Fundamentals of IP - Francesco Maria Colacino

Fundamentals of IPFrancesco Maria Colacino, Ph.D. MBA

College of Engineering and Physical SciencesUniversity of [email protected]

12 November 2013

mailto:[email protected]

Francesco M. Colacino 2

Agenda

• The Patent System: Origins and Rationale• Reasons to Engage with Patents• The Different Types of Intellectual Property

Rights (IPRs)• Patent Filing Process• Patent Structure• Conclusion

November 2013


Disclosure

• Some of the material has been provided by the European Patent Office (EPO)

• Where EPO’s material has been used with no modifications the EPO logo will be shown

• Where changes have been made to the original material the EPO is not responsible for the correctness of any such modified version…

November 2013

….Blame me!


In the ancient Greek city of Sybaris (destroyed in 510 BC), leaders decreed:

"If a cook invents a delicious new dish, no other cook is to be permitted to prepare that dish for one year.

During this time, only the inventor shall reap the commercial profits from his dish. This will motivate others to work hard and compete in such inventions."

November 2013

The First Account of a “Patent System"

Francesco M. Colacino 5November 2013

Cosenza

Sibari(Sybaris)

Naples

SicilyCopyrights: Wikimedia Commons

Francesco was born

here!!(Corigliano

Calabro)

Calabria

Sibari(Sybaris)

http://en.wikipedia.org/wiki/File:Italy_provincial_location_map.svg#file


The Patent System

November 2013

Senate of Venice, 1474:

"Any person in this city who makes any new and ingenious contrivance, not made heretofore in our dominion, shall, as soon as it is perfected so that it can be used and exercised, give notice of the same to our State Judicial Office, it being forbidden up to 10 years for any other person in any territory of ours to make a contrivance in the form and resemblance thereof".

Today:New to the world; up to 20 years of protection

Main Objectives:Incentive to innovate (grant protection)Incentive to share knowledge (publish the invention's details)


The “Social Contract” in the Patent System

November 2013

Revealinvention

Get exclusivity

… so that others can learn from it and improve upon it!


Other reasons to Engage with Patents

November 2013

Published in Patents80% 20%

PublishedElsewhere

Source: Empirical Studies

Patents focus onHOW THINGS WORK

Scientific articles focus on SCIENTIFIC CONTRIBUTION


90%

10%

Protected

Free to use

November 2013


Source: EPO


• To see if anyone has developed technology like yours• To find other inventors working in your field• To find other companies active in your field• To find new ideas for solving your technical problems• To develop new products• To develop new business directions• To evaluate the state of the art• To avoid infringing• To assess freedom to operateOR…• Nothing in particular, you just like browsing patents!

November 2013


Type of IPR What for? Length of Protection How?

Registered

PatentsProducts and processes which are novel, involve a non-obvious inventive step and are capable of industrial application. There are a number of excluded classes such as mathematical algorithms, mathematical theories and the like.

20 years from date of filing

Application and

Examination

Registered Trade Marks ®

Any sign capable of graphic representation that allows the customer to recognise the goods and services of one undertaking from those of another. A sign can include, for example, words, logos, colours, slogans, pictures, three-dimensional shapes, sounds, gestures or a combination of these.

Renewable every 10 years on payment of renewal fees, with no maximum time limit

Registration

Registered Designs

An internal or external aspect of design (not the way how a product works) which is "new" and has "individual character" or "eye appeal". It is a right for the appearance of the whole or a part of a product resulting from the features of, in particular, the lines, contours, colours, shape, texture or materials of the product or its ornamentation.

Renewable every 5 years up to a maximum of 25 years

Registration

Unregistered

Copyrights ©Original literary, dramatic, musical and artistic works, sound recordings, films, broadcasts, cable programmes and typographical arrangements. Copyright also protects computer programs and computer source code.

General rule is the life of the author plus 70 years

Exists automatically

(in the UK)

Unregistered Trade Marks ™ Same as registered Trademarks

No maximum time limit. It may be difficult to prove infringement (passing off)

Use

Unregistered Design Rights

Any original aspect of shape or configuration may be whole or part of an article whether it is the interior or exterior

15 years from creation or 10 years from first marketing Use

Trade SecretsAny confidential information/know how that is not known to the public, more valuable if not know to the public and subject to reasonable efforts to maintain the secrecy

Till it is not disclosed NDAs


IP Star

IP

Patents

Designs

Copyrights

Trade Mark

s

Trade Secret

s

November 2013

Registered• novel• Involve non-obvious inventive step• capable of industrial application

(also called technical effect)

13

IP

Patents

Designs

Copyrights

Trade Mark

s

Trade Secret

s

Patents found in a mobile phone© Nokia

• Sliding mechanism• Semiconductor circuits• Chemical compounds• …

November 2013 Francesco M. Colacino


IP Star

IP

Patents

Designs

Copyrights

Trade Mark

s

Trade Secret

s

November 2013

Registered or UnregisteredAn internal or external aspect of design (not the way how a product works) which is "new" and has "individual character" or "eye appeal"

15

Designs found in a mobile phone

• Form of overall phone• Arrangement of buttons in oval shape• Three-dimensional wave form of buttons• …

© Nokia

IP

Patents

Designs

Copyrights

Trade Mark

s

Trade Secret

s


• Sliding mechanism•Semiconductor circuits• Chemical compounds• …


IP Star

IP

Patents

Designs

Copyrights

Trade Mark

s

Trade Secret

s

November 2013

UnregisteredOriginal literary, dramatic, musical and artistic works, sound recordings, films, broadcasts, cable programmes , computer programs and computer source code

17

Copyrights found in a mobile phone© Nokia

• Software code• Instruction manual• Ringtone• …

IP

Patents

Designs

Copyrights

Trade Mark

s

Trade Secret

s





IP Star

IP

Patents

Designs

Copyrights

Trade Mark

s

Trade Secret

s

November 2013

Registered or UnregisteredAny sign capable of graphic representation that allows the customer to recognise the goods and services of one undertaking from those of another (e.g. words, logos, colours, slogans, pictures, three-dimensional shapes, sounds, gestures or a combination of these)

19

Trade Marks found in a mobile phone

• Made by "Nokia"• Product "N95"• Software "Symbian“, …

© Nokia

IP

Patents

Designs

Copyrights

Trade Mark

s

Trade Secret

s






IP Star

IP

Patents

Designs

Copyrights

Trade Mark

s

Trade Secret

s

November 2013

UnregisteredAny confidential information/know how that is not known to the public, more valuable if not know to the public and subject to reasonable efforts to maintain the secrecy

21

IP

Patents

Designs

Copyrights

Trade Mark

s

Trade Secret

s

Trade Secrets found in a mobile phone© Nokia

?


• Made by "Nokia"• Product "N95"• Software "Symbian", "Java"





Rights Conferred by a patent

November 2013

• Prevent others from making, using, offering for sale, selling or importing infringing products in the country where the patent was granted

• Sell these rights or conclude licensing contracts• For up to 20 years from the date of filing of the patent application

• A patent search is indispensable before starting development in order not to waste time and effort

The patent does not grant the right to use the invention!...….but stops others from doing so


Filing Process

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What NOT TO DO when considering filing a patent application

• No publication prior to filinge.g. no article, press release, conference presentation/poster/proceedings or blog entry

NDA

• No sale of products incorporating the invention prior to

filing

• No lecture or presentation prior to filing except under a non-disclosure agreement (NDA)

• Seek professional advice soon!• File before others do!... Not just file early.


What the Patent Attorney Needs

• Invention Summary• Prior Art• Differences and Advantages • Experimental Details• Figures, Drawings, Sequences• Applicant(s), Inventor(s)• Publication plans

November 2013


Filing Process - Overview

November 2013

Priority (Provisional)

Application (GB)

PCT Application

National/Regional Phase Applications

12 months

18 months

OR

12 months

First Year After Filing• Priority date established• Further supporting experimental work• Search results (if requested)• Publish or not? Possibility to withdraw• Supplemental application(s)?• Commercial goals• Identify Countries where protection is

required

Protection Overseas

Advantages of PCT Routes• Delays decision on countries to

cover• Delays costs (but slightly more

expensive overall)• Good search report• One patent application for up to

around 141 states

National Examination and Grant• National examination

procedures– Rounds of examination, reports and

responses– Refusal and Acceptance– Appeals

• Grant Processes• Post Grant Procedures• Maintenance & Renewal fees

National Patents Granted

26

Filing Process - Overview

November 2013

“Provisional” Patent Application at UK IPO or EPO or US PTO

PCT Patent Application at WIPO

National Phase Filings

Examination of National Phase Filings (£1k-£5k per territory)

Granted Patents in Specific Countries (grant fee £0-£4k per territory)

12 Months

18 months

From 3 months

To 6 years

Patent maintained whilst in use

Annual Renewals

Accumulated Costs

£5,000

£10,000

£21,000-£35,000

£24,000-£75,000

£30,000-£120,000

Accumulated Time

12 months

30 months

0

Up to 8.5 yrs

Up to 20 yrs

Withdraw?

£30,000-£1.5 mil

18 months

Francesco M. Colacino 27November 2013

What Does a Patent Look Like?

28

Patent Journal Article

Bibliographic Information• Inventor, proprietor, date of filing, technology

class, etc.

Bibliographic Information• Authors, affiliations, date of

submission/acceptance, key words, etc.Abstract• Around 150 words as a search aid for patent

applications

Abstract• A 150/200 words excerpt of the paper to quickly

navigate its contentDescription• Summary of prior art (i.e. the technology known

to exist)• The problem that the invention is supposed to

solve• An explanation and at least one way of carrying

out the invention

Introduction• Summary of the state of art (i.e. the science

known to exist)• The rationale for the researchMaterials and Methods• How experiments have been performedResults• The outcomes of the experiments (usually with

plots and pictures)Claims• Define the extent of the Patent protection

Discussion• Results and methods are discussed highlighting

limitations/potentials of the research• A pathway to carry out future work is usually

explainedDrawings• Illustrate claims and description and help with

their understanding

Conclusion• Main findings are summarised


A Patent Front Page

November 2013


… But do not be too Naïve in searching for Patents

• Spring

November 2013

• Energy storage device

• Portable HD

Patent JargonCommon Language

Sometimes the applicant does not want his/her patent to be found…

• A plurality of balls• Ball bearing

Sometimes the jargon is used to broaden the scope of the patent…

• Data storage carrier


Conclusion

November 2013

• Exclusivity enables investment and higher returns on investment

• Strong, enforceable legal right

• Makes invention tradable (licensing)

• Reveals invention to competitors (after 18 months)

• Can be expensive

• Patent enforceable only after grant (this can take 4-5 years)

Advantages Disadvantages (mainly for patents)

Advantages and Disadvantages of Patenting(… or IPRs in general)


Conclusion

November 2013

• Cheap• Prevents others from patenting

the same invention

• Does not offer exclusivity • Reveals the invention to

competitors

• Cheap (but there is the cost of maintaining secrecy)

• Does not reveal the invention

• No protection against reverse-engineering/duplication of invention

• Difficult to enforce• "Secrets" often leak quite fast

• No effort required• Does not offer exclusivity• Competitors will often learn details

Information disclosure (publishing)

Secrecy (creating a trade secret)

Do nothing

Alternatives to Patenting


References• www.ipo.gov.uk - Official government body responsible for

granting Intellectual Property (IP) rights in the United Kingdom, including patents, trade marks, and copyright.

• www.epo.org - The official website of the European Patent Office (EPO)

• www.uspto.gov - Home page of the United States Patent and Trademark Office's main web site.

• www.wipo.int - WIPO (World Intellectual Property Organization) is responsible for the promotion of the protection of intellectual property throughout the world through cooperation among States.

November 2013

*Links are being made to other pages containing material that is copyright of third parties.

http://www.ipo.gov.uk/



http://www.epo.org/

http://www.epo.org/

http://www.epo.org/

http://www.uspto.gov/



http://www.wipo.int/



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Fundamentals of IP - Francesco Maria Colacino