Conference on Intellectual Property Rights for SMEs organized by by zy636H

VIEWS: 8 PAGES: 55

									              Conference
                  on
Intellectual Property Rights for SMEs

                   organized by TAIEX
in co-operation with WIPO and the Turkish Patent Institute
              Istanbul, 10 – 11 January 2005


        Building a Competitive Edge:
          Protecting Inventions by
Utility Models and/or Patents: Case Studies

                      Karl Rackette
                       Freiburg, Germany
                       2005@rackette.de
Building a Competitive Edge: Protecting Inventions by Utility Models and/or Patents: Case Studies   2
Building a Competitive Edge: Protecting Inventions by Utility Models and/or Patents: Case Studies   3
             Travel Iron US Patent 4,524,263




Building a Competitive Edge: Protecting Inventions by Utility Models and/or Patents: Case Studies   4
             Travel Iron US Patent 4,524,263




Building a Competitive Edge: Protecting Inventions by Utility Models and/or Patents: Case Studies   5
             Travel Iron US Patent 4,524,263




Building a Competitive Edge: Protecting Inventions by Utility Models and/or Patents: Case Studies   6
             Travel Iron US Patent 4,524,263




Building a Competitive Edge: Protecting Inventions by Utility Models and/or Patents: Case Studies   7
             Travel Iron US Patent 4,524,263




Building a Competitive Edge: Protecting Inventions by Utility Models and/or Patents: Case Studies   8
             Travel Iron US Patent 4,524,263




Building a Competitive Edge: Protecting Inventions by Utility Models and/or Patents: Case Studies   9
                      Identifying an Invention


           • What is the new invention?

           • What is the desired scope of protection?

           • Where is the protection needed?




Building a Competitive Edge: Protecting Inventions by Utility Models and/or Patents: Case Studies   10
                  Questions to the Inventor for
                   Identifying the Invention


• How is the invention constructed?

• How does it work?

• Is there any critical feature for an effective solution to
  the problem underlying the invention?




  Building a Competitive Edge: Protecting Inventions by Utility Models and/or Patents: Case Studies   11
                Questions to the Inventor for
                Identifying the Invention (2)

• What are the effects of the features of the
  invention?
• How else may these effects be achieved?
• Why do you think that the invention is new?
• What state of the art or what prior art do you
  know?
• What is the closest or most pertinent prior art in
  your opinion?
• What is the most important difference between
  the closest prior art and the new invention?

Building a Competitive Edge: Protecting Inventions by Utility Models and/or Patents: Case Studies   12
                  Questions to the Inventor for
                  Identifying the Invention (3)


• What advantages does the invention have over the
  the closest prior art due to that most important
  difference?
• What is the problem that is solved by the invention
  due to that difference?
• How and why does the invention solve this problem?
• Which of the new features of the invention makes the
  solution possible?
• How is the problem solved in the prior art?

  Building a Competitive Edge: Protecting Inventions by Utility Models and/or Patents: Case Studies   13
                  Questions to the Inventor for
                  Identifying the Invention (4)


• What arguments could one put forward to a patent
  examiner in a patent office or a judge in a court to
  show that the invention is not obvious to other
  experts?

• What do you want to prevent competitors from doing?

• How could a competitor design around the new
  invention?

  Building a Competitive Edge: Protecting Inventions by Utility Models and/or Patents: Case Studies   14
                Questions to the Inventor for
                Identifying the Invention (5)


  • Do you intend to use the invention in your own
    business?

  • Are you planning to sell or license your invention?

  • Where do you want to get a patent?




Building a Competitive Edge: Protecting Inventions by Utility Models and/or Patents: Case Studies   15
 Basic Idea Underlying the Patent System

In exchange
• for a limited-term right
   – to exclude others
         • from making, using or selling the claimed invention
               – in the territory covered by the patent right,


• the inventor must provide
   – a complete and accurate public description
         (and in the USA the best mode of "practicing" it).


Building a Competitive Edge: Protecting Inventions by Utility Models and/or Patents: Case Studies   16
                          Who Grants Patents?

A patent is granted for a limited territory by a
• national patent office
  or by a
• regional office that does the work for a number of
  countries, such as the
   –   European Patent Office,
   –   Eurasian Patent Organization
   –   African Regional Industrial Property Organization
   –   Organisation Africane de la Proprieté Industrielle


  Building a Competitive Edge: Protecting Inventions by Utility Models and/or Patents: Case Studies   17
                                           Patent

  A patent is a right granted and published
  for any device, substance, method or process,
  which is
  new,
  involves an inventive step and
  is susceptible of industrial application.




Building a Competitive Edge: Protecting Inventions by Utility Models and/or Patents: Case Studies   18
       Protecting Innovations by Utility Model

•   Similar to patent
•   Sometimes called „petty patent“, „innovation patent“
•   Shorter term of protection (between 7 and 10 years)
•   Only examination as to form
•   No examination as to substance prior to registration
•   Simpler faster registration process
•   Cheaper to obtain and to maintain
•   Less stringent „inventive step“ requirements than for
    patents

    Building a Competitive Edge: Protecting Inventions by Utility Models and/or Patents: Case Studies   19
     Protecting Innovations by Utility Model

• Primarily for mechanical innovations
• Only for certain fields of technology and only for
  products but not for processes
• Particularly suited for for SMEs that make „minor“
  improvements
• Only a small number of countries provide the option
  of utility model protection e.g. Australia, Austria,
  Belgium, China, France, Germany, Italy, Japan,
  Malaysia, Philippines, Korea, Turkey etc.


  Building a Competitive Edge: Protecting Inventions by Utility Models and/or Patents: Case Studies   20
                      What Can Be Patented?

 Patents shall be available for any inventions,
 • whether products or processes,
 • in all fields of technology
 provided that they are

       – new
       – involve an inventive step
       – and are capable of industrial application.



Building a Competitive Edge: Protecting Inventions by Utility Models and/or Patents: Case Studies   21
                                         Novelty


                    An invention is new

                    if it has

                    not been publicly disclosed

                    in any form, anywhere in the world.


Building a Competitive Edge: Protecting Inventions by Utility Models and/or Patents: Case Studies   22
                                 Inventive Step


   The inventive step means

   that the invention is not obvious

   to someone with knowledge and experience in
   the technological field of the invention.




Building a Competitive Edge: Protecting Inventions by Utility Models and/or Patents: Case Studies   23
What Can NOT Be Protected in the European
             Patent Office?
 • Discoveries
 • Scientific theories
 • Mathematical methods
 • Aesthetic creations
 • Methods for performing mental acts
 • Methods for treatment of the human body by
   surgery or therapy and diagnostic methods
 • (Computer programs, business methods as
   such)


 Building a Competitive Edge: Protecting Inventions by Utility Models and/or Patents: Case Studies   24
         Patented Black Forest Cake Cutter




Building a Competitive Edge: Protecting Inventions by Utility Models and/or Patents: Case Studies   25
     German Published Patent Application




Building a Competitive Edge: Protecting Inventions by Utility Models and/or Patents: Case Studies   26
     German Published Patent Application




    TRANSLATION:
    In a cake cutter having an essentially U-shaped piece (1),
    a cutting wire (5) is stretched between a first limb (2) and
    a second limb (3) and has a plurality of elevations and
    recesses.The elevations and recesses may be formed by
    teeth, indentations or undulations. Preferably, the cutting
    wire is twisted round itself, about its own longitudinal axis,
    with a plurality of turns.
Building a Competitive Edge: Protecting Inventions by Utility Models and/or Patents: Case Studies   27
In a cake cutter having an essentially U-shaped piece (1), a cutting
wire (5) is stretched between a first limb (2) and a second limb (3) and
has a plurality of elevations and recesses.The elevations and recesses
may be formed by teeth, indentations or undulations. Preferably, the
cutting wire is twisted round itself, about its own longitudinal axis, with
a plurality of turns.
  Building a Competitive Edge: Protecting Inventions by Utility Models and/or Patents: Case Studies   28
                Patents From Filing to Grant



                •    filing of an application
                •    examination as to formalities
                •    prior art search
                •    examination as to substance
                •    grant and publication

                     (enforcement of patent protection)


Building a Competitive Edge: Protecting Inventions by Utility Models and/or Patents: Case Studies   29
                When Do You Need To File?


   • A patent application must be filed as soon as
     possible after the invention is completed.



   • "Premature disclosure" may bar patentability.




Building a Competitive Edge: Protecting Inventions by Utility Models and/or Patents: Case Studies   30
                     How Is a Patent Granted?
• The first step in securing a patent is the filing of a
  patent application.
• The patent application generally contains the title of
  the invention, as well as an indication of its
  technical field; it must include the background and
  a description of the invention, in clear language and
  enough detail that an individual with an average
  understanding of the field could use or reproduce the
  invention.



 Building a Competitive Edge: Protecting Inventions by Utility Models and/or Patents: Case Studies   31
                  Disclosure of the Invention
                Article 83 European Patent Convention

 The European patent application must
 disclose the invention in a manner

 sufficiently clear and complete

 for it to be carried out by a person skilled in the art.




Building a Competitive Edge: Protecting Inventions by Utility Models and/or Patents: Case Studies   32
            Article 123(2) EPC- Amendments



(2) A European patent application or a European
patent
may not be amended
in such a way that it contains subject-matter
which extends beyond the content of the
application as filed.




Building a Competitive Edge: Protecting Inventions by Utility Models and/or Patents: Case Studies   33
                    How Is a Patent Granted?

• Descriptions are usually accompanied by visual
  materials such as drawings, plans, or diagrams to
  better describe the invention.

• The application also contains various "claims", that
  is, information which determines the extent of
  protection granted by the patent.




Building a Competitive Edge: Protecting Inventions by Utility Models and/or Patents: Case Studies   34
                                          Claims
A series of numbered statements in a patent
specification, usually following the description, that
define the invention and establish the scope of
the monopoly conferred by the patent.

At least one such statement (usually the first) will be
self contained - this is known as an independent
claim.

Others - known as dependent claims - refer to
previous claims and using wording such as
”... as claimed in claim 1 or claim 2...”
Building a Competitive Edge: Protecting Inventions by Utility Models and/or Patents: Case Studies   35
                                Value of a Patent

• Ultimately, it is the claims which will dictate the value
  of the patent.

• Even if the invention is described, if it is not covered
  by the claims, there are no patent rights.

• The applicant, however, will ultimately attempt to
  retain in the application the broadest claims since the
  eventual commercial potential will be based on the
  breadth of the invention.

  Building a Competitive Edge: Protecting Inventions by Utility Models and/or Patents: Case Studies   36
                How Do You Get Protection?
                                               Part 1


 • Identify the invention after its submission
       – Discussion with the inventor(s)
       – Ask questions
          • Prior art (patent searches made?)
             – Deficiencies of the prior art
          • Problem to be solved
          • Solution proposed
          • Possible modifications
          • Possible infringements




Building a Competitive Edge: Protecting Inventions by Utility Models and/or Patents: Case Studies   37
                  How Do You Get Protection?
                                                 Part 2


• Preparing a patent application
   – Decide which drawings show the invention
   – Draft (a) broad independent claim(s)
   – Draft a number of dependent claims
      • for preferred embodiments of the invention
      • for alternatives
      • for what will keep infringers away from the market




  Building a Competitive Edge: Protecting Inventions by Utility Models and/or Patents: Case Studies   38
                  How Do You Get Protection?
                                                 Part 3


• Draft a description
   – State the title
   – Specify the technical field
   – Indicate the background art (cite the documents)
   – Disclose the invention as claimed (problem, solution,
     advantageous effects)
   – Briefly describe the figures in the drawings
   – Set forth at least the best mode for carrying out the
     invention (preferred embodiment)




  Building a Competitive Edge: Protecting Inventions by Utility Models and/or Patents: Case Studies   39
                 How Do You Get Protection?
                                                Part 4


• Filing a patent application
   – Review the claims (novel? inventive? scope!!!$$$)
   – Finalize the drawings
   – Prepare the filing documents after review by the inventor
      • Abstract
      • Designation of inventor
      • Application form (designation of states in which protection
         is desired)
   – File a request with the application papers and pay the fees at
     a national or regional patent office




 Building a Competitive Edge: Protecting Inventions by Utility Models and/or Patents: Case Studies   40
                 How Do You Get Protection?
                                                Part 5



• Prosecuting a patent application
    – Request search / examination
    – Amend claims / description (withdrawal to avoid
      publication?)
    – Convince the examiner
       • Clarity of claims
       • Original disclosure of the invention
       • Novelty of the claims
       • Inventive step



 Building a Competitive Edge: Protecting Inventions by Utility Models and/or Patents: Case Studies   41
                 How Do You Get Protection?
                                                Part 6


• Grant of the patent

    – The patentee from now on is entitled to exclude
      competitors from making use of the claimed invention for
      a limited time span (protection)

    – The public gets full information about the new invention
      so that everybody may make use of it after the patent has
      expired (printed publication)


• Maintenance (annual fees to keep the patent in force)

 Building a Competitive Edge: Protecting Inventions by Utility Models and/or Patents: Case Studies   42
  Filing a Utility Model or Patent Application

• first filing at Office in home country

• later filing abroad (claiming priority)
   – national patent / utility model
   – regional patent / utility model
   – international patent application




  Building a Competitive Edge: Protecting Inventions by Utility Models and/or Patents: Case Studies   43
                     Swiss Patent for Fischer




Building a Competitive Edge: Protecting Inventions by Utility Models and/or Patents: Case Studies   44
                       Arcuate Helical Spring




Building a Competitive Edge: Protecting Inventions by Utility Models and/or Patents: Case Studies   45
           Inefficient Arcuate Helical Spring




Building a Competitive Edge: Protecting Inventions by Utility Models and/or Patents: Case Studies   46
    Helical Spring Driven in Sliding Motion




Building a Competitive Edge: Protecting Inventions by Utility Models and/or Patents: Case Studies   47
                              Daar Mechanism




Building a Competitive Edge: Protecting Inventions by Utility Models and/or Patents: Case Studies   48
         Complicated Hair Plucking Device




Building a Competitive Edge: Protecting Inventions by Utility Models and/or Patents: Case Studies   49
                            The Epilady Patent




Building a Competitive Edge: Protecting Inventions by Utility Models and/or Patents: Case Studies   50
                         Depilatory Apparatus




Building a Competitive Edge: Protecting Inventions by Utility Models and/or Patents: Case Studies   51
                     Helical Spring Employed




Building a Competitive Edge: Protecting Inventions by Utility Models and/or Patents: Case Studies   52
                            Infringing Device?




Building a Competitive Edge: Protecting Inventions by Utility Models and/or Patents: Case Studies   53
                        Rubber Rod With Slits




Building a Competitive Edge: Protecting Inventions by Utility Models and/or Patents: Case Studies   54
                              THE END

                       Thank you
                       for your attention!


Building a Competitive Edge: Protecting Inventions by Utility Models and/or Patents: Case Studies   55

								
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