building a competitive edge: protecting inventions by utility models and/or patents casey k. chan...

Building a Competitive Edge: Protecting Inventions by Utility Models

and/or Patents

Casey K. Chan

National University of Singapore IP Academy of Singapore

Topics Covered

Economic Commercial Perspective

Patentability and Specification Introduction to Claim Structure Proprietary position and FTO Practical Tips

Increasingly, wealth of a Increasingly, wealth of a nation is measured by nation is measured by ownership of intellectual ownership of intellectual properties rather than by properties rather than by ownership of hard assets.ownership of hard assets.

Paul Romer Paul Romer Graduate School of Business at Stanford University Graduate School of Business at Stanford University Fellow at the Hoover InstituteFellow at the Hoover Institute

Classical Economy

Tangible Capital

New Growth

Economy

Intangible Capital

Types of Intellectual PropertiesTypes of Intellectual Properties

Trade Secrets - No regulation

Patents – Regulated

Trademarks – Regulated

Copyright - Regulated

Freedom to Operate – FTOFreedom to Operate – FTOProprietary PositionProprietary Position

New Product Development

IP AssessmentUser Spec

IP Protection

Economic PerspectiveEconomic Perspective

Patents -- legal ownership of intellectual properties

Incentive for Inventors Quid pro quo - grant in exchange for

disclosures Right to exclude others to use and/or

manufacture the invention

Types of PatentTypes of Patent

Utility Patents - machine, process,

composition of matter

Design Patents - ornamental design

Plant - distinct and new variety of

asexually reproduced plant

Should I file a Patent?

Where and When

When should you file a patent?When should you file a patent?

Because it is a brilliant idea -- No Because of commercial potential -- Yes

Competitive advantage (unfair advantage)

Barrier to entry in market place

CriteriaCriteria

Patentability

Commercial Potential

Enthusiasm of Inventor

Commercial PotentialCommercial PotentialCo 1 NuProduct Co 2

Accuracy Sensitivity

Efficiency

Speed

Automatable

Reproducibility

Cost

Very Broad

>$750 Million

Short: 6 – 12 Months

Multiple Channels - Direct + “NuProduct Inside”

Low – Repackaging

>65%

Q4, ‘04

Market Applications

Initial Targeted Applications

Product Development Cycle

Commercialization Pathway

Manufacturing Complexity

Projected Gross Margins

Projected Time to

Profitability

NuProductBusiness Model

Commercial PotentialCommercial Potential

Where should you file your Where should you file your patent?patent?

Patent law is jurisdictional File in country where the market is

largest File in countries it is cost effective

Customer per $ patent cost File in countries where you are

prepared to enforce infringement

Worldwide Market forWorldwide Market forMedical Device Medical Device

Source: Tucker Anthony

Asia Pacific

20%

Americas5%

Europe25%

USA50%

European Market European Market for Medical Devicefor Medical Device

France24%

Germany24%

Others8%

Spain &Portugal

15%

Switzerland3%

Scandinavia4%

Gt Britain9%

Italy13%

Source: Tucker Anthony

The Big FourBig Four constitute 75% of Europe’s market:FranceGermanyItalyGt Britain

One strategyOne strategy

Local + USApplication

Japan

(18 Months)

Europe

China

National Phase

PCTApplication

Clearing House

(12 Months)

Chap IIChap IIDelay to 30 mthsDelay to 30 mths

EUEU

JPJP

CNCN

Utility Patent - 5 statutory classesUtility Patent - 5 statutory classes

1. Processes (Methods)2. Machines (Devices and Apparatus)3. Manufactures -- “articles of

manufacture”e.g. transistors, floppy disks, etc

4. Composition of matter5. New uses of above

Utility Patent – Three TypesUtility Patent – Three Types

1. Method2. Apparatus3. Composition of matter

In practice this is all you need to remember

Requirements for PatentabilityRequirements for Patentability

1. New and Novel

2. Useful

3. Non-obvious

1. New and Novel (No “Prior Art”)

Commercially available Public Disclosure

Publication in journals, magazines, abstracts

Posting on the Internet Oral or Poster Presentation at symposium

or seminar Material made available to public at

university library Demonstration at trade shows, to visitors

Confidential Disclosure Agreement

2. Utility

Must have a useful function If device does not work no use to

inventor anyway Prevent pre-emptive filing of

Composition of Matter e.g. new chemicals, new drugs, new gene with no known function

2. Utility – New Guidelines2. Utility – New Guidelines

Credible Specific Substantial

3. Obviousness 3. Obviousness

Obvious to those “ordinary skill in the arts”

What makes an invention non-obvious1. Unexpected results2. Previous publication stated that it

cannot be done3. Have to go through a series of

experimentation to arrive at invention

What Cannot be Patented?What Cannot be Patented?

Arrangements of printed matter Methods of doing business ? Obvious devices Perpetual motion machines Nuclear weapons or weapons of mass

destruction Laws of nature or scientific principles

(must have “embodiment”)

Actual Cost of FilingActual Cost of FilingUS$ 10,000 to 15,000US$ 10,000 to 15,000

Preparation Time Patent Search Drawings Attorney’s Fee Filing Fees Maintenance Fee Legal Defense

Legal jargonsLegal jargons

“ prior art” “ordinary skill in the art” “embodiment” “new teachings”

Specification of a PatentSpecification of a Patent

DefinitionNew teachings Claims

Background

& Prior Art

“more is better”

Broad claims“less is more”

Anatomy of a peer review paperAnatomy of a peer review paper

Title Introduction Materials and Methods Results Discussion Conclusion

Anatomy of a PatentAnatomy of a Patent Title Field Of The Invention Background Of The Invention Objects Of The Invention Summary Of The Invention Brief Description Of The Drawings Detailed Description Of The Preferred

Embodiments Modifications Of The Preferred Embodiments Claims This is the right you own!

Specifications

A

B C

D

AB

C

DElements

Z

1827 - My Invention - Bicycle

1807 – Prior Art - Unicycle A

B

AB

EC

Competitor’sProduct:

Infringement ? =

AB

C

DYour Claim:

Independent Claim

AB

C

DDefinition

Z

NO

Your Invention:

A

B C

D

A

B C

E

D

Infringement ? =

AB

C

Dependent Claim

YES !

AB

C

Competitor’sProduct:

AB

C

Your Claim:

Independent Claim

AB

C

Definition

Z

Your Invention:

E

D

D

Five Types of ClaimsFive Types of Claims

Independent Claim (3)

Apparatus

Method

Composition of Matter

Dependent Claim (2)

Additional element

Restriction of an element

AB

C

DDefinition

Z

Your Invention

A

B C

D

AB

C

DElements

Z

1827 - My Invention - Bicycle

1807 – Prior Art - Unicycle A

B

AB

EC

Competitor’sProduct:

Infringement ? =

AB

C

DYour Claim:

Independent Claim

AB

C

DDefinition

Z

NO

Your Invention:

A

B C

D

A

B C

E

D

AB

EC

Competitor’sProduct:

Infringement ? =

AB

C

Your Claim:

Independent Claim

AB

C

Dependent Claim

AB

C

DYour Invention:

Definition

Z

YES !

Five Types of ClaimsFive Types of Claims

Independent Claim (3) Apparatus

Method

Composition of Matter

Dependent Claim (2) Additional element

Restriction of an element

AB

C

DDefinition

Z

Your Invention

One Hand Rule of ClaimsOne Hand Rule of Claims

12

One Hand Rule of ClaimsOne Hand Rule of Claims

12

One Hand Rule of Claims

1

Freedom to Operate Freedom to Operate is determined by:is determined by:

What are competitors’ patent claims Unclaimed prior art

Patent specification Published work

Patent B

Claim BPatent A

Claim A

Publication C

My FTOMy FTO

Proprietary Position Proprietary Position is determined by:is determined by:

What are my patent claims

Trade secrets

My Patent B

My Patent A

Claim C

Claim B

Claim A

My Patent C

Competitor’s FTO

My Trade Secrets

Initial patent reviewInitial patent review

Front Page Patent Number and Title Applicant (s), Assignee Issued Date/ File Date Class and Field of Search Attorney, Examiner References (Referring Patents) Abstract Representative Drawing

Back Page Claims (First claim most important)

Utility model

Not the same as “utility patent” Parallel second tier patent systems Foster indigenous invention and

innovative activities Petty patents, innovation patents,

utility model

Types of Patent and Duration

US Utility (20y) Design (14y) Plant (20y)

China Inventions (20y) Indus designs (10y) Utility models (10y)

Thank youThank you