This document provides an overview of intellectual property fundamentals, including the different types of IP rights like patents, trademarks, designs, and copyrights. It discusses the origins of patent systems from ancient Greece and Venice. The presentation covers the patent filing process, patent structure and components, and concludes with advantages and disadvantages of patenting versus alternatives like secrecy or publishing.

1. Fundamentals of IP
Francesco Maria Colacino, Ph.D. MBA
College of Engineering and Physical Sciences
University of Birmingham
f.colacino@bham.ac.uk
12 November 2013

2. Agenda
• The Patent System: Origins and Rationale
• Reasons to Engage with Patents
• The Different Types of Intellectual Property
Rights (IPRs)
• Patent Filing Process
• Patent Structure
• Conclusion
November 2013
Francesco M. Colacino
2

3. Disclosure
• Some of the material has been provided by
the European Patent Office (EPO)
• Where EPO’s material has been used with no
modifications the EPO logo will be shown
• Where changes have been made to the
original material the EPO is not responsible for
the correctness of any such modified version…
….Blame me!
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Francesco M. Colacino
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4. The First Account of a “Patent System"
In the ancient Greek city of Sybaris (destroyed in 510
BC), leaders decreed:
"If a cook invents a delicious new dish, no other cook is to
be permitted to prepare that dish for one year.
During this time, only the inventor shall reap the
commercial profits from his dish. This will motivate
others to work hard and compete in such inventions."
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Francesco M. Colacino
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5. Sibari
(Sybaris)
Naples
Sibari
(Sybaris)
Cosenza
Calabria
Copyrights: Wikimedia Commons
November 2013
Francesco
was born
here!!
(Corigliano
Calabro)
Sicily
Francesco M. Colacino
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6. The Patent System
Senate of Venice, 1474:
"Any person in this city who makes any new and ingenious
contrivance, not made heretofore in our dominion, shall, as
soon as it is perfected so that it can be used and exercised,
give notice of the same to our State Judicial Office, it being
forbidden up to 10 years for any other person in any
territory of ours to make a contrivance in the form and
resemblance thereof".
Today:
New to the world; up to 20 years of protection
Main Objectives:
Incentive to innovate
Incentive to share knowledge
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(grant protection)
(publish the invention's details)
Francesco M. Colacino
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7. The “Social Contract” in the Patent System
Get
exclusivity
Reveal
invention
… so that others can learn from it
and improve upon it!
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Francesco M. Colacino
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8. Other reasons to Engage with Patents
Patents focus on
HOW THINGS WORK
Published in
Patents
20%
Published
Elsewhere
80%
Scientific articles focus on
SCIENTIFIC CONTRIBUTION
Source: Empirical Studies
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Francesco M. Colacino
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9. Other reasons to Engage with Patents
Protected
10%
90%
Free to use
Source: EPO
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Francesco M. Colacino
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10. Other reasons to Engage with Patents
• To see if anyone has developed technology like yours
• To find other inventors working in your field
• To find other companies active in your field
• To find new ideas for solving your technical problems
• To develop new products
• To develop new business directions
• To evaluate the state of the art
• To avoid infringing
• To assess freedom to operate
OR…
• Nothing in particular, you just like browsing patents!
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Francesco M. Colacino
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11. Type of IPR
What for?
Length of Protection
How?
Products and processes which are novel, involve a non-obvious
inventive step and are capable of industrial application. There are a
number of excluded classes such as mathematical algorithms,
mathematical theories and the like.
20 years from date of
filing
Application
and
Examination
Any sign capable of graphic representation that allows the
customer to recognise the goods and services of one undertaking
from those of another. A sign can include, for example, words,
logos, colours, slogans, pictures, three-dimensional shapes,
sounds, gestures or a combination of these.
Renewable every 10
years on payment of
renewal fees, with no
maximum time limit
Registration
Registered
Designs
An internal or external aspect of design (not the way how a
product works) which is "new" and has "individual character" or
"eye appeal". It is a right for the appearance of the whole or a part
of a product resulting from the features of, in particular, the lines,
contours, colours, shape, texture or materials of the product or its
ornamentation.
Renewable every 5
years up to a
maximum of 25 years
Registration
Copyrights ©
Original literary, dramatic, musical and artistic works, sound
recordings, films, broadcasts, cable programmes and typographical
arrangements. Copyright also protects computer programs and
computer source code.
General rule is the
life of the author plus
70 years
Exists
automatically
(in the UK)
Trade Marks ™
Same as registered Trademarks
No maximum time
limit. It may be
difficult to prove
infringement (passing
off)
Use
Unregistered
Design Rights
Any original aspect of shape or configuration may be whole or part
of an article whether it is the interior or exterior
15 years from
creation or 10 years
from first marketing
Use
Trade Secrets
Any confidential information/know how that is not known to the
public, more valuable if not know to the public and subject to
reasonable efforts to maintain the secrecy
Till it is not disclosed
NDAs
Patents
Registered
Registered
Trade Marks ®
Unregistered
Unregistered

12. Registered
• novel
• Involve non-obvious inventive step
• capable of industrial application
(also called technical effect)
IP Star
Patents
Trade
Secrets
Designs
IP
Trade
Marks
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Francesco M. Colacino
Copyrights
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13. Patents found in a mobile phone
© Nokia
• Sliding mechanism
• Semiconductor circuits
• Chemical compounds
•…
Patents
Trade
Secrets
Designs
IP
Trade
Marks
November 2013
Francesco M. Colacino
Copyrights
13

14. IP Star
Registered or Unregistered
An internal or external aspect of
design (not the way how a product
works) which is "new" and has
"individual character" or "eye appeal"
Patents
Trade
Secrets
Designs
IP
Trade
Marks
November 2013
Francesco M. Colacino
Copyrights
14

15. Designs found in a mobile phone
© Nokia
• Sliding mechanism
•Semiconductor circuits
• Chemical compounds
•…
Patents
Trade
Secrets
Designs
IP
Trade
Marks
November 2013
Francesco M. Colacino
• Form of overall phone
• Arrangement of
buttons in oval shape
• Three-dimensional
wave form of buttons
•…
Copyrights
15

16. IP Star
Patents
Trade
Secrets
Designs
IP
Trade
Marks
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Francesco M. Colacino
Unregistered
Original literary, dramatic, musical
and artistic works, sound
recordings, films, broadcasts, cable
programmes , computer programs
and computer source code
Copyrights
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17. Copyrights found in a mobile phone
© Nokia
• Sliding mechanism
•Semiconductor circuits
• Chemical compounds
•…
Patents
Trade
Secrets
Designs
IP
Trade
Marks
November 2013
Francesco M. Colacino
Copyrights
• Form of overall phone
• Arrangement of
buttons in oval shape
• Three-dimensional
wave form of buttons
•…
• Software code
• Instruction manual
• Ringtone
•…
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18. IP Star
Patents
Trade
Registered or Unregistered Secrets
Any sign capable of graphic
representation that allows the
customer to recognise the goods and
services of one undertaking from those
of another (e.g.
words, logos, colours, slogans, pictures
, three-dimensional
shapes, sounds, gestures or a
Trade
combination of these)
Designs
IP
Marks
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Francesco M. Colacino
Copyrights
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19. Trade Marks found in a mobile phone
© Nokia
• Sliding mechanism
•Semiconductor circuits
• Chemical compounds
•…
Patents
Trade
Secrets
Designs
IP
• Made by "Nokia"
• Product "N95"
• Software "Symbian“, …
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Trade
Marks
Francesco M. Colacino
Copyrights
• Form of overall phone
• Arrangement of
buttons in oval shape
• Three-dimensional
wave form of buttons
•…
• Software code
• Instruction manual
• Ringtone
•…
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20. IP Star
Unregistered
Any confidential information/know
how that is not known to the public,
more valuable if not know to the public
and subject to reasonable efforts to
maintain the secrecy
Patents
Trade
Secrets
Designs
IP
Trade
Marks
November 2013
Francesco M. Colacino
Copyrights
20

21. Trade Secrets found in a mobile phone
© Nokia
• Sliding mechanism
•Semiconductor circuits
• Chemical compounds
•…
Patents
?
Trade
Secrets
Designs
IP
• Made by "Nokia"
• Product "N95"
• Software "Symbian", "Java"
November 2013
Trade
Marks
Francesco M. Colacino
Copyrights
• Form of overall phone
• Arrangement of
buttons in oval shape
• Three-dimensional
wave form of buttons
•…
• Software code
• Instruction manual
• Ringtone
•…
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22. Rights Conferred by a patent
The patent does not grant the right to use the invention!...
….but stops others from doing so
• 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
• A patent search is indispensable before starting development in order not to
waste time and effort
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Francesco M. Colacino
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23. Filing Process
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)
• Seek professional advice soon!
• File before others do!... Not just file early.
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Francesco M. Colacino
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24. What the Patent Attorney Needs
•
•
•
•
•
•
•
Invention Summary
Prior Art
Differences and Advantages
Experimental Details
Figures, Drawings, Sequences
Applicant(s), Inventor(s)
Publication plans
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Francesco M. Colacino
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25. Filing Process - Overview
12 months
Priority
(Provisional)
Application (GB)
First Year After Filing
• Priority date established
• Further supporting experimental
work
• Search results (if requested)
• Publish or not? Possibility to
withdraw
• Supplemental application(s)?
• Commercial goals
• Identify Countries where
protection is required
PCT Application
18 months
OR
12 months
Advantages of PCT Routes
• Delays decision on countries to
cover
• Delays costs (but slightly more
expensive overall)
• Good search report
• One patent application for up to
around 141 states
National/Regional
Phase Applications
National
Patents
Granted
National Examination and Grant
• National examination
procedures
– Rounds of examination, reports and
responses
– Refusal and Acceptance
– Appeals
• Grant Processes
• Post Grant Procedures
• Maintenance & Renewal fees
Protection Overseas
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26. Filing Process - Overview
Accumulated
Costs
£5,000
£10,000
“Provisional” Patent Application at
UK IPO or EPO or US PTO
0
12
Months
12 months
PCT Patent Application at WIPO
18
months
£21,000£35,000
Accumulated
Time
Withdraw? 18 months
National Phase Filings
30 months
From 3
months
£24,000£75,000
£30,000£120,000
£30,000£1.5 mil
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Examination of National Phase
Filings (£1k-£5k per territory)
Granted Patents in Specific
Countries (grant fee £0-£4k per territory)
Patent maintained whilst in use
To 6
years
Up to 8.5 yrs
Annual
Renewals
Up to 20 yrs
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27. What Does a Patent Look Like?
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Francesco M. Colacino
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28. Patent
Journal Article
Bibliographic Information
Bibliographic Information
•
•
Inventor, proprietor, date of filing, technology
class, etc.
Authors, affiliations, date of
submission/acceptance, key words, etc.
Abstract
Abstract
•
•
Around 150 words as a search aid for patent
applications
A 150/200 words excerpt of the paper to quickly
navigate its content
Description
Introduction
• 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
• Summary of the state of art (i.e. the science
known to exist)
• The rationale for the research
Materials and Methods
• How experiments have been performed
Results
• The outcomes of the experiments (usually with
plots and pictures)
Claims
Discussion
• Define the extent of the Patent protection
• Results and methods are discussed highlighting
limitations/potentials of the research
• A pathway to carry out future work is usually
explained
Drawings
Conclusion
• Illustrate claims and description and help with
their understanding
• Main findings are summarised
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29. A Patent Front Page
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Francesco M. Colacino
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30. … But do not be too Naïve in searching
for Patents
Common Language
Patent Jargon
• Spring
• Energy storage device
Sometimes the applicant does not want his/her patent to be found…
• Ball bearing
• A plurality of balls
Sometimes the jargon is used to broaden the scope of the patent…
• Portable HD
November 2013
• Data storage carrier
Francesco M. Colacino
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31. Conclusion
Advantages and Disadvantages of Patenting
(… or IPRs in general)
Advantages
Disadvantages (mainly for patents)
• Exclusivity enables
investment and higher
returns on investment
• Reveals invention
to competitors
(after 18 months)
• Strong, enforceable legal
right
• Can be expensive
• Makes invention tradable
(licensing)
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• Patent enforceable only
after grant (this can take
4-5 years)
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32. Conclusion
Alternatives to Patenting
Information disclosure (publishing)
• Cheap
• Prevents others from patenting
the same invention
• Does not offer exclusivity
• Reveals the invention to
competitors
Secrecy (creating a trade secret)
• Cheap (but there is the cost of
maintaining secrecy)
• Does not reveal the invention
• No protection against reverseengineering/duplication of
invention
• Difficult to enforce
• "Secrets" often leak quite fast
Do nothing
• No effort required
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• Does not offer exclusivity
• Competitors will often learn details
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33. References
• www.ipo.gov.uk - Official government body responsible
for granting Intellectual Property (IP) rights in the
United Kingdom, including patents, trade marks, and
copyright.
• www.epo.org - The official website of the European
Patent Office (EPO)
• www.uspto.gov - Home page of the United States
Patent and Trademark Office's main web site.
• www.wipo.int - WIPO (World Intellectual Property
Organization) is responsible for the promotion of the
protection of intellectual property throughout the
world through cooperation among States.
*Links are being made to other pages containing material that is copyright of third parties.
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