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Analyzing
Patentability of Inventions
Kalyan Kankanala
kalyan@bananaip.com
Blog: http://www.bananaip.com/sinapse-blog
Books: www.kalyankankanala.com

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Patentability
requirements
Patentable subject matter
Industrial Applicability
Novelty
Inventive Step
Specification

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Patentable Subject Matter
Product or Process - Section 2(1)(j)
Computer Program
Genetically modified pig
Business method
Massage technique

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Exclusions
Section 3(d)
New form
Efficacy
New property or use
Mere use of known process
New product
New reactant

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Exclusions
Explanation: Salts, Esters, Ethers,
Polymorphs, Metabolites, Pure forms,
Particle size, Isomers, Mixture of isomers,
Complexes, Combinations and other
Derivatives of a known substance
considered same substance
Efficacy
Novartis case

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Exclusions
Plants, Animals and Parts (Section
3(j))
Computer Programs Per Se (Section
3(k)
Medical Methods (Section 3(i))
Traditional Knowledge (Section 3(p))

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Example
Kodi identifies and inserts a gene in a
hen which leads to the increase in
the output of eggs, sixty luminiscent
eggs per month). He is interested in
getting a patent on his invention.
Can he get a patent and if yes, on what?

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Example
Som develops an android application
for assessing the mood of the caller.
The app has automated systems for
rejecting calls of bad mood callers. It
also can recognize cold callers.
Patentable?

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Example
Kini, a house wife and follower of Baba
Ramdev, develops a method of performing
yoga that will help astronauts adapt to low
gravity environments. She wishes to file
for a patent in India.
Will there be any issues with patentable
subject matter?

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Example
Coconut Nair inherits traditional knowledge
with respect to ayurvedic formulations for
improving immunity and promoting
healthy living from his ancestors. After
researching on the formulations, he
isolates active ingredients from three of
the formulations and prepares tablets for
enhancing immunity.
Is his invention patentable subject matter?

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Industrial Applicability
Section 2(1)(ac) - Capable of Industrial
Application
Make
Use
Repeat
Industry

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Industrial Applicability
Neo invents a method of making a dog
jump on four legs.
Helen invents a method of eloping based
on adverse conditions.

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Novelty
Section 2(1)(l) - New Invention
Prior Publication
Public Knowledge
Public Use
On Sale
Public Display
Public Working
Single prior art reference
Inherent anticipation

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Inventive Step
Section 2(1)(ja)
Technical Advance or Economic
Significance and
Not obvious to a person skilled in the
Art.

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Secondary Indicia
Commercial Success
Copying
Praise by expert
Unexpected results
Long felt need

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Example
Invention
Chair with Wheels
Prior Art
Chairs
Tables with wheels

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Example
Invention
Stent coated with Taxol
Prior Art
Stents
Many Anti-cancer agents including Taxol

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Specification
Section 10
Written Description
Enablement
Best Mode
Claims
Object: Notice and Dissemination

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Example
The invention relates to a composition
comprising Ginger, Radish, Celery and Black
seed for enhancing male fertility.
Prior art
Independent use of Ginger, Radish, Celery
andBlack seed as Aphrodisiac and
Spermatogenic in Ayurveda and Unani
systems of medicine.

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