ISSUE (Volume)

25 (3)
MONTH

J u ne
YEAR

A monthly Newsletter on issues relating to Intellectual Property Rights

Origiin Newsletter
Origiin completes two successful years and 24 volumes of the Newsletter. We thank all readers for their valuable suggestions/ feedback/appreciation/ encouragement and continuous support to enable us move on.

2013

In this issue Systematic documentation of invention....P.1 IP News Bulletin ..................... ........P.3 News from Indian Patent Office................P.3 Monthly IPO Statistics ..P.4 Interesting patent of the month.... .........P.5 Free Webinar.. ........................... P.6 Certificate course on Invalidation search..P.7

Whats new in this issue? Monthly statistics from Indian Patent Office May 2013

Systematic documentation of invention

Got a new idea?
Planning for a patent? What is the first step? Once you made up your mind to file for What is to be claimed? Patent is a techno-legal document and you get protection over the items you claim in the specification. Hence, identification of novel elements, which may relate to a product or process or utility, shall be done at first level itself. Once you are clear about what to claim, the detailed description of the invention in patent specification

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a patent and the first meeting with attorney/agent is fixed, it is extremely important for you document the

Websites
www.origiin.com www.origiinipa.com

invention systematically. What all shall be documented and how much details are enough, has to be made clear before you proceed further with drafting specification. Though one feels lazy writing the Contact us disclosure of the invention, honestly speaking, there is no substitute to documentation. Sooner or later, you have to document the invention sothat

revolves around such novel elements and helps you to fine tune the invention as well as highlight novelty of the invention. The best way to separate out novelty of the invention is to perform a thorough global patent search and then remove the elements that are in public domain.

Blogs
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Editors
Anita Kalia Athira A

In the cases, where a patent application results from a research work, often inventor loves to include most of the experiments that are part of his/her research, which results in redundant and repeated data resulting in increased number of pages as well as extra fee. The data to be included in

#35, First Floor First Main, Vysya Bank Colony BTM 2nd Stage Bangalore-560076 Email: info@origiin.com

interaction

with

your

agent

is

comfortable and you waste less time in clarification/redoing work. It is always advisable to execute Non-Disclosure Agreement with the attorney to whom you will be disclosing the invention.

a patent application shall All rights reserved (c) Origiin IP Solutions LLP

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a patent application shall only restrict to supporting novel elements of the invention and shall be explained to the level that a person skilled in the art understands it. Existing technical problem In order to be patentable, your invention shall have an inventive step. One of the ways to assess inventive step is identification of the technical problem and the solution you provide. specification is an essential part of a patent application, specifically a complete application that starts with preamble, The following specification particularly describes the invention and the manner in which it is to be performed. This clearly indicates that disclosure has to state the best mode of working the invention and at the same time, the disclosure has to be complete, without any gaps in the process. Section 10 (4) of Patents Act, 1970, clearly states that

Though disclosure speaking,

one of

feels the is

lazy

writing

the

every specification, whether provisional or complete, shall describe the invention and shall begin with a title sufficiently indicating the subject- matter to which the invention relates to. Every complete specification shall fully and particularly describe the invention and its operation or use and the method by which it is to be performed; disclose the best method of performing the invention which is known to the applicant and for which he is entitled to claim protection; and end with a claim or claims defining the scope of the inventions for which protection is claimed. The disclosure of the invention shall be sufficient enough that a person skilled in the art shall be able to achieve the results without further experimentation. Incomplete documentation of the invention by inventor resulting in incomplete disclosure of the same in patent specification may be one of the grounds for patent revocation or invalidation. Hence it is important to disclose complete process that is executable. Specifications often consist of background, description, claims, abstracts and drawings etc. Step wise

invention, no

honestly to

there

substitute

documentation. Sooner or later, you have to document the invention.

The Indian Patents (Amendment) Act 2005 in Section 2(1)(j) and 2(1)(ja) respectively states invention means a new product or process involving an inventive step and capable of industrial application and inventive step means a feature of an invention that involves technical advance as compared to the existing knowledge or having economic significance or both and that makes the invention not obvious to a person skilled in the art. Hence, you shall always be clear about the prior art or existing knowledge or evolution of technology in order to know technical problem precisely and such technical problem shall be explained properly while documenting the invention. For easy reference, it is critical to document bibliographic details of the patent/non-patent documents known to you or even the work done by other inventors. Clear mention of existence of the technical problem makes it easy to establish the need to have a solution for the existing problem. Best mode As you know that best mode disclosure in the

documentation of the invention assists your agent to draft specification in a better manner. You may always prepare flow charts or drawings for easy understanding even though the drawings submitted by you often would undergo complete re-doing of the work to match standards of the respective patent office.

specification is an essential part of a patent application, All rights reserved (c) Origiin IP Solutions LLP

3
Conclusion Documentation/Disclosure of the invention is integral part of the process of patenting. There is no substitute to it. The quality of the patent specification primarily depends upon the precise and clear information you provide to your patent agent. Even though it takes one or two days extra, it makes lots of sense to spend some time and write the invention description patiently. 4. PCT national phase entries reach the halfmillion Mark 5. With 51,677 filings, the United States Patent and Trademark Office (USPTO) received the most PCT applications in 2012, followed by the Japan Patent Office (JPO) and the European Patent Office (EPO), with 42,787 and 32,593 PCT applications, respectively. [Source: WIPO Statistics Database, March 2013] Complete report may be viewed at: 2. The United States of America remains the leading country of origin for PCT applications 3. Electronic machinery overtakes digital communications as the technological field with the largest number of PCT applications.

IP NEWS BULLETIN
Vermont Comes After the Trolls
Vermont, a state that is supposed to be among the top generators of patents per capita, passes new law to protect businesses from bad-faith claims of patent infringement. Under the law, purported patent trolls can be sued by businesses that say they've been victimized, their customers or the state attorney general. Vermont's attorney general sued patent troll MPHJ Technology Investments LLC on the same day the anti-troll legislation was to be signed into law. Patent troll is a pejorative term used for a person or company that enforces its patents against one or more alleged infringers in a manner considered unduly aggressive or opportunistic, often with no intention to manufacture or market the product.

http://www.wipo.int/export/sites/www/freepublicatio ns/en/patents/901/wipo_pub_901_2013.pdf

IMPORTANT NEWS FROM INDIAN PATENT OFFICE

The office of CGPDTM has received a request from Japan Institute of invention and innovation (JIII) through Ministry of Industry, Department of Industrial Policy and promotion seeking nomination of suitable candidates for the following two programs being organised by the Association for overseas Technical Scholarship (AOTS): 1. JPO/IPR training course for patent experts (September 17-October 4th 2013), last date for filing application is 17th

PCT Annual review available

PCT annual review for the year 2013 is now available and some of the important highlights are as below:

May 2013. 2. JPO/IPR training course for IP Protection lawyers

1. About 194,400 PCT applications were filed in 2012, representing an increase of 6.6% on 2011. This was the third consecutive year of positive growth since the decrease in 2009. The 2012 growth rate was slower than that observed in 2011 (+11%).

(October 7 to October 25, 2013) , last date for filing application is 7th June 2013. The candidates working at Japanese enterprises are eligible for this program. Further details can be viewed at: http://www.ipindia.nic.in/iponew/Circular_JPO_IPR_01May

2013.pdf All rights reserved (c) Origiin IP Solutions LLP

MONTHLY STATISTICS FROM INDIAN PATENT OFFICE: MAY 2013

Top 10 Patent Grantees in May 2013
In the month of May 2013, nearly 196 Patent have been granted by Patent office, our of which Qualcomm Incorporated and Samsung India Software Operations Private Limited get maximum number of patents, followed by Hindustan Lever Limited, CSIR, Intel Corporation, Research in Motion Limited, Basell Polyolefine GmbH, CIBA Holding Inc etc.

Branch wise distribution of granted patents

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

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IPC distribution of granted patents

Segregation of patent granted in the month of May 2013 on the basis of basic International Patent Classification reveal that maximum patents have been granted in Class C (Chemistry; Metallurgy), followed by Class H (Electricity), Class B (Performing; Operations; Transporting), Class G (Physics).

INTERESTING PATENT OF THE MONTH

Hip hop aerobic exercise doll
Publication number US7128691 B2 Publication type Grant Application number 11/099,797 Filing date 6 Apr. 2005 Priority date 6 Apr. 2004 Also published as US20050221966 Inventors Robin E. Cottrell Original Assignee Cottrell Robin E

Abstract: An aerobic exercise system for encouraging a person to exercise more which includes a doll having movable extremities which at least include arms and legs which are capable of moving in a predetermined aerobic manner. An aerobic video displays predetermined movements to be performed by the doll. There is a chip disposed within such doll which is connected to the arms and legs for causing predetermined aerobic movements of the doll which correspond to movements of the aerobic video. Additionally, there is at least one aerobic type bench for the doll to perform such predetermined aerobic exercises on.

All rights reserved (c) Origiin IP Solutions LLP

Main claims
1. An aerobic exercise system for encouraging a person to exercise more, said aerobic exercise system comprising: (a) a doll having movable extremities at least including arms and legs which are capable of moving in a predetermined aerobic manner; (b) an aerobic video displaying predetermined movements to be performed by said doll; (c) a chip disposed within said doll and connected to said arms and legs for causing predetermined aerobic movements of said doll which correspond to movements of said aerobic video; (d) at least one of an exercise platform for said aerobic doll to perform on and an aerobic type bench for said doll to perform said predetermined aerobic exercises on; and e) at least one of a DVD and a VHS player disposed on said exercise platform.

FREE WEBINAR BY ORIGIIN

EVENT DETAILS
Patent search means mining and assessing existing patents/applications relevant to a given area of technology. There are various purposes of doing a patent search, such as assessing chances of novelty or patentability of an idea or technology, planning R&D, monitoring your competitors activities, minimising chances of patent infringement upon product launch, infringement analysis or assessing strength or weakness of a patent or application. Therefore, knowing existing patents or the prior art is critical for any business in order to have sustainable growth.

How to register?
Click the link below to register for the webinar http://origiin.eventbrite.com

All rights reserved (c) Origiin IP Solutions LLP

Certificate course on Validity/Invalidity search

A validity/invalidity search seeks to uncover patents or other published prior art that may render a granted patent invalid. The search results consist of a search report, a claims mapping chart, citation of prior art and statutory grounds that may be taken into consideration for invalidating a patent. The results of the search are used to invalidate a patent involved in infringement litigation or to support due diligence and ascertain the validity of a patent. Web based classes available for out station candidates. View complete schedule at: http://origiinipae.blogspot.in/2013/05/schedule-of-courses-origiin-ip-academy.html Duration: 25 hr (contact class 13 hr, project 12 hr) Number of Seats: 6-8 Eligibility: Candidate shall be at least Bachelor in science such as BE, B.Tech, B.Sc. Who should join?: The course is useful to any person keen to pursue career in IPR, fresh students as well as working IP Professionals who want to enhance skills and experience in performing various kinds of patent searches. How to register: Download the registration form from www.origiinipa.com and send us the filled form along with payment to register. Venue: Origiin IP Academy #35 First Main Vysya Bank Colony, BTM 2nd stage, Bangalore-560076 Mobile: +91-98456 93459, +91- 98802 13204 Website: http://www.origiinipa.com Email: info@origiin.com, origiin.training@gmail.com Our other certificate courses 1. Patentability search 2. Clearance search 3. Technology Landscape analysis 4. Patent specification drafting 5. IP audit and commercialization (coming soon)

Disclaimer: The purpose of this Origiin newsletter is for providing general information to the readers on IPR & is not intended as a substitute for professional consultation and advice in a particular matter. For specific issues, kindly seek legal assistance. The IP News and IPO statistics have been compiled from the information available in public domains and Origiin is not as such, responsible for any error, omission, and mistake or misfiled particulars contained or omitted from the said records. Column in the Newsletter is based on authors experience in the area of IPR and views reflected in column are purely of the authors. Please mail us at info@origiin.com for your valuable feedback/comments. All rights reserved (c) Origiin IP Solutions LLP