GuardianIP Consulting

Protecting Value – Managing Risk – Building Business

Seminar:Understanding and exploiting

patent rights

Verena Simpson PhDEuropean Patent Attorney

vsi@gipc.eu+45 77 34 44 89

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GuardianIP Consulting

Protecting Value – Managing Risk – Building Business

Agenda• Patentability criteria – novelty

and inventive contribution• Analysis of a patent:

US2012284908: Bubble wrap clothing

• Strategic and commercial decisions to be made when seeking patent protection

• Med-Green and Pyrolysis

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• 9:15 – 9:45

• 10:00 – 11:25

• 11:30 – 12:30

GuardianIP Consulting

Protecting Value – Managing Risk – Building Business

GuardianIP Consulting

Protecting Value – Managing Risk – Building Business

Patent protection

• Patents provide a 20 year monopoly for inventions

• If you have a patent you may prevent your competitors from using your invention – or demand a license fee!

• Patent applications are published 1½ years after filing, thus preventing others from patenting the same invention over again.

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GuardianIP Consulting

Protecting Value – Managing Risk – Building Business

Patent rights

• Patent:– Broad protection: Protects all

implementations of an inventive concept– Requires description of inventive concept– Registration process– Limited in time (20 years) and geography

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GuardianIP Consulting

Protecting Value – Managing Risk – Building Business

What does it take to get a patent?

• An invention!

– The invention has to be new, i.e. the exact same invention must not yet have been publicly disclosed in any way.

– The invention must not be obvious, i.e. the invention must differ from known, similar inventions in a non-trivial manner.

• A patent application

– The invention needs to be described in sufficient detail.

– The patent claims need to give a clear definition of the scope of the protected invention6

GuardianIP Consulting

Protecting Value – Managing Risk – Building Business

US2012284908: Bubble wrap clothing

• Where in the application is the solution to the problem first described?

• What is the solution?

• What types and uses of bubble wrap clothing are described?

• Analysis of the claims

 

• What general problem did the inventors set out to solve in US’908?

• What examples of this problem did they identify?

• Who were the target group(s) having this problem?

• What existing solutions were known for this problem?

GuardianIP Consulting

Protecting Value – Managing Risk – Building Business

GuardianIP Consulting

Protecting Value – Managing Risk – Building Business

GuardianIP Consulting

Protecting Value – Managing Risk – Building Business

GuardianIP Consulting

Protecting Value – Managing Risk – Building Business

General questions relating to IPR• If you are an employee of a Danish university, and you make an invention

during your work, who does the invention belong to?• If you are an inventor/employee at DTU are you entitled to a royalty from

profits made in the commercialization of your invention? • What is an International patent application, and why are they useful?• How many years of patent rights does a granted patent (in any country) give

the applicant?• If you are planning to build a company on a patented invention, which

countries is it important to have patent rights?• Is there any reason why you might be blocked from commercializing your own

patented invention?• If a competitor could block your chances for commercializing your own

patented invention what could you do about it?• If you were going to invest money in a new research project, and you

requested an overview of existing patents in the field, can you get a complete overview of the patent status, and if so why?

• How much do you think it will cost to get patent protection in the US and Europe?

• Are there any additional expenses to pay once your patents are granted?

GuardianIP Consulting

Protecting Value – Managing Risk – Building Business

General questions relating to IPRLovbekendtgørelse nr. 210 af 17. marts 2009 af lov om opfindelser ved offentlige forskningsinstitutionerFordeling af retten til opfindelser:

§ 7. Retten til opfindelser, der er gjort af en arbejdstager ved en institution, tilkommer arbejdstageren med de begrænsninger, der følger af denne lov. § 8. Erhverver arbejdsgiveren i henhold til § 5 eller på andet grundlag retten til en af arbejdstageren gjort opfindelse, er arbejdstageren, selv om andet måtte være aftalt, berettiget til rimelig godtgørelse,....§ 10. Har en arbejdstager som led i arbejdet gjort en opfindelse, skal vedkommende uden ugrundet ophold skriftligt underrette institutionen herom.§ 11. Institutionen skal inden for 2 måneder fra underretningen efter § 10, stk. 1, få foretaget en vurdering af muligheden for at udnytte opfindelsen erhvervsmæssigt og for at beskytte de til opfindelsen knyttede rettigheder og drøfte med arbejdstageren, hvorledes rettighederne til opfindelsen kan udnyttes erhvervsmæssigt.

GuardianIP Consulting

Protecting Value – Managing Risk – Building Business

Now to the important question!

• What can be protected?

• Is it worthwhile?13

GuardianIP Consulting

Protecting Value – Managing Risk – Building Business

Indicators of valuable candidate inventions

• Gives product a competitive edge– Likely to be used in marketing– Functionality– Performance– Production cost– Reliability

• Visibility– Easy to detect infringement– Easy for competitors to identify / reverse engineer– Gives a product an improvement that is detectable by user/customer

• Timing– Maturity of technology / time to market– Expected lifetime of invention

• Low cost to copy– Easy for competitors to identify / reverse engineer

• High cost to develop• Hard to work around

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GuardianIP Consulting

Protecting Value – Managing Risk – Building Business

1. How many granted patents does Pure Laser ApS have?

2. Pure Laser has a granted patent numbered EP 1,961,086B1a) What is the title of this patent?b) Which European contracting states does this patent provide patent

protection?c) When will the rights conferred by this patent expire?d) Can you provide a short summary of the key features of the

invention, and point to where these features are found in the patent claims of EP 1,961,086B1?

e) Does the patent itself describe the advantages of the invention, in which case where can you find this information in the patent?

3. Does Pure Laser have protection for the same invention as EP 1,961,086 B1 in other countries in the world, and if yes, where?

4. Are the patent claims in EP 1,961,086B1 similar to the claims for the same invention in the other granted patents that you can find?

5. Which countries would these granted patents prevent competitors from making and selling the same product?

Med Green Team

GuardianIP Consulting

Protecting Value – Managing Risk – Building Business

6. Are there any important markets in which Pure Laser ApS competitors can make/sell similar products?

7. Do Pure Laser ApS competitors also have any patent applications?

8. Pure Laser ApS advertising material says that their lasers can be used for medical diagnostics. Is this described in their patent applications?

9. WO2012/034563 is a new patent application belonging to Pure Laser ApS. Pure Laser ApS will soon need to decide which countries this patent application should give patent protection. The deadline is 30 months from the date that the first priority application was filed. This date is given on the front cover of WO2012/034563. What is the deadline?

10. Which countries do you think that Pure Laser ApS should seek to get patent protection for their new “Diode laser” in WO2012/034563?

11. Which countries do you think will be best to manufacture their new “Diode laser?

Med Green Team

GuardianIP Consulting

Protecting Value – Managing Risk – Building Business

Pyrolysis team

1. How many granted patents do the DTU Pyrolysis inventors have?2. DTU Pyrolysis has a patent application numbered EP1879979. Is this

application alive or have the inventors decided to drop this application?3. DTU Pyrolysis has a patent application numbered EP1879980 A1

a. What is the title of this patent?b. Which European contracting states could this patent provide patent

protection?c. When will the rights conferred by this patent expire?d. Can you provide a short summary of the key features of the invention?e. Are there both product and method claims in EP1879980 A1?f. Which claims in EP1879980 A1 give the broadest patent protection?g. Why does this and other patent applications have many claims which

have additional features?h. Does the patent itself describe the advantages of the invention, in

which case where can you find this information in the patent?

GuardianIP Consulting

Protecting Value – Managing Risk – Building Business

Pyrolysis team

4. Does DTU Pyrolysis have protection for the same invention as of EP1879980 A1in other countries in the world, and if yes, where?5. Are the patent claims in of EP1879980 A1 similar to the claims for the

same invention in the other granted patents that you can find?6. Which countries would these granted patents prevent competitors from

making and selling the same product?7. Are there any important markets in which DTU Pyrolysis competitors can

make/sell similar products?8. Which countries do you think will be best to manufacture their new “DTU

Pyrolysis” apparatus ?

GuardianIP Consulting

Protecting Value – Managing Risk – Building Business