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Intellectual PropertyIntellectual Property

PatentsPatents

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Patents - The BasicsPatents - The Basics

Exclusive right granted by State in Exclusive right granted by State in return for disclosure of inventionreturn for disclosure of invention

Limited term of protection (20 years)Limited term of protection (20 years)• after which the invention is free for use by after which the invention is free for use by

publicpublic Inventions must be absolutely new and Inventions must be absolutely new and

cannot be obvious developments of cannot be obvious developments of known technologyknown technology

Patent gives right to prevent Patent gives right to prevent unauthorised use, manufacture, sale or unauthorised use, manufacture, sale or importation in the patented territoryimportation in the patented territory

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Patentable inventionsPatentable inventions

Devices, machines, apparatusesDevices, machines, apparatuses Chemicals and pharmaceuticalsChemicals and pharmaceuticals Electrical and electronicElectrical and electronic Industrial Processes and methodsIndustrial Processes and methods

BiotechnologyBiotechnology Computer hardwareComputer hardware Computer softwareComputer software Business methods*Business methods*

– *(… maybe)*(… maybe)

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Devices, Machines, ApparatusesDevices, Machines, Apparatuses

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Electrical and electronicElectrical and electronic

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Chemicals and Chemicals and pharmaceuticalspharmaceuticals

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BiotechnologyBiotechnology

Details of a patent granted in the USA and Europe for a mouse whose genes have been altered to make it liable to develop cancer, and therefore useful in cancer research

Title: Transgenic non-human mammals

Patent Number: US 4736860

Publication date: 1988-04-12

Inventor(s): STEWART TIMOTHY A (US); LEDER PHILIP (US)

Applicant(s):: HARVARD COLLEGE (US)

Abstract

A transgenic non-human eukaryotic animal whose germ cells and somatic cells contain an activated oncogene sequence introduced into the animal, or an ancestor of the animal, at an embryonic stage.

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Computer softwareComputer software

:A web-based online store includes a configurator, a cart, a checkout, and a database, further in which a user interface of the online store enables a custom configuration of a computer system according to an identification of a user belonging to a prescribed customer set. The configurator is provided for configuring a computer system with options selected according to a prescribed user input, the options and a respective pricing for each option being presented on a configurator web page in accordance with the identification of the user belonging to a prescribed customer set. The cart is provided for temporarily storing the customer configured computer system, the cart including a cart web page. The checkout is provided for presenting payment options and for obtaining payment and delivery information, the checkout including a checkout web page. Lastly, the database is provided for dynamically supplying configuration options to the configurator in accordance with the identification of the user belonging to the prescribed customer set. An online store method and user interface are also disclosed.

Dell - Configuration of computers

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Business methodsBusiness methodsA method and system for placing an order to purchase an item via the Internet. The order is placed by a purchaser at a client system and received by a server system. The server system receives purchaser information including identification of the purchaser, payment information, and shipment information from the client system. The server system then assigns a client identifier to the client system and associates the assigned client identifier with the received purchaser information. The server system sends to the client system the assigned client identifier and an HTML document identifying the item and including an order button. The client system receives and stores the assigned client identifier and receives and displays the HTML document. In response to the selection of the order button, the client system sends to the server system a request to purchase the identified item. The server system receives the request and combines the purchaser information associated with the client identifier of the client system to generate an order to purchase the item in accordance with the billing and shipment information whereby the purchaser effects the ordering of the product by selection of the order button.

Amazon - One-Click™ Ordering

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NoveltyNovelty

Invention not in the public domainInvention not in the public domain No written or oral disclosure to third No written or oral disclosure to third

parties parties No prior public useNo prior public use No sale or offers for saleNo sale or offers for sale It makes no difference whether the It makes no difference whether the

prior disclosure is by the inventor or prior disclosure is by the inventor or by third partiesby third parties

After the first patent application is After the first patent application is filed, you can freely disclose the filed, you can freely disclose the inventioninvention

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Inventive StepInventive Step

The invention must solve a technical The invention must solve a technical problem in a technically innovative problem in a technically innovative wayway

The solution must not be obviousThe solution must not be obvious The actual history of how the invention The actual history of how the invention

came about is not relevant in most came about is not relevant in most cases cases

The inventive step can be very small – The inventive step can be very small – even a minor improvement in a product even a minor improvement in a product or process may be a patentable or process may be a patentable improvement improvement

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Industrial ApplicabilityIndustrial Applicability

The invention must be capable of The invention must be capable of being being made made or or used used in industry in in industry in some waysome way

Purely theoretical inventions fall Purely theoretical inventions fall foul of this exclusionfoul of this exclusion

Inventions which are contrary to Inventions which are contrary to the accepted laws of nature also the accepted laws of nature also fall foul (perpetual motion fall foul (perpetual motion machines)machines)

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Unpatentable Inventions Unpatentable Inventions (Europe)(Europe)

Methods of treatment of human and animal bodyMethods of treatment of human and animal body Animal and plant varietiesAnimal and plant varieties Inventions contrary to morality or public orderInventions contrary to morality or public order Aesthetic creations, presentations of informationAesthetic creations, presentations of information Discoveries, scientific theories, mathematical Discoveries, scientific theories, mathematical

methodsmethods Computer programs Computer programs per se per se (subject to copyright)(subject to copyright) Schemes, rules and methods for performing mental Schemes, rules and methods for performing mental

acts, playing games or doing businessacts, playing games or doing business– The exclusions are to be interpreted narrowly, and some are The exclusions are to be interpreted narrowly, and some are

currently the subject of fast-developing law (particularly currently the subject of fast-developing law (particularly software, business methods and animal and plant varieties)software, business methods and animal and plant varieties)

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Main differences - US Main differences - US lawlaw

US Supreme Court said:US Supreme Court said: “Anything under the sun made by man” “Anything under the sun made by man” may potentially be patentedmay potentially be patented

No statutory exclusions to programs No statutory exclusions to programs or business methodsor business methods

First to invent (rather than first to First to invent (rather than first to file) entitled to patent rights file) entitled to patent rights

Limited period of grace for Limited period of grace for disclosures or sales made by disclosures or sales made by inventor before filinginventor before filing• The effect of all of this is that patents may be The effect of all of this is that patents may be

available in USA even if rights have been lost or are available in USA even if rights have been lost or are not available in Europenot available in Europe

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What steps should be What steps should be taken?taken?

No disclosure before filingNo disclosure before filing Identify the inventor – does the Identify the inventor – does the

company own the invention?company own the invention? Usually yes for employee inventions made during Usually yes for employee inventions made during

course of duties. Was the invention developed as course of duties. Was the invention developed as part of employee’s normal duties? part of employee’s normal duties?

Was the invention developed by a contractor?Was the invention developed by a contractor? Provide full disclosure of invention Provide full disclosure of invention

to patent attorney for evaluation to patent attorney for evaluation and possible filing – describe and possible filing – describe background, problem, and solutionbackground, problem, and solution

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Normal patent procedureNormal patent procedure

Make initial filing in home countryMake initial filing in home country After the first patent application is filed, you can After the first patent application is filed, you can

freely disclose the inventionfreely disclose the invention Decision must be taken within 12 Decision must be taken within 12

months regarding foreign filingsmonths regarding foreign filings Search carried out by European and Search carried out by European and

US Patent Offices for similar prior US Patent Offices for similar prior inventionsinventions

Examiner raises objections, which may result in Examiner raises objections, which may result in narrowed scope of protectionnarrowed scope of protection

Patents normally granted 3-5 years Patents normally granted 3-5 years from filingfrom filing

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Recent DevelopmentsRecent Developments European Patent Office liberalising European Patent Office liberalising

attitude to software patents attitude to software patents Companies like IBM have successfully Companies like IBM have successfully

convinced EPO to grant different forms of convinced EPO to grant different forms of patent scope patent scope (e.g. so that the patent will cover a program on a disk (e.g. so that the patent will cover a program on a disk or when downloaded from the Internet, not just when it or when downloaded from the Internet, not just when it is running on a computer)is running on a computer)

European companies are, in general, far European companies are, in general, far less “patent aware” than US less “patent aware” than US counterpartscounterparts

EU Commission is applying pressure to EU Commission is applying pressure to provide a grace period in Europe for pre-provide a grace period in Europe for pre-filing disclosuresfiling disclosures

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Disk CacheDisk Cache Transparent Mouse CursorTransparent Mouse Cursor Improved Data CompressionImproved Data Compression Security/EncryptionSecurity/Encryption Ageing IconsAgeing Icons AT&TAT&T ReutersReuters RockwellRockwell AmazonAmazon Price LinePrice Line State StreetState Street

Software InventionsSoftware Inventions

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Patented or “Patent Patented or “Patent Pending”?Pending”?

Never assume that because somebody Never assume that because somebody claims to have “patented technology” this claims to have “patented technology” this is trueis true

• They may mean to say that they have They may mean to say that they have appliedapplied for a patentfor a patent

• They may wrongly They may wrongly thinkthink that they have a that they have a patentpatent

• Anybody can apply for a patent irrespective of Anybody can apply for a patent irrespective of the merits of the “invention”the merits of the “invention”

• ““Patent Pending” does not mean exclusivityPatent Pending” does not mean exclusivity

• Always necessary to investigate the applicationAlways necessary to investigate the application

• Have they got patents in the correct Have they got patents in the correct territories?territories?

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Factors affecting value of Factors affecting value of patentspatents

Scope of patent claimsScope of patent claims

• How easily could a competitor evade the How easily could a competitor evade the patent?patent?

Thoroughness of search/examinationThoroughness of search/examination

• Where was the search carried out?Where was the search carried out?

• Who evaluated the results?Who evaluated the results?

Do willing licensors exist?Do willing licensors exist?

• Who is going to comercialise the invention? Who is going to comercialise the invention?

• What would a willing licensor pay as a What would a willing licensor pay as a royalty rate to use the invention?royalty rate to use the invention?

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Factors affecting value of Factors affecting value of patentspatents

Can the patent holder commercialise Can the patent holder commercialise the invention?the invention?

• How far away is commercialisation?How far away is commercialisation?

• Success in obtaining patents has little or Success in obtaining patents has little or nothing to do with marketplace successnothing to do with marketplace success

Income -vs- cost of obtaining and Income -vs- cost of obtaining and maintainingmaintaining

• Budget allocations must be made to Budget allocations must be made to include not only the successful include not only the successful inventions, but the unpatentable and inventions, but the unpatentable and uncommercial onesuncommercial ones

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Factors affecting value of Factors affecting value of patentspatents

Must we get a licence under a basic Must we get a licence under a basic patent?patent?

• Patents do not give you the right to go on Patents do not give you the right to go on the market - they give you the right to the market - they give you the right to stop somebody else from infringingstop somebody else from infringing

• Other parties may have the right to Other parties may have the right to prevent you from marketing your prevent you from marketing your invention even though you have improved invention even though you have improved on their invention in a patentable wayon their invention in a patentable way

Have we the resources to enforce the Have we the resources to enforce the patent?patent?

““A weak patent in strong hands is worth far more than a strong patent in weak hands”A weak patent in strong hands is worth far more than a strong patent in weak hands”

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Actual valuesActual values

IBM reputed to earn more than US$1 IBM reputed to earn more than US$1 Billion p.a. in royalties from its Billion p.a. in royalties from its intellectual property portfoliointellectual property portfolio

Kodak were sued by Polaroid in 1991 Kodak were sued by Polaroid in 1991 for infringing patents covering its for infringing patents covering its instant camera technologyinstant camera technology

• Kodak paid US$925 million in damages Kodak paid US$925 million in damages to Polaroidto Polaroid

• Kodak were also forced to exit from the Kodak were also forced to exit from the instant camera market leading to large instant camera market leading to large losses in the following yearslosses in the following years