Patents-Prince Sattam Bin Abdulaziz University 1 Patents: What you should know Dr. Mazen Alshaaer 1/11/2015 Prince Sattam bin Abdulaziz University

Outlines IP rights Inventions Patent Utility models Innovation process Patents-Prince Sattam Bin Abdulaziz University 2

Types of Intellectual Property Patents Copyrights Trademarks Trade Secrets

IP in Summary LawCoversRegistrationDuration PatentTechnicalYes20 years Utility ModelTechnicalYes10 years DesignLookYes/No5 x 5 years Trademark Brand name of product or service Yes/No 10 years x for ever Copyright Artistic and literary works/software No life + 70 years thereafter Patents-Prince Sattam Bin Abdulaziz University 4

What is a Patent? You can say it is: An agreement between the inventor and society Alternative definition (legal): A patent is an exclusive right to commercially exploit the invention in this country. Protection up to 20 years Forbid others commercially to: produce, sell, work, use, import, possess the invention Patents-Prince Sattam Bin Abdulaziz University 5

Criteria – Legal Standards Novelty Does not exist in the prior art Not previously disclosed to public OK if Modification/Improvement of an existing product/process, or use of something “old” in new/different way Usefulness - Utility - Performs a useful function Non-obviousness Non-trivial - It would not have been obvious to one skilled in the art to combine multiple items in the public domain to arrive at or show the invention Not Engineer’s normal sense of “obviousness”! Enabled 6

Why patent? To provide insurance for one’s invention and investments in developing technology prevent others from patenting the invention and secure one’s place in the market attract investors for further development, and to hold on to current investors sell the patent rights in the future as a single commodity or business marketing value Patents-Prince Sattam Bin Abdulaziz University 7

Why do we want people to eventually use our inventions? Someone may make your invention even better!

1)Set a goal, dream, imagine! 2)Write it down! 3)Experiment, develop, modify and construct your invention. 4)It’s a SECRET! So...how do you “invent”?

Who is an Inventor? A person who alone or in conjunction with others makes a material contribution to the conception of an invention (conceived the idea) A person who reduces the conception to practice if it requires extraordinary skill Non-Inventors: Persons who implement the ideas of others Persons who have obtained the entire idea of an invention from another are not inventors Persons who suggest concepts without contributing to the means for carrying out the suggestion (“Wouldn’t it be nice if….”) 10

What can be patented? “Everything under the sun made by man.” Products: things Processes: ways to make things Methods: ways to do things Improvements: better things Defined Classes Article of Manufacture Machine Composition Process Some more: Business Methods Services Software 11

What Is Not Patentable Laws of nature (wind, gravity) Physical phenomena (sand, water) Abstract ideas (mathematics, a philosophy) Anything not useful, Novel and Non-Obvious (perpetual motion machine) Inventions which are offensive to public morality or designed for an illegal activity 12

Contrary to moral standards? Patents-Prince Sattam Bin Abdulaziz University 13

Inventions are often concerned with every-day problems or “trends” Patents-Prince Sattam Bin Abdulaziz University 14

The patentable invention must be: Capable of industrial application New / Novelty Significantly different from that which is already known Patents-Prince Sattam Bin Abdulaziz University 15

Industrial application The invention must have at least one practical purpose and must be reproducible There is no evaluation of quality or economical factors! Only the technical qualities are relevant Patents-Prince Sattam Bin Abdulaziz University 16

Novelty Novelty: An objective, global demand New in relation to that which is known prior to the date of filing the application Known = general availability through the written word, spoken word (lectures, etc.), usage, etc. Disclosure agreement Patents-Prince Sattam Bin Abdulaziz University 17

What are the Parts of a Patent? Abstract Background of the Invention Summary of the Invention Figures with brief descriptions Detailed description or “specification” Fully discloses what the invention is How it is made? How it can be used? Claim(s): sets the legal boundaries of protection Independent Dependent

Types of Patents TypeIs for Term Utility Function, use20 years Design Appearance14 years Plant Reproduced20 years 19

DISCLOSUREINITIAL PUBLICATION RE-EVALUATION Overview of Pathway to Commercialization FILE PROVISIONAL APPLICATION (~$10k) EVALUATION 3 MONTHS FILE PCT (~$25K) PCT PUBLICATION 8 MONTHS 12 MONTHS6 MONTHS12 MONTHS ENTER NATIONAL PHASE & PROSECUTION (~$20k) RARELY GET THIS FAR W/O LICENSEE PATENTABILITY & MARKETING EVALUATION MARKETING/SEARCH FOR LICENSEE GENERATE NCD ADDITIONAL PUBLICATIONS W/ INTERESTING ANIMAL DATA, PROTOTYPING, FURTHER COMMERCIALIZATION

The Patent Process 12/13/ Allowance

Invention: Patents-Prince Sattam Bin Abdulaziz University 22

Documents found: Patents-Prince Sattam Bin Abdulaziz University 23

Invention: Patents-Prince Sattam Bin Abdulaziz University 24

Documents found: Patents-Prince Sattam Bin Abdulaziz University 25 Inventive step?

What are the chances of obtaining a patent? Source: AUTM 2006 survey

Royalty Income to US Academic Institutions How much money can be generated by a patent license? Source: A. Stevens, les Nouvelles, 38, , September 2003; AUTM Annual Survey

Design Patent Example 28

Utility Model The ”Patent-system” for smaller inventions Conditions: Solve a technical problem New Inventive step Often used for inventions concerning: Household goods Hand tools Furniture Patents-Prince Sattam Bin Abdulaziz University 29

Why a Utility Model? Protects minor inventions excluded from patent protection Protects inventions where a shorter protection period is required Speedy protection Easy Cheap Patents-Prince Sattam Bin Abdulaziz University 30

Utility Patent 12/13/201531

Utility Patent 12/13/201532

How old do you have to be?

Recent kids’ inventions

Patent Examiners by Technical Discipline 12/13/201535

International patent systems Basic principle: Patent in each country The systems: Patent Cooperation Treaty (PCT) European Patent Convention (EPC) Other regional systems (OAPI, ARIPO, EURASIAN) Patents-Prince Sattam Bin Abdulaziz University 36

European Patent (EPC) Single place of filing Single place of completion Single place of granting More economical than group of countries Patents-Prince Sattam Bin Abdulaziz University 37

Patent Cooperation Treaty (PCT) Single place of filing International novelty and patentability search Finial decision for countries Patents-Prince Sattam Bin Abdulaziz University 38

Patents-Prince Sattam Bin Abdulaziz University 39

Saudi Patent Office (RO/SA) The modified Law of Patents, Layout Designs of Integrated Circuits, Plant Varieties, and Industrial Designs was issued by the Royal Decree No. (M/27) dated 17/7/2004 and was published in the Official Gazette (Om Alqura) in 7/8/2004, and became effective as of 5/9/2004. A patent is an exclusive protection document granted for an invention. An invention is an idea developed by the inventor that results in a solution of a certain problem in the field of technology. Patents-Prince Sattam Bin Abdulaziz University 40

Patents-Prince Sattam Bin Abdulaziz University 41

Saudi Patent Office (RO/SA) 2013 Patents-Prince Sattam Bin Abdulaziz University 42 Applications: 928 Granted patents: 233 Rejected: 361 Withdrawn: 344

Consequences of infriging If you infringe someone else’s patent, you may risk: Injunction, which means that all your products may be removed from the market Destruction of your products Paying damages to the patent owner Being given a fine, e.g. the Kodak vs. Polaroid case Being sentenced to imprisonment (in gross cases) Patents-Prince Sattam Bin Abdulaziz University 43

Recent Patent Verdicts & Settlements Or – Why it is really important? Alcatel/ Lucent v. Microsoft. - (2007) - $1.5 Billion NTP – Settled with RIM for $612M (plus $53M litigation plus verdict) Intergraph – over $880M in settlement from patent litigation with Intel, HP and others Eolas v. Microsoft (2003). $506M Jury verdict Immersion v. Sony (2004). $82M jury verdict plus royalties increased (2007) to $150M vibration game controller - Microsoft settlement on $26 Freedom Wireless v. BCGI (2005) $128 jury verdict Finisar v DirectTV (2006). 103M (79+24)Jury verdict plus injunction Tivo v. EchoStar (2006). $74M jury verdict plus injunction Acacia - $60M in licensing revenue ( ) Forgent - $100M in licensing revenue

Thank you for your attention! Patents-Prince Sattam Bin Abdulaziz University 45