Handling Inventions for Patent Protection

Role of an IP Manager
(Role of IPMOs / TTOs)_


Suresh Kumar K.
Scientist E
Patent Facilitating Centre
Technology Information Forecasting & Assessment Council (TIFAC)

sureshkk@tifac.org.in

Training of Trainers
CCS HAU, ICAR, MSU
February 11-20, 2008
Divisions

Part I

1. Some basic questions
2. Identifying inventions/Driving out the inventions

Part II

1. Novelty issues
2. Inventive step / Non-obviousness
3. Role of a manager
Part I


Some basis questions
Driving out an invention
Question no. 1
Are Ideas Patentable?
Examples:

1. A library of organic molecules generated using a high
end software that may have potential use as pesticides.

2. A tracheotomy forceps (a surgical scissor)

3. Evidence to show presence of a drought tolerant gene in
Artocarpus heterophyllus (deep root system)
Question no. 1
Are Ideas Patentable?
A tracheotomy forceps

Sanjay Gandhi Post
Graduate Institute of
Medical Science
(SGPGIMS)
Lucknow
Question no. 1
Are Ideas Patentable?
A tracheotomy forceps

Sanjay Gandhi Post
Graduate Institute of
Medical Science
(SGPGIMS)
Lucknow
Question no. 2
Is triviality a bar for patenting?

The story of the
Gem Clip
Triviality a bar?
PAPER / GEM Clip History

1867 Samuel B. Fay gets first patent on
clips in the United States
1877 Erlman J. Wright gets a US patent
for paper clips
1883 Henry J. Petroski gets a US patent with
the first reference of gem in patent specs.
1890-1900 Patents in the area in Germany and UK
1899 William Middlebrook of Waterbury, Connecticut
gets a US patent for a "Machine for making wire
paper clips
1904 Gem" name was registered as a trade mark in
the United States

2000s One can still see US patents being granted
The story of the Gem Clip


The patent awarded to Samuel B.
Fay described this clip as a
ticket fastener to be used, in
lieu of a pin, to fasten tickets to
fine fabrics. The patent noted
that the clip could be used to
attach a paper ticket to another
piece of paper. A variation on
this clip had longer legs.

The story of the Gem Clip



Cushman & Denison Mfg. Co.
A US Advt in 1898
An Improved Gem Paper Clip
(US 1920)
A recent US patent
Paper Clip (No D526,356)
Issued to Shinya et al, on August 8, 2006
Recent US Patents on Gem Clip
Question no. 3
Are living organism Patenable?
Case Study I

US Patent 4,259,444 entitled Microorganisms having multiple
compatible degradative energy-generating plasmids and preparation
thereof (Famous Diamond vs. Chakrabarty case)

Inventors: Chakrabarty; Ananda M. (Latham, NY)

Assignee: General Electric Company (Schenectady, NY)

Appl. No.: 260563

Filed: June 7, 1972

US Incentives to Inventions: Some
Reflections in the Patent Laws

Article I 8 of the US Constitution: (The Congress shall have
power) To promote the progress of science and useful arts, by
securing for limited times to authors and inventors the exclusive
right to their respective writings and discoveries;
Paramount importance to inventions and hence to the inventors
(Filing procedure)
Anything under the sun that is manmade is patentable (reinforced
by Diamond v/s. Chakrabarthy case)
Inventive step not a criteria (Only non-obviousness is)
First to invent system (Rather than first to file system USPTO
Interference Proceedings)
Dual protection possible
Landmarks in the US History of IPR
1930 Plant Patent Act
1961 UPOV Convention (in Europe)
1970 U.S. PVP Act
1980 U.S. Supreme Court Chakrabarty (micro-org)
1981 U.S. joins UPOV
1986 First patent for a modified plant patent (Harvard Mouse)
(A plethora of patents on cell lines (human cells
included), EST, SNPs, etc.. Etc.)
1995 U.S. Supreme Court Winterboer (farmers
exemption h expanded)
1999 A patent application claiming human-animal hybrid (Rules out
ownership of human beings)
2000 U.S. Supreme Court J.E.M. (dual protection)
What life is owned?


Bacterium from the genus Pseudomonas
containing two or more stable energy-generating
plasmids, each of said plasmids providing a
separate hydrocarbon degradative pathway.

Essentially, the (GE) microbes had the potential
to eat away the oil and thus clean-up oil spills
Interesting process..
1. GE files two applications in 1972

2. PTO grants the process patent

3. Refuses the micro-organism per se claims

4. Reason: Product of nature

5. GE appeals to PTO Board of Appeals : Argument: Different from their
natural counterparts

6. Board of Appeals concedes it is not product of nature. Still rejects on
the ground of patentability of live organisms

The saga continues..
1. GE goes to US CCPA
2. The court rules 3-2 in GEs favour
3. Majority view:

(i) Microorganisms were much more akin to inanimate
chemical compositions such as reactants/reagents than they
are to horses/honeybees or.

(ii) No congressional intent to limit patents to dead inventions

CCPA did not see active chemicals (read dead) anything
legally different from organisms (read alive) used for
chemical reactions

The saga continues..
1. PTO appeals to Supreme Court
2. Several amicus briefs filed
3. Patenting of life form not in public interest
4. Patenting lower forms to lead to patenting of
higher forms (including mammals)
5. Patenting essentially implies the life has no sacred
place and is essentially an arrangement of
chemicals
The saga ends..
1. The final Supreme Court verdict in 1980
2. 5-4 in favour of CCPA verdict
3. Looks closely at 35 US 101 Any new/useful.. Manufacture..
or composition of matter of or any new/useful improvements
thereof
4. Plant Patents and US PVP specifically excluded bacteria
5. No congressional intend to exclude microorganism from
patentability
6. The new microorganism in question was new composition of
matter, the product of human ingenuity and not natures
handiwork
7. Thus patentable
8. Ownership of life becomes a reality
Causality : USPTO Perspective
Change


Anything under the sun patentable (35 US 101)
(provided new, useful and non-obvious as per 35
USC 102 and 103)

A deluge of patents in life forms, including plants,
animals and microorganisms
Indian Situation
Patentable: (YES)
Microorganisms
Genes, Plasmids, Promoters, Cell lines, Vectors
Non-biological processes of producing life forms
Any process for the medicinal, surgical, curative, prophylactic or other
treatment of plants to render them free of disease or to increase their
economic value or that of their products

Not Patentable:
Plants and animals in whole or any part thereof other than micro-
organism, and essentially biological processes to produce these

Any process for the medicinal, surgical, curative, prophylactic or other
treatment of human beings and animals to render them free of
disease or to increase their economic value or that of their products
Question no. 4
Are discoveries Patentable?
Case Study II: Rhinosporidiosis

Rhinosporidosis is a disease manifested by tumor-like polypoidal
growth in the nose (nasal polyp)

Earlier a protozoa was considered as the cause

A fungus named Rhinosporidium seeberi was considered to be the
likely pathogen

In 1996, a Professor at AIIMS establishes for the first time that a
cyanobacterium called Microcystis aeruginosa is the causal
microorganism.
Question no. 4
Are discoveries Patentable?
Case Study II: Rhinosporidiosis


What are the possible candidates for protection?

The bacterium?

The process of identifying the bacterium ?
(lab protocols including collection of patient tissue samples, collection of
the microorganisms, electronic microscopy, fluorescence, confocal
microscopy, immuno-labelling, extraction /electrophoresis of DNA, etc..)

The statistical data?
Question no. 4
Are discoveries Patentable?
Case Study II: Rhinosporidiosis

The research is of excellent quality and merits
publication in renowned international medical journal

Does not constitute an invention under the provisions
the patent acts anywhere* in the world.


*US could be an exception
Designing a treatment?
Indian Situation



Negative list (Section 3)

The mere discovery of a new form.or mere discovery
of any new property y or new use of a known
substance.[ 3(d)]

Any process for the medicinal, surgical, curative,
prophylactic, diagnostic, therapeutic or other treatment
of human beings or animals.[ 3(i)]
Designing a treatment?
US Situation
Method of treatment claims possible

US Patent 7,135,455 (Stern, et al) (Nov , 2006)
Methods for the therapeutic use of cyclosporine components

Claim 1. A method of treating inflammatory bowel disease in a
human or animal, the method comprising: topically administering to a
human or animal having inflammatory bowel disease a therapeutically
effective amount of a cyclosporin A component selected from the
group consisting of cyclosporin A, salts thereof and mixtures thereof,
in a rectal suppository, thereby treating the inflammatory bowel
disease.

(Treatment of rhinosporidiosis also covered in the disclosure)
Question no. 5
Are a technical paper and a patent
specification contents the same?

Case Study III: Magneto-Conductive Polymer
Composite

Applicant/Assignee : IIT Kanpur
Publication V/s Patents
Case Study III: Magneto-Conductive Polymer
Composite

Invention Disclosure Details

A metal-polymer composite which has both magnetic as well as
magneto-resistive features has been fabricated. The composite has
excellent magnetic properties as well as magneto-resistive properties.
The magnetic properties of these composites resemble that of the bulk
magnetic alloys. Material. Further, the material shows conductive
properties. The unique cone shape of the composite material makes it
possible to use this where preferred orientation, size and desired
properties. The composite was prepared by solidification of a
suspension of magnetic alloys in a polymer host. The potential
commercial applications, include electronic data recording/storage
devices.
Publication V/s Patents

Magneto-Conductive Polymer

Invention discloses..

Properties
Invention discloses..



Properties



Properties
Question No. 6

Magneto-Conductive Polymer



Are properties patentable?
The turmeric case
Case Study IV: US Pat No. 5,401,504 (March 28, 95)

Use of turmeric in wound healing

Abstract
Method of promoting healing of a wound by administering turmeric to a
patient afflicted with the wound.

Inventors: Das; Suman K. (Jackson, MS); Cohly; Hari Har P. (Jackson, MS)
Assignee: University of Mississippi Medical Center (Jackson, MS)
Appl. No.: 174363 Filed: December 28, 1993
The turmeric case
Claims
1. A method of promoting healing of a wound in a patient, which consists
essentially of administering a wound-healing agent consisting of an effective
amount of turmeric powder to said patient.

2. The method according to claim 1, wherein said turmeric is orally
administered to said patient.

3. The method according to claim 1, wherein said turmeric is topically
administered to said patient.

4. The method according to claim 1, wherein said turmeric is both orally and
topically administered to said patient.

5. The method according to claim 1, wherein said wound is a surgical wound.

6. The method according to claim 1, wherein said wound is a body ulcer.
The case of turmeric patent
Patent granted in 1995 by the UPTO to the
UNIVERSITY OF MISSISSIPPI
Wound healing use of haldi (topical/oral form)
Brought to notice in 1996
Revocation proceeding in 1996.Publication of 19
th

Century : Novelty questioned
Defense: Freshly cut wounds (surgical wounds)
Documentation in 1879 application of turmeric
umbilical chord
Patent revoked in 1999
Divining Out the Invention
(Identifying Inventions)

Case Study III: Magneto-Conductive Polymer

Invention discloses..

A metal
A polymer
A composite
Cone in shape
Magneto polymer composite..
Probing the Invention
Que. : What is to be protected?
Ans. : The excellent properties.
Que. : Of..?
Ans. : Of the composite
Que. : Fair enough. What does the composite contain?
Ans. : Two components. The polymer part. The metallic part.
Que. : What is the polymer component?
Ans. : PVP
Que. : PVP???
Ans. : Polyvinylpyrrolidone
Que. : ..and the metal part?
Ans. : A Chromium alloy..
Que. : Cr-Fe?
Ans. : Yes. Also Cr-Ni and Cr-Co.
Magneto polymer composite..
Probing the Invention
Que. : Excellent. How do you prepare this?
Ans. : I completely dissolve some select weight of PVP in a solvent ambient
conditions and
Que. : Can it be only PVP?
Ans. : It can be any vinyl-keto based polymer
Que. : and the solvent ?
Ans. : Ethanol.
Que. : Any others?
Ans. : Other organic polar solvents.
Que. : How do you make sure completeness of dissolution?
Ans. : I should obtain a clear solution. (Clear to the eye? Yes)
Que. : Then.
Ans. : I add simultaneously select weight of the alloy and a conducting carbon
by agitating
Que. : Why conducting carbon.?
Ans. : The mosaic of magnets should behave as a single entity.
Que. : Agitation is done manually or mechanical or ..?
Ans. : By sonication in a sonicator
Que. : Then
Ans. : I Allow it to settle down for half an hour and then the contents are poured
into a non-metallic container. The solvent is allowed to vapor off, resulting
in the formation of needle shaped

Magneto polymer composite..
Probing the Invention
Applications ?
1. Thin Films
2. Magnetic Read Head Device
3. GMR (Eu
1-x
.Gd
x
.Se)


Existing (prior-art) solutions:
In thin film, a paste of a magnetic alloy such as Cr-Fe
is smeared on a polymer substrate

Prior-art Problems
Low Curie Tem (about 343K), above which the alloys
get oxidized
Low distribution of magnetic material
Low Rate of Change of MR (2-3 %)
About 95% is the magnetic material
Magneto polymer composite..
Probing the Invention
The objects of the invention

1. A thin film where polymer is an integral part
2. Less amount of magnetic alloy
3. Uniform distribution
4. Control shape and size (nano)
5. Higher curie temp (> 473K)
6. High rate of change of MR (10-20%)
Case Study IV: US Patent No. 6627101
Manoharan et al. September 30, 2003
Magneto conductive polymer composite and process
for the preparation of the same
Claimed:

1. A magnetic polymer composite for read and write heads for use in magnetic
storage devices, comprising 60-90% by weight polyvinylpyrrolidone 10-40% by
weight of magneto resistive alloy; and 5-30% by weight of conducting carbon.

2. The polymer composite as claimed in claim 1, wherein the said magneto-
resistive alloys are selected from chromium-iron, chromium-cobalt or
chromium-nickel.

3. The polymer composite as claimed in claim 1 wherein said composite is in the
form of a powder.

4. A process for the preparation of a magnetic polymer composite, comprising:
(a) dissolving polyvinylpyrrolidone in a solvent to obtain a clear colorless
solution; (b) adding magneto-resistive alloy particles to said colorless solution;
(c) simultaneously adding conducting carbon to said colorless solution; (d)
agitating said solution obtained from step (c) at a frequency of 15-20 kHz for a
period of 5-30 minutes to produce an evenly dispersed dispersion of alloy
particles in said solution; (e) transferring said solution containing dispersed
alloy particles to an open non-metallic container on a megneto-stirrer and
allowing said solvent to evaporate until polyvinylpyrrolidone coated magneto
resistive alloy composite is isolated from the non-metallic container in the form
of cones.
Question no. 7
Property / Characterization data an essential
part of patent disclosures ?



Hysteresis Data

Question no. 7
Are Property / Characterization Data
an essential part of patent disclosures ?



Hysteresis
Curve

Question no. 7
Characterization / Property Data
an essential part of patent disclosures ?
Such data become
imperative to
identify a product,
specifically when
otherwise not
possible to explicitly
define the product.
Question no. 7
Characterization / Property Data
an essential part of patent disclosures ?
The data also
becomes critical to
establish the
inventive step from
closely related
prior art

Case Study V
- Novel biocatalyst called Cross-Linked Protein
Coated Microcrystal (CLPCMC)

Problem


Enzymes are used in many organic
synthesis
Some redox reactions require low water
media
Significant reduction in catalytic rate
Case Study V
Cross-Linked Protein Coated
Prior-Art Solutions on bio-catalytic designs


Cross-Linked Enzyme Crystal (CLEC)

CLEC suitable for bio transformation in non-aqueous media
(Khalaf et al 1996) as well as aqueous media

Enzyme conformation critical (Crystallization conditions)

Requires pure enzymes, increasing the cost and time


Expensive and time consuming

High conversion rates
Case Study V
Cross-Linked Protein Coated
Prior-Art Solutions


Protein / Enzyme Coated Micro-Crystals (PCMC)

PCMC enables biomoeucles retain good bioactivity
Free flowing with specific particle size and morphology
Less expensive
Potential in drug delivery for protein therapeutics (Liposome composition)



Bismuto et al 1979 observes stability of immobilized enzyme linked to
Career interactions
No, of bonds
Freedom of the conformation
Microenvironment
Charge and properties of spacer
Immobilization conditions / method (covalent, h-bonding )

Stability issues (the salt core dissolves)
Only in non-aqueous media
Low rates of conversion

Advantages
Heterogeneous type
Control of size and shape
Case Study V
Cross-Linked Protein Coated

Solution


CLEA High rates, though expensive and
laborious to make
PCMC Easy to manipulate size, though
conversion rates are low

A combination??
Case Study V
Cross-Linked Protein Coated

Object of the Invention

A Cross-Linked Protein Coated
Microcrystal (CLPCMC) that has high
conversion efficiency and stability and can
work in low aqueous environs
Step I - Assessment of the disclosure
for a publication prior-art search



Is this disclosure sufficient to conduct a good
publication search?

Has the investigator done extensive publication
search?

Does it require a broad patent search or narrow
search?
(Crowded vs. sparsely populated prior-art)
Step II- Assessment of the disclosure
for a Prior-art search



Is this disclosure sufficient to conduct a good patent search?

YES go to step III

NO Ask further details

Specific questions based on a sample search and get details (Novelty to be
disclosed..??)

Ask for a more elaborate write-up
(Problems How elaborative? Novelty to be disclosed..? )




Step III - Prior-art Patent Search


What are the possible databases that may be used?

A broad patent search or narrow search?
(Crowded vs. sparsely populated prior-art)

Possible search strategies
(Chemical structure, nucleotide sequence, keywords,
classification, name search, combinations)

Selection of database(s) and strategy (ies)
Case Study V
Cross-Linked Protein Coated

Prior-Art searches

CLEA

US 20031449172 (A1) disclosed a cross-linked enzyme aggregate
(ULCEA) and a method of preparation
Other patents include US 3883394, 4760024, US 4292199, EP 1099997 and
JP 2133386
US 6011001 discloses a method of therapeutic treatment, disclosing both
microcrystal and cross-linked enzymes


Novelty Issue. Is the invented CLPCMC different ?
Case Study V
Cross-Linked Protein Coated

Prior-Art searches

PCMC

US 4292199 teaches improved loading of an enzyme onto a support matrix
that is porous and provided by impregnating inorganic oxide with
polyamine at highly acidic pH. (Question the resultant product a crystal?)

US 2002168414 talks about an inexpensive water soluble PCMC with
enhanced catalytic activity and stability in non-aqueous media

Novelty Issue. Is the invented CLPCMC different ?
Case Study V
Cross-Linked Protein Coated

Inventive Step Issues

Whether the method of incorporating CLEA on protein coated
microcrystal different from method of incorporating enzymes on
micro-crystal as disclosed in 20021648414

If yes, is such a method of incorporation of CLEA onto PCMC is a
logical step for a person skilled in the art to pursue?
Step IV Questions based on Prior-
art search

SAFE Options


Novelty leave to the PI
(You are SAFE)

Inventive Step
(Leave it to the Examiner)

Utility
Anyway there would be some utility

Well then what is the role of a patent protection intervener?



Step V Drafting and Filing,
Prosecution, Grant, Renewals, etc



Have a good patent attorney firm with you



Part II



Some novelty and inventive step issues
What is not novel?
(Difference from the Prior-Art)
Publication includes
Publication in any journal/magazine
Newspapers
Patents granted earlier
Exhibition
Oral disclosures

Public use
Commercialization / Sale
Public demonstration
How to keep confidentiality?
1. I have got to conduct field trials
2. I have got to report to the funding agency
3. I have to present the thesis
4. Data need to be verified by technical experts
5. Some data possible only with others help
6. I have to have data on clinical trials
7. How do you I prove the utility aspect of my invention
8. I need to promote my product in the market

Possibility of Provisional filing ( 9)
Prototype not a prerequisite ( 10 (3))
Communication to Government ( 30)
Disclosure in confidence (Indian Contract Act, 1872)
Public working for Reasonable trials possible ( 32)
The case of a tube with a branch
tube
Known Novel???
c
o
The case of a tube with a branch
tube
Known Novel???
Apply the conditions!!
Condition Novel Not novel
Published? No Yes No
Publicly used? No No Yes
5 methyl uridine

An intermediate for anti-AIDS drugs

Synthesis through chemical route

Synthesis through biological route

5 Methyl .
Japanese patent(published)
Reacting ribose-1-phosphoric acid with 5
methyl uracil in presence of Micrococus luteus
Drawbacks
Purification step not described
Size of 5-MU very small ( 20 30 um)
Reduced separation rate
Increased separator size
5 Methyl..
Steps

Precipitation of culture medium

Adding 5-M Uracil and ribose phosphoric acid
into the culture medium

Separation on 5-MU crystal of size 10-50m
5 Methyl..
New patent (US patent)
Used same chemicals and microorganism
Steps
1. Natural precipitation of the culture medium
2. Removed 50-90 % of culture medium
3. Reaction allowed in the decanted culture
4. Separation of 5-MU crystal size of 50-500 m
Advantages
High purity 5-MU
Increase separation efficiency
Etoposide Drug Delivery
Treatment of cancer
1. Chemotherapy / Radiotherapy
Disadvantage : Cytotoxic to normal cells

2. Safer drugs (target specific)
E.g. Etoposide (epipodophyllotoxin)
Advantage : Less side effects
Problem : Low solubility vehicle induced
side effects
Etoposide Drug Delivery
Invention : Encapsulation of etoposide with liposome
Process : Flash evaporation process

Advantages:
More stable
Improved efficacy
Reduced toxicity

Patents filed in India (Aug.98) and through PCT (Aug. 99)
Etoposide Drug Delivery
PCT search report (April 2000)

US 5741516(Issued: Apr 21, 98) Priority: Dec 14, 95

1. A liposomal composition for delivery of a therapeutic
compound to mammalian host which comprises a liposome
having one or more membranes which comprise
sphingomyelin and cholesterol, a lipsosomal interior have a
pH less than that of the liposomal exterior, and a
therapeutic compound contained in said liposome for
delivery to the host

6. The liposomal composition of claim 1, wherein the therapeutic
compound is selected from vicristineor etoposide or
prodrugs thereof
Etoposide Drug Delivery
Argument
No example to substantiate an effective
etoposide encapsulation in US 5741516

Reality
Even a single line enough to kill the novelty of
an invention
What is Inventive?
(Distance from the Prior-Art)
Inventive step or non-obviousness is:

Not obvious to person (s) skilled in the art*.
Givens

A+B is known
B+C is known
A+B+C is NOT known

Question: Whether A+B+C is inventive?
(* Who? Level of skill?)
The case of a tube with a branch
tube
Known Novel Inventive???
Inventive step
Givens

1. A+B is known
2. B+C is known
3. A+B+C is NOT known

Question : Whether A+B+C is inventive?
Problem : Subjectivity
Guiding principle : Triviality is not bar for patenting.
Approach : Check out answers to :
Could 3 solve any problem not solved by 1 or 2?
Has it addressed a long felt solution to a prior art problem?
Acoustic Tide Gauge
Use: to measure the tide level in
an oceanic environs
Device: A guide tube with one
end open, the other end with
transducer
Principle: Velocity of sound
Problem: Velocity of sound
varies with temperature
C=C
0
1+T/273
-- - - - -- - - - - -
-- - - -water- - -
- - -- ---- - - - - -
- --- - - - - - - - -
-- - - - - - - - - -
Acoustic Tide Gauge
Prior Art
1. Temperature sensors at
different positions
2. A hole provided in the guide
tube
3. Both 1 and 2 above

Others
1. Float Levelmeters
2. Ultrasonic liquid level sensor
Acoustic Tide Gauge
Patent no: US 6360599 B1
Year : March, 2002
Applicant : National Institute of
Ocean Technology, Chennai
Use: to measure the tide level in an
oceanic environs
Device: A guide tube with one end
open, the other end with transducer
Principle: Velocity of sound
Problem: Velocity of sound varies
with temperature
C=C
0
1+T/273
Acoustic Tide Gauge
Known feature

A guide tube
With dia d<0.586

Novel feature

Branch tube with length
L=(2n-1) /4 = (2n-1) C/4



Acoustic Tide Gauge
Claims
1. A device measuring tide level in sea comprising:
a guide tube having its lower open end immersed at least 0.5 m
below the lowest tide level to minimize the undesirable effects of the
current and surface waves, means for generating processing and
displaying the data signals, a transducer or a pair of transducers fixed
substantially at the upper end of the guide tube for generation and
reception of electrical as well as acoustical pulses, a switching circuit
for isolating the transmitting and receiving signals, wherein a least
one branch tube is provided near the upper end of the guide tube
having its length determined by the formula
L=(2n-1) /4 = (2n-1) C/4


The issue of obviousness
Invention : A highly acidic heterogeneous microporous solid
catalyst comprising

1. sulphated metal oxide (zirconia)

2. at least one carbon molecular sieve and/or heteroploy acid

3. pore volume in the rage of 0.1 - 0.2 m3/g and

4. pore size distribution in the range of 25 - 40 A0
Heterogeneous Microporous Catalyst
-Non-Obviousness
Microporous.

Applications of the catalyst

(1) Selective cyclyzation

(2) Selective mono-nitration of aromatic compounds (O:P
selectivity)

Filed at : USPTO
Heterogeneous Microporous Catalyst
-Non-Obviousness
US Office Action
The claimed invention is constructed from two known catalysts
each of which is taught by prior art.

Prior Art
1. Process for preparing catalyst containing SMO and heteropoly
acid known. Cited document also discussed pore volume and
size distribution (SMO+HPA)

2. The specification admits that combination of carbon
molecular sieve (CMS) and metal oxide is well known in the art
as acidic microporous solid catalyst (CMS+MO)
Non-obvious

Claims rejected on the basis of obviousness under 35 US.C.
103 (a), which states that

(quote) A patent may not be obtained though the invention is
not identically disclosed or described, if the differences
between the subject matter sought to be patented and the
prior art are such that the subject matter as a whole would
have been obvious at the time the invention was made to a
person having ordinary skill in the art to which said subject
matter pertains. (unquote)
Novelty v/s Non-obviousness
Importantly the prior art does not teach:

(i) HPA + CMS + metal oxide

(ii) CMS + sulfated metal oxide

Therefore, novelty admitted.
Novelty v/s Non-obviousness
Issues addressed to establish non-obviousness

(i) What is the specific combination that is claimed ?
(Ans: CMS + sulfated metal oxide; HPS is optional )

(ii) Whether improved selectively obtained with the invented
catalyst (Ans: Yes)

(iii) Does such improved selectivity depends on specific pore
volume and pore distribution (Ans: Yes)
Non-obviousness
Amendments

Original claim
An active highly acidic microporous solid catalyst
comprising sulfated metal oxide and at least one carbon
molecular sieve and /or heteropoly acid and have pore.

Amended claim
An active highly acidic micro porous solid catalyst
comprising sulfated metal oxide and at least one carbon
molecular sieve coated with or without heteropoly acid
and have pore.
Non-obviousness
Some Considerations:


Distance from the prior-art
Long-felt need
Time elapsed
Unsuccessful prior art attempt
Scientific research
Surprising result
Overcoming a technical prejudice
Claim Language in Patents
Claim is the portion of the patent specification
that defines the metes and bounds of the invention

Careful drafting
Broad v/s narrow claim
Claim dependency
Courts decides the rights as per claims
QUESTIONS FOR R & D
DEPARTMENTS
1. DO YOU KEEP A TAB ON PATENT STATUS IN YOUR
AREA IN INDIA OR ABROAD ? ANY PATENT
APPLICATIONS IN THE PIPELINE ?

2. DID IT SOLVE THE PROBLEM IN YOUR MIND ?

3. IS THERE ALTERNATE SOLUTION TO EXISTING
PROBLEM?

QUESTIONS FOR R & D
DEPARTMENTS
4. HAVE YOU ENSURED CONFIDENTIALITY OF YOUR
INVENTION BEFORE FILING OF A PATENT
APPLICATION?

5. HAVE YOU CONSIDERED USE OF EXISTING PATENT
INFORMATION TO REDUCE THE TIME & INVESTMENT
OF R & D?

6. HAVE YOU ENGAGED A PATENT ATTORNEY/AGENT
FOR LEGAL PROTECTION OF YOUR INVENTION?

Conclusions Requirements..
Broad understanding of

1. different science / technology disciplines
2. Patent laws/practices globally (Dos and don'ts)

Quick grasp

Deep understanding of some technology areas

Sound understanding of policy issues, other laws (contract law)

Understanding people (think from the clients perspective/user perspective)

Confidentiality (U are privy to some great technical data that has high commercial
stakes)

Ability to meet deadlines
Conclusions - Role
Identifying invention

Understanding invention Publication V/s Patenting

Driving out the invention
Protectable v/s non-protectable.
Is the invention standing out of the prior-art landscape?

Effective prior-art search & Construction of the prior-art landscape

Asking right questions

Patent practices of different counties

Disclosures What to and what not to?

An interface between attorney and the inventor - understanding of different perspectives
Conclusions - Role
Last word..


Answers are seldom in black and white


HENCE YOUR ROLE
Wify: What is in the locker?
Hubby: Cant tell you.
Wife (Weep..weep): I know. Love
letters from your first GF..
Hubby (helpless whisper): These are
patent papers.
Wife (outbursts): You never told me
you had a GF by that name..
Some People Would Refuse to Understand
Contact
Suresh Kumar K.
Scientist E
Patent Facilitating Centre
Technology Information Forecasting & Assessment Council
(TIFAC)
Vishwakarma Bhawan
Shaheed Jeet Singh Marg
NEW DELHI 110 016

Phone : 11-26592713 / 42525713
Email : sureshkk@tifac.org.in