Criminal Trident Pack: IPC, CrPC and IEA by Sr. Adv. G.S Shukla and Adv. Raghav Arora
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Vaishnavi Narayanan (Associate)     24 December 2012

Patent agent exam question

I'm preparing for patent agent exam so can anyone please answer this question and help me.

Your client, Mr Karimeen has developed a complex electro-mechanical device for
fishing in lakes. His device is able to sense the movement of fishes and then adjust
the angle of the bait to effectively attract the fishes. After filing the complete
specification, Karimeen realises that the mechanism and the programmed chip in the
device can be used for various other applications. how would you protect all features
of Karimeen's inventions?
After a few years, Mr Nettoli, a renowned fisherman from Mangalore makes an
improvement on the device. Since you are the best patent attorney in India, Nettoli
also approaches you to protect his invention. You find that Nettoli's invention is
novel but lacks an inventive step. What will be your approach in helping protect
Nettoli's interests?



Learning

 16 Replies

Rajesh Hazra (Mediator Mediation Counsel)     25 December 2012

Patent of addition is the solution for this.

Check it out.

prabha (patent agent)     27 December 2012

For kamirren's you have to file patent of addition.

For nettoli also, u have to file the application as patent of addition... further when u draft for nettoli in the background write one line as "patent number (kamirren's) inserted herein as reference".

Vaishnavi Narayanan (Associate)     28 December 2012

Thank you mam for you reply,

Can you suggest me any guide or books to prepare for the exam

prabha (patent agent)     28 December 2012

vaishnavi,

you first buy the bare act (patent act).. read it thoroughly.. 

start with basic as to which amendment is currently, hw many times amended..which rule current in force....also if u want some more info then u shud doenload the draft manual from the patent office website..it helps a lot in understanding the things

i am preparing a manuscriptt for patent agent candidates..shall soon post it..may be another 2 weeks..

subramanian (consultant)     05 January 2013

A new application of a known device cannot be patented even as a patent of addition by the same patentee unless  some improvement is made in the original device.If some substantial improvement is made to the original invention then third party can get a patent to it.He has to make a reference to the prior patent and describe in detail the improvements made.The patent office will decide whether there is novelty and inventive step and act accordingly.It is not for you to decide on this matter while making the application.

T.R.Subramanian

prabha (patent agent)     05 January 2013

yes sir very much..

however as a draftsperson, is not it the drafters responsibility to write about all the avilable prior arts?

Sy.patents (Freelance)     06 January 2013

Prabha: you can't have a patent of addition for nettoli's improvement. Patent of addition is only possible if applicant is same. 

The duty to disclose the prior art is not stringent in India, so one can take the advantage of not discussing about the relevant prior art and give oneself the chance that examiner might not find out either. I would draw parallel to US practice here - The practice in US is different where the applicant has a duty to disclose all relevant prior art that he is aware of in the form of IDS. 

If i am drafting the spec i would discuss the prior art and its deficiencies, instead of not disclosing it. If the prior art is strong, it just means that there is no inventive merit in the invention.

Subramanian: i have some reservation against your proposition that suggest that  - let the patent office decide novelty and inventive step of invention. That of course is their job. But when a client comes to a patent attorney/agent for the patentability assessment of the invention he needs to give an honest opinion of the invention's patentability. The client seeks adivse of the patent attorney for this purpose. If we disregard the prior art which might compromise the patentability and go about filing the patent, it's a waste of money.

Vaishnavi: I comment earlier in few of my posts on preparation of patent agent exams. you might benefit from them. Pl check the following urls and related posts:

https://www.lawyersclubindia.com/forum/Patent-agent-50889.asp#.UOmXZeRJ6So 

1 Like

prabha (patent agent)     06 January 2013

in that case what remedy do we have for nettoli.

subramanian (consultant)     06 January 2013

I do agree that it is the duty of the attorney to guide the client properly.However there are many border line cases where it is difficult to judge whether there is novelty or inventive step.The attorney can explain the position and  consequences and advise the client regarding filing of the application.It is better in the interest of the applicant that whateverprior art is known it is stated in the specification.The patent office has  a duty to trace any prior art and then to decide the application.Even if the  Patent office grants a patent by mistake,  at a later date the patent may be revoked if  a third person brings the prior art to the notice of the patent office.and files a revocation application.

I have seen in my service  applicants verbattam copying foreign patents and filing for patent in India.Under the latest on line search system these can be found out.

T.R.Subramanian

Vaishnavi Narayanan (Associate)     07 January 2013

Thanks for your suggestion

Rajesh Hazra (Mediator Mediation Counsel)     07 January 2013

For Exams Patent of Addition is the answer.

Sy.patents (Freelance)     07 January 2013

 

Prabha:

Deciding obviousness of an invention is a very tricky proposition. It’s the facts of each case vis-a-vis the skills of POSA which needs to be resolved to arrive at any conclusion, and at times the analysis can get subjective, too. In the present problem, the information is limited and we can only move further by making certain assumptions.

 

Option-I

As an IP attorney after considering all the relevant facts if you still feel that the invention is obvious with no inventive merit, tell your client (Nettoli) that it cannot be patented.

 

Option-II

It could be possible that your analysis suffers from “hind sight bias” as you also handled Karimeen’s invention. Advise your client to seek a second opinion from another patent attorney, if the invention indeed is obvious.

 

Option-III

Ask Nettoli to have the invention assigned in his name from Karimeen, and file a patent of addition in respect of the improvement made by Nettoli.

 

 

Design protection is another option, but it will be out of the scope of patent.

 

Rajesh Hazra: I answered why patent of addition is not possible earlier, and in what situation it could be made possible in my present answer.

prabha (patent agent)     07 January 2013

Dear Sy.patents:

Yes I do agree that deciding obviousness is a tricky situation but I am very happy that this problem is releived to a great extent after the Judgement of justice Manmihan singh, DHC in roche vs cipla matter where it clearly establishes that in case of selection invention factor such as volume of prior art, motivationa and most important how far removed is the invention from the preferable disclosure or embodiments of the prior art....But if we look at the present situation holistically from a person who is appearing to qulaify as patent agent somewhre i see that patent of addition is a solution or may be selection invention as well.  

subramanian (consultant)     07 January 2013

Selection patents are granted in chemical cases where the original patent claims a large number of compounds and the person claiming a selection patent can make out a case  for that.As regards patent of addition it is granted to the originat patentee and not to any other person.

T.R.Subramanian


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