Unit 2

Benchmarks for Patentability of Inventions

The patentability of inventions is determined by specific criteria or benchmarks that

an invention must meet to qualify for patent protection. These benchmarks are
generally uniform across jurisdictions and are designed to ensure that patents are
granted only for genuinely innovative and novel inventions. The key benchmarks for
patentability typically include:

1. Novelty: An invention must be new and not previously disclosed or publicly

available anywhere in the world before the filing date of the patent
application.
2. Non-obviousness: The invention should not be obvious to a person skilled in
the relevant field based on the existing knowledge or prior art.
3. Utility: The invention must have a practical utility and be capable of being
used or implemented in some form of industry or commerce.
4. Disclosure: The patent application must provide sufficient and clear
disclosure of the invention to enable a person skilled in the art to replicate or
understand the invention.
5. Subject Matter Eligibility: The invention should fall within the statutory
subject matter eligible for patent protection, which typically includes
processes, machines, articles of manufacture, and compositions of matter.

Understanding the Patent System in India

The patent system in India is governed by the Patents Act, 1970, and is administered
by the Controller General of Patents, Designs & Trade Marks under the Ministry of
Commerce and Industry. The Indian patent system is aligned with international
standards but also incorporates provisions to safeguard public interests and promote
domestic innovation. Key features of the Indian patent system include:

1. Patentable Subject Matter: India allows patents for inventions related to

processes, machines, manufactures, and compositions of matter that are new,
non-obvious, and useful.
2. Patent Duration: Patents in India are granted for a period of 20 years from
the date of filing the application, subject to the payment of renewal fees.
3. Compulsory Licensing: The Indian Patents Act provides for compulsory
licensing in certain circumstances, allowing third parties to produce and sell
 patented inventions without the consent of the patent holder, particularly to
address public health needs.
4. Patent Examination: Patent applications in India undergo substantive
examination to assess compliance with patentability criteria, including novelty,
non-obviousness, and utility.
5. International Treaties: India is a signatory to international agreements such
as the Agreement on Trade-Related Aspects of Intellectual Property Rights
(TRIPS) and the Patent Cooperation Treaty (PCT), which facilitate international
patent protection and cooperation.

Filing Patents Outside of India

Filing patents outside of India involves navigating the patent systems of individual
countries or regions where protection is sought. This process typically involves:

1. International Patent Application (PCT): The Patent Cooperation Treaty

(PCT) allows inventors to file a single international patent application, which
can then be pursued in multiple countries or regions designated by the
applicant.
2. National Phase Entry: After filing an international patent application under
the PCT, applicants must enter the national phase in each designated country
or region within 30 or 31 months (depending on the jurisdiction) to continue
pursuing patent protection.
3. Foreign Filing Licenses: In some jurisdictions, including India, inventors may
require a foreign filing license from the national patent office before filing
patent applications outside of the country to ensure compliance with national
security and public interest considerations.
4. Patent Prosecution: Once a patent application is filed in a foreign country, it
undergoes examination and prosecution according to the patent laws and
procedures of that jurisdiction, which may vary significantly from one country
to another.

Searching Patents Databases for Designing Research Objectives

Searching patent databases is a crucial step in designing research objectives to

identify existing patents, assess the state of the art, and avoid infringement. Effective
patent searching involves the following steps:

1. Define Search Criteria: Clearly define the keywords, classifications, and

search parameters relevant to the research objectives and the technology
domain of interest.
2. Select Patent Databases: Choose appropriate patent databases based on
their coverage, relevance, and accessibility, such as the USPTO's Patent Full-
 Text and Image Database (PatFT), European Patent Office (EPO) Espacenet, or
WIPO's Patentscope.
3. Conduct Preliminary Search: Perform a preliminary search using selected
keywords and criteria to identify relevant patents, analyze patent landscapes,
and understand the competitive landscape.
4. Analyze Search Results: Review and analyze the search results to identify key
patents, trends, gaps, opportunities, and potential risks related to the research
objectives.
5. Refine Search Strategy: Refine the search strategy based on the initial
results, feedback, and insights gained to conduct more targeted and
comprehensive searches, as needed.

Online Patent Search Strategy

Developing an effective online patent search strategy involves a systematic and

structured approach to identify relevant patents, assess the state of the art, and
gather insights for research and innovation. The key components of an online patent
search strategy include:

1. Define Objectives and Scope: Clearly define the research objectives,

technology domain, keywords, classifications, and search parameters to focus
the search and guide the selection of patent databases and tools.
2. Select Patent Databases and Tools: Choose appropriate online patent
databases, search engines, and analytical tools based on their coverage,
features, and relevance to the research objectives and technology domain.
3. Develop Search Queries: Formulate comprehensive and structured search
queries using Boolean operators, wildcards, proximity operators, and other
advanced search techniques to retrieve relevant patents and minimize
irrelevant results.
4. Execute Search Queries: Execute the search queries across selected patent
databases and platforms to retrieve and collect patent documents,
bibliographic data, legal status information, and other relevant data sets.
5. Analyze and Evaluate Search Results: Analyze, evaluate, and categorize the
search results based on relevance, novelty, citations, patent families, legal
status, and other criteria to identify key patents, trends, gaps, opportunities,
and potential risks related to the research objectives.
6. Document and Report Findings: Document and report the search
methodology, search queries, search results, analysis, insights, and
recommendations in a structured and comprehensible format to facilitate
decision-making, collaboration, and communication with stakeholders,
researchers, and inventors.
Debates Surrounding Patent Protection in Fields Like
Biotechnology, Computer Sciences, etc.

The debates surrounding patent protection in fields like biotechnology, computer

sciences, and other emerging technologies are complex and multifaceted, reflecting
the tension between promoting innovation and ensuring access to knowledge,
competition, and public interest. Some of the key debates and perspectives in these
fields include:

1. Gene Patents and Biotechnology: The patentability of genes, genetic

sequences, and biotechnological inventions has sparked debates over the
ownership of life forms, ethical considerations, access to genetic resources,
and the impact on healthcare, research, and development.
2. Software Patents and Computer Sciences: The patentability of software,
algorithms, and business methods has raised concerns about stifling
innovation, hindering competition, promoting patent trolls, and creating
barriers to software development, interoperability, and collaboration in the
open-source community.
3. Patent Thickets and Standard Essential Patents (SEPs): The proliferation of
patents, patent thickets, and SEPs in industries such as telecommunications,
mobile devices, and IoT has led to concerns about patent quality, patent trolls,
hold-up, royalty stacking, and the impact on innovation, market competition,
and consumer welfare.
4. Access to Medicines and Public Health: The debates over access to
medicines, generic competition, compulsory licensing, and the affordability
and availability of essential drugs have highlighted the tension between
patent rights, public health needs, and the right to healthcare, particularly in
developing countries and during global health crises.
5. Patent Reform and Policy Considerations: The ongoing debates over patent
reform, patent quality, patent office practices, patent eligibility, patent trolls,
patent litigation, and patent assertion entities (PAEs) reflect broader policy
considerations and challenges facing the patent system, stakeholders, and
policymakers in adapting to technological advancements, market dynamics,
and societal needs.

Conclusion

Understanding the benchmarks for patentability, the patent system in India, filing
patents outside of India, searching patents databases for designing research
objectives, online patent search strategies, and the debates surrounding patent
protection in fields like biotechnology, computer sciences, and other emerging
technologies is essential for researchers, inventors, policymakers, and stakeholders to
navigate the complexities of the intellectual property landscape, foster innovation,
address challenges, and contribute to the progress and prosperity of society.