Protect your ideas IP protection in general, Patentability - exclusions and exceptions - Core Patent Teaching Kit
←
→
Page content transcription
If your browser does not render page correctly, please read the page content below
Protect your ideas IP protection in general, Patentability - exclusions and exceptions Markus Konrad Tallinn, 16-05-2017
Overview of intellectual property Legal right What for? How? Application and Patents New inventions examination Original creative or Exists Copyright artistic forms automatically Distinctive identification Use and/or Trade marks of products or services registration Registered External appearance Registration* designs Valuable information Reasonable efforts Trade secrets not known to the public to keep secret Protect your ideas 3/41
Example: one mobile phone; several IP rights Trade marks: Made by “Apple" Product “iPhone" Software “iOS" Patents (e.g. 1 500 to 2 000 patents): Data-processing methods Semiconductor circuits Trade secrets: Display ? Copyrights: Designs (some of them registered): Software code overall shape of phone Instruction manual slide-to-unlock image Ringtones rounded corners
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®) • Need to release IP into the public domain under controlled conditions: – Linux (GPL): improvements must be free too! Protect your ideas 6/41
Optional Examples of valuable intellectual property Harry Potter Coca-Cola® Apple® iPhone® Instant camera DNA copying process Protect your ideas 7/41
EPO patent filings (total) 2007 - 2016 320.000 300.000 296.227 279.002 280.000 274.367 265.918 258.500 260.000 244.995 240.000 235.731 225.979 222.574 220.000 211.355 200.000 2007 2008 2009 2010 2011 2012 2013 2014 2015 2016 Protect your ideas 19/41
The "social contract" implicit in the patent system Reveal Get invention exclusivity … so that others can learn from it and improve upon it! Protect your ideas 20/41
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! Protect your ideas 21/41
What information do patent documents contain? • Title of the invention • Bibliographic information: Inventor, proprietor, date of filing, technology class, etc. Abstract: Around 150 words as a search aid for other patent applications • Detailed description of the invention: – 1. Summary of prior art (i.e. the technology known to exist) – 2. The problem that the invention is supposed to solve and benefits compared with what already exists – 3. An explanation of the invention and at least one way of carrying out the invention The information disclosed must be sufficiently clear to a person "skilled in the art" (Article 83 EPC) – this is called "sufficiency" Claims providing a precise definition of what the patent protects (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 Protect your ideas 25/41
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! Protect your ideas 26/41
Where to apply for a patent • National patent offices – National patent valid only in the country where it is granted – Non-residents can also apply for a patent – One year of "priority" for subsequent applications • European Patent Office – A European patent is equivalent to national patents in the countries where it is granted (the applicant chooses the countries) • Via the Patent Cooperation Treaty (PCT) – Just one application for up to 141 countries – After the initial application phase, the international application leads to multiple national patent examination procedures – Decisions with cost implications can be delayed until 30-31 months after filing (e.g. choice of countries to file in) • There is no such thing as an international patent! Protect your ideas 27/41
Optional The patent procedure at the EPO Opposition Search Publication Publication period Application report of application of grant expires 18 months Withdraw? Approx. 4-5 years 9 months Protect your ideas 28/41
Advantages and disadvantages of patenting Advantages Disadvantages • Exclusivity enables • Reveals invention investment and higher to competitors returns on investment (after 18 months) • Strong, enforceable legal • Can be expensive right • Patent enforceable only • Makes invention tradable after grant (this can take (licensing) 4-5 years) Protect your ideas 30/41
Alternatives to patenting Information disclosure (publishing) • Cheap • Does not offer exclusivity • Prevents others from patenting • Reveals the invention to the same invention competitors Secrecy (creating a trade secret) • No protection against reverse- • Cheap (but there is the cost of engineering/duplication of maintaining secrecy) invention • Does not reveal the invention • Difficult to enforce • "Secrets" often leak quite fast Do nothing • Does not offer exclusivity • No effort required • Competitors will often learn details Protect your ideas 31/41
How patents are used • Protecting products and processes – Increasing turnover and profits – Attracting investors • Licensing • Cross-licensing • Blocking competitors • Building reputation • … • Not used Protect your ideas 32/41
Optional Licensing income of US universities Source: AUTM US licensing survey 2004 Protect your ideas 33/41
Optional The value of European patents Share of patents, % Patent value Protect your ideas 34/41
Optional Patent management • Patent strategy – Offensive/defensive – Internationalisation – Kind of exploitation: licensing or own use • Patent information – Keep abreast of technology – Avoid infringing patents – Understand the competitive landscape • Communication – Compile convincing evidence that your patents are valuable – Inform investors and banks, clients and prospective employees • Maintenance – Pay renewal fees, observe deadlines – Strengthen important patents and get rid of ones with no value Protect your ideas 36/41
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! Protect your ideas 37/41
Optional Protect your ideas 38/41
Much information only available in patents Published elsewhere Published in patents 80% found only in patents! Where do secretive competitors publish their R&D? Protect your ideas 39/41
Solutions found in patent documents 90% Free to use 10% Protected You can find many great solutions for free! Protect your ideas 40/41
All patent documents are accessible free of charge on http://worldwide.espacenet.com/ Espacenet over 100 million patent documents, easily searchable Patent Translate Automatic translation between English and 31 other languages, including Chinese, Japanese, Korean and Russian. European Patent Office 41
… but some basic knowledge is needed! Beware of "naïve" keyword searches such as ... Spring "Energy storing means" Protect your ideas 43/41
This kind of "jargon" is often used to broaden the scope of the patent ... Transistor "Semiconductor switching device with a control electrode" Protect your ideas 44/41
Sometimes, the applicant simply doesn't want his patent to be found … Toy ball "Spherical object with floppy filaments" Protect your ideas 45/41
Sometimes, the applicant simply doesn't want his patent to be found … Ball bearing "A plurality of balls" Protect your ideas 46/41
Find out how to search for patents! www.epo.org/wbt/pi-tour www.epo.org/patents/learning/e-learning.html Protect your ideas 47/41
PATENTABILITY EXCEPTIONS & EXCLUSIONS 48/8
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(2) and (3), 53 EPC in http://www.epo.org/patents/law/legal-texts/epc.html Protect your ideas 49/41
Article 53 – Exceptions to patentability European patents shall not be granted in respect of: a) Inventions the commercial exploitation of which would be contrary to "ordre public" or morality; such exploitation shall not be deemed to be so contrary merely because it is prohibited by law or regulation in some or all of the Contracting States; b) Plant or animal varieties or essentially biological processes for the production of plants or animals; this provision shall not apply to microbiological processes or the products thereof; c) Methods for treatment of the human or animal body by surgery or therapy and diagnostic methods practiced on the human or animal body; this provision shall not apply to products, in particular substances or compositions, for use in any of these methods. European Patent Office 50
Article 52 EPC – Exclusions Non-inventions under Article 52(2) and (3) Art. 52(2): The following, in particular, shall not be regarded as inventions: • Discoveries, scientific theories, mathematical methods • Aesthetic creations • Schemes, rules and methods for performing mental acts playing games or doing business • Programs for computers • Presentations of information Art. 52(3): Excluded only to the extent to which a European patent application or a European patent relates to such subject-matter or activities as such. European Patent Office 51
Article 52 EPC - Exclusions - Art. 52(2): non exhaustive list - Activities falling within the notion of a non-invention would typically represent purely abstract concepts devoid of any technical implication. » sales methods, trading, insurance schemes » business administration acts » modelling a system » mathematical methods » operations research » narrative of a video game - A non-invention has no technical character European Patent Office Page 52
Technical Character Further requirement for patentability implicitly contained in the EPC: • the invention must be of "technical character" to the extent that it – must relate to a technical field → R.42(1)(a) EPC – must concern a technical problem → R.42(1)(c) EPC – must have technical features in terms of which the matter for which protection is sought can be defined in the claim → R.43(1) EPC • there is no general definition of what is „technical“: - interpretation of technicality by a series of individual Board's of Appeal decisions - interpretation done on a case by case basis European Patent Office Page 53
Article 52 EPC – Examples • Discoveries – Art. 52(2)(a) – A hitherto unknown planet – The discovery that a particular known material is able to withstand mechanical shock would not be patentable, but a railway sleeper made from that material could well be. • Scientific theories – 52(2)(a) – The theory of relativity – Physical theory of semi conductivity not allowable. However, new semiconductor devices and processes for manufacturing these may be patentable. European Patent Office 54
Article 52 EPC - Examples • Mathematical methods – 52(2)(a) – Purely abstract or intellectual methods – A shortcut method of division would not be patentable, but a calculating machine constructed to operate accordingly may well be patentable. – If carried out by a computer, the invention is to be examined as a “Computer-Implemented Invention" (CII). European Patent Office 55
Article 52 EPC - Examples • Aesthetic creations – 52(2)(b) – Works of art, the appreciation of which is purely subjective. – No exclusion if characterised by technical features, even if the effect produced by the technical features is at least partly of an aesthetic nature. – A fabric may be provided with an attractive appearance by means of a layered structure not previously used for this purpose, in which case a fabric incorporating such structure might be patentable. – A diamond may have a particularly beautiful shape (not of itself patentable) produced by a new technical process (which is patentable). European Patent Office 56
Article 52 EPC - Examples • Schemes, rules and methods for performing mental acts or playing games – 52(2)(c) – Schemes for learning a language, methods of solving crossword puzzles and games (as an abstract entity defined by its rules) are not patentable. – Not excluded: electronic devices applying rules, or, for example, the chessboard and pieces intended for use based on those rules. – If carried out by a computer, the invention is to be examined as a “Computer-Implemented Invention" (CII). European Patent Office 57
Article 52 EPC – Examples • Methods for doing business – 52(2)(c) – Schemes for organising a commercial or administrative operation – Not excluded if there is technical character (technical means are present or there is a technical solution to a technical problem) – If carried out by a computer, the invention is to be examined as a “Computer-Implemented Invention" (CII), for example: “A computer implemented method for providing integrated financial, inventory and manufacturing management comprising: Step 1, Step 2, Step N”. European Patent Office 58
Article 52 EPC - Examples • Programs for computers – 52(2)(c) – A computer program may be considered as an invention if the program has the potential to bring about, when running on a computer, a further technical effect which goes beyond the normal physical interactions between the program and the computer. – The normal technical effects like flow of electrical current are not sufficient to establish a technical character. European Patent Office 59
Article 52 EPC - Examples • Programs for computers – 52(2)(c) – Not excluded for having technical character (producing a further technical effect): a program for controlling an x-ray apparatus having instructions adapted to carry out the following steps: Step 1, Step 2, Step n. – Excluded for not having technical character (not producing a further technical effect) : a program for checking the spelling of a word having the following instructions: Instruction 1, Instruction 2, Instruction 3. – If carried out by a computer, the invention is to be examined as a “Computer-Implemented Invention" (CII) European Patent Office 60
Article 52 EPC - Examples • Presentation of information – 52(2)(d) – Presentations of information defined solely by the content of the information are not patentable (e.g. acoustic signals, spoken words, visual displays, books defined by their subject, gramophone records defined by the musical piece recorded, traffic signs defined by the warning thereon). – If, however, the presentation of information has new technical features, there could be patentable subject-matter in the information carrier or in the process or apparatus for presenting the information (a record with special grooves, a special method for synchronising sound and image recording). – If carried out by a computer, the invention is to be examined as a “Computer- Implemented Invention" (CII) European Patent Office 61
Thank you!
You can also read