Presentation on theme: "1 W W W W W HOW (Why, When, Who, Where, What, How) Read a Patent! Domenico Golzio European Patent Office Cyberlaw Torino Tecnologie digitali."— Presentation transcript:
1 W W W W W HOW (Why, When, Who, Where, What, How) Read a Patent! Domenico Golzio European Patent Office Cyberlaw Torino Tecnologie digitali e diritto nell’era della Rete Luglio 2004 Fondazione Giovanni Agnelli - Torino BONUS MATERIAL
2 What is a Patent? A contract between an inventor and a state Inventor 1.Protection for about 20 years 2.Exclusive rights to produce, use, sell and import the invention to recoup investment in R&D to strengthen market position and competitiveness State 1.Publication of the invention to spread new technical knowledge to avoid R&D duplication to foster innovation Patents are granted to inventions which are Novel, Inventive (non obvious), suitable for Industrial Application when considered against the Prior Art Art 52 EPC
3 The Actors of the Patent Procedure Inventor/ApplicantRepresentativePatent Office publishes Unexamined Patent Applications (A) Contract Proposal Granted 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 technology An 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 information 80% of the technical information contained in the patent documentations is not published elsewhere Technical Patent 80% Publications 20% Publications Patents anticipate technical literature: Invention patentelsewhere delay years Punched cards Television Jet engine Cast 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 improvements to avoid duplication of R&D at industries and universities to advance technology from current state to promote creativity and innovation to avoid waste of Human Resources
7 Why Read a Patent (III) Patents define Market Strategy and help you: to retain your market position to increase your market share to introduce new products and processes to locate new business partners to avoid waste of Human and Financial Resources to provide recognition and motivation for employees to bring together inventors and investors to develop a prognosis of innovative strength and technological trends, global and regional to recover your R & D investments and to safeguard the results Read patents to avoid legal problems
8 When to Read a Patent CONCEPT DESIGN DEVELOPMENT PROTOTYPE
9 Who should Read a Patent Everybody... Students Professors Researchers Engineers Scientists Professionals Managers Economists
10 Where to Read a Patent ? Patent Offices Patent Libraries (PatLibs) Patent Information Points (PIPs) On-line Commercial Databases CD-ROMs (MIMOSA) Internet
11 What to Read in a Patent ? Function of a Patent Application/Granted Patent 1.Proposal for the “contract”/finalised “contract” 2.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 EPC First page Description Claim(s) Drawing(s) Search Report Requirements 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 Rule 27 EPC Introduction –Technical Field –State of the Art –Problem to be solved –Proposed Solution –Listing of drawings Detailed description – Preferred 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 features Art 52 EPC Rule 29(1) EPC Seek 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) EPC Two part form Rule 29(1) a-b EPC Independent/Dependent Claims Rule 29(2-4) EPC Claim Categories Rule 29(2) EPC Claim tree
16 Claims: Form and Contents Technical features Claims 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 form 1. Preamble –technical features designating the subject-matter of the invention –technical features know from the prior art 2. Characterising portion –technical features which define the invention IMPORTANT!! 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 Categories Claims defining a physical entity –Product –Device –Apparatus –System –... Claims directed to an activity –Process –Method –Use –...
20 Example of an invention Problem:longer antenna of a telephone allows for better RX/TX signals but make the telephone bulkier Solution: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 Claims 1.A mobile telephone handset comprising a casing characterised in that it comprises an extractable antenna. 2.A mobile telephone handset according to claim 1 wherein the antenna is made of a single element. 3.A mobile telephone handset according to claim 2 wherein the antenna is mounted on the right side of the casing. 4.A mobile telephone handset according to claim 2 wherein the antenna is mounted on the left side of the casing. 5.A mobile telephone handset according to claim 1 wherein the antenna has a circular cross section.
22 Set of Claims Expanded 1.A mobile telephone handset comprising a casing characterised in that it comprises an extensible antenna. 2.A mobile telephone handset comprising a casing and an extensible antenna, wherein the antenna is made of a single element. 3.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. 4.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. 5.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 tree Claim 1 Claim 2 Claim 3 Claim 5 Claim 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 language Don'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