conference on intellectual property rights for smes organized by taiex in co-operation with wipo and...
TRANSCRIPT
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
Building a Competitive Edge: Protecting Inventions by Utility Models and/or Patents: Case Studies 2
Building a Competitive Edge: Protecting Inventions by Utility Models and/or Patents: Case Studies 3
Building a Competitive Edge: Protecting Inventions by Utility Models and/or Patents: Case Studies 4
Travel Iron US Patent 4,524,263
Building a Competitive Edge: Protecting Inventions by Utility Models and/or Patents: Case Studies 5
Travel Iron US Patent 4,524,263
Building a Competitive Edge: Protecting Inventions by Utility Models and/or Patents: Case Studies 6
Travel Iron US Patent 4,524,263
Building a Competitive Edge: Protecting Inventions by Utility Models and/or Patents: Case Studies 7
Travel Iron US Patent 4,524,263
Building a Competitive Edge: Protecting Inventions by Utility Models and/or Patents: Case Studies 8
Travel Iron US Patent 4,524,263
Building a Competitive Edge: Protecting Inventions by Utility Models and/or Patents: Case Studies 9
Travel Iron US Patent 4,524,263
Building a Competitive Edge: Protecting Inventions by Utility Models and/or Patents: Case Studies 10
Identifying an Invention
• What is the new invention?
• What is the desired scope of protection?
• Where is the protection needed?
Building a Competitive Edge: Protecting Inventions by Utility Models and/or Patents: Case Studies 11
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?
Building a Competitive Edge: Protecting Inventions by Utility Models and/or Patents: Case Studies 12
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?
Building a Competitive Edge: Protecting Inventions by Utility Models and/or Patents: Case Studies 13
Questions to the Inventor for Identifying the Invention (3)
• 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?
Building a Competitive Edge: Protecting Inventions by Utility Models and/or Patents: Case Studies 14
Questions to the Inventor for Identifying the Invention (4)
• 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?
Building a Competitive Edge: Protecting Inventions by Utility Models and/or Patents: Case Studies 15
Questions to the Inventor for Identifying the Invention (5)
• 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?
Building a Competitive Edge: Protecting Inventions by Utility Models and/or Patents: Case Studies 16
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).
Building a Competitive Edge: Protecting Inventions by Utility Models and/or Patents: Case Studies 17
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
Building a Competitive Edge: Protecting Inventions by Utility Models and/or Patents: Case Studies 18
Patent
A patent is a right granted and published
for any device, substance, method or process,
which is
new,
involves an inventive step and
is susceptible of industrial application.
Building a Competitive Edge: Protecting Inventions by Utility Models and/or Patents: Case Studies 19
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
Building a Competitive Edge: Protecting Inventions by Utility Models and/or Patents: Case Studies 20
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.
Building a Competitive Edge: Protecting Inventions by Utility Models and/or Patents: Case Studies 21
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.
Building a Competitive Edge: Protecting Inventions by Utility Models and/or Patents: Case Studies 22
Novelty
An invention is new
if it has
not been publicly disclosed
in any form, anywhere in the world.
Building a Competitive Edge: Protecting Inventions by Utility Models and/or Patents: Case Studies 23
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.
Building a Competitive Edge: Protecting Inventions by Utility Models and/or Patents: Case Studies 24
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
such)
Building a Competitive Edge: Protecting Inventions by Utility Models and/or Patents: Case Studies 25
Patented Black Forest Cake Cutter
Building a Competitive Edge: Protecting Inventions by Utility Models and/or Patents: Case Studies 26
German Published Patent Application
Building a Competitive Edge: Protecting Inventions by Utility Models and/or Patents: Case Studies 27
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.
Building a Competitive Edge: Protecting Inventions by Utility Models and/or Patents: Case Studies 28
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.
Building a Competitive Edge: Protecting Inventions by Utility Models and/or Patents: Case Studies 29
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)
Building a Competitive Edge: Protecting Inventions by Utility Models and/or Patents: Case Studies 30
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.
Building a Competitive Edge: Protecting Inventions by Utility Models and/or Patents: Case Studies 31
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.
Building a Competitive Edge: Protecting Inventions by Utility Models and/or Patents: Case Studies 32
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.
Building a Competitive Edge: Protecting Inventions by Utility Models and/or Patents: Case Studies 33
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.
Building a Competitive Edge: Protecting Inventions by Utility Models and/or Patents: Case Studies 34
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.
Building a Competitive Edge: Protecting Inventions by Utility Models and/or Patents: Case Studies 35
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...”
Building a Competitive Edge: Protecting Inventions by Utility Models and/or Patents: Case Studies 36
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.
Building a Competitive Edge: Protecting Inventions by Utility Models and/or Patents: Case Studies 37
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
Building a Competitive Edge: Protecting Inventions by Utility Models and/or Patents: Case Studies 38
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
Building a Competitive Edge: Protecting Inventions by Utility Models and/or Patents: Case Studies 39
How Do You Get Protection? Part 3
• 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)
Building a Competitive Edge: Protecting Inventions by Utility Models and/or Patents: Case Studies 40
How Do You Get Protection? Part 4
• 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
Building a Competitive Edge: Protecting Inventions by Utility Models and/or Patents: Case Studies 41
How Do You Get Protection? Part 5
• 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
Building a Competitive Edge: Protecting Inventions by Utility Models and/or Patents: Case Studies 42
How Do You Get Protection? Part 6
• 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)
Building a Competitive Edge: Protecting Inventions by Utility Models and/or Patents: Case Studies 43
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
Building a Competitive Edge: Protecting Inventions by Utility Models and/or Patents: Case Studies 44
Swiss Patent for Fischer
Building a Competitive Edge: Protecting Inventions by Utility Models and/or Patents: Case Studies 45
Arcuate Helical Spring
Building a Competitive Edge: Protecting Inventions by Utility Models and/or Patents: Case Studies 46
Inefficient Arcuate Helical Spring
Building a Competitive Edge: Protecting Inventions by Utility Models and/or Patents: Case Studies 47
Helical Spring Driven in Sliding Motion
Building a Competitive Edge: Protecting Inventions by Utility Models and/or Patents: Case Studies 48
Daar Mechanism
Building a Competitive Edge: Protecting Inventions by Utility Models and/or Patents: Case Studies 49
Complicated Hair Plucking Device
Building a Competitive Edge: Protecting Inventions by Utility Models and/or Patents: Case Studies 50
The Epilady Patent
Building a Competitive Edge: Protecting Inventions by Utility Models and/or Patents: Case Studies 51
Depilatory Apparatus
Building a Competitive Edge: Protecting Inventions by Utility Models and/or Patents: Case Studies 52
Helical Spring Employed
Building a Competitive Edge: Protecting Inventions by Utility Models and/or Patents: Case Studies 53
Infringing Device?
Building a Competitive Edge: Protecting Inventions by Utility Models and/or Patents: Case Studies 54
Rubber Rod With Slits
Building a Competitive Edge: Protecting Inventions by Utility Models and/or Patents: Case Studies 55
THE END
Thank you for your attention!