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A Business-Oriented Overview of IP for Law and Management Students Geneva, May 29-31, 2007 Small and Medium-Sized Enterprises (SMEs) Division World Intellectual Property Organization (WIPO)


TOPIC 2 The Role of Patents and Patent Information in Business Strategy


Factors Determining Success of a New/Improved Product The product provides functional advantages over competing or substitute products. The retail-selling price is considered to be advantageous The product and/or its packaging has an attractive design The new product is properly branded, promoted and advertised The new product is readily available to customers in the main retail shops Consistent product quality A number of after-sales services are provided


Different Ways of Protecting Inventions A variety of mechanisms are employed by firms to protect their inventions Secrecy Lead time Complementary capabilities (e.g., sales and service, manufacturing) Patents


Relative Effectiveness of Mechanisms For product innovations Top mechanisms overall: Secrecy and lead time Patents least effective overall Relatively effective in drugs and medical equipment. Less effective in semiconductors & communications equipment Larger firms report patents to be more effective


What is a Patent? A patent is a right to exclude all others from exploiting an invention, which is a a new, non-obvious and useful… Process (Treatment of cane; bamboo; finishing of a product; kiln) Machine (Looms; instruments) Manufacture (Belt; fastening mechanism) Composition of matter (Alloy) Improvements (radical/incremental) What is an invention? Technical solution to a technical problem (Functional versus Form/aesthetic)


What to Patent: Priorities What to patent potential commercial products of a company methods of making and using the products systems utilizing the company’s products made by company’s customers parts of your product made by vendors commercially important inventions blocking patents to block competitors


Some Legal Considerations Patentabililty requirements: Must be new (Worldwide) Must have an inventive step/non-obvious Must be capable of industrial application Maximum duration of a patent: 20 years (renewal fees must be paid) Territorial right Used publicly, Published, Sold or Offered for Sale Patty Patent/Utility Model


Prior Art All information available prior to the date of filing of the relevant patent application against which the patentability of the invention will be determined. Existing relevant technology Can be your own technology or of others Secret prior art Novelty/Nonobviousness First to File/First to Invent (USA)


Exclusive Patent Rights Right to exclude others from making, using, selling or importing the claimed invention. Virtually no rights in unclaimed subject matter Strategic claim drafting is important No automatic right to use patented invention


Patents: Some Examples Patents that have changed the world: Patent number: US 223,898. Edison’s electric bulb. Patents for simple low/tech products: The inventor licensed the system for opening Coca-Cola cans at 1/10 of a penny per can. During the period of validity of the patent the inventor obtained 148,000 UK pounds a day on royalties. Post-it notes: invented by chance, initially ignored by inventors but valued by the manager








SPECIFICATION A written description of the invention in clear and concise terms. The Specification must be enabling, that is, describe the invention in such a way as to permit one skilled in the art to make and use the invention. The Specification must disclose a mode/the best mode of making and using the invention. There can be no “material secrets” kept from a patent application. Should also include reasonable alternatives to the preferred embodiments in order to avoid any inference that the invention is limited to the preferred embodiments.


CLAIMS Must “particularly point out” and “distinctly claim” the subject matter of the invention. Independent claim: A claim which does not reference any other claim. Dependent claim: A claim which references an independent claim or another dependent claim. Adds subject matter (limitations) to the preceding claim(s).


Claim Scope Independent claims define patent scope Dependent claims are fallbacks prior art


INVENTORSHIP In the United States, the patent application must be filed in the name of the inventor(s). Inventorship is purely a legal question, and is determined by an examination of who contributed creatively to what is being claimed. Inventorship cannot be dictated by politics, funding, ego, or even goodwill. An inventor can be anyone, and must be everyone, who contributes creatively to the conception or reduction to practice of the invention. Multiple inventors are referred to as JOINT INVENTORS.


Reasons for Patenting Reasons (nonexclusive) Products Processes Prevent copying 96% 78% Patent blocking 82 64 Prevent suits 59 47 Use in negotiations 48 37 Enhance reputation 48 34 Licensing revenue 28 23 Measure performance 6 5


Limits on Patent Effectiveness: Why Firms do not Patent Most important reasons for not applying Demonstration of novelty (32%) Information disclosure (24%) Ease of inventing around (25%) Negative partial correlation between firm size and defense cost as reason not to patent suggests why larger firms report (product) patents to be more effective.


Distinguish Between “Complex” and “Discrete” Product Industries Complex product industries: Where a product protected by numerous (e.g., hundreds) patents (e.g., computers, communications equipment), that is, more patents read on a product. Discrete product industries: Where a product protected by relatively few patents (e.g., drugs, chemicals)


Distinction Implies Different Uses of Patents by Industry Type Complex product industries: Patents used to block rival use of complements to Assure inclusion or “player” status in cross-licensing negotiations in order to gain access to rivals’ technologies Gain freedom to operate and design freedom via “mutually assured destruction” Discrete product industries: Patents used to block substitutes by creating patent “fences;” not to compel cross-licensing.


Defensive Patent Strategy Large portfolio of patents of various scope Protect products from copying Cause competitor to design around Reduce risk of patent infringement suit by competitors - mutually assured destruction Cross licensing - market entry Medium to large size companies High cost


Offensive Patent Strategy Small portfolio of pioneering patents Market leadership & advantage Licensing Deal & merger leverage Small to medium size companies Reasonable cost Market monitoring


Strategies for Acquisition of Patents WHAT to patent? Patent on every invention or only on high value inventions Gillette Mach 3 (one product, 35 patents) Patent mining


Strategies for Acquisition of Patents WHEN to patent? Delay in filing a patent application may lead to losing the patent to a competitor Grace Period First-to-file/invent system Annual maintenance fees often increase with time


Strategies for Acquisition of Patents WHERE to patent? Where will the product be commercialized? What are the costs involved in patenting abroad? What are the main markets for the product? Where are the main competitors based? Advantages of the PCT (provides more time)


Strategies for Acquisition of Patents WHO owns the patent? Company, entrepreneur or employee? What happens for subcontracted work?


Strategies for Patent Exploitation Case study of own exploitation of a patent Case: Mandy Haberman Invention of a non-spill drinking vessel Application for patents and industrial designs Registered mark: Anywayup® Difficulties in accessing the main retail stores and supermarkets Search for a partner Creation of a new company to commercialize the product Infringement and litigation


Strategies for Patent Exploitation Case study of a combined patent exploitation strategy: own exploitation and licensing Case: Pliva - Pfizer New antibiotic Patent application in Croatia and abroad Patent search by Pfizer leads to the discovery of the Pliva patent Pliva licenses Pfizer to produce the antibiotic in the US as well as in some other countries while Pliva maintains the exclusive right to commercialize it in Central and Eastern Europe


Strategies for Patent Exploitation Case study of a non-exclusive licensing strategy: Case: Bishop Engineering Enterprise specialized in power steering technology Over 300 patents since WWII Earns 1 Australian dollar per unit made Over 5 million dollars a year on royalties




PATENT INFORMATION The other side of the Coin PATENT  1. “deed securing to a person an exclusive right granted for an invention”  2. “open, evident, manifest”; “open to public perusal” < Latin patens (Collins Dictionary)


Patent Information All patents are published (generally 18 months after the application is filed) and are in the public domain A patent is an exchange between the inventor and society It is a key element of the balance of the existing international patent system


Using Patent Information Did you know? The entire set of patent documents worldwide includes approximately 40 million items. Every year approximately 1 million patent applications are published. About two-thirds of the technical information revealed in patents is never published elsewhere.


Using Patent Information Did you know? Most of the inventions are disclosed to the public for the first time when the patent is being published. (e.g. jet engine invented by Wittle in 1936). The information contained in the patent documents is NOT SECRET!


Using Patent Information “Patent information” is the technical and legal information contained in patent documents that are published periodically by patent offices. A patent document includes the full description of how a patented invention works and the claims which determine the scope of protection as well as details on who patented the invention, when it was patented and reference to relevant literature.


Patent information Technological relevance Legal relevance Relevance of patent documents Commercial relevance


Using Patent Information Legal relevance: Avoid possible infringement problems Assess patentability of your own inventions Oppose grant of patents wherever they conflict with your own patent


Using Patent Information Technological relevance: Keep abreast with latest technologies in your field of expertise Avoid unnecessary expenses in researching what is already known In Europe, more than US$ 30 mill. per year is waisted in unnecessary research - 30% of the total investment in R&D Identify and evaluate technology for technology transfer Get ideas for further innovation Identify alternative technologies


Using Patent Information Commercial Relevance Locate business partners Locate suppliers and materials Monitor activities of real and potential competitors Identify niche markets


http://www.wipo.int/patentscope PatentScope - WIPO Patent and PCT Resources on the Internet


What is PatentScope ? PatentScope is Access to WIPO’s Patent and PCT resources in one place Access to the technical information contained in more than one million international patent applications The platform for online electronic publication of PCT international applications More information on emerging issues, patent data, patent information and statistics


PatentScope - Overview of Content Patent Cooperation Treaty (PCT) Legal, technical and general information about the international patent filing system (PCT) including electronic filing. Patent Data More than 1 million international patent applications available for search, detailed enquiries and as data subscription services Patent Statistics Monthly statistical reports on PCT Annual reports on world-wide patenting activity, data query facility. Patent Services for Developing Countries Search reports, access to patent documentation


PatentScope - Overview of Content Patent Information Tutorials, Frequently Asked Questions Current Issues Numerous links to web sites, articles and studies on topical issues such as genetic resources, traditional knowledge, software, business methods, etc. Patent Law International Treaties administered by WIPO Links to intellectual property laws of nearly 100 member states Frequently Asked Questions Meetings, Seminars, Training Email updates


PCT Resources PCT Background Legal Information Guides, instructions, forms Meetings, Training, Documents


PCT Resources - Gallery of Inventions 20 (and growing) notable inventions that have been patented via the PCT system


Information on Patents Current and emerging issues in the patent system Background information Studies, articles Links to related resources


WIPO’s Patent Information Services for Developing Countries State of the Art Search Reports Search and examination of patent applications filed with Industrial Property Offices participating in the International Cooperation for the Search and Examination of Inventions programme (ICSEI). Information services Equivalent patent documents (patent family reports). Patent Documents Delivery of copies of individual patent documents.


Patent Statistics Monthly reports of PCT filing trends PCT national phase entry statistics Data Query (export data in Excel format based on user-defined criteria) Patent statistics from 1883 to the present day


Search International Applications PatentScope Search gives access to the complete collection of published PCT international applications (more than one million) Search using keywords boolean operators (AND, OR) field codes (applicant name, publication date, etc)


View the latest bibliographic data on record at the International Bureau including changes since publication View full text of description and claims for latin-language applications View National Phase Information where available View publication Notices Bibliographic Data


Access to the documents contained in the file of the International Bureau Publications Priority Documents Declarations (e.g. of inventorship) Written Opinions, Examination Reports and related documents View or download the documents in different formats PDF XML HTML Documents


THANK YOU Email: german.cavazostrevino@wipo.int http:/www.wipo.int/sme/

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