Tse patents 2014

Patents
The Smart Entrepreneur

Patents
Protectability
Copyright of Bart Clarysse and Sabrina Kiefer

What is a patent?
• A patent is a deal with the state
– Fully disclose your new idea and you get a limited-time monopoly
• It provides a Civil law right to prevent others from using your idea
• Even once granted, a patent can be challenged by competitors at any time
until it expires 20 years later
• Relates to geographic territories – you must file in different countries (or the
EU) to receive protection in each country

Patents
• Unlike other rights, a patent protects effect of product, not image, appearance or
expression
• A well crafted patent can give monopoly rights to a business in its area
• A patent is expensive but there are cheaper preparatory steps
• Once granted, a patent gives a product and a company legitimacy in the eyes of
prospective investors and partners

Basic patent rules
To qualify for a patent, a product must be considered
• Novel/ new
• An ‘inventive step’
• Capable of industrial application

• Must not form part of the “State of the Art”
“The State of the art in the case of an invention shall be taken to comprise all matter
(whether a product, a 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”
• In other words, your invention must be kept secret until the application is filed,
so beware:
» Theses
» Seminars
» Conference papers
» Public use
Can all constitute the current state of the art. Be careful what you disclose before filing
for a patent.
• Also note that your idea may already have been conceived and protected by someone
else; you can do a patent search to determine if there is any ‘Prior art’, and you should
also check other literature (as above) for disclosure of similar inventions (see ‘Freedom
to Operate’).
Patent rules: ‘Novelty’

Patent rules: ‘Inventive step’ and ‘Industrial Application’
• “Inventive Step”:
Not obvious to a person skilled in the art
• “Capable of Industrial Application”:
Can be made or used in any kind of industry, including agriculture

Patent rules - exclusions
• What is excluded from protection
– Discoveries, scientific theories, mathematical methods, aesthetic creations
– schemes, rules and methods for performing mental acts, playing games or doing
business (such as management or teaching methods)
– presentations of information (see copyright)
– computer programs (source code – see copyright)
– plant and animal varieties
– Inventions likely to encourage offensive, immoral or anti-social behaviour
• If you are unsure about the patentability of your product, consult a patent
attorney

UK: Patents
• What is protected
– New products and processes which are inventions involving an inventive step
and capable of industrial application
• Nature of right
– Monopoly right
• Form of registration
– Registration at Patent Office

UK: Patents
• Duration of protection
– Twenty years from application but may be subject to compulsory licensing if
invention not being worked in the EU or if EU demand for product not met
• Owner
– Inventor (or employer) or someone deriving right from inventor
• Governing legislation
– Patents Act 1977

Six reasons to patent
• protection of products and services
• protection of R&D investments
• securing monopoly for future exploitation
• generating cash by (cross-)licensing
• creating bargaining chips (in case of infringement, to acquire
technology)
• attractiveness to investors and banks

European Patent
• What?
 1 centralised application- and granting procedure in 1 language and
with, if necessary, 1 patent attorney, interesting if from 3-4 countries
on...
• Who?
 Juridical and natural persons - residents in EC
 Non-residents need to use a European patent attorney
• How?
 European Patent Office (Den Haag, Munich or Berlin)
• Examination?
 Newness Examination
 Examination in depth
• Average 3 to 5 years before patent is granted

Graphical Presentation
Priority
date
Application
date
Application tax
128,90 € (5200 Bef)
newness search
882,57 € (35.600 Bef)
tax conclusions (per concl)
41,65 € (1680 BEF)
priority year 1 m 18 m 24 m
Publication
application +
newness
search
Examination in depth
1455,13 € (58.700 Bef)
Yearly taxes
-quest for examination in depth + tax
- countries + tax
76,85 € (3100 Bef)/country
Granting + publication
+ translation taxes
728,81 €
(29.400 Bef)
Granting publication patent
Bundle
national patents
Yearly taxes
3d year:
389,19 € (15.700 Bef)
6th year :
728,81 € (29.400 Bef)
> 10th year :
1038,67 € (41.900 Bef)

Newness search
• The report gives a number of references (patents, publications, …) that might
contain contaminating information
• Newness research deals with the scope of the conclusions
• Cited references are weighted
• The weight is articulated in symbols:
» “X”: very relevant document, might block the inventiveness or newness of
the invention
» “Y”: very relevant document, claimed invention is not new if this document
is combined with others and clear for the experts
» “A”: state of the art, not relevant
» “P”: document with later priority date

International Patent (PCT)
• What?
» Centralised application procedure in 1 language for about 100 countries
• Advantages?
» 1 language and 1 patent attorney
» only after a response, in 20 or 30 months, do the patent granting
procedure (and costs) need to be initiated
• How?
» Standardised sheet to be submitted to the DIE or the EPO

Two Routes
PCT - chapter 1
• no examination in depth (central)
• after 20 months, the national or European office(s) take(s) over
PCT - chapter 2
• examination in depth (tentative)
• after 30 months, the national or European office(s) take(s) over

PCT - graphical presentation
Application date
international patent
application
Application tax
494,55 € (19.950 Bef)
Tax newness search
1142,79 € (46.100 Bef)
1 m 9 m 10 m 12 m 28 m
International
newness search
30 m18 m
19 m
20 m
Tax countries
94,20 €/land
(3800 Bef/land)
International examination in depth (temporary)
Newness
search report
Possibility
to ask for examination
in depth
Publication
international
patent application
End date possibility to
ask for examination in
depth + tax
start national
phase PCT Chapter I
- treatment tax 149,23 € (6020 Bef)
- examination tax 1559,25 € (62.900 Bef)
Report temporary
examination in
depth
start national
phase PCT
Chapter II

Pitfalls: newness
- scientific journal
- presentation
- poster on a meeting
- public journal/newspaper
- interview on radio
- internet
NEWNESS (EU)
30.01.2002
application
02.01.2002
Publication of invention

- Grace period
NEWNESS (US-Canada-Japan)
02.01.2002
Publication
30.06.2002
Application Japan
31/12/2002
Application US, Canada
Pitfalls: newness

Differences US-rest of the world
FIRST-TO-FILE vs FIRST-TO-INVENT
• First-to-file (EU, most other countries): a patent is granted to the party that first
filed the patent
• First-to-invent (US): a patent is granted to the one who invented first

Approximate costs – patents and trademarks
Patent EU Trade Mark
First 12 months £5,000 £1,500
Next 18 months £5,000 £1,500
At 30 months £10,000 or more £500 a year for monitoring
Lifetime £100,000 or more £1,500 every 10 years
Potential long-term benefits:
Value of the Coca Cola TM: $70 billion!
Source: IP21 Ltd. www.ip21.co.uk

Tse patents 2014

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Tse patents 2014