TRIPS Agreement

The TRIPS Agreement contains the national treatment principle and the most-favored-nation principle. The latter principle provides that any advantage, favor, privilege or immunity granted by a Member to the nationals of any other country (whether a Member or not) shall be accorded immediately and unconditionally to the nationals of all other Members, with certain specified exemptions. As is the case for national treatment, procedures provided in multilateral agreements concluded under the auspices of WIPO relating to the acquisition or maintenance of intellectual property rights are exempted from this principle.

Article 7 of the TRIPS Agreement in conjunction with the preamble of the Agreement sets out the objectives of the Agreement: the protection and enforcement of intellectual property rights should contribute to the promotion of technological innovation and to the transfer and dissemination of technology, to the mutual advantage of producers and users of technological knowledge and in a manner conducive to social and economic welfare, and to a balance of rights and obligations. Article 8 provides “principles” which recognize the rights of Members to adopt measures necessary to protect public health and nutrition, and to promote the public interest in sectors of vital importance to their socio-economic and technological development, provided that such measures are consistent with the provisions of this Agreement. It also recognizes that appropriate measures, provided that they are consistent with the Agreement, may be needed to prevent the abuse of intellectual property rights by right holders or the resort to practices which unreasonably restrain trade or adversely affect the international transfer of technology.

Compared with the treaties adopted under the auspices of WIPO,one of the main particularities of the TRIPS Agreement is the dispute settlement system established under the WTO Agreement. Articles XXII and XXIII of GATT 1994 (except subparagraph 1(b) and 1(c) of Article XXIII), as elaborated and applied by the WTO Understanding on Rules and Procedures Governing the Settlement of Disputes, apply to consultations and the settlement of disputes under the TRIPS Agreement. This means that benefits enjoyed in another trade area may be withdrawn in retaliation for the violation of the TRIPS Agreement (so-called cross-retaliation).

Patent Thickets

In general the term “patent thicket” describes a situation where a product involves a web of patents that are owned by a number of different patentees so that a company which wants to commercialize the product is required to “clear” all the patents involved. This phenomenon is well-known in complex technologies, such as information and communication technologies, and in technical fields where a number of companies compete at the same level so that a fragmentation of patent ownership occurs. A changing research environment, increasing complexity and sophistication of technology and certain patenting strategies may have an influence on patent thickets.

Although there is no generally agreed objective definition of the term “patent thicket”, it suggests negative effects due to a “thicket” of patents, in particular, in the sense that third parties may be blocked from using a patented technology. The potential problems addressed are centered on the excessive transaction cost. Some suggest that cross-licensing may solve the vertical R&D and hold-up problems. By entering a cross licensing agreement, companies may secure freedom to operate. On the other hand, there is a risk that the problem is exacerbated because each competing company tries to build a bigger patent portfolio than competitors in order to create a better bargaining power to negotiate cross licenses. Another solution consists of patent pools to reduce a transaction cost, although some raise concerns about their compatibility with competition law.

The Budapest Treaty

The Budapest Treaty on the International Recognition of the Deposit of Microorganisms for the Purposes of Patent Procedure

Disclosure of the invention is a requirement for the grant of patents. Normally, an invention is disclosed by means of a written description. Where an invention involves a microorganism or the use of a microorganism, disclosure is not always possible in writing but can sometimes only be effected by the deposit, with a specialized institution, of a sample of the microorganism.

In order to eliminate the need to deposit in each country in which patent protection is sought, the Budapest Treaty provides that the deposit of a microorganism with any “international depositary authority” suffices for the purposes of patent procedure before the national patent offices of all of the contracting States and before any regional patent office (if such a regional office declares that it recognizes the effects of the Treaty). The European Patent Office (EPO), the Eurasian Patent Organization (EAPO) and the African Regional Intellectual Property Organization (ARIPO) have made such declarations. The “international depositary authority” is a scientific institution - typically a “culture collection” - which is capable of storing microorganisms. Presently, there are 37 such authorities.

The Treaty is primarily advantageous to the depositor who is an applicant for patents in several countries. Instead of depositing the microorganism in each and every country in which he files a patent application referring to that microorganism, he can deposit it only once, with one depositary, with the consequence of saving costs incurred by multiple deposits. Further, the security of the depositor is increased by the fact that, for an institution to become an international depositary authority, solemn assurances as to the seriousness and continued existence of that institution must be given by a State or by an intergovernmental industrial property organization.

35 USC 102 explained

"35 USC 102(a) THE INVENTION WAS KNOWN OR USED BY OTHERS IN THIS COUNTRY,OR PATENTED OR DESCRIBED IN A PRINTED PUBLICATION IN THIS OR A FOREIGN COUNTRY, BEFORE THE INVENTION THEREOF BY THE APPLICANT FOR PATENT"

102(a) defines that US is a first to invent country and you are not going to get a patent if your invention was known (in written form usually) or used by others (practiced) by others in USA before date of invention, and if it was patented or was described in printed publication by others in any country than also you are not going to patent.

There are some keywords like 'Others' which means other than inventor himself. If inventor himself has published or practices he might still get a patent but it was done by others than he is not going to get a patent. Keyword 'in this country' means that that if the patent was being used in any country other than USA then he might still be able to get a patent. Keyword 'printed publication in this or foreign country' means that if the invention was patented or was described in printed publication (no language bar is there so publication can be of any language) he is out of luck. The keyword 'public' means that the publication should be available to public if the publication was maintained as confidential within a company its not public but if the publication was published in a magazine in some obscure magazine in place like China in chinese language its public. Keyword "before the invention" means the date which inventor can prove he actually invented the invention and it could be before earliest filing date (if inventor can prove it with some written records).

"35 USC 102(b) THE INVENTION WAS PATENTED OR DESCRIBED IN A PRINTED PUBLICATION IN THIS OR A FOREIGN COUNTRY OR IN PUBLIC USE OR ON SALE IN THIS COUNTRY, MORE THAN ONE YEAR PRIOR TO THE DATE OF THE APPLICATION FOR PATENT IN THE UNITED STATES"

Some patent tools you must know

 Patent Library

Patent Library allows users to search by patent number and get OCR'ed PDFs of patent 

documents.

Sample Landscape reports

Patent Landscape Report on Desalination Technologies and the Use of Alternative Energies for Desalination

click here to get report 

Patent Landscape Report on Solar Cooking

click here to get report

Exceptions and Limitations of the Rights of patent - Top countries

USA

1. Solely for uses reasonably related to the development and submission of information under the Federal law which regulates the manufacture, use or sale of drugs and veterinary biological products, other than those products primarily manufactured using certain genetic manipulation techniques.
2. Certain uses concerning foreign vessels, aircraft or vehicles which temporarily or accidentally enter national territory.
3. As regards business method patents, continued use by a person who in good faith, had put the invention into practice at least one year before the filing date (priority date) and commercially used it before that date. 

Japan

1. Non-commercial use.
2. Use for experiment or research purposes.
3. Vessels and aircraft passing through Japan.
4. Products existing in Japan before the filing date (priority date).
5. Preparation of patented medicines by mixing two or more medicines in accordance with the prescription of physicians or dentists, and medicines so prepared.
6. Non-exclusive license available as of right in the case of prior use or working of the invention prior to the filing date (priority date).
7. Compulsory licenses.

India

1. The grant of a patent is subject to the following conditions:
(a) importation or manufacture of articles and uses of processes by, or on behalf of the Government for its own use;

The Scope Of Background Section

For the patent filing in US, it is good practice to minimize the amount of information provided in the Background section of a patent application.
The field of invention section is very important as if you leave this field broad , the scope can be interpreted to include more art than is actually applicable, thereby opening the patent application to obviousness rejections. an if u leave that field defined narrowly, then the associated claims may be interpreted too narrowly.
The related art in the background section is also very critical as in case of US describing any related art may get applicant into trouble. While I will sometimes list references, I recognize the risk of describing the contents of a reference in that the description may misrepresent the scope of the reference, potentially leading to accusations of intentionally misleading the examiner. Therefore, I often describe the prior art in general terms, without explicitly delineating related art references. 

It have come to know that in some countries it is necessarily to include prior art references in the Background section in response to an examiner request, and this can still be done in a revised Background section that was originally relatively short.   
I personally think that minimizing the content of the Background section in US patent applications. What are the readers’ experiences and opinions? 
Please share your views in comment section.

Searching prior art with the help of Inventor, assignee and Classification

Searching through the relevant keywords is safest approach for locating relevant prior art as there is a very high chance of finding prior art, but it is not the best approach. There are chances that some of the prior art may have been missed because of the different patent language or short description.

There are some other strategies that a good patent searcher should work out on. some of them are to use Inventors, assignees and Classifications, first of all shortlist all the closest patents you have found till date and then find their inventors, assignees and classifications (IPC, US, F terms etc). You can add some of the assignees by simply searching for the companies which are active in that field. 

Use this search engine for searching relevant US classes and use TACSY for searching relevant IPC classes. Once you have the list of Inventors, Assignees and Classifications you are ready to search.

PS: Make at-least one query which is only based on classification, and don't forget to check for the NPL that those inventors have published. You might find something interesting.

PCT VS The Paris Convention

Some advantages of the PCT are:

A single application can be filed in the applicant’s home country, in the local language.

It delays (by up to 18 months) the need to make a firm decision about the countries where patent protection is to be pursued.

The PCT International Search Report (ISR) often can help applicants determine how likely it is that the application will proceed to grant in individual countries after national phase entry.

Even accounting for the additional cost of the PCT application, slightly lower costs for national phase entry as compared with direct filings means the PCT route for more than a 

couple of countries can actually be cheaper overall.

Typical PCT Procedure:

Novel approach to locate prior art

Locating close prior art provides a critical edge in patent litigation or licensing, by documenting that the patent in question should not have been granted due to anticipatory (102) or obviousness (103) art. However, the prior art defense is contingent upon successfully locating such art. as most law firms have discovered, there is a wide range of outcomes when a prior art search is commissioned. this is dramatically evident when a Joint defense Group commissions 3 searches and compares the results, only to find that while they purport to cover the same materials, the outcomes are dramatically different.

The challenge of assessing the quality of a search is difficult, since attorneys have no way of knowing what critical findings were missed. consequently, they tend to rely on proxies to gauge the quality of a search, e.g. the number of findings uncovered, the total number of databases reviewed, length of the search report, etc. However, there is no evidence that any of these factors correlate with search integrity.

Grace Period : Top Patent Offices

United States of America 

Disclosure not to be taken into consideration in determining novelty and inventive step if it occurred within one year before the filing date in the form of:
1. inventions patented or described in a printed publication in the US or abroad;
2. public use or on sale in the US.

India

An invention shall not be deemed to have been anticipated by:
1. Disclosures at any time before the filing date (priority date) of matter obtained from, and published without the consent of, the inventor or his successor in title (provided that the invention was not commercially worked in India, otherwise than for the purpose of reasonable trial, and that a patent application for the invention was filed in India or a convention country as soon as reasonably practicable thereafter).
2. Other applications made in contravention of the rights of the inventors or his successor in title or public use or publication of the invention without the consent of the inventor or his successor in title by the applicants of such other applications or by any other person in consequence of the disclosure.
3. Disclosures due to the communication of the invention to the Government or to any person authorized by the Government to investigate the invention or its merits, or for the purpose of that investigation.
4. Disclosures within 12 months before the application is made (calculated from the opening of the exhibition or the reading or publication of the paper) by:
(a) display or use of the invention with the consent of the inventor or his predecessor in title at an industrial or other exhibition notified in the Official Gazette;
(b) publication of the invention in consequence of such display or use;
(c) use of the invention during the period of the exhibition without the consent of the inventor or his predecessor in title;
(d) description of the invention in a paper read by the inventor before a learned society, or published with his consent in the transactions of such a society.
5. Disclosures within one year before the filing date (priority date) by public working the invention for reasonable trial, by or with the consent of the applicant or his predecessor in title.

Exclusion From Patentable Subject Matter: Japan & UK

Japan

1. Inventions contrary to public order, morality or public health.
2. Methods for the treatment of humans. 

United Kingdom

1. Discoveries, scientific theories and mathematical methods.
2. Literary, dramatic, musical and artistic works.
3. Aestheticcreations.
4. Schemes, rules and methods for performing mental acts, playing games or doing business. 5. Computer programs. 

6. Presentation of information.
7. Therapeutic, surgical and diagnostic methods for treating humans or animals. 8. Inventions contrary to public policy or morality. 

9. Plant and animal varieties and essentially biological processes for their production, other than:
(a) microbiological methods and products;
(b) inventions whose technical feasibility of the invention is not confined to a particular plant or animal variety;
(c) products consisting of or containing biological material;
(d) processes producing, processing or using biological material;
(e) biological material isolated from its natural environment or produced by a technical process, even if previously occurring in nature.
10. The human body, at any stage of its formation and development or the simple discovery of its elements, including gene sequences, other than elements isolated from the human body or produced by a technical process.
11. Processes for cloning humans; modifying the germ line genetic identity of humans; uses of human embryos for industrial or commercial purposes; and processes for modifying the genetic identity of animals which are likely to cause them suffering without any substantial medical benefit, and animals resulting from such processes.

Patent infringement

infringement constitute of illegal manufacturing, using or even offering for a sale or selling any patented invention within the country or its territories without proper license, or importing it into the country of any patented invention during the term of the patent protection.
 

Protection against Infringement may vary from country to country, as the patent is examined voluntarily by the patent office established in each country or region and may have some difference in patentability, so that a granted patent is difficult to carry out worldwide. In many countries, a use is mandatory to be commercial or to be for a commercial purpose so as to constitute infringement.

When infringement takes place, the filing agent may sue for its relief by Patent drafting in the concerned Federal court. The Patent filing agent may also ask court for a ban to prevent the continuation of the patent infringement and may also ask the court for reimbursement of damages occured due to the patent infringement.

Exclusions from Patentable Subject Matter - India

The exclusion from Patentable Subject Matter for India Patent Office are:

1. Inventions which are frivolous or obviously contrary to well established natural law.
2. Inventions use or commercial exploitation of which is contrary to law or morality or causes serious prejudice to human, animal, or plant life or health or to the environment.
3. Discoveries of a scientific principle or formulation of an abstract theory or discovery of any living thing or non- living substance occurring in nature.
4. Mere discovery of a new form of a known substance which does not enhance known efficacy, or the mere discovery of any new property or new use for a known substance or of the mere use of a known process, machine or apparatus unless such known process results in a new product or employs at least one new reactant.
5. Substance obtained by a mere admixture resulting only in the aggregation of the properties of the components thereof or a process for producing such substance.
6. Mere arrangement or re-arrangement or duplication of known devices each functioning independently in a known way.
7. Agricultural and horticultural methods.
8. Any processes for medicinal, surgical, curative, prophylactic , diagnostic, therapeutic or other treatments of humans or any process for a similar treatments of animals or plants to render them free of disease or increase economic value.
9. Plants and animals in whole or any part thereof other than microorganisms, but including seeds, varieties and species and essentially biological processes for production or propagation of plants and animals.
10. Mathematical or business method or a computer program per se or algorithms.
11. Literary, dramatic, musical or artistic work or any other aesthetic creation whatever.
12. Mere scheme or rule or method of performing mental act or method of playing game.
13. Presentation of information.
14. Topography of integrated circuits.
15. Invention which, in effect, is traditional knowledge or which is an aggregation or duplication of known properties of traditionally known component(s).
16. Inventions relating to atomic energy.