Inventing the Future – The Role of Patents and Utility Models in Leveraging Technical Innovation in the Market PlaceRon Marchant CB FRSA

Implementation of the National Intellectual Property Strategy and Intellectual Property Rights Protection for Small and Medium Enterprises (SMEs);Bishkek, November, 2013

Outline

Why Innovate

What is a Patent?

What is a Utility Model?

Why should I Patent?

How do I get a Patent or Utility Model?

Patenting Abroad

Leveraging Commercial Value

Enforcement

Some References

Why Innovate?

Innovation is not the same as Invention

It is the application of the invention in a marketable product or process

Benefits of Innovation

Improved process; cost saving; greater productivity

New products new markets

Greater market share; market position

Prevent technological dependence on others

Creates environment for development of technology to meet current and emerging needs

What is a Patent?

Exclusive right to prevent others using an invention

An invention must

Be novel

Involve an “inventive step”, that is, not be obvious

Be capable of industrial application

Scope of exclusivity defined by “patent claims”

Describes how the invention is performed

Territorial in scope; country or region

Limited in time, usually 20 years

Must be maintained by payment of renewal fees

What is a Utility Model?

Similar to a patent, but

Shorter period of exclusivity – 5 years

Cheaper and quicker to obtain

Formal and preliminary search or examination

Restricted to products

Lower level of “inventive step” required

Can be converted into a patent before grant

Search conducted on request by applicant or third party

Why should I Patent

Stronger market position

Greater return on investment; higher profit

Possible income from others for using patent

Access to technology through cross licensing

Open access to new markets

Manage risks of infringement

Attractive to investors and financiers

Powerful litigation tool

Creates good image for company

How do I get a Patent or Utility Model

Before applying

Conduct patent search to assess whether it is worth proceeding – trade secret option?

Decide on coverage desired, national, regional, international

Apply to appropriate Patent Office, Kyrgyzpatent or EAPO

Application must describe the invention in sufficient detail for someone to be able to carry it out – but how much detail?

Application must includes claims defining the scope of protection sought

Both these well be tested during process and decision to grant made

Patenting Abroad – 1

Where should you protect invention?

Wherever you wish to prevent a competitor stealing your market

Where the invention could be commercialized

The main markets for similar products

Where a cost/benefit analysis indicates expenditure is justified

Location of main competitors

Where could the product be manufactured

Ease of enforcement in country

Patenting Abroad - 2Use Eurasian System for Turkmenistan, Belarus, Tajikistan, Russian Federation, Kazakhstan, Azerbaijan, Kyrgyz Republic, Armenia,

Consider using PCT

Gives time to assess context of invention

Opens way for multinational protection following single international search and examination

Leveraging Commercial ValueThe Patent by itself does not provide income

It must be a commercial success

Therefore it must be successfully exploited using a sound marketing plan

Consider combining with other IP – design, trademark, copyright

Main options

Produce the product or work the process yourself and market yourself

Sell the patent to someone who is capable of marketing the product/process

Give others a licence to produce the product or carry out the process

Find a partner for a joint venture

Someone who complements what you have

EnforcementThe patent owner is responsible for enforcement

But may be transferred as part of licence agreement

Can be expensive

Take professional advice

Can be destructive

Take steps carefully

Only go to full litigation in court if necessary

Send initial “cease and desist” letter

Apply for “interim injunction”

Consider import injunction

Consider negotiating license agreement

Consider Alternative Dispute Resolution

Some References

“Inventing the Future; A Guide to Patents for SMEs ” http://www.wipo.int/export/sites/www/freepublications/en/sme/917/wipo_pub_917.pdf

“Protecting your invention abroad” http://www.wipo.int/pct/en/faqs/faqs.html

WIPO Arbitration Centre arbiter.wipo.int/center/index.html.