UNIT-III

INTRODUCTION TO PATENT LAW

Meaning of Patent: A patent is a legal right to exclude others from practicing the patented
invention for a limited period of time in exchange for disclosing the details of the invention to
the public.

What can be patented?

The United States Patent Law specifies the broad categories of what can be patented. Any useful,
new and nonobvious process, machine, article that is made, or chemical composition, or
improvement of any of the above can be patented. Business methods and software can also be
patented, but laws of nature and abstract ideas cannot be patented.

Types of patents
There are three types of patents

 Design Patent meaning: may be granted to anyone who invents a new, original, and
ornamental design for an article of manufacture. simple way External shape of the
product

Examples:

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  Utility Patent: may be granted to anyone who invents or discovers any new and
useful process, machine, article of manufacture, or composition of matter, or any
new and useful improvement thereof
Examples: Manufacturing Process, Composition matters.

 Plant Patent: may be granted to anyone who invents or discovers and asexually
reproduces any distinct and new variety of plant.
Examples: poinsettia plant named “Eckaddis”

RIGHTS OF OWNER OF A PATENT

The owner of the patent has the right to preclude any person from exploiting the protected
invention by any of the following acts –

When the patent has been granted in respect of a product (Invention Is a Product)
 making, importing, offering for sale, selling and using the product; or
 stocking such product for the purposes of offering it for sale, selling or using the
product;

When the patent has been granted in respect of a process (Invention Is a Process)
Using the process, or doing any of the acts referred to in paragraph (1), in respect of a product
obtained directly by means of the process.

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Enforcement of rights

The owner of a patent has the right –

 To obtain an injunction to restrain the performance or the likely performance, by any

person without his authorization, of any of the acts referred to above; and
 To claim damages from any person who, having knowledge of the patent, performed any
of the acts referred to above, without the owner’s authorization.
 To claim compensation from any person who, without his authorization, performed any
of the inventions, claimed in the published application, as if a patent had been granted for
that invention; Provided that the said person, at the time of the performance of the act,
had -

LIMITATIONS OF PATENT RIGHTS

 The rights under the patent act done for industrial or commercial purposes and in particular not
to acts done for scientific research.
 The rights under the patent do not extend to acts in respect of articles which have been put on
the market in Kenya or in any other country or imported into Kenya.
 The limitation on the rights under a patent above extends to acts in respect of articles that are
imported from a country where the articles were legitimately put on the market. The rights
under the patent do not extend to the use of articles on aircraft, land vehicles or vessels of other
countries, which temporarily or accidentally enter the airspace, territory, or waters of Kenya.
The rights under the patent are limited by the provisions of the terms of the patent. The rights
under the patent are limited by the provisions on compulsory licenses’ for reasons of public
interest or based on interdependence of patents and by the provisions on State exploitation of
patented inventions. The rights of the patent do not extend variants or mutants of living forms
or replicable living matter that is distinctively different from the original for which patents were
obtained where such mutants or variants are deserving of separate patents.

PATENT REQUIREMENTS

Whoever invents or discovers any new and useful process, machine, manufacture, or
composition of matter, or any new and useful improvements thereof, may obtain a patent, subject
to the conditions and requirements of this title.

Unfortunately, the actual test for patentability is a bit more complicated than this sentence
suggests. Under U.S. patent law, an invention is patentable only if it meets the following
four requirements, which are discussed in more detail below:

 The invention must be Statutory:

 The invention must be New:
- The invention was known to the public before the applicant filed for patent protection;

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 - The invention was described in a printed publication before the applicant filed for patent
protection; or
- The invention was described in a published patent application or issued patent that was
filed before the applicant filed for patent protection.

 The invention must be Useful: The patent law specifies that the subject matter must be
"useful." This means that the invention must have a useful purpose. In most cases, the
usefulness requirement is easily met in the context of computer and electronic
technologies. The requirement is more important when attempting to patent a
pharmaceutical or chemical compound, as it is necessary to specify a practical or specific
utility for the new compound
 The invention must be non-obvious/Novel:

PATENT TRANSFER/ PATENT ASSIGNMENT

Meaning of patent transfer: A patent assignment is the transfer of an owner's property rights
in a given patent or patents, and any applications for such patents. These transfers may occur on
their own or as parts of larger asset sales or purchases.

As objects of intellectual property or intangible assets, patents and patent applications may
be transferred. A transfer of patent or patent application can be the result of a financial, such as
an assignment, a merger, a takeover or a demerger, or the result of an operation of law, such as in
an inheritance process, or in a bankruptcy.

Rights of the Patentee:

Patentee meaning: A person or organization that obtains or holds a patent for something or
The person or organization that owns the legal right to make or sell something.

Rights

 Right to exploit the patent on the patentee

 The patentee can transfer the patent right by assignment or license
 The patentee can anytime surrender the patent
 The patentee, his assignee, licensee or agent has the right to institute a civil suit in court
not lower than district court in case of any infringement.

PATENT APPLICATION PROCESS AND GRANTING

A patent application is a request pending at a patent office for the grant of a patent for
the invention described and claimed by that application. An application consists of a description
of the invention (the patent specification), together with official forms and correspondence
relating to the application. The term patent application is also used to refer to the process of
applying for a patent, or to the patent specification itself (i.e. the content of the document filed
with a view to initiating the process of applying for a paten

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PATENT INFRINGEMENT

Meaning: Patent infringement is the act of making, using, selling, or offering to sell a patented
invention, or importing into the United States a product covered by a claim of a patent without
the permission of the patent owner.

Examples for Patent Infringement

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Remedies for Patent Infringement

 Equitable Remedy: An equitable remedy is one which does not involve the
payment of pecuniary (money) damages, but rather involves a court order to take
some action or cease from some behavior.
 Civil Action: When the law permits one private party to sue another private party
it is known as a civil action, as opposed to criminal actions which are brought by
governmental entities (the state, the federal government, etc.)
 Treble Damages: The law sometimes permits a court, at its discretion, to award
triple damages to a plaintiff, which is known as treble damages.
 Injunctions: an authoritative warning or order.

Exceptions to patent infringement / Non infringement activities

 Government use: section 47 of Indian patent Act 1970

 Research exemption:
 Supply of patented drugs to health institutions
 Use of patented invention on foreign vessels

PATENT LITIGATION
Meaning: A patent litigation suit is filed when the patent owner and the alleged infringer cannot
agree to enter into a licensing agreement or if the patent owner is not willing to share his
technology at all. Patent litigation suits are typically very costly, especially in the US, can last for
many years and may cause expenses of millions of dollars.

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Remedies for patent Litigation

 Monetary Damages: The party accused for patent infringement is sentenced in

court and compensates the patent owner. Such compensations include the patent
owner being entitled lost profits and/or royalties from the infringer.
 Exclusion Order: If the case is taken to the International Trade Commission they
might issue an exclusion order. This is the same as a permanent injunction that
forbids the patent infringer from importing the product that uses the infringed
technology into the markets covered by the patent.
 Mediation: Using a mediator to settle the litigation outside of the courtroom and
to avoid a potentially long and costly trial.
 Negotiated Settlement: If the patent owner has support from an experienced and
well-financed firm it might be able to avoid going to trial and negotiate a
settlement with the infringer. This settlement usually includes a licensing
agreement between the parties. Most infringement cases are settled like this.
 Injunctive Relief: The infringing party is forced to cease production and/or sale of
the infringing product or service. This does not provide the patent owner with any
compensation, but it puts pressure on the infringing company.

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