IP Basics - Patents · IP Basics - Patents Prof. Anselm Kamperman Sanders PhD (Lond.) ... to which...

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IP Basics - Patents

Prof. Anselm Kamperman Sanders PhD (Lond.)

[email protected]

Institute for Globalisation andInternational Regulation/IGIRIntellectual Property Law and Knowledge Management/IPKM

Overview of Intellectual PropertyLegal right What for? How?

Copyright Original creative or artistic forms

Trade marksDistinctive

identification of products or services

Use and/orregistration

Patents New inventions Application and examination

Exists automatically

Registered designs Registration

Trade secrets

External appearance

Valuable information not known to the public

Reasonable efforts to keep secret


Source: EUIPO-EPO Teaching Kit

mailto:[email protected]

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Intellectual Property Law• Create a market for technology & ensure

information is accurate- Otherwise a public good- Competitive markets:- supply/demand/price/information

- Functions:- Incentivise innovation, return on investment, transactional

value, collateral for funding and investment


IP Rights and their interfaceInstitute for Globalisation andInternational Regulation/IGIRIntellectual Property Law and Knowledge Management/IPKM

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Paris Convention 1883• Concluded in the aftermath of

the “Great Exhibitions” and the need to preserve novelty- London 1851, 1862- Paris 1855, 1857- Vienna 1873

• Three basic principles- National Treatment- Priority- Independence of Rights


IP and Sustainable Development• Global IP policy should address big issues …. but is increasingly

unable to;• Political international and domestic realities make IP policy

making increasingly difficult;• Transparency and IP awareness is key

- Training, quality, transparency- Positive, rather than negative media attention- IP in an open society

- Patent bargain – disclosure and transfer- Copyright – dissemination, access and transformative uses- Open innovation and standardization


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Some IP found in a mobile phoneTrade marks:• Made by "Apple"• Product "iPhone 6s"• Software "iOS9"

Patents:• User interfacing • Data-processing methods• Semiconductor circuits• Chemical compounds• …

Copyrights:• Software code• Instruction manual• Ringtone• …

Trade secrets:?

Designs (some of them registered):• Form of overall phone• Arrangement of buttons in oval shape• Three-dimensional wave form of buttons• …

© Nokia


Importance of intellectual property• Essential business asset in the knowledge economy- Swedish steel-maker Sandvik: 20% of its value is from IP!

• Increases funding for innovative projects- Without IP many innovative projects would not be profitable because anyone who wanted could

simply copy the results

• Protects small innovative firms- Dolby® Laboratories- W.L. Gore & Associates (Gore-Tex®)

• Needed to release IP into the public domain undercontrolled conditions:- Linux (GPL): improvements must be free too!


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Examples of valuable intellectual property

Compact camera

E.L. James

DNA copying process

Coca-Cola®

Samsung Galaxy S6 Edge

Medicines


Patents are all around us

Major discovery


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The first account of a "patent system"

In the ancient Greek city of Sybaris (destroyed in 510 BC), leaders decreed:

"If a cook invents a delicious new dish, no other cook is to be permitted to prepare that dish for one year.

During this time, only the inventor shall reap the commercial profits from his dish. This will motivate others to work hard and compete in such inventions."


The patent systemSenate of Venice, 1474 :“Any person in this city who makes any new and ingenious contrivance, not made heretofore in our dominion, shall, as soon as it is perfected so that it can be used and exercised, give notice of the same to our State Judicial Office, it being forbidden up to 10 years for any other person in any territory of ours to make a contrivance in the form and resemblance thereof.”

Today:New to the world (Europe); up to 20 years of protection

Incentive to innovate (grant protection)Incentive to share knowledge (publish the invention's details)


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The "social contract" implicit in the patent system

Revealinvention

Get exclusivity

… so that others can learn from it and improve upon it!


IP5 Offices – Patent filings – 2015 Institute for Globalisation andInternational Regulation/IGIRIntellectual Property Law and Knowledge Management/IPKM

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IP5 Offices – Patents granted – 2015Institute for Globalisation andInternational Regulation/IGIRIntellectual Property Law and Knowledge Management/IPKM

IP5 Offices – Patents maintainedInstitute for Globalisation andInternational Regulation/IGIRIntellectual Property Law and Knowledge Management/IPKM

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Patentability

NewInvention

-Not

excludedsubjectmatter

Part of state of the art?

NotPatentable

Could public deduce how invention works?

Hasinformation

been disclosed?

May be Patentable

May be Patentable

Not Patentable

No

No

Yes

No Yes

Yes


Patentable Inventions• Article 52 - Patentable Inventions

- (1) European patents shall be granted for any inventions, in all fields of technology, provided that they are new, involve an inventive step and are susceptible of industrial application.

- (2) The following in particular shall not be regarded as inventions within the meaning of paragraph 1:- (a) discoveries, scientific theories and mathematical methods;- (b) aesthetic creations;- (c) schemes, rules and methods for performing mental acts, playing games or doing business, and

programs for computers;- (d) presentations of information.

- (3) shall exclude the patentability of the subject-matter or activities referred to therein only to the extent to which a European patent application or European patent relates to such subject-matter or activities as such.

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Computer programs & Business Methods• G 0003/08-Programs for computers of 12.5.2010

- T 1173/97-IBM: further technical effect (which goes beyond the "normal" physical

interactions between program (software) and computer (hardware)

- T 424/03-Microsoft: a method acquires a technical character simply by involving technical

means

• T 258/03-Hitachi: I. A method involving technical means is an invention within the meaning of Article 52(1) EPC

(as distinguished from decision T 931/95-Controlling pension benefits system/PBS PARTNERSHIP)

II. Method steps consisting of modifications to a business scheme and aimed at circumventing

a technical problem rather than solving it by technical means cannot contribute to the

technical character of the subject-matter claimed

Exceptions to patentability• Article 53 EPC - European patents shall not be granted in respect of:

- (a) inventions the commercial exploitation of which would be contrary to "ordre public" or morality; such exploitation shall not be deemed to be so contrary merely because it is prohibited by law or regulation in some or all of the Contracting States;

- (b) plant or animal varieties or essentially biological processes for the production of plants or animals; this provision shall not apply to microbiological processes or the products thereof;

- (c) methods for treatment of the human or animal body by surgery or therapy and diagnostic methods practised on the human or animal body; this provision shall not apply to products, in particular substances or compositions, for use in any of these methods.

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Ordre Public or morality• T315/03-Harvard Oncomouse (transgenic non-human mammals containing

an oncogene and methods of producing the same)- Filed in June 1985, refused by examining division in 1989; Appeal to BoA EPO, patent granted in 1992- Opposition oral proceedings in 2001; Revoked in 2006 for failure to pay fees

• Rule 23d(d) test of weighing the medical benefit to mankind against the suffering to the non-human animal explained; Rule 23d(d) test in addition or alternative to previous T19/90 test (measuring the suffering of the animal against usefulness to mankind); opinion poll survey evidence not persuasive;

• Transgenic non-human animals confirmed as patentable inventions (Article 53(b) on plant and animal varieties not applicable / Decision T19/90 confirmed);

• Relationship of Rules 23b to 23e EPC with Article 53(a) EPC explained; Rules 23b to 23e are particular examples of inventionswhich fail Article 53(a) criteria of an invention the publication or exploitation of which would be contrary to ordre public or morality;

• An attack based on insufficiency of description under Article 83 EPC must be established for it to succeed; not enough to make allegation;

• Exclusions to patentability to be construed narrowly.

Patent scope of protection

Infringement

Keeping

Making

Importing

Using

Producingitems

Disposing

Offering


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Defences to Patent Infringement• Private (non-commercial) use- Individual formulation

• Experimental use- Research exemption- Commercial- Non-commercial

- Clinical trials• Prior use


IP as a complex adaptive system

Bridging the Valley of Death Push or Pull Information to or from the Market

Patent Aggregation in Patent and Competition

Governance of Production and TechnologiesGIs: a spurring or hampering device for innovation in agribusiness?

The Future of Plant Breeding in Patent and Plant Breeders protectionAutomation, Robotics and Big Data in the Biomedical Field

Declaration of Standard-essential Patents

Adjudication, Justice and Enforcement Balancing the Quality of Patents with Effective Enforcement of Invalidity Claims

Innovation and EthicsEnforcement of IPRs and global trade

The Unitary Patent Court

Allocation of Rights, Actors and InstitutionsCopyright in the Digital Economy

Decision Making InstitutionsConstructing Just and Efficient Court Systems

Collecting Management Organizations and Institutional Users

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Thank you for your attention

Redesign yourself as a master of inventions and creativity!Take the advanced masterIP Law and Knowledge Management (LLM/MSc)

www.maastrichtuniversity.nl/ipkm

http://www.facebook.com/ipkm.nl

IGIR_IP


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