Protect your ideas IP protection in general, Patentability - exclusions and exceptions - Core Patent Teaching Kit
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Protect your ideas
IP protection in general,
Patentability - exclusions and exceptions
Markus Konrad
Tallinn, 16-05-2017
PROTECTING INTELLECTUAL
PROPERTY
2/8
Overview of intellectual property
Legal right What for? How?
Application and
Patents New inventions
examination
Original creative or Exists
Copyright
artistic forms automatically
Distinctive identification Use and/or
Trade marks
of products or services registration
Registered
External appearance Registration*
designs
Valuable information Reasonable efforts
Trade secrets
not known to the public to keep secret
Protect your ideas 3/41
Example: one mobile phone; several IP rights Trade marks: Made by “Apple" Product “iPhone" Software “iOS" Patents (e.g. 1 500 to 2 000 patents): Data-processing methods Semiconductor circuits Trade secrets: Display ? Copyrights: Designs (some of them registered): Software code overall shape of phone Instruction manual slide-to-unlock image Ringtones rounded corners
Importance of intellectual property
• Essential business asset in the knowledge economy
– Swedish steel-maker Sandvik: 20% of its value is from IP!
• Increases funding for innovative projects
– Without 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®)
• Need to release IP into the public domain under
controlled conditions:
– Linux (GPL): improvements must be free too!
Protect your ideas 6/41
Optional
Examples of valuable intellectual property
Harry Potter
Coca-Cola®
Apple® iPhone®
Instant camera DNA copying process
Protect your ideas 7/41
PATENTING
8/8
Optional
Patents are all around us
Major discovery
Protect your ideas 9/41
Filing rates at selected patent offices (recent) Source: WIPO (05.10.2016) Protect your ideas 18/41
EPO patent filings (total) 2007 - 2016
320.000
300.000 296.227
279.002
280.000 274.367
265.918
258.500
260.000
244.995
240.000 235.731
225.979
222.574
220.000
211.355
200.000
2007 2008 2009 2010 2011 2012 2013 2014 2015 2016
Protect your ideas 19/41The "social contract" implicit in the patent system
Reveal Get
invention exclusivity
… so that others can learn from it
and improve upon it!
Protect your ideas 20/41Rights 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! Protect your ideas 21/41
What information do patent documents contain?
• Title of the invention
• Bibliographic information: Inventor, proprietor, date of
filing, technology class, etc.
Abstract: Around 150 words as a search aid for other
patent applications
• Detailed description of the invention:
– 1. Summary of prior art (i.e. the technology known
to exist)
– 2. The problem that the invention is supposed to
solve and benefits compared with what already
exists
– 3. An explanation of the invention and at least one
way of carrying out the invention
The information disclosed must be sufficiently clear to
a person "skilled in the art" (Article 83 EPC) – this is
called "sufficiency"
Claims providing a precise definition of what the
patent protects (define the extent of patent protection)
Drawings: Illustrate the claims and descriptionStructure of the description
• Prior art
– Teapot with one spout
• Drawback of prior art
– Time-consuming
• Problem to solve
– Reduce filling time
• Solution
– Provide a second spout
• Advantage of the invention
– The time needed to fill multiple
cups is reduced
Protect your ideas 25/41What not to do when considering filing a patent application
• No publication prior to filing
e.g. no article, press release, conference
presentation/poster/proceedings or blog entry
• No sale of products incorporating the invention prior to
filing
• No lecture or presentation prior to filing
except under a non-disclosure agreement (NDA)
• Seek professional advice soon!
• File before others do!
Protect your ideas 26/41Where to apply for a patent
• National patent offices
– National patent valid only in the country where it is granted
– Non-residents can also apply for a patent
– One year of "priority" for subsequent applications
• European Patent Office
– A European patent is equivalent to national patents in the countries where
it is granted (the applicant chooses the countries)
• Via the Patent Cooperation Treaty (PCT)
– Just one application for up to 141 countries
– After the initial application phase, the international application leads to
multiple national patent examination procedures
– Decisions with cost implications can be delayed until 30-31 months after
filing (e.g. choice of countries to file in)
• There is no such thing as an international patent!
Protect your ideas 27/41Optional
The patent procedure at the EPO
Opposition
Search Publication Publication period
Application report of application of grant expires
18 months
Withdraw?
Approx. 4-5 years 9 months
Protect your ideas 28/41Advantages and disadvantages of patenting
Advantages Disadvantages
• Exclusivity enables • Reveals invention
investment and higher to competitors
returns on investment (after 18 months)
• Strong, enforceable legal • Can be expensive
right
• Patent enforceable only
• Makes invention tradable after grant (this can take
(licensing) 4-5 years)
Protect your ideas 30/41Alternatives to patenting
Information disclosure (publishing)
• Cheap • Does not offer exclusivity
• Prevents others from patenting • Reveals the invention to
the same invention competitors
Secrecy (creating a trade secret)
• No protection against reverse-
• Cheap (but there is the cost of engineering/duplication of
maintaining secrecy) invention
• Does not reveal the invention • Difficult to enforce
• "Secrets" often leak quite fast
Do nothing
• Does not offer exclusivity
• No effort required
• Competitors will often learn details
Protect your ideas 31/41How patents are used • Protecting products and processes – Increasing turnover and profits – Attracting investors • Licensing • Cross-licensing • Blocking competitors • Building reputation • … • Not used Protect your ideas 32/41
Optional Licensing income of US universities Source: AUTM US licensing survey 2004 Protect your ideas 33/41
Optional
The value of European patents
Share of patents, %
Patent value
Protect your ideas 34/41Optional Patent management • Patent strategy – Offensive/defensive – Internationalisation – Kind of exploitation: licensing or own use • Patent information – Keep abreast of technology – Avoid infringing patents – Understand the competitive landscape • Communication – Compile convincing evidence that your patents are valuable – Inform investors and banks, clients and prospective employees • Maintenance – Pay renewal fees, observe deadlines – Strengthen important patents and get rid of ones with no value Protect your ideas 36/41
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! Protect your ideas 37/41
Optional Protect your ideas 38/41
Much information only available in patents
Published
elsewhere
Published
in patents
80% found only in patents!
Where do secretive competitors publish their R&D?
Protect your ideas 39/41Solutions found in patent documents
90%
Free to use
10%
Protected
You can find many great solutions for free!
Protect your ideas 40/41All patent documents are accessible free of charge on http://worldwide.espacenet.com/ Espacenet over 100 million patent documents, easily searchable Patent Translate Automatic translation between English and 31 other languages, including Chinese, Japanese, Korean and Russian. European Patent Office 41
… but some basic knowledge is needed!
Beware of "naïve" keyword searches such as ...
Spring
"Energy storing means"
Protect your ideas 43/41This kind of "jargon" is often used to broaden the scope of the patent ... Transistor "Semiconductor switching device with a control electrode" Protect your ideas 44/41
Sometimes, the applicant simply doesn't want his patent to be found … Toy ball "Spherical object with floppy filaments" Protect your ideas 45/41
Sometimes, the applicant simply doesn't want his patent to be found … Ball bearing "A plurality of balls" Protect your ideas 46/41
Find out how to search for patents! www.epo.org/wbt/pi-tour www.epo.org/patents/learning/e-learning.html Protect your ideas 47/41
PATENTABILITY
EXCEPTIONS & EXCLUSIONS
48/8What can be patented at the European Patent Office? Inventions that are… • new to the world (no previous public notice) • inventive (i.e. not an "obvious" solution) • susceptible of industrial application NOT: • Mere ideas not reduced to practice • Software as such • (but algorithms that achieve technical results) • Business methods • Medical therapies, plant varieties, etc. • … See Articles 52(2) and (3), 53 EPC in http://www.epo.org/patents/law/legal-texts/epc.html Protect your ideas 49/41
Article 53 – Exceptions to patentability European patents shall not be granted in respect of: a) Inventions the commercial exploitation of which would be contrary to "ordre public" or morality; such exploitation shall not be deemed to be so contrary merely because it is prohibited by law or regulation in some or all of the Contracting States; b) Plant or animal varieties or essentially biological processes for the production of plants or animals; this provision shall not apply to microbiological processes or the products thereof; c) Methods for treatment of the human or animal body by surgery or therapy and diagnostic methods practiced on the human or animal body; this provision shall not apply to products, in particular substances or compositions, for use in any of these methods. European Patent Office 50
Article 52 EPC – Exclusions Non-inventions under Article 52(2) and (3) Art. 52(2): The following, in particular, shall not be regarded as inventions: • Discoveries, scientific theories, mathematical methods • Aesthetic creations • Schemes, rules and methods for performing mental acts playing games or doing business • Programs for computers • Presentations of information Art. 52(3): Excluded only to the extent to which a European patent application or a European patent relates to such subject-matter or activities as such. European Patent Office 51
Article 52 EPC - Exclusions
- Art. 52(2): non exhaustive list
- Activities falling within the notion of a non-invention
would typically represent purely abstract concepts
devoid of any technical implication.
» sales methods, trading, insurance schemes
» business administration acts
» modelling a system
» mathematical methods
» operations research
» narrative of a video game
- A non-invention has no technical character
European Patent Office Page 52Technical Character
Further requirement for patentability implicitly contained in the EPC:
• the invention must be of "technical character" to the extent that it
– must relate to a technical field → R.42(1)(a) EPC
– must concern a technical problem → R.42(1)(c) EPC
– must have technical features in terms of which the matter for which
protection is sought can be defined in the claim → R.43(1) EPC
• there is no general definition of what is „technical“:
- interpretation of technicality by a series of individual Board's of Appeal
decisions
- interpretation done on a case by case basis
European Patent Office Page 53Article 52 EPC – Examples
• Discoveries – Art. 52(2)(a)
– A hitherto unknown planet
– The discovery that a particular known material is able to
withstand mechanical shock would not be patentable, but a
railway sleeper made from that material could well be.
• Scientific theories – 52(2)(a)
– The theory of relativity
– Physical theory of semi conductivity not allowable. However,
new semiconductor devices and processes for manufacturing
these may be patentable.
European Patent Office 54Article 52 EPC - Examples
• Mathematical methods – 52(2)(a)
– Purely abstract or intellectual methods
– A shortcut method of division would not be patentable, but a
calculating machine constructed to operate accordingly may
well be patentable.
– If carried out by a computer, the invention is to be examined as
a “Computer-Implemented Invention" (CII).
European Patent Office 55Article 52 EPC - Examples
• Aesthetic creations – 52(2)(b)
– Works of art, the appreciation of which is purely subjective.
– No exclusion if characterised by technical features, even if the
effect produced by the technical features is at least partly of an
aesthetic nature.
– A fabric may be provided with an attractive appearance by
means of a layered structure not previously used for this
purpose, in which case a fabric incorporating such structure
might be patentable.
– A diamond may have a particularly beautiful shape (not of itself
patentable) produced by a new technical process (which is
patentable).
European Patent Office 56Article 52 EPC - Examples
• Schemes, rules and methods for performing mental acts or
playing games – 52(2)(c)
– Schemes for learning a language, methods of solving
crossword puzzles and games (as an abstract entity defined by
its rules) are not patentable.
– Not excluded: electronic devices applying rules, or, for
example, the chessboard and pieces intended for use based
on those rules.
– If carried out by a computer, the invention is to be examined as
a “Computer-Implemented Invention" (CII).
European Patent Office 57Article 52 EPC – Examples
• Methods for doing business – 52(2)(c)
– Schemes for organising a commercial or administrative operation
– Not excluded if there is technical character (technical means are
present or there is a technical solution to a technical problem)
– If carried out by a computer, the invention is to be examined as a
“Computer-Implemented Invention" (CII), for example:
“A computer implemented method for providing integrated financial,
inventory and manufacturing management comprising:
Step 1, Step 2, Step N”.
European Patent Office 58Article 52 EPC - Examples
• Programs for computers – 52(2)(c)
– A computer program may be considered as an invention if the
program has the potential to bring about, when running on a
computer, a further technical effect which goes beyond the
normal physical interactions between the program and the
computer.
– The normal technical effects like flow of electrical current are
not sufficient to establish a technical character.
European Patent Office 59Article 52 EPC - Examples
• Programs for computers – 52(2)(c)
– Not excluded for having technical character (producing a further
technical effect): a program for controlling an x-ray apparatus having
instructions adapted to carry out the following steps: Step 1, Step 2,
Step n.
– Excluded for not having technical character (not producing a further
technical effect) : a program for checking the spelling of a word having
the following instructions: Instruction 1, Instruction 2, Instruction 3.
– If carried out by a computer, the invention is to be examined as a
“Computer-Implemented Invention" (CII)
European Patent Office 60Article 52 EPC - Examples
• Presentation of information – 52(2)(d)
– Presentations of information defined solely by the content of the information
are not patentable (e.g. acoustic signals, spoken words, visual displays, books
defined by their subject, gramophone records defined by the musical piece
recorded, traffic signs defined by the warning thereon).
– If, however, the presentation of information has new technical features, there
could be patentable subject-matter in the information carrier or in the process
or apparatus for presenting the information (a record with special grooves, a
special method for synchronising sound and image recording).
– If carried out by a computer, the invention is to be examined as a “Computer-
Implemented Invention" (CII)
European Patent Office 61Thank you!
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