This document provides an introduction to patents from an entrepreneur's perspective. It defines what a patent is, explains the types of intellectual property (patents, copyrights, trademarks), and discusses whether an idea is patentable. It covers important aspects to consider before applying for a patent like prior art, patentability, patent searches, and costs. The document explains what a patent looks like, including the bibliographic information, abstract, description, claims, and drawings. It also summarizes the patent application and granting process at organizations like the European Patent Office.
2. Intent
• Understand why patents are important
• Type of intellectual properties
• Is an idea patentable?
• Aspects to consider before the application
• How to proceed ?
• Estimation of costs
• Content of a patent
• Understand why they are written the way that they are
written
• To be able to find patents
• Infringement, Freedom to operate (FTO)
3. Patent Definition
A right granted by the government to an
inventor to exclude others from making,
using, offering for sale or selling the
invention in the State or importing the
invention into the State for a limited period
of time.
12/2/2014 3
4. Overview of intellectual property
Legal right What for? How?
Copyright
Original creative or
artistic forms
Trade marks
Distinctive identification
of products or services
Use and/or
registration
Registered
designs
Registration*
Patents New inventions
Application and
examination
Exists automatically
Trade secrets
External appearance
Valuable information
not known to the public
Reasonable efforts
to keep secret
http://www.epo.org/learning-events/materials/kit/modules.html
5. 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®)
6. What 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 and 53 EPC in
http://www.epo.org/patents/law/legal-texts/epc.html
9. Rights 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!
13. 12/2/2014 13
Potential Prior Art
I work moving concrete blocks
around. I wear gloves out
frequently, but usually just the
fingers. This is a simple idea.
The extra finger stays beyond the
pinky, and when a finger is worn
out, take off the glove and put it
on again, but this time with all the
fingers in complete finger places.
That way, if you wear out one
finger, you don’t have to get a
new glove. It could also come
with a spare thumb. (schematics,
6/7/04)
14. Not everything that could
be patentable makes
business sense ….
Patent Strategy
15. What does a patent look like?
• Bibliographic information
– Inventor, proprietor, date of filing, technology class, etc.
• Abstract
– Around 150 words as a search aid for other patent applications
• Description
– Summary of prior art (i.e. the technology known to exist)
– The problem that the invention is supposed to solve
– An explanation and at least one way of carrying out the invention
• Claims
– Define the extent of patent protection
• Drawings
– Illustrate the claims and description
16.
17. Structure 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
18. What 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)
19. Inventorship / rights
• Those who contribute ideas that are embodied in the
claims
• Those who contribute ideas, but whose ideas don’t
make into claims are not inventors
Important : To be an inventor is nice
but more important is
To have the rights of use the invention!!!
=> consider: licensing agreements
20. • Exclusivity enables
investment and higher
returns on investment
• Strong, enforceable legal
right
• Makes invention tradable
(licensing)
• Reveals invention
to competitors
(after 18 months)
• Can be expensive
• Patent enforceable only
after grant (this can take
4-5 years)
Advantages and disadvantages of patenting
Advantages Disadvantages
22. Patenting Costs (in kCHF)
(dependent from case to case)
Priority Application 10
Foreign Filings
(EP, CA, US, JP) 30
Costs up to grant 70
(EP (DE, FR, GB, IT, ES), CA, US, JP)
Annuities 0 – 10 J. 15
10 – 15 J. 25
15 – 20 J. 60
Sum: 210
23. 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!
25. Searching patents
• Patents are not written to be found; they are
written to be defended in court
• If anything, they are written so that they are
not found easily
27. Searching patents
• A patent is a defensive tool, so think defensively:
– a fence is not needed if you can scare off intruders before
they trespass
– think like someone planning a static defense
• hiding is more important than being seen
• if seen, however, look strong
• try to attract attention to a falsity (a trap)
• devise a redoubt ahead of time
• plan a secret escape route
• keep in mind that people do leave key ingredients out of recipes
28. Five basic patent searches
• Application number
• Patent number
• Assignee name
• Inventor name
• Subject search
29. Searching for patents can be easy ...
Free worldwide patent information is available at
http://worldwide.espacenet.com/
30. … but some basic knowledge is needed!
Beware of "naïve" keyword searches such as ...
"Energy storing means"
Spring
32. "Spherical object with floppy
filaments"
Toy ball
Sometimes, the applicant simply doesn't want his patent to be found …
33. "A plurality of balls"
Sometimes, the applicant simply doesn't want his patent to be found …
Ball bearing
34. Patent Clearance
Before you produce and market a product, it is important to
determine third-party IP rights, which you could infringe with
your product or a process it involves
entrepreneur & investor perspective:
a) A sound patent portfolio is required to protect your
developments and to block your competitors. If the patent
is not grated yet, the analysis of the search report gives and
indication about patentability.
b) A freedom to operate (FTO) analysis is requested
35. Patent Clearance
- ensuring that our products do not infringe 3rd party patents
Patent
Searches
Technical
Screening
Legal
Analysis
Product
Analysis
Decide
Actions on
critical Patents
& Implement
Potential Actions on critical Patents:
- Avoid / circumvent -> design changes ( -> pre-clearance )
- Destroy the Patents -> only possible if „invalid“
- Take a license -> reduces profit / sometimes not possible
- Cross-licensing -> attractive patent portfolio needed
- Take the risk -> in view of injunction only if patent is invalid
=> Sound Patent Clearance is imperative to our business
36. International patent organizations
• Patent Cooperation Treaty (PCT)
– Over 100 countries
– Most filings in English
• European Patent Office (EPO)
– Major European countries
– File in English, French, German
• Miscellaneous others (ARIPO, etc.)
37. The patent procedure at the EPO
Application
Search
report
Publication
of application
Publication
of grant
Opposition
period
expires
Withdraw?
18 months
Approx. 4-5 years 9 months
Optional
