conference on intellectual property rights for smes organized by taiex in co-operation with wipo and...

Conference on

Intellectual Property Rights for SMEs

organized by TAIEX in co-operation with WIPO and the Turkish Patent Institute

Istanbul, 10 – 11 January 2005

Building a Competitive Edge:

Protecting Inventions by

Utility Models and/or Patents: Case Studies

Karl RacketteFreiburg, Germany

2005@rackette.de

Building a Competitive Edge: Protecting Inventions by Utility Models and/or Patents: Case Studies 2

Travel Iron US Patent 4,524,263

Identifying an Invention

• What is the new invention?

• What is the desired scope of protection?

• Where is the protection needed?

Questions to the Inventor for Identifying the Invention

• How is the invention constructed?

• How does it work?

• Is there any critical feature for an effective solution to the problem underlying the invention?

Questions to the Inventor for Identifying the Invention (2)

• What are the effects of the features of the invention?

• How else may these effects be achieved?• Why do you think that the invention is new?• What state of the art or what prior art do you

know?• What is the closest or most pertinent prior art in

your opinion?• What is the most important difference between

the closest prior art and the new invention?

• What advantages does the invention have over the the closest prior art due to that most important difference?

• What is the problem that is solved by the invention due to that difference?

• How and why does the invention solve this problem?• Which of the new features of the invention makes the

solution possible?• How is the problem solved in the prior art?

• What arguments could one put forward to a patent examiner in a patent office or a judge in a court to show that the invention is not obvious to other experts?

• What do you want to prevent competitors from doing?

• How could a competitor design around the new invention?

• Do you intend to use the invention in your own business?

• Are you planning to sell or license your invention?

• Where do you want to get a patent?

Basic Idea Underlying the Patent System

In exchange • for a limited-term right

– to exclude others• from making, using or selling the claimed invention

– in the territory covered by the patent right,

• the inventor must provide – a complete and accurate public

description (and in the USA the best mode of "practicing" it).

Who Grants Patents?

A patent is granted for a limited territory by a • national patent office

or by a • regional office that does the work for a number of

countries, such as the – European Patent Office,– Eurasian Patent Organization– African Regional Industrial Property Organization– Organisation Africane de la Proprieté Industrielle

Patent

A patent is a right granted and published

for any device, substance, method or process,

which is

involves an inventive step and

is susceptible of industrial application.

Protecting Innovations by Utility Model

• Similar to patent• Sometimes called „petty patent“, „innovation patent“• Shorter term of protection (between 7 and 10 years)• Only examination as to form• No examination as to substance prior to registration• Simpler faster registration process• Cheaper to obtain and to maintain• Less stringent „inventive step“ requirements than for

patents

Protecting Innovations by Utility Model

• Primarily for mechanical innovations• Only for certain fields of technology and only for

products but not for processes• Particularly suited for for SMEs that make „minor“

improvements• Only a small number of countries provide the option

of utility model protection e.g. Australia, Austria, Belgium, China, France, Germany, Italy, Japan, Malaysia, Philippines, Korea, Turkey etc.

What Can Be Patented?

Patents shall be available for any inventions,• whether products or processes,• in all fields of technology

provided that they are

– new– involve an inventive step– and are capable of industrial application.

Novelty

An invention is new

if it has

not been publicly disclosed

in any form, anywhere in the world.

Inventive Step

The inventive step means

that the invention is not obvious

to someone with knowledge and experience in the technological field of the invention.

What Can NOT Be Protected in the European Patent Office?

• Discoveries• Scientific theories• Mathematical methods• Aesthetic creations• Methods for performing mental acts• Methods for treatment of the human body by

surgery or therapy and diagnostic methods• (Computer programs, business methods as

Patented Black Forest Cake Cutter

German Published Patent Application

TRANSLATION:In a cake cutter having an essentially U-shaped piece (1),a cutting wire (5) is stretched between a first limb (2) and a second limb (3) and has a plurality of elevations and recesses.The elevations and recesses may be formed by teeth, indentations or undulations. Preferably, the cutting wire is twisted round itself, about its own longitudinal axis, with a plurality of turns.

In a cake cutter having an essentially U-shaped piece (1), a cutting wire (5) is stretched between a first limb (2) and a second limb (3) and has a plurality of elevations and recesses.The elevations and recesses may be formed by teeth, indentations or undulations. Preferably, the cutting wire is twisted round itself, about its own longitudinal axis, with a plurality of turns.

Patents From Filing to Grant

• filing of an application• examination as to formalities• prior art search• examination as to substance• grant and publication

(enforcement of patent protection)

When Do You Need To File?

• A patent application must be filed as soon as possible after the invention is completed.

• "Premature disclosure" may bar patentability.

How Is a Patent Granted?

• The first step in securing a patent is the filing of a patent application.

• The patent application generally contains the title of the invention, as well as an indication of its technical field; it must include the background and a description of the invention, in clear language and enough detail that an individual with an average understanding of the field could use or reproduce the invention.

Disclosure of the Invention Article 83 European Patent Convention

The European patent application must

disclose the invention in a manner

sufficiently clear and complete

for it to be carried out by a person skilled in the art.

Article 123(2) EPC- Amendments

(2) A European patent application or a European patent

may not be amended

in such a way that it contains subject-matter which extends beyond the content of the application as filed.

How Is a Patent Granted?

• Descriptions are usually accompanied by visual materials such as drawings, plans, or diagrams to better describe the invention.

• The application also contains various "claims", that is, information which determines the extent of protection granted by the patent.

Claims

A series of numbered statements in a patent specification, usually following the description, that define the invention and establish the scope of the monopoly conferred by the patent.

At least one such statement (usually the first) will be self contained - this is known as an independent claim.

Others - known as dependent claims - refer to previous claims and using wording such as ”... as claimed in claim 1 or claim 2...”

Value of a Patent

• Ultimately, it is the claims which will dictate the value of the patent.

• Even if the invention is described, if it is not covered by the claims, there are no patent rights.

• The applicant, however, will ultimately attempt to retain in the application the broadest claims since the eventual commercial potential will be based on the breadth of the invention.

How Do You Get Protection?Part 1

• Identify the invention after its submission– Discussion with the inventor(s)– Ask questions

• Prior art (patent searches made?)– Deficiencies of the prior art

• Problem to be solved• Solution proposed• Possible modifications• Possible infringements

How Do You Get Protection? Part 2

• Preparing a patent application– Decide which drawings show the invention– Draft (a) broad independent claim(s)– Draft a number of dependent claims

• for preferred embodiments of the invention• for alternatives• for what will keep infringers away from the market

• Draft a description– State the title– Specify the technical field– Indicate the background art (cite the documents)– Disclose the invention as claimed (problem, solution,

advantageous effects)– Briefly describe the figures in the drawings– Set forth at least the best mode for carrying out the

invention (preferred embodiment)

• Filing a patent application – Review the claims (novel? inventive? scope!!!$$$)

– Finalize the drawings

– Prepare the filing documents after review by the inventor

• Abstract

• Designation of inventor

• Application form (designation of states in which protection is desired)

– File a request with the application papers and pay the fees at a national or regional patent office

• Prosecuting a patent application– Request search / examination– Amend claims / description (withdrawal to avoid

publication?)– Convince the examiner

• Clarity of claims• Original disclosure of the invention• Novelty of the claims• Inventive step

• Grant of the patent

– The patentee from now on is entitled to exclude competitors from making use of the claimed invention for a limited time span (protection)

– The public gets full information about the new invention so that everybody may make use of it after the patent has expired (printed publication)

• Maintenance (annual fees to keep the patent in force)

Filing a Utility Model or Patent Application

• first filing at Office in home country

• later filing abroad (claiming priority)– national patent / utility model– regional patent / utility model– international patent application

Swiss Patent for Fischer

Arcuate Helical Spring

Inefficient Arcuate Helical Spring

Helical Spring Driven in Sliding Motion

Daar Mechanism

Complicated Hair Plucking Device

The Epilady Patent

Depilatory Apparatus

Helical Spring Employed

Infringing Device?

Rubber Rod With Slits

THE END

Thank you for your attention!

conference on intellectual property rights for smes organized by taiex in co-operation with wipo and...

utility models andor

competitive edge

new invention

case studiesquestions

case studiesbuilding

case studiesidentifying

patent office

patent examiner

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