“Inventing the Future” – The Role of Utility Models and Patents in Leveraging Technical Innovation in the Market Place

Kingston, JamaicaJun 4 - 6, 2012

Paul Regis

Head, Caribbean Unit, Bureau for Latin America and the Caribbean

Protection of Inventions Utility Models and Patents

• Invention referred to as a solution to a technical problem

• Two forms of IP protection for inventions: utility model and patent

• Both offer protection to the invention

• Territorial in nature

NEED / TECHNICAL PROBLEM

• MAY BE PATENTABLE• INCREMENTAL INNOVATION• INNOVATIVE STEP• UTILITY MODEL APPLICATION

• PATENTABLE INVENTIONS• INVENTIVE STEP•PATENT APPLICATIONS

SOLUTION

RESEARCH

Utility ModelWhat is a Utility Model?

An exclusive right granted to persons, who have developed

• a new advancement• Innovation of an incremental character (minor improvement

to existing products)

Allows them to exclude others from (depending on national laws)

• making, selling or using the invention

Can be obtained for certain fields of technology and only for products but not for processes (depending on national laws)Term of protection usually 7 to 10 years (depending on national laws)

PATENT

What is a patent?An exclusive right granted to persons, who have developed

• a new advancement• non-obvious and • Industrially applicable

allows them to exclude others from • making, selling or using the invention

Term of protection 20 years from dated of filing

Non obvious/Inventive step

Product/Process Patent

Industrially applicable

Novelty

Patentability Criteria

A patent is

• A contract of exclusivity in return for disclosing the invention, between the patentee and the government for a fixed period of time (20 years)

• Thereafter the invention comes into public domain

• Gives the patent holder a right to prevent others from using his/her invention without authorization

• Gives patentee a passive right to exclusively sell, use, manufacture his patented technology.

What is a Patent?

NON-PATENTABLE INVENTIONS

Commercial use contrary to law, morality, health or environment.

Mere discovery of living or non-living substance occurring in nature.

Diagnostic Therapeutic treatment of animals / Plants excluded from the treatment clause.

Plants and animals in whole or any part thereof but other than micro-organisms...

Patent Application - Specification

- Field of the invention- Background which will include prior art - Drawbacks of the prior art, if any- The object of the invention- The Invention- Detailed description of the invention (with

reference to drawings, if any).- The working of the invention- Drawings, if any- Claims

• Abstract

Claims - its importance

Define scope of the invention

For infringement another invention must contain all elements of claim. If one is missing there is no infringement

Leave out all unnecessary limitations to a claim

The goal of claims drafting is to write a claim of the broadest scope possible in light of the prior art

Additionally dependent claims of varying could be drafted

So to obtain the broadest claim possible, try to claim the fewest elements possible while getting over the prior art

Inventing the Future Why Patents ?

Necessity is the mother of invention

Traditional vision – needs based

New vision – create needs

Traditional vision

Carry out market survey

Research and Development

Need based

_________New Product/Process

Traditional vision

New Vision

Create need

Research and Development

_________New Product/Process

New Vision

Why Patents?

1. Competitive edge, market power and earning more money

2. Add new revenue stream- licensing a patent- different product- different market- different country

Why Patents ?

3. Raise funds and attract potential investorsa) patents may be bought, sold or licensedb) collateral for bank loansc) attract investors

- venture capitalists- investment bankers- financial analysts- others

4.Bargaining chip for securing ‘Freedom to Operate’

- Patent right is a negative right- Cross licensing

Why Patents ?

5. Selling the InventionPatents, Utility Models, etc. are tradable assets

Value add for business if technology is protected by patents

Why Patents

6. Strategic Partnership, Mergers and Acquisitions, IPO, and Higher Sales Price- Entering new markets with strategic partnerships or in mergers and acquisitions- Start up company listed on stock exchange- Higher sales price of an established company

Why Patents ?

Leveraging Technological Innovation in the Market place

R & D underpins scientific and technological innovation of countries

Patents and utility models are strategic tools in innovation process

Governments play key role in driving science and innovation

Creating the innovative culture: investment in research, education

Forging alliances and partnerships with patent and utility model holders are crucial to the meeting market offerings and anticipated market requirements

Thank You!