Tom Hutchinson "Practical Intellectual Property"


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This is the second presentation in IP North West's seminar on IP law on 12 Oct 2011. This talk was presented by patent agent, Tom Hutchinson, principal of Hutchinson IP. In his talk, Tom considers "What is IP", "Why it is important?", "Types of IP", "Patent Attorneys" and "Tom's Top Tips". Tom is particularly well qualified to talk to FabLab because he researched additive manufacturing technology before he became a patent agent.

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  • The two main functions of a patent are therefore; monopoly and public noticeMonopolyIncentive to invent – enables the cost of R&D to be recovered and encourages technological progressPublic noticeAfter the monopoly term has expired, the public are free to use the inventionDTI estimates that up to 40% of UK research is “wasted” on re-inventing already patented technology
  • “2(1) An invention shall be taken to be new if it does not form part of the state of the art.”“2(2) The state of the art in the case of an invention shall be taken to comprise any matter (whether a product or process, information about either or anything else) which has at any time before the priority date of that invention been made available to the public (whether in the United Kingdom or elsewhere) by written or oral description, by use or in any other way.”§2 Patents Act 1977Absolute, worldwide novelty.Disclosure of the invention in any way, anywhere in the world before the priority date is novelty destroying.“An invention shall be taken to involve an inventive step if it is not obvious to a person skilled in the art, having regard to any matter which forms part of the state of the art.”An invention is taken to be capable of industrial application if it can be used in any kind of industry, including agricultureThe invention must work and have some usePrecludes perpetual motion machines and mere conceptsMethods of treatment of the human / animal body by surgery, therapy or diagnosis are deemed to be incapable of industrial applicationHowever, drugs or apparatus used for surgery, therapy or diagnosis may be patentableBut, what about contraceptives and cosmetic treatments?Discoveries, scientific theories or mathematical methodsLiterary, dramatic, musical or artistic works or any other aesthetic creations whatsoeverSchemes, rules or methods for performing mental acts, playing games or doing business Computer programsThe presentation of informationInventions that are contrary to public policy or morality
  • Inventiveness is independent of commercial successHaberman v Jackel (1999) Non-leaking training cupIf there has been a “long-felt want”, then this can point towards inventivenessProblem-solutionThe requirement is for an inventive step - not an inventive leap
  • The claims define the scope of the patentThey must be supported by the descriptionThe dependent claims are “fallback positions”
  • Tom Hutchinson "Practical Intellectual Property"

    1. 1. Practical ˆIntellectual Property Tom Hutchinson Manchester Fab Lab 12 October 2011
    2. 2. ScopeWhat is IPWhy is it importantTypes of IPPatentsPatent attorneysTop tips
    3. 3. allIntellectual property is about ˆgaining, and protecting acompetitive edge
    4. 4. Types of IP Copyright Other Know-how Dance & mime Trade secrets Reputation Photographs Inside knowledge Music Literature Films One-off Slogans products Inventions Graphics Patents Trade names Product Applications for appearance Concepts new discoveries Get-up Packaging Improvements to products Goodwill or processes Trade marks Designs
    5. 5. Why use IP?To prevent others from copying your ideasTo have something tangible to sell/licenseTo reassure investorsTo block competitorsTo “muddy the waters”
    6. 6. When to use IP?If the IP is valuable and if its valueoutweighs the cost of obtaining andenforcing it
    7. 7. IP costsObtaining Patents - £3k - £10k, per country Designs - £600, per country Trade marks - £900, per countryMaintaining Patents - £100 - £1000, per year Designs - £50 - £200, per year Trade marks - £50 - £500, per yearEnforcing A quick “spat” - £1,000, per side At the IPO - £10,000, per side In court - £50,000 - £500,000, per side
    8. 8. When not to use IPJust because you canIf the value of the market or the profitability ofthe product is too smallIf you do not have the means to enforce it
    9. 9. PatentsA patent is a fixed-term monopoly given by thegovernment to inventors on new, non-obvious anduseful technologies in exchange for a completepublic disclosure of how the invention works
    10. 10. PatentabilityA patent may be granted only for an invention inrespect of which the following conditions aresatisfied, that is to say- (a) the invention is new (b) it involves an inventive step (c) it is capable of industrial application (d)the grant of a patent is not excluded…
    11. 11. Novelty
    12. 12. Inventive step
    13. 13. Application procedure Filing Filing Filing Search Search Search Publication Publication Publication Examination Examination Examination Amendment Amendment Amendment Grant Grant Validation Maintenance
    14. 14. What is a patent attorney?Someone with a technical background and trainingand qualifications in substantive IP lawExperience in acting before the IPOs and theCourts and with other legal/technical/businessadvisors
    15. 15. My background
    16. 16. Claims
    17. 17. Patent searchingUp to 40% of UK research is wastedNearly all patents that have been granted in the last100 years are available to the publicMostly free of chargeMostly on-linePatents are classified to make them easier to searchHave you referenced any patent specifications in yourmost recent literature review?Are you currently re-inventing the wheel?
    18. 18. Tip 1 – dates are important
    19. 19. Tip 2 – keep quiet
    20. 20. Tip 3 – never threaten
    21. 21. Tip 4 – do your research
    22. 22. Tip 5 – seek professional advice