Welcome to the course ETIA10,

Patent and Intellectual Property Rights

Lecturer: Fredrik Edman

Introduction to Patents cont.

Patent via the Patent Cooperation Treaty

The Patent Cooperation Treaty (PCT) is an international patent law treaty, concluded in 1970.

It provides a unified procedure for filing patent applications to protect inventions in each of its contracting states. A patent application filed under the PCT is called an international application, or PCT application.

A majority of the world's countries are signatories to the PCT, including all of the major industrialised countries (with a few exceptions, including for example Argentina and Taiwan).

As of January1, 2014, there were 148 contracting states to the PCT.

Recent Accessions and RatificationsIslamic Republic of Iran, July 4, 2013Saudi Arabia, May 3, 2013

Repetition

The PCT Application Process

The international patent application process has two phases:

The first phase is the international phase in which patent protection is pending under a single patent application filed with the patent office of a contracting state of the PCT.

The second phase is the national and regional phase which follows the international phase in which rights are continued by filing necessary documents with the patent offices of separate contracting states of the PCT.

Repetition

First fiing/priority date

PCT filing at a Receiving Office (RO)

Int. Search Report (ISR) +Written Opinion (WO)

from ISA

Publication ofISR + Application

File demand?

Internation Preliminary Report on patentability

(IPRP) Ch. I=

ISR + WO-ISA

Written Opinion from IPEA (or ISA)

YesNo

Internation Preliminary Report on patentability

(IPRP) Ch. II

National phase

Chapter I Chapter II

12 months

16 months

18 months

19 months

0 months

19 months

20, 30 months 30 months

22-25 months

Euro-PCT 31 months31 months

28 months

PCT application process

The time limits shown in the figure may not always be fixed.

Repetition

International Patent Law (cont.)

Let’s take a look at Asia

Source: EPO

Patents in AsiaDid you know that

» …. more than 50% of the patent applications published worldwide are written in Japanese, Chinese or Korean?

» … China, Japan and Korea are among the top five patenting nations in the world?

Overview: Chinese Patent Law

Source: EPO

What types of industrial property rights exist in China?

» In China, industrial property rights include invention patents, utility model patents, design patents and trade marks.

Chinese Patent System

» The term for a "patent for invention" is 20 years from the filing date in China.

» The terms for a "patent for utility model“ and patent for design are 10 years from the filing date in China.

» Patents for invention are substantively examined (novelty, inventive step and industrial applicability).

» Patents for utility model do not undergo a substantive examination but only a preliminary examination (compliance with formal requirements). However, in invalidation procedures the requirements of novelty, inventive step and industrial applicability will be determined.

What inventions cannot be patented in China?According to Article 5 and Article 25 of the Chinese

Patent Law, the following items are unpatentable in China:

» any invention-creation that is contrary to the law or social morality or that is detrimental to public interest

» invention-creations relying on genetic resources of which the acquisition or use is not consistent with the provisions of the laws and regulations

» scientific discoveries

» rules and methods for mental activities

» methods for the diagnosis or treatment of diseases

» animal and plant varieties

» substances obtained by means of nuclear transformation

» two-dimensional designs of images or colours or combinations of the two that mainly serve as indicators

Can computer software be patented in China?

»Computer programs as such cannot be patented, but they may be protected under the Regulations on Computers Software Protection, formulated in accordance with the Copyright Law.

» An invention containing a computer program may be patentable if the combination of software and hardware as a whole can actually improve the prior art, bring about technical results and constitute a complete technical solution.

» Very strict regulations regarding “software-like” inventions.

What about business methods?

» Business methods are not patentable in China.

»However, even though software per se and “mental schemes and business plans” are not patentable in China, the law does in fact allow some types of software and business processes to be patented. Software or business methods which result in some type of technical advantage or solution, they may be patentable, so long as the claims and description are crafted in the right manner.

As a foreign applicant, do I need to appoint a professional representative in China?

» If a foreign applicant, enterprise or organisation does not have a residential or business address in China, they must appoint a legally established patent agent to represent them in the patent prosecution procedure in China.

What language must I use for a patent application in China?

» Any document submitted under the Chinese Patent Law and its Implementing Regulations must be in Chinese.

» Patent Cooperation Treaty (PCT) applications can be filed in either Chinese or English. However, you must submit a Chinese translation of the application within 30 months of the priority date (extendible to 32 months subject to payment of a surcharge).

What about priority and provisional applications?

» The priority term is 12 months from the earliest claimed priority. Multiple priorities are possible. Domestic priorities can be claimed within 12 months from the date of first filing in China. If a later application claiming domestic priority is filed, the earlier application is deemed to have been withdrawn.

» It is not possible at present to file a provisional application in order to get an early filing date in China.

How can I challenge a granted patent in China?

» The opposition system was abolished in China in 2001. The only way to a challenge a granted patent is through the invalidation procedure. Requests for invalidation can be filed at any time, even after the patent has expired.

Patent Procedure in China

Overview: Japanese Patent Law

Source: EPO

What types of industrial property rights exist in Japan?

» Japan has patents, utility models, designs and trade marks. Applications for all of these can be filed with the Japan Patent Office (JPO).

Japanese Patent System

» The term for a "patent for invention" is 20 years from the filing date in Japan (1995).

» The terms for a "patent for utility model“ and patent for design are 10 years from the filing date in Japan (2005).

» Japanese patents are subject to a prior art search and a substantive examination for novelty, inventive step and industrial applicability.

» Utility models undergo a preliminary examination (compliance with formal requirements) only.

What inventions cannot be patented in Japan?

According to the Japan Patent Act and the JPO's Examination Guidelines for Patents, the following items are not patentable in Japan:

» any invention that is liable to injure public order, morality or public health

» laws of nature

» scientific discoveries

» inventions not using the laws of nature (e.g. economic laws, mathematical methods etc.)

» inventions contrary to a law of nature

» arbitrary arrangements (e.g. rules for playing a game)

» mental activities

» personal skills

» mere presentation of information

» aesthetic effects (e.g. paintings, carvings)

» methods for medical treatment of the human body

Can computer software be patented in Japan?

» Since the 2002 amendment to Article 2(3) of the Japan Patent Act, computer programms are deemed to be product inventions.

»Business methods could be patentable, if they have a technical character.

What about business methods?

As a foreign applicant, do I need to appoint a professional representative in Japan?

» If you do not have a residential or business address in Japan, you must appoint a professional representative registered before the patent office to represent you.

What language must I use for a patent application in Japan?

» The option to file patent applications in English has been available to applicants since 1 July 1995. A Japanese translation must be filed with the Japan Patent Office (JPO) within 14 months (prior to April 2007: two months) of the date of filing.

What about priority and provisional applications?

» The priority period is 12 months from the earliest priority claimed, as stipulated in the Paris Convention. Japan has been a member of the Paris Convention since 15 July 1899.

» It is not (yet) possible to file provisional specifications in Japan. This means that you will need to file the complete specification to get a filing date.

How can I challenge a granted patent in Japan?

» The opposition system was abolished on 01 January 2004 and invalidation is thus now the only means of challenging a granted patent in Japan. Invalidation procedures can be requested by anyone at any time (even after expiration of the patent term).

Patent Procedure in Japan

Brief look at India, Korea, and Chinese Taipei

Source: EPO

A brief look atIndia, Korea, and Chinese Taipei (Taiwan)

  India Korea Chinese Taipei (Taiwan)

Utility model patents Patent of addition* Yes Yes

Protection patent /utility model

20/- 20/10 20/10

Provisional application Yes No No

Computer software No Yes YesBusiness methods      Member PCT Yes Yes No

Prof. representative? No, but address in India Yes Yes

Filing language Hindi and EnglishKorean or English but must

translate into Korean

Arabic, English, French, German, Japanese, Korean,

Portuguese, Russian and Spanish but must translate into

Chinese

Priority? Yes, 12m Yes, 12m Yes, 12m

3d party observations? Yes Yes Yes

Publication 18m 18m 18m

Challenge granted patent?Post-grant opposition within 12m

Invalidation procedure at any time (with integrated post-grant opposition)

Invalidation procedure at any time

* Patents of addition relate to improvements in or modifications to patented inventions. A patent of addition cannot be granted before the main patent is granted. If the main patent is revoked, the patentee may request the conversion of the patent of addition into an independent patent. Patents of addition have the same term as patents for the main invention.

Brief look at Patent Statistics

Why Patent Statistics?

» Patent statistics and indicators are used to map aspects of the innovative performance and technological progress of countries, regions, companies or certain specific domains and technology fields.

» The use of patent statistics for monitoring developments in the field of science and technology has been expanding rapidly over the recent past. 

Top Applicant (EPO)

Shares in Patent Applications (EPO)

Top Technical Fields (EPO)

All Technical Fields

Inventivness

Filing Numbers (EPO)

Filing Figures Asia

Top Applicatns (EPO) – Asian highlight

Patent Applications (WIPO)

Published Applications by Field (WIPO)

A Gold Mine of Information

» Information on both on a global-, regional- and micro level.

» Build business intelligence about trends, companies, countries, etc.

The Anatomy of a Patent

What does a patent/patent application look like?

The patented invention or the patent application is disclosed in a patent document that is made available to the public.

The Patent Front Page

Since the late 1970s a modern patent's front page has acted as a kind of title page and table of contents to a patent.

The front page of a patent shows important bibliographic data.

The Patent Front Page (cont.)

The bibliographic data is arranged using INID codes.

The Patent Front Page (cont.)

Most patent specifications will have:

» Document identification number and document code.

» Domestic filing data

» Priority data.

» Technical and classification data with the number of the edition used, any domestic classification used, title, search report, and abstract written by the applicant.

» Identification of the parties - applicant, inventor, patent agent.

» Designated countries - country codes for the countries where protection is requested.

» Drawing - a representative drawing is often given on the published application.

However, older patents normally go straight in to the description after a few details.

What does the rest of the patent look like?

» Abstract

– Around 150 words as a search aid for other patent applications

» Description

– Summary of prior art (i.e. the technology known to exist)

– The problem that the invention is supposed to solve

– An explanation and at least one way of carrying out the invention

» Claims

– Define the extent of patent protection

» Drawings

– Illustrate the claims and description

What does the rest of the patent look like?

• Title

• Technical field/ field of invention

• Background

• Summary of the invention

• Brief description of the drawings

• Detailed description of preferred embodiments

• Claims

• Abstract

• Drawings

Most patents and patent applications will have

The Patent Document

Title: Often a vague description of the invention.

Technical field: Broad description of which field the invention belongs to.

Background: Defines the state of art and presents the problem with the same.

Summary: Often the claims rewritten in plain text.

The Patent Document (cont.)

Description of the drawings: Briefly describing the drawings.

Detailed description: The detailed description of the invention and all of its embodiments.

The Patent Document (cont.)

Claims: Defines the scope of protection. The most important part of the patent document.

The Patent Document (cont.)

Drawings: One or several drawings depicting the different embodiments of the invention.

Abstract: Usually placed in on the first page with the bibliographic data. Consists of around 150 words as a search aid for other patent applications.

Understanding Patent Claimsand how they are processed during the application phase.

Understanding patent claims

A case study: The Toy ball

The invention

A ball that is fun to use, easy to catch and looks nice.

How can you protect it from imitation?

• "Fun to use" → cannot be protected• "Looks nice" → registered design• "Easy to catch" = technical function

→ patent

How to patent this invention: claim it!

Making a ball "easy to catch" is a technical problem. Problems cannot be patented – but specific solutions can! What is the technical feature that makes the ball easy to catch?

Patent Claim: "A ball that is easy to catch."

Patent Claim: "A ball comprising a core region and plural elastomeric filaments radiating from the core region."

You don’t want anyone circumventing the patent by replacing the ball shape with something else!

Patent Claim: "An amusement device comprising a core region and plural elastomeric filaments radiating from the core region."

A prior art search will show whether the invention – as claimed – is actually new.

Result of the prior art search

Your patent attorney found US 3,759,518, "Foot impellent toy",

which discloses a similar invention.

"… said toy having

a plurality of

flexible strands …"

Comparison of the two inventions

Your inventionas claimed

US 3759518

"An amusement device comprising a core region and plural elastomeric filaments radiating from the core region."

"A toy of a disc-like body … … including … a plurality of flexible strands radiating outwardly from said … center … having sufficient inherent rigidity to retain the pattern of a circular plane."

"… radiating in plural angularly offset planes from the core region."

Not new

• New!• Inventive step

(modification yields new function of making it easier to catch)!

Claim to protect the invention

Claim to be filed:

"An amusement device comprising a core region

and plural elastomeric filaments radiating in plural

angularly offset planes from the core region."

Patent claims

Inventor wants broadest possible protection

Legal requirementslimit the scope of the patent

Independent claim ("a wheel")

Prior art identified

by patent examiner

or competitor

"comprising an annular winding of fibre in a groove"

Dependent claim

Claims:

1. A wheel

2. The device of claim 1,

comprising an annular

winding of fibre in

a groove

Application filed with the EPO

Claim 2: "A device according to claim 1, characterised in that it has a substantially spherical configuration."

Claim 3: "A device according to claim 1, characterised in that the outer ends of at least some of the filaments include enlargements."

The EPO will perform its own prior art search and then consider whether the invention AS CLAIMED is new and non-obvious.

Claim 1: "An amusement device comprising a core region and plural elastomeric filaments radiating in plural angularly offset planes from the core region."

Additional prior art found by the EPO

DE 3121758:

"Self-adhesive mould elements that are equipped with spike-

like rods or bristles ... characterised by rods that are attached

on a core and that are made of an elastomeric material ..."

"Self-adhesive mould elements"

The opinion of the EPO

Your claim:

"An amusement device comprising a

core region and plural elastomeric

filaments radiating in plural angularly

offset planes from the core region."

This is already shown and claimed in

DE 3121758

EPO response:

Please amend your claims if you want your invention protected!

Spike-like rods attached on

a core, made of an

elastomeric material ...

DE 3121758

Further analysis

Did the EPO overlook any important features of the invention?

Applicant's reply:

Amendments to the application, explanation of the relationship between the invention and the prior art

How can the claims be amended to reflect the invention in such a way that it is new (considering all the prior art)?

Easier to catch

Flies less far + doesn’t break things

Floppy filaments

Plurality of angular planes

Core + flexible filaments

Comparison of the invention with the prior art

Technical features of the inventionUS 3759518 DE 31211758

Advantages/technical result(floating movement) (self-adhesive)

No

No

No No

No

No

Result of the analysis

Although the individual elements of the invention are known, the combination is not and it produces a new, unique benefit.

Given our knowledge of the prior art, it is not obvious to combine the elements to achieve these new effects → the inventive step requirement is fulfilled.

The claim must be amended to distinguish it from DE 31211758:

"An amusement device comprising a core region and plural

elongate, floppy, elastomeric filaments, each having cross-

sectional dimensions which are significantly smaller than its

length, radiating in plural angularly offset planes from the core

region."

Supports inventive step:differenttechnical result

The original description filed with the EPO supports the amendments to the claims

Differentto patentDE312…

Differentto patentUS375…

This invention pertains to an amusement device, and more particularly, to a throwing/catching device which is especially easy to catch.

One of the problems with many conventional throwing/catching devices is that … they ... tend to bounce and … sometimes hurt to catch.

A general object of the present invention … avoiding any tendency to bounce … grasping … prevents … throwing or hitting it very far … break anything on contact.

According to a preferred embodiment of the invention, …

Detailed descriptionDevice 10 is formed with a large plurality of elongate, floppy, elastomeric filaments 12, each of which, as is clearly evident in Fig. 1, has cross-sectional dimensions which are extremely small in relation to the length of the filament. As will be more fully explained shortly, these filaments are joined in a central core region in such a manner that they radiate outwardly in a fairly uniform, dense and bushy fashion, in multiple angularly offset planes, to form a substantially spherical configuration.

The patent is finally granted

Response from EPO: granted!

INID Codes

INID codes

» The World Intellectual Property Organization (WIPO) is responsible for standards within the intellectual property area.

» INID codes help to harmonise the usage and appearance of patent specifications and related material, and provide a means of conveying information without using foreign languages or scripts.

» Full list and explanation of INID codes can be found at WIPO’s homepage under Standard ST.9.

http://www.wipo.int/standards/en/part_03_standards.html

INID codes• INID codes (Internationally agreed numbers for the identification of

bibliographic data) identifies bibliographic elements in the patents

specification and are usually shown in parentheses or circles.

• The title page use codes to indicate either different bibliographical elements (INID codes) or the different countries or systems mentioned (country codes).

• The exact usage of INID codes does vary, and the codes will not always be in the same order as given below, or in numerical order.

INID codes (cont.)

Example: ENID Codes

(10) Publication number

(12) Kind of the publication

(19) Country code or other identification, of the country of publication

(21) Number given to the application

(22) Filing date of the application

(51) International Patent Classification

(71) Name of applicant

(72) Name of inventor

(84) Designated contracting states under regional patent conventions

INID codes (cont.)

Example: ENID Codes

(11) Patent number

(12) Kind of the publication

(19) Country code or other identification, of the country of publication

(21) Number given to the application

(22) Filing date of the application

(51) International Patent Classification

(71) Name of applicant

(72) Name of inventor

…

Patent Classification Systems

Patent Classification Systems (cont.)

(51) International Patent Classification

(52) US Patent Classification

Patent Classification Systems (cont.)

» Patent classification schemes are used to organise and index the technical content of patent specifications.

» Patent classification schemes are constructed and maintained by and for patent examiners and their primary purpose is to help the examiners in their work.

» As part of the examination process an examiner will assign patent classification codes to the specification, thus the classified collection of patent documents is growing constantly.

» Using patent classification as part of a search to identify patents in a particular field can help the non-expert searcher to focus and refine his search and produce a useful set of references.

Patent Classification System (cont.)

There are several different classification systems

– Cooperative Patent Classification (CPC)

– The International Patent Classification (IPC)

– ECLA

– US patent classification (USPC)

– British classification

– ………

International Patent Classification

The International Patent Classification (IPC) is currently used by over 70 patent authorities to classify and index the subject matter of published patent specifications.

The IPC is maintained and is administered by the WIPO.

The IPC divides patentable technology into 8 key areas:

A: Human Necessities B: Performing Operations, Transporting C: Chemistry, Metallurgy D: Textiles, Paper E: Fixed Constructions F: Mechanical Engineering, Lighting, Heating, Weapons G: Physics H: Electricity

International Patent Classification (cont.)

» These areas of technology is divided and subdivided to a detailed level.

» The IPC codes, which act as an index to the subject matter of the patent, are printed on the front page of a patent specification and are always identified by the INID code 51.

» There is usually a superscript numeral indicating which edition of the IPC has been used to classify the document. e.g.

Introduction to the Cooperative Patent Classification (CPC)

The EPO and USPTO bi-lateral classification system

CPC

Ability to search a unified classification system (Continued)

• More refined breakdowns in many art areas yield more focused results

• 155,000 breakdowns in USPC vs. 200,000 breakdowns in CPC, initially

Collaborative maintenance of CPC Classification• EPO and USPTO will jointly undertake revision (reclassification)

projects

• EPO and USPTO will work together with other counterparts

• More frequent and timely updates

• Greater examiner involvement in revision projects

CPC compared to other systems

200,000180,000 145,00069,000 150,000 Number of

Subdivisions

IPC Guide +

Art Specific Rules

IPC Guide +

Deep Indexing with F-Terms

IPC Guide +

Art Specific RulesIPC Guide

U.S. Classification Guidelines

Rules for classification

Invention Information

Invention Information

Invention Information

Invention Information

2 Standards for

Classification*Classification

CPC is an extension of IPC

FI is an extension of IPC

ECLA is an extension of IPC

----NoneRelationship to IPC

USPTO/EPOJapan Patent OfficeEPO, member statesIPC Union Members

(61)USPTO

Documents classified into system by

CPCFIECLAIPCUSPC

CPC Sections

Format of CPC symbols

A23G 9/0202

Complete group symbol; consists of different components

A Section (A, B, ... H)A23 Class (any 2 digits)A23G Subclass (any letter)A23G9/00 Main Group A23G 9/0202 Subgroup

Note:• Documents are classified with main group and/or

subgroup symbols

Example of a CPC classification symbol

C

Section

07

Class

D

Subclass

203/00

or

203/0214

Group

Main Group (always /00)

Subgroup

C07D203/0214

Example of a CPC classification search

Example of a CPC classification search

Patent Searching

Why do a patent search??

Patents are a unique source of technical information!

Patents anticipate technical literature and commercial use:

Invention Patent Elsewhere Delay

Punched cards 1889 191425

Television 1923 1928 5

Jet engine 1936 194610

Cast iron 1939 1947 8

Much information only available in patents

Published elsewhere

(IEEE, Internet etc.)

Published in patents

80% found only in patents!

25% of all R&D efforts ...

… are wasted each year on inventions that have already been

invented.

Don't start your R&D until you have done a search!

Why do a patent search?? (cont.)

GB-A-2365393

US-A-1833019Example

Solutions found in patent documents

10%Protected

90%Free to use

You can find many great solutions for free!

Why Conduct a Patent Search? Patent searches are conducted for many purposes. » Determine if a particular invention is unique » Identify potential features for new product » Identify other possible uses for a new product » Determine independent inventors or companies currently or historically obtaining

patents in a particular area » Find the patent(s) for a particular invention » Determine the state of the art in a particular area » Identify patents in a specific field for generating citation maps (a tool in

determining the relative importance/value of a specific invention » Study the rate of innovation in a particular area » Determine the patent portfolio of a specific company » Determine if an invention infringes upon the intellectual property rights of others » Learn about an industry or a specific company » Search for potential solutions to design or safety problems » Identify potential licensees » To identify additional reference materials (journal articles, books, product

literature) of use to those working in this area. Patents often list printed reference materials.

» Identify inventors working in a certain field. » …

Who should Read a Patent

» Students» Professors» Researchers» Engineers» Scientists» Professionals» Managers» Economists

Everybody ...

Where do I find Patents??

On the Internet!

Patent databases

Espacenet – the best and esiest-to-use patent database.http://www.espacenet.com

US patent database – good supplement to Espacenethttp://www.uspto.gov/web/offices/ac/ido/ptdl/step7.htm

Googles own patent database – good suplement to abovehttp://www.google.com/patents

English synonym dictionaryhttp://dico.isc.cnrs.fr/dico/en/search

English synonym dictionaryhttp://thesaurus.reference.com/

Patent database - good suplement to abovehttp://www.freepatentsonline.com/

Searching for patents can be easy ...

Free worldwide patent information is available at http://ep.espacenet.com

… but some basic knowledge is needed!

Beware of "naïve" keyword searches such as ...

"Energy storing means"

Spring

Patent jargon

writing instrument = pen

a plurality of balls = ball bearing

electrical power source

for electronic circuits= battery

Patent jargon in general technology

elongate member = pipe, riser, cable or optical fibre

wing = door or window

Optional

fastening means = nail, screw or rivet, etc.

Patent jargon in chemistry/pharmaceuticals

A composition comprising water and glycerol

"comprising" = further ingredients may also be present

"containing" = further ingredients may also be present

"consisting of" = only the ingredients listed are present

Optional

Patent jargon in chemistry» A composition comprising A, B and C

= a mixture of at least A, B and C, and possibly other components

Example: A composition comprising a solution of lactic acid in alcohol/water

→ Wine!

» A composition consisting of A, B and C

= a mixture in which only A, B and C are present

Example: A composition consisting of a solution of lactic acid in alcohol/water

→ Wine is now excluded, since it comprises many more products than just lactic acid, alcohol and water.

» A composition consisting essentially of A, B, and C

= a mixture of A, B and C which may include further components provided they

do not negatively affect the effect of the invention

Example: A composition consisting essentially of a solution of lactic acid

in alcohol/water

→ Wine might be included if the other components in wine do not prevent the effect of the invention being obtained.

Optional

Patent Strategy

Patent Quantity vs. Quality

Source: www.taeus.com

Determining which patents in your portfolio are important inventions and which are supporting patents or routine solutions is key to strengthening your litigation position, and ensuring your company’s resilience against harmful litigation. While citation analysis and analytics can be good indicators of a patent’s strength, the only true assessment of a patent’s overall value comes from pure human intelligence.

Patent Strategy Considerations

»What are the company’s goals? (short & longterm)

» Company’s profile

» The company’s resources to be devoted to patent protection

»Customer trends

» Economical trends (global, regional and local)

»What is your competitors doing?

Each Contries Patent System

» The “adequacy” of the patent and legal systems including:

• considerations relating to enforcing the patent right, including costs, timing, immediate remedies, long-term remedies, availability/size of damage awards, etc.

• the current and expected future state of the patent law relevant to enforcement of the patent

Procurement of Patent» Costs and relative ease/difficulty of filing and prosecution

» Availability of delayed examination and accelerated examination

» Length of examination period

» Grace periods following public disclosure v. absolute novelty

» Quality of examination

» Patentable and non-patentable subject matter:

• Pharmaceuticals, methods of medical treatment, etc.

• Cloned genes, transgenics

• Software

• Business methods

Enforcement of Patent» Border Protection (customs?)

» Available remedies for infringement under local law:

• Preliminary/permanent injunctions, seizure actions, border actions, availability of and amounts of/limits on damage awards, criminal/civil penalties, etc.

» System(s) for dispute resolution

• Civil courts, patent courts, patent office proceedings, criminal courts, separate validity and infringement proceedings, mediation, arbitration, etc.

» How long for resolution? How expensive?

» Availability of and rules of discovery

» Technical competence of courts

» Historical level and direction of any court bias

» Political/judicial climate:

• neutral or pro- versus anti- patent

• neutral or pro- versus anti- foreign patentee

Misc.» Others types of protection (data protection -- clinical trial data for

pharma)

» Availability of patent term extensions

» Ability to get acceptance by conforming claims to those granted in another country

» What do my investors/shareholders want?

» Useful for licensing purposes?

» Are there compulsory licenses?

» What will the country/market look like in 5, 10, 15 years

» Return on Investment

General Questions

»Where and how big are my markets for the invention?

»Who is the customer?

»Who is my competition?

»Where are my business partners located?

»Where will the product be manufactured?

»Where will product be used?

»Where would my competition manufacture its product?

End of Lectures 7 & 8