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June 8, 2006 1 PATENTS: WHAT YOU PATENTS: WHAT YOU SHOULD KNOW SHOULD KNOW

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Page 1: Patents L6

June 8, 2006 1

PATENTS: WHAT YOU PATENTS: WHAT YOU SHOULD KNOWSHOULD KNOW

Page 2: Patents L6

OverviewOverview

What is a Patent?What is a Patent? Why Patent?Why Patent? How to Obtain a Patent?How to Obtain a Patent? When to Patent?When to Patent?

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What is a Patent?What is a Patent?

A PATENT is a form of:A PATENT is a form of:

““Intellectual propertyIntellectual property” which is a creation of ” which is a creation of the human mind that is protected by law in a the human mind that is protected by law in a fashion similar to real property (e.g. a piece of fashion similar to real property (e.g. a piece of land). Intellectual property rights include:land). Intellectual property rights include:

•Patents

•Copyrights

•Trademarks

• Trade Secrets

““to promote the progress of to promote the progress of science and useful arts, by science and useful arts, by securing for limited times to securing for limited times to authors and inventors the authors and inventors the exclusive right to their exclusive right to their respective writings and respective writings and discoveries"discoveries"

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What is a Patent?What is a Patent?

A patent is the right of an individual or A patent is the right of an individual or company to profit from a particular company to profit from a particular invention or unique manufacturing process, invention or unique manufacturing process, and must be registered in each country in and must be registered in each country in which they wish that invention or process to which they wish that invention or process to be protected by law. be protected by law.

Once registered, a person can grant to a Once registered, a person can grant to a third party a license to exploit the invention third party a license to exploit the invention or process in return for the payment of a fee or process in return for the payment of a fee usually known as a royaltyusually known as a royalty

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Patent RightsPatent Rights

Making, Using, Selling, Offering to sell or Making, Using, Selling, Offering to sell or Importing into the country a patented Importing into the country a patented invention.invention.

A domestic patent only provides these A domestic patent only provides these exclusive rights in the country itself.exclusive rights in the country itself.

A patent does NOT necessarily give the owner A patent does NOT necessarily give the owner the right to practice the patent, because of the right to practice the patent, because of others’ potential prior patent rights.others’ potential prior patent rights.

Like any other form of property, a patent can Like any other form of property, a patent can be bought, sold, licensed or mortgaged. be bought, sold, licensed or mortgaged.

A patent is a grant by the government that entitles the owner (e.g., an individual inventor or company) to exclude others from:

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A Dominating PatentA Dominating Patent

Patent 6,123,456Patent 6,123,456A method for making a chair A method for making a chair comprising:comprising:1) Step A1) Step A Your PatentYour Patent

A method for making a A method for making a chair comprising:chair comprising:1) Step A1) Step A2) Step B and2) Step B and3) Step C3) Step C

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Why Patent?Why Patent? Patenting is Prestigious – Patenting is Prestigious –

I did it! I did it! And I was first!And I was first!

Easy Publication – no editors.Easy Publication – no editors. Licensing possibilities.Licensing possibilities. Recoup expenditure on R&DRecoup expenditure on R&D Expanded collaborations.Expanded collaborations. Commercial advantage over Commercial advantage over

competitors competitors Provide valuable trading assets to Provide valuable trading assets to

help assure freedom to operatehelp assure freedom to operate

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What is Patentable?What is Patentable?

““Whoever invents or discovers any new and Whoever invents or discovers any new and useful process, machine, manufacture, or useful process, machine, manufacture, or composition of matter, or any new and useful composition of matter, or any new and useful improvement thereof, may obtain a patent improvement thereof, may obtain a patent therefor,” subject to certain conditions. therefor,” subject to certain conditions.

““. . . Anything under . . . Anything under the sun that is made the sun that is made by man.”by man.”

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Specific Examples ofSpecific Examples ofPatentable Subject MatterPatentable Subject Matter

Machine – screwdriverMachine – screwdriver Improved machine – better Improved machine – better

screwdriverscrewdriver Compositions – new drugsCompositions – new drugs Methods of makingMethods of making Methods of UsingMethods of Using Methods of Treatment, e.g., a Methods of Treatment, e.g., a

method for treating a diseasemethod for treating a disease Business MethodsBusiness Methods

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What Cannot be Patented?What Cannot be Patented?

Only a few limitations:Only a few limitations:

An algorithmAn algorithm A theory or scientific principle, e.g. A theory or scientific principle, e.g.

the Theory of Relativitythe Theory of Relativity A human beingA human being

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Who is Entitled to a Patent?Who is Entitled to a Patent?

Patent Rights Awarded to the First to Patent Rights Awarded to the First to InventInvent

Invention Consists of:Invention Consists of:- Conception - mental part of the inventive act Conception - mental part of the inventive act - Reduction to Practice (RTP) – Reduction to Practice (RTP) –

Actual RTP - Build or conduct claimed Actual RTP - Build or conduct claimed product/method and verify that it works for its product/method and verify that it works for its intended purposeintended purpose

Constructive RTP - File patent applicationConstructive RTP - File patent application

- Diligence - effort between conception and RTPDiligence - effort between conception and RTP

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Planning for SuccessfulPlanning for SuccessfulPatent ProtectionPatent Protection

Keep and maintain good laboratory Keep and maintain good laboratory notebooksnotebooks

Routinely sign and date your notebook Routinely sign and date your notebook even prior to actually accomplishing even prior to actually accomplishing your objectiveyour objective

Have records “witnessed” with signature Have records “witnessed” with signature and date by an objective witness – a and date by an objective witness – a non-inventornon-inventor

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When to Patent?When to Patent?

1) Identify Innovation1) Identify Innovation

2) Evaluate Research, Product 2) Evaluate Research, Product Development, etc.Development, etc.

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What are the RequirementsWhat are the Requirementsfor a Patent?for a Patent?

New or Novel (Not already known)New or Novel (Not already known) Not ObviousNot Obvious Utility (Useful) Utility (Useful) Written Description (Details of the Written Description (Details of the

invention)invention) Enabled (Must describe how to make and Enabled (Must describe how to make and

use the invention)use the invention) Best Mode (The preferred way of practicing Best Mode (The preferred way of practicing

the invention known to the inventors as of the invention known to the inventors as of the filing date)the filing date)

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Potential Barring ActivitiesPotential Barring Activities

Public use before date of inventionPublic use before date of invention Patent or publication before date of inventionPatent or publication before date of invention

Publication more than one year before filingPublication more than one year before filing Public use more than one year before filingPublic use more than one year before filing Sale or offer for sale more than one year Sale or offer for sale more than one year

before filingbefore filing

Page 16: Patents L6

Planning for SuccessfulPlanning for SuccessfulPatent ProtectionPatent Protection

1) Identify Innovation1) Identify Innovation

2) Evaluate Research, Product 2) Evaluate Research, Product DevelopmentDevelopment

NEXT:NEXT:

3) Invention Disclosure Form3) Invention Disclosure Form

4) Interact with Tech Transfer Office4) Interact with Tech Transfer Office

5) Prepare disclosure5) Prepare disclosure

6) Patent application prepared6) Patent application prepared

Page 17: Patents L6

Two Basic Parts to a PatentTwo Basic Parts to a Patent

Application specificationApplication specification the description must provide sufficient the description must provide sufficient

information to allow one skilled in this information to allow one skilled in this area to reproduce the inventionarea to reproduce the invention

ClaimsClaims defines the invention being protecteddefines the invention being protected

Page 18: Patents L6

Possible Patent ApplicationPossible Patent ApplicationFiling StrategyFiling Strategy

Provisional Application

Non-Provisional Application (Not later than 1 year after than Provisional filing date)

Published Patent Application (18 months after filing the non-provisional application)

Patent Cooperation Treaty (Not later than1 year after filing the first application)

National Stage Filing in Individual Countries (approximately 30 months after the first application is filed)

Page 19: Patents L6

What is a Provisional What is a Provisional Application?Application?

Establishes a filing date (earliest Establishes a filing date (earliest priority date)priority date)

Examination process does not beginExamination process does not begin Clock does not start running on lifetime Clock does not start running on lifetime

of patentof patent Has simpler filing requirementsHas simpler filing requirements Lower filing feesLower filing fees Claims are not requiredClaims are not required

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Duty of Disclosure Duty of Disclosure

File Information Disclosure StatementFile Information Disclosure Statement Duty on applicants, attorneys and anyone Duty on applicants, attorneys and anyone

substantively involved in the patent substantively involved in the patent application process to disclose all application process to disclose all “material” information that they are “material” information that they are aware of to the Patent Officeaware of to the Patent Office

No duty to searchNo duty to search Duty continues until issuance Duty continues until issuance Failure to comply may render patent Failure to comply may render patent

unenforceableunenforceable

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Patent Application Process Patent Application Process (2-5 Years on Average?)(2-5 Years on Average?)

1.1. Conceive the inventionConceive the invention2.2. Write the applicationWrite the application3.3. File the applicationFile the application4.4. Meet the application formalities – e.g., declaration, formal Meet the application formalities – e.g., declaration, formal

drawingsdrawings5.5. Examination process beginsExamination process begins6.6. Restriction requirement issued – sometimesRestriction requirement issued – sometimes7.7. Substantive Office Action issuedSubstantive Office Action issued8.8. Reply filed (usually there will be multiple iterations of this Reply filed (usually there will be multiple iterations of this

and the above step before an allowance is obtained)and the above step before an allowance is obtained)9.9. Appeal filedAppeal filed10.10. Application Allowed Application Allowed 11.11. Pay necessary fees – file continuations?Pay necessary fees – file continuations?12.12. Patent issuesPatent issues13.13. Pay Maintenance FeesPay Maintenance Fees

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Too much to do?Too much to do?

Patenting is easy.Patenting is easy.

Inventing is tough.Inventing is tough.

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The largest recipients of patent filings are the patent

offices of Japan, the United States of America (USA),

China, the ROK and the European Patent Office (EPO).

These five offices account for 77% of all patents filed in

2005, (a 2% increase over 2004), representing 74% of all

patents granted.

With an increase of almost 33% over 2004, the patent

office of China became the third recipient of patent filings

in 2005.

IPR in international news

Page 24: Patents L6

In 1421, Filippo Brunelleschi received the world's first patent for an invention. He created a method of transporting marble more cheaply via a paddleboat.

We have a long way to go…

His patent gave him the right to burn any ship borrowing his design for three years.

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Need for IPR

Page 26: Patents L6

Essential Panchasheel

Innovation

Creativity

Entrepreneurship

IPR

InventionSuccess

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What IP can do for you

• Wealth creationWealth creation• Legitimate ownershipLegitimate ownership• Monopoly – market advantageMonopoly – market advantage• Entry into the big leagueEntry into the big league• Bargaining powerBargaining power• Talent attractionTalent attraction• CollaborationsCollaborations• Image of a trustworthy organisationImage of a trustworthy organisation• Stay in business and keep others out!Stay in business and keep others out!

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Infringement

Page 29: Patents L6

Valid Steal

Direct Infringement

Contributory or induced Infringement Vicarious Infringement

Types of InfringementTypes of Infringement

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Direct

Contributory

Vicarious

It is wholesale reproduction and distribution of ‘protected’ works

It occurs when someone knowingly encourages infringing activityWhen for financial benefit the operator in spite of his ability to control and check infringements deliberately restrains from checking the users from committing such acts

Ignorance no excuse!

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How to deal with infringement?

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How to deal with infringement?

Offender Defender

Identify Your Position

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What should you do with the infringer?

It’s all about money, not emotions

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Don’t be intent on destroying the infringer

What should you expect out of an infringement suit?

Must work out a solution

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How to deal with an offender?How to deal with an offender?

• Take action at the earliestTake action at the earliest• Do your homeworkDo your homework• Assess whether you are in the rightAssess whether you are in the right• Make sure notice has been servedMake sure notice has been served• Offer a way out without compromising your Offer a way out without compromising your

businessbusiness• Study the history of your own firm as well as that Study the history of your own firm as well as that

of the offenderof the offender• Court of lawCourt of law• Deal objectively, not emotionallyDeal objectively, not emotionally

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IP Generation and valuationIP Generation and valuation

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Resources for Successful IP Generation

• ‘Breaking out’ mindset

• Tools for inventive creativity

• Interrogator

• Writing abilities

Management’s encouragement (moral and financial)

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What is the value of an IP?

Single IP may or may not carry much/any value, a carefully constructed portfolio will normally carry high value

Value?

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IP competitive strategies

B

M&M

M&M M&M

M&M

M&M

M&M M&M

M&M

M&M

M&M

Design Around

M&M

M&M

M&M M&M

M&M

M&M

M&M M&M

M&M

M&M

M&M

Build A Fortress

Wiggle your way out

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Live and let live

Forming Strategic Alliances

Sony, Samsung to share patentsSony, Samsung to share patents

The cross-licensing signaling a new trend, The cross-licensing signaling a new trend, allows the electronics giants to tap each allows the electronics giants to tap each other's vast patent portfolios of basic other's vast patent portfolios of basic technologies.technologies.

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IP and ExportsIP and Exports

FirstlyFirstly, IP is an important consideration for :, IP is an important consideration for : PricingPricing of the product will partly depend on of the product will partly depend on

the extent to which the trademark is the extent to which the trademark is recognized and valued by consumers, and recognized and valued by consumers, and the extent to which product will face the extent to which product will face competition from rival productscompetition from rival products

AdaptationAdaptation of product / brand / design / of product / brand / design / packaging, will involve creative or inventive packaging, will involve creative or inventive work that may be protected through the IP work that may be protected through the IP systemsystem

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In In raising fundsraising funds, patents, but also , patents, but also trademarks may be important for trademarks may be important for convincing investors, venture convincing investors, venture capitalists, etc.capitalists, etc.

In In agreements with local agreements with local partnerspartners it will be important to it will be important to clarify issues of ownership of IP clarify issues of ownership of IP rights, particularly if the product will rights, particularly if the product will be manufactured, packaged or be manufactured, packaged or modified abroadmodified abroad

IP and ExportsIP and Exports

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Marketing and advertisingMarketing and advertising campaigns campaigns will rely strongly on the brand/trademark will rely strongly on the brand/trademark which if unprotected would be much more which if unprotected would be much more difficult to enforcedifficult to enforce

The timing of The timing of participation in fairsparticipation in fairs may may be affected by the timing of your be affected by the timing of your applications for IP protectionapplications for IP protection

IP and ExportsIP and Exports

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SecondlySecondly, protecting IP in export markets , protecting IP in export markets may help a company to may help a company to prevent others prevent others from imitating or copyingfrom imitating or copying the product the product (or parts of it) without authorization.(or parts of it) without authorization.

ThirdlyThirdly, IP protection may enable a , IP protection may enable a company to access new markets through company to access new markets through licensing, franchising, joint ventures licensing, franchising, joint ventures or other contractual agreements with or other contractual agreements with other companies. other companies.

IP and ExportsIP and Exports

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FourthlyFourthly, failure to consider IP issues , failure to consider IP issues may result in fatal losses if your may result in fatal losses if your products are considered to be products are considered to be infringing the rights of othersinfringing the rights of others

Exporters often realize the Exporters often realize the importance of protecting their IP importance of protecting their IP once it is too late: e.g. once they once it is too late: e.g. once they have missed the deadlines for have missed the deadlines for application or once their product application or once their product or brand has been copied.or brand has been copied.

IP and ExportsIP and Exports

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Points to Remember for Points to Remember for Avoiding Common PitfallsAvoiding Common Pitfalls

IP protection is territorialIP protection is territorial

Example: if you have applied for and Example: if you have applied for and obtained patent protection for your obtained patent protection for your innovative product in your own country, you innovative product in your own country, you will NOT benefit from similar protection in will NOT benefit from similar protection in other countries unless you have also other countries unless you have also obtained protection in those countries.obtained protection in those countries.

Exceptions:Exceptions: Copyright and related rights: Copyright and related rights:

automatic protection in over 150 countries automatic protection in over 150 countries Trade secrets: no formal registration.Trade secrets: no formal registration.

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Points to RememberPoints to Remember

IP laws and procedures are not IP laws and procedures are not identical world-wideidentical world-wide

Example 1Example 1: trademark protection use vs. : trademark protection use vs. registration registration

Example 2:Example 2: first-to-file system for patents first-to-file system for patents vs. first-to-invent systemvs. first-to-invent system

Example 3:Example 3: software protection (copyright software protection (copyright vs. patents)vs. patents)

Example 4:Example 4: designs or works of applied art designs or works of applied art (copyright vs. industrial design protection)(copyright vs. industrial design protection)

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Points to RememberPoints to Remember

Ensure that your product does not infringe Ensure that your product does not infringe IP rights of others: analyze your “freedom IP rights of others: analyze your “freedom to operate”to operate”

Example 1:Example 1: the same trademark may the same trademark may already exist in the export marketalready exist in the export market

Example 2Example 2: it is possible that a given : it is possible that a given technology is not patented in your country technology is not patented in your country but is patented elsewherebut is patented elsewhere

Example 3Example 3: you may have a license to use : you may have a license to use a given technology in your own country, but a given technology in your own country, but you do not have the right to use it in an you do not have the right to use it in an export marketexport market

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Points to RememberPoints to Remember

There are regional and international There are regional and international protection systemsprotection systems that may be useful that may be useful for saving time and money and for saving time and money and simplifying procedures for applying for simplifying procedures for applying for protection in various countries. protection in various countries. International Systems:International Systems:- Industrial Designs: The Hague System - Industrial Designs: The Hague System - Trademarks: The Madrid System- Trademarks: The Madrid System- Patents: The Patent Cooperation Treaty or - Patents: The Patent Cooperation Treaty or PCTPCT