . . . The Duration of a Patent Validity . . . . . . The The Effec Effecti tiv ve Geog Geogra raph phy y of a Paten atentt Valid alidit ity y Patents Vs. Tr Trade Secrets . . . . . . . . . . . Commercialization . . . . . . . . . . . . . . . 1

. . . . .

. . . . .

. . . . .

. . . . .

17 19 19 20 21

2 4

Acquiring Patent Rights

4.1 4.2 4.3 4.4

5

5.4

Patentable Subje bject Matter . . . . . . . . . . . Sufficient Disclosure of the Invention . . . . . Patent - An Inventive Subje bject Matter . . . . Patentability Testing . . . . . . . . . . . . . . 4.4.1 Paten Patentabi tabilit lity y requireme requirement nt case study: study: Beloit Vs. V Va almet Oy . . . . . . . . .

. . . .

. . . .

. . . .

. . . .

23 25 25 26

. . . .

28 31

The The Me Mean anin ing g and and the the Ne Need ed of Prio Priorr Art Art Sear Searcches hes . . 31 Scope of Prior Art Search . . . . . . . . . . . . . . . 32 Prior Art Search on Patent Databases . . . . . . . . 33 5.3. 5.3.1 1 Prio Priorr Art Art Sear Searcch on Onli Online ne Paten atentt Data Databa base sess 34 5.3.2 Prior Art Search: An An example . . . . . . . . 36 Different Types pes of Prior Art Searches . . . . . . . . . 40 5.4.1 Name Search . . . . . . . . . . . . . . . . . . 41 5.4.2 State of the Art Searches . . . . . . . . . . . 41 5.4.3 Technological Activity Search . . . . . . . . . 41 5.4.4 Legal Status Search . . . . . . . . . . . . . . 41 5.4.5 Infringem Infringemen entt Search Search (Freed (Freedom om to Operate Operate Search Search)) 42 5.4.6 Patentability Search . . . . . . . . . . . . . . 42

Patent Drafting

6.1

7

23

Patent Prior Art Searches

5.1 5.1 5.2 5.3

6

CONTENTS

Structure of a Patent 6.1.1 Title . . . . . 6.1.2 Abstract . . . 6.1.3 Description . 6.1.4 Claims . . . .

43

. . . . .

. . . . .

. . . . .

. . . . .

. . . . .

. . . . .

. . . . .

. . . . .

. . . . .

. . . . .

. . . . .

. . . . .

. . . . .

. . . . .

. . . . .

. . . . .

. . . . .

. . . . .

43 44 44 46 48

Application for a Patent

59

7.1 7.2

60 61

Making a Local Application . . . . . . . . . . . . . . Making a Foreign Application . . . . . . . . . . . . .

3

CONTENTS 8

Patent Examination and Granting Pro cess

8.1 8.2 8.3 8.4 9

Revision of Applications . . . . . . . . Examination of Applications . . . . . Patent Maintenance Fees . . . . . . . . Appea peals Against Examiners’ Decisions

. . . .

. . . .

. . . .

65

. . . .

. . . .

. . . .

. . . .

. . . .

Post Patent Issues

9.1

9.2

Commercialization . . . . . 9.1.1 Exploitation . . . . . 9.1.2 Assignment . . . . . 9.1.3 Licensing . . . . . . Potential Legal Implications

65 67 68 68 71

. . . . .

. . . . .

. . . . .

. . . . .

. . . . .

. . . . .

. . . . .

. . . . .

. . . . .

. . . . .

. . . . .

. . . . .

. . . . .

. . . . .

10 A Sample Patent

10.1 US Patent 7,161,651 . . . . . . . . . . . . . . . . . . 10.1.1 10.1 .1 Title: Title: Method Method of resiz resizing ing a liquid liquid crysta crystall displa display y 10.1.2 Bibliographical Data . . . . . . . . . . . . . . 10.1.3 Abstract . . . . . . . . . . . . . . . . . . . . . 10.1.4 Claims . . . . . . . . . . . . . . . . . . . . . . 10.1.5 Description . . . . . . . . . . . . . . . . . . .

72 72 73 74 76 79

79 79 79 79 80 81

4

CONTENTS

Chapter 1

Intellectual Property 1.1

Introduction to Intellectual Property (IP)

People own different kinds of property. Conventionally, such properties have a value in their physical characteristics. Examples of such properties are lands, buildings, vehicles, houses, furniture etc.. Traditionally, those properties are divided into two categories, namely, movable and immovable. Immovable properties mean that their location cannot be moved. Examples are lands and building. The locations of movable properties could be changed as desired. Examples are vehicles, furniture etc.. There is another categorization of property, namely tangible and intangible properties. Tangible properties mean that the property, movable or immovable, that can be touched and felt. All the conventional movable or immovable properties fall into this category. Intangible properties, on the other hand, are the properties that cannot be touched and felt. Intellectual property falls into the intangible category. The value of such property is not generally in their physical characteristics but in the creativity and innovativeness one 5

6

CHAPTER 1. INTELLECTUAL PROPERTY

has put into the creation of such properties. A key characteristic of intellectual property is that such properties were not in existence before the creation or they are not made by already known processes. WIPO (World Intellectual Property Organization) defines intellectual property as creations of mind: inventions, literally work, marks, symbols, designs etc.. Another key characteristic of intellectual property is that the property is just an idea of creation, and there is no tangible value in them. For example, when we buy a book, there is tangible value in the amount of papers which is not significant; more value is in what is written in the book. When we buy a car, if we consider the tangible value, it is in the amount of steel and plastic which is not very significant; more value is in the mechanisms of driving, electronic fuel system, anti-lock brake system all of which are ideas of creation of someone. When we pay for a book or car, we mostly pay for the intangible idea in them which are intellectual property. We may buy books or cars for our use but we cannot copy and make them for our own commercializations. The creator is protected by governments by offering the creator what are known as intellectual property rights. Once Intellectual property rights are given to someone, others cannot break them meaning that others cannot use the same idea to produce duplicates, and if they do, the creator can take legal action and claim compensation. As obvious, these intellectual property rights are negative, in the sense that it excludes others from doing something – copying in case of intellectual property. Just like people could claim traditional properties of their own by possessing a document like a deed, ownership certificate, intellectual property also can be owned by possessing a special document which will be described later. Ownership of traditional properties are perpetual subject to a way of disposal such as a sale or transfer, but ownership of intellectual property is generally limited for some time, and intellectual property could also be disposed by way of sale or transfer. The reason of such limited ownership will be discussed later.

1.2. PROTECTION OF IP RIGHTS

7

It is important to mention a word about the difference of a (new) creation and a discovery. Both discoveries and new creations are new revelations to the world, but if the new revelation is something that has been existing in the nature, it is a mere discovery. For something to be a new creation, a new feature has to be added to the existing thing so that it is made something that has not been existing in the nature. For an example, if a scientist finds a new bacteria, it is a mere discovery, but after the discovery, if he adds his knowledge and skill to make the bacteria usable to treat some disease, then there is a new creation and he could claim intellectual property rights for it. In the technologically advanced world of today which is growing by leaps and bounds, IP rights play a major role and it is very essential for science and technology students to know what their IP rights are when they do research and development. Although the key players of intellectual property are scientists and technologists, like in other properties, regulation of intellectual property rights is looked after by the legal system. The next chapter describes different types of intellectual property and how such properties are protected.

1.2 1.2.1

Protection of IP Rights The Need for Protecting IP Rights

It is a reasonable question to ask by a novice why we need to protect IP rights. The simple answer is all what we enjoy today – food, medicine, transport, communication, entertainment – are available to us because there has been protection of IP rights. What does this mean? Creation of Intellectual Property consumes considerable amount of time and money. Somebody has to develop his ideas by way of research or otherwise to make his idea into a product, process, or a piece of literature. In fact, the amount of time and money may far exceed the amount of time and money one has to spend to acquire

8


a physical property such as a land or a building. For example, to develop a medicine, one has to do several years of research that costs lot of time and money. To write a book, one may have to spend several years. After the research is done or the book is written, they become known to the public, and if there is no protection by the system of the country to protect the ownership rights of the people who spent their time and money on this work, others will simply copy it and they will try to make money from those research work or books. Consequently, people will not feel secure and they will lose their motivation to do research or to produce literally work. There will be no progress in the society then, and we wouldn’t have had the comforts and entertainment that we enjoy today. When the protection is given for the new revelations in exchange of revealing the knowledge, the revealer will reveal his/her knowledge, and the society can use the same knowledge to make improvements. All what we enjoy today have been improvements of what had been exiting in the past.

1.2.2

Title Deeds of Intellectual Property

As we know, conventional property ownerships are guaranteed by deeds or ownership certificates. If the property is a land or a building, the ownership is protected by a deed of ownership, or a rental/lease agreement in case of temporary ownership. If it is a vehicle, the ownership is protected by a ownership certificate, or a rent or a lease agreement in case of temporary ownership. If the property is furniture, electronic equipment etc., the ownership is guaranteed by the receipt of the payment made at the time of the purchase. Similarly, intellectual property also has a title document (like a deed, and ownership certificate) that protects the ownership. Different types of intellectual property have different kinds of ownership certificates. In the next chapter, such ownership documents are described after providing a brief description of what different kinds of intellectual

1.2. PROTECTION OF IP RIGHTS

9

properties are, namely patents, copyrights, trademarks, Integrated Circuit (IC) topographies, geographical locations and proprietary databases.

10


Chapter 2

Different Types of IP and Their Protection 2.1

Patents

Patents are the intellectual property rights granted by the state for inventions. An invention means a creation of a new product or a process that has not been known to the public or has not been in existence in the nature. Simple examples of such product inventions are a pen, a tool, a machine, a medicine etc.. Examples of such process inventions are extraction of salt from sea water, process of manufacturing a drug, a process of making a tool etc.. There can be some inventions which fall into both product and process inventions like making a drug. The process as well as the product are inventions. When we buy such a product, we not only pay for the mere physical value of them, but also for the creativity that is embedded in the product. For example, when we buy an electronic equipment, the physical value may be very low, but the purchase price is determined by the added value for the creativity and innovativeness of putting 11

12CHAPTER 2. DIFFERENT TYPES OF IP AND THEIR PROTECTION the electronic elements together. Such inventive ideas are protected by a document known as a patent. A patent is granted on application. Detailed descriptions of patents will be covered in the later part of the book. To get a patent right, one must make an application to the relevant national office, and the right is given for a limited period of time, generally 15-20 years depending on the legal provisions of the relevant country. Trade secrets, which are also inventions, have similarities as well as differences compared to patents. They will be described when patents are discussed in a following chapter.

2.2

Copyrights

Copyright is an ownership right one gets when a literary work is done. The literary work does not merely mean a writing. There is a wide range of literary work, both conventional and modern. Conventional copyrights include writings (novels, poems, technical literature etc.) and other literary works such as paintings, sculpture, carvings, plays, and dramas. Modern copyrights include electromagnetic signals (television signals, radio signals etc.), music and movie disks and computer programs. (Note that computer programs fall both into patents and copyrights. The method of the solution in the program is the patentable part whereas the program alone is the copyrightable part.) Copyright simply means that the right of copying is restricted and unauthorized copying is prohibited. Most of you may have noc or the phrase “Copy Rights ticed this right on the book by seeing  Reserved”. There is what is known as the “Fair Use” of copyrighted material. This means that one can copy copyrighted material for mere personal, educational or research work. Fair Use prohibits the copying of the material for commercial use. Unlike patents, copyright is gained by mere creation of the work

2.3. TRADEMARKS

13

and one does not need to make a special application to the national office. However, by registering such work in the relevant national office, one could get a stronger legal claim for the work, specifically in case of a dispute. According to Berne convention, for which most countries are signatories, copyright is limited to 50 years after the death of the author.

2.3

Trademarks

Trademark is a design of a word, an image or a combination of them that is used to distinguish a product or a service of one person/company from that of another. Such marks are useful marketing tools because the customers always want to buy dependable products or services that have a good track record, and a trade mark is a unique identification of such track records. Unlike patents and like copyrights, to get protection, trademarks need not necessarily be registered in the national office. The mere prolonged usage is sufficient to establish ownership to a trademark. However, like copyrights, by registering trademarks in the relevant national office, one could get a stronger legal claim for it, specifically in case of a dispute. Such registrations are valid for a certain period (for example, it is 15 years in Canada) and renewable. Registered trademarks carry the symbol "R" whereas unregistered trademarks carry the symbol “TM”. Examples of such marks are Bata, TATA, Coca Cola, KFC (Kentucky Fried Chicken), Toyota etc..

2.4

Industrial Designs

An industrial design means the exterior outlook of an article, product, billboard or even a building. The exterior outlook may be the shape, pattern, configuration or a combination of these features. The

14CHAPTER 2. DIFFERENT TYPES OF IP AND THEIR PROTECTION subject design is a tangible object and could range from a shape of a tool to a shape of an automobile. For example, different car manufactures own industrial propriety rights for the shape of the car they have designed. A certificate of ownership of the design could be obtained from the national intellectual property office on application.

2.5

ICT (Integrated Circuit Topographies)

This is a recent addition to intellectual properties. Integrated circuit is a layout of enormous amount of electronic components inside what is known as a chip. These components are combined to form a circuit that does a specific function, Under Integrated Circuit Topography category, these circuits can be owned by the designers. A certificate of ownership of the circuit topography could be obtained from the national intellectual property office on application

2.6

Geographical Indications

This is also a recent addition to intellectual property where as the manufacturer of some products could attribute a geographical location to them to increase the value of the product. For example, wines made in specific geographical locations are better than other locations of manufacture due to climate and the method of manufacture, so the manufacturers can attribute different geographical location to wines, such as French wine. Another example is Ceylon Tea which where a value addition is done by the word "Ceylon" to tea, and nobody in any other country could make Ceylon Tea. A certificate of ownership of the geographical location could be obtained from the national intellectual property office on application

2.7. PROPRIETARY DATABASES

2.7

15

Proprietary Databases

This is a very recent addition to intellectual property. As the information technology developed over the last few decades, data has become an integral and important part of information technology systems. People and companies spend enormous amount of time to collect, process and compile such data. The data could range from the names and addresses of customers to geographical information systems. Developers of such data have an intellectual property right to them. The Rest of the Book

In the following chapters of the book, intellectual property rights relating to patents are discussed.

16CHAPTER 2. DIFFERENT TYPES OF IP AND THEIR PROTECTION

Chapter 3

Patents For scientists and technologists, what is of importance is patents – intellectual property rights for inventions. The aim of this book is to give a basic understanding of patents, patent application and granting process, and post patent implications for scientists and technologists. From here onwards, intellectual property rights relating to patents will be discussed.

3.1

The Meaning of a Patent

A patent is a document that is given by the government endorsing the inventorship of an invention. An invention is defined by patent laws of different countries. The following are some of them: Sri Lanka: Intellectual Property Act No. 36 of 2003 62. (1) For the purposes of this Part, “invention” means an idea of an inventor which permits in practice the solution to a specific problem in the field of technology. (2) An invention may be, or may relate to, a product or process. 17

18

CHAPTER 3. PATENTS

India: Patent Act 1970 S(2) "invention" means any new and useful art, process, method or manner of manufacture; machine, apparatus or other article; substance produced by manufacture USA: Consolidated Patent Laws Invention is defined as any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof Canada: Patent Act S(2) "invention" means any new and useful art, process, machine, manufacture or composition of matter, or any new and useful improvement in any art, process, machine, manufacture or composition of matter Irrespective of the different definitions of inventions by different legal systems, there are some universal key elements that are necessary for a revelation to be an invention. They will be discussed in a later section. If the revelation satisfy those criteria, the person who revealed it can get a patent right to it. The patent is similar to a deed of a conventional property. Just like a deed describes the biographical data (name, address etc.) and the description/ boundary of land or a building, a patent describes the biographical data of the invention, description of the invention and the boundary of the invention (known as the claims that will be described in detail later in the book). By possessing the patent, one could prove the ownership of the invention. Once the patent is granted, the knowledge involved in the invention becomes a public property. This does not mean that the public can copy the invention. It only means that the knowledge is known. In fact, after some period (the duration of the patent), anybody can use the knowledge to make the same product, or use the knowledge to make improvements before the patent is expired. The idea of

3.2. THE DURATION OF A PATENT VALIDITY

19

granting the patent is the revealing of the knowledge to the public for the betterment of the society. Thus, a patent can be regarded as a bargain between the state/ society and the inventor. A bargain literally means that two parties compromise on something. The bargain involved in a patent is that the state/ society gives protection of IP rights to the inventor in exchange of his knowledge to be used for the betterment of the society.

3.2

The Duration of a Patent Validity

Unlike conventional property which are owned indefinitely subject to alienation by sale or otherwise, patent rights are limited for a specific period of time. The reason for this limit is that, if there is no limit, the inventors could own it indefinitely like conventional property, and there is no opportunity for the public to use the knowledge to make the product for ever or even to add improvements to the base product. It then becomes an unfair monopoly to the inventor, and consequently there is no transfer of knowledge to the society. The validity of a patent, therefore, is limited to specific period of time. This period varies depending on the county but in most countries, it is 20 years.

3.3

The Effective Geography of a Patent Validity

Patent validly is limited to countries where patent applications are made, and subsequently granted. There is nothing called an international patent, and one must apply in separate countries if they wish to obtain patent rights in those countries. There are however a patent application mechanisms known as Paris Convention and PCT (Patent Cooperation Treaty administered by WIPO - World Intellectual Property Organization) to facilitate patent application

20

CHAPTER 3. PATENTS

in multiple countries. Those systems will be discussed in detail in later chapters. In spite of the fact that there is nothing called an international patent and the effective geography of a patent is local, to obtain patent in any country, the invention should be an invention internationally meaning that the invention should be first in the world. This fact will be discussed in the patentability requirement section.

3.4

Patents Vs. Trade Secrets

Finally, it is worth mentioning what trade secrets are. Trade secrets could be new revelations or not, but it is another way of monopolizing knowledge. While a patent gives a protected monopoly by the state for a definite period of time, one can also keep the monopoly by keeping the knowledge as a secret, and they are known as Trade Secrets. Obviously, secrets maybe kept for ever, and if so, the monopoly can be eternal. However, there is no guaranteed protection for trade secrets by the state, so if the secret leaks out by some chance – by breaching a confidentiality agreement by an employee – the secret will be known by the public and there is no redress given to the holder of the secret by the courts. However, one can ask for damages if the secret was made public by a breach of contract, but that will be a civil law suit between the secret holder and the breacher and the compensation may be minimal. In contrast, when a patent is granted, a limited time monopoly is granted by the state in exchange of knowledge that other people can use after the expiry of the patent term. A good example of a trade secret is the recipe of Coca Cola, so no one will ever be able to make identical Coca Cola unless and until the trade secret is leaked out by someone. That is very unlikely to happen since no one may know the complete composition of ingredients.

3.5. COMMERCIALIZATION

3.5

21

Commercialization

The purpose of an ownership is to get some return on investment. This is true with intellectual property too. Once the patent is granted, the inventor has to make a profit from his invention. Government will not do it for him, and all what the government does is give the inventor a right to exclude others from copying and making duplicates. The inventor himself has to find ways to make a profit and it is called commercialization of patents and will be discussed towards the end of the book.

22

CHAPTER 3. PATENTS

Chapter 4

Acquiring Patent Rights To get a patent, the new revelation should satisfy some requirements. Despite the fact this requirements are defined with slight variations by different countries’ legislation, the requirements are uniform as described below. 1. The revelation should be a patentable subject matter. 2. The revealer should provide sufficient information so that public will know all about it. 3. The revelation should be an invention. The following discussion of the above mentioned requirements are based on Sri Lanka National Intellectual Property Act (2003) but as mentioned above, these are uniform requirements in all the countries.

4.1

Patentable Subject Matter

Patentable subject matters are defined in every country’s national legislation. Generally, patentable subject matters are defined negatively, meaning that what is defined is the subject matters that are not patentable. So if the new revelation is not falling into the 23

24

CHAPTER 4. ACQUIRING PATENT RIGHTS

defined categories, then the subject matter is presumed patentable. Though all the countries’ legislations are not worded in exact wordings, they are almost the same. According to section 62(3) of Sri Lanka National Intellectual Property Act, the following subject matters are not patentable. 62. (3) The following, notwithstanding they are inventions within the meaning of subsection (1), shall not be patentable (a) discoveries, scientific theories and mathematical methods ; (b) plants, animals and other micro organism other than transgenic micro organism and an essentially biological process for the production of plants and animals other than non-biological and microbiological processes : Provided however, that a patent granted in respect of microorganisms shall be subject to the provisions of this Act; (c) schemes, rules, or methods for doing business, performing purely mental acts or playing games ; (d) methods for the treatment of the human or animal body by surgery or therapy, and diagnostic methods practiced on the human or animal body : Provided however, any product used in any such method shall be patentable; (e) an invention which is useful in the utilization of special nuclear material or atomic energy in an atomic weapon ; (f) any invention, the prevention within Sri Lanka of the commercial exploitation of which is necessary to protect the public order, morality including the protection of human, animal or plant life or health or the avoidance of serious prejudice to the environment.

4.2. SUFFICIENT DISCLOSURE OF THE INVENTION

25

Similar or the same provisions exist in other jurisdictions and an interested reader may verify them by referring to them. There are reasons why these subject matters are not patentable, but such explanations are beyond the scope of this book.

4.2

Sufficient Disclosure of the Invention

A mentioned earlier, the whole idea of grating patent rights by the state to individual is the dissemination of knowledge to the society for it’s betterment. In this light, it is necessary that the patent document describes the invention in full with sufficient details so that someone could make the same product after reading the document. This does not mean that people can copy what is in the document during the validity of the patent. In fact, after the expiry of the patents, others can copy it exactly, and this is what is done by generic drug manufacturers. They wait until the patent is expired, and as soon as it is expired, they make copies. During the validity of the patent too, people can use the knowledge by way of making improvements to what is mentioned in the revelation, and if the improvement is not obvious, as will be explained in subsequent sections, the improvement can be patented.

4.3

Patent - An Inventive Subject Matter

There are 3 core requirements for a revelation to be inventive. These are also defined and described in national legislations. The words used in different legislation vary slightly, but they are uniform and same in terms of their meaning. What constitutes inventions, according to section 63 of Sri Lankan National Intellectual Property Act, are the revelations satisfying the following three requirements: 63. An invention is patentable if it is new, involves an inventive step and is industrially applicable.

26


They are described in the act as follows: 64. (1) An invention is new if it is not anticipated by prior art. 65. An invention shall be considered as involving an inventive step if, having regard to the prior art relevant to the patent application claiming the invention, such inventive step would not have been obvious to a person having ordinary skill in the art. 66. An invention shall be considered industrially applicable if it can be made or used in any kind of industry. These requirements are explained by using an example in the following section. Synonyms used by other legislations are novelty, non-anticipation (for new), non-obviousness, inventiveness (for inventive step), and utility, usefulness (for industrial applicability) and as mentioned above, their meanings are the same.

4.4

Patentability Testing

Having described the patentability criteria, it is now possible to explain patentability testing. When a patent is applied by someone, patent examiners in the national intellectual property office carry out these tests to ascertain that the revelation is patentable. Even the inventors who apply for patents do these tests in order to make sure that their revelation is patentable because patent application to granting process is quite expensive and people want to make sure, to the best of their reach to knowledge, that they will not loose the money by a patent rejection by an examiner in the examination process. Firstly, one has to make sure that the revelation does not fall into subject matter that are not patentable. After doing so, it should be obvious at the end of the reading of the document, that the

4.4. PATENTABILITY TESTING

27

revelation is described in full with sufficient details. These are two straightforward requirements. The core requirements test has to be done next. The most straightforward core requirement is utility or industrial applicability. What this means is that the revelation should have some use. Mere ideas are therefore not patentable. In fact, a patent examiner is allowed to ask the inventor for a prototype in the examination process if the examiner does not feel that the revelation is practical and has some use. The next requirement is the novelty (new, non-anticipatory) requirement. This simply means that the revelation should be new meaning that it has to be the first in the word. People cannot get a patent for what was existing before even if no one has claimed patent rights for them. To ascertain novelty, the inventors and examiners have to do what is known as a prior art search (described later). By doing a prior art search, all the related knowledge (patent literature, scientific journals, newspaper articles, exhibitions, product launches, and in short whatever that was in the public domain – known to the public) is researched. After the research, it should be clear that the revelation is not already known. This is not very straightforward but somewhat an easier to decide requirement than the non-obviousness requirement described in the next paragraph. Non obviousness or inventiveness is the most complicated and difficult to decide requirement. As obvious, most of the things that are in use today are not totally new, but they are improvements of earlier products and knowledge. So when an improvement is done to what has been known, it is new because it was not earlier there but the question arise whether the improvement made is significant enough to warrant a patent. For example, there maybe a product already in use which is made in some shape, and if another product is made with a different shape, is the new one patentable? The answer is No and Yes. It is not patentable if the new shape does not serve a particular purpose which was foreseen by the earlier inventor, and it is patentable if it serves a purpose unforeseen or over sighted by the earlier invention. For example, the new shape maybe a shape where

28


a user has easy operability that make the product more marketable. Similarly, a drug which has been patented to cure a certain disease can be patented again for curing another disease. In legal jargon, this requirement is described as "not being obvious" to a person skilled in the art. (Skilled in the art means that there is basic knowledge of the sciences encompassing the subject matter.) The decision of this test is subjective and is the main cause of patent invalidating, which will be described later. A legal case study in the following section gives a better understanding of novelty, and non obviousness requirement.

4.4.1

Patentability requirement case study: Beloit Vs. Valmet Oy

This was a legal case based on a dispute of two parties Beloit (herein after called A) and Valmet Oy (herein after called B) in Canada. The case involved both novelty and non-obviousness issues. The following is the background of the case. The case was with regard to a press section of a paper manufacturing machine. The paper manufacturing process basically involves four stages as follows: Making a slurry Pressing the slurry Pulling the pressed slurry Drying the pressed slurry The economy of production greatly depends on the pressing stage where the water in the slurry is removed. An efficiency of the pressing make the pulling stage faster thereby increasing the productivity. In this case, both A and B had invented two different pressing mechanisms and both of them obtained patent right to their respective invention. At a later stage, the party which invented the pressing stage first (party A) tried to invalidate the patent right of

4.4. PATENTABILITY TESTING

29

B (who invented the second mechanism) on the ground of novelty and obviousness.

The pressing is achieved by rotating rollers through which the wet slurry passes through. The above figure depicts the mechanisms of pressing stages of A and B. The mechanism of party A (labeled as prior art: bi-nip) has three rollers that provides two pressing stages while the mechanism of party B (labeled as claimed invention: tri-nip) has four rollers providing three pressing stages. The additional pressing stage in B’s machine makes the pulling process faster thereby increasing the productivity. Both A and B got patent rights to their respective mechanisms. Eventually, B’s machine became more marketable, and then A sued B alleging that B was infringing on the patent rights of A in consequent to their argument that B’s mechanism was not inventive on the grounds of novelty and obviousness thereby saying that B’s patent was invalid. The case was argued in Canadian courts of law. At the trial, the trial court judge took the arguments of B citing that a mere addition of a roller in an obvious improvement anybody

30


could do. The judge also took the view that it is not even novel because there was enough literature published by different parties that the manufacturing process can be made faster by faster pressing. B then appealed against the decision of the trial court judge. The appeal court judge reversed the decision of the trail court judge and stated that B’s invention with an additional roller was also inventive. The argument of the judge with regard to the novelty of the invention was that if one makes a machine by referring to different existing inventions and literature, the composite machine can still be inventive (in terms of novelty) and just because that the composite invention is composed of already patented inventions, the composite invention cannot be invalidated on the grounds of novelty. The appeal judge’s argument with regard to the obviousness was that even if it was true that it was a mere addition of another roller, but that addition made the machine more productive (about 25 pc increase of production speed) and the machine became a market success. If it were very obvious to those skilled in the art, why wasn’t it that someone else did it before. Along these arguments, the appeal court judge stated that B’s patent was also valid and there was no infringement of A’s patent rights. The gist of the case is that novelty and obviousness do not have straightforward answers, and they are subjective decisions and the decision has to be made after considering all the encompassing facts and wisdom. With this knowledge, it is possible to study another important area of IP known as prior art search.

Chapter 5

Patent Prior Art Searches 5.1

The Meaning and the Need of Prior Art Searches

It is clear from the previous chapter that it is necessary to look at the previous work done with respect to a revelation when deciding its’ patentability. Previous work in intellectual property jargon is known as prior art. Prior art search hence means the search of previous work. There are different types of prior art searches one could perform for various purposes, and the discussion on them will be done at the end of this chapter. Prior art is defined in Sri Lanka National Intellectual Property Act as follows: 64. (1) An invention is new if it is not anticipated by prior art. (2) Prior art shall consist of 31

32

CHAPTER 5. PATENT PRIOR ART SEARCHES

(a) everything disclosed to the public, anywhere in the world, by written publication, oral disclosure, use or in any other way, prior to the filing or, where appropriate, priority date of the patent application claiming the invention ; (b) the contents of patent application made in Sri Lanka having an earlier filing or, where appropriate, priority date than the patent application referred to in paragraph (a), to extent that such contents are included in the patent granted on the basis of the said patent application made in Sri Lanka.

5.2

Scope of Prior Art Search

As mentioned above, to get a patent, despite the fact that the patent rights enforceability is local, the revelation has to be internationally new. This condition is tested by referring to everything known to the public prior to the potentially patentable revelation. Everything in the public domain means already patented inventions, research literature, newspaper publications, exhibitions, or any other public disclosure. It could even be a leaking out of information by a research mate or a company employee. However, it is practically impossible to search on all these areas, and generally the search is done on patent databases of different jurisdictions and research articles. After passing the test of patentability by referring to patent material and research article, it does not still mean absolutely that it was not in existance before there but it is generally the case. If someone finds that a patented invention is not patentable due to some publicly known thing, he/she can challenge the validity of the patent. Traditional knowledge is a best example for this. Someone can formulate a new compound using traditional knowledge (herbal recipes etc.) and get a patent, but another one can invalidate the patent if he/she could prove that it was already known to our ancestors.

5.3. PRIOR ART SEARCH ON PATENT DATABASES

33

The prior art searches are mainly done at two stages. One stage is where the search is done by the inventors or their agents prior to lodging a patent application in the government office. This is done in order to get a sufficient confidence that the revelation is inventive and does not get rejected by government examiners in the examination process; the patent application to granting process, which is known as patent prosecution, is costly and if the application is rejected, the applicants loose lot of money and time. This search by inventors or their agents is done on free online patent databases hosted by respective countries because unless the inventor or the agent is a specialized person in the area, they may not be having access to subscribed research literature. The second stage of prior search is done at the government patent office by examiners in the examination process. This examination is rigorous and done carefully since after the examination, a patent application is allowed (patent grant) or rejected (patent reject). This decision can, of course, be challenged by other parties (in case of a grant) or by the applicant himself (in case of a reject) in courts of law, but the grant or reject decision may be matter of millions and billions of money if the application is with regard cutting edge technology and research. Generally, the government office has access to subscribed scientific research literature other than free public patent literature. In the following section, prior art search on a patent databases is discussed.

5.3

Prior Art Search on Patent Databases

Each country has a national intellectual property office responsible for intellectual property related matters. In case of patents, this office administers the patent related matters, and hosts a free public patent database where public can search. This is similar to a land registry where the estate titles are kept for public search. As we all know, before the explosion of ICT (Information and

34

CHAPTER CHAPTER 5. PA PATENT PRIOR ART ART SEARCHES SEARCHES

Communication Technology), we did not have the luxury of accessing remote data. When it is necessary to refer to some data, we had to go where the data is kept. Patent offices are no exception. Until about few decades ago, people had to go to the patent office to do some reference, and finding what you want in that heap of information was even even more exhausti exhausting. ng. Ho Howe weve ver, r, there were differen differentt classific classification ationss available in order to carry out manual searches easily. International search was next to impossible then; who will go to a foreign country to do a patent search spending significant amount money. Thanks to ICT, we can now search all the databases even from our hand held device from anywhere in the globe.

5.3.1

Prior Art Search Search on Online Online Paten Patentt Databases Databases

As mentioned above, when one wants to determine the patentability of a revela revelatio tion, n, he/she he/she has to searc search h all the literatu literature. re. But since since this is not possible, generally search is limited to online databases. Even searching on online databases in all the countries is very time consumin consuming g and ma may y not be worth worth the effort. It is therefore therefore sufficien sufficientt to search in the specific countries (or regions) when one want to do a prior art search. The selection of countries greatly depends on the potential potential inven invention. tion. For example, if one knows knows that particular particular research similar to the potential invention is done in a specific country, he/she may search only in that country. The following are the generally searched patent databases. WIPO (World (World Intellectual Property Organization): Organization): www.wipo.org EU (European Union): www.epo.org USPTO (United States Patent and Trademark Office): www.uspto.gov CIPO (Canadian Intellectual Intellectual Property Office): Office): www.cipo.gc.ca KIPO (Korean (Korean Intellectual Property Property Office): www.kipo.go.kr JIPO (Japanese Intellectual Intellectual Property Office): Office): www.jpo.go.jp IP Australia (Australian Patent Patent Office): www.ipaustralia.gov www.ipaustralia.gov.au .au

5.3. PRIOR ART ART SEARCH ON PA PATENT DAT DATABASES

35

All these databases are interfaced with search engine and a user interface. Below is a snapshot of the search engine user interface of WIPO.

As obvious, various searches can be done on various fields, namely, Inventor Name, Applicant Name, Application Number, Publication Number etc.. These are straightforward search tools and are useful if specific information is known about a patent. Most Mo st of the the time time,, speci specific fic detail detailss are are not not kno known. wn. Al Alll what what an inventor or the agent knows is some key words relating to the invention and the task is to find whether similar work has been done elsewhere. Key words can be of different formats and order. For an example, if the search is relating to a robotic arm for cleaning drains, one could

36

CHAPTER CHAPTER 5. PA PATENT PRIOR ART ART SEARCHES SEARCHES

write write the inven inventio tion n as, “A robot robot for cleaning cleaning drains drains”” and another another could could write write it as “A robotic robotic drain drain cleani cleaning ng arm”. When When the search search is done, the best yield will be given if the search can find all these possibilities. We can use search grammar to make composite search phrases to catch almost all these possibilities. There is different grammar used in different search engines and they they are describe described d in help help pages pages of the search search interf interface ace.. Most Most important portant of these these are Boolean operators operators and wildcards wildcards.. Boolean Boolean operators are simple logical operation of OR and AND, and the key words can be joined by these so that the order of the key words in the text does not matter. Wildcards are used to catch synonyms of words. For an example, if the search is done for robo* (some search engines engines use ? instead instead of *), the words words robot, robotic, robotically robotically etc. will be detected. Key words combined with different operators can be used in anywhere in the patent document. As will be described later, a patent document mainly has an abstract description of the invention, detailed description of the invention and what are known as claims. The most effective and economical place to search is in the abstract because abstract contains almost all about the invention. In the next section, a demonstration of a prior art search is illustrated.

5.3. 5.3.2 2

Prio Priorr Art Art Sear Searcch: An exam exampl ple e

Let us suppose that we have designed a new machine to extract oil from from oil deposits deposits in sand sand and soil. soil. We now now want want to paten patentt it, and before doing so, we have to make sure that no one has ever made such a machine and if a similar one has been made, we want to make sure that our one is not obvious when compared with what is already made. We want to do this by doing a patent prior art search. For a product like this, it is necessary that we have to do the search in all the countries having oil deposits because similar research maybe going in almost all of those countries. If the product’s usability is restricted to a particular country or a region, it is suffi-


37

cient to look at only those databases. For an example, if the potential invention is a new snowmobile design, it is not necessary to look at tropical countries like Sri Lanka. A prior art search on Canadian patent database on oil extraction from oil deposited sand is illustrated below. Extraction of petroleum oil from oil sands is an economical industry in Alberta, Canada. One method of extracting oil from oil mixed sand is by adding hydrogen peroxide to the oil slurry. Suppose that a person has manufactured a machine where this process is improved and he wants to determine the patentability of his potential invention by doing a prior art search. As mentioned earlier, the best place to do a search is on the abstract. The search key words and how they are connected have to be decided first and the search could then be done on the abstract. The words “hydrogen peroxide” has to be there necessarily. They can be used as “hydrogen peroxide” as one phrase, but to be on safe side, it can be used as “hydrogen” AND “peroxide” to detect abstracts where the word “hydrogen” and ”peroxide” are separately used for some reason. Then the words that can be used for the word “oil” have to be selected. One such word is “oil” itself. The other are the word “petro” and “gas” but they can be used as petroleum, gasoline etc. as well, so we have to use wildcards to detect all the possibilities. Accordingly, they can be formed and joined as “oil OR petro* OR gas*”. Following are the results obtained when the search is done using this keyword combination on Canadian patent database. Query Submitted: ((hydrogen AND peroxide ABSTRACT) (gas* OR oil OR petro* ABSTRACT)) 533 documents out of 2,084,695 matched your query. Click on its number to view the details of the document. The above results show that there are 533 patent documents in the whole database of more than 2 million documents. Are we to

38


read all these 533 and is it really worth the effort? No, we have to look at the ones that are relevant to our invention only. Visual filtration by looking at the title has to be done now. Let us look at the first 10 results. 1. Patent Number 2627218 - ACTIVATED PEROXIDE SOLUTIONS AND PROCESS FOR THE PREPARATION THEREOF 2. Patent Number 2578119 - VAPOR STERILIZATION USING A NON-AQUEOUS SOURCE OF HYDROGEN PEROXIDE 3. Patent Number 2310839 - A LARGE INTEGRATABLE HYDROGEN PEROXIDE INTERMEDIATE STAGE OR STAND ALONE TANK FOR THE PURPOSE OF PURIFYING FUELS USING HIGH STRENGTH HYDROGEN PEROXIDE IN FUELS 4. Patent Number 2253975 - METHOD FOR MEASURING THE CONCENTRATION OF HYDROGEN PEROXIDE VAPOR 5. Patent Number 2280941 - STERILIZING METHOD FOR MEDICAL STERILIZATION PACKAGING AND INJECTION PACK 6. Patent Number 2465081 - STERILIZATION SYSTEM AND METHOD 7. Patent Number 2465078 - METHOD OF RELEASING GAS OR VAPOR FROM A SOLID MATERIAL 8. Patent Number 2350387 - METHOD FOR RAPIDLY DETERMINING THE ACCEPTABILITY OF LOADS TO BE STERILIZED 9. Patent Number 2235941 - VAPOR STERILIZATION USING INORGANIC HYDROGEN PEROXIDE COMPLEXES


39

10. Patent Number 1144180 - PROCESS AND APPARATUS FOR PREPARATION OF PHENOLS By inspection, we can conclude that 3 and 7 only are relevant. This exercise has to be done for the whole list of 533 documents (which can be done in less than an hour). This is left as an exercise. The second filtration has to be done by looking at the abstracts of the documents keeping the invention in mind. Let us look at the above two (3 and 7) abstracts. A LARGE INTEGRATABLE HYDROGEN PEROXIDE INTERMEDIATE STAGE OR STAND ALONE TANK FOR THE PURPOSE OF PURIFYING FUELS USING HIGH STRENGTH HYDROGEN PEROXIDE IN FUELS This 50-30,000 barrel tank is a facility to Oxidize and Purify a variety of fuels using Hydrogen Peroxide (in 30-99 pc purity) before the fuel is sent to market. The attachments and scheme are designed in an open air fashion so that the Hydrogen Peroxide can not cause a pressure buildup as it performs its oxidation process on the fuel. The roof is designed to protect the contents of the tank from weather, and, hold sealed lighting for the work area. The Grid Iron work area is of sufficient size ( covering about 25 METHOD OF RELEASING GAS OR VAPOR FROM A SOLID MATERIAL A method of releasing hydrogen peroxide vapor from a solid hydrogen peroxide complex capable of releasing the hydrogen peroxide vapor so as to sterilize an object is described. The solid hydrogen peroxide complex is sealed within a gas permeable material. The solid hydrogen peroxide complex is heated to thereby release the hydrogen peroxide vapor through the gas permeable material. The object is contacted with the vapor.

40


By reading the abstracts on the computer screen itself while keeping the abstracts of the invention in mind, irrelevant abstracts can be ruled out. Finally, we will end up with relevant documents to our invention, and such documents have to be read and compared with the invention more closely. Generally, on a search, few patent documents are obtained as relevant ones. Then it is necessary to read them carefully after downloading the whole document. While reading, we have to see whether the new revelation is inventive, that is whether it is new and non-obvious with regard to the prior art. The primary purpose of prior art search is to ascertain the patentability and it is called a patentability search. There are other types of searches as well, but basically searching is the same, but the filtration is done with a different motive. The next section discusses different kinds of searches.

5.4

Different Types of Prior Art Searches

The basic purpose of prior art searches is to find out what has been done with regard to the technological activity done by the inventor. However, the overall purpose of the search maybe different with regard to what the purpose of the search is, and basic search can be customized according to the need. Following are some important searches one could perform to fulfill a specific need. Name Search State of the Art Search Technological Activity Search Legal Status Search Infringement Search (Freedom to Operate Search) Patentability Search

5.4. DIFFERENT TYPES OF PRIOR ART SEARCHES

5.4.1

41

Name Search

This is a search done when specific information of the patent is known to the searcher. For an example, if the inventor, assignee or the application country is known, a searcher can perform a search on what the specific inventor has patented, what the specific company has patented or whether a patent application or a patent is available in the specific country with regard to the work the searcher is interested in knowing.

5.4.2

State of the Art Searches

This type of search is done to learn the present state of the art technologies available. Such information is useful if one wants to avoid “reinventing the wheel” because if the searcher is going to do the same invention, it is going to be a complete wastage if someone has already claimed for the invention. This search is also useful if one is interested in doing improvements for what is in existence. State of the art search is very useful to researches who embark on new research activities, and by knowing the present state of the technology, they can do their research more economically and effectively.

5.4.3

Technological Activity Search

This is similar to state of the art search. The specific purpose of technological activity search is to find the active competitors or countries where some new technology research is being done.

5.4.4

Legal Status Search

Legal status search is to find the present legal status of a patent. The main concern in this search is to find out whether the patent has been lapsed after the expiry of the patent monopoly or abandoned. This information is very useful for companies that make generic products of the patented invention after the patent is lapsed, and very common in generic drug production.

42

5.4.5


Infringement Search (Freedom to Operate Search)

Infringement search or freedom to operate search is done in order to see whether an infringement of a patent right is done by engaging in the research or the production of a certain product. Such information is useful when making new things (specifically drugs) because if someone else later sues and proves of an infringement being done, compensation could be very costly.

5.4.6

Patentability Search

Patentability search is done in order to ascertain whether a new invention is patentable by fulfilling the requirements of novelty and non-obviousness. This is the most widely done search by patent applicants and patent examiners. The search is more time consuming and rigorous than any of the earlier mentioned searches. Synonyms to this search are pre application search, novelty/non obviousness search.

Chapter 6

Patent Drafting After the prior art search is done and if the inventor or his agent is of the opinion that the new revelation is inventive and therefore patentable, the invention has to be written according to a standard document. This is called patent drafting. A discussion of patent drafting follows. As mentioned earlier, the whole idea of the government (society) for granting a patent right (a monopoly) is to make the inventor reveal the invention so that any other person skilled in the art should be able to use it after the expiry of the patent or do improvement while the patent is valid. To do so, this invention has to be written in full and clear so that anybody can read and make it. A patent document is written in separate sections. It is almost similar to the structure of a standard research paper except that the patent document also has a section known as Claims.

6.1

Structure of a Patent

The following are the sections of a patent document. Title 43

44

CHAPTER 6. PATENT DRAFTING

Abstract Description: Background of the invention, Present state of the technology, Disclosure of the invention Claims Drawings These requirement are described in patent laws and rules of a country, and in Sri Lanka, they are mentioned in Section 71 of National Intellectual Property Act, No. 36 of 2003

6.1.1

Title

The title is the briefest description of the invention. It has to be complete and should not be misleading. By looking at the title, one should be able to know what the invention is. Some examples are: "Solar Powered Drain Cleaning Robot”, “Nano Fibres for Manufacture of Textiles” etc.. One main purpose of giving a complete and concise title is to be able to extract them when a search is done.

6.1.2

Abstract

The abstract is a brief description of the invention. Similar to the main purpose of the title, a main purpose of the abstract is to search effectively. Other than this requirement, it should also be possible to read the abstract and filter it, and therefore it should tell all about the invention in the shortest possible way. Some legislation limit the number of words in the abstract. For example according to Canadian patent rules, it is 150 words. The following are some sample abstracts extracted from Manual of Patent Office Practice, CIPO (Canadian Intellectual Property Office).

6.1. STRUCTURE OF A PATENT

Sample 1: A heart valve with an annular valve body defining an orifice and having a plurality of struts forming a pair of cages on opposite sides of the orifice. A spherical closure member is captively held within the cages and moved by blood flow between open and closed positions in check valve fashion. A slight leak or backflow is provided in the closed position by making the orifice slightly larger than the closure member. Blood flow is maximized in the open position of the valve by providing a convex profile on the orifice-defining surfaces of the body. An annular rib is formed in a channel around the periphery of the valve body to anchor a suture ring used to secure the valve within the heart. Sample 2: Amides are produced by reacting an ester of a carboxylic acid with an amine, using as catalyst an alkoxide of an alkali metal. The ester is first heated to at least 75 degrees Celsius under a pressure of no more than 500 mm. of mercury to remove moisture and acid gases which prevent the reaction, and then converted to an amide without further heating. Sample 3: Process for the production of semiconductor devices, wherein a silicon oxide film is formed on a surface of a semiconductor substrate, followed by deposition of a layer of lead on the film. This combination is then heated at 500-700oC. for at least 10 minutes in an oxidizing atmosphere, whereby a passivating film forms, consisting essentially of silicon oxide and lead oxide. The temperatures employed are substantially lower than those conventionally used, and prevent deterioration of the device. Sample 4: Wool is heated at 50-65 degrees Celsius for less than 15 minutes in an aqueous dispersion of 0.1-2 percent calcium hydroxide, washed, and then acidified to render

45

46


it receptive to dyestuffs without adversely affecting the physical properties of the wool.

6.1.3

Description

Description is composed of three sections, namely, background, the present state of the technology, and the disclosure of the invention. This can be thought of as a chronologically ordered story of the invention. We first start by the need of the invention (background) and secondly, what has been done so far to fulfill the need (present state) and finally, tell about the potential invention and justify its’ patentability by comparing it with what has already been done. This is a very logical way of looking at the patent description or a research paper. The following extract from the Canadian Patent Office Practice Manual gives overview requirements of a description. “ The description must provide a clear and complete disclosure of the invention such that the person skilled in the art: (1) can unambiguously identify what has been invented; and (2) is enabled to practice this invention.” As mentioned earlier, the purpose of granting a patent right is in anticipation that the inventor reveals his/ her knowledge to the society so that the public can use it after the expiry of the patent or do improvements while the patent is in force. This has to be done by someone by looking at the description. The following extract from the Canadian Patent Office Practice Manual’s quotation of a judge’s view in a legal case emphasizes this requirement. “ In Consolboard Inc. v. Macmillan Bloedel (Saskatchewan) Ltd., Dickson J. noted that “the inventor must, in return


47

for the grant of a patent, give to the public an adequate description of the invention with sufficiently complete and accurate details as will enable a workman, skilled in the art to which the invention relates, to construct or use that invention when the period of the monopoly has expired”. The description must be able to answer the questions “What is your invention?: How does it work?” such that “when the period of the monopoly has expired the public will be able, having only the specification, to make the same successful use of the invention as the inventor could at the time of his application”. The requirement of a proper disclosure are described in patent legislation of different countries. There may be slight variations in different jurisdictions but the main features are uniform in all the countries. According to Canadian Patent Act subsection 27(3): The specification of an invention must (a) correctly and fully describe the invention and its operation or use as contemplated by the inventor; (b) set out clearly the various steps in a process, or the method of constructing, making, compounding or using a machine, manufacture or composition of matter, in such full, clear, concise and exact terms as to enable any person skilled in the art or science to which it pertains, or with which it is most closely connected, to make, construct, compound or use it; (c) in the case of a machine, explain the principle of the machine and the best mode in which the inventor has contemplated the application of that principle; and (d) in the case of a process, explain the necessary sequence, if any, of the various steps, so as to distinguish the invention from other inventions.

48


Sample disclosures are too long to quote here but an interested reader can easily find examples by accessing an online patent database. A complete sample patent is also found at the end of the book for quick references. Illustrative drawings may be included to the description, however they have to be drawn on separate sheets and no wording should be included. This is done for the effective automatic translation purposes.

6.1.4

Claims

The most significant part of a patent as far as the inventor is concerned is what is known as the claims. Claims can basically be defined as the boundary of the invention just like a boundary of the land one is owning. What one can enjoy in case of a land is what is enclosed in the boundary, and so as in case of a patent; what one can legally enjoy as his own is what is enclosed in the patent claim. Just like one has to enclose the physical boundary of a land securely so that others cannot encroach, patent claims have to be drafted so that others cannot creep though them and use the invention without any infringement. Patent drafting is a professional work that needs significant amount of expertise. Patent legislations define claims more formally, and according to Canadian Patent Act, the claims must define distinctly and in explicit terms the subject matter of the invention for which protection is sought (section 27(4) of the Patent Act). Claims should necessarily contain what is invented but should not contain what was already in the public domain. All what is claimed has to be justified in the disclosure where the invention and what was already known could be cited for comparison purposes. General Structure of Claims

A claim essentially is composed of three parts as follows: Preamble or introductory phrase


49

Transitional phrase Body Preamble is kind of an introduction to what follows. This introduction is what is already in the public domain. What the preamble does is to state that what follows is related to what is mentioned in the preamble. Examples: A bottle opener ........ A robot for cleaning drains . . . . . . . . . . A composition for decomposing oil spills on water . . . . . . . . . . By looking at the preamble, one can say that the invention is related to a bottle opener, a drain cleaning robot and an oil spill decomposing composition where such equipment, robots and compositions are already available and the present invention is about a new opener, a drain cleaning robot, and an oil spill decomposing composition hitherto unknown to the public. The preamble is connected to the following body – the inventionby a transitional word/phrase of a language. In English, some such transitional words/ phrases are: comprising, composed of, consisting of, which comprises, made of, including, having etc.. All what the transition word/phrase does is the transition from the preamble to the body, the connection, or the division of what is in the public domain and what is the invention. The body of the claim describes the invention clearly and completely. It may contain what is already known to the public but the composite body should be not known to the public before. What this means is that an invention may contain things that are already known but the composite invention should be new in the existing public domain knowledge. However, no legal right is given to the inventor for what is already known, and the protection is only given to the parts that are new.

50


As an example, let us suppose that someone invents an explosive triggering device by sending and SMS using a mobile phone. Let us also assume that mobile phones and a short message (SMS) usage are already known to the public but explosive triggering using SMS is not yet known. The claim can be worded as “An explosive triggering device comprising a mobile phone and a SMS gateway". The inventor does not have any legal right to either mobile phones or SMS gateway but only for the triggering device composed of a mobile phone and a SMS gateway. The invention could be a product or a process. In case of a product, the claim is with respect to the parts or components of it. If the invention is a process, it is the process and sub processes of the invention. There can also be claims that claim both the product and process. The best example is the new drug and its’ manufacturing process. Both the drug and the process of manufacture are patentable and can be claimed as a legal right. We will now see some examples of claims. These are extracted from Canadian Intellectual Property database. Sample 1 (Extracted from CIPO database) Title: An Electroluminescent Device Claim: An electroluminescent device comprising a transparent substrate for facing a viewer in front of said substrate; a transparent electrode disposed behind said substrate on a side of said substrate opposite from said viewer; a partially-absorbing layer disposed behind said electrode; an electroluminescent emitting layer disposed behind said partially-absorbing layer; a reflective rear electrode disposed behind said emitting layer, said emitting layer being made from a material operable to emit light towards when a potential is applied between said electrodes; said partially absorbing layer and said emitting layer each being made from a material and having a thickness that are chosen to cooperate with said reflective rear electrode such that at least a portion of ambient


51

light incident on said device is reduced. The invention is about an electroluminescent (devices emanating luminance when an electric current is applied to the terminals) device which are already known. The inventive part is a new way of making them by combining different layers of material with different thickness to form a composite unit that has contrast enhancement capability. Some of these layers maybe already known but the composite unit is new. Sample 2 (Extracted from CIPO database) Title: An Outer Wall Cleaning Robot Claim: An outer wall cleaning robot comprising: an arm pivotable about a first rotation axis that extends in a substantially horizontal direction in approximately parallel relation to an outer wall surface of a building; an arm driving mechanism for driving said arm; a rotational body supported by said arm in such a manner that said rotational body is pivotable about a second rotation axis extending in parallel with said first rotation axis; a rotational-body driving mechanism for driving said rotational body independently of driving of said arm by said arm driving mechanism; a wiping-squeegee mounting mechanism attached to said rotational body; and a wiping squeegee attached to said mounting mechanism. The invention is about outer wall cleaning robots which are already known. The inventive part is a new way of making an outer wall cleaning robot by combining different components. Some of these maybe already known but the composite unit is new. Sample 3 (Extracted from CIPO database) Title: Well Treatment Compositions and Methods of Utilizing Nano Particles Claim: A method of cementing comprising: introducing a cement composition into a subterranean formation,

52


wherein the cement composition comprises cement, water, and at least one nano particle selected from the group consisting of particulate nano-silica, nano-alumina, nanozinc oxide, nano-boron, nano-iron oxide, and combinations thereof The invention is about a method of cementing wells which is already known. The invention is a new way of doing so using a special compound. Some of these maybe already known but the composition is new. What are mentioned above are independent claims which are also known as main claims. Most of the time the content of this claim is the same as what is in the abstract. For an example, the abstracts of the above claims are as follows: Sample 1 (Extracted form CIPO database) Title: An Electroluminescent Device Abstract: An aspect of the invention provides an electroluminescent device that incorporates a partially-absorbing layer which is disposed in front of an emitting electroluminescent layer and a reflective rear electrode. The thickness and material of the partially-absorbing layer cooperates with the thickness of the electroluminescent layer to cause at least some reduction in ambient light incident of the display. Sample 2 (Extracted from CIPO database) Title: An Outer Wall Cleaning Robot Abstract: An outer wall cleaning robot includes an arm pivotable about a first rotation axis and a rotational body supported by the arm for pivotal movement about a second rotation axis. The rotational body can be driven independently of a pivotal movement of the arm. To the rotational body are attached respective mounting mechanisms for a wiping squeegee and a receiving squeegee.


53

Sample 3 (Extracted from CIPO database) Title: Well Treatment Compositions and Methods of Utilizing Nano Particles Abstract: Disclosed embodiments relate to well treatment fluids and methods that utilize nano-particles. Exemplary nano-particles are selected from the group consisting of particulatenano-silica, nano alumina, nano-zinc oxide, nano-boron, nano-iron oxide, and combinations thereof. Embodiments also relate to methods of cementing that include the use of nano-particles. An exemplary method of cementing comprises introducing a cement composition into a subterranean formation, wherein the cement composition comprises cement, water and a particulate nano-silica. Embodiments also relate to use of nano-particles in drilling fluids, completion fluids, stimulation fluids, and well clean-up fluids. There are also what are known as dependent or sub claims. As the name implies, these dependent claims are dependent on the independent claim, and make a reference to the independent claim as “as claimed in (independent claim)” and emphasizes on a special instance of the independent claim. In fact, what the dependent claim claims is special cases of the claimed subject matter of the independent claim. The inter relation of dependent and independent claims can be depicted as a Venn diagram where sub group fall inside a group. The necessity for dependent claim is that just in case of an invalidation of the independent claim on the ground that the independent claim being too broad, there is still a fall back option for the inventor to claim dependent claims. If there is no dependent claim, the inventor would be left with nothing if the main independent claim becomes invalid. As an example, if the invention is about fabrication of semiconductor devices using Silicon or Germanium, with sufficient justification in the disclosure as to the potential use of other elements

54


in the same column in the Periodic Table of Elements, he/she can draft the independent claim as “. . . . . . . . . . . . . . . . . . . . . using any material in the fourth column of Periodic Table of Elements” and claim the device made of Silicon or Germanium by writing the dependent claim as “. . . . . . . . . . . . . . . .the device as claimed in (independent claim) wherein the element is Silicon or Germanium. If by some chance, someone challenges that the use of Carbon (in the forth column of the Table) in making the device had already been known to ancient Romans, the inventor can at least fall back to the present day with Silicon or Germanium ! Following are dependent claims relating to the above mentioned example. It will be noticed that some dependent claims refer to many dependent or independent claims. Sample 1 (Extracted form CIPO database) Title: An Electroluminescent Device Dependant Claims: The device according to claim 1 wherein said transparent front electrode is made from ITO. The device according to claim 1 wherein said rear electrode is made from Aluminium. The device according to claim 1 wherein said electroluminescent layer is made from a material selected from the group consisting of ZnS:Mn, Alq3, PPV. Sample 2 (Extracted from CIPO database) Title: An Outer Wall Cleaning Robot Dependant Claims: An outer wall cleaning robot as defined in claim 1 which further comprises a receivingsqueegee mounting mechanism pivotably supported relative to said rotational body, a receiving squeegee attached to said receiving-squeegee mounting mechanism so as to be positioned below said wiping squeegee, for receiving soiled water resultant from cleaning of the outer


wall, a clutch mechanism for connecting or disconnecting said receiving squeegee to or from said rotational body, and a stopper mechanism for preventing said receiving squeegee from pivoting downward from a predetermined position. An outer wall cleaning robot as defined in claim 1 or 2 wherein said arm mounting mechanism and said rotationalbody driving mechanism are provided separately from said arm. An outer wall cleaning robot as defined in claim 2 wherein said receiving-squeegee mounting mechanism includes a slider base, a slider mounted to said slider base for sliding movement along said slider body in a forward and rearward direction, and drive means for driving said slider, and wherein said receiving squeegee is fixed to said slider. Sample 3 (Extracted from CIPO database) Title: Well Treatment Compositions and Methods of Utilizing Nano Particles Dependant Claims: The method of claim 1, wherein the introducing the cement composition into the subterranean formation comprises introducing the cement composition into a space between a pipe string and the subterranean formation and allowing the cement composition to set in the space. The method of claim 2, comprising running the pipe string into a well bore penetrating the subterranean formation. The method of claim 1, wherein the method comprises allowing the cement composition to set in the subterranean formation.

55

56


Unity of Invention

There is what is known as unity of invention in claims. As the phrase implies, it means that the claims should be a unit of invention. What this means is that one patent document should contain only one inventive subject matter. The relevant legal provision in Sri Lanka in this regard is as follows: 74. An application shall relate to one invention only or to a group of inventions which are so linked to each other so as to form a single general inventive concept. As stated in the legal provision, unity of invention does not mean that the claims should be focused on one product or a process. Many products and processes could be joined if they form one well related composite invention. For an example, in a drug manufacturing process, the main product as well as the by products could be claimed if they satisfy patentability requirements. Similarly, the main process as well as the sub processes of the manufacturing process could be claimed in the same application if they are satisfying the patentability requirements. Scope of Claims

As mentioned above, the claims are the ones that give legal protection to inventors and therefore of importance to them. Claims is the point to start drafting the patent document because rest of the documentation depends on the claims. The abstract is kind of a summarization of claims, and the description is an expansion of claims with justification including the background and the prior art. Just like people try to expand their boundaries of physical lands duly or unduly, inventors try to get protections as broad as possible, and in the examination process, examiners make it justifiably narrow. Even after the patent is granted, if someone can find that


57

the inventor has encroached into what is already known, he/she can invalidate the claim to the extent of encroachment.

58


Chapter 7

Application for a Patent After the patent is drafted, the next step is to lodge the document with a petition (a standard form containing bio graphical data of the applicant and some facts regarding the invention) in the national patent office of the country. An exception is that when an applicant makes a PCT application where the applicant makes the application in a depository known as PCT; PCT will be explained later. Before making the application, care should be taken not to make any public disclosures because if someone can prove that the invention was known to the public before the application date, the patent right can be invalidated. Exception is available in some countries where an applicant himself may reveal the invention but still can make the application within a certain period. For an example, in United States, the applicant can enjoy a grace period of one year after the disclosure before making the application. However, it is advisable that no disclosure is done because it might affect the patent right when applying in other countries where such exceptions are not allowed. It maybe, however, necessary to discuss the invention with other stakeholders like researchers and market personnel. Such discussions should be done after signing a Non-Disclosure Agreement (NDA) 59

60

CHAPTER 7. APPLICATION FOR A PATENT

(also known as Confidentiality Agreement) binding the other party not to leak out the information. A breach of the agreement maybe compensated, but the amount of compensation may not be sufficient to cover the cost of the damages caused. In United States, there was a system earlier where first to invent was given priority over first to file. Due to practical difficulties in proving the first to invent, this system has become obsolete.

7.1

Making a Local Application

As mentioned above, a national or a PCT application has to be made to get a patent grant. The legal requirement of making the application is described in legislation. According to Sri Lanka legislation, it is as follows: 71. (1) (a) An application for the grant of a patent shall be made to the Director General in the prescribed form and shall contain (i) a request for the grant of the patent ; (ii) a description of the patent ; (iii) a claim or claims ; (iv) a drawing or drawings, where required ; (v) an abstract ; (vi) date and number of any application for a patent filed by the applicant abroad (hereinafter referred to as the “foreign application”), if any, relating to the same, or essentially the same invention as that claimed in the present application ; (vii) a declaration that the applicant or his predecessor in title has not obtained a patent abroad before the application was filed relating to the same or essentially the same invention as that claimed in the application.

7.2. MAKING A FOREIGN APPLICATION

61

When the application is lodged in the national patent office, a filing date is assigned and this proves that the invention was filed on that particular date, and inventors may reveal the invention thereafter without any risk. The inventor could also use the phrase “Patent Pending” even though the patent right is not yet granted, in order to warn others that copying may result in patent infringement. The filing date could be transferred to other applications that maybe filed in other countries and therefore it is also known as the priority date. The concept of priority date will be discussed later. After the application is lodged, office actions will follow and they will be discussed the next chapter. How this initial filing date will be carried forward to other countries will be discussed in the next section. Revisions of Applications

Patent applications maybe revised if the new subject matter is not included. Following is the legal provision in Sri Lanka in this regard. 75. (1) An applicant may amend the application, provided that the amendment shall not exceed the limits of the disclosure in the initial application. (2) (a) An applicant may divide the application into two or more applications (hereinafter referred to as “divisional applications”) provided that each divisional application shall not exceed the limits of disclosure in the initial application.

7.2

Making a Foreign Application

As mentioned above, the patent enforcement is local which means that once a patent is granted, its’ application or enforceability is restricted to only that jurisdiction. (Note here that to get a patent in any jurisdiction, the invention should be new in the world). Does it mean that one could get a patent only in one country. No, he/she

62


can get patents in other countries too. But then, when an application is made in a different country, will he/she get a patent because he has revealed it in another country (where the patent was granted). One might think that if simultaneous applications are made in different countries, this problem is solved. It is theoretically true but cannot be implemented practically. The inventor can get a patent in different countries if he/she carries the original filing date (in the country where it was granted) to the new country where he/she is seeking patent rights. So there has to be some internationally accepted mechanism to carry the filling date of one country to another. When the filing date is carried to another country in this fashion, original filing date is known as the priority date because the applicant is claiming a priority on an earlier application. Paris convention is such an accepted international treaty. Almost all the countries in the world are signatories to this convention, and all those signatories can use the convention in patent application matters. According to the convention, an inventor can make a foreign application within one year of the original application and still claim the original priority (as a priority date). Accordingly, if someone files an application on January 1, he can make an application till December 31, and still claim that his application be considered to have been filed on January 1. There is another international treaty called PCT (Patent Cooperation Treaty administered by WIPO – World Intellectual Property Organization). This treaty is augmenting Paris convention and make the system more flexible, and almost all the countries in the world are signatories to it. According to this convention, if one makes a PCT application with WIPO, he/she can make local application in any signatory countries within 30 months (31 months in some countries) of the original application. If the applications are not made within these time periods, the inventor looses the right to make applications in other countries. It is also possible to get the combined effects of Paris convention and PCT. Accordingly, one can make a local application in one

7.2. MAKING A FOREIGN APPLICATION

63

country, and make a PCT application within one year (according to Paris Convention) and then make local applications (according to PCT) within 30 months of the original application. As an example, if one make a original local application in June 2010, and makes a PCT in December 2010, he can make local application in PCT signatory countries till December 2012. As a real life example, let’s look at the data in the below snapshot taken from CIPO database.

This application was originally made in United States on 200208-28. Subsequently, a PCT application was made on 2003-06-06 which is within a year of the original United States application. Finally, it has entered into Canada on 2005-02-16, which is within 30 months of the original Unites States application. The legislature of a country makes provisions for Paris Conven-

64


tion and PCT. Following is the relevant section in Sri Lanka Intellectual Property Act. 76. (1) An application may contain a declaration claiming the priority, pursuant to the Convention, of one or more earlier national, regional or international applications filed by the applicant or his predecessor in title in or for any State party to the said Convention. According to section 28 of Canadian Patent Act, An applicant for a patent in Canada may request priority in respect of the application on the basis of one or more previously regularly filed applications. Once the application is made, the applicant may wish to revise the document subject to the condition that no new subject matter is introduced. The relevant legal provisions according to Sri Lanka Intellectual Property Act are as follows: 75. (1) An applicant may amend the application, provided that the amendment shall not exceed the limits of the disclosure in the initial application. (2) (a) An applicant may divide the application into two or more applications (hereinafter referred to as “divisional applications”) provided that each divisional application shall not exceed the limits of disclosure in the initial application. (b) Each divisional application shall be entitled to the filing, or where applicable, priority, from date of the initial application. After an application is made, in most countries, the office will keep the documents confidentially till 18 months and publish them thereafter for public inspection. An applicant may however request early publication.

Chapter 8

Patent Examination and Granting Process 8.1

Revision of Applications

On receiving the application, the patent will office will check the application for consistency. If the application is not in order, the office will request the applicant to do necessary revisions within a time period. The relevant legal provisions according to Sri Lanka is are follows: 78. (1) The Director-General shall examine the application and shall satisfy himself as to the fulfillment of the following : (a) where applicable, the requirements of paragraph (b)of subsection (1) of section 71 ; (b) the requirements of paragraph (a) of subsection (2) of section 71 ; (c) where applicable, the requirements of paragraph (b) of subsection (2) of section 71 ; (Note: Section 71 de65

66CHAPTER 8. PATENT EXAMINATION AND GRANTING PROCESS scribes the requirements for completeness of the application) (d) the description, the claims and where applicable, the drawings, which comply with the prescribed requirements ; (e) the essential elements of the invention claimed in the application have not been unlawfully derived from a patent already granted in Sri Lanka ; (f) the application contains an abstract ; (g) the search report referred to in section 73 has been submitted. 78.(2) Where the Director-General finds that the conditions referred to in subsection (1) are not fulfiled he shall request the applicant to file the required correction within a period of three months from the date of such request ; where the applicant fails to so comply the application shall, subject to the provisions of subsection (3), be rejected. 78.(3) Where no correction is provided in response to a request under subsection (2), the Director-General shall, on payment of the prescribed fee within the prescribed period, include the corrections into the application and if the prescribed fee is not paid within the prescribed period the application shall be rejected. 78.(4) Where the Director-General finds that the essential elements of an invention claimed in an application are unlawfully derived from a patent already granted in Sri Lanka, such application shall be rejected. 78.(5) The Director-General shall notify the applicant of any decision under subsections (2), (3) and (4) and any decision taken to reject the application shall be in writing stating the reasons for such rejection.

8.2. EXAMINATION OF APPLICATIONS

8.2

67

Examination of Applications

Within 4 years of the original application date (in most countries), the inventor has to request the examination of the patent document. If no request is made, it will be abandoned, and nobody in the world can make an application for the same invention ever. When the examination is requested, the examiners will test the revelation against the patentability requirements – industrial applicability, novelty and non-obviousness – and if they decide that the revelation is inventive, the patent is granted. The following are the relevant legal provisions in Sri Lanka. 79. (1) The grant of a patent shall not be refused and a patent shall not be invalidated on the ground that the commercial exploitation of the claimed invention is prohibited by any law except where the prevention of the commercial exploitation of the claimed invention is necessary in order to protect public order, and morality including the protection of human, animal or plant life or health or for the avoidance of serious prejudice to the environment. 79.(2) Where the applicant fulfills the requirements of subsection (1) of section 78 to the satisfaction of the Director- General, he shall grant the patent, and shall forthwith — (a) record the particulars relating to patent in the Register of patents required to be maintained in accordance with the provisions of section 80 ; 79.(b) issue a certificate to the applicant in respect of the grant of a patent together with a copy of the patent documents including the search report : Consequently, the inventor will enjoy patent rights for his invention for 20 years form the date of application. In some countries, the time limit is 15 years. Following is the legal provision in Sri Lanka in this regard.

68CHAPTER 8. PATENT EXAMINATION AND GRANTING PROCESS 83. (1) Subject and without prejudice to the other provisions of this Part a patent shall expire twenty years after the filing date of application for its registration.

8.3

Patent Maintenance Fees

Upon receiving the patent, the inventor is required to pay an annual maintenance fee to keep the patent in force. If the payment is not made, the patent will become invalid. In certain countries, even before the patent is granted, a maintenance fee has to be paid in order to keep the application valid. The patents and patent application so becoming invalid will become public knowledge and nobody anywhere in the world could make a patent claim for the relevant subject matter. The legal provisions with regard to maintenance fees are as follows: 83. (2) Where a patentee intends at the expiration of the second year from the date of grant of the patent to keep the same in force he shall, twelve months prior to the date of expiration of the second and each succeeding year during the term of the patent, pay the prescribed annual fee:

8.4

Appeals Against Examiners’ Decisions

If the patent examiner is not satisfied with the inventiveness of the subject matter or there are other defects in the document, they will send what is known as Office Actions to the applicant. The applicant may respond to them within a specified time limit. Upon receiving the responses, the examiners will redo the examination and grant the patent if they are satisfied. It is also possible for examiners to reject the patent for defects in the application or non-fulfillment of patentability requirements. The defects maybe rectified. But if the subject matter is not fulfilling the

8.4. APPEALS AGAINST EXAMINERS’ DECISIONS

69

patentability requirements, nothing can be done and the examiners will reject the patent application. It is possible to appeal against the decisions of the examiners to a patent appeal board (in some countries) in the patent office itself, and further appeals can be done in courts of law.

70CHAPTER 8. PATENT EXAMINATION AND GRANTING PROCESS

Chapter 9

Post Patent Issues When a patent is issued, the inventor can prevent others in the countries where the invention is patented from using the invention without the permission of him/her. However, people in the countries where the invention is not patented can use the invention without the permission from the inventor (the owner of the patent). The inventor can also prevent others from importing the patented invention manufactured in a country where it is not patented in to the countries where the invention is patented. Patent right, therefore, is a negative right that prevents others from using the invention. But nobody will take action in order to make any economical gain for the inventor. Inventor himself has to do something in order to gain an economical gain. Using the patent for such economical gains is known as commercialization. A discussion on commercialization follows. Similar to conventional property, there maybe legal disputes as to the authenticity and the trespass/ unlawful gaining of the property in case of intellectual property. In intellectual property, those issues are known as validity and infringement. A discussion on validity and infringement follows. 71

72

CHAPTER 9. POST PATENT ISSUES

9.1

Commercialization

Following are three ways an inventor can commercialize a patent. 1. Exploitation 2. Assignment 3. Licensing These provisions are available in Section 84 of Sri Lanka Intellectual Property Act. 84. (1) Subject and without prejudice to the other provisions of this Part, the owner of a patent shall have the following exclusive rights in relation to a patented invention: (a) to exploit the patented invention ; (b) to assign or transmit the patent ; (c) to conclude license contracts.

9.1.1

Exploitation

Exploitation means that the inventor manufactures the invention by himself or collaboratively with the collaborative agreement and the provisions are given in Section 84(3). 84.(3) For the purposes of the this Part “exploitation” of a patented invention means any of the following acts in relation to a patent : (a) when the patent has been granted in respect of a product: (i) making, importing, offering for sale, selling, exporting or using the product ; (ii) stocking such product for the purpose of offering for sale, selling, exporting or using ;


73

(b) when the patent has been granted in respect of a process: (i) using of the process ; (ii) doing any of the acts referred to in paragraph (a), in respect of a product obtained directly by means of the process ; (iii) preventing any person using that process or using, selling or importing any product obtained directly by means of that process unless such person is authorized to do so. The risk factor is very high in exploitation because all the marketing and profit making lie in the hands of the inventor.

9.1.2

Assignment

Assignment of patent rights means that the inventor assigns his/her right to someone else for a consideration; consideration in legal terms means something one gets in return for another. The legal provisions in Sri Lanka are follows: 88. (1) A patent application or patent may be assigned or transmitted and such assignment or transmission shall be in writing signed by or on behalf of the contracting parties. The person giving the assignment is called the assignor and the person receiving the assignment is called the assignee. Assignment can be forced by an employment agreement or voluntary. Voluntary assignment is where the inventor by his/her own wish sell the patent right to someone else for a lump sum. Assignment is forced when the inventor is an employee of an organization, and the invention is as a result of the employment, the patent rights belong to the employer. Such provisions are included in modern day employment agreements. However, as an incentive to employees there can be a separate IP (Intellectual Property) policy between the employer and the employee where the economical gains are shared by them.

74


There is no risk factor in assignment but the inventor will not get anything more than the sale price if the manufactured product becomes a huge revenue earner.

9.1.3

Licensing

Licensing is giving limited rights to another person just like a rent or a lease of tangible properties. This is kind of an agreement and the person giving the license agreement is called the licensor and the person receiving the license is called the licensee. When a license is given to a licensee, he/she can do some limited work in a limited area during a limited time; these conditions form vital parts of the license agreement. For an example, a patent holder can give a license to someone else to manufacturer in China one hundred thousand number of components in during year period. Following are the legal provisions in Sri Lanka in regard to licensing. 90. For the purposes of this Part license contract means any contract by which the owner of a patent (hereinafter referred to as “the licensor”) grants to another person or enterprise (hereinafter referred to as the “the licensee”) a license to do all or any of the acts referred to in paragraph (a) of subsection (1) and subsection (3) of section 84. 91. (1) A license contract shall be in writing signed by or on behalf of the contracting parties. (2) Upon a request in writing signed by or on behalf of the contracting parties, the Director-General shall, on payment of the prescribed fee, record in the register such particulars relating to the contract as the parties thereto might wish to have so recorded : Provided that the parties shall not be required to disclose or have recorded any other particulars relating to the said contract.


75

92. In the absence of any provision to the contrary in the license contract, the licensee shall (a) be entitled to do all or any of the acts referred to in paragraph (a) of subsection (1) and subsection (3) of section 84 within the territory of Sri Lanka, without limitation as to time and through application of the patented invention ; (b) not be entitled to assign or transmit his rights under the license contract or grant sub-licences to third parties. Licensing lies in between exploitation and assignment in terms of both risk factor and profit factor. There are three kind licensing agreements, namely exclusive, sole and non-exclusive. Exclusive licensing means licensing to some entity with exclusive rights in certain aspects. For an example, it can be a geographically exclusive, where the license is given to manufacture in one particular country. The inventor has freedom to give licenses for other countries. When a sole license is granted, the licensor as well as the licensee has rights to the patent. Non-exclusive licensing means licensing is done without any restriction on the usage of the patent, and the inventor could grant as many licenses as he wish. Depending on the manufacturing cost, marketability of the product and other circumstances, one could decide the best licencing model. There is what is known as a compulsory license where the patent holder is forced by the government to issue licenses. This situation arises when the inventor wants to make an undue monopoly of his invention. If the government (or any other interested party) feels that the patented invention is something of great social benefit, government (or the interested party) through the patent office could ask the inventor to licence his invention so that many people can make the product, and as a consequence, society will benefit more than if it were only done by inventor himself. For an example, if the inven-

76


tion is a cure for cancer, inventors would not want to license because of the huge potential profits, but due to the benefit the society will get, government will make compulsory licences so that inventor cannot make huge undue profits and the drug could be manufactured in competition and will be freely available.

9.2

Potential Legal Implications

When a patent is granted, it does not give any guarantee that the government will actively protect the rights of the inventor. If any infringement of patent rights occur, it is only the duty of the inventor to take remedial action. If the inventor does not take remedial action, the infringer will enjoy the patent without being a guilty party. Infringement of patent rights means the copying of the invention without inventor’s permission. It is basically stealing, in case of tangible property. In case of a tangible property theft, the government will take criminal action against the stealer because stealing is considered a wrong doing against the whole society. In case of stealing intellectual property, it is basically a civil dispute between two parties, but it can also be considered a criminal offense. Infringement can usually defended by invalidating the patent. Invalidating a patent means that the validity of the patent is disputed due to time lapses (expiry of the patent) or that the invention is not patentable in view of patentable requirements of novelty and non- obviousness. When a patent is invalidated by courts after looking at the circumstances of the case, the invention becomes public knowledge and anybody can use it without the permission of the inventor. In the case study Beloit Canada Vs. Valmet Oy, the case was regarding infringement and validity. One party alleged the other by saying that the other party infringed their patent right by invalidating the patent the other party had obtained. Generally, infringement and validity go hand in hand because

9.2. POTENTIAL LEGAL IMPLICATIONS

77

when someone alleges of infringement, the best defense one can take is that the alleger’s claim is invalid or the one used by him is also inventive.

78


Chapter 10

A Sample Patent Following is a patent extracted from United States Patent and Trademark Office (USPTO) database.

10.1

US Patent 7,161,651

10.1.1

Title: Method of resizing a liquid crystal display

10.1.2

Bibliographical Data

Inventor:Smovzh; Anatoliy (Oakville, Canada) Assignee:Luxell Technologies Inc. (Mississauga, Canada)

10.1.3

Abstract

A method of resizing a liquid crystal display connected to at least one flex board, wherein the liquid crystal display has multiple layers including a liquid crystal layer contained between a pair of glass substrates and a pair of polarizers on opposite sides of respective ones of 79

80

CHAPTER 10. A SAMPLE PATENT

the glass substrates. The method comprises applying pressure sensitive tape for protecting the polarizers, dicing through the layers, including the polarizers, using a dicing wheel with predetermined diamond particle size to a specified depth and width of groove, cutting through the flex board using a UV laser, breaking off unwanted portions of the liquid crystal display and flex board defined by the dicing and cutting operations, and sealing remaining portions of the liquid crystal display.

10.1.4

Claims

What is claimed is: 1. A method of resizing a liquid crystal display connected to at least one flex board, said liquid crystal display having a liquid crystal layer between a pair of glass substrates and a pair of polarizers on opposites sides of respective ones of said glass substrates, the method comprising: applying pressure sensitive tape for protecting said polarizers; dicing through said layers, including said polarizers, to a specified depth and width of groove using a dicing wheel of predetermined diamond particle size; cutting through said flex board; breaking off unwanted portions of said liquid crystal display and flex board defined by said dicing and cutting; and sealing remaining portions of said liquid crystal display. 2. The method of claim 1, wherein said predetermined diamond particle size is in the range of 40 70 microns. 3. The method of claim 1, wherein said specified width is approximately 10 mils. 4. The method of claim 1, wherein said specified depth is approximately 30 40 5. The method of claim 4, wherein said breaking off unwanted portions of said liquid crystal display and flex board comprises applying a breaking force to said one of said pair of glass substrates. 6. The method of claim 1, wherein said sealing comprises applying a UV curable adhesive to said remaining portions of said liquid crystal display.

10.1. US PATENT 7,161,651

10.1.5

81

Description

BACKGROUND OF THE INVENTION 1. Field of the Invention The present invention is directed to liquid crystal displays, and more particularly to a method of resizing a liquid crystal display without first removing the polarizer. 2. Description of the Related Art Liquid crystal displays (LCDs) are well known in the electronic arts for displaying images and data to a user (e.g. avionics, computer displays, cellular telephones, etc.) A liquid crystal cell is typically provided with two glass substrates having thin transparent ITO (indium tin oxide) layers evaporated on the inner surfaces thereof (referred to herein as the TFT glass and the color filter glass, respectively). Polyimide layers (or any homogenous alignment material such as silane, evaporated silicon monoxide, etc.) are coated on top of the respective ITO layers for aligning the liquid crystal molecules within the cell. Thus, for a left-hand twisted cell, the polyimide layer on the bottom substrate is rubbed along the 0.degree. direction (Cartesian coordinates), while the top polyimide layer is rubbed along the 90.degree. direction (according to the right hand rule in Cartesian coordinates). The glass substrates are bonded together to form a cell using epoxy or thermoplastic material. Next, the cell is filled with liquid crystal by either vacuum filling or by a capillary method. After filling, the cell is sealed and uniform pressure is applied over the cell to improve the uniformity of the cell gap. Bottom and top polarizers are laminated with respective transmission directions perpendicular to the rub directions of the bottom and top polyimide layers. Finally, a reflective layer is deposited on the top polarizer. Conventional LCDs are available in standard sizes that, in some cases, do not fit the intended application. For example, human factors and space limitations may dictate a smaller than conventional LCD be used for avionics display in the cockpit of an aircraft (military or civilian). Methods are known in the art for resizing LCDs

82


to fit an intended application. U.S. Pat. No. 6,204,906 (Tannas) discloses a method of changing the physical shape of an electronic display, wherein the display comprises a front plate, a back plate, and a perimeter seal spacing apart the plates, and wherein the image-generating medium is sealed in an area between the plates and within the borders of the perimeter seal. The method comprises cutting the display along desired dimensions, resulting in a target display portion and an excess display portion, thereby breaking the perimeter seal of the display. A seal is applied between the plates along an exposed edge of the target display portion, wherein the seal includes an adhesive having mechanical properties for preserving cell spacing between the front and back plates. WO 99/19765 (Marconi Avionics (Holdings) Limited) sets forth a method of resizing an LCD having a liquid crystal sealed between first and second parallel transparent plates forming an operative area of the display. In its broadest aspect, the method comprises removing an excess region of the display by cutting through the first and second plates to isolate the excess region of the first and second plates and to expose cut edges along the operative areas of the first and second plates. U.S. Pat. No. 6,509,949 (Lu et al) sets forth a method of resizing a liquid crystal display comprising the removal of any tape automated bonding strips (TABs) and flex circuits corresponding to undesired portions of the LCD. Any circuit boards, or portions thereof, corresponding to the undesired portion of the LCD are then cut and removed. The display panel is cut to remove a portion of the display panel corresponding to the undesired portion of the LCD and, finally, the cut edge of the display panel is sealed. Each of the foregoing prior art LCD resizing methods also specifically includes removal of the polarizer before cutting, which adds to the processing costs and time required to resize the display. Also, the prior art is silent on any preferred approach to flex PCB (printed circuit board) cutting.

10.1. US PATENT 7,161,651

83

SUMMARY OF THE INVENTION It is an aspect of the present invention to provide a method of resizing an LCD that does not require removal of the polarizer before cutting. Another aspect of the invention is to provide flex PCB cutting that minimizes conductor short circuits. The above aspects can be attained by a method that includes dicing through the polarizer and other LCD layers using a dicing wheel with specified diamond particle size, as well as specified depth and width of groove, followed by UV laser flex PCB cutting. These together with other aspects and advantages which will be subsequently apparent, reside in the details of construction and operation as more fully hereinafter described and claimed, reference being had to the accompanying drawings forming a part hereof, wherein like numerals refer to like parts throughout. BRIEF DESCRIPTION OF THE DRAWINGS FIG. 1 is a flowchart of a method for resizing an LCD, according to the preferred embodiment. FIG. 2 is scanned electron microscope images of an LCD cut using the method of FIG. 1. FIG. 3 is a scanned electron microscope image of a flex PCB board trimmed according to the preferred embodiment of FIG. 1. DETAILED DESCRIPTION OF THE PREFERRED EMBODIMENTS FIG. 1 is a flowchart showing the steps in a preferred embodiment of the LCD resizing process. First, at step 1, an initial functionality test is performed consisting of illuminating the LCD and verifying optical performance. Next, at step 2, a determination is made as to the desired size of the display, based on the intended application. At step 3, pressure sensitive tape is applied to the tops of both polarizers for protection against glass particles generated during dicing. According to an important aspect of the invention, at step 4, a dicing wheel is used to cut through all layers of the LCD, including the polarizers. The result of this cutting operation and consecutive breaking is shown in FIG. 2, discussed in greater detail below. Contrary to the teachings of the prior art, the inventor has discovered

84


that by careful selection of the diamond particle size of the cutting wheel, an appropriate depth and width of the groove are provided which does not damage the polarizers or cause delaminating of the LCD layers, thereby eliminating the prior art requirement of first removing the polarizers. According to a successful implementation, the cutting step 4 was performed using a KandS 7100 dicing saw with a 10 mils thick diamond wheel. It was determined that diamond particles size should be in range 40 70 microns. The use of lower particle size leads to dicing wheel clogging and overheating of the LCD in the vicinity of the cut. Diamond particles greater than 70 microns give rise to an increase of the chip-out region. Depth of cutting depends on glass thickness and mechanical properties. It was determined that in order to achieve mechanical rigidity of the diced LCD panel for secure handling and easy breaking, the depth of dicing should be different for the TFT and color filter glass layers of the LCD. This result is achieved under conditions that one of the glasses is diced to 30 40 Next, at step 5, UV laser cutting is performed for trimming the PCB flex board. Normally, flex board is made of PVA materials bearing densely populated narrow (.about.10 mils) copper conductive lines. A UV laser is used in the preferred embodiment to avoid short circuits due to copper spreading during mechanical trimming (i.e. machining of PVA requires UV irradiation). At step 6, the sections of unwanted LCD and flex board are broken and separated. In order to facilitate panel separation, it is preferable that the breaking force be applied to the glass having the shallower groove. The remaining LCD is sealed with UV curable adhesive at step 7. An additional UV curable sealant may also be applied for protection against moisture. A final functionality test is performed at step 8, similar to the initial test discussed above in connect ion with step 1. The results of dicing and breaking of the LCD (steps 4 and 6) are shown in FIG. 2 which depicts a vertical cross-section through the cut LCD, from which there will be noted an absence of polarizer

10.1. US PATENT 7,161,651

85

and the other film residues on the diced areas of both glasses. Some polarizer residues are evident sticking to the polarizer. However, the presence of these residues does not affect LCD performance after resizing FIG. 3 is an image of a flex PCB board trimmed using a Spectraphysic.RTM. SSDP laser at 5 W power and 246 nm wavelength, according to the preferred embodiment. Resistivity between two ad jacent conducting lines after laser trimming was measured in excess of 20 Megaohms. The many features and advantages of the invention are apparent from the detailed specification and, thus, it is intended by the appended claims to cover all such features and advantages of the invention that fall within the true spirit and scope of the invention. Further, since numerous modifications and changes will readily occur to those skilled in the art, it is not desired to limit the invention to the exact construction and operation illustrated and described, and accordingly all suitable modifications and equivalents may be resorted to, falling within the scope of the invention.

The e Book on Ip by Dr.manjula Sandirigama

Recommend Documents