Tse patents 2014

Patents

The Smart Entrepreneur

Patents

Protectability

Copyright of Bart Clarysse and Sabrina KieferThe Smart Entrepreneur

What is a patent?

• A patent is a deal with the state– Fully disclose your new idea and you get a limited-time monopoly

• It provides a Civil law right to prevent others from using your idea

• Even once granted, a patent can be challenged by competitors at any time until it expires 20 years later

• Relates to geographic territories – you must file in different countries (or the EU) to receive protection in each country


Patents

• Unlike other rights, a patent protects effect of product, not image, appearance or expression

• A well crafted patent can give monopoly rights to a business in its area

• A patent is expensive but there are cheaper preparatory steps

• Once granted, a patent gives a product and a company legitimacy in the eyes of prospective investors and partners


Basic patent rules

To qualify for a patent, a product must be considered

• Novel/ new

• An ‘inventive step’

• Capable of industrial application


• Must not form part of the “State of the Art”“The State of the art in the case of an invention shall be taken to comprise all matter

(whether a product, a process, information about either, or anything else) which has at any time before the priority date of that invention been made available to the public (whether in the United Kingdom or elsewhere) by written or oral description, by use or in any other way”

• In other words, your invention must be kept secret until the application is filed, so beware:

» Theses» Seminars» Conference papers» Public use

Can all constitute the current state of the art. Be careful what you disclose before filing for a patent.

• Also note that your idea may already have been conceived and protected by someone else; you can do a patent search to determine if there is any ‘Prior art’, and you should also check other literature (as above) for disclosure of similar inventions (see ‘Freedom to Operate’).

Patent rules: ‘Novelty’


Patent rules: ‘Inventive step’ and ‘Industrial Application’

• “Inventive Step”: Not obvious to a person skilled in the art

• “Capable of Industrial Application”:Can be made or used in any kind of industry, including agriculture


Patent rules - exclusions

• What is excluded from protection– Discoveries, scientific theories, mathematical methods, aesthetic creations – schemes, rules and methods for performing mental acts, playing games or doing

business (such as management or teaching methods)– presentations of information (see copyright)– computer programs (source code – see copyright)– plant and animal varieties– Inventions likely to encourage offensive, immoral or anti-social behaviour

• If you are unsure about the patentability of your product, consult a patent attorney


UK: Patents

• What is protected– New products and processes which are inventions involving an inventive step

and capable of industrial application

• Nature of right– Monopoly right

• Form of registration– Registration at Patent Office


UK: Patents

• Duration of protection– Twenty years from application but may be subject to compulsory licensing if

invention not being worked in the EU or if EU demand for product not met

• Owner– Inventor (or employer) or someone deriving right from inventor

• Governing legislation– Patents Act 1977


Six reasons to patent

• protection of products and services• protection of R&D investments• securing monopoly for future exploitation• generating cash by (cross-)licensing • creating bargaining chips (in case of infringement, to acquire

technology)• attractiveness to investors and banks


European Patent

• What? 1 centralised application- and granting procedure in 1 language and with, if

necessary, 1 patent attorney, interesting if from 3-4 countries on...• Who?

Juridical and natural persons - residents in EC Non-residents need to use a European patent attorney

• How? European Patent Office (Den Haag, Munich or Berlin)

• Examination? Newness Examination Examination in depth

• Average 3 to 5 years before patent is granted


Graphical Presentation

Priority

date

Application

date

Application tax

128,90 € (5200 Bef)

newness search

882,57 € (35.600 Bef)

tax conclusions (per concl)

41,65 € (1680 BEF)

priority year 1 m 18 m 24 m

Publication

application +

newness

search

Examination in depth

1455,13 € (58.700 Bef)

Yearly taxes

-quest for examination in depth + tax

- countries + tax

76,85 € (3100 Bef)/countryGranting + publication

+ translation taxes

728,81 €

(29.400 Bef)

Granting publication patentBundle

national patents

Yearly taxes

3d year:

389,19 € (15.700 Bef)

6th year :

728,81 € (29.400 Bef)

> 10th year :

1038,67 € (41.900 Bef)Copyright of Bart Clarysse and Sabrina Kiefer

The Smart Entrepreneur

Newness search

• The report gives a number of references (patents, publications, …) that might contain contaminating information

• Newness research deals with the scope of the conclusions

• Cited references are weighted

• The weight is articulated in symbols:» “X”: very relevant document, might block the inventiveness or newness of

the invention » “Y”: very relevant document, claimed invention is not new if this document

is combined with others and clear for the experts» “A”: state of the art, not relevant» “P”: document with later priority date


International Patent (PCT)

• What?» Centralised application procedure in 1 language for about 100 countries

• Advantages?» 1 language and 1 patent attorney» only after a response, in 20 or 30 months, do the patent granting

procedure (and costs) need to be initiated

• How?» Standardised sheet to be submitted to the DIE or the EPO


Two Routes

PCT - chapter 1• no examination in depth (central)• after 20 months, the national or European office(s) take(s) over

PCT - chapter 2• examination in depth (tentative)• after 30 months, the national or European office(s) take(s) over


PCT - graphical presentation

Application date

international patent

application

Application tax

494,55 € (19.950 Bef)

Tax newness search

1142,79 € (46.100 Bef)

1 m 9 m 10 m 12 m 28 m

International

newness search

30 m18 m

19 m

20 m

Tax countries

94,20 €/land

(3800 Bef/land)

International examination in depth (temporary)

Newness

search report

Possibility

to ask for examination

in depth

Publication

international

patent application

End date possibility to

ask for examination in

depth + tax

start national

phase PCT Chapter I

- treatment tax 149,23 € (6020 Bef)

- examination tax 1559,25 € (62.900 Bef)

Report temporary

examination in

depth

start national

phase PCT

Chapter II


Pitfalls: newness

- scientific journal

- presentation

- poster on a meeting

- public journal/newspaper

- interview on radio

- internet

NEWNESS (EU)

30.01.2002

application

02.01.2002

Publication of invention


- Grace period

NEWNESS (US-Canada-Japan)

02.01.2002

Publication

30.06.2002

Application Japan

31/12/2002

Application US, Canada

Pitfalls: newness


Differences US-rest of the world

FIRST-TO-FILE vs FIRST-TO-INVENT

• First-to-file (EU, most other countries): a patent is granted to the party that first filed the patent

• First-to-invent (US): a patent is granted to the one who invented first


Approximate costs – patents and trademarks

Patent EU Trade Mark

First 12 months £5,000 £1,500

Next 18 months £5,000 £1,500

At 30 months £10,000 or more £500 a year for monitoring

Lifetime £100,000 or more £1,500 every 10 years

Potential long-term benefits:Value of the Coca Cola TM: $70 billion!

Source: IP21 Ltd. www.ip21.co.uk


http://www.ip21.co.uk/

Tse patents 2014

Economy & Finance

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