1

W W W W W HOW (Why, When, Who, Where, What, How)

Read a Patent!

Domenico GolzioEuropean Patent Office

dgolzio@epo.org

Cyberlaw TorinoTecnologie digitali e diritto nell’era della Rete

12 - 13 Luglio 2004Fondazione Giovanni Agnelli - Torino

BONUS

MATERIA

L

2

What is a Patent? A contract between an inventor and a state

Inventor

1. Protection for about 20 years2. Exclusive rights to produce, use,

sell and import the invention

• to recoup investment in R&D• to strengthen market position and

competitiveness

State

1. Publication of the invention

• to spread new technical knowledge• to avoid R&D duplication• to foster innovation

Patents are granted to inventions which are Novel, Inventive (non obvious), suitable for Industrial Application when considered against the Prior Art Art 52 EPC

3

The Actors of the Patent Procedure

Inventor/Applicant Representative Patent Office

publishes

Unexamined Patent Applications (A)

Contract Proposal

Granted Patents (B)Final Contract

4

Meaning of “invention” * • An invention means an idea of an

inventor which permits in practice the solution to a specific problem in the field of technology

• An invention may be or may relate to a product or process

* from Malaysian Patent Act

5

Why Read a Patent (I)Patents are a unique source of technical information• 80% of the technical information contained in the patent

documentations is not published elsewhere

Technical Patent 80% Publications 20% Publications

• Patents anticipate technical literature: Invention patent elsewhere delay yearsPunched cards 1889 1914 25Television 1923 1928 5Jet engine 1936 1946 10Cast iron 1939 1947 8

6

Why Read a Patent (II)Patents define Innovation Strategy and help you:• to recognise the lack of advancement in a technology

and address improvements• to avoid duplication of R&D at industries and universities• to advance technology from current state• to promote creativity and innovation• to avoid waste of Human Resources

7

Why Read a Patent (III)Patents define Market Strategy and help you:• to retain your market position• to increase your market share• to introduce new products and processes• to locate new business partners• to avoid waste of Human and Financial Resources• to provide recognition and motivation for employees• to bring together inventors and investors• to develop a prognosis of innovative strength and

technological trends, global and regional• to recover your R & D investments and to safeguard the

results

Read patents to avoid legal problems

8

When to Read a Patent

CONCEPT

DESIGN

DEVELOPMENT

PROTOTYPE

9

Who should Read a Patent• Everybody ...

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

10

Where to Read a Patent ?• Patent Offices• Patent Libraries (PatLibs)• Patent Information Points (PIPs)• On-line Commercial Databases• CD-ROMs (MIMOSA)• Internet• esp@cenet

11

What to Read in a Patent ?Function of a Patent Application/Granted Patent

1. Proposal for the “contract”/finalised “contract”

2. Disclosure of the invention in a manner sufficiently clear and complete in order to allow a person knowing everything publicly disclosed at the time of the invention to reproduce or carry out the invention without any additional creative activity. Art 83 EPC

• First page• Description• Claim(s) • Drawing(s)• Search Report

Requirements for a Patent Application Art 78 EPC

12

First Page• Bibliographic Data• Abstract• Figure(s)

• INID codes (Internationally agreed Numbers for the Identification Data)• Patent publication serial number (11)• Issuing Patent Office (19)• Application number (21)• Date of filing (22)• Priority (30)• Date of publication (43, 45)• Int. Cl. (51)• References cited (56)• Title of Patent (54)• Abstract (57)• Inventor, Applicant, Representative, Assignee (71-75)

13

DescriptionRule 27 EPC• Introduction

– Technical Field– State of the Art– Problem to be solved– Proposed Solution– Listing of drawings

• Detailed description– Preferred embodiments

14

Claims: Function• Protection conferred by the claims Art 69(1) EPC (description/drawings serving for interpretation

purposes only!!!)

• Define the matter for which protection is sought

- clear, concise, supported by the description Art 84 EPC

- in term of technical features Art 52 EPC Rule 29(1) EPC

Seek a Balance:– Differentiate the invention from the prior art.– Obtain the most extensive protection possible.

15

Claims: Form and Contents

• Technical features Art 52 EPC Rule 29(1) EPC

• Two part form Rule 29(1) a-b EPC

• Independent/Dependent Claims Rule 29(2-4) EPC• Claim Categories Rule 29(2) EPC

• Claim tree

16

Claims: Form and ContentsTechnical features

Claims must be drafted in terms of the "technical features of the invention".

- Features expressed in terms of a structural limitation- Functional limitations accepted if known how to perform that function.- Claims should not contain any statements relating to commercial advantages or other non‑technical matters.- Statements of purpose should be avoided unless they assist in defining the invention. - Claims to the use of the invention in the sense of the technical application of the invention are allowable. Rule 34 EPC

17

Claims: Form and Contents

Two-part form

1. Preamble– technical features designating the subject-matter of the

invention– technical features know from the prior art

2. Characterising portion– technical features which define the invention

• IMPORTANT!!• Protection defined by the combination of the features in

1) and 2)

18

Claims: Form and Contents

• Independent Claim:– defines the essential features of the invention (i.e.

those features which solve the problem).– Single sentence which defines the invention in the

most general sense.

• Dependent claim: – includes all the features of another claim(s) to which it

refers back and defines particular embodiments.– Claim which defines more detailed implementation of

the invention of that defined in the claim it refers back to be possibly used during the procedure and during the life of the patent.

19

Claims: Form and Contents

Claim Categories• Claims defining a physical entity

– Product– Device– Apparatus– System– ...

• Claims directed to an activity– Process– Method– Use– ...

20

Example of an invention

Problem: longer antenna of a telephone allows for better RX/TX signals but make

the telephone bulkier

Solution: the antenna is extensible and when the telephone is not in use the antenna

can be retracted into the telephone casing reducing the size of the telephone

21

Set of Claims1. A mobile telephone handset comprising a casing characterised in

that it comprises an extractable antenna.

2. A mobile telephone handset according to claim 1 wherein the antenna is made of a single element.

3. A mobile telephone handset according to claim 2 wherein the antenna is mounted on the right side of the casing.

4. A mobile telephone handset according to claim 2 wherein the antenna is mounted on the left side of the casing.

5. A mobile telephone handset according to claim 1 wherein the antenna has a circular cross section.

22

Set of Claims Expanded1. A mobile telephone handset comprising a casing characterised in

that it comprises an extensible antenna.

2. A mobile telephone handset comprising a casing and an extensible antenna, wherein the antenna is made of a single element.

3. A mobile telephone handset comprising a casing and an extensible antenna, the antenna being made of a single element, wherein the antenna is mounted on the right side of the casing.

4. A mobile telephone handset comprising a casing and an extensible antenna, the antenna being made of a single element, wherein the antenna is mounted on the left side of the casing.

5. A mobile telephone handset comprising a casing and an extensible antenna, wherein the antenna has a circular cross section.

23

Claims: Form and ContentsClaim tree

Claim 1

Claim 2

Claim 3

Claim 5

Claim 4

24

How to Read a Patent• Patentese/Legalese

- words or technical terms are a generalization of the original elements

- "consisting of", "comprising", "plurality", "means of", "substantially", ..., have a special meaning in the

patent language

• Don't be creative in reading: you may wrongly attribute merits to the invention.

• Put patent in the right time-perspective with respect to the state of the art at a certain date.

• No emotional approach/Humility

25

Thank you !!!!