Patents-Prince Sattam Bin Abdulaziz University 1 Patents: What you should know Dr. Mazen Alshaaer...

Patents-Prince Sattam Bin Abdulaziz University 1

Patents: What you should know

Dr. Mazen Alshaaer1/11/2015

Prince Sattam bin Abdulaziz University

Outlines

• IP rights• Inventions• Patent• Utility models• Innovation process


Types of Intellectual Property

• Patents• Copyrights• Trademarks• Trade Secrets

IP in Summary

Law Covers Registration Duration

Patent Technical Yes 20 years

Utility Model Technical Yes 10 years

Design Look Yes/No 5 x 5 years

TrademarkBrand name of

product or service

Yes/No10 years x for

ever

CopyrightArtistic and

literary works/software

Nolife + 70 years

thereafterPatents-Prince Sattam Bin Abdulaziz University 4

What is a Patent?

You can say it is:• An agreement between the

inventor and society

Alternative definition (legal):• A patent is an exclusive right to

commercially exploit the invention in this country. Protection up to 20 years

• Forbid others commercially to:• produce, sell, work, use, • import, possess the invention


Criteria – Legal Standards• Novelty

• Does not exist in the prior art• Not previously disclosed to public• OK if Modification/Improvement of an existing product/process, or use of something “old” in new/different way

• Usefulness - Utility - Performs a useful function• Non-obviousness

• Non-trivial - It would not have been obvious to one skilled in the art to combine multiple items in the public domain to arrive at or show the invention • Not Engineer’s normal sense of “obviousness”!

• Enabled

6

Why patent?

To• provide insurance for one’s invention and investments in

developing technology• prevent others from patenting the invention and secure

one’s place in the market• attract investors for further development, and to hold on to

current investors• sell the patent rights in the future as a single commodity or

business• marketing value


Why do we want people to eventually use our inventions?

Someone may make your invention even better!

1) Set a goal, dream, imagine!

2) Write it down!

3) Experiment, develop, modify and construct your invention.

4) It’s a SECRET!

So...how do you “invent”?

Who is an Inventor?

• A person who alone or in conjunction with others makes a material contribution to the conception of an invention (conceived the idea)

• A person who reduces the conception to practice if it requires extraordinary skill

• Non-Inventors: • Persons who implement the ideas of others• Persons who have obtained the entire idea of an

invention from another are not inventors• Persons who suggest concepts without contributing to

the means for carrying out the suggestion (“Wouldn’t it be nice if….”)

10

What can be patented?• “Everything under the sun made by man.”

• Products: things• Processes: ways to make things• Methods: ways to do things• Improvements: better things

• Defined Classes• Article of Manufacture• Machine• Composition• Process

• Some more:• Business Methods • Services • Software

11

What Is Not Patentable

• Laws of nature (wind, gravity)

• Physical phenomena (sand, water)

• Abstract ideas (mathematics, a philosophy)

• Anything not useful, Novel and Non-Obvious (perpetual motion machine)

• Inventions which are offensive to public morality or designed for an illegal activity

12

Contrary to moral standards?


Inventions are often concerned with every-day problems or “trends”


The patentable invention must be:

• Capable of industrial application

• New / Novelty

• Significantly different from that which is already known


Industrial application

• The invention must have at least one practical purpose and must be reproducible

• There is no evaluation of quality or economical factors!

• Only the technical qualities are relevant


Novelty

• Novelty: An objective, global demand

• New in relation to that which is known prior to the date of filing the application

• Known = general availability through the written word, spoken word (lectures, etc.), usage, etc.

• Disclosure agreement


What are the Parts of a Patent?

• Abstract• Background of the Invention • Summary of the Invention• Figures with brief descriptions• Detailed description or

“specification”• Fully discloses what the invention is• How it is made?• How it can be used?

• Claim(s): sets the legal boundaries of protection

• Independent• Dependent

Types of Patents

Type Is for Term

Utility Function, use

20 years

Design Appearance 14 years

Plant Reproduced 20 years

19

DISCLOSURE INITIALPUBLICATION

RE-EVALUATION RE-EVALUATIONRE-EVALUATION

Overview of Pathway to Commercialization

FILE PROVISIONAL

APPLICATION (~$10k)

EVALUATION

3 MONTHS

FILE PCT(~$25K)

PCTPUBLICATION

8 MONTHS

12 MONTHS 6 MONTHS 12 MONTHS

ENTER NATIONAL PHASE & PROSECUTION (~$20k)

RARELY GET THIS FAR

W/O LICENSEE

PATENTABILITY &MARKETING EVALUATION

MARKETING/SEARCH FOR LICENSEE

GENERATE NCD

ADDITIONAL PUBLICATIONS W/INTERESTING ANIMAL DATA,

PROTOTYPING, FURTHERCOMMERCIALIZATION

The Patent Process

04/21/23 21

Allowance

Invention:


Documents found:


Invention:


Documents found:


In

vent

ive

step

?

What are the chances of obtaining a patent?

Source: AUTM 2006 survey

Royalty Income to US Academic Institutions

$0

$200

$400

$600

$800

$1,000

$1,200

$1,400

$1,600

1980 1985 1990 1995 2000

Ro

ya

lty

Inc

om

e (

$ m

illio

n)

How much money can be generated by a patent license?

Source: A. Stevens, les Nouvelles, 38, 133-140, September 2003; AUTM Annual Survey

Design Patent Example

28

Utility Model

• The ”Patent-system” for smaller inventions

• Conditions:•Solve a technical problem•New•Inventive step

• Often used for inventions concerning:•Household goods•Hand tools•Furniture


Why a Utility Model?

• Protects minor inventions excluded from patent protection• Protects inventions where a shorter protection period is

required• Speedy protection• Easy• Cheap


Utility Patent

04/21/23 31

Utility Patent

04/21/23 32

How old do you have to be?

Recent kids’ inventions

Patent Examiners by Technical Discipline

04/21/23 35

International patent systems

Basic principle:• Patent in each country

The systems:• Patent Cooperation Treaty (PCT)• European Patent Convention (EPC)• Other regional systems (OAPI, ARIPO,

EURASIAN)


European Patent (EPC)

• Single place of filing

• Single place of

completion

• Single place of

granting

• More economical than

group of countries


Patent Cooperation Treaty (PCT)

• Single place of filing• International novelty and

patentability search• Finial decision for countries


Saudi Patent Office(RO/SA)

• The modified Law of Patents, Layout Designs of Integrated Circuits, Plant Varieties, and Industrial Designs was issued by the Royal Decree No. (M/27) dated 17/7/2004 and was published in the Official Gazette (Om Alqura) in 7/8/2004, and became effective as of 5/9/2004.

• A patent is an exclusive protection document granted for an invention.

• An invention is an idea developed by the inventor that results in a solution of a certain problem in the field of technology.


Saudi Patent Office(RO/SA)2013


•Applications: 928•Granted patents: 233•Rejected: 361•Withdrawn: 344

Consequences of infriging

If you infringe someone else’s patent, you may risk:• Injunction, which means that all your products may be

removed from the market• Destruction of your products • Paying damages to the patent owner• Being given a fine, e.g. the Kodak vs. Polaroid case• Being sentenced to imprisonment (in gross cases)


Recent Patent Verdicts & SettlementsOr – Why it is really important?

• Alcatel/ Lucent v. Microsoft. - (2007) - $1.5 Billion

• NTP – Settled with RIM for $612M (plus $53M litigation plus verdict)

• Intergraph – over $880M in settlement from patent litigation with Intel, HP and others

• Eolas v. Microsoft (2003). $506M Jury verdict

• Immersion v. Sony (2004). $82M jury verdict plus royalties• increased (2007) to $150M• vibration game controller - Microsoft settlement on $26

• Freedom Wireless v. BCGI (2005) $128 jury verdict

• Finisar v DirectTV (2006). 103M (79+24)Jury verdict plus injunction

• Tivo v. EchoStar (2006). $74M jury verdict plus injunction

• Acacia - $60M in licensing revenue (2004-2006)

• Forgent - $100M in licensing revenue 2004-2006

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Thank you for your attention!


Patents-Prince Sattam Bin Abdulaziz University 1 Patents: What you should know Dr. Mazen Alshaaer...

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