Presentation on theme: "W W W W W HOW (Why, When, Who, Where, What, How) Read a Patent!"— Presentation transcript:
1 W W W W W HOW (Why, When, Who, Where, What, How) Read a Patent! BONUS MATERIALDomenico GolzioEuropean Patent OfficeCyberlaw TorinoTecnologie digitali e diritto nell’era della ReteLuglio 2004Fondazione Giovanni Agnelli - Torino
2 A contract between an inventor and a state What is a Patent?A contract between an inventor and a stateInventorProtection for about 20 yearsExclusive rights to produce, use, sell and import the inventionto recoup investment in R&Dto strengthen market position and competitivenessStatePublication of the inventionto spread new technical knowledgeto avoid R&D duplicationto foster innovationPatents are granted to inventions which are Novel, Inventive (non obvious), suitable for Industrial Application when considered against the Prior ArtArt 52 EPC
3 The Actors of the Patent Procedure Inventor/ApplicantRepresentativePatent OfficepublishesUnexamined Patent Applications (A)Contract ProposalGranted Patents (B)Final Contract
4 Meaning of “invention” * An invention means an idea of an inventor which permits in practice the solution to a specific problem in the field of technologyAn invention may be or may relate to a product or process* from Malaysian Patent Act
5 Why Read a Patent (I)Patents are a unique source of technical information80% of the technical information contained in the patent documentations is not published elsewhereTechnical Patent 80%Publications % PublicationsPatents anticipate technical literature:Invention patent elsewhere delay yearsPunched cardsTelevisionJet engineCast iron
6 Why Read a Patent (II)Patents define Innovation Strategy and help you:to recognise the lack of advancement in a technology and address improvementsto avoid duplication of R&D at industries and universitiesto advance technology from current stateto promote creativity and innovationto avoid waste of Human Resources
7 Why Read a Patent (III) Patents define Market Strategy and help you: to retain your market positionto increase your market shareto introduce new products and processesto locate new business partnersto avoid waste of Human and Financial Resourcesto provide recognition and motivation for employeesto bring together inventors and investorsto develop a prognosis of innovative strength and technological trends, global and regionalto recover your R & D investments and to safeguard the resultsRead patents to avoid legal problems
8 When to Read a PatentCONCEPTDESIGNDEVELOPMENTPROTOTYPE
9 Who should Read a Patent Everybody ...StudentsProfessorsResearchersEngineersScientistsProfessionalsManagersEconomists
10 Where to Read a Patent ? Patent Offices Patent Libraries (PatLibs) Patent Information Points (PIPs)On-line Commercial DatabasesCD-ROMs (MIMOSA)Internet
11 Function of a Patent Application/Granted Patent What to Read in a Patent ?Function of a Patent Application/Granted PatentProposal for the “contract”/finalised “contract”Disclosure of the invention in a manner sufficiently clear and complete in order to allow a person knowing everything publicly disclosed at the time of the invention to reproduce or carry out the invention without any additional creative activity. Art 83 EPCFirst pageDescriptionClaim(s)Drawing(s)Search ReportRequirements for a Patent Application Art 78 EPC
12 First Page Bibliographic Data Abstract Figure(s) INID codes (Internationally agreed Numbers for the Identification Data)Patent publication serial number (11)Issuing Patent Office (19)Application number (21)Date of filing (22)Priority (30)Date of publication (43, 45)Int. Cl. (51)References cited (56)Title of Patent (54)Abstract (57)Inventor, Applicant, Representative, Assignee (71-75)
13 Description Introduction Detailed description Technical Field Rule 27 EPCIntroductionTechnical FieldState of the ArtProblem to be solvedProposed SolutionListing of drawingsDetailed descriptionPreferred embodiments
14 Claims: Function Protection conferred by the claims Art 69(1) EPC (description/drawings serving for interpretation purposes only!!!)Define the matter for which protection is sought- clear, concise, supported by the description Art 84 EPC- in term of technical featuresArt 52 EPC Rule 29(1) EPCSeek a Balance:Differentiate the invention from the prior art.Obtain the most extensive protection possible.
15 Claims: Form and Contents Technical features Art 52 EPC Rule 29(1) EPCTwo part form Rule 29(1) a-b EPCIndependent/Dependent ClaimsRule 29(2-4) EPCClaim Categories Rule 29(2) EPCClaim tree
16 Claims: Form and Contents Technical featuresClaims must be drafted in terms of the "technical features of the invention".- Features expressed in terms of a structural limitation- Functional limitations accepted if known how to perform that function.- Claims should not contain any statements relating to commercial advantages or other non‑technical matters.- Statements of purpose should be avoided unless they assist in defining the invention.- Claims to the use of the invention in the sense of the technical application of the invention are allowable.Rule 34 EPC
17 Claims: Form and Contents Two-part form1. Preambletechnical features designating the subject-matter of the inventiontechnical features know from the prior art2. Characterising portiontechnical features which define the inventionIMPORTANT!!Protection defined by the combination of the features in 1) and 2)
18 Claims: Form and Contents Independent Claim:defines the essential features of the invention (i.e. those features which solve the problem).Single sentence which defines the invention in the most general sense.Dependent claim:includes all the features of another claim(s) to which it refers back and defines particular embodiments.Claim which defines more detailed implementation of the invention of that defined in the claim it refers back to be possibly used during the procedure and during the life of the patent.
19 Claims: Form and Contents Claim CategoriesClaims defining a physical entityProductDeviceApparatusSystem...Claims directed to an activityProcessMethodUse
20 Example of an invention Problem: longer antenna of a telephone allows for better RX/TX signals but make the telephone bulkierSolution: the antenna is extensible and when the telephone is not in use the antenna can be retracted into the telephone casing reducing the size of the telephone
21 Set of ClaimsA mobile telephone handset comprising a casing characterised in that it comprises an extractable antenna.A mobile telephone handset according to claim 1 wherein the antenna is made of a single element.A mobile telephone handset according to claim 2 wherein the antenna is mounted on the right side of the casing.A mobile telephone handset according to claim 2 wherein the antenna is mounted on the left side of the casing.A mobile telephone handset according to claim 1 wherein the antenna has a circular cross section.
22 Set of Claims ExpandedA mobile telephone handset comprising a casing characterised in that it comprises an extensible antenna.A mobile telephone handset comprising a casing and an extensible antenna, wherein the antenna is made of a single element.A mobile telephone handset comprising a casing and an extensible antenna, the antenna being made of a single element, wherein the antenna is mounted on the right side of the casing.A mobile telephone handset comprising a casing and an extensible antenna, the antenna being made of a single element, wherein the antenna is mounted on the left side of the casing.A mobile telephone handset comprising a casing and an extensible antenna, wherein the antenna has a circular cross section.
23 Claims: Form and Contents Claim treeClaim 1Claim 2Claim 5Claim 3Claim 4
24 How to Read a Patent Patentese/Legalese - words or technical terms are a generalization of the original elements- "consisting of", "comprising", "plurality", "means of", "substantially", ..., have a special meaning in the patent languageDon't be creative in reading: you may wrongly attribute merits to the invention.Put patent in the right time-perspective with respect to the state of the art at a certain date.No emotional approach/Humility