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Patent Filing Strategies

Dr. Sanchita TewariDesignated Partner

(Patent Agent)

• Thank you all participants for joining with us and investing your valuable time in to this webinar and for giving me the opportunity to talk about Patents and it’s Filing Strategies.

• Today, I would like to highlight the importance of this topic of Filing Strategy in the life of students, researchers, development, professional, project, proposal, individuals, Colleges, startup, MSME.

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Dr. Sanchita Tewari - Introduction

❖ B.Sc & M.Sc Food Science & Tech, Biochemistry

❖ ICAR IGFRI PhD-Biochemistry & Mol. Bio. Lab

❖ Lovely Professional University Senior Lecturer

❖ University Of - TA & RA (Biological North Texas Sciences and Bioinformatics lab)

❖Women Scientist- DST- CSIR URDIP

❖ THIRD-IP Intellectual - Designated Partner

Property Services LLP, https://thirdip.com/

QUIZ LINK https://thirdip.com/boat2learn/

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• THIRDIP Provides Patent and Literature informatics services with keen interest in –

• RESEARCH, PRODUCT, PATENT

• Novelty search, Prior art search & Patentability opinion

• Patent Infringement and Invalidation strategies & possibilities

• Technical reports – Products, processes

• Chemical information services

• Patent filing – Life Sciences, Chem, Pharma, Mechanical

• Boat2learn – Educational Platform, Patent Agent Training

• THIRDIP YouTube Channel -

• Webinars –Quiz Certificates QUERY -8169899640

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TOPICS

Types of Applicants

Ownership of IP

IP in Employment

Patent filing Strategy

Case study

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Types of Applicants

Natural person

Startups

Small Entity

Other than natural/Small entity -> Large Entity

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Inventor – True and First Inventor

OriginatorX ImporterX Outside Communication

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Ownership Of IP ?

Applicant – Grantee - Assignee

Assignment – Inventor

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IP in Employment

Time

Resources

Equipments

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Patent Filing Strategy

Market – Business - License

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STRATEGY

Provisional Patent Application(s)

Developments

Combine All -> Complete Patent Application

Patent Of Addition – Complete Patent Applications

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STRATEGY

Developments, Modifications, Improvements, Usage

Patent Of Addition - Patent Applications

Alternatives possible, manufacturing processes

Design around X Licensing - OPTION

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When to File patent application ?

Too earlyEarlyLate Too late

Protect Your Invention

Variations, Versions, Updation - Possible

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Publication of Patent Application

18 months - SecretNo Publication - WithdrawEarly Publication –~One monthLagging behind in Work

Protection of Invention

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Examination of Patent Application

Examination 48 MonthsExpedited ExaminationWithdrawLagging behind in WorkBefore Grant - Withdraw

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Patentability Criteria

Novelty Of InventionKILLS

Prior Art

Publishing before Patent ? X

PRIOR ART -> PATENTABILITY?

Provisional Patent Application Publication, seminar, conference etc.

Complete Patent ApplicationComplete research with results

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Publication Patent

Experiments Invention

Results Application

Product

Market

IP-Confidential

Identification, Protection

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Multiple Filings

Single Priority – All in One

Multiple Priority - Separate

Multiple Filings

Composition/Formulation/Combination/Product

Device

Apparatus

Machine

Useful Improvement

Process/Method

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Purpose of filing patent

application

Recognition

Publication

Prior Art

Competition

Patent

License/Reward

Revenue

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Filing PCT Application

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PCT - Patent Cooperation Treaty

• International application- An patent application filed under this Treaty

• Advantages

• 1. One application designated to all member countries

• 2. One office

• 3. One language

• 4. International Search Report – Decision Business

• 5. Time delay

• 6. Online filing

• 7. International Phase – National Phase –> Regional

• PATENT GRANT – NATIONAL PATENT OFFICE

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Patent

• Product

• Process

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Scientific Article

• Supportive findings for

Regulatory submission

• Analysis – Method

Development Procedure

• Clinical Study Results

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Startups

-Assets

Govt. Schemes – Rebate - IP asset

Block Competitors - IP

IP - Partnership, Business

Investment –IP

Screening of IP intervals– IP monitoring

Highly Potential – Protect IP

Less Potential – Halt - IP strategy

Recognition /Reputation

Acquisition, Merger, Sale – IP valuation

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Small Medium EnterprisesFocus on Research & Development Protection of IPR simultaneouslyContinuous developments - UpdatesAdvertising / MarketingProduct UniquenessProfit, Revenue, SalesLicensingIP Management, Patent Portfolio

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TRADE SECRET - NDAMixing sequence, Formulas, patterns, compilations, programs, devices, methods, techniques, processes.

Emails, customer lists and manufacturing processes.

Competitive advantage – market

COPYING x

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PRIOR ART SEARCHING

PATENTABILITY STUDY

PATENT LANDSCAPE

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PATENT FILING STRATEGY EXAMPLE

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STUDY OF APPROVED DRUG PATENTS FILED IN USPTO - FILING STRATEGY

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STUDY OF APPROVED DRUG PATENTS FILED IN USPTO - FILING STRATEGY

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STUDY OF APPROVED DRUG PATENTS FILED IN USPTO - FILING STRATEGY

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STUDY OF APPROVED DRUG PATENTS FILED IN USPTO - FILING STRATEGY

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STUDY OF APPROVED DRUG PATENTS FILED IN USPTO - FILING STRATEGY

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Questions ?Patent filing, Patent Agent Exam

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QUERY - 7011406766

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Phone – 7011406766, 8169899640

• Email - tewari.sanchita@gmail.com ;

sanchita@thirdip.com

• Website - https://thirdip.com/boat2learn/

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Disclaimer

This slides are for knowledge and teaching purpose, all

Trademark and Copyright materials included in the

presentation are the property of their corresponding

authors and not belong to the presenters.

For full disclaimer visit thirdip.com/disclaimer

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