PATENTS: WHAT YOU

SHOULD KNOW

June 8, 2006

Overview

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

What is a Patent?
A PATENT is a form of:
Intellectual property which is a creation of
the human mind that is protected by law in a
fashion similar to real property (e.g. a piece of
land). Intellectual property rights include:
Patents
Copyrights
Trademarks
Trade Secrets

to promote the progress of

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

What is a Patent?

A patent is the right of an individual or

company to profit from a particular
invention or unique manufacturing process,
and must be registered in each country in
which they wish that invention or process
to be protected by law.
Once registered, a person can grant to a
third party a license to exploit the invention
or process in return for the payment of a
fee usually known as a royalty

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

Making, Using, Selling, Offering to sell or

Importing into the country a patented
invention.
A domestic patent only provides these
exclusive rights in the country itself.
A patent does NOT necessarily give the owner
the right to practice the patent, because of
others potential prior patent rights.
Like any other form of property, a patent can be
bought, sold, licensed or mortgaged.

A Dominating Patent
Patent 6,123,456
A method for making a chair
comprising:
1) Step A Your Patent
A method for making a
chair comprising:
1) Step A
2) Step B and
3) Step C

Why Patent?

Patenting is Prestigious

I did it!
And I was first!

Easy Publication no editors.

Licensing possibilities.
Recoup expenditure on R&D
Expanded collaborations.
Commercial advantage over
competitors
Provide valuable trading assets to help
assure freedom to operate

What is Patentable?
. . . Anything under
the sun that is made
by man.

Whoever invents or discovers any new and useful

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

Specific Examples of
Patentable Subject Matter

Machine screwdriver
Improved machine better
screwdriver
Compositions new drugs
Methods of making
Methods of Using
Methods of Treatment, e.g., a method
for treating a disease
Business Methods

What Cannot be Patented?

Only a few limitations:

An algorithm
A theory or scientific principle, e.g.
the Theory of Relativity
A human being

Who is Entitled to a Patent?

Patent Rights Awarded to the First to

Invent
Invention Consists of:
-

Conception - mental part of the inventive act

Reduction to Practice (RTP)

Actual RTP - Build or conduct claimed product/method

and verify that it works for its intended purpose
Constructive RTP - File patent application

Diligence - effort between conception and RTP

Planning for Successful

Patent Protection

Keep and maintain good laboratory

notebooks
Routinely sign and date your notebook
even prior to actually accomplishing your
objective
Have records witnessed with signature
and date by an objective witness a noninventor

When to Patent?
1) Identify Innovation
2) Evaluate Research, Product
Development, etc.

What are the Requirements

for a Patent?

New or Novel (Not already known)

Not Obvious
Utility (Useful)
Written Description (Details of the invention)
Enabled (Must describe how to make and
use the invention)
Best Mode (The preferred way of practicing
the invention known to the inventors as of
the filing date)

Potential Barring Activities

Public use before date of invention

Patent or publication before date of invention
Publication more than one year before filing
Public use more than one year before filing
Sale or offer for sale more than one year
before filing

Planning for Successful

Patent Protection
1) Identify Innovation
2) Evaluate Research, Product
Development
NEXT:
3) Invention Disclosure Form
4) Interact with Tech Transfer Office
5) Prepare disclosure
6) Patent application prepared

Two Basic Parts to a Patent

Application specification

the description must provide sufficient

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

Claims

defines the invention being protected

Possible Patent Application

Filing 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)

What is a Provisional
Application?

Establishes a filing date (earliest

priority date)
Examination process does not begin
Clock does not start running on lifetime
of patent
Has simpler filing requirements
Lower filing fees
Claims are not required

Duty of Disclosure

File Information Disclosure Statement

Duty on applicants, attorneys and anyone

substantively involved in the patent
application process to disclose all
material information that they are aware
of to the Patent Office
No duty to search
Duty continues until issuance
Failure to comply may render patent
unenforceable

Patent Application Process

(2-5 Years on Average?)
1.
2.
3.
4.
5.
6.
7.
8.
9.
10.
11.
12.
13.

Conceive the invention

Write the application
File the application
Meet the application formalities e.g., declaration, formal
drawings
Examination process begins
Restriction requirement issued sometimes
Substantive Office Action issued
Reply filed (usually there will be multiple iterations of this
and the above step before an allowance is obtained)
Appeal filed
Application Allowed
Pay necessary fees file continuations?
Patent issues
Pay Maintenance Fees

Too much to do?

Patenting is easy.

Inventing is tough.

IPR in international news

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.

We have a long way to go

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.

His patent gave him the

right to burn any ship
borrowing his design for
three years.

Need for IPR

Essential Panchasheel
Creativity

Entrepreneurship

IPR

Success

Invention

Innovation

What IP can do for you

Wealth creation
Legitimate ownership
Monopoly market advantage
Entry into the big league
Bargaining power
Talent attraction
Collaborations
Image of a trustworthy organisation
Stay in business and keep others out!

Infringement

Direct
Infringement

Valid
Steal

Contributory
or induced
Infringement

Vicarious Infringement

Types of Infringement

Direct

It is wholesale reproduction
and distribution of protected
works

Contributory

It occurs when someone

knowingly encourages
infringing activity
When 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

Vicarious

Ignorance no excuse!

How to deal with infringement?

How to deal with infringement?

Offender

Defender

Identify Your Position

What should you do with the infringer?

Its all about money, not emotions

What should you expect out of an

infringement suit?
Must work out a solution

Dont be intent on
destroying the infringer

How to deal with an offender?

Take action at the earliest

Do your homework
Assess whether you are in the right
Make sure notice has been served
Offer a way out without compromising your
business
Study the history of your own firm as well as that
of the offender
Court of law
Deal objectively, not emotionally

IP Generation and valuation

Resources for Successful IP Generation

Breaking out mindset
Tools for inventive creativity
Interrogator
Writing abilities
Managements
encouragement
(moral and
financial)

What is the value of an IP?

Value?

Single IP may or may not carry much/any value, a carefully

constructed portfolio will normally carry high value

Wiggle your way out

IP competitive strategies
M&M

M&M M&M

M&M

M&M

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

Build A Fortress

M&M

Live and let live

Sony, Samsung to share patents

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

Forming Strategic Alliances

IP and Exports
Firstly, IP is an important consideration for :
Pricing of the product will partly depend on
the extent to which the trademark is
recognized and valued by consumers, and the
extent to which product will face competition
from rival products

Adaptation of product / brand / design /

packaging, will involve creative or inventive
work that may be protected through the IP
system

IP and Exports

In raising funds, patents, but also

trademarks may be important for
convincing investors, venture
capitalists, etc.

In agreements with local partners

it will be important to clarify issues of
ownership of IP rights, particularly if
the product will be manufactured,
packaged or modified abroad

IP and Exports

Marketing and advertising campaigns

will rely strongly on the brand/trademark
which if unprotected would be much more
difficult to enforce

The timing of participation in fairs may

be affected by the timing of your
applications for IP protection

IP and Exports

Secondly, protecting IP in export markets

may help a company to prevent others
from imitating or copying the product
(or parts of it) without authorization.

Thirdly, IP protection may enable a

company to access new markets through
licensing, franchising, joint ventures
or other contractual agreements with other
companies.

IP and Exports

Fourthly, failure to consider IP issues

may result in fatal losses if your
products are considered to be
infringing the rights of others
Exporters often realize the
importance of protecting their IP
once it is too late: e.g. once they
have missed the deadlines for
application or once their product
or brand has been copied.

Points to Remember for

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

Copyright and related rights:

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

Points to Remember
IP laws and procedures are not
identical world-wide
Example 1: trademark protection use vs.
registration
Example 2: first-to-file system for patents
vs. first-to-invent system
Example 3: software protection (copyright
vs. patents)
Example 4: designs or works of applied art
(copyright vs. industrial design protection)

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

Example 1: the same trademark may already

exist in the export market
Example 2: it is possible that a given
technology is not patented in your country but
is patented elsewhere
Example 3: you may have a license to use a
given technology in your own country, but you
do not have the right to use it in an export
market

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