Patent Drafting - Science topic

This accurately describes the processes to go through but anyone thinking of getting a patent should FIRST consult a patent agent, rather than just an after-thought as described here.

The answer from Margaret Brumm is over-cautious in my opinion. Wait for confirmation from the IPR authoritythat your application for a Registered Design is approved, and only then go ahead and publish.

Thank you so much, Dr.Tim John Hewson for sharing your experiences. Dr. Is Espacenet has a firm-level patent citation?

Interesting question Mr. Asit from CSIR to ICAR! Well, I thought Mr Munish Kumar in his learning process as a student needs to explore looking from this angle too. In case he finds there is no specific unit designated by this name then the Directorate of Research of the University is to be seen as the Deemed to Be Unit for this purpose.

Director of Research at GGSIPU , Dr. P.C.Sharma, is a man of biotechnology and they are teaching/addressing the IPR issues as well to some extent.

Jasmine Ritesh Gujarathi,

The patent is a techno-legal document. Writing a patent proposal is a special skill. You have to establish the patentability of your invention - novelty, non-obvious inventive steps, industrial applications etc. A comprehensive patent search has to be done to identify the advancement of your work with respect to prior art. Drafting of claims is also a very important task.

A researcher can do all these, but for the first time there may be problem. Help may be taken from professionals (Patent consultant/ Patent attorney) for drafting and filling a patent.

Best wishes

Each patent is for 1 invention only. The later patent is called a divisional. Typically the description is identical for such patents or applications. Both may have the same description but protect different scope of invention. If you look at claim 1 for both patents you will see the differences 

Dear Shivakumara Bheemanaik,

I hope these books are useful for you.

Best regards,

Hiep

X is an independent entity so one should not be confused between FTO and patent grant. What does it mean ? Simply stated X can be granted, provided one proves novelty and inventively vs prior art. But this patent, although being granted, at the commercial exploitation stage, can "walk on the toes" of other patents (Y, Z). The FTO allows then to define to which extent X will walk on the toes and what are the risks ? To which extent your patent X, being commercially exploited, would infringe patent Y and family Z ? If so what is the strategy ? Shall you license with patent Y or Z owners ? Or shall you consider that risk of being litigated is so low that no need to sign a licence ?  

A few additional things to note beyond those stated above. You may have an obligation to assign your invention to the University and/or run it through their Tech Transfer office (if they have one) assuming the work was performed as part of an affiliation with a University. [Same issue would be true for an employer.]  If you are clear on that, you also need to understand whether the country you are in requires you to file in the home country first. For example, in the US if you live in the US and invent something, in order to file outside the US you need a foreign filing license which is part of the application process. If you wanted to file somewhere other than the US as the first country you would need to request an expedited license from the US government. Bottom line, you probably need to talk to a qualified patent professional in your jurisdiction to understand your best course of action. Also note that the types of claims that are available for a patent can vary by jurisdiction, so you'd want to understand that as well. And whatever you do, don't make the information publicly available until you've sorted this all out.

Three basic Criteria:

1) New: Should be completely different from prior art (should be published or disclosed ever anywhere!);

2) Non-obvious: Should be newer for the person Skilled in art as well as should be reproducible by person skilled in art;

3) Industrial Applicable: Should be useful to society/industry...

From these criteria you can definitely say that your work shouldn't published anywhere before you FILE a patent...

The introduction serves 3 purposes: (1) to let the patent office know which set of examiners to send the application to, (2) to tell a story as to how inventive the invention is, i.e. there was this problem, and it couldn't be solved before, and (3) to distinguish over prior art the patent office examiner is certain to find, i.e. A said do B, but it didn't work and B isn't the same as C which is what we do. For the US, the introduction also serves to list and distinguish over every relevant piece of prior art - by putting it in the intro, the attorney makes sure he doesn't forget to draw it to the USPTO examiner's attention (a task he must fulfil). Drafting patents is actually quite straightforward - we just use language in a slightly different way from the inventors in their papers. Julian

Hi Annapurna,

Patent law is territorial. Unless the product could be sold worldwide (popular software/game or blockbuster drug), there is no need to file a PCT. Over 99% of all patents has no value (not sold, licensed or put into a commercial product).

Patent law also put small business and individual inventors at an uncomfortable position exactly as you noticed: hard to appreciate the market value and cash-short to file patent applications.

If you are not sure about the value of your invention, you may consider to keep it as a trade secret, and keep improve the qualify thereof. As long as you are constantly modifying your invention to make it better, there is no statutory bar preventing you from patenting the technology/product at a later time (in U.S.)

Dear Rajeev, this is a good question most entrepreneurs struggle with. First of all you have to determine why you want to file a patent, this might sound like a strange question but many people think that filing a patent is suddenly going to cause them to make millions. This is simply not true, you need to have a very clear idea of where the market lies for your product, who is your buyer and where do they operate and what would work for them?

Do you want to take the product to market? Do you have funding to protect your patent when it is challenged in court? All these things matter before making a decision about patenting. Most likely if you are not willing to quit your job and pursue this matter with everything you have, write a proper thought through business plan and pitch it to investors / VCs, proving to them that this is worth all your effort and time they would probably not be interested.

That said, I would first get an investor before bothering with patents. It is a waste of time and money if you are not willing to follow it up with further development and testing in the field. If you are not willing to do this yourself, maybe your institution have a commercialization office that can take this further for you and make the business plan and pitch to investors?

Bottom line is if you do not have a clear strategy of how you will sell this and to whom you could just as well publish your work as file a patent, there are many examples of people filing patents that cost them a fortune and nothing coming of it.

O yes and the first round patenting usually is not that expensive if you file via one of the international treaties (depending on your country), this will protect you in all the major locations, usually for 12 - 24 months in which time you can find an investor that would pay for the final filing of the patent in the locations you choose. Problem is that if you fail to do this in the 12 - 24 moths your patent becomes public domain.

About your question regarding the attorneys, yes absolutely go with an attorney, if you do this yourself (technically possible) you will get the patent filed but it would most likely be overruled in the first court case because of your lac of experience, not recommended.

I am assuming this is a search for purposes of patentability only. Do the ~500 possible compounds have a common core structure? If so, I might start with a substructure search on the CAS Registry database. That should identify any compounds known to exist which have that core structure.

A manual search of the patent art is also useful. Chemical compound patents are classified based on structure, so that a search of the relevant subclasses is often feasible. In the case of ~500 compounds, it may be difficult unless the compounds are very similar. If not, we might request that the inventor identify a smaller number of compounds to serve as the basis of the manual search. We also do keyword searching on databases such as Derwent and Espacenet.

Another possible issue might be hypothetical compounds encompassed by Markush groups described in published patents. A search for Markush structures in the prior art can also be carried out on the MARPAT database. We also review Markush structures uncovered during a manual search to see if they cover the compounds at issue.