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Building a Competitive Edge: Protecting Inventions by Utility Models and/or Patents Casey K. Chan National University of Singapore IP Academy of Singapore.

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Presentation on theme: "Building a Competitive Edge: Protecting Inventions by Utility Models and/or Patents Casey K. Chan National University of Singapore IP Academy of Singapore."— Presentation transcript:

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2 Building a Competitive Edge: Protecting Inventions by Utility Models and/or Patents Casey K. Chan National University of Singapore IP Academy of Singapore

3 Topics Covered Economic Commercial Perspective Patentability and Specification Introduction to Claim Structure Proprietary position and FTO Practical Tips

4 Increasingly, wealth of a nation is measured by ownership of intellectual properties rather than by ownership of hard assets.

5 Paul Romer Graduate School of Business at Stanford University Fellow at the Hoover Institute Classical Economy Tangible Capital New Growth Economy Intangible Capital

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7 Optimize the use of patent attorney

8 Types of Intellectual Properties Trade Secrets - No regulation Patents – Regulated Trademarks – Regulated Copyright - Regulated

9 Trade Secrets Formula (eg Coca Cola formula) Pattern, Plan, Customer Lists, etc Process, R&D Data Device, Apparatus, Machinery etc Information that gives a competitive advantage

10 Advantage of Trade Secrets No fees No time limits Information not available to competitor for improvements No blocking patents

11 Freedom to Operate – FTO Proprietary Position

12 New Product Development IP Assessment User Spec IP Protection

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14 Economic Perspective Patents -- legal ownership of intellectual properties Incentive for Inventors Quid pro quo - grant in exchange for disclosures Right to exclude others to use and/or manufacture the invention

15 Types of Patent Utility Patents - machine, process, composition of matter Design Patents - ornamental design Plant - distinct and new variety of asexually reproduced plant

16 Should I file a Patent? Where and When

17 When should you file a patent? Because it is a brilliant idea -- No Because of commercial potential -- Yes Competitive advantage (unfair advantage) Barrier to entry in market place

18 Criteria Patentability Commercial Potential Enthusiasm of Inventor

19 Commercial Potential Co 1NuProductCo 2 Accuracy Sensitivity Efficiency Speed Automatable Reproducibility Cost

20 Very Broad >$750 Million Short: 6 – 12 Months Multiple Channels - Direct + NuProduct Inside Low – Repackaging >65% Q4, 04 Market Applications Initial Targeted Applications Product Development Cycle Commercialization Pathway Manufacturing Complexity Projected Gross Margins Projected Time to Profitability NuProduct Business Model Commercial Potential

21 Where should you file your patent? Patent law is jurisdictional File in country where the market is largest File in countries it is cost effective Customer per $ patent cost File in countries where you are prepared to enforce infringement

22 Worldwide Market for Medical Device Source: Tucker Anthony Asia Pacific 20% Americas 5% Europe 25% USA 50%

23 European Market for Medical Device Source: Tucker Anthony Big Four The Big Four constitute 75% of Europes market: France Germany Italy Gt Britain

24 Is there an international patent? No Must apply to each jurisdiction individually What is a PCT? Patent Cooperation Treaty Clearing House A single international application Must file within 12 months of priority date

25 One strategy Local + US Application Japan (18 Months) Europe China National Phase PCT Application Clearing House (12 Months) Chap II Delay to 30 mths EUJP CN

26 Utility Patent - 5 statutory classes 1.Processes (Methods) 2.Machines (Devices and Apparatus) 3.Manufactures -- articles of manufacture e.g. transistors, floppy disks, etc 4.Composition of matter 5.New uses of above

27 Utility Patent – Three Types 1.Method 2.Apparatus 3.Composition of matter In practice this is all you need to remember

28 Time limit on Patents Utility patents - 20 years from filing date Design patents - 14 years from date of issue Plant - 20 years from filing date

29 Requirements for Patentability 1. New and Novel 2. Useful 3. Non-obvious

30 1. New and Novel (No Prior Art) Commercially available Public Disclosure Publication in journals, magazines, abstracts Posting on the Internet Oral or Poster Presentation at symposium or seminar Material made available to public at university library Demonstration at trade shows, to visitors Confidential Disclosure Agreement

31 2. Utility Must have a useful function If device does not work no use to inventor anyway Prevent pre-emptive filing of Composition of Matter e.g. new chemicals, new drugs, new gene with no known function

32 2. Utility – New Guidelines Credible Specific Substantial

33 3. Obviousness Obvious to those ordinary skill in the arts What makes an invention non-obvious 1.Unexpected results 2.Previous publication stated that it cannot be done 3.Have to go through a series of experimentation to arrive at invention

34 Requirements for Patentability New and Novel Useful Non-obvious EraserPencil New Invention? Year 1805

35 What Cannot be Patented? Arrangements of printed matter Methods of doing business ? Obvious devices Perpetual motion machines Nuclear weapons or weapons of mass destruction Laws of nature or scientific principles (must have embodiment )

36 Inventorship Person/s who invent Not a company or institution Multiple inventors are possible including deceased Must contribute to actual invention No gratis inclusion All inventors have equal rights to invention

37 Actual Cost of Filing US$ 10,000 to 15,000 Preparation Time Patent Search Drawings Attorney s Fee Filing Fees Maintenance Fee Legal Defense

38 Legal jargons prior art ordinary skill in the art embodiment new teachings

39 Specification of a Patent Definition New teachings Claims Background & Prior Art more is better Broad claims less is more

40 Anatomy of a peer review paper Title Introduction Materials and Methods Results Discussion Conclusion

41 Anatomy of a Patent Title Field Of The Invention Background Of The Invention Objects Of The Invention Summary Of The Invention Brief Description Of The Drawings Detailed Description Of The Preferred Embodiments Modifications Of The Preferred Embodiments Claims This is the right you own! Specifications

42 A B C D A B C D Elements Z My Invention - Bicycle 1807 – Prior Art - Unicycle A B

43 A B E C Competitors Product: Infringement ? = A B C D Your Claim: Independent Claim A B C D Definition Z NO Your Invention: A B C D A B C E

44 D Infringement ? = A B C Dependent Claim YES ! A B C Competitors Product: A B C Your Claim: Independent Claim A B C Definition Z Your Invention: E D D

45 Five Types of Claims Independent Claim (3) Apparatus Method Composition of Matter Dependent Claim (2) Additional element Restriction of an element A B C D Definition Z Your Invention

46 A B C D A B C D Elements Z My Invention - Bicycle 1807 – Prior Art - Unicycle A B

47 A B E C Competitors Product: Infringement ? = A B C D Your Claim: Independent Claim A B C D Definition Z NO Your Invention: A B C D A B C E

48 D A B E C Competitors Product: Infringement ? = A B C Your Claim: Independent Claim A B C Dependent Claim A B C D Your Invention: Definition Z YES !

49 Five Types of Claims Independent Claim (3) Apparatus Method Composition of Matter Dependent Claim (2) Additional element Restriction of an element A B C D Definition Z Your Invention

50 One Hand Rule of Claims 1 2

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52 1

53 Freedom to Operate is determined by: What are competitors patent claims Unclaimed prior art Patent specification Published work Patent B Claim B Patent A Claim A Publication C My FTO

54 Proprietary Position is determined by: What are my patent claims Trade secrets My Patent B My Patent A Claim C Claim B Claim A My Patent C Competitors FTO My Trade Secrets

55 Thing you can do. Drawings Patent search Write up backgrounds Identify what the elements of the invention

56 Initial patent review Front Page Patent Number and Title Applicant (s), Assignee Issued Date/ File Date Class and Field of Search Attorney, Examiner References (Referring Patents) Abstract Representative Drawing Back Page Claims (First claim most important)

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63 Utility model Not the same as utility patent Parallel second tier patent systems Foster indigenous invention and innovative activities Petty patents, innovation patents, utility model

64 Types of Patent and Duration US Utility (20y) Design (14y) Plant (20y) China Inventions (20y) Indus designs (10y) Utility models (10y)

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66 Thank you


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