Professional Documents
Culture Documents
Patents: What?
Patents
Protect technical inventions A patent is an exclusive right allowing the owner to prevent third parties from doing certain things in respect of the claimed invention:- making - using - selling (offering to sell) - importing - keeping Patent lasts for 20 years from filing date Territorial nature of patents Post-grant infringement and validity usually judged in national courts
Patents as a monopoly
The monopoly or scope of protection is defined by the claims: Products/articles/compositions Processes/methods/uses Careful claim drafting required to maximise scope of protection
Patents: How?
Patentability Requirements
1) Novelty
In Europe, there is an absolute novelty requirement At date of filing, invention must not have been made available to the public :
- in any way - in any language - at any time - anywhere - by anyone
Examples:- Academic paper - Publication of an abstract on internet - Public presentation or lecture - Poster at a conference - Open discussions at a conference - PhD Thesis - Sale of a product - Non-confidential use of a product
Confidentiality
Invention must be confidential before application filed Be careful what you disclose & what you keep secret Difficult in academia due to collaborations with other institutions Take care when trying to attract funding, writing grant proposals & promoting your work Use a confidentiality agreement if disclosing to 3rd parties Err on the side of caution and disclose nothing until a patent application has been filed
2) Inventive Step
Invention must not be obvious over the prior art and common general knowledge Prior art is everything that was in the public domain before the patent application was filed Inventive step is arguable:- Unexpected or surprising result? - Use of non-routine techniques? - Not obvious to try?
Inventorship
Important to sort this out at the outset The inventor is the actual deviser of the invention May be a team, consider, e.g. - Academics professors, lecturers, post-docs, post-grads, PhD students, undergrads, students - Consultants - External contractors - Employees - Company directors Multi-disciplinary teams becoming more common
Ownership
The owner depends on the relationship between inventor(s) and other parties involved Usually owned by employer ( employed to invent? ) Contract? In academia, the university usually owns the IP IP may subsequently be assigned from university to spin-out
0 months File UK application (1.5k-4k) +12 months File international (PCT) application (3k-5k) +15 months International Search & Written Opinion (200) +18 months International publication
+31 months File European application All designations (3.5k) +60 months GRANT OF EUROPEAN PATENT Complete formalities and register NATIONALLY (500-5k per country) For example:Austria France Germany Italy The Netherlands UK
+30/31 months File national applications (1k-5k each) For example:Australia Brazil Canada China India Japan Russia USA
Is invention new?
Yes or maybe
No
Is it inventive?
Yes or maybe
No
When to patent
No
No
No
No
Patents: Why?
Uses of Patents
When to file?
A serious commercial opportunity is likely to require filing a patent application, even if ultimately obtaining patent protection may be challenging File patent application
Do not file patent application However, if the commercial opportunity is small, a patent application may not be justified, even if the invention is eminently patentable
Investing in IP
Due diligence
Much more than simply listing a company s IP portfolio An assessment of:(i) the strength of a company s IP; (ii) the strength of your competitor s rights Crucial to getting funding
6.
7. 8. 9.
Freedom-to-operate
Look for any dominating patent rights You may require a licence to even work in your area Consider cross-licensing If you have to pay royalties, this may make your commercial venture economically unviable Without clearance for the market you wish to enter, there is always a significant risk that you will be barred, or at least have to pay a royalty stack to proceed with your business
Summary
A patent is an exclusive right allowing you to prevent a third party from working your invention BUT, you need freedom-to-operate to work the invention yourself File patent applications where commercial opportunities are good, even if ultimately obtaining broad protection may be difficult Novelty, inventive step, industrial application, sufficiency and support Important to get inventorship & ownership issues right at outset Due diligence will be carried out on your patent portfolio, so think ahead Be clear about your commercial aims
Anton Hutter BSc MSc PhD CPA EPA Chartered & European Patent Attorney Venner Shipley LLP 200 Aldersgate London EC1A 7HD Tel: 020 7600 4212 Fax: 020 7600 4188 E: ahutter@vennershipley.co.uk W: www.vennershipley.co.uk