How to protect your invention(s)bme.lth.se › ... › Foeretagande_och_entreprenoerskap › 150126_Paten… · Difference between scientific papers and patents ! No scientific evaluation

How to protect your invention(s) 27 Jan 2015

Marie Tenning and Pia Eklund Brann AB

BRANN Proprietary & Confidential Page 2 2015-01-27

60 IPR specialists !   30 patent attorneys within different technical areas !   8 attorneys at law !   Paralegals

!   Lund, Uppsala, Stockholm, Göteborg

IP LAW FIRM handles all issues within the IP field, including agreements and dispute resolution.

What do you know about the company BRANN?

P10341SE00

Homework (mandatory)

Overall task: Develop an IP-strategy for your company. (IP = Intellectual Property)

If you do not have a new product and/or method in your company, make one up that may fit into your company, or pick one of the following:

- New kind of freezer with built-in ice-cream machine. - New kind of robot that monitors children in daycare. - New kind of neuroendoscope for brain surgery. - New kind of portable apparatus for water cleaning in remote areas.

!

Outline of homework •  What kind of IP-protection is appropriate for the company

considering your product/method? Choose IP-protection and motivate your answer.

•  Patent, company secret, design, trademark, agreements,

•  Make a search in Espacenet via http://www.epo.org/searching/free/espacenet.html and find out:

•  At least two competitors (company names). Try to find out in which countries or regions they mainly have sought protection for their technology.

•  Use maily words desribing your invention (product).

•  Considering which IP-protection chosen, your kind of company and business strategy, and what you have learnt from the IP-lecture:

•  Make a simple IP-strategy for your company with time-shedule for when you should: e.g. file a patent application and/or trademark application, and in which countries, when you can expect a patent etc.

!

Homework (mandatory)

Homework deadline February 10, 12:00

e-mail homework to [email protected]

If you have any questions, please e-mail Pia according to above.

!!

Your future and IPR !   Patent attorney ! Inventor in a company or at the University ! Employee !   Consultant !   Research and development manager often responsible

for patent portfolio !   Control manager !   ??????


Agreements

! Employment !   Consultant ! Employed by the university

!   Do not sign anything you are not satisfied with ! Companies tries to block people !   Get an award for the invention- regulated in the agreement !   Different companies has different ways of awarding people


Marie Tenning

IPR - Intellectual Property Rights !   Registered rights

!   Patents !   Utility models !   Designs !   Trade Marks !   Name of Domains

Marie Tenning

IPR - Intellectual Property Rights !   Not registered rights

!   Trade Marks !   Copyright !   Secret know how

!   Agreements

Marie Tenning

Who is interested in IPR?

!   Community !   Productions-, developments- and research companies !   Institutions !   Scientists !   Venture Cap companies !   Layers !   Accountants

Different IP/strategies depending on the business

!   Product- long time on the market, expensive ! Method !   Consultant hours

!   Patent, design, trade mark, company secret, license, agreements.


Marie Tenning

What is an invention?

!   An invention is

!   new (A54), !   involve and invented step (A56) and !   is susceptible of industrial application (57).

!   It should not be an exception from patentability. Be contrary to “ordre public” or morality.

Difference between scientific papers and patents

!   No scientific evaluation !   No need to start from what is known and convince anybody

that you have something of importance ! Funny patents !   Different needs to file a patent application


Marie Tenning

Meaning of a patent

!   Agreement between the inventor and the community !   Reward to the inventor !   The inventor makes the invention public


! Where is the market? ! How big is the market? ! Where are the competitors? ! When will the product be on the market? !   How long will the product be on the market? !   Different patentstrategies

Patent or not?

Marie Tenning

Meaning of a patent

!   Protects investments within research and development !   Driving factor for the technological development of the community

!   Edison patented the lamp

!   Prohibition right !   This means that the owner of the patent has the right to prohibit

others from practising the invention protected by the patent !   Prevents the competitors from patenting the invention !   By patenting an invention you normally limit the activity of your

competitors !   It prevents you normally from being limited of using your invention.

Marie Tenning

What is a patent?

!   A patent is a territorial right !   This means that prohibition can only be in one or more countries in

which the patent owner has obtained a patent

Marie Tenning

What is a patent?

!   The patent application is produced and drives to a patent by the owner of the technology or the owner patent attorney

!   This means that the owner of the technology has influence on how the protection will be shaped

!   Strong or weak application

A patent application

!   Introduction !   Background of the invention !   Summary of the invention !   Detailed description of the invention !   Examples !   Claims

!   The extent of the protection is defined in the patent claims Guide how to interpret the patent claims can be found in the description of the patent.

!   Drawing

Marie Tenning

Marie Tenning

Why patent ??

!   It protects your technology !   Patents can be maintained for 20 years (+5) !   It protects heart technology of the company !   Can have several patents covering your technology-

block the market !   Patents can be bought and sold !   Patents can be licensed !   Value for the company- should belong to the company

!   It may have different value dependent on were the company is going

Marie Tenning

Why patents?

!   Effective weapon against your competitor !   Power, a patent portfolio and/or broad patents covering

core technology is difficult to go round

!   Many companies have an active patent strategy !   A patent strategy defines the strategy for the

company and the goals they want to reach. !   What to protect and not to protect and how to use the

different forms of protection !   Not to patent is also a strategy

Marie Tenning

Different ways to patent

!   National - obtain patent national (SE 1967) !   PCT - Patent cooperation Treat (1970). Get a valuation of the

invention prior to continuing national in more than 120 countries.

!   EP - European Patent Convention (1973). Get a valid patent in 24 + 6 countries.

0 4-6 12 16 18 19 24 30/31 36 48 month

SE

PCT

Search Examination IPER

EP

IN ,US, AU, CA, ZA, NZ

JP, CH. MX, BR, RU

Filing Opinion/Answer publication Last opinion. Grant/printing

SE DE GB FI ES

Novelty Search

New applications Divisionals

Novelty search 10-15’ Patent application 40-60’ PCT 40-60’ National 100-500’

What could you patent

!   Products, apparatus, devices !   Machines, syringe, cup, filter, car parts, food products,

! Methods and processes ! How to produce something

! Use ! Use of a known product for a specific purpose, such as removal of oil

treatment of a disease.


Marie Tenning

Exceptions from patentability

!   The exceptions comes from different international traditions and pressure from different groups such as Greenpeace

!   Discoveries, scientific theories and mathematical methods

!   However, use of them are inventions!!!

Marie Tenning


!   Aesthetic creations

!   However, a special technique for book printing is patentable.

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!   Schemes, rules and methods for performing mental acts or doing business, and programs for computers.

!   However, people manage to obtain patents within this area.

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!   Methods for treatment of the human or animal body by surgery or therapy and diagnostic methods practised on the human or animal body.

!   European exception which does nor exist in US. However, the products can be patented and the use of them as therapeutics.

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Novelty

!   The invention is new if it is not identical to a globally known phenomenon.

!   It should be new in comparison to what is known that day when the patent application is filed.

!   What is known means everything available to public by means of a written or oral description, the use or in any other way made public.

!   To be new means globally new!!

Marie Tenning

NOVELTY Novelty destroying

!   The inventor or other publications, seminar, discussion, applications and manuscript which are not stamped confidential

!   TV and radio !   Newspapers, books !   Internet !   Abstract, posters at congresses !   Expert discussions

Marie Tenning

NOVELTY

!   The best person to destroy novelty for a patent application is the inventor itself!!!

Marie Tenning

Inventive step

!   Evaluation of the quality of the work !   The invention should be different from the closest know technique !   The invention is not quantified and the evaluation is performed on

the basis of what a the skilled person in the art would know or perform.

Marie Tenning

What is a person skilled in the art??

!   Einstein?? !   Stan and Laury (Helan och Halvan)?? !   Somebody in between???

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person skilled in the art

!   The person or the team: !   a) knows everything in the state of the art !   b) lacks inventive imagination and does is not capable of

creative thinking !   c) has a practical orientation !   d) has a cautious attitude

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!   Does not go up against an established prejudice !   Cannot be expected to perform scientific areas not yet explored !   Fills gaps by applying the existing knowledge !   is able to carry out routine (ordinary) work

Marie Tenning

Definition of a person skilled in the art!

!   Seeks appropriate, manifest changes, modifications, adjustments in known processes and/or products when little trouble or work and no risk or only calculable risks are involved

!   follows normally the paths indicated in the state of the art

We prefer to sail in calm waters


Patent strategies

Mine field


Patent Strategy

!   Watch your competitors

! Companies, inventors, classes

! Activity within the field and changes

! Find improvements


Other IP

! Trade Mark- Eriksson, the colour of zoegas, Coca cola

!   Design- Car, mobile phones

! Agreements- employment, collaboration

!   Company secrets- coca cola ingredients

! License- better to inlicense than developing by yourself, outlicense



!   Do not use IP or use ! Unique or mass produced products-Patent, TM or design,

company secret

! Globally market and many products or i countries wherein the buyers are conservative- Patent, TM, design, agreements

! Producst with a low marginal- TM, company secret

! Where is the market? – Where to file

Summary IP strategies

IP strategies

! How big is the market?

! Where are the competitors? What are they doing?

! When will the product be on the market?

!   How long will the product be on the market?

!   How can you use your protection in the different jurisdictions?

!   Who will produce the product



!   Company names stands for quality-TM

!   Small changes on existing products-Design

!   Many competitors with similar products- price No IP?

!   We are selling to the consumer directly- TM, design

!   What kind of economy do you have and why do you choose that market

!   Attract investment money- PATENT!

IP strategies

IP-strategy •  Trademark •  Patent •  Company secret •  Design protection •  Licenses •  Confidentiality agreement •  Employment and assignment agreement !

Connect IP-strategy to business plan Business idea What does the company sell? What kind of product(s)? Consultant service? Processes? Shall the company sell the products on their own, or do they ”only” want to invent/develop? Target group/clients Which market (countries/regions)? Competitors What/How are the competitors doing? Which market? Economy How much money is dedicated for IP? Corporate structure Build own company? Sell to another company? Own funding / external funding?

Create value for investors? !

Marie Tenning

Thank you for listening!!!

Marie Tenning 070 350 28 03 [email protected] Pia Eklund 070 742 6327 [email protected]

http://www.brann.se

Documents

How to protect your invention(s)bme.lth.se › ... › Foeretagande_och_entreprenoerskap › 150126_Paten… · Difference between scientific papers and patents ! No scientific evaluation