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Building a Competitive Edge: Protecting Inventions by Utility Models
and/or Patents
Casey K. Chan
National University of Singapore IP Academy of Singapore
Topics Covered
Economic Commercial Perspective
Patentability and Specification Introduction to Claim Structure Proprietary position and FTO Practical Tips
Increasingly, wealth of a Increasingly, wealth of a nation is measured by nation is measured by ownership of intellectual ownership of intellectual properties rather than by properties rather than by ownership of hard assets.ownership of hard assets.
Paul Romer Paul Romer Graduate School of Business at Stanford University Graduate School of Business at Stanford University Fellow at the Hoover InstituteFellow at the Hoover Institute
Classical Economy
Tangible Capital
New Growth
Economy
Intangible Capital
Types of Intellectual PropertiesTypes of Intellectual Properties
Trade Secrets - No regulation
Patents – Regulated
Trademarks – Regulated
Copyright - Regulated
Freedom to Operate – FTOFreedom to Operate – FTOProprietary PositionProprietary Position
New Product Development
IP AssessmentUser Spec
IP Protection
Economic PerspectiveEconomic Perspective
Patents -- legal ownership of intellectual properties
Incentive for Inventors Quid pro quo - grant in exchange for
disclosures Right to exclude others to use and/or
manufacture the invention
Types of PatentTypes of Patent
Utility Patents - machine, process,
composition of matter
Design Patents - ornamental design
Plant - distinct and new variety of
asexually reproduced plant
Should I file a Patent?
Where and When
When should you file a patent?When should you file a patent?
Because it is a brilliant idea -- No Because of commercial potential -- Yes
Competitive advantage (unfair advantage)
Barrier to entry in market place
CriteriaCriteria
Patentability
Commercial Potential
Enthusiasm of Inventor
Commercial PotentialCommercial PotentialCo 1 NuProduct Co 2
Accuracy Sensitivity
Efficiency
Speed
Automatable
Reproducibility
Cost
Very Broad
>$750 Million
Short: 6 – 12 Months
Multiple Channels - Direct + “NuProduct Inside”
Low – Repackaging
>65%
Q4, ‘04
Market Applications
Initial Targeted Applications
Product Development Cycle
Commercialization Pathway
Manufacturing Complexity
Projected Gross Margins
Projected Time to
Profitability
NuProductBusiness Model
Commercial PotentialCommercial Potential
Where should you file your Where should you file your patent?patent?
Patent law is jurisdictional File in country where the market is
largest File in countries it is cost effective
Customer per $ patent cost File in countries where you are
prepared to enforce infringement
Worldwide Market forWorldwide Market forMedical Device Medical Device
Source: Tucker Anthony
Asia Pacific
20%
Americas5%
Europe25%
USA50%
European Market European Market for Medical Devicefor Medical Device
France24%
Germany24%
Others8%
Spain &Portugal
15%
Switzerland3%
Scandinavia4%
Gt Britain9%
Italy13%
Source: Tucker Anthony
The Big FourBig Four constitute 75% of Europe’s market:FranceGermanyItalyGt Britain
One strategyOne strategy
Local + USApplication
Japan
(18 Months)
Europe
China
National Phase
PCTApplication
Clearing House
(12 Months)
Chap IIChap IIDelay to 30 mthsDelay to 30 mths
EUEU
JPJP
CNCN
Utility Patent - 5 statutory classesUtility Patent - 5 statutory classes
1. Processes (Methods)2. Machines (Devices and Apparatus)3. Manufactures -- “articles of
manufacture”e.g. transistors, floppy disks, etc
4. Composition of matter5. New uses of above
Utility Patent – Three TypesUtility Patent – Three Types
1. Method2. Apparatus3. Composition of matter
In practice this is all you need to remember
Requirements for PatentabilityRequirements for Patentability
1. New and Novel
2. Useful
3. Non-obvious
1. New and Novel (No “Prior Art”)
Commercially available Public Disclosure
Publication in journals, magazines, abstracts
Posting on the Internet Oral or Poster Presentation at symposium
or seminar Material made available to public at
university library Demonstration at trade shows, to visitors
Confidential Disclosure Agreement
2. Utility
Must have a useful function If device does not work no use to
inventor anyway Prevent pre-emptive filing of
Composition of Matter e.g. new chemicals, new drugs, new gene with no known function
2. Utility – New Guidelines2. Utility – New Guidelines
Credible Specific Substantial
3. Obviousness 3. Obviousness
Obvious to those “ordinary skill in the arts”
What makes an invention non-obvious1. Unexpected results2. Previous publication stated that it
cannot be done3. Have to go through a series of
experimentation to arrive at invention
What Cannot be Patented?What Cannot be Patented?
Arrangements of printed matter Methods of doing business ? Obvious devices Perpetual motion machines Nuclear weapons or weapons of mass
destruction Laws of nature or scientific principles
(must have “embodiment”)
Actual Cost of FilingActual Cost of FilingUS$ 10,000 to 15,000US$ 10,000 to 15,000
Preparation Time Patent Search Drawings Attorney’s Fee Filing Fees Maintenance Fee Legal Defense
Legal jargonsLegal jargons
“ prior art” “ordinary skill in the art” “embodiment” “new teachings”
Specification of a PatentSpecification of a Patent
DefinitionNew teachings Claims
Background
& Prior Art
“more is better”
Broad claims“less is more”
Anatomy of a peer review paperAnatomy of a peer review paper
Title Introduction Materials and Methods Results Discussion Conclusion
Anatomy of a PatentAnatomy of a Patent Title Field Of The Invention Background Of The Invention Objects Of The Invention Summary Of The Invention Brief Description Of The Drawings Detailed Description Of The Preferred
Embodiments Modifications Of The Preferred Embodiments Claims This is the right you own!
Specifications
A
B C
D
AB
C
DElements
Z
1827 - My Invention - Bicycle
1807 – Prior Art - Unicycle A
B
AB
EC
Competitor’sProduct:
Infringement ? =
AB
C
DYour Claim:
Independent Claim
AB
C
DDefinition
Z
NO
Your Invention:
A
B C
D
A
B C
E
D
Infringement ? =
AB
C
Dependent Claim
YES !
AB
C
Competitor’sProduct:
AB
C
Your Claim:
Independent Claim
AB
C
Definition
Z
Your Invention:
E
D
D
Five Types of ClaimsFive Types of Claims
Independent Claim (3)
Apparatus
Method
Composition of Matter
Dependent Claim (2)
Additional element
Restriction of an element
AB
C
DDefinition
Z
Your Invention
A
B C
D
AB
C
DElements
Z
1827 - My Invention - Bicycle
1807 – Prior Art - Unicycle A
B
AB
EC
Competitor’sProduct:
Infringement ? =
AB
C
DYour Claim:
Independent Claim
AB
C
DDefinition
Z
NO
Your Invention:
A
B C
D
A
B C
E
D
AB
EC
Competitor’sProduct:
Infringement ? =
AB
C
Your Claim:
Independent Claim
AB
C
Dependent Claim
AB
C
DYour Invention:
Definition
Z
YES !
Five Types of ClaimsFive Types of Claims
Independent Claim (3) Apparatus
Method
Composition of Matter
Dependent Claim (2) Additional element
Restriction of an element
AB
C
DDefinition
Z
Your Invention
One Hand Rule of ClaimsOne Hand Rule of Claims
12
One Hand Rule of ClaimsOne Hand Rule of Claims
12
One Hand Rule of Claims
1
Freedom to Operate Freedom to Operate is determined by:is determined by:
What are competitors’ patent claims Unclaimed prior art
Patent specification Published work
Patent B
Claim BPatent A
Claim A
Publication C
My FTOMy FTO
Proprietary Position Proprietary Position is determined by:is determined by:
What are my patent claims
Trade secrets
My Patent B
My Patent A
Claim C
Claim B
Claim A
My Patent C
Competitor’s FTO
My Trade Secrets
Initial patent reviewInitial patent review
Front Page Patent Number and Title Applicant (s), Assignee Issued Date/ File Date Class and Field of Search Attorney, Examiner References (Referring Patents) Abstract Representative Drawing
Back Page Claims (First claim most important)
Utility model
Not the same as “utility patent” Parallel second tier patent systems Foster indigenous invention and
innovative activities Petty patents, innovation patents,
utility model
Types of Patent and Duration
US Utility (20y) Design (14y) Plant (20y)
China Inventions (20y) Indus designs (10y) Utility models (10y)
Thank youThank you