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Patents and trademarksAn introduction to the use of public patents databases and of public trademarks databases

Giorgio MeneghinFondazione G. Rumor – Centro Produttività VenetoVicenza, 21/10/2013

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Learning goals:

• Understand what intellectual property is about

• Understand what is a patent and how to use patent databases

• Understand what is a trademark and how to use trademark databases

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Intellectual property

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Overview of the intellectual property – IP1

Legal rights What for? How?

CopyrightOriginal creative or

artistic forms

TrademarksDistinctive identification

of either products or services

Use of and/or registration

Ornamental designs

Registration*

Patents New inventionsApplication and

examination

Exists automatically

Trade secrets

External appearance

Valuable information not known to the public

Reasonable efforts to keep secret

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Overview of the intellectual property – IP2

What? How long? Where?

CopyrightThe life of the author

plus 70 years

Trademarks10 years renewable

indefinitely

National, community, international

Ornamental designs

National, community, international

Patents Max 20 yearsNational,

European (37), international

International

Trade secrets

5 years, renewable up to 25

As long as information remains confidential

International

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Some IP found in a mobile phone

Trademarks:• Made by "Nokia"• Model "N95"• Software "Symbian", "Java"

Patents:• 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

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Importance of the Intellectual Property

• Essential business asset in the knowledge economy

– Swedish Sandvik Steel Mill: 20% of its value comes from the IP!

• Increases funding for innovative projects

– Without the 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 under controlled

conditions:– Linux (GPL): improvements must be free too!

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Examples of valuable intellectual property

Coca-Cola®

Apple® iPod®

Harry Potter

Instant camera DNA copying process

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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!

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Patents

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What can be patented

Inventions that are…

• new to the world (no previous public notice) • inventive (i.e. not an "obvious" solution) • susceptible of industrial application• sufficiency of disclosure

NOT: • Mere ideas not reduced to practice • Software as such (In Europe it is possible for algorithms that achieve technical results. In USA we have a wider possibility to obtain software patent) • Business methods (in USA it is possible under certain condition)• Medical therapies, plant varieties, etc. •…

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Rights conferred by the patent

• Prevent others from making, using, offering for sale, selling or importing

infringing products in the country where the patent was granted

• Sell these rights or conclude licensing contracts

• For up to 20 years from the date of filing of the patent application

• The patent does not grant the right to use the invention!

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What does a patent look like?

• Bibliographic information Inventor, proprietor, date of filing, technology class, etc.

• 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

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Searching for patents can be easy ...

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

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… but some basic knowledge is needed!

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

Spring

"Energy storing means"

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This kind of "jargon" is often used to broaden the scope of the patent ...

Transistor

"Semiconductor switching device with a control electrode"

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Sometimes, the applicant simply doesn't want his patent to be found …

Toy ball

"Spherical object with floppy filaments"

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Sometimes, the applicant simply doesn't want his patent to be found …

Ball bearing

"A plurality of balls"

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It is better to use classifications…

• The International Patent Classification (IPC), established by the Strasbourg Agreement 1971, provides for a hierarchical system of language independent symbols for the classification of patents according to the different areas of technology to which they pertain.

• The Cooperative Patent Classification (CPC) is an extension of the IPC and is jointly managed by the EPO and the US Patent and Trademark Office. It is divided into nine sections, A-H and Y, which in turn are sub-divided into classes, sub-classes, groups and sub-groups. There are approximately 250 000 classification entries.

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It is better to use classifications…

International Patent Classification (IPC)Classification Patent Cooperation (CPC)

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Why to use patent databases?

1. Competitors research• To understand the competitive landscape • Using the IPC classifications related the area of activity

2. Competitors monitoring• Using the name of competitors

3. Technology and R&D monitoring• To keep abreast of technology • Combined use of IPC and keywords

4. Patent prior art research• To understand if something can be patented• Combined use of IPC and keywords

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Patent prior art search“Emergency accessory”

Patent research: example

Visual emergency signaling device consisting of a container with an extensible light and that can be hooked on a stretcher or carried on the shoulders.

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Patent research: example

Searching strategy:1. Identification of key words to search: “Backpack”, “Emergency”,

“Lamp”, “Light” “Telescope”, “Extensible”, “Tripod”, “Hook”

2. Preliminary research in "espacenet" combining some key words, for

example: BACKPACK* and EMERGEN* and LAMP*:

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Patent research: exampleYou get 9 results:

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Patent research: example

Searching strategy:3. Identification of relevant CPC and IPC classifications

4. Combination of classifications and keywords:

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Patent research: exampleYou get 6 results:

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Patent research: example

Searching strategy:

5. Result analysis

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Trademarks

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Trademarks: principal aspects

• Ensures the prerogative to use of the registered name / logo for a period

of 10 years (for most countries), renewable indefinitely ;

• It has a territorial validity, and its deposit is carried out in the appointed

offices (Italian Patent and Trademark Office – UIBM; Office for

Harmonization in the Internal Market – OHIM; World Intellectual Property

Organization – WIPO; Patent Office of Republic of Bulgaria – BPO;

etc.).

• Enables (if well-exploited) to identify the product with the trademark

(examples: COCA COLA = sweet sparkling drink, DASH = detergent)

• Can be exploited economically, allowing the trademark LICENSE or

selling it

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Brand

It's the "final evolution" of the trademark;

the company is identified by the trademark,

and the trademark value often exceeds the entire material value of the company

(striking example: the trademark COCA COLA worth about 20 times the entire material value of its factories).

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Trademark databases: "how to use the search forms and which useful data to extract"

TMVIEW (Italian, community and international trademarks, + 25 European

Union countries + 7 European not-EU countries + United States + Russian

Federation + Mexico + Morocco ): https://www.tmdn.org/tmview/welcome

UIBM (Italian trademarks): http://www.uibm.gov.it/

OHIM (community trademarks): https://oami.europa.eu/ohimportal/en/#

WIPO (international trademarks): http://www.wipo.int/romarin

BPO (Bulgaria trademarks): http://www1.bpo.bg/

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Trademark to search:EKOBIKE, in the class (Nice class) 12 (Vehicles; Apparatus for locomotion by land, air or water). To register the trademark at the Community level.

Searching strategy:You need to search all trademarks, registered on the entire territory of the EU, similar (not just identical) to the trademark that you wish to register.

Search terms: Will be looked for, in order, the following terms: “EKOBIKE”, “EKO BIKE”, (search for identity)“*EKO* *BIKE*” (all trademarks containing the terms EKO and BIKE; ex: TEKON BIKER), “*EK* *BIK*”, “*EK* *IKE*”, “*KO* *BIK*”, “*KO* *IKE*”, “*EKO*”, “*BIKE*, “*ECO* *BIKE* (search by similarity).

Pre-existing search: example

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Nice classification

• System for the classification of goods and services for the purposes of registering trade marks

– 34 classes of goods

– 11 classes of services

• http://tmclass.tmdn.org/ec2/classheadings

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Trademark to search:EKOBIKE, in the class (Nice class) 12 (Vehicles; Apparatus for locomotion by land, air or water). To register the trademark at the Community level.

Searching strategy:You need to search for all trademarks, registered on the entire territory of the EU, similar (not just identical) to the trademark that you wish to register.

Search terms: Will be looked for, in order, the following terms: “EKOBIKE”, “EKO BIKE”, (search for identity)“*EKO* *BIKE*” (all trademarks containing the terms EKO and BIKE; ex: TEKON BIKER), “*EK* *BIK*”, “*EK* *IKE*”, “*KO* *BIK*”, “*KO* *IKE*”, “*EKO*”, “*BIKE*, “*ECO* *BIKE* (search by similarity).

Pre-existing search: example

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How consulting databases

Link: https://www.tmdn.org/tmview/welcome

It contains trademarks databases of the following offices:

Austria, Bulgaria, Benelux (Belgium, the Netherlands and Luxembourg),

Cyprus, Czech Republic, Germany, Denmark, Estonia, Spain, Finland,

France, United Kingdom, Greece, Croatia, Hungary, Ireland, Italy,

Lithuania, Latvia, Morocco, Malta, Mexico, Norway, Poland, Portugal,

Romania, Russian Federation, Sweden, Slovenia, Slovakia, Turkey,

United States, OHIM (Community trademarks), WIPO (international

trademarks).

Opportunity to use the advanced search mask, with several fillable

fields.

TMVIEW database

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To fill in the query EKOBIKE in the field “Trade mark name” and the number 12 in the field “Nice class”

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The Polish trademark “EKOBIKE” is ended, while the Turkish trademark “EKOBIKE” is an application (see the Trade mark status).

You get 2 results:

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Using *EKO* *BIKE* + class 12:

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You get 3 results:

The Polish and Turkish trademarks “EKOBIKE” + the Czech trademark “NEKOBIKE” that is expired (see the Trade mark status).

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Using *EK* *BIKE* + class 12:

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You get 44 results:

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Among these are of particular interest the community figurative trademark ELEKTROBIKER n. 008458028, and the France national trademark TEKBIKE n. 3624125

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To complete the search by checking the proposed denominative:

•In the Companies Registry: http://www.infoimprese.it/impr/index.jsp •In the Domain Name Registry: http://whois.domaintools.com/ •By combining TMView database results with the results from the Italian (UIBM), community (OHIM) and international (WIPO) databases.

The control is carried out to evaluate potential "problems" related to the so-called "Right of Priority", and to verify the consistency of the data stored in TMView.

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Finally…

Analysis of results

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…Thank you for your attention…

References

PatLib Vicenza

Fondazione G. Rumor- Centro Produttività Veneto

Via Eugenio Montale 27, 36100 Vicenza

Giorgio Meneghin

Tel 0444 994725 fax 0444 994710

Mail to brevettiemarchi@cpv.org Web www.cpv.org

Greta Bonetto

Tel 0444 994729

Mail to bonetto@cpv.org