Dr. Michael Berger, European Patent Attorney
© Michael Berger 03.06.2010
Intellectual Property (IP):Patents for Inventions
Intellectual Property (IP)
Technical protective rights:
Patents
Utility patents
Semiconductor Protection
Nontechnical protective rights:
Design Patents
Trademarks
Plant Variety Protection
NewScope Group © Michael Berger 03.06.2010
NewScope Group © Michael Berger 03.06.2010
Trademarks…
A patent is a set of exclusive rights granted by a state to an inventor or his assignee for a limited period of time in exchange for a disclosure of an invention
Patent applications are possible for:Products (devices etc.), methods, medical use…
What is a patent?
NewScope Group © Michael Berger 03.06.2010
exclusive rights: commercial use only through the inventor or his assignee and/or his licensee(s)
limited period of time: 20 years from the filing date
Invention: as defined in the claims; must be novel and inventive over the prior art and be industrially applicable to be granted as a patent; must be sufficiently disclosed
NewScope Group © Michael Berger 03.06.2010
Novelty…
- Keep the invention secret prior to filing !!!!!
After filing… - Could be advantageous to keep the invention secret until patent application is published if there are related inventions which will be filed at a later stage
Patent claims:
Claims define in the most abstract form what the inventor regards to be the invention in respect to what forms the (known) prior art.
NewScope Group © Michael Berger 03.06.2010
Claim Example1. A plastic drink bottle having two closed internal compartments, said closed internal compartments being able to hold a first drinking fluid and a second drinking fluid, such that a user may access said first drinking fluid independent of said second drinking fluid. (taken from US 2009020541 A1 )
NewScope Group © Michael Berger 03.06.2010
NewScope Group © Michael Berger 03.06.2010
…other embodyments covered by the claims
- A plastic drink bottle having two closed internal compartments - said closed internal compartments being able to hold a first drinking fluid and a second drinking fluid- such that a user may access said first drinking fluid independent of said second drinking fluid
A patent is an object of great value.
The value is thereby dependent on the scope of the patent and the
territorial extent of the patent family.
NewScope Group © Michael Berger 03.06.2010
How to obtain a patent
1. filing a patent application at national (e.g. UKPTO, USPTO, DPMA) or regional Patent Offices (e.g. EPO) (preliminary protection after opening of the patent application to the public / 18 months after filing)
2. Request examination of the patent application
3. If the requirements for granting a patent (e.g. novelty, inventive step) are fulfilled a patent will be granted (full protection - exclusive rights in force)
NewScope Group © Michael Berger 03.06.2010
International Patent Filing
a) Traditional patent systems:
Local patent application followed within 12 months by multiple foreign applications claiming priority under Paris Convention:– multiple formality requirements– multiple searches– multiple publications– multiple examinations and prosecutions of applications– translations and national fees required at 12 months
-> decision on national filings and high costs 12 months after first filing
NewScope Group © Michael Berger 03.06.2010
Traditional filing system - TIMELINE (simplyfied)
National/Regional/filing(priority date)
National /Regional publications
National / Regional filings claiming priority
(months) 0 12
18
NewScope Group © Michael Berger 03.06.2010
b) PCT (Patent Cooperation Treaty) system
First patent application is followed within 12 months by internationalapplication under the PCT, claiming Paris Convention priority
– one set of formality requirements– international search– international publication– international preliminary examination (IPE)– international application can be put in order before national phase– translations and national fees required at 30 months*, and only if applicant wishes to proceed
Advantage:– “national phase” commencing at 30 months*; -> high cost effort for national filings” 30 months after first filing instead of 12 months after filing -> 30 months time after first filing for decision on national filings
*A few States apply a 20-month time limit where no demand for international preliminary examination has been filed before the expiration of 19-month period
NewScope Group © Michael Berger 03.06.2010
PCT TIMELINE (simplyfied)
NewScope Group © Michael Berger 03.06.2010
National/Regional/PCT filing/(priority date)
PCT filing
International searchreport (ISR) andwritten opinion (WO)of ISA
International publicationNationalphase entry
(months) 0 12 16 18 22 28 30
IPRP established
2 months from ISR:filing of claimsamendments (optional)
Filing of demand (IPE)
NewScope Group © Michael Berger 03.06.2010
PCT Contracting States* (142 on 1 May 2010)
* For a detailed list please see http://www.wipo.int/pct/en/list_states.pdf
Last but not least, think about if there is a market for the product to be patented…
NewScope Group © Michael Berger 03.06.2010
Source: EPO poster “ The seven deadly sins of the inventor”
Thanks!
NewScope Group © Michael Berger 03.06.2010