1. Training Module 1A
Patent Basics
ip4inno

2. Goals for Today You will: Gain an insight into patent functions
Gain an insight into patent process
Gain an insight into patent strategies
Learn about the roles of important partners
Briefly be introduced to supplementary protection possibilities
ip4inno

3. Programme Patent – definitions and demands Patent document
Patent process
Patent strategies
Utility models
Other supplementary rights and certificates
Case
ip4inno

4. Registered intellectual property
IP rights with a certificate
Utility
models
Duration: until 10 years
Patents
Duration: 20 until years
IP Rights fall into two general categories - registered and unregistered rights. Registered Rights: Registered rights provide a monopoly allowing the owner to stop others making use of IP rights without permission – even if this use is unintentional. To obtain a registered right, it is necessary to follow a specific application procedure as required by Official Bodies such as the national patent office and if certain criteria are met, the right will be registered. The principal registered rights are: •    PATENTS: for protecting new and inventive technical aspects of a product or process
UTILITY MODELS: for protecting new and inventive technical aspects of a product •    REGISTERED DESIGNS: for protecting the appearance of a product •    TRADE MARKS: for protecting trade names, signs, symbols and logos associated with products or services.
Unregistered Rights: Require no formal application procedure, but come into existence automatically when certain types of intellectual property are created. The owner of unregistered rights is entitled to prevent another from copying or making use of the rights, but cannot stop someone using an idea if they have developed it independently. Unregistered rights include: •    COPYRIGHT: for protecting documents and drawings, including aspects of computer software •    UNREGISTERED DESIGN RIGHT (UDR): for protection of the visible shape of a product designs •    DATABASE RIGHT: for protecting against unfair use of database content •    COMMON LAW TRADE MARKS: for protecting the trading style associated with goods or services, e.g. trade names, signs, symbols, logos and goodwill •    KNOW HOW, CONFIDENTIAL INFORMATION AND TRADE SECRETS: for protecting sensitive information.
Designs
Duration:
until 5 x 5 years
Trademarks
Duration: until 10 years
or life
ip4inno

5. Examples of unregistered IP
Literature
Pieces of music
Paintings
Drawings
Films
Construction works and scientific and technical representations
Unregistered IP = Copy right
The right will be in force until 70 years after the death of the originator
Trademarks and designs can be unregistered as well
As mentioned Intellectual Property (IP) covers two main areas:
Registered IP = industrial property, covering inventions, trade marks, industrial designs, and protected designations of origin;
Unregistered IP = copyright, represented by literary, musical, artistic, photographic, and audio-visual works.
ip4inno

6. Definitions and Demands
Patents
Definitions and Demands
ip4inno

7. 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
A patent is a prohibitive right
The figure shows a microwave treatment of food.
The patent right is an agreement between society and inventor. The inventor gets an exclusive patent right for up to 20 years, but after 18 months after filing, the government has to lay open his invention to the public
This agreement allows other persons or companies to develop new ideas based on published inventions, so they do not spend time and money inventing the same twice. This is the general idea of the patent system. You both reward the inventor and support technological development
Patent rights are not new:
1469: Giovanni di spira, bookprinter in Italy. Was given a royal privilege to print the bible for 5 yrs
1852: UK patent law: Industrial revolution (steam engine, rotating press) => reproduction => mass production = money! = patent rights become important at this time
ip4inno

8. Prohibitive right A patent forbid others commercially to: But…
produce, sell, work, use, import and possess the invention
But…
…A patent does not extend to:
acts performed for non-commercial purposes
acts performed for experimental purposes
Acts concerning products which are commercially worked by, or with the consent of, the patentee
Individual production of a medicinal product at a pharmacy
Keyword: Commercially
Patent offices in Europe do not deal with the enforcement of IP rights
OK to build something in your own home, but not OK if you start selling it to your neighbours
ip4inno

9. Patent rights or infringements Example
Company Y
a+b+c
20 years
a+b
Product e.g. toothpaste
a+b+c+d
Company Y is not allowed to produce product (a+b+c+d) without permission from company X
Company X is not allowed to produce product (a+b+c+d) without permission from company Y
Invention by company Y (a+b+c+d) is patented in the registration area of the extended patent by company X (a+b+c). The product (a+b+c+d) depends by this on patent (a+b+c) concerning the exploitation of the invention (a+b+c+d). BUT (a+b+c) is NOT allowed to exercise his invention in the area of (a+b+c+d).
They are depended on each other and by that they are able to forbid the other part to exercise his invention!
Toothpaste (a+b) which consists of binder (a) and abrasive (b) was invented many years ago and is now free for production and sale for everybody.
Company X find the effect of flourine (c) that protects your teeth against caries. Company X gets a patent on toothpaste (a+b+c) and by that they can forbid other companies to produce and sell this product.
Company Y find another additive (d) which protects your teeth against paradentosis Company Y gets a patent on this product and can forbid other companies to produce and sell this product. Company Y cannot produce their product without permission from Company X (as long as their patent is valid) as it will infringe their patent.
Company X and Company Y do need to make an agreement.
Company X
ip4inno

10. What is an invention?
A technical teaching which defines a relation between technical features and technical effect
Technical features = construction elements and their mutual relations
Examples: Apparatus for dissolving clouds (features: Mirror on a stand, effect: The clouds are dissolved and the sun shines)
Air-conditioning in a car (features, box with ice-cubes in the trunk, tube transporting the air into the cabin, a fan dragging the air)
Examples of inventions that are not reproducible:
Clay-soil from the garden (mørtel = mortar)
Perpetual machine: a machine that delivers more energy than it receives (not industrially applicable)
Wishes (a rocket that can fly to the moon in 3 hours)
Machines that simply don’t work
Examples of OK inventions:
6-edged pencil => the pencil will not roll of the table
Pump with a certain blade wheel => better performance
Has to be reproducible
ip4inno

11. A patentable invention must be:
Capable of industrial application
New / Novelty
Essentially differ from that which is already known = inventive step
Within the context of a national or multilateral body of law, an invention is patentable if it meets the relevant legal conditions to be granted a patent. By extension, patentability also refers to the substantive conditions that must be met for a patent to be held valid.
The patent laws usually require that, in order for an invention to be patentable, it must
be of patentable subject matter, i.e. a kind of subject-matter that is eligible for patent protection,
be novel (i.e. at least some aspect of it must be new),
be non-obvious (in United States patent law) or involve an inventive step (in European patent law); and
be useful (in U.S. patent law) or be susceptible of industrial application (in European patent law).
For the patent validity the invention has to be described in a manner which enables a person skilled in the art to perform the invention
Note! Not mandatory to prove that the inventions works – only make it seem plausible
ip4inno

12. What can be patented? A product
The apparatus for producing the product
The process for producing the product
The use of the product
Example: A tyre
Product: A tyre with a certain rubber composition or a certain tire pattern
An apparatus for producing a tyre: A machine vulcanising a tire
A process for producing a tire: The steps of producing the tire by bonding several layers to form a tyre
The use of the tyre: For a car, a motorbike, a bicycle
ip4inno

13. What cannot be patented?
Computer programmes
Medical and surgical treatments
Mathematical methods
Business methods
Discoveries
Aesthetic creations
New species of plant or animal
Inventions which are contrary to moral standards and public order (e.g. instruments of torture)
The human body and any non-separate part/s thereof
Limitations in Europe – not worldwide
Since almost anything technical can be patented, patent laws define a so-called list of exclusions from patenting:
- Computer programmes, mathematical methods, business methods: Do not have technical character – only in connection with an apparatus, e.g. a computer with an operating system would be ok, because the computer itself has technical character. Can be protected by copyright
Medical/surgical treatments: No one should have an exclusive right for e.g. operating a person, but ok with instruments (scalpel etc.)
Discoveries: Simply a way of finding out nature’s secrets! Ok with machines using discoveries, e.g. electromotor uses electromagnetism. Discoveries that are not categorized as inventions might be the Earth is round, the force of gravity, electromagnetism
New species or plants: Same argument as with discoveries
Inventions contrary to moral standards: Torture machine, executing machine (guillotine not ok, but ok if it’s a mouse-trap), parking disc that follows the time
The human body and any non-separate part/s thereof (=e.g. an arm or a leg): Not ok, but ok if it is a dna-sequence, a cloning
These might not be inventions (depends on national laws)
Designs (have no technical merit). These can be protected by trademark/design.
Games rules.
Mathematical methods (formulas).
Production and publication of information.
Surgical/therapeutic methods (operations, etc.). But surgical instruments, for example, can be patented.
ip4inno

14. 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
Industrial application has to be understood in the broadest sense
Example: Shows a system for using the driver’s spit as cleaning liquid for windscreen wiper blades (container to spit in, tubes, a pump, a filter)
No evaluation of quality or economical factors: E.g. the inventor of the vacuum-cleaner was an Englishman named Hoover. When he introduced his vacuum-cleaner to UK patent office it was refused in the first instance. They thought it was useless and silly
T116/85 states that agriculture is a kind og industry and that agricultural methods therefore in general are susceptible of industrial application.
ip4inno

15. 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.
Remember! File an application before going to a fare, an exhibition or making marketing material
Generally - an invention is new if it does not form part of the state of the art.
Novelty can be explained with the following:
Nothing essentially the same as the claimed innovation exists; i.e. the invention is new. It is important to note that if the public were aware of or used the invention, or if the invention was sold, offered for sale, or used commercially (even if hidden form public view, such as a secret machine on an assembly line) more than one year before the application date, then the invention would not be novel, and the application would be denied.
A construction made of aluminium is new if the state of the art describes the construction is made of light-alloy metal
ip4inno

16. The Inventive Step To differ essentially = Inventive step =
Not obvious to a person skilled in the art
Not obvious to a person skilled in the art (explain!)
Examples with no inv. step:
Nail vs screw to hang up a picture
Beams of concrete instead of wood/steel (concrete is well-known in civil eng.)
However, a ship with a hull of concrete would be inventive – previously wood have been used
Adaptation to a job: stronger suspension on a car lifts the car in troublesome terrain
Adaptation to production: Big machines are produced in smaller parts and collected at place of use
Examples with inv.step:
Could be a solution to a problem that has existed for a long time
A solution to a new problem
A surprising effect (e.g. a herbicide can be used as a headache pill)
T 588/93 shows an inventive step to be present, because an earlier solution to a given technical problem did not preclude later attempts to solve the same problem in another, non obvious way.
ip4inno

17. Patent Document
ip4inno

18. Patent Document Description common part specific part Patent claims
Abstract
Figures
ip4inno

19. The Patent’s Composition
Drawings
Title
Demands
The Patent’s Composition
1. Title
2. Description – common part
what the patent concerns
prior art, the disadvantages
the purpose and advantages of the invention
how and by which means the advantages are achieved must correspond with the patent claims
mode of operation, by means of which describes how the inventive effect is achieved
This is pretty obvious - the title will be at the beginning of the specification. Many years ago, patents had very short, very generic titles - "Tool", "Device". Today, titles are longer and more specific, especially in patent based on applications from some other countries. Japan, in particular, tends toward very long titles. 
The common part of the description gives a brief summary or general statement of the invention. The summary is supposed to be directed toward the invention, rather than the disclosure as a whole. The summary may point out the advantages of the invention or how it solves problems previously existent in the art (and preferably indicated in the Background of the Invention).
ip4inno

20. The Patent’s Composition cont.
3. Description specific part, and any figures
detailed technical description with specific explanation of embodiment with reference to any figures
4. Claims
independent claim/s
apparatus
method use of ...
product
dependent claim/s
5. Abstract
The specific part gives a description of the preferred embodiment(s) of the invention. The description should be as short and specific as is necessary to adequately and accurately describe the invention. This section of the specification is used to describe the various embodiments of the invention in great detail. Each of the figures will be explained, and, at least in theory, every reference number in the drawing will be called out and named in the detailed description. The detailed description will often include a method of making an invention, or a method of using it. Sometimes there will be one or more "examples", especially in method patents or in inventions which have chemical or biotech elements, where it is necessary to demonstrate the utility of the invention. 
Claims are the parts of a patent which define the boundaries of patent protection. Patent claims are the legal basis for your patent protection. They form a protective boundary line around your patent that lets others know when they are infringing on your rights. The limits of this line are defined by the words and phrasing of your claims.
Most patent offices also require that the application includes an abstract which provides a summary of the invention to aid searching.
ip4inno

21. Patent Process
ip4inno

22. The Patent Process (simplified)
Decision
Application refused
Application approved
Publication B
Storage
Opposition
Expiration after max. 20 years
Publication A
Further examination
Search and examination
Application
Examination for official secrets
Formal examination
Important dates are:
Filing date
First search and examination 6 to 10 months from filing date
Publication A: 18 months from filing date
Decision: normally 3 to 7 years
Publication B: When patent is granted
The granting process is in principle as follows (differences exist in each country):
The application is examined to find out if it contains an official secret. If it does a special department with examiners who are cleared to do this job, will do the search and examination
In the normal process a formal examiner will find out if the application fulfils the formal demands for a patent application (contain a title, abstract, description, claims and drawings)
Then the search and examination will be carried out by a technical examiner in order to find out if the application is patentable
Further examination can take place if the applicant does not agree
At last a decision takes place: granting or refusing
After the granting a competitor can make an opposition, if he finds that the patent should not be granted
ip4inno

23. Roles of the Important Partners
Step 1: Composition of application
Step 2: Filing application
Step 4a: Reconstruction of application
Attorney
Patent Office
Inventor
Step 4: 1. Decision
Step 3: 1. Examination
There are 3 main participants when applying for a patent:
the applicant and his Attorney at one side of the table and the patent office at the other side. The applicant presents the invention for the attorney and the attorney makes the patent application. It is very important that the claims are drawn up in a way that secure the broadest possible right.
The patent office evaluate the application, i.e. make a search and examination and grant the patent if the requirements are fulfilled or refuse the application.
There are normally 2 or more correspondences between applicant/attorney and the patent office before a conclusion can be drawn
Step 6: Final Decision
Step 5: Further examination
Step. 7: Publication & storage
ip4inno

24. Patent Strategy
ip4inno

25. Why apply for a 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
It is often essential to get a patent if you want to establish a company and need some investors. Many small companies especially biotech and IT companies are based on a patent portfolio. No investors want to put money into a company, if there is no guarantee for the right of the product
If you are a single inventor or a small company, it might be a better idea selling the patents, because it is an expensive and difficult process to establish a production line and go on the market with the product.
ip4inno

26. Patent Strategy Options: Patent protection national patent
international patent application
regional patent system
Concealment
Patent prophylaxis – publication
A company has the choice to obtain patents to cover his invention depending on his business strategy. You can use different patent systems, concealment or prophylaxis.
But each option has advantages and inconvenient
Registration of patents in different areas – using different applications systems give different rights and possibilities for exploitation.
What does concealment include in relation to the patented invention?
For how long is the invention concealed?
In which connections is the invention concealed?
ip4inno

27. Patents ip4inno Other issues to consider:
Secrecy better than a patent? (example: Vodka, Whisky and spirits). Secrecy another way of protecting your IP. Dependent on your product – some spirits contain a secret recipe.
Prophylaxis better than patent? (in newspapers, internet etc.). Example: A pharmaceutical company develops a new medicine. This consists of a number of development steps, where some of the steps are uninteresting to protect. The company may think it is too expensive to grant and maintain a patent considering the income of the product. However, the pharmaceutical company would not like other companies to be able to protect the technology and in this way prevent the company producing the medicine. In these cases prophylaxis is chosen.
Infringement: Example: Danish wind mill industry and USA. A large DK wind mill company erected a number of mills in the USA, but was stopped because of infringement of patent rights. After this, the wind mill industry began using the patent system!
Licence agreement – dependent patents: Example: Record player and pick-up. A license is a permission granted by the holder of the right (licensor) to a person who wants to use an invention (licensee) within the territory of protection. Types are non-exclusive, sole and exclusive licence.
For more info see
ip4inno

28. Which Type of Patent? National patent can be used:
For protection in the home country market or in a few countries
As a basis for extending protection to other countries or regions
International patent applications can be used:
For protection in many countries and for extending the pre-publication period (up to 30 months)
Regional patent can be used:
For protection in a number of countries in the same region at a lower cost
Advantages and disadvantages using the different systems.
You can have the same rights in one country by 3 different ways
The variables are: cost, term of procedure
ip4inno

29. 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)
Patent is a territorial exclusive right, filed in the language of the country. Another person can easily produce a product in Sweden if you only have the patent right in Denmark.
If you wish to have protection in several countries => take a patent in each desires country by regional patent or PCT
This is possible, because patent laws are very much harmonised => international systems are possible
OAPI = Africa, former French colonies
ARIPO = Africa, former English speaking countries
EURASIAN = Former USSR and some Asian countries
ip4inno

30. Priority Within 1 year from filing you can:
File your application in other countries with inclusion of priority established in the first country of filing the application
For patent applications this means that:
Novelty is valid from the application filing date of the first country
Priority right
Jump to: navigation, search
In patent, industrial design rights and trademark laws, a priority right or right of priority is a time-limited right, triggered by the first filing of an application for a patent, an industrial design or a trademark respectively. The priority right belongs to the applicant or his successor in title and allows him to file a subsequent application for the same invention, design or trademark and benefit, for this subsequent application, from the date of filing of the first application for the examination of certain requirements. When filing the subsequent application, the applicant must "claim the priority" of the first application in order to make use of the right of priority.
The period of priority, i.e. the period during which the priority right exists, is usually 6 months for industrial designs and trademarks and 12 months for patents and utility models. The period of priority is often referred to as the "priority year" for patents and utility models.
In patent law, when a priority is validly claimed, the date of filing of the first application, called the "priority date", is considered to be the "effective date of filing" for the examination of novelty and inventive step or non-obviousness for the subsequent application claiming the priority of the first application. In other words, the prior art which is taken into account for examining the novelty and inventive step or non-obviousness of the invention claimed in the subsequent application would not be everything made available to the public before the filing date (of the subsequent application) but everything made available to the public before the priority date, i.e. the date of filing of the first application.
ip4inno

31. European Patent Convention (EPC)
Single place of filing
Single place of completion
Single place of granting
More economical than group of countries
EPO
The following countries are members of the European Patent Convention and can be designated in a European patent application:
Austria, Belgium, Bulgaria, Cyprus, Czech Republic, Denmark, Estonia, Finland, France, Germany, Greece, Hungary, Iceland, Ireland, Italy, Latvia, Liechtenstein, Lithuania, Luxembourg, Malta, Monaco, Netherlands, Poland, Portugal, Romania, Slovakia, Slovenia, Spain, Sweden, Switzerland, Turkey and United Kingdom. Norway expected to become bound January 1st 2008.
Additionally, a European patent may be given effect in a number of countries that are not members of the European Patent Convention.  If designated as an extension state a European patent can be treated as if it were a national patent.  These countries are:
Albania, Bosnia and Herzegovina, Croatia, Serbia and Montenegro, and The former Yugoslav Republic of Macedonia
A surrender of sovereignty – EPO grants a patent which is valid in the member state. Can create problems, example:
EPO has granted a biotech-patent concerning a growth inhibitor for small household animals in apartments, e.g. a cat. This way they can stay small and cute for life. In DK we would say this was immoral, but can’t do anything about it. (its probably a grant mistake at EPO!)
Filing in languages English, French or German. Patents are granted with validity in each country
Has to be validated in each country
Advantages: See slide
ip4inno

32. Patent Cooperation Treaty (PCT)
International novelty and patentability search
Single place of filing
Final decision for countries
Main advantages:
One application place
One set of rules
Postponement for 30/31 months from priority date and by that buying time!
Article 1
Establishment of a Union
(1) The States party to this Treaty (hereinafter called "the Contracting States") constitute a Union for cooperation in the filing, searching, and examination, of applications for the protection of inventions, and for rendering special technical services. The Union shall be known as the International Patent Cooperation Union. (2) No provision of this Treaty shall be interpreted as diminishing the rights under the Paris Convention for the Protection of Industrial Property of any national or resident of any country party to that Convention.
137 member states as of August 1st 2007.
Some advantages the (PCT system):
One application place and in own language, One set of rules, International Publishing, International Novelty Search, International Preliminary Report on Patentability, Possibility of making changes in the international application before transfer to national authorities 
Because of longer time for application he is better placed to assess the technical value and economic interest of patent protection and to select the particular countries in which he desires to continue seeking protection for his invention.
Time limit for entering the national phase is 30 months from the priority date.
ip4inno

33. When and how? PCT, EP, COUNTRY Priority year 12 Further procedures12
Further procedures
Refusal
Patent
Appeal 2 months 6
Search and
1st examination
Opposition 9 months
Adm. Re-examination 18
Publication
Explain:
0: filing date
12 month: priority year – last date for filing a PCT/EP/other national applications with priority.
18 month: date for publication of the application in patent databases – Patent offices are responsible for the publication
Date for granting or refusal depends on the amount of further procedures
Search: the aim is to find prior art for the invention
Examination: the aim is to evaluate if the invention fulfil the requirements especially: novelty, inventive step, industrial applicable
Opposition procedure: a post grant, contentious, administrative procedure intended to allow any European patent to be centrally opposed. European patents granted by the EPO under the European Patent Convention (EPC) may be opposed by any person from the public (no commercial or other interest whatsoever need be shown). This happens often when some prior art was not found during the grant procedure, but was only known by third parties. There is normally a time limit for making a request for an opposition.
An opposition procedure can also take place in national offices for national patents
Refusal: The Examining Division shall refuse a patent application if it is of the opinion that such application or the invention to which it relates does not meet the requirements of the Convention, except where a different sanction is provided for by this Convention
Re-examination is used to provide a re-evaluation of an issued patent based on prior art not considered by the examiner in the initial patent issuance.  It is particularly useful for patent holders when an alleged infringer raises prior art as a reason for invalidity as a defence in an infringement or declaratory judgment action. 
ip4inno

34. PCT system - Important Dates
ip4inno

35. ip4inno Application RO/NO ISA IB Demand? IB RO/IB IB IPEA
PCT Organisation - units
Application
RO/NO
ISA IB
Demand? IB NO
Functions:
Establish IPRP and send to designated offices
RO/IB
Functions:
Performs Search and opinion
Transmits ISR+WO to IB and applicant
Functions:
Publication of ISR+WO
Transmits ISR+WO to IB and applicant
YES
Functions:
Collect fees
Receive appl.
Check formality
Transmits record copy to IB and search copy to ISA IB
IPEA
Functions:
Transmit IPER to elected offices
Functions:
Transmit copy of demand to IB+notify applicant
Performs WO/IPER
Transmit IPER to IB and applicant
IB = International bureau (WIPO)
RO/NO = Receiving office is national office
RO/IB = Receiving office is International Bureau (WIPO)
ISA = International searching authority
IPEA = International preliminary examination authority
ip4inno

36. Patent family D1 Base patent D2 with priority from D1
Patent families Generally speaking, a patent family is a group of patents which, like a family, are all related to each other, in this case by way of the priority or priorities of a particular patent document. In example, in the database, a patent family is defined as
comprising all documents having exactly the same priority or
combination of priorities.
An INPADOC patent family is defined as comprising all the documents having the same priority or combination of priorities. This includes all the patent documents resulting from a patent application submitted as a first filing with a patent office and from the same patent application filed within the priority year with a patent office in any other country. Patent family members are automatically assigned the ECLA symbol of the document classified first in ECLA. For more information on patent families, see the following articles in EPIDOS News: • April Patent families • February family • March INPADOC and Derwent families
Example: base patent is filed in a national office. The application is after 12 month filed in EPO (D6), US (D4) and JP (D2) and KR (D3). Later a new application is filed in US with priority from D4)
D1-D6 are a patent family connected by priorities.
Documents with exactly the same priority are equivalents i.e. D2, D3 and D6 are equivalents
D1, D4 or D5 have no equivalency.
This is one definition – there are other definitions on equivalents.
ip4inno

37. Utility Models
ip4inno

38. Utility Model The ”Patent-system” for smaller inventions Conditions:
solve a technical problem
new
inventive step (in some countries e.g. Turkey not necessary)
Often used for inventions concerning:
household goods
hand tools
furniture
A utility model is an intellectual property right to protect inventions. This right is available in a number of national legislations, such as Argentina, Austria, Brazil, Chile, China, Denmark, Finland, France, Germany, Italy, Japan, Malaysia, Mexico, Morocco, Philippines, Poland, Portugal, Russia, South Korea, Spain, Taiwan, Uzbekistan, etc. [1] It is very similar to the patent, but usually has a shorter term (often 6 or 10 years) and less stringent patentability requirements.
The German and Austrian utility model is called the "Gebrauchsmuster", which influenced some other countries such as in Japan. Meanwhile, the utility model in Indonesia and Finland is called as "Petty Patent"
However, methods are excluded.
ip4inno

39. The utility model It looks like a patent.
The U in the publication number marks the
utility model
U as - utility
- utilité
- utilidad
- utilità
It is an international standard.
ip4inno

40. The utility model is similar to a patent
Similar in terms that:
a utility model is an exclusive right
allows the right holder to prevent others from commercially using the protected invention
may also be sold or licensed
within 12 months a national utility model application can be turned into a European patent application, if the utility model application fits to the requirements of the European patent application
ip4inno

41. Example of utility model
When you experience difficulties in opening your milk carton this device will help you!
ip4inno

42. The utility model is similar to a patent but …
the lifetime is only 10 years
granted within a few months
may be granted without examination (e.g. in Germany)
the fees for application and maintenance are cheaper
it only protects products NOT processes
A product …
The assembling of …
can be
protected
cannot be protected
ip4inno

43. The utility model and the concept of novelty
The nature of an invention is that it is new
Normally, new means new to the world
Concerning the patent law new means "does not form part of state of the art" which is in accordance with our understanding of novelty
In contrast to a patent, in some countries the novelty requirement to obtain a utility model is "relative" (e.g. Germany, Spain)
only a public written disclosure of the invention in Spain/Germany is prejudicial against the novelty of the invention
in Germany a description within the 6 months preceding the date relevant for the priority of the application shall not be taken into consideration if it is based on the conception of the applicant or his predecessor in title.
ip4inno

44. Some possible consequences from the "relative" novelty requirement
Assume that a certain canvas chair is used at a hotel pool in Croatia.
The chair is not described in public prints, especially not in Germany or Spain.
Utility models may be granted for the same canvas chair in Germany and Spain.
ip4inno

45. Where can utility models be acquired?
Countries and regions providing utility model protection are:
Australia
Argentina
Armenia
Austria
ARIPO
Belarus
Belgium
Brazil
Bulgaria
China
Colombia
Costa Rica
Czech Republic
Denmark
Estonia
Ethiopia
Finland
(France)*
Georgia
Germany
Greece
Guatemala
Hungary
Ireland
Italy
Japan
Kazakhstan
Kenya
Kyrgyzstan
Malaysia
Mexico
Netherlands
OAPI
Peru
Philippines
Poland
Portugal
Republic of Korea
Republic of Moldova
Russian Federation
Slovakia
Spain
Tajikistan
Trinidad & Tobago
Turkey
Ukraine
Uruguay
Uzbekistan
* The utility model does not exist in France. They have the ”certificat d’utilité” but patenting conditions are the same for a patent.
Source:
ip4inno

46. Why a Utility Model?
Protects minor inventions excluded from patent protection
Protects inventions where a shorter protection period is required
Speedy protection
Easy
Cheap
Use utility model as a strategic weapon
example: In DK the furniture industry uses utility models to ”pack in” patents. If one company has a patent for e.g. a chair, a number of competitors will file utility model applications with tiny developments of the chair. The patent holder cannot change his chair in any way without infringing the utility models. Hence he has to make a licence agreement or buy the utility models from his competitors!
Less restrictive demand to inv. step than for patents – the difference between the invention and prior art is smaller
Fast protection
Less complicated procedure than for patents
Cheaper
ip4inno

47. Other Supplementary Rights and Certificates (1)
Plant Varieties – Objects of Verification
Varieties of all botanical genera and species, including, inter alia, hybrids between genera or species-
Variety – a plant grouping within a single botanical taxon of the lowest known rank
Variety
The grouping, irrespective of whether the conditions for the grant of a plant variety right, can be:
Defined by the expression of the characteristics that results from a given genotype or combination of genotypes,
Distinguished from any other plant grouping by the expression of at least one of the said characteristics, and
Considered as a unit with regard to its suitability for being propagated unchanged.
ip4inno

48. Other Supplementary Rights and Certificates (2)
Supplementary Protection Certificates for products
which constitute:
The “active ingredient”, or combination of active ingredients, of a “medicinal product”; or
The “active substance”, or combination of active substances, of a “plant protection product”
Medicinal product – any substance or combination of substances presented for treating or preventing disease in human beings or animals and any substance or combination of substances which may be administered to human beings or animals with a view to making a medicinal diagnosis or to restoring, correcting or modifying physiological functions in humans or in animals.
Plant protection product – active substance and preparations containing one or more active substances, put up in the form in which they are supplied to the user, intended to:
Protect plants or plant products against all harmful organisms
Nutrients, e.g., plant growth regulators
Preserve plant products
Destroy undesirable plants.
The term “active ingredient” or “active substance” will generally be interpreted as including any closely related derivative, in particular a salt or ester, which has obtained authorization to be placed on the market and is protected by the basic patent unless the derivative in question can be regarded as a new active ingredient.
ip4inno

49. Patent and Business Is my invention new? What is state of the art?
Which solutions already
exist?
Who are my competitors,
or potential partners
and what do they do?
Questions could be discussed and answered shortly small groups – as a summary.
Besides these questions: Unfair Competition law as a safety net
Am I free to use or
do I infringe someone’s
patent?
What’s going on
in a specific technical field?
ip4inno

50. Links www.epo.org (European Patent Office)
(World Intellectual Property Office)
(US Patent and Trademark Office)
(Europe’s network of patent databases)
SME Case
Small and Medium-Sized Enterprises WIPO website
ip4inno

51. A general discussion of today’s topics
ip4inno

52. CASE ip4inno Teacher serves as Patent office.
Participants act as developing enterprise and/or patent attorney.
The setup you choose might depend of the time left for ”playing”.
ip4inno

53. Patenting a reflecting bike tape
Øvelse
The exercise is to describe etc. a reflecting bike tape in order to take out a patent for it.
Three functions are involved:
Patent office = teacher
Patent attorney = either all participants or part of participants
Enterprise = either all participants or the rest of participants
Patenting a reflecting bike tape
ip4inno

54. Reflective tape Describe the construction of the tape.
What is new – compared to already known tapes.
If new – what is patentable ?
Set up a claim
To be copied and distributed
Exercise for the participants playing enterprise – and for the patent attorney-group to support.
Discussion and evaluation of formulation of claim – in groups or plenum
ip4inno

55. Example of a claim
Bike clip or tape including an oblong flexible sleeve characterized by the spring function of the sleeve, which without external influence keeps the tape coiled in a cylindrical roll with overlapping ends.
…is shown as a ready made example – to be explained by the teacher.
ip4inno

56. Prior art
ip4inno

57. Reflective bike tape Invention: Reflective bike tape Known technique 1
Technical remedies: US DE
Bike clips or tape +
Flexible cuff
Encapsulated spring function
Coils by external action
Overlapping ends
Technical functions:
Reaches around an arm or a leg
Unaided attached
…is shown as e ready made example – to be explained by the teacher.
ip4inno

58. Decision from the Patent office
Invention: Yes
Novelty: No
Patent refused 
Please set up another claim,
if you want your product to be patented.
Teacher explains.
Yellow box with new question slides in
ip4inno

59. Renewed Analysis Does the invention still have any patentable left?
Check of the revealed material:
does it fit with the impression of relevant techniques at the applicant ?
problems / weaknesses by the revealed technique compared to the invention.
Has any important features about the invention been overseen by the patent office ?
Elaboration of reply. Changes in application, explanation of the invention in relation to the revealed material
Patent attorney valuation – firstly discussed in the patent attorney group or plenum thereafter in cooperation with enterprise group.
ip4inno

60. Example of claim(s)
1. Bike clip or tape including an oblong flexible sleeve characterized by the spring function of the sleeve, which without external influence keeps the tape coiled in a cylindrical roll with overlapping ends.
…is shown as a new readymade example – to be explained by the teacher. To be compared with claim 1.
2. Bike clip or tape according to claim 1 characterized by the spring function established by a core of bistable spring material which allows the tape to be stable in the outstretched plane state.
ip4inno

61. Renewed Analysis Invention: Reflective bike tape Known technique 1
Technical remedies: US DE
Flexible strip +
Bounce towards coiled state
Clips
Strip with a core of bistable tape
Reflective outer side
Velour on inner side
Technical functions:
Reaches around an arm or a leg
Unaided attachment
Is stable in outstretched plan state

62. Decision from the Patent office
Invention: Yes
Novelty: Yes 
Patent Granted
Congratulations!
ip4inno

63. THANK YOU FOR YOUR ATTENTION
ip4inno