Leeds inventors group

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Presentation by Sarah Whitehead, patent examiner at the Intellectual Property Office, to Leeds Inventors Group on 22 September 2012.

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  • Aim is to reward innovation whilst at the same time make sure that research is available for others to use/develop etc
  • Rather than giving the owner the right to exploit the technology covered by the patent, it enables the owner to prevent others from doing so. You may have a granted patent that protects your technology, but that does not necessarily mean that you would not infringe someone else’s patent by exploiting it.
  • Secret ea
  • New –NovelMeans cannot have been patented, written about public access journals etc, speeches, presentations, films, websites etc Includes the inventor discussing the invention –KEEP IT SECRET. Discussions with lawyers ok as confidential but discussions with investors etc may need NDAs
  • Formalities exam does it meet formal requirements (i.e. Are all the forms, relevant parts of application, are the drawings suitable, margins etc)PAU – special unit for unrepresented applicants. identify any major issues e.g.well known, not sufficient info, obviously excluded and offer refund before full search by the examiner.
  • difference between the “quality” or “usefulness” of granted patents - The IPO can help you get a patent granted (often by narrowing claims to overcome prior art) this is not necessarily the cover you need. we are not trained in commercial aspects patent attorneys are. investment up front but may pay out later on if you need to enforce your patent. Factor the cost of attorney’s etc into applications for funding or investmentIn some cases deadlines can be extended but if not gets very complicated tests can be very strict.
  • Consider – if you’re not going to sell your product in Spain does it matter that someone else will? Is it worth the time
  • Reasons: e.g. potential infringer, need to secure an investor, patent box and also if want to get PPH processing at another office (more on PPH later).To be eligible for accelerated prosecution theissue should be specific to the particular application and NOT one which is true for all applications e.g. 'wanting to get the search results before the end of the priority year because the applicant is considering filing overseas' is NOT a good valid reason for accelerating a search. Actions of the applicant will be taken into account e.g. a delay in filing form 9 and claims = less likely to accept acceleration.Accelerated publication could be advantageous if you are aware of possible infringement, as your application being published can be seen as a warning of future legal action. However, there is no guarantee that your application will lead to a valid patent and no guarantee that an infringement action would succeed. The disadvantage of early publication is that it could cut short your investigation into the potential market and could alert other people to your activities, as once an application is published all the information in it is open to public inspection. Timeliness targets:Search/CSE – agree timescale with applicantExam – inform applicant whether request is allowable within 5 working days of request; perform exam within two months; process amendments promptly within one month.
  • Post grant update of search to find s2(3) prior art.
  • Applications will only be accelerated when requested by the applicant.Level of justification required: If, for example, the application relates to a solar panel or a wind turbine then a simple statement is likely to be sufficient. If however the application relates to, for example, a more efficient manufacturing process which uses less energy, then a more detailed explanation is likely to be necessary to explain how the invention has an environmental benefit.The IPO will not conduct any detailed investigation into these assertions, but will refuse requests if they are clearly unfounded, for example if the application relates to a perpetual motion machine.
  • Other: packaging, waste removal, medical equipment coatings, cooling, etcAllow around 99% of requests.Get over 200 requests a year (and increasing)
  • Hearing office e.g. Disagree with examiner and haven’t resolved the issue – ask to be heard by a senior officer. Inter partes e.g. ownership, revocation, licences – tribunal service (binding)Opinions non binding but might give you an idea (cheaply) of whether formal legal proceedings would be successful. May help negotiate a settlement
  • Leeds inventors group

    1. 1. Introduction to Patents and the Patent Application Process Dr Sarah Whitehead Patents Directorate 19th September 2012 Sarah.whitehead@ipo.gov.uk
    2. 2. What this talk will cover:What a patent is and why you might want oneWhat a patent isn’tOther optionsRequirements for a patentPatent specThe application process - inc priority.CostsTipsInternational protectionAccelerationResolving disputes
    3. 3. What is a patent•Intellectual Property right which protects new inventions•Covers how things work, what they do, how they do it, what theyare made of and how they are made.•Gives the owner the right to prevent others frommaking, using, importing or selling the invention without permission• Lasts up to 20 years in the UK – as long as it is renewed!• Country specific i.e. patent protection in the UK only works in theUK.
    4. 4. A deal between the state and the inventor Exclusive Rights 20 yearsState Inventor Fees Technical Description
    5. 5. Why would you want a patent?Stops others from copying, manufacturing, selling, and importingyour invention without permissionThe right to take legal action to stop them exploiting your inventionand to claim damagesYou can also:•Sell the invention and all the intellectual property (IP) rights•License the invention to someone else but retain all the IP rights•Discuss the invention with others in order to set up a businessbased around the invention.
    6. 6. What a patent isn’tA guarantee of commercial successSomething the police or government will enforce on your behalf –patent infringement is a civil rather than criminal offence; it is your responsibility toenforce your patentValid in counties other than those where it has been grantedNecessary in order to manufacture or sell a product (it just meansyou can stop others doing the same)Freedom to operate - doesn’t mean you won’t infringe anyoneelse’s patent.
    7. 7. Other options•Trademarks•Copyright•Design rights•Company names•Reputation/brandingSee our website www.ipo.gov.uk
    8. 8. Requirements for a patentYour invention must:be newnot published, disclosed or made public (anywhere in the world) before the filingdate.have an inventive stepnot obvious to someone with knowledge and experience in the subjectbe capable of industrial applicationmust be technical/practical such as apparatus or device, product such as a newmaterial or an industrial process or method of operation and not against the laws ofphysicsnot be excluded
    9. 9. Exclusionsa scientific or mathematical discovery, theory or methoda literary, dramatic, musical or artistic worka way of performing a mental act, playing a game or doing businessthe presentation of information, or some computer programsan animal or plant varietya method of medical treatment or diagnosisagainst public policy or morality.
    10. 10. Patent applicationDescriptionMust contain enough information for others to carry out the invention.DrawingsOptional. Helps to understand the description.AbstractShort summary including most important technical features. Included on the front page whenpublished.ClaimsDefines in words the invention that is protected. Defines the scope of the monopoly and can becrucial to the commercial exploitation of the invention.Main claim should list all the main technical features of the invention including those that distinguishit from what already exists. Subsidiary or preferred features are set out in dependent claims.
    11. 11. TimelineFile + Prelim. Exam Search (4 months) Publish (18 months from filing) Exam (+36 months from filing) Amend Grant (<4 ½ years from filing) Publish
    12. 12. The application process 1 2 3 4Prepare a File form 1 We issue a File form 9A andpatent and one copy filing receipt fee within 12specification of your confirming your months of the specification application filing or priorityDescription number and date Form 7 will beDrawings filing date required if the FormalitiesClaims applicant is examination not theAbstract PAU examination inventor (if unrepresented)
    13. 13. Priority dateOnce you have filed, if you file a new application to the sameinvention within a year you can claim the filing date of the earlierapplicationUK and/or abroade.g. file in UK get search results (we are quick!) decide whether youwant to proceed and or file abroad as wellOr add new developments in new applicationsOnce filed can’t add new info to an application!
    14. 14. The application process 5 6 7 8We carry If formal You file form 10 We examine yourout a requirements and fee no later application andnovelty have been met than six months inform you ifsearch to your from publication anything needsassess your application is amendmentinvention published at Once all objectionsand issue a 18 months have beenreport overcome we will4 months grant your patentafter form 9 Can be around 4.5filed years from filing
    15. 15. Search – look for docs which demonstrate that theinvention as defined in the claims is not novel or inventive.Inform applicantPublication – we publish the information in the application.This means that others can see the information and use itin any country where there isn’t a valid patent preventingit’s use.Exam - explain in more detail why we think citations arerelevant. Explain if application doesn’t meet other legalrequirements (clarity etc). Can have multiple rounds ofamendment and exam before grant.
    16. 16. How much does it cost?Total application is GBP £230 - £280 up to grant. Cheaper if fileonline.Paper filing•GBP £30 (application fee) for a preliminary examination•GBP £150 for a search•GBP £100 for a substantive examinationElectronic filing/web-filing service•GBP £20 (application fee) for a preliminary examination•GBP £130 for a search•GBP £80 for a substantive examinationRenewal feesIncrease each year. Up to £600 year 20EnforcementCan be expensive. Worth considering before applying
    17. 17. Tips:Consider carefully before applying – do you need a patent? Do you needfurther advice? Will a granted patent do what you need?If patent is important to the commercial success of your business get legaladviceThe better drafted the application and the more details there are about theinvention the more likely it is to get something granted (more ways ofamending in light of examiner’s comments)Would you be able to enforce your patent (can be expensive)?Read guidance on our website carefullyRing our information centre if you have any questions before filingMeet deadlinesConsider your market – would anyone want to buy your product?
    18. 18. Applying abroadDo you want to sell your invention abroad? Now or in the future?Do you want to license your patent abroad?UK patent granted by the IPO only valid in the UK.Apply to individual national patent offices = protection in individualcountries. Can apply in a single country, including the UK, and applylater elsewhere using the first application to claim priority (12 months).Patent Co-operation Treaty (PCT) = countries worldwideEuropean Patent Convention (EPC) = countries in Europe
    19. 19. Obtaining Patent Protection Abroad Separate National Filings UK France Germany US JapanSearch Search Search Search Search“A” Pub “A” Pub “A” Pub “A” Pub “A” PubExam Exam Exam Exam ExamGRANT GRANT GRANT GRANT GRANT
    20. 20. GB application European application International application Filing Filing Filing Application process until examination Nominate Application process at Application essentially the states (up to EPO -essentially the process: same as UK 145) same as in the UK search, publicatio International n, substantive Nominate states in phase examination... which the patent will be granted (up to 38) National phase Enter national Enter national phase in UK phase in other states Application Grant of Grant of Opposition process UK EP at EPO* essentially the National processing at patent patent same as UK individual offices post exam Grant of Bundle of Patent national national Revoked patent Maintain, sell, licenc patents Grant of Grant of e, amend, litigate at EPO UK national etc in the UK patent Grant of patent EP(DE) national EP(FR) ETC EP(UK) *After a European patent patent has been granted it may be opposed by third Maintain, sell, licenc parties who believe it e, amend, litigate should not have been Maintain, sell, licenc etc in each granted. Notice of e, amend, litigate individual state opposition can only be etc in each filed within 9 months of the grant being Individual state mentioned in the European Patent Bulletin.In each case the granted patent(s) can be maintained for up to 20 years from the date of filing (providing renewal fees are paid)
    21. 21. Combined Search and Examination• Not an acceleration as such but starts examination process sooner• Request search and exam at the same time• Doesn’t require a reason• Receive search and examination report within 4 months
    22. 22. Accelerated search/pub/exam• Reason required for accelerated search or exam• Reason must be should be specific to the particular application – Fast Grant Guide gives examples• Early publication available on written request (but beware disadvantages)• CSE can also be accelerated• Timeliness targets
    23. 23. Overview of fast track to grantFiling Date Application filed with accelerated CSE and early publication requested- adequate reasons for wanting accelerated processing provided3 months CSE report issued5 months Application published with search report Amendment Rounds 8 months Three months for third party observations 9 months Application sent for grant
    24. 24. Green Channel• Invention must relate to a “green” or environmentally-friendly technology• Request should provide reasonable assertion of some environmental benefit• Can be used to accelerate any or all of the application process• Requests refused if clearly unfounded• More info and FAQs available from www.ipo.gov.uk/p-green
    25. 25. Green Channel Area of technology, 2010/11 Area of technology, 2011/12 Wind Wind 6% 4% Water Other Water Other 10% Recycling 21% 8% 10% 5% Solar Recycling 4% 10% Solar Vehicle 8% 18% Vehicle 42% Energy Energy Saving Saving 25% 29% Acceleration options are also provided by the Patent Prosecution Highway and PCT (UK) Fast Track, each of which allows the Intellectual Property Office (IPO) to make use of work already conducted on related applications at other offices.
    26. 26. Resolving disputesHearingsDispute between yourself and the officeBetween yourself and a third partyOpinionsInfringement and validityMediationTalk about dispute and come to an agreement with out court actionCourt Proceedings
    27. 27. Thank you for your attentionAny questions?Sarah.whitehead@ipo.gov.ukInfo centre: 0300 300 2000information@ipo.gov.ukWebsite: www.ipo.gov.uk

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