© 2008 innovate legal services limited an introduction to patents fred pearson head of ip...

© 2008 Innovate Legal Services Limited

An Introduction to Patents

Fred Pearson

Head of IP Management and Strategy, Innovate Legal

www.innovatelegal.co.uk

8 January 2009


What is a Patent?

A patent is a legal right within the field of Intellectual Property Law.


What is Intellectual Property (IP)?

IP refers to creations of the mind that have commercial value


Examples of IP Rights

Patent - technical innovation

Trademark - reputation

Copyright - expression

Design - aesthetics

Trade Secret - confidential information


A Look at Patents

Patents protect inventions


Definition of Invention

The practical application of an idea or the solution to a technical problem


Patentable Invention

Universal Novelty – FACT: has the invention been publically disclosed?

Not Obvious – OPINION: would (not could) someoneknowledgeable in the relevant field think of the invention?

Industrial Application - USEFUL


Universal Novelty

The invention does not form part of the state of the art by having been made available to the public previously by written or oral description or by use


Not Obvious

The invention must involve an inventive step and does so if it is obvious to a person skilled in the art having regard to any matter which forms part of the state of the art


Industrial Application

The invention can be made or used in any kind of industry


‘Prior Art’

A jargon term

All matter comprising the state of the art

All knowledge considered available to the public through publication or use prior to the date on which patent protection for an invention is first sought (‘the priority date’)


Examples of Prior Art

Published patents

Technical literature: scientific journals, research reportsconference papers

Trade literature / Technical specifications

Non-confidential use or disclosure of the invention


Patent Art Searching

Integral to any new project

Avoids re-inventing the wheel

Saves money in time and effort

Begins from the state of the art

Search tools available


Patent Literature Survey

R&D profect - invention super highway or cul-de-sac new product/

Process – freedom to make / use / sell competition survey – trend

Analysis / activity awareness prior art – attack (invalidate) others’

patent claims


Types of Patentable Inventions

Products

Processes

New uses of known materials


Excluded Inventions (somewhere!)

Computer software

Pharmaceuticals

Processes for treating the human body

Any considered offensive to morality

Any that relate to ‘perpetual motion’


Features of a Patent

Technical publication

Grant of monopoly

‘negative right’ (right to exclude)

Territorially limited

Finite life


Extent of Patent Right

A patent right prevents others from using the patented invention for up to 20 years (generally)

The patent term runs from the date of filing of the patent, in any country where the patent is granted


Composition of a Patent Document

A typical patent document comprises whart are known as a ‘specification’ and a set of ‘claims’


The Specification

Describes the (closest ) prior art, discusses its limitations and the ability to overcome them to advantage: either by technical improvement and/or improved economic performance

Describes how to make/use the invention in great detail; maybe with examples comparing its technical performance against the prior art invention


The Claims

Define the area of protection for the invention

Considerable expertise is required to maximise the area of protection known in jargon terms as the ‘claim scope’


Importance of Claim Scope (1)

You devise and patent a hot air balloon

You claim: ‘A hot air transport balloon’

Someone later patents ‘a helium balloon’

This invention is not within your claim scope

You have no business lever!


Importance of Claim Scope (2)

You claim ‘A transport balloon achieving lift by being filled with a gaseous medium less dense than ambient air at ambient pressure’

The helium balloomn is within your claim scope

You have a business lever to negotiate a cross license arrangement and/or a royalty income


The Patent Filing Process

The race for priority!

Outside the U.S., the first to file is entitled to the patent

In the U.S., the first to invent is entitled to the patent


Inventorship Considerations

Controlling factor: who supplied the inventive concept in the form that worked without the need for further invention?

Critical in the U.S. : the application must be made by TRUE inventor(s) who make a declaration on oath


Importance of Invention Date in the U.S.

To prove invention before the date of the prior art

To win an interference action

To prove date and facts of invention in patent litigation


Maintaining Laboratory Notebooks

‘..........an R&D organisation that maintains its notebooks in a form that provides credible evidence can enjoy a distinct advantage should a patent dispute occur’

[Finnegan, Henderson et al, Washington, DC]


Basic Requirements

Self explanatoryEach entry signed and dated by the inventorRead, understood, signed and dated by an independant witness (NOT a co-inventor)


Contents of Invention Disclosure

Title and summary of invention

Background description indicating relevant prior art

Benefits of invention over prior art

Details of supporting technical data

Details of inventor(s)

Business relevance


Planning Patent Filings: Issues

Business / patent strategy

Geographical coverage

Type of invention

Likely valid scope of protection

Impact of national patent laws

Choice of patent protection routes

Life of invention versus life of patent


Patent Filing

Initial application (for priority date)

Corresponding applications

International treaties: Paris Convention (12 month rule)

European Patent Convention (EPC)

Patent Cooperation Treaty (PTC)


Patenting Routes

National patent offices

European Patent Office

PCT designated offices

Each route concludes with a bundle of national patents


Patent Prosecution

Patent office examiner raises objections based on prior art search

Remedies: Counter-arguments, amendment, experimental evidence,

Patent office rejects application

Remedies: Appeal within Patent Office; Appeal to Courts


Success!

Patent grant

Patent maintenance

Post grant issues


Patent Oppositions

Procedure available to test patentability

Opposition must be filed within certain time of patent grant

Examples: European Patent Office – 9 months

Japanese Patent Office – 3 months

Arguments for/against patentability

-Possibility of appeal

-2-3 years duration


Patent Infringement

An offending act by virtue of falling within the scope of protection for the invention defined by a valid patent claim

Literal

Equivalence

Contributory

Defence:

Prove alleged infringed claim is not new and/or obvious and/or lacks

Utility and/or is sufficiently supported by the specification


Threatening Patent Infringement

An offence

Direct or indirect

Spoken or written


Detecting Infringement

Monitor Competitors’ activities

Research market information

Scan trade publications, journals, newsletters

Analyse competitive products

Examine government permits


Litigation

UK/USA/CANADA

discovery

cross-examination of witnesses

sometimes jury travel (USA)

REST OF WORLD

little discovery

written submission of arguments

saisies to prove infringement


Freedom to Exploit

Each and every NEW product/process/etc, whether patented or not,

MUST be checked against the patents of others before commercial use

begins to ensure that it is free from infringement


Costs of Patenting

Types of costs incurred from original patent drafting to patent expiry;

Patent attorney’s time/fees

Prior art searching time

Foreign patent attorney’s time/fees

Patent office’s official fees:

patent filing

patent grant

annual renewal

Language translation fees


General Patent Data

A patent application is published 18 months after its priority date

It can take several years to obtain a granted patent

Only the claims of a granted patent can be enforced against infringers

One patent per invention per country is allowable

A granted patent remains in force for 20 years subject to payment of annual renewal fees


Patent Ownership

The owner will be

- the inventor; or,

- if employed, the inventor’s employer

(unless the invention was made outside the scope of the inventor’s contracted or expected duties of employment )


Secrecy versus Patenting

considerations: patentable?

obvious?

detectable?

leak proof?


Secret use of Invention

Secret use of an invention by one party does not prevent a patent being granted subsequently on the same invention to another party

The patent that is granted may then affect the extent of the continued secret use of the invention


Why patents are valuable!

Exclusivity (sole use)

Restrict competition (legally!)

Competitive edge (value adding)

Negotiable assets (lever external business opportunities)

Licensable (royalty income)


Thank you for listening

Fred Pearson

Innovate Legal

107 Fleet Street

London

EC4A 2AB

Tel: +44(0)20 7936 9056

Fax: +44(0)20 7936 9111

Email: [email protected]

www.innovatelegal.co.uk

© 2008 innovate legal services limited an introduction to patents fred pearson head of ip...

Documents

invention slide

art slide

legal right

technical problem slide

priority date slide

commercial value slide

perpetual motion slide

kind of industry slide