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Patent, trade mark, design and copyright

This is the second in a series of occasional articles by N. R. Subbaram in the form of questions and answers on Intellectual Property Rights and Patents.

QUESTION: Can a patent, design, trademark and copyright be obtained for the same product?

ANSWER: Yes, it is possible in certain cases. Take a medicine that can be made the subject matter of a patent. If it is enclosed and sold in a container having a particular shape, the shape and configuration of the container can be made the subject matter of a design. If the medicine along with the container is sold under a mark, the mark can be made the subject matter of a trademark. Further, if the container encloses a leaflet containing details of the constituents of the medicine, the dosages to be used and other particulars, the contents of the leaflet can me made the subject matter of a copyright. The protection can be secured provided they satisfy the requirements of novelty and originality prescribed under the respective IP legislations.

Q: Are the benefits of IP assured?

A: Intellectual property protection is just one part of the successful marketing equation, and its true importance varies according to each specific invention. No one can, therefore, predict with certainty, if the cost of obtaining intellectual property protection is justified in a particular case based on the expected success of its commercialization.

In short, there will have to be a sea-change in the ability to manage the portfolio of Intellectual Property, be it patents, designs, trade marks, copyrights or any other species of IP. The greatest challenge, however, is posed by patents.

Q: What is a patent?

A: Patent is a grant (in the form of a document) given by the Government to an inventor, a group of inventors or an applicant for disclosing a new invention.

Once the patent is issued it gives the inventor or the applicant, as the case may be, the exclusive right to prevent others from selling, manufacturing and using the invention disclosed in the patent in the country which grants the patent .

This right can be exercised only for a limited period of time, normally known as the term of the patent. On the expiry of the term, the invention becomes public property

Q: What are the misconceptions about patents?

A: There is a myth that patents cover only major technological breakthroughs. There are millions of patents in force and being granted around the world, which are not for major technological breakthroughs. A majority of them are granted for incremental improvements, that is, for the small improvements to products or processes that make them more efficient or more marketable. Scientific qualification is not required for inventing or patenting the invention.

Q: What are the main criteria for securing patents?

A: All inventions are not patentable. Generally, the patent law requires that for an invention to be patentable the following criteria are to be satisfied:

The invention must be new (this means that it should not be known anywhere in the world on the date of filing of the application);

The invention must involve an inventive step, otherwise termed non- obvious, meaning that the invention must not be obvious to a person reasonably skilled in the field; and

The invention must be industrially applicable (this means it should be useful to the society).

If any one of the above mentioned criteria is not fulfilled such an invention will not be a patentable subject matter.

Q: How to identify the inventions for which patents can be secured?

A: For identifying an invention for which patents can be secured, the following guidelines may be helpful. Consider the following questions in the serial order:

Q: Is the invention new?

A: For the answer, ask the question: Have you seen or read about the invention before, in your country or elsewhere? If the answer is "yes,'' then the invention is not patentable as it has lost its novelty. If the answer is "no,'' then, ask the question

Q: Does the invention work in the lab?

A: If the answer is "yes,'' then the invention may be patentable. If so, ask the question

Q: Is the invention commercially or otherwise valuable?

A: If the answer to this is also in the positive, meaning thereby that the invention is useful to the society at large, then it is a patentable invention.

Q: Is it necessary to wait for publishing an invention till a patent is granted?

A: No. The invention can be published after filing the application provided all the details of the invention have been given in the patent document and the document has been diligently prepared. However it is to be noted that if protection is required in countries other than the national country of the applicant, the publication should wait till the filing in all the desired countries is completed, except in certain specific cases.

Q: What are the consequences of delay in filing the application for patent, before taking the invention to the commercial stage?

A: The delay in filing an application for patent may result in (i) other inventor(s) forestalling the first inventor(s) in applying for patent for the same invention; (ii) there might be either an inadvertent publication of the invention by the inventor himself or by others which may, as explained above, jeopardise subsequent patenting of the invention.

Q: Will the Government that grants patents certify the validity/merit of the invention disclosed in a patent?

A: No. It does not guarantee the merit/validity of the invention disclosed in a patent. In other words, the patent can be challenged any time during its life on appropriate grounds stipulated in the patent legislation of the country concerned thereby totally cancelling the patent or limiting the scope of the legal rights granted based on the strength of the evidence produced.

Q: Is it difficult to get a patent?

A: Generally there will not be any difficulty in securing a patent if the invention disclosed in an application satisfies clearly and without any doubt all the abovementioned criteria.

(The author is former head of the Intellectual Property Management Division of CSIR)

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