Patent protection of inventionsiprod.masfak.ni.ac.rs/.../wp_2_2/Patents_TUS_FDIBA.pdf ·...

530577-TEMPUS-1-2012-1-RS-TEMPUS-JPCR

IMPROVEMENT OF PRODUCT DEVELOPMENT STUDIES IN SERBIA AND BOSNIA AND HERZEGOVINA

web: http://iprod.masfak.ni.ac.rs

Patent protection of inventions

Prof. Dr. – Ing. Stefan Stefanov

Dr. – Ing. Sanel Purgić

Technical University Sofia,

Faculty of German Engineering Education and Industrial Management (FDIBA)

Jahorina, December 5th 2014




Agenda

Intellectual property, patents, inventions → basics

European patents

National level application

Patent strategies

Hints for inventor

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Intellectual property (IP)

Legal right What for? How?

Copyright Original creative or

artistic forms

Trade marks Distinctive identification

of products or services

Use and/or

registration

Registered

designs Registration

Patents New inventions Application and

examination

Exists

automatically

Trade secrets

External appearance

Valuable information not

known to the public

Reasonable efforts

to keep secret

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Source: www.epo.org




Examples of valuable intellectual property

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Harry Potter

EUR 750 Million from ©

DNA copying process Nobel Prize-winning technology Patent sold for EUR 190 million

Kodak had to pay EUR 550 million to Polaroid for having illegally used 11 patented inventions

Apple® iPod® - TRADEMARK, REGISTERED DESIGNS, PATENTS (user interface) More than 100 million units sold

Global Trademark Ranking 2008 Source: Interbrand; Businessweek




Invention

An invention is a solution to a specific technological problem and is a product, a process or an apparatus.

How to turn an invention into a commercial product?

To be patentable, it must be new, industrially applicable and involve an inventive step.

Inventions often fail for reasons that have nothing to do with IP. For example: there may be little advantage in applying for a patent if market demand for your invention is likely to be low, or if its design is impractical, or if it cannot be produced at a realistic price.

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Patent

The word patent originates from the Latin patere, which means "to lay open" (i.e., to make available for public inspection). More directly, it is a shortened version of the term letters patent, which was a royal decree granting exclusive rights to a person, predating the modern patent system.

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Patent definitions

A patent is a set of exclusive rights granted by a sovereign state to an inventor or assignee for a limited period of time in exchange for detailed public disclosure of an invention. (www.wikipedia.org)

Patents protect technical inventions. Patents confer the right to prevent third parties from exploiting an invention for commercial purposes without authorization. (www.epo.org)

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http://www.wikipedia.org/

http://www.epo.org/




History

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."

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The patent system

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Senate 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)




The purpose of patents

Patents enable patent owners to recoup their development costs and gives them time to reap the rewards of their investment.

Effective patent protection encourages further investment in R&D, and is a key requirement for raising venture capital. It fosters technical innovation, which is crucial to competitiveness and overall economic growth.

Over 80 % of the world’s technical knowledge can now be found in patent documents. This inspires further inventions and at the same time prevents the duplication of R&D work.

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Duplication of R&D work

Many researchers, scientists and engineers do not review what has already been invented before starting a new project.

The Austrian Patent Office estimates that in Europe, EUR 60 000 million are wasted each year on inventing what has already been invented.

ProVendis, the technology transfer agency of several German universities, estimates investments in duplicate R&D in Germany to be EUR 12 000 million per year, or 25% of total R&D spending.

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Lessons to be learned

Search the journal literature and patents (and other information sources) before starting any project.

Search again at project milestones - your project goal might have changed and other inventors might have been active too.

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

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Patents and their exploitation

The owner of a patent can exploit the invention himself, or permit someone else to do so.

Individual inventors and small and medium-sized companies often lack the technical and financial means to bring their ideas to market. Nevertheless, they too can derive great benefit from patents.

For example, a patent can strengthen an inventor’s negotiating position, as it gives the option of granting licensees or selling the protective rights altogether.

In granting a license, the patent holder allows the licensee to use the invention in return for some form of financial reward. This may be a one off payment or a royalty on sales of a product incorporating the patented technology.

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What patents do not do

A patent does not confer a right to make use of or exploit an invention. It is a right to prevent others from deriving economic gain from the technology without the owner’s permission. The use and exploitation of technology remain subject to national laws and regulations.

A patent does not provide a guarantee of commercial success. All it

shows is that the idea in question is new, industrially applicable and inventive. It is up to the owner to develop the business side.

The purpose of patents is not to establish long-term monopolies. They are granted for a limited period, which can only be extended in the case of medicines and pesticides which have to undergo lengthy clinical trials for safety reasons.

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Filing rates at selected patent offices

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Costs of a European patent

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EUR 5 300 EPO-Fees*

EUR 10 000 Patent attorney services*

EUR 3 000 Translations* Patent protection in:

Germany

United Kingdom

France

Italy

Spain

Switzerland

German Patent

European Patent

* Expected costs. The real costs may vary for different case.




Agenda

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European patents


Patent strategies

Hints for inventor




European Patent Convention (EPC)

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The European Patent Convention makes it possible to obtain patent protection in about 40 European countries on the basis of a single application. The applicant selects the countries in which he wants protection.




Advantages of European patent

European patents are granted by the European Patent Office (EPO) in a centralized procedure conducted in either English, French or German, its three official languages.

They have the same legal effects as national patents in each country for which they are granted.

The term, scope of protection, binding text and grounds for revocation of European patents are the same for all contracting states to the European Patent Convention.

It makes sense to file a European patent application rather than national applications when protection is sought in at least four European countries.

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How to get a European patent? All the contracting states to the European Patent Convention offer the

possibility, as a first step, of applying for a national patent. Advantages: entry to the procedure is relatively cheap and applicants can deal with a patent authority in their own language.

If they decide that they also need protection in other countries, they have twelve months from the date of first filing to file applications for the same invention elsewhere. They can claim the priority of the date of first filing for such subsequent applications.

A European application can also be derived from an international application filed under the Patent Cooperation Treaty (PCT). This treaty offers a simplified patent application procedure for 146 countries worldwide. It enables inventors to file a single international application designating many countries.

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What can you patent in Europe?

Under the law of the European Patent Convention, patents are only granted for inventions that are new, that involve an inventive step and that are industrially applicable.

An invention meets these requirements if it was not known to the public in any form prior to the date of filing or to the priority date, was not obvious to a skilled person and can be manufactured or used industrially.

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Discoveries, mathematical methods, computer programs and business methods as such are not regarded as inventions.

Surgical and therapeutic procedures along with diagnostic methods practiced on the human or animal body are excluded from patentability.

New plant or animal varieties are completely excluded from patentability.

The EPC does not, of course, recognize inventions whose commercial exploitation would be contrary to "ordre public“ or ethical principles, such as means of cloning human life or the use of human embryos for commercial and industrial purposes.

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What can you not patent in Europe?




The grant procedure

Step 1: Filing a European patent application

European patent applications can be filed at the European Patent Office in Munich, The Hague or Berlin or at the central industrial property office of any contracting state. They may be filed online, by post or by fax or delivered in person.

The language of a patent application

A European patent application may be filed in any language, but it will be processed in one of the three official languages, English, French and German. Therefore if it was filed in any other language, a translation in one of this 3 languages needs to be filed within two months.

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Components of a European patent application

1. Request for grant: official "Request for grant" form, obtainable free of charge, accompanied by explanatory notes.

2. Description of the invention: must describe the invention clearly and completely enough for a person skilled in the art to be able to carry it out. The description forms the basis for the claims.

3. Claims: must define the subject-matter for which patent protection is sought in terms of its technical features. They must be clear and concise and be supported by the description.

4. Drawings: may be included. These form a useful addition to the description when they illustrate the features of the invention.

5. Abstract: purely for technical information and is not used to assess the patentability of the invention.

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The grant procedure

Overview




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Application Search report

Publication of application

Publication of grant

Opposition period expires

Withdraw?

18 months

Approx. 4-5 years 9 months

The patent procedure at the EPO




European patent

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Patent search - Translations

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Translation example




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Translation example (2)




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Agenda

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European patents


Patent strategies

Hints for inventor




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National level application - Serbia www.zis.gov.rs




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National level application - Serbia





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National level application – B&H www.ipr.gov.ba




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National level application – B&H




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National level application – B&H




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Agenda

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European patents


Patent strategies

Hints for inventor




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• Cheap • Prevents others from patenting

the same invention

• Does not offer exclusivity • Reveals the invention to

competitors

• Cheap (but there is the cost of maintaining secrecy)

• Does not reveal the invention

• No protection against reverse-engineering/duplication of invention

• Difficult to enforce • "Secrets" often leak quite fast

• No effort required • Does not offer exclusivity • Competitors will often learn details

Information disclosure (publishing)

Secrecy (creating a trade secret)

Do nothing

Alternatives to patenting




Timing of the application: Is it better to apply for a patent earlier or later?

Many inventors apply for a patent as early as possible.

Many successful companies delay filing until products are almost ready for market.

Disadvantage of early filing: substantial costs may incur before you know whether your idea is commercially viable

Disadvantage of late filing: someone may file a very similar idea before you.

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Patent strategies - When to apply?




Internationalization

Patents are territorial rights. In countries where the company is not active, licensing opportunities might still exist.

Kind of exploitation: licensing or own use

Understand a competitive landscape Patent information holds detailed information on the technology of most competitors worldwide → it can give important insights into the industry in general and the strategy of competitors in particular.

Maintenance: - Pay renewal fees, observe deadlines

- Strengthen important patents and get rid of ones with no value

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Patent strategies




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Agenda

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European patents


Patent strategies

Hints for inventor




Hints for inventor

Disclosure and confidentiality

Risks: - Someone may use knowledge of your idea for their own gain - which usually means your loss.

-Disclosure now may prevent you from obtaining a worthwhile patent later.

Disclosure to individuals during private meetings

Public disclosure: Media publicity and competitions, Inventions which originate as student projects

When dealing with anyone else - companies in particular - you should disclose nothing without at least a signed non-disclosure agreement (NDA)

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Novelty and prior art

For your idea to be regarded as an invention, at least one significant part of its technology must be completely novel. There must be no evidence that this novel aspect of your idea has ever been described before, or used for the same purpose before.

Prior art is any evidence that your invention is already known.

Prior art searching: a product search and a patent search.

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Hints for inventor (2)




Competition and market potential

Is your idea a good business opportunity?

Who are your competitors?

How much of a threat are they?

Can your idea compete successfully against them?

Does anyone actually need your product?

What is the best market for your product?

What is the easiest market to enter?

At what price might your product have to sell?

Will your product meet standards?

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Exploitation routes

There are basically four ways of exploiting an invention:

A licensing agreement with a company.

Business start-up: get your idea to market yourself.

A joint venture.

Outright sale of your idea.

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Proving the invention

The need for prototypes

First prototypes

Finished or presentation prototypes

Finished product

Working prototype plus model

A short video

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Help with design or redesign

Design - in terms of both function and appearance - is a key factor in the success of commercial products.

Manufacturing prototypes

Proof of concept

Subcontracting product development with companies which specialise in product development and prototyping. They may be prepared to develop your invention in return for a stake in your IP.

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Protecting your idea

At some point you must legally protect your intellectual property (IP) or you will not be able to:

• Disclose it safely.

• Be recognized in law as its owner.

• Profit from its commercial exploitation.

• Prevent or discourage its unauthorized use by others.

Patent attorneys

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Building a team and seeking funding

Build a team

Sources of funding:

- Family and friends

- Private investors often known as ‘business angels‘

- Potential business partners

- Government or EU grants and subsidies

- Support from universities

- Competitions and publicity

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Seven deadly sins of the inventor Source: www.epo.org

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2. The invention is not kept secret until the date of filing.

1. The invention is more complex than the problem merits.

3. The invention isn't new.

http://www.epo.org/




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Seven deadly sins of the inventor 4. The inventor hasn't fully considered the problem. 5. No-one wants it.

6. An invention is safer if it's kept secret.

7. The inventor has an unrealistic idea of the value of his invention.




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References

Lectures “Patents and patent strategies” Prof. Stefanov – FDIBA

European patent office - Teaching kit http://www.epo.org/learning-events/materials/kit/download/patent-teaching-kit.html

Serbian patent office http://www.zis.gov.rs/

Bosnian patent office http://ipr.gov.ba/

European patent office - Inventors’ handbook http://www.epo.org/learning-events/materials/inventors-handbook.html

http://www.epo.org/learning-events/materials/kit/download/patent-teaching-kit.html







http://www.zis.gov.rs/

http://ipr.gov.ba/

http://www.epo.org/learning-events/materials/inventors-handbook.html








Thank you for your attention!

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