Building a Competitive Edge Protecting Inventions by Utility

Building a Competitive Edge: Protecting Inventions by Utility Models and/or Patents Casey K. Chan National University of Singapore IP Academy of Singapore

Topics Covered o o o Economic Commercial Perspective Patentability and Specification Introduction to Claim Structure Proprietary position and FTO Practical Tips

Increasingly, wealth of a nation is measured by ownership of intellectual properties rather than by ownership of hard assets.

Paul Romer Graduate School of Business at Stanford University Fellow at the Hoover Institute o Classical Economy n o Tangible Capital New Growth Economy n Intangible Capital

Types of Intellectual Properties o Trade Secrets - No regulation o Patents – Regulated o Trademarks – Regulated o Copyright - Regulated

Freedom to Operate – FTO Proprietary Position

New Product Development User Spec IP Assessment IP Protection

Economic Perspective o o Patents -- legal ownership of intellectual properties Incentive for Inventors Quid pro quo - grant in exchange for disclosures Right to exclude others to use and/or manufacture the invention

Types of Patent o Utility Patents - machine, process, composition of matter o Design Patents - ornamental design o Plant - distinct and new variety of asexually reproduced plant

Should I file a Patent? Where and When

When should you file a patent? o o Because it is a brilliant idea -- No Because of commercial potential -- Yes n Competitive advantage (unfair advantage) n Barrier to entry in market place

Criteria o Patentability o Commercial Potential o Enthusiasm of Inventor

Commercial Potential Co 1 Accuracy Sensitivity Efficiency Speed Automatable Reproducibility Cost Nu. Product Co 2

Commercial Potential Business Model Nu. Product Market Applications Very Broad Initial Targeted Applications >$750 Million Product Development Cycle Short: 6 – 12 Months Commercialization Pathway Multiple Channels Direct + “Nu. Product Inside” Manufacturing Complexity Low – Repackaging Projected Gross Margins >65% Projected Time to Profitability Q 4, ‘ 04

Where should you file your patent? o o Patent law is jurisdictional File in country where the market is largest File in countries it is cost effective n Customer per $ patent cost File in countries where you are prepared to enforce infringement

Worldwide Market for Medical Device Asia Pacific 20% Americas 5% USA 50% Europe 25% Source: Tucker Anthony

European Market for Medical Device The Big Four constitute 75% of Europe’s market: France Germany Italy Gt Britain Source: Tucker Anthony

One strategy Clearing House (12 Months) National Phase (18 Months) Europe Local + US Application PCT Application Japan China EU Chap II Delay to 30 mths JP CN

Utility Patent - 5 statutory classes 1. 2. 3. 4. 5. Processes (Methods) Machines (Devices and Apparatus) Manufactures -- “articles of manufacture” e. g. transistors, floppy disks, etc Composition of matter New uses of above

Utility Patent – Three Types In practice this is all you need to remember 1. 2. 3. Method Apparatus Composition of matter

Requirements for Patentability 1. New and Novel 2. Useful 3. Non-obvious

1. New and Novel (No “Prior Art”) o o o Commercially available Public Disclosure o Publication in journals, magazines, abstracts o Posting on the Internet o Oral or Poster Presentation at symposium or seminar o Material made available to public at university library o Demonstration at trade shows, to visitors Confidential Disclosure Agreement

2. Utility o o o Must have a useful function If device does not work no use to inventor anyway Prevent pre-emptive filing of Composition of Matter e. g. new chemicals, new drugs, new gene with no known function

2. Utility – New Guidelines o o o Credible Specific Substantial

3. Obviousness o o Obvious to those “ordinary skill in the arts” What makes an invention non-obvious 1. Unexpected results 2. Previous publication stated that it cannot be done 3. Have to go through a series of experimentation to arrive at invention

What Cannot be Patented? o Arrangements of printed matter o Methods of doing business ? o Obvious devices o Perpetual motion machines o o Nuclear weapons of mass destruction Laws of nature or scientific principles (must have “embodiment”)

Actual Cost of Filing US$ 10, 000 to 15, 000 o o o o Preparation Time Patent Search Drawings Attorney’s Fee Filing Fees Maintenance Fee Legal Defense

Legal jargons o “prior art” o “ordinary skill in the art” o “embodiment” o “new teachings”

Specification of a Patent Broad claims “less is more” New teachings Background & Prior Art Claims Definition “more is better”

Anatomy of a peer review paper o o o Title Introduction Materials and Methods Results Discussion Conclusion

Anatomy of a Patent o o o o o Title Field Of The Invention Specifications Background Of The Invention Objects Of The Invention Summary Of The Invention Brief Description Of The Drawings Detailed Description Of The Preferred Embodiments Modifications Of The Preferred Embodiments Claims This is the right you own!

1807 – Prior Art - Unicycle A B 1827 - My Invention - Bicycle D A B C Z Elements B A C D

Your Invention: Definition B A C D Z Independent Claim Your Claim: A B D A A B C Competitor’s Product: D C B A C Infringement ? = NO E B E C

Your Invention: Definition B A C D Z Independent Claim Your Claim: A B D C Competitor’s Product: A B C E Infringement ? = YES ! Dependent Claim B A C D

Five Types of Claims o Independent Claim (3) n Apparatus n Method n o Your Invention Composition of Matter Dependent Claim (2) n Additional element n Restriction of an element Z Definition B A C D

A 1807 – Prior Art - Unicycle B 1827 - My Invention - Bicycle D A B C Z Elements B A C D

Your Invention: Z Definition B A C D D Independent Claim Your Claim: A B B C Competitor’s Product: A Infringement ? = A D B C A C E NO B E C

Your Invention: Z Definition B A C D Independent Claim Your Claim: A B A C Competitor’s Product: A Dependent Claim C B E Infringement ? = YES ! D

Five Types of Claims o Independent Claim (3) n n Method n o Apparatus Composition of Matter Dependent Claim (2) n Additional element n Restriction of an element Z Your Invention Definition D B A C

One Hand Rule of Claims 1 2

One Hand Rule of Claims 1

Freedom to Operate is determined by: o o What are competitors’ patent claims Unclaimed prior art Patent B n Patent specification n Published work Claim B Patent A Claim A My FTO Publication C

Proprietary Position is determined by: o o What are my patent claims My Trade Secrets Trade secrets My Patent B Claim B Competitor’s FTO My Patent A Claim C My Patent C

Initial patent review o o Front Page n Patent Number and Title n Applicant (s), Assignee n Issued Date/ File Date n Class and Field of Search n Attorney, Examiner n References (Referring Patents) n Abstract n Representative Drawing Back Page n Claims (First claim most important)

Utility model o o Not the same as “utility patent” Parallel second tier patent systems Foster indigenous invention and innovative activities Petty patents, innovation patents, utility model

Types of Patent and Duration US o o o Utility (20 y) Design (14 y) Plant (20 y) China o o o Inventions (20 y) Indus designs (10 y) Utility models (10 y)

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