Protecting Exploiting Inventions Module 1 A Patents

Protecting & Exploiting Inventions Module 1 A Patents – Utility Models – Supplementary Protection Certificates Name of speaker ip 4 inno Venue & date 1

ip 4 inno is brought to you by: • European Commission, DG Enterprise & Industry • European Patent Office • 19 consortium partners in the first ip 4 inno project This particular module was revised by: www. ipcg. com with funding from the EC and EPO ip 4 inno 2

The Disclaimer This training material concerns intellectual property and business strategies only in general terms. This training material should not be relied upon when taking specific business or legal decisions. Rather, professional advice should be obtained which suits the circumstances in question. ip 4 inno 3

Agenda • • Introduction (exercise) Patents (exercise) Utility Models Supplementary Protection Certificates/Plant Varieties Use of IP in business and IP Strategy (exercise) Case Study Summary ip 4 inno 4

Goals for Today This module is designed to: 1. Introduce IP rights comprising Patents, Utility Models, and Supplemental Protection Certificates, including: – what they are – why they are important – how to get them 2. Discuss the importance of having an IP strategy 3. Show IP can be used to protect innovation ip 4 inno 5

Introduction to Intellectual Property • Intellectual property (IP or IPR) refers to the rights one has to intangible assets, e. g. creations of the mind, such as: – – – Ideas Thoughts Creations Writings Drawings ip 4 inno 6

Why is IP important? You Opportunity Others Create IP that makes you attractive for investment or to get partners Identify strong partners through IP competitive intelligence IP Strategy Risk ip 4 inno Establish IP that protects your products/ services/ name from being imitated Ensure that you have freedom to operate before launch to prevent infringement, unfair use 7

Why is IP important? • IP enables creativity to be protected, and clearly establishes who owns what • IP can be licensed or sold • It can be a key negotiating tool - a "deal-maker" • IP will attract investment • IP appears as an asset on the company accounts, even if other parts of the business get into trouble • IP is a source of information and knowledge • IP presents both opportunities and risks which are to be exploited or avoided – strategy is key! ip 4 inno 8

Myth - IP is just for large companies Fact - SME’s need to be IP savvy • Most SME’s have IP that they are unaware of… – Customer lists, designs, logos, brand names, etc. • SME’s need to know about: – Their own IP (to leverage it / protect it) – Others’ IP (to avoid infringement) • Some industries thrive off IP, where IP can help SME’s to position themselves for investments / buyout, e. g. Biotechnology, Communications ip 4 inno 9

Where does IP come from? + Ideas / Thoughts ip 4 inno = Creativity: Problem solving in an unusual way Intellectual Assets • Inventions • Works of art • Writings, etc. Note: not all intellectual assets can be protected with IP 10

Industrial Property Inventions Brands, logos Designs Patents, UMs Reg. TMs Reg. Designs These are registered rights. The inventor, creator or designer has no rights until they make a registration. Others can check if rights exist, and who owns them, by looking at the register. ip 4 inno

Intellectual Property Inventions Brands, logos Designs Patents, UMs Reg. TMs Reg. Designs Musical, dramatic, literary & artistic works Databases Reputation / Goodwill Designs ip 4 inno Copyright Database right Unreg. TMs Unreg. Designs These rights are unregistered - they exist from the moment the works are created. Ownership is harder to clarify without a register. The registered & unregistered rights together are called intellectual property.

Intellectual Assets Inventions Brands, logos Designs Patents, UMs Reg. TMs Reg. Designs Musical, dramatic, Copyright literary & artistic works Database right Reputation / Goodwill Unreg. TMs Designs Unreg. Designs The formal registered & unregis-tered rights, when combined with this third group of "soft IP", are known collectively as intellectual assets. ip 4 inno Know-how Trade secrets Confidential information Restrictive covenants Confidentiality agreements

One product – many IP rights • Reg. Designs for phone shape • Reg. Trade Mark - "NOKIA" & start-up tone • Copyright - software, ringtones & images • Patents - for technology to produce and operate. image © NOKIA® Some pooled or cross-licensed, others kept exclusive • Trade secrets - some technical know-how kept "inhouse" and not published ip 4 inno

Agenda • • Introduction (exercise) Patents (exercise) Utility Models Supplementary Protection Certificates/Plant Varieties Use of IP in business and IP Strategy (exercise) Case Study Summary ip 4 inno 15

Overview of Patent Rights A patent rights can be viewed as an agreement between the inventor and society Patents protect technical inventions which solve technical problems – chemicals, products, equipment and apparatus – processes and methods ip 4 inno Patent #: EP 1180338 B 1 Title: Chair Assignee: KOKUYO CO. , LTD. 16

IP rights: what is a patent? • A patent is the right to exploit an invention - NO! • The right to exclude others from making, using, selling or importing an invention. It confers no enabling right. Electric kettle Kettle with ceramic heating element ip 4 inno

Sections of a Patent Front page of a patent • Patent number • Classification code • Filing date • Owner • Inventor(s) • Potential countries • Priority date • Title • Abstract ip 4 inno Description, claims, & drawings (if any) are on the following pages of the patent 18

Patent Sections (1 of 2) Note: Sections vary slightly across jurisdictions • • Field of the Invention Background of the Invention (Prior Art) Summary of the Invention Detailed Description of the Invention (Specification) Description of the Drawings or Figures Claims International Search Report ip 4 inno 19

Patent Sections (2 of 2) • Additional data is available from the patent wrapper (if available) and from electronic databases • Data fields include: Country Code § Document Kind § Document Type § Publication Year § Date of Publication § Date of First Publication § Date of Grant Publication § Application Number § Classifications (primary and all), including US, IPC, ECLA ip 4 inno § § § § § Priority Year(s) Priority Date Priority Country Priority Number PCT Application Number Patent Citations (all) Related Applications (all) Family Members (all) Legal Status 20

Patent Families • Patent families refer to a group of patents that are related to each other by way of priority of a particular patent document Example of a patent family D 6 with priority from D 1 D 2 with priority from D 1 Base patent D 4 with priorit y from D 1 D 5 with priority from D 4 D 3 with priority from D 1 ip 4 inno 21

What Patent Rights Do • Patent rights: – – – – Prevent others from using your inventions without permission Potentially prevent competitors from entering your market space Attract or retain investors / partners Gain time to further develop additional developing technology Add to marketing credibility Generate a price premium on products Add revenue streams through licensing or sale of IP rights ip 4 inno 22

Patentability (1 of 2) • What can be patented? – A product itself – The apparatus for producing the product – The process or method for producing the product – The use of the product ip 4 inno 23

Patentability (2 of 2) What cannot be patented? • • Computer programs** Mathematical methods Business methods* Medical and surgical treatments • Discoveries • New species of plant or animal • Inventions which are contrary to moral standards and public order (e. g. instruments of torture) • The human body and any non-separate part/s thereof* • Presentations of information • Scientific theories • Aesthetic creations *Note: This subject matter may be patentable in jurisdictions other than Europe **Note: Covered on next slide ip 4 inno 24

Patents for computer-implemented inventions • Software (source or object code) is protected by © • Inventions dependent upon software may be patented • Novel and inventive features must reside in the technical aspects of the invention, e. g. : – external effects (controlling a robot arm) – internal effects (data compression for better speed) • A new storyline or scenario for a computer game, implemented through entirely conventional hardware and software, would not be patentable. ip 4 inno

Patent Requirements A patentable invention must be: 1. Novel/New (Not already been disclosed to the public) 2. Contain an inventive step 3. Useful (e. g. Capable of industrial application) ip 4 inno 26

Patent Requirements: 1. Novel/New • New in relation to that which is known prior to the date of filing the application – Known = general availability through the written word (publications), spoken word (lectures, etc. ), usage, etc. • What is known prior can include public information that is available anywhere in the world • Important: Once you market or sell your invention it is considered to be made public. This may preclude the ability to obtain IP rights on the invention. ip 4 inno 27

Patent Requirements: 2. The Inventive Step • It is considered to be an inventive step if it solves a technical problem in a non-obvious way • Non-obvious is in relation to a person skilled in the same field as the invention ip 4 inno 28

Patent Requirements: 3. Industrial Application • The invention must have at least one practical purpose (e. g. industrial application) and must be reproducible – No evaluation of quality or economical factors! – Only the technical qualities are relevant ip 4 inno Patent #: EP 2072815 A 1 Title: System For Rotating A Wind Turbine Blade Assignee: Gamesa 29

What is a Patent Priority Right • A priority right refers to the point in time in which a patent… – Is looked at for the purposes of prior art – Is viewed for purposes of establishing the patent applications initial filing date ip 4 inno 30

Importance of Patent Priority Rights Priority right implications: – All rights tied to that application start from the date the priority rights were established. – You must file additional applications in other countries within 1 year from establishment of the priority right. This 1 year priority applies to countries that are party to the Paris Convention for the Protection of Industrial Property. ip 4 inno 31

Patent Priority Rights: Exercise • Companies X, Y, and Z all produce products involving elements a, b & c. Each of them have applied for patents rights for their respective products. The question is, if the patents are granted, what prohibitive rights may affect each company? – Scenario 1: Assume Company X applied for IP rights before Company Y – Scenario 2: Assume Company Y applied for IP rights before Company X + c a + b ip 4 inno a + b b + c Company X Company Y Company Z 32

Obtaining Patent Rights There are two types of systems governing the rightful owner of an invention and related patent • “First to File” – Gives patent rights to the applicant that filed the patent application first – Ignores when the invention was created – Used in all of the world except for the US • “First to Invent” – Gives patent rights to the applicant that first invented the invention – Filing order does not matter – proof of invention does – Only used in the US ip 4 inno 33

Where can I File a Patent Application 1. National patent can be used: – For protection in the home country market or in a few countries – As a basis for extending protection to other countries or regions 2. Regional or International patent applications can be used: – Regional patent application can be used for protection in a number of countries in the same region at a lower cost – International patent application can be used for protection in many countries and for extending the pre-publication period (up to 30 months) – Note: Both a regional patent application and/or an international patent application require an applicant to first file at a national patent office ip 4 inno 34

1. National Filings • In order to file internationally or regionally, the applicant first has to file at a national patent office • The initial patent filing at the national patent office will set the priority date for the international or regional filings (if the applicant chooses to do so) • Each national patent office has their own rules and review procedures • Filing at individual national patent office is a good strategy if only filing the patent application in one or two countries Germany France ip 4 inno 35

The Patent Application Process – National phase (1 of 2) Application Examination for classified material Application refused Formal examination Storage Search and examination Decision Application approved Publication A Further examination ip 4 inno Publication B Opposition Expiration after max. 20 years 36

The Patent Application Process – National phase (2 of 2) Optional Step: Filings due for. PCT/EP/More Countries Priority Year - file additional applications 0 Patent Refusal Appeal 2 months Refusal 12 6 18 Months from filing Further procedures Search and 1 st examination File Application ip 4 inno Opposition 9 months Patent Adm. Re-examination Publication 37

2. Regional & International Patent Systems Basic principle: • Easy way to file patent applications in multiple countries Regional systems: • European Patent Convention (EPC) • Other regional systems (OAPI, ARIPO, EURASIAN) International system: • Patent Cooperation Treaty (PCT) ip 4 inno 38

2 a. European Patent Convention (EPC) • • Single place of filing Single place of completion Single place of granting More economical than group of countries ip 4 inno 39

2 b. Patent Cooperation Treaty (PCT) • International novelty and patentability search • Single place of filing • Final decision for countries Main advantages: • One application place • One set of rules • Postponement for 30/31 months from priority date – this postponement allows for an applicant to have more time to consider which markets to enter ip 4 inno 40

Patent Application Process – PCT (1 of 2) Application RO/NO ISA RO/IB Functions: 1. Performs Search and opinion 1. Publication of ISR+WO 2. Transmits ISR+WO to IB and applicant Functions: 1. Collect fees 2. Receive appl. 3. Check formality 4. Transmits record copy to IB and search copy to ISA IB = International bureau (WIPO) RO/NO = Receiving office is national office RO/IB = Receiving office is International Bureau (WIPO) ISA = International searching authority IB Demand? IB NO Functions: YES 1. Establish IPRP and send to designated offices IB IPEA Functions: 1. Transmit copy of demand to IB+notify applicant 2. Performs WO/IPER 3. Transmit IPER to IB and applicant Transmit IPER to elected offices IPEA = International preliminary examination authority ip 4 inno 41

Patent Application Process – PCT (2 of 2) ip 4 inno 42

Participants in the Patent Application Process Step 1: Composition of application Step 2: File application Step 4 a: Reconstruction of application Inventor Attorney Patent Office Step 4: 1. Decision Step 6: Final Decision Step 3: 1. Examination Step 5: Further examination Step. 7: Publication & storage ip 4 inno 43

Which Route Should I Use 1. National route: – High up front costs for multiple national filings • Translations costs • Attorneys fees • No guarantee of clearing search report or making it to market 2. Regional or International route: – Reduced up-front costs for filing in multiple countries • EPC delays translation costs up until grant • PCT delays translations for 30/31 months • Delays fees until after search report and potentially up to market ip 4 inno 44

Agenda • • Introduction (exercise) Patents (exercise) Utility Models Supplementary Protection Certificates/Plant Varieties Use of IP in business and IP Strategy (exercise) Case Study Summary ip 4 inno 45

Utility Model – not quite a patent • The utility model: – Is an exclusive right – Grants protection for up to 10 years – Covers products not methods/processes/liquids – Protects minor inventions – Can be converted to a patent application A product … The assembling of … Model #: DE 202008015732 U 1 Invention: Fitting for fixing lightweight plate to e. g. wall Assignee: Hettich Beinze GMBH & CO Application Year: 2008 can be protected ip 4 inno cannot be protected 46

Front Page of a Utility Model It looks like a patent. The U in the publication number marks the utility model U as - utility - utilité - utilidad - utilità ip 4 inno 47

Possible consequences – "relative" novelty requirement Assume that a certain canvas chair is used at a hotel pool in Croatia. The chair is not described in public prints, especially not in Germany or Spain. Utility models may be granted for the same canvas chair in Germany and Spain. ip 4 inno 48

Example of a Utility Model – Book Marker ip 4 inno 49

How to Use a Utility Model Use utility model as a strategic weapon: • • • Protects minor inventions excluded from patent protection Protects inventions where a shorter protection period is required Speedy protection Easier to file Cheaper ip 4 inno 50

Requirements to get a Utility Model • Requirements for a Utility Model are similar to a patent: – It must be new/novel – It must involve an inventive step (in some countries this standard may be lower or not necessary, e. g. Turkey, Thailand) – It solve a technical problem • In contrast to a patent, in some countries the novelty requirement to obtain a utility model is "relative" (e. g. Germany, Spain) ip 4 inno 51

Application Process for a Utility Model The filing process is similar to a patent application: – Utility model application is filed at the national patent office – Can be filed using a PCT application – Have up to 12 months from filing nationally to file in other jurisdictions – Can file in multiple jurisdictions using PCT or at individual patent offices ip 4 inno 52

Where are Utility Models Available Countries and regions providing utility model protection are: Albania Angola Argentina ARIPO Armenia Aruba Australia Austria Azerbaijan Belarus Belize Brazil * Russian Federation Kuwait France Bolivia Slovakia Kyrgyzstan Georgia Bulgaria Spain Germany Laos Chile Taiwan Malaysia Greece China Tajikistan Guatemala Mexico Colombia Trinidad & Tobago Honduras OAPI Costa Rica Turkey Hungary Peru Czech Republic Ukraine Indonesia Philippines Denmark Uruguay Uzbekistan Poland Ireland Ecuador Portugal Italy Estonia Republic of Korea Japan Ethiopia Kazakhstan Republic of Moldova Finland Source: http: //www. wipo. int/sme/en/ip_business/utility_models/where. htm ip 4 inno 53

Agenda • • Introduction (exercise) Patents (exercise) Utility Models Supplementary Protection Certificates/Plant Varieties Use of IP in business and IP Strategy (exercise) Case Study Summary ip 4 inno 54

What are Supplementary Protection Certificates A supplementary protection certificate (SPC) is: • An extension of a patent under a specific, different, set of right for up to 5 years • Available for medicinal products • Introduced to compensate for the long time needed to obtain regulatory approval of these products ip 4 inno 55

What Supplementary Protection Certificates Protect SPC extend rights for products that are coming off patent provided they are either: – The “active ingredient”, or combination of active ingredients, of a “medicinal product”; or – The “active substance”, or combination of active substances, of a “plant protection product” ip 4 inno 56

How to get Supplementary Protection Certificates • All countries in the EU must provide supplementary protection certificates • No unified cross-recognition exists between countries • Applications must be filed individually at each national office where protection is sought ip 4 inno 57

What is Plant Variety Protection Plant Varieties • Varieties of all botanical genera and species, including, inter alia, hybrids between genera or species • Variety – a plant grouping within a single botanical taxon of the lowest known rank ip 4 inno 58

Agenda • • Introduction (exercise) Patents (exercise) Utility Models Supplementary Protection Certificates/Plant Varieties Use of IP in business and IP Strategy (exercise) Case Study Summary ip 4 inno 59

IP in Businesses use IP to… – Find partnerships/joint ventures – License out rights to gain revenue streams – Establish a competitive advantage in the marketplace – Prevent knockoffs or imitators – Invent-in-front of competitors What role does IP currently play in your business? How could you use it in the future? ip 4 inno 60

Specifically, why do businesses seek patents? Patents serve as: • licensing tools • negotiating chips & deal makers • assets on the company accounts • means to impress investors & share-holders • signposts to others in the market • means to scare or confuse rivals • means to prove ownership of ideas Patents not as an end in themselves; but as part of a broader strategy to make money ip 4 inno

What is Your IP Environment? It is important to understand… Questions Addressed by: • Is there IP in our industry? IP Research • Do our competitors use IP and how? • How should we use IP? • What types of IP fit with our culture? IP Strategy • Do we have a plan for enforcing our IP? ip 4 inno 62

IP Research (1 of 2) • Patent information is an invaluable source of research information; much of what appears in patents does not appear in academic and technical journals – Data is publicly available (e. g. http: //ep. espacenet. com/) • Most of what is published in patents is not protected, and is therefore free to use • Patent information is also a source of commercial information, leading to customers, suppliers and new partners, as well as warning about developments by rivals and changes in the market • Exploiting patent information is quite separate from owning, licensing and enforcing patents ip 4 inno 63

The esp@cenet database has over 65 million documents! http: //www. epo. org/patents/patent-information/free/espacenet. html ip 4 inno 64

IP Research (2 of 2) • IP research can help you understand how IP is used in your industry – Note: You can have market competitors and IP competitors. For instance, one of your competitors may have no IP but a company in a different industry could be filing for patents in your space • Therefore IP research should take multiple angles… – Search around your known competitors (are they IP savvy? ) – Search in your industry (find new IP competitors) – Search around your own IP (find potential partners or infringers) ip 4 inno 65

Advanced IP Research • IP research can also be used for more advanced competitive intelligence, such as: – Finding and/or researching potential partners – Reverse engineering competitors’ IP strategy from their IP activities – Monitoring the activity of key competitors (Predict competitor moves, e. g. companies typically secure a brand name, domain name, etc. before a product is launched) – Developing a new product or service – Preparing to enter a new market or geography – Researching potential employees (an innovative technical person may have patents or other IP) ip 4 inno 66

IP Research Serves Multiple Functions You Others Opportunity Find opportunities Understand where others are going, Find available prior art Risk Prevent or mitigate risks Know what others have protected ip 4 inno 67

What is an IP Strategy An IP strategy… • Starts with the business goals and business issues • Decides how you plan to use IP to support your business goals • Is informed by your own IP position and also competitors • Identifies IP gaps and strengths for you and competitors • Drives how you extract/seek potential IP, how you will evaluate it, and what type of protection you will seek once you get it • Determines how you will monitor and enforce your IP • Is supported by internal IP processes ip 4 inno 68

What makes a strong IP Strategy • Aligning it with your business strategy • Using multiple forms of IP • Keeping it current (periodic updates and revisiting it under unusual circumstances) • Executing it! It is a plan to be carried out, not a report to file away – Ensure that owners and deadlines are assigned • Communicating the strategy throughout the company – “This is why we have a trademark and here is how to use it” • Getting advice where/when it is needed ip 4 inno 69

Why a strong IP Strategy is Important • Allows businesses to use IP in a systematic and uniform fashion • Helps to prioritize resources, including: – Time & Money • Can lower risk • IP can be leveraged – to find partners, get better terms in a deal, out license for revenue, etc. ip 4 inno 70

Strategy point: Freedom to operate – how does someone else's IP affect us? • Technology already described in a published patent (or any other public source) may not later be the subject of a European patent. (Publication 18 months after filing!) • Just because it was described in an earlier patent, it does not necessarily bar you from using it • Only granted claims in force in the relevant territory are a potential barrier - Hopefully you can licence it! • Check that the person offering you IP is really the owner or authorised by the owner • Get warranties from contractors that their work is free from third party IP ip 4 inno

Strategy Point: When are patents needed? • Do you need a patent? – For products yes, but for processes…? Maybe not – Would “first-mover advantage” secure more market share? • Will you use the patent to block others? Can you afford litigation? Can you get litigation insurance? • Is your intention to licence? If so, does your patent explain how your technology fits with the products of your licensees? • Which technologies to (i) spin-out or (ii) licence out? • Do you have complementary know-how to tempt a licensee? ip 4 inno

Strategy point: When to file a patent? • File when the invention is ready to take on investment and/or enter the market. It might be only one of a hundred initial concepts to have survived this far. • Patent applications get expensive at certain key stages (e. g. +30 months in PCT) – so cash injections from investors or licensees must be timed accordingly. • If invention is not sufficiently developed to attract investment or achieve sales when the big patenting costs come around, then a cash crisis is inevitable. ip 4 inno

Strategy point: Motivations / Assumptions • Are you only filing because you want to publish an academic paper? Is that too early for investment? Just because it is "new" it does not mean it has a commercial application or that it is worth patenting! • Publish an application so as to spoil the later patenting ambitions of rivals (your application will be prior art against them) • Publish an application so as to attract investment • Be realistic in valuing your patent applications – they are rarely worth what they cost! Be prepared to abandon the application if it costs more money than it brings in. Be consistent in your valuation methods. ip 4 inno

Strategy point: Commercialization through Licensing • Technology in patents can be licensed in: someone else might have invented the solution you need, saving you the effort • Technology in your patents can be licensed out: use this to build partnerships. Licensees might have access to bigger markets (especially if your invention is a component in a larger product) • What sort of license? – – Exclusive (not even the patent owner may use) Sole (the patent owner may also still use) Non-exclusive (multiple licensees) Compulsory; license of right ip 4 inno

Strategy point: Enforcement • Litigation is very expensive – find alternatives • Be absolutely sure of the strength of your case – do more patent searches to check your patent is strong • Mediation and arbitration are confidential processes, and can lead to customised solutions • Sell licenses, even at reduced prices; offer complementary know-how ip 4 inno

An example of executing on an IP Strategy • Having IP can help to create opportunities, for example the pharma industry commonly out licenses IP to reach additional markets Patents • Amphocil® is an antifungal product owned by Three Rivers Utility Models GI Pharmaceutical LLC (Pennsylvania, USA). In 2007 Specialty European Pharma Ltd (SEP), London, UK, announced that it has obtained distribution rights to Amphocil® for Germany, France and Italy. At the same time other distributers hold rights to distribute the drug in Sweden, Austria and Portugal. Note: often the same drug is marketed under different names. For example Amphocil is marketed as Amphotec® in the U. S. ip 4 inno 77

How to develop an IP Strategy: Outline 1. Review your current business goals 2. Review your current IP portfolio 3. Determine which, if any, types of IP protection will help reach current business goals 4. Review competitor IP and their IP strategies 5. Determine where there is a gap in your IP protection that you need to fill or gap in your competitors’ IP that you can exploit 6. Extract and capture IP that already exists within your company 7. Review potential IP to see if it meets your business needs • • If so, consider appropriate type of IP and filing for protection If not, consider creating IP that does or acquiring external IP 8. Implement internal processes that allow for steps 1 – 7 to be repeated as needed ip 4 inno 78

Patents in Business: Exercise Participant • Inventor • Patent Attorney • Patent Office • Business Entity Match the participant on the left with the roles on the right: (Note: some roles may belong to multiple parties) ip 4 inno Activity • • • • Disclose methods of making the invention Draft a patent application Search prior art Decide what needs to be protected Draft patent claims Pay filing and maintenance costs Issue/Reject patent Disclose invention to patent attorney Consider appropriate jurisdictions for filing Interact with patent office Create alternative enablements of invention Review patent application Review invention for business relevance Monitor competitors for potential infringement 79

Patents in Business: Exercise Participant • Inventor • Patent Attorney • Patent Office • Business Entity Match the participant on the left with the roles on the right: (Note: some roles may belong to multiple parties) ip 4 inno Activity • • • • Disclose methods of making the invention Draft a patent application Search prior art Decide what needs to be protected Draft patent claims Pay filing and maintenance costs Issue/Reject patent Disclose invention to patent attorney Consider appropriate jurisdictions for filing Interact with patent office Create alternative enablements of invention Review patent application Review invention for business relevance Monitor competitors for potential infringement 80

Patents in Business: Exercise Participant • Inventor • Patent Attorney • Patent Office • Business Entity Match the participant on the left with the roles on the right: (Note: some roles may belong to multiple parties) ip 4 inno Activity • • • • Disclose methods of making the invention Draft a patent application Search prior art Decide what needs to be protected Draft patent claims Pay filing and maintenance costs Issue/Reject patent Disclose invention to patent attorney Consider appropriate jurisdictions for filing Interact with patent office Create alternative enablements of invention Review patent application Review invention for business relevance Monitor competitors for potential infringement 81

Patents in Business: Exercise Participant • Inventor • Patent Attorney • Patent Office • Business Entity Match the participant on the left with the roles on the right: (Note: some roles may belong to multiple parties) ip 4 inno Activity • • • • Disclose methods of making the invention Draft a patent application Search prior art Decide what needs to be protected Draft patent claims Pay filing and maintenance costs Issue/Reject patent Disclose invention to patent attorney Consider appropriate jurisdictions for filing Interact with patent office Create alternative enablements of invention Review patent application Review invention for business relevance Monitor competitors for potential infringement 82

Patents in Business: Exercise Participant • Inventor • Patent Attorney • Patent Office • Business Entity Match the participant on the left with the roles on the right: (Note: some roles may belong to multiple parties) ip 4 inno Activity • • • • Disclose methods of making the invention Draft a patent application Search prior art Decide what needs to be protected Draft patent claims Pay filing and maintenance costs Issue/Reject patent Disclose invention to patent attorney Consider appropriate jurisdictions for filing Interact with patent office Create alternative enablements of invention Review patent application Review invention for business relevance Monitor competitors for potential infringement 83

Agenda • • Introduction (exercise) Patents (exercise) Utility Models Supplementary Protection Certificates/Plant Varieties Use of IP in business and IP Strategy (exercise) Case Study Summary ip 4 inno 84

Case Study: A New Paintbrush Holder In this case study, we will… • • • Describe the holder for a paintbrush Assess what is new – compared to existing paintbrush holding devices Identify what may be patentable Compare our analysis against the patent office standards Once we agree it is patentable, set up a claim ip 4 inno 85

Case Study: The Paintbrush Holder Invention description: • The invention is a magnetic holder for holding paintbrush or tool • It has magnets in each of the slots covered by felt • Designed to hold paintbrushes or tools that have metal pieces in place while not in use ip 4 inno 86

Case Study: Prior art Description of Prior Art: • A clamping mounted on the side of a container • A permanent magnet releasably holds a brush via the magnetic metal part of the brush over the lip of the container • US 5083733 Brush holding device A second permanent magnet couples the clamp to a magnetic metal container ip 4 inno 87

Case Study: New Invention versus Known Technique Invention: Magnetic Paintbrush Holder Known technique Features: US 5083733 Holds paintbrushes Uses Magnets Attaches to a paint can ip 4 inno + + + 88

Case Study: Sample claim 1. A holder for holding a paintbrush or a tool, comprising a hole, permanent magnets and a metal strip wherein the hole is located in the strip and the permanent magnets encompass the hole. Furthermore said strip may be reversibly mounted to a can, wall or table. ip 4 inno 89

Case Study: What would the Patent Office Think? Invention: Novelty: Yes No Patent would be refused Invention needs to be different than the prior art – let’s try again! ip 4 inno 90

Case Study: Renewed Analysis Invention: Magnetic Paintbrush Holder Consider differences between invention and known technique Features: Holds paintbrushes Known technique US 5083733 + + Uses Magnets Places magnets inside holding ring Uses two magnets – one on arm, one on leg Attaches to a paint can Attaches via method other than clamp Attaches via clamp Doesn’t overlap can Overlaps side of can Thin strip Clamp shape Holder placement Holder shape ip 4 inno 91

Case Study: Sample claim 1. Magnetic holder for holding a paintbrush or a tool, comprising a strip-shaped carrier, a part of which is a coupling section, which extends in a flat surface…comprises at least two magnets, one of which is situated on the end section and the other one is situated on the coupling section, characterized in that the carrier does not have any parts protruding from the plane on the first main side, where the coupling section is situated. ip 4 inno 92

Case Study: Decision from the Patent office Invention: Yes Novelty: Yes ip 4 inno Patent Granted 93

Agenda • • Introduction (exercise) Patents (exercise) Utility Models Supplementary Protection Certificates/Plant Varieties Use of IP in business and IP Strategy (exercise) Case Study Summary ip 4 inno 94

Summary • IP helps your business to create opportunities and mitigate risks • Different forms of IP protection cover different intellectual assets, allowing comprehensive IP coverage • An IP strategy should support your business goals and be executable ip 4 inno 95

Next Steps Suggestions for bringing this information back to your organization and implementing what you’ve learned… 1. Raise IP awareness in all business functions through training and developing policies 2. Determine where you need/want advice from an attorney 3. Make sure you capture and document potential IP within your company so you can decide if/how to protect it 4. Encourage creativity and invention – consider a recognition or rewards program for creators of valuable IP 5. Develop a basic IP strategy to support your business objectives 6. Identify opportunities to leverage your IP (e. g. in deals, product labeling) 7. Monitor and enforce any IP that you do have ip 4 inno 96

Resources • www. epo. org (European Patent Office) – EPO SME Case studies http: //www. epo. org/focus/innovation -and-economy/sme-case-studies. html • www. wipo. int (World Intellectual Property Office) – WIPO SME Portal http: //www. wipo. int/sme/en/index. jsp • www. espacenet. com (Europe’s network of patent databases) • www. uspto. gov/patft/ (US Patent and Trademark Office) ip 4 inno 97

Thank You For Your Attention! ip 4 inno 98