The protection of patents in Europe IP tools to support European innovation

Transcript

1 IP FOR SME S La integrazione transfrontaliera nella gestione della proprietà The protection of patents in Europe IP tools to support European innovation Dott. Filippo Mazzariol Unioncamere Veneto Padova 16/04/2014

2 What will we discuss today? An introduction to intellectual property (IP) - Why IP matters - The different types of IP Patentability Patent applications & strategy - reasons for applying - strategic considerations - timing and costs Patent information - technical information & competitive intelligence

3 The first law on IPR Decree on the Protection of Inventions, Republic of Venice, 19 March 1474 Source: Archive of State of Venice

4 European Patent Office: 37 member states Albania Austria Belgium Bulgaria Croatia Cyprus Czech Republic Denmark Estonia Finland France Germany Greece Hungary Iceland Ireland Italy Latvia Liechtenstein Lithuania Luxembourg Former Yugoslav Republic of Macedonia Malta Monaco Netherlands Norway Poland Portugal Romania San Marino Slovakia Slovenia Spain Sweden Switzerland Turkey United Kingdom European patent applications and patents can also be extended at the applicant's request to the following states: Bosnia-Herzegovina Montenegro Serbia

5 Applications filed Direct European filings Euro-PCT applications entering the regional phase

6 European patents granted The EPO grants only ca 40% of all applications received Italy was designated on ca 79,6% of all granted patents patents from Italy were granted in 2009: 33,2 patents per million inhabitants. The European average is 46,7.

7 Applications by residence of applicant (2009) patent applications from Italy were filed in 2009, down from in This equates to 64,6 applications per million inhabitants. The European average is 116,1

8 Why does intellectual property matter? 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 presents both opportunities and risks which are to be exploited or avoided - so know your strategy!

9 One product many IP rights Reg. Design for phone shape Reg. Trade Marks - "NOKIA", start-up tone, animated sequence of two hands connecting Copyright - software, ringtones & images Patents - for technology to produce and operate, software on game processing, networking and data transfer. Pooled, cross-licensed, or kept exclusive Trade secrets - kept "in-house", never published

10 Patents support innovation They give inventors the confidence to invest by protecting inventions from copying and giving a means to exploit through licensing Publication of applications puts large amounts of technical information in the public domain, saving duplication of effort All patents expire (20 years or sooner), so even patent owners are forced to continuously innovate to maintain their advantage

11 IP rights: what is a patent? A patent is the right to exploit an invention 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

12 IP rights: patents Patents protect technical inventions which solve technical problems chemicals, products, equipment and apparatus processes and methods Patents last up to 20 years, with annual renewal fees paid in every territory where protection is maintained.

13 IP rights: patents To be patented an invention must: be novel (not publicly known anywhere before the filing date) have an inventive step (i.e. not be obvious from what has gone before; not be a mere combination of known features leading to a predictable result) have an industrial application Some inventions are excluded from patent protection e.g. for reasons of public policy methods of surgery, diagnosis or treatment human cloning landmines, torture devices

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15 The "reversed-horn effect" The applicant's own press release!

16 Prior art from over fifty years before

17 Is it inventive?

18 Patents for computer-implemented inventions (CII) 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. Public modules European Patent System CII

19 Utility models - not quite like patents Available in some countries, approximately half of Europe, plus Japan, China, Brazil, Mexico and Russia Shorter lifetime (5-15 years) than patents, typically only for products or mechanical items, not for processes Criteria like patents: novelty, inventive step etc. Unexamined - simply registered (but often with a search report). Therefore quick to acquire. Duty on applicant to ensure novelty etc. Sometimes be used as the basis for a subsequent patent application (DE, AT); and often a patent application can be converted into a utility model.

20 Why do businesses file patent applications? (I) Businesses exist to make money. Few businesses exist to litigate. To get a cheap patent search. Prophylactic (defensive) disclosure. Patents as barriers to rivals? Less common.

21 Why do businesses file patent applications? (I) Businesses exist to make money. Few businesses exist to litigate. To get a cheap patent search. Prophylactic (defensive) disclosure. Patents as barriers to rivals? Less common.

22 Why do businesses file patent applications? (II) Patents 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.

23 Developing an IP strategy Ask what sort of IP you need benchmark against the market leaders Audit the IP you already have do you have any under-exploited IP assets? Plan the IP you want to have (create it or licence-in?) Where do you want the company to be in the future Consider alternatives and assess their merits E.g. an innovative process: patent it or keep it as a trade secret? Plan how the IP will benefit the business Patent applications should have a defined business use Plan how to defend or enforce your IP Take steps to deter and detect infringements

24 Patent applications strategy 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?

25 Patent applications strategy (continued) 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

26 When to file a patent application 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 or +31 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.

27 The "Valley of Death" y x months A new business will be short of cash in the early days Costly patent applications should be timed to fit with likely rounds of funding from investors

28 Commercialisation 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 licence? Exclusive (not even the patent owner may use) Sole (the patent owner may also still use) Non-exclusive (multiple licensees) Compulsory; licence of right Be careful in fixing royalty rates

29 Working with others Research and Development (R&D) usually involves teams of experts and technicians with different skills. Any of these people could become co-inventors Make sure you have confidentiality agreements & other contractual protection for these critical early stages Prior to patent filing limit disclosures to what not how Consider if others in the team will claim a share of any profits if the project is a success Could team partners patent other aspects of the technology?

30 Why does patent information matter? Patent information is an invaluable source of research information; much of what appears in patents does not appear in academic and technical journals 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

31 What is the problem...? Graphic designer has been commissioned by a client to produce publicity material on paper that folds in a very special way. The supplier of this paper states he owns the patent on this particular type of folded paper, and will charge a high price. He threatens the designer that using similar paper supplied by anyone else would be an infringement of his patent rights.

32 The graphic designer and the folded paper Does the supplier really have a patent? No, he doesn't! The public patent database, esp@cenet, shows that he only has a pending application. The number of citations against the application, according to the search report, casts doubt on its likelihood for future success. The database shows over 200 other documents relating to the same technology. Many of these are not in force. The proprietor of one of these other documents (an abandoned application) has no patent rights, but is still able to happily supply the designer much more cheaply.

33 The database has over 65 million documents!

34 INPADOC - what is the status? what about family?

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36 Register Plus - see all the correspondence

37 Freedom to operate - 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.

38 Where do we go next? Patent applications can be made at national patent offices; or to the EPO (37 member states); or to the WIPO (PCT has 142 member states and growing!) (Patent Co-operation Treaty) (other NPOs) Trade mark and design registrations can be made at national patent offices; or to OHIM (all EU member states); or to WIPO. (European Community) (International TM apps.) (International Ind. Designs)

39 IP FOR SME S La integrazione transfrontaliera nella gestione della proprietà intellettuale (IP) come leva di competitività regionale Padova, 16 aprile 2014 Dr. Filippo MAZZARIOL Senior Project Manager Unioncamere del Veneto Eurosportello Tel filippo.mazzariol@eurosportelloveneto.it Via delle Industrie 19/D Lybra Building VEGA Park I Venezia Marghera, Italy Grazie per l attenzione