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Fundamentals of IP - Francesco Maria Colacino

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Francesco Maria Colacino

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Fundamentals of IP - Francesco Maria Colacino

  1. 1. Fundamentals of IP Francesco Maria Colacino, Ph.D. MBA College of Engineering and Physical Sciences University of Birmingham f.colacino@bham.ac.uk 12 November 2013
  2. 2. Agenda • The Patent System: Origins and Rationale • Reasons to Engage with Patents • The Different Types of Intellectual Property Rights (IPRs) • Patent Filing Process • Patent Structure • Conclusion November 2013 Francesco M. Colacino 2
  3. 3. Disclosure • Some of the material has been provided by the European Patent Office (EPO) • Where EPO’s material has been used with no modifications the EPO logo will be shown • Where changes have been made to the original material the EPO is not responsible for the correctness of any such modified version… ….Blame me! November 2013 Francesco M. Colacino 3
  4. 4. The First Account of a “Patent System" In the ancient Greek city of Sybaris (destroyed in 510 BC), leaders decreed: "If a cook invents a delicious new dish, no other cook is to be permitted to prepare that dish for one year. During this time, only the inventor shall reap the commercial profits from his dish. This will motivate others to work hard and compete in such inventions." November 2013 Francesco M. Colacino 4
  5. 5. Sibari (Sybaris) Naples Sibari (Sybaris) Cosenza Calabria Copyrights: Wikimedia Commons November 2013 Francesco was born here!! (Corigliano Calabro) Sicily Francesco M. Colacino 5
  6. 6. The Patent System Senate of Venice, 1474: "Any person in this city who makes any new and ingenious contrivance, not made heretofore in our dominion, shall, as soon as it is perfected so that it can be used and exercised, give notice of the same to our State Judicial Office, it being forbidden up to 10 years for any other person in any territory of ours to make a contrivance in the form and resemblance thereof". Today: New to the world; up to 20 years of protection Main Objectives: Incentive to innovate Incentive to share knowledge November 2013 (grant protection) (publish the invention's details) Francesco M. Colacino 6
  7. 7. The “Social Contract” in the Patent System Get exclusivity Reveal invention … so that others can learn from it and improve upon it! November 2013 Francesco M. Colacino 7
  8. 8. Other reasons to Engage with Patents Patents focus on HOW THINGS WORK Published in Patents 20% Published Elsewhere 80% Scientific articles focus on SCIENTIFIC CONTRIBUTION Source: Empirical Studies November 2013 Francesco M. Colacino 8
  9. 9. Other reasons to Engage with Patents Protected 10% 90% Free to use Source: EPO November 2013 Francesco M. Colacino 9
  10. 10. Other reasons to Engage with Patents • To see if anyone has developed technology like yours • To find other inventors working in your field • To find other companies active in your field • To find new ideas for solving your technical problems • To develop new products • To develop new business directions • To evaluate the state of the art • To avoid infringing • To assess freedom to operate OR… • Nothing in particular, you just like browsing patents! November 2013 Francesco M. Colacino 10
  11. 11. Type of IPR What for? Length of Protection How? Products and processes which are novel, involve a non-obvious inventive step and are capable of industrial application. There are a number of excluded classes such as mathematical algorithms, mathematical theories and the like. 20 years from date of filing Application and Examination Any sign capable of graphic representation that allows the customer to recognise the goods and services of one undertaking from those of another. A sign can include, for example, words, logos, colours, slogans, pictures, three-dimensional shapes, sounds, gestures or a combination of these. Renewable every 10 years on payment of renewal fees, with no maximum time limit Registration Registered Designs An internal or external aspect of design (not the way how a product works) which is "new" and has "individual character" or "eye appeal". It is a right for the appearance of the whole or a part of a product resulting from the features of, in particular, the lines, contours, colours, shape, texture or materials of the product or its ornamentation. Renewable every 5 years up to a maximum of 25 years Registration Copyrights © Original literary, dramatic, musical and artistic works, sound recordings, films, broadcasts, cable programmes and typographical arrangements. Copyright also protects computer programs and computer source code. General rule is the life of the author plus 70 years Exists automatically (in the UK) Trade Marks ™ Same as registered Trademarks No maximum time limit. It may be difficult to prove infringement (passing off) Use Unregistered Design Rights Any original aspect of shape or configuration may be whole or part of an article whether it is the interior or exterior 15 years from creation or 10 years from first marketing Use Trade Secrets Any confidential information/know how that is not known to the public, more valuable if not know to the public and subject to reasonable efforts to maintain the secrecy Till it is not disclosed NDAs Patents Registered Registered Trade Marks ® Unregistered Unregistered
  12. 12. Registered • novel • Involve non-obvious inventive step • capable of industrial application (also called technical effect) IP Star Patents Trade Secrets Designs IP Trade Marks November 2013 Francesco M. Colacino Copyrights 12
  13. 13. Patents found in a mobile phone © Nokia • Sliding mechanism • Semiconductor circuits • Chemical compounds •… Patents Trade Secrets Designs IP Trade Marks November 2013 Francesco M. Colacino Copyrights 13
  14. 14. IP Star Registered or Unregistered An internal or external aspect of design (not the way how a product works) which is "new" and has "individual character" or "eye appeal" Patents Trade Secrets Designs IP Trade Marks November 2013 Francesco M. Colacino Copyrights 14
  15. 15. Designs found in a mobile phone © Nokia • Sliding mechanism •Semiconductor circuits • Chemical compounds •… Patents Trade Secrets Designs IP Trade Marks November 2013 Francesco M. Colacino • Form of overall phone • Arrangement of buttons in oval shape • Three-dimensional wave form of buttons •… Copyrights 15
  16. 16. IP Star Patents Trade Secrets Designs IP Trade Marks November 2013 Francesco M. Colacino Unregistered Original literary, dramatic, musical and artistic works, sound recordings, films, broadcasts, cable programmes , computer programs and computer source code Copyrights 16
  17. 17. Copyrights found in a mobile phone © Nokia • Sliding mechanism •Semiconductor circuits • Chemical compounds •… Patents Trade Secrets Designs IP Trade Marks November 2013 Francesco M. Colacino Copyrights • Form of overall phone • Arrangement of buttons in oval shape • Three-dimensional wave form of buttons •… • Software code • Instruction manual • Ringtone •… 17
  18. 18. IP Star Patents Trade Registered or Unregistered Secrets Any sign capable of graphic representation that allows the customer to recognise the goods and services of one undertaking from those of another (e.g. words, logos, colours, slogans, pictures , three-dimensional shapes, sounds, gestures or a Trade combination of these) Designs IP Marks November 2013 Francesco M. Colacino Copyrights 18
  19. 19. Trade Marks found in a mobile phone © Nokia • Sliding mechanism •Semiconductor circuits • Chemical compounds •… Patents Trade Secrets Designs IP • Made by "Nokia" • Product "N95" • Software "Symbian“, … November 2013 Trade Marks Francesco M. Colacino Copyrights • Form of overall phone • Arrangement of buttons in oval shape • Three-dimensional wave form of buttons •… • Software code • Instruction manual • Ringtone •… 19
  20. 20. IP Star Unregistered Any confidential information/know how that is not known to the public, more valuable if not know to the public and subject to reasonable efforts to maintain the secrecy Patents Trade Secrets Designs IP Trade Marks November 2013 Francesco M. Colacino Copyrights 20
  21. 21. Trade Secrets found in a mobile phone © Nokia • Sliding mechanism •Semiconductor circuits • Chemical compounds •… Patents ? Trade Secrets Designs IP • Made by "Nokia" • Product "N95" • Software "Symbian", "Java" November 2013 Trade Marks Francesco M. Colacino Copyrights • Form of overall phone • Arrangement of buttons in oval shape • Three-dimensional wave form of buttons •… • Software code • Instruction manual • Ringtone •… 21
  22. 22. Rights Conferred by a patent The patent does not grant the right to use the invention!... ….but stops others from doing so • Prevent others from making, using, offering for sale, selling or importing infringing products in the country where the patent was granted • Sell these rights or conclude licensing contracts • For up to 20 years from the date of filing of the patent application • A patent search is indispensable before starting development in order not to waste time and effort November 2013 Francesco M. Colacino 22
  23. 23. Filing Process What NOT TO DO when considering filing a patent application • No publication prior to filing e.g. no article, press release, conference presentation/poster/proceedings or blog entry • No sale of products incorporating the invention prior to filing • No lecture or presentation prior to filing except under a non-disclosure agreement (NDA) • Seek professional advice soon! • File before others do!... Not just file early. November 2013 Francesco M. Colacino 23
  24. 24. What the Patent Attorney Needs • • • • • • • Invention Summary Prior Art Differences and Advantages Experimental Details Figures, Drawings, Sequences Applicant(s), Inventor(s) Publication plans November 2013 Francesco M. Colacino 24
  25. 25. Filing Process - Overview 12 months Priority (Provisional) Application (GB) First Year After Filing • Priority date established • Further supporting experimental work • Search results (if requested) • Publish or not? Possibility to withdraw • Supplemental application(s)? • Commercial goals • Identify Countries where protection is required PCT Application 18 months OR 12 months Advantages of PCT Routes • Delays decision on countries to cover • Delays costs (but slightly more expensive overall) • Good search report • One patent application for up to around 141 states National/Regional Phase Applications National Patents Granted National Examination and Grant • National examination procedures – Rounds of examination, reports and responses – Refusal and Acceptance – Appeals • Grant Processes • Post Grant Procedures • Maintenance & Renewal fees Protection Overseas November 2013 Francesco M. Colacino 25
  26. 26. Filing Process - Overview Accumulated Costs £5,000 £10,000 “Provisional” Patent Application at UK IPO or EPO or US PTO 0 12 Months 12 months PCT Patent Application at WIPO 18 months £21,000£35,000 Accumulated Time Withdraw? 18 months National Phase Filings 30 months From 3 months £24,000£75,000 £30,000£120,000 £30,000£1.5 mil November 2013 Examination of National Phase Filings (£1k-£5k per territory) Granted Patents in Specific Countries (grant fee £0-£4k per territory) Patent maintained whilst in use To 6 years Up to 8.5 yrs Annual Renewals Up to 20 yrs 26
  27. 27. What Does a Patent Look Like? November 2013 Francesco M. Colacino 27
  28. 28. Patent Journal Article Bibliographic Information Bibliographic Information • • Inventor, proprietor, date of filing, technology class, etc. Authors, affiliations, date of submission/acceptance, key words, etc. Abstract Abstract • • Around 150 words as a search aid for patent applications A 150/200 words excerpt of the paper to quickly navigate its content Description Introduction • Summary of prior art (i.e. the technology known to exist) • The problem that the invention is supposed to solve • An explanation and at least one way of carrying out the invention • Summary of the state of art (i.e. the science known to exist) • The rationale for the research Materials and Methods • How experiments have been performed Results • The outcomes of the experiments (usually with plots and pictures) Claims Discussion • Define the extent of the Patent protection • Results and methods are discussed highlighting limitations/potentials of the research • A pathway to carry out future work is usually explained Drawings Conclusion • Illustrate claims and description and help with their understanding • Main findings are summarised 28
  29. 29. A Patent Front Page November 2013 Francesco M. Colacino 29
  30. 30. … But do not be too Naïve in searching for Patents Common Language Patent Jargon • Spring • Energy storage device Sometimes the applicant does not want his/her patent to be found… • Ball bearing • A plurality of balls Sometimes the jargon is used to broaden the scope of the patent… • Portable HD November 2013 • Data storage carrier Francesco M. Colacino 30
  31. 31. Conclusion Advantages and Disadvantages of Patenting (… or IPRs in general) Advantages Disadvantages (mainly for patents) • Exclusivity enables investment and higher returns on investment • Reveals invention to competitors (after 18 months) • Strong, enforceable legal right • Can be expensive • Makes invention tradable (licensing) November 2013 • Patent enforceable only after grant (this can take 4-5 years) Francesco M. Colacino 31
  32. 32. Conclusion Alternatives to Patenting Information disclosure (publishing) • Cheap • Prevents others from patenting the same invention • Does not offer exclusivity • Reveals the invention to competitors Secrecy (creating a trade secret) • Cheap (but there is the cost of maintaining secrecy) • Does not reveal the invention • No protection against reverseengineering/duplication of invention • Difficult to enforce • "Secrets" often leak quite fast Do nothing • No effort required November 2013 • Does not offer exclusivity • Competitors will often learn details Francesco M. Colacino 32
  33. 33. References • www.ipo.gov.uk - Official government body responsible for granting Intellectual Property (IP) rights in the United Kingdom, including patents, trade marks, and copyright. • www.epo.org - The official website of the European Patent Office (EPO) • www.uspto.gov - Home page of the United States Patent and Trademark Office's main web site. • www.wipo.int - WIPO (World Intellectual Property Organization) is responsible for the promotion of the protection of intellectual property throughout the world through cooperation among States. *Links are being made to other pages containing material that is copyright of third parties. November 2013 Francesco M. Colacino 33

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