Embed Size (px)
Citation preview
Intent • Understand why patents are important • Type of intellectual properties • Is an idea patentable? • Aspects to consider before the application • How to proceed ? • Estimation of costs • Content of a patent • Understand why they are written the way that they are
written • To be able to find patents • Infringement, Freedom to operate (FTO)
Patent Definition
A right granted by the government to an inventor to exclude others from making, using, offering for sale or selling the invention in the State or importing the invention into the State for a limited period of time.
12/2/2014 3
Overview of intellectual property
Legal right What for? How?
Copyright Original creative or
artistic forms
Trade marks Distinctive identification of products or services
Use and/or registration
Registered
designs Registration*
Patents New inventions Application and
examination
Exists automatically
Trade secrets
External appearance
Valuable information
not known to the public
Reasonable efforts
to keep secret
http://www.epo.org/learning-events/materials/kit/modules.html
Importance of intellectual property
• Essential business asset in the knowledge economy
– Swedish steel-maker Sandvik: 20% of its value is from IP!
• Increases funding for innovative projects
– Without IP many innovative projects would not be profitable
because anyone who wanted could simply copy the results
• Protects small innovative firms
– Dolby® Laboratories
– W. L. Gore & Associates (Gore-Tex®)
What can be patented at the European Patent Office?
Inventions that are… • new to the world (no previous public notice) • inventive (i.e. not an "obvious" solution) • susceptible of industrial application
NOT:
• Mere ideas not reduced to practice
• Software as such
• (but algorithms that achieve technical results)
• Business methods
• Medical therapies, plant varieties, etc.
• …
See Articles 52 and 53 EPC in
http://www.epo.org/patents/law/legal-texts/epc.html
Utility Patent
12/2/2014 7
Design Patent
12/2/2014 8
Rights conferred by the patent
• 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
The patent does not grant the right to use the
invention!
Patentability
• Novel
• Useful
• Non-Obvious (Inventive for EU)
12/2/2014 11
What do you thing?
12/2/2014 12
Potential Prior Art
12/2/2014 13
Potential Prior Art
I work moving concrete blocks around. I wear gloves out frequently, but usually just the fingers. This is a simple idea. The extra finger stays beyond the pinky, and when a finger is worn out, take off the glove and put it on again, but this time with all the fingers in complete finger places. That way, if you wear out one finger, you don’t have to get a new glove. It could also come with a spare thumb. (schematics, 6/7/04)
Not everything that could be patentable makes business sense ….
Patent Strategy
What does a patent look like?
• Bibliographic information
– Inventor, proprietor, date of filing, technology class, etc.
• Abstract
– Around 150 words as a search aid for other patent applications
• Description
– 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
• Claims
– Define the extent of patent protection
• Drawings
– Illustrate the claims and description
Structure of the description
• Prior art
– Teapot with one spout
• Drawback of prior art
– Time-consuming
• Problem to solve
– Reduce filling time
• Solution
– Provide a second spout
• Advantage of the invention
– The time needed to fill multiple
cups is reduced
What not to do when considering filing a patent application
• No publication prior to filing
e.g. no article, press release, conference presentation/poster/proceedings or blog entry
• 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!
Inventorship / rights
• Those who contribute ideas that are embodied in the claims
• Those who contribute ideas, but whose ideas don’t make into claims are not inventors
Important : To be an inventor is nice but more important is
To have the rights of use the invention!!! => consider: licensing agreements
• 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 and disadvantages of patenting
Advantages Disadvantages
21
European Patent Convention: Cost
Consider also : + costs for patent attorney for filing
Patenting Costs (in kCHF) (dependent from case to case)
Priority Application 10 Foreign Filings (EP, CA, US, JP) 30 Costs up to grant 70 (EP (DE, FR, GB, IT, ES), CA, US, JP) Annuities 0 – 10 J. 15 10 – 15 J. 25 15 – 20 J. 60
Sum: 210
25% of all R&D efforts ...
… are wasted each year on inventions that have
already been invented.
Don't start your R&D until you have done a
search!
Optional
Searching patents
• Patents are not written to be found; they are written to be defended in court
• If anything, they are written so that they are not found easily
Searching patents
• Titles are not the best thing to use to limit in a search
Searching patents
• A patent is a defensive tool, so think defensively: – a fence is not needed if you can scare off intruders before
they trespass
– think like someone planning a static defense • hiding is more important than being seen
• if seen, however, look strong
• try to attract attention to a falsity (a trap)
• devise a redoubt ahead of time
• plan a secret escape route
• keep in mind that people do leave key ingredients out of recipes
Five basic patent searches
• Application number
• Patent number
• Assignee name
• Inventor name
• Subject search
Searching for patents can be easy ...
Free worldwide patent information is available at
http://worldwide.espacenet.com/
… but some basic knowledge is needed!
Beware of "naïve" keyword searches such as ...
"Energy storing means"
Spring
"Semiconductor switching
device with a control electrode"
This kind of "jargon" is often used to broaden the scope of the patent ...
Transistor
"Spherical object with floppy
filaments"
Toy ball
Sometimes, the applicant simply doesn't want his patent to be found …
"A plurality of balls"
Sometimes, the applicant simply doesn't want his patent to be found …
Ball bearing
Patent Clearance
Before you produce and market a product, it is important to determine third-party IP rights, which you could infringe with your product or a process it involves
entrepreneur & investor perspective:
a) A sound patent portfolio is required to protect your developments and to block your competitors. If the patent is not grated yet, the analysis of the search report gives and indication about patentability.
b) A freedom to operate (FTO) analysis is requested
Patent Clearance - ensuring that our products do not infringe 3rd party patents
Patent Searches
Technical Screening
Legal Analysis
Product Analysis
Decide Actions on critical Patents & Implement
Potential Actions on critical Patents: - Avoid / circumvent -> design changes ( -> pre-clearance ) - Destroy the Patents -> only possible if „invalid“ - Take a license -> reduces profit / sometimes not possible - Cross-licensing -> attractive patent portfolio needed - Take the risk -> in view of injunction only if patent is invalid
=> Sound Patent Clearance is imperative to our business
International patent organizations
• Patent Cooperation Treaty (PCT)
– Over 100 countries
– Most filings in English
• European Patent Office (EPO)
– Major European countries
– File in English, French, German
• Miscellaneous others (ARIPO, etc.)
The patent procedure at the EPO
Application
Search
report Publication
of application
Publication
of grant
Opposition
period
expires
Withdraw?
18 months
Approx. 4-5 years 9 months
Optional
http://www.epo.org/learning-events/materials/kit/modules.html
Find additional information on:
