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Patents and Utility Models Guriqbal Singh Jaiya
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tarix | 01.09.2018 | ölçüsü | 1,07 Mb. | | #66415 |
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Guriqbal Singh Jaiya Director, SMEs Division WIPO
IP Strategy Strategy - Identify intellectual property assets.
- Develop plan of protection through four main forms of intellectual property: copyright, patent, trademark and trade secret.
- Exploit intellectual property through program of licensing and distribution that best preserves your IP position.
- Develop program of enforcement of intellectual property rights.
- Monitor changes in the law and participate in such changes.
- Watch for IP claims by key competitors, particularly in the patent area.
What is a Patent? A right to exclude others from: making, using, offering for sale, selling or importing the patented invention Not a right to use the invention Quid Pro Quo: sufficient disclosure For 20 years from date of filing
A Common Misperception... Patents inhibit free exchange of information.
A patent right is NOT ... a right to perform the invention or a monopoly in the marketplace.
What Can Be Patented
What Can Be Patented
AT&T vs. Excel
Documenting Inventions Keep a notebook! Keep the pages sequential and clearly dated.
Documenting Inventions Write down your experiments! (especially the ones showing structure of the invention and how to make the invention) = “reduction to practice” Also write down significant ideas! (ditto!) = “conception”
Documenting Inventions U.S. is the only “first to invent” country Everyone else is “first to file” An “interference” is a proceeding to determine who is first to invent - Evidence of invention date is usually from inventor’s notebook
Documenting Inventions Periodically show your notebook to someone else in the lab who is not an inventor (but who has an obligation of confidentiality and can understand what you are telling them). Have that witness sign and date the pages and indicate that they have “read and understood”the content.
Loss of Foreign Patent Rights For Foreign Patent, Application Must Be Filed Before: Any divulgation or public disclosure of invention. - Use Non-Disclosure Agreements
BEST POLICY: FILE IN U.S. FIRST, if possible, to preserve foreign filing rights. - Applicant then has a one year period from U.S. application filing date to file in foreign countries.
Requirements for Patentability USEFUL NOVEL NON-OBVIOUSNESS
Parts of a U.S. Patent Drawings – diagrams, flow charts, data (e.g. NMR, IR, etc.) Claims – define “metes and bounds” of invention
The Claims The Claims - Similar to a fence around a piece of property
- Claim defines the metes and bounds of a patent holder’s property
Patent Claims The “Claims” of a patent define the scope of the invention. In the U.S., peripheral claiming is used. That is, the claim language defines the “edge” of the property right.
Infringement
Infringement
Infringement The typical remedies for infringement are: - Damages ($$$)
- Injunction (stop use by infringer)
Patent Infringement Patents only cover those products or processes described by the claims An infringing product or process must have each element of the claim The accused product or process may have more than required by the claim
Determine meaning of claim (claim construction) Apply meaning to the accused device - Literal Infringement
- Doctrine of Equivalents Infringement
Inform attorney of what you know about the state of the art. What are the differences between your invention and the state of the art? What parts of the structure of the invention can be changed without affecting the way the invention is used?
Working With Your Patent Attorney What changes can be made in the materials and methods for making the invention without affecting the structure? What are the key structural features that produce the result of the invention?
Computer Program Patents Today computer programs are patentable as: - A series of program process steps
- Can assert against the system user and indirectly against the system manufacturer
- A computer readable medium with the program process steps embedded in it
- Can assert against the manufacturer who provides infringing software on diskette, CD-ROM and the like
- Can assert against manufacturers who download infringing software
- Can assert against IC manufacturers who include infringing microcode in their chips
Business Method Patents Methods of doing business (“business methods”) are patentable so long as they: - Produce a useful, tangible and concrete result
- Do not even need to be implemented in software
Is Software patentable in Europe (EPC)? Is Software patentable in Europe (EPC)? NO!
Are Software Inventions patentable in Europe (EPC)? Are Software Inventions patentable in Europe (EPC)? Yes, if…
Article 52(1) EPC Article 52(1) EPC - European patents are granted for inventions that :
Article 52(2) EPC Article 52(2) EPC - “programs for computers” are not to be regarded as “inventions” (because they lack a technical character)
Article 52(3) EPC Article 52(3) EPC - exceptions listed in Article 52(2) have to be interpreted narrowly
Interpretation of the Boards of Appeal Interpretation of the Boards of Appeal - computer-implemented inventions can be patented if they involve an inventive technical contribution to the prior art
Computer-implemented Inventions Computer-implemented Inventions - Any invention the performance of which involves the use of a computer, computer network or other programmable apparatus and having one or more features which are realised wholly or partly by means of one or several computer programs.
4 types of Computer-implemented Inventions 4 types of Computer-implemented Inventions - Technical processes describable without computer/software features.
- Problem can not be solved completely without computer implementation.
- Solution exclusively in the area of software.
- Invention is a computer implementation of a non-technical process.
T 208/84 & T26/86 T 208/84 & T26/86 - a software for controlling or carrying-out a technical process is patentable
T 1173/97 & T935/97 T 1173/97 & T935/97 - computer programs stored on a data carrier are patentable if there is a “further technical effect” (i.e., one going beyond the normal physical effect)
T 258/03 T 258/03 - a patent can not be granted if there is no technical contribution to the prior art
Non-patentable computer-implemented inventions Non-patentable computer-implemented inventions - Internet retailing method
- fixed-odds betting system (EP 1 139 245)
- business methods
Patentable computer-implemented invention Patentable computer-implemented invention - an invention enabling the detection of the proper functioning of an ABS control unit (EP 771 280)
- computer-controlled process for operating a robot arm
Patentable computer-implemented invention Patentable computer-implemented invention - computer-controlled process for enhancing a graphic display
- computer-controlled process for controlling data storage between memories
- computer-controlled process for routing diverse calls through a telephone exchange
Are Business Methods patentable in Europe (EPC)? Are Business Methods patentable in Europe (EPC)? NO!
Article 52(2) EPC Article 52(2) EPC - “rules and methods for … doing business” are not to be regarded as “inventions”
T 931/95 T 931/95 - pure business methods as such are not patentable
Conclusion Conclusion - Patent protection of software is possible in Europe, but it is necessary to identify a technical effect.
- Business methods are rejected by European Patent examiners.
Is Software patentable in the U.S.A.? Is Software patentable in the U.S.A.? YES!
Software: Software: - Same as any other invention
- Must be new, useful, non-obvious
- Approximately 16’000 software-related U.S. patents each year
Acceptable software-related inventions: Acceptable software-related inventions: - Computer aided design software
- Insurance and financial software systems
- Debuggers
- Operating systems
- E-commerce solutions
- Compilers
- Business methods
- etc.
Non-acceptable inventions: Non-acceptable inventions: - Mathematical laws (e.g. Fourrier transform)
- Laws of nature
- Processes based on these laws and implemented by computer programs are patentable, if new, useful and non-obvious.
Important for any patent application in the U.S.A. Important for any patent application in the U.S.A. - Describe the best mode
- Cite relevant prior art, including competing solutions
Important in particular for software patent applications in the U.S.A. Important in particular for software patent applications in the U.S.A. - Use flowcharts
- File early in the development process or submit source code (duty of disclosure)
Trends of U.S. Companies Trends of U.S. Companies - Aggressive patenting of software development
- Litigation increase (more than 2’500 lawsuits each year)
- Huge damages (up to several millions dollars)
- Negotiations (97% settle prior to trial)
Are Business Methods patentable in the U.S.A.? Are Business Methods patentable in the U.S.A.? Yes, but…
Business method patents: Business method patents: - Highly scrutinized by the U.S. examiners
- Long delays
- Small percentage of U.S. patents
Conclusion
Conclusion Conclusion - Software patents in Europe: Yes, if…
- Business method patents in Europe: NO!
- Software patents in the U.S.A.: YES!
- Busin. meth. patents in the U.S.A.: Yes, but…
International Protection Need to file country-by-country. Treaties facilitate international filings: - PCT Filings
- European Patent Office
Differences in protection: - Priority based on first to file.
- Term of patent protection may vary.
- Foreign countries may grant more limited protection to software patents.
- Foreign countries may not recognize business method patents.
Patent Protection Program Not common for smaller developers, but can be very valuable in strengthening position. Early identification and filing for protection to avoid loss of rights. Institute invention disclosure program and written assignment of rights from employees and independent contractors. Use of provisional patent filings: - Cheaper than full application, provisional applications help establish date and prevent loss of patent rights.
- One year to convert to full patent application.
- Some risk if you don’t fully disclose the invention.
U.S. Vs. Foreign Patents U.S. patents only provide protection in the U.S. for: - Products and processes made, used, sold or offered for sale in the U.S.
- Imports into the U.S.
Foreign patents must be obtained to provide protection for products and processes not made, used, offered for sale, sold, or imported in the U.S.
Patent Infringement Patents only cover those products or processes described by the claims An infringing product or process must have each element of the claim The accused product or process may have more than required by the claim
Patent Infringement Test Determine meaning of claim (claim construction) Apply meaning to the accused device - Literal Infringement
- Doctrine of Equivalents Infringement
Patent Due Diligence Why Worry About It? Damages: - Lost profits
- Reasonable royalties
- Treble damages & attorney fees
- Price erosion
- Convoyed sales
Disruption to Business During Litigation: - Document production
- Depositions
- Significant issue affecting business
Costs of litigation Costs of litigation - “The cost to bring a patent case . . . ranges from $750,000 to $1 million for a simple dispute and from $4 million to $8 million for a modest one. Monster cases can cost $10 million or more.” IP Worldwide, May 2002, p. 43.
Patent Due Diligence How to Conduct Search/Monitor: - patent searches on relevant product lines of primary competitors
- patent searches directed to the specific product being introduced
- monitoring of relevant products being sold
Compare proposed new product or process to any relevant patents or competitor products If necessary, search for prior art
Patent Due Diligence When A Relevant Patent Is Found Look at the claims, not just the disclosure of the patent Many patents can be designed around Has the patent expired? - Time or Maintenance Fee Nonpayment
Is the patent valid?
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