COURSE ON INTELLECTUAL PROPERTY LAW

COURSE ON COURSE ON INTELLECTUAL PROPERTY INTELLECTUAL PROPERTY

LAWLAW

Department of Information Engineering Department of Information Engineering and Computer Scienceand Computer Science

University of TrentoUniversity of Trentoacademic year 2007/2008academic year 2007/2008

(Lecturer: avv. Maria Cristina Osele)(Lecturer: avv. Maria Cristina Osele)

M.C. Osele - Course IP Law 2008M.C. Osele - Course IP Law 2008 22

Course on Intellectual Property LawCourse on Intellectual Property Law

Lecture no. 3Lecture no. 3Patent in generalPatent in general

february 22, 2008february 22, 2008

from 4.00 p.m. to 6.00 p.mfrom 4.00 p.m. to 6.00 p.m


PatentPatent

What is a patent?What is a patent?A patent is:A patent is:

a document issued, upon application, by a a document issued, upon application, by a government office (Patent Office, or government office (Patent Office, or USPTO) which contains the description of USPTO) which contains the description of an invention.an invention.

It is, in essence, a government-sponsored It is, in essence, a government-sponsored monopoly to recognize and reward monopoly to recognize and reward inventor by granting inventors exclusive inventor by granting inventors exclusive control of the patent subject mattercontrol of the patent subject matter


PatentPatent

What is the purpose of a patent?What is the purpose of a patent?

- A patent creates a legal situation so that the invention can - A patent creates a legal situation so that the invention can be exploited with the authorization of the owner of the be exploited with the authorization of the owner of the patent. patent.

- A patent gives inventors the right to exclude others from - A patent gives inventors the right to exclude others from making, using, offering for sale, or selling the inventions. making, using, offering for sale, or selling the inventions. This exclusion is only applicable in the countries where the This exclusion is only applicable in the countries where the invention is protected by the patent.invention is protected by the patent.

- Patent protection provides an award for the disclosure of - Patent protection provides an award for the disclosure of the creation and a reward for the invention and for its the creation and a reward for the invention and for its development, since it is feasable and marketable.development, since it is feasable and marketable.

- Patent protection is an incentive to promote additional - Patent protection is an incentive to promote additional creativity and encourage companies in innovation and creativity and encourage companies in innovation and exploitation of new technologies.exploitation of new technologies.


PatentPatent

Patentable Subject MatterPatentable Subject Matter

What sort of things can be patented?What sort of things can be patented?

By international agreements (By international agreements (Paris ConventionParis Convention, , Patent Cooperation Treaty (PCTPatent Cooperation Treaty (PCT)), , Patent Law Treaty (PLT)Patent Law Treaty (PLT), , Patent Act in U.S.A.) patents are available for any inventions, Patent Act in U.S.A.) patents are available for any inventions, whether processes or products, in all areas of technology whether processes or products, in all areas of technology both for breakthroughs in technology and for small both for breakthroughs in technology and for small technological increments.technological increments.

Are patentable:Are patentable:- traditionally physical inventions;- traditionally physical inventions;- In an Information economy, new inventions asset including- In an Information economy, new inventions asset including

. Innovations form R&D labs in software development. Innovations form R&D labs in software development

. Inventions in computer science, robotics, artificial . Inventions in computer science, robotics, artificial intelligenceintelligence

. Biotechnology, life science. Biotechnology, life science

. Genetics. Genetics


PatentPatent

Patentable Subject MatterPatentable Subject Matter

What sort of things cannot be patented?What sort of things cannot be patented?- things already existing in nature, naturally phenomena- things already existing in nature, naturally phenomena- scientific laws, theories or mathematical methods- scientific laws, theories or mathematical methods- inventions excluded for public order or morality grounds- inventions excluded for public order or morality grounds- therapeutic methods for treatment of humans and - therapeutic methods for treatment of humans and animalsanimals- abstract ideas/purely mental processes - abstract ideas/purely mental processes

Exception:Exception: things producing a useful result. The sun itself things producing a useful result. The sun itself is not patent subject matter, but a use of the sun is not patent subject matter, but a use of the sun (photovoltaic cells transforming sunlight into energy) may (photovoltaic cells transforming sunlight into energy) may be patentable.be patentable.


PatentPatentThe requirementsThe requirements

An invention or discovery to be patented must beAn invention or discovery to be patented must be

1.1. NovelNovel- The invention must non have been invented, patented or published - The invention must non have been invented, patented or published beforebefore- When there is a - When there is a prior art, the invention is not patentable (, the invention is not patentable (art. 54 EPO Convention)art. 54 EPO Convention)- Prior art may be found in Patent Office, USPTO site, trade - Prior art may be found in Patent Office, USPTO site, trade publications, books, journals, conference proceedingspublications, books, journals, conference proceedings..

2.2. Useful (Patent Act U.S.A.) – Industrially applicable (TRIPS Useful (Patent Act U.S.A.) – Industrially applicable (TRIPS Agrement) Agrement) - - Somehow the invention operates something useful Somehow the invention operates something useful - with a pratical benefit, not necessarly with commercial/marketable - with a pratical benefit, not necessarly with commercial/marketable applicationapplication(see: U.S: Patent 5, 443,036 Method of exercising a cat; U.S. Patent (see: U.S: Patent 5, 443,036 Method of exercising a cat; U.S. Patent 5,993,336 Method of executing a tennis stroke)5,993,336 Method of executing a tennis stroke)

3.3. NonobviousNonobvious- - invention must take an “invention must take an “inventive stepinventive step””- must be non obviuous/anticipated to a person having ordinary skill - must be non obviuous/anticipated to a person having ordinary skill - differences between the invention and the prior art must not be - differences between the invention and the prior art must not be obviousobvious


PatentPatentTypes of PatentsTypes of Patents

There are three classes of patentsThere are three classes of patents

1.1. Utility patentsUtility patents

(new and useful process, machine, article of manufacture, (new and useful process, machine, article of manufacture, composition of matter or improvements, including composition of matter or improvements, including business business methods patents)methods patents)

2.2. Design patentsDesign patents

(new, original, and ornamental design for articles of (new, original, and ornamental design for articles of manufacture)manufacture)

3.3. Plant patentsPlant patents((inventions or discoveries relating to reproducing any distinct inventions or discoveries relating to reproducing any distinct and new variety of plants, i.e. Basmati rice Patent)and new variety of plants, i.e. Basmati rice Patent)


PatentPatent

Patent RightsPatent Rights

Exclusive rightExclusive rightnobody can produce, use, sell your inventionnobody can produce, use, sell your invention

Territorial rightTerritorial righta patent in one state does not affect patent in other a patent in one state does not affect patent in other countriescountries

Timed rightTimed rightprotection is limited to a certain period (20 years)protection is limited to a certain period (20 years)

Transferable rightTransferable rightthe patent owner can assign or sell (license) the the patent owner can assign or sell (license) the patent/patent application to otherspatent/patent application to others

One-Time rightOne-Time rightIf a patented invention/product is marketable (put on the If a patented invention/product is marketable (put on the market) the patent right is exhausted market) the patent right is exhausted

Passive rightPassive rightprevents other to exploit your invention, but you are not prevents other to exploit your invention, but you are not guarantee to exploit itguarantee to exploit it


PatentPatentTerm of durationTerm of duration

By international Treaty the term of a patent has to be within By international Treaty the term of a patent has to be within 20 years form the filing date of the patent application, 10 years of form the filing date of the patent application, 10 years of duration for utility models or less for the “short-term patent”. duration for utility models or less for the “short-term patent”.

During the validity of the patent the developer of the invention During the validity of the patent the developer of the invention has the right to have it to himself in exchange for has the right to have it to himself in exchange for full disclosure to the public of how to use it. of how to use it.

When the patent rights expire, the invention/technology When the patent rights expire, the invention/technology becomes public property and everybody is free to use it for is becomes public property and everybody is free to use it for is own goodown good


PatentPatentCompulsory licensingCompulsory licensing

In order to In order to prevent abusesprevent abuses or in case of or in case of non-use of the patent non-use of the patent inventioninvention within a prescribed period (usually 4 years from the filing within a prescribed period (usually 4 years from the filing date of application for patent, or 3 years from the issue of the patent), date of application for patent, or 3 years from the issue of the patent), the exclusive rights of a patent owner can be used the exclusive rights of a patent owner can be used without his/her without his/her authorizationauthorization

How?How?

- by- by aa compulsory licensing authorized to a third party either by the authorized to a third party either by the competent court or by a Patent Office, as provided under the competent court or by a Patent Office, as provided under the Paris ConventionParis Convention and the and the TRIPS AgreementTRIPS Agreement (art. 31).(art. 31).


PatentPatentPatent ProtectionPatent Protection

1.1. National Patent ApplicationNational Patent Applicationthe Protection cover only the state of application (principle of the Protection cover only the state of application (principle of territoriality)territoriality)

2.2. European Patent Application (European Patent Application (EPOEPO))- one application filed at one Office (EPO Munich, EPO The Hague, - one application filed at one Office (EPO Munich, EPO The Hague, EPO Berlin, Patent Office of contracting State (all except NL)EPO Berlin, Patent Office of contracting State (all except NL)- one EP patent with a protection for “X” chosen states (28 Member - one EP patent with a protection for “X” chosen states (28 Member states);states);- convenience: it costs about less than 3 national patent - convenience: it costs about less than 3 national patent

3.3. International Patent Application (PCT)International Patent Application (PCT)- grants a simplified procedure: one application for up to 115 PCT - grants a simplified procedure: one application for up to 115 PCT member Statesmember States- International Search Report- International Search Report- PCT doesn’t grant patent: each country grants a patent based on - PCT doesn’t grant patent: each country grants a patent based on PCT ApplicationPCT Application- EPC states can be considered collectively as a region- EPC states can be considered collectively as a region


PatentPatentPatent ProtectionPatent Protection

At the presentAt the present

There isn’t a single European PatentThere isn’t a single European Patent

There isn’t a Worldwide PatentThere isn’t a Worldwide Patent

In each country where patent is (is going) in In each country where patent is (is going) in force, you have to pay cost of examination, cost force, you have to pay cost of examination, cost of translation, cost of maintenance (a substantial of translation, cost of maintenance (a substantial annual fee..)annual fee..)

If you fail to pay the maintenance fee, your If you fail to pay the maintenance fee, your patent would lapse and you would lose your patent would lapse and you would lose your patent protectionpatent protection


PatentPatentContents of a (European) Patent ApplicationContents of a (European) Patent Application

Request for grantRequest for grant Description of the invention Description of the invention

- - Disclosure of prior artDisclosure of prior art

- Detailed description- Detailed description ClaimsClaims

- claims define the scope or extend the protection of the - claims define the scope or extend the protection of the patentpatent

- a patent agent or attorney states in the application the - a patent agent or attorney states in the application the broadest possibile statement of the invention first that will broadest possibile statement of the invention first that will cover the most claimscover the most claims

DrawingsDrawings

- used to interprete claims- used to interprete claims Abstract Abstract


PatentPatentFirst to invent versus First to file a patentFirst to invent versus First to file a patent

Two inventors want a patent on the same invention at the same timeTwo inventors want a patent on the same invention at the same time

Who does win?Who does win?

U.S. Patent Office worked on a first-to-invent U.S. Patent Office worked on a first-to-invent systemsystem. . Inventors Inventors - needed only keep record of their inventions as they make progress- needed only keep record of their inventions as they make progress- had time to make refinements and get feed-back- had time to make refinements and get feed-back- were encouraged in inventiveness and innovation- were encouraged in inventiveness and innovation

The European Community and other states follow the first-to-file system The European Community and other states follow the first-to-file system The first-to-file systemThe first-to-file system- discourage feedback- discourage feedback- create an atmosphere of secrety- create an atmosphere of secrety- favors large organizational entities with a corps of support staff- favors large organizational entities with a corps of support staff- reduce interferences or dispute- reduce interferences or dispute

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PatentPatentThe Grace period/On-sale Bar in U.S.A.The Grace period/On-sale Bar in U.S.A.

An inventor is barred from acquiring patent protection if the An inventor is barred from acquiring patent protection if the application is filed more then one year after the earliest date of sale, application is filed more then one year after the earliest date of sale, or public use of the invention in the United States or more then one or public use of the invention in the United States or more then one year after the date of a printer publication in any country.year after the date of a printer publication in any country.

For example, a company invented a fog-making apparatus. For example, a company invented a fog-making apparatus.

In January 2000 the invention was disclosed in a printed publication In January 2000 the invention was disclosed in a printed publication to a convention of engineers. to a convention of engineers.

In April 2001 the company applied to patent the device and the In April 2001 the company applied to patent the device and the application was rejected.application was rejected.

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PatentPatentThe Grace period/On-sale Bar in U.S.A.The Grace period/On-sale Bar in U.S.A.The case The case Pfaff v. Wells Electronic Pfaff v. Wells Electronic Inc.Inc.

Facts of the case (from the decision)Facts of the case (from the decision) In November 1980 Pfaff commenced work on the socket when In November 1980 Pfaff commenced work on the socket when

representatives of Texas Instruments asked him to develop a representatives of Texas Instruments asked him to develop a new device for mounting and removing semiconductor chip new device for mounting and removing semiconductor chip carriers.carriers.

Pfaff prepared detailed engineering drawings and sent them Pfaff prepared detailed engineering drawings and sent them to a manufacturer in February/March 1981.to a manufacturer in February/March 1981.

Prior to March 17, 1981, Pfaff showed a sketch of his concept Prior to March 17, 1981, Pfaff showed a sketch of his concept to representatives of Texas Instruments.to representatives of Texas Instruments.

On April 9 1981, they provided Pfaff with a written On April 9 1981, they provided Pfaff with a written confirmation of a previously oral purchase for 30100 of his confirmation of a previously oral purchase for 30100 of his new sockets for a total price of $ 91155.new sockets for a total price of $ 91155.

Pfaff did not make and test e prototype of the new device Pfaff did not make and test e prototype of the new device before offering to sell in commercial quantities.before offering to sell in commercial quantities.



The manufacturer took several months to produce the device and Pfaff did not fill the The manufacturer took several months to produce the device and Pfaff did not fill the order until July 1981, so that Pfaff first reduced his invention to practice in the summer order until July 1981, so that Pfaff first reduced his invention to practice in the summer 19811981

The socket achieved commercial success before Patent no. 4,491,377 issued to Pfaff The socket achieved commercial success before Patent no. 4,491,377 issued to Pfaff on January 1, 1985on January 1, 1985

After the patent issued, Pfaff brought an infringement action against Wells Electronics After the patent issued, Pfaff brought an infringement action against Wells Electronics Inc. the manufacturer of a competing socket, alleging that the modifications infringed Inc. the manufacturer of a competing socket, alleging that the modifications infringed six of the claim of ‘377 Patent.six of the claim of ‘377 Patent.

The District Court held that two of those claims (1 and 6) were invalid because they The District Court held that two of those claims (1 and 6) were invalid because they had been anticipated in the prior art, while four other claims were valid. In any case had been anticipated in the prior art, while four other claims were valid. In any case Pfaff had filed application for the ‘377 patent less than a year after reducing the Pfaff had filed application for the ‘377 patent less than a year after reducing the invention to practiceinvention to practice

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The Court of Appeal reversed, finding all six claims invalid, four of which described the The Court of Appeal reversed, finding all six claims invalid, four of which described the socket that Pfaff had sold to Texas Instruments prior to April 8, 1981.socket that Pfaff had sold to Texas Instruments prior to April 8, 1981.

Because that device had been offered for sale on a commercial basis more than one Because that device had been offered for sale on a commercial basis more than one year before the patent application was filed on Aprile 1982, the court concluded that year before the patent application was filed on Aprile 1982, the court concluded that those claims were invalidthose claims were invalid

CONCLUSIONCONCLUSION The conclusion on the Court’s view that as long as the invention was “substantially The conclusion on the Court’s view that as long as the invention was “substantially

complete” at the time of sale the 1-year period began to run, even though the invention complete” at the time of sale the 1-year period began to run, even though the invention had not yet been reduced to practice.had not yet been reduced to practice.

As far as the other two claims, describing a feature not included in the Pfaff’s initial As far as the other two claims, describing a feature not included in the Pfaff’s initial design, the Court of Appeals concluded that the additional feature was not itself design, the Court of Appeals concluded that the additional feature was not itself patentable because it was an obvious addition to the prior art.patentable because it was an obvious addition to the prior art.

the Supreme Court established a twopart test to determine the commencement of the on-sale bar:the Supreme Court established a twopart test to determine the commencement of the on-sale bar:1.1. there must be an offer for commercial sale and not only a sale for experimentationthere must be an offer for commercial sale and not only a sale for experimentation

2.2. the invention must be ready for patenting, so that it is easy to create a working version of the inventionthe invention must be ready for patenting, so that it is easy to create a working version of the invention

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PatentPatentThe Grace period/On-sale Bar in U.S.A.The Grace period/On-sale Bar in U.S.A.

The case The case Pfaff v. Wells Electronic Pfaff v. Wells Electronic Inc.Inc.

CONCLUSIONCONCLUSION

In the case of In the case of PfaffPfaff v. v. WellsWells, the Supreme Court established a , the Supreme Court established a twopart test to determine the commencement of the on-sale bar:twopart test to determine the commencement of the on-sale bar:

1.1. there must be an offer for commercial sale and not only a sale for there must be an offer for commercial sale and not only a sale for experimentationexperimentation

2.2. the invention must be ready for patenting, so that it is easy to create a the invention must be ready for patenting, so that it is easy to create a working version of the invention so that to enable a person skilled in the art working version of the invention so that to enable a person skilled in the art to practice the inventionto practice the invention

the Supreme Court established a twopart test to determine the commencement of the on-sale bar:the Supreme Court established a twopart test to determine the commencement of the on-sale bar:1.1. there must be an offer for commercial sale and not only a sale for experimentationthere must be an offer for commercial sale and not only a sale for experimentation

2.2. the invention must be ready for patenting, so that it is easy to create a working version of the inventionthe invention must be ready for patenting, so that it is easy to create a working version of the invention

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PatentPatent

The Grace period/On-sale BarThe Grace period/On-sale Bar

Printed PublicationPrinted Publication A printed publication could include the result of an A printed publication could include the result of an

invention. If a skilled person can make the invention based invention. If a skilled person can make the invention based upon the publication, than the inventor will be barred from upon the publication, than the inventor will be barred from patent protection if the application is filed more than one patent protection if the application is filed more than one year afteryear after

Public Use or SalePublic Use or Sale A sale need not be consummated to trigger the one-year-A sale need not be consummated to trigger the one-year-

periodperiod

Experimental Use doctrineExperimental Use doctrineIt is a rule excusing an inventor from the one year bar, in It is a rule excusing an inventor from the one year bar, in case of public use for the purpose of perfecting or testing case of public use for the purpose of perfecting or testing the invention. In this case sale or use will not bar the grant the invention. In this case sale or use will not bar the grant of the patent. of the patent.


PatentPatent

In Europe there is no Grace period/On-sale BarIn Europe there is no Grace period/On-sale Bar

hencehence

Printed publication or any other sale, public disclosure, use or offer Printed publication or any other sale, public disclosure, use or offer of sale of the invention for any reason prior to filing a patent of sale of the invention for any reason prior to filing a patent applicationapplication

WILL BAR THE GRANT OF PATENT PROTECTIONWILL BAR THE GRANT OF PATENT PROTECTION!!

IMPORTANTIMPORTANT

In Europe there is a big dilemma on the In Europe there is a big dilemma on the controversialcontroversial gracegrace periodperiod

There was a great debate onThere was a great debate on

THE CASE FOR AND AGAINST THE INTRODUCTION THE CASE FOR AND AGAINST THE INTRODUCTION OF A GRACE PERIOD IN EUROPEAN PATENT LAWOF A GRACE PERIOD IN EUROPEAN PATENT LAW


PatentPatent

Proposal for a six month grace period…Proposal for a six month grace period…

In the troubled proposal directive for the In the troubled proposal directive for the patentability of computer-implemented inventions patentability of computer-implemented inventions the amendment n. 10 to the article 4, pharagraf 3, the amendment n. 10 to the article 4, pharagraf 3, proposed to recognize to the inventors a proposed to recognize to the inventors a six months grace period also to favorite some testing grace period also to favorite some testing of the invention between inventor and of the invention between inventor and Universities/companies. Universities/companies.

This solution was justified to help the SME for a This solution was justified to help the SME for a deeper evaluation of the success of the invention deeper evaluation of the success of the invention before investing a lot of money in the application before investing a lot of money in the application of a patent… of a patent…


For the application of Article 54 a disclosure of the For the application of Article 54 a disclosure of the invention shall not be taken into consideration if it occurred invention shall not be taken into consideration if it occurred no earlier than six months preceding the filing of the no earlier than six months preceding the filing of the European patent application and if it was due to, or in European patent application and if it was due to, or in consequence of:consequence of:

(a) an evident abuse in relation to the applicant or his legal (a) an evident abuse in relation to the applicant or his legal predecessor, orpredecessor, or

(b) the fact that the applicant or his legal predecessor has (b) the fact that the applicant or his legal predecessor has displayed the invention at an official, or officially recognised, displayed the invention at an official, or officially recognised, international exhibition falling within the terms of of the international exhibition falling within the terms of of the Convention on international exhibitions signed at Paris on 22 Convention on international exhibitions signed at Paris on 22 November 1928 and last revised on 30 November 1972.November 1928 and last revised on 30 November 1972.

PatentPatent

art. 55 of the EPOart. 55 of the EPO

Non-prejudicial disclosuresNon-prejudicial disclosures


PatentPatentThe European Patent Granting ProcedureThe European Patent Granting Procedure

Main steps (I)

1.1. Filing Filing (Patent application has to be filed at the Patent Office; (Patent application has to be filed at the Patent Office; applicant cannot amend content of description, claims or applicant cannot amend content of description, claims or drawing before the Search Report) drawing before the Search Report)

2.2. Search carried out by the ExaminersSearch carried out by the Examinersto find in databases (EPO database EPODOC, WPI, PAJ, to find in databases (EPO database EPODOC, WPI, PAJ, INSPEC, etc.) and by esp@cenet the most relevant INSPEC, etc.) and by esp@cenet the most relevant state of state of artart, which are all information relevant to patentability made , which are all information relevant to patentability made available to the public prior to the date of filing of the patent available to the public prior to the date of filing of the patent applicationapplication

3.3. Search ReportSearch Reportwritten by the Examiners it is sent to the applicant with written by the Examiners it is sent to the applicant with copies of cited documents. copies of cited documents.



Main steps (II continue)

4.4. PublicationPublicationPatent applications are published in language of proceeding as Patent applications are published in language of proceeding as son as possible after the expiry of a period of 18 months after son as possible after the expiry of a period of 18 months after prioritypriority

Publication of the Patent Application is not the final PatentPublication of the Patent Application is not the final Patent The granted Patent is published after the Examination and The granted Patent is published after the Examination and

Grant ProcedureGrant Procedure

5.5. ExaminationExaminationExamining Division (usually 3 examiners) decide together Examining Division (usually 3 examiners) decide together whether to grant or refuse the applicationwhether to grant or refuse the application

6.6. GrantGrantAt least 2 members of the Examining Division agree that the At least 2 members of the Examining Division agree that the application meets the requirements of EPC or of Patent Laws.application meets the requirements of EPC or of Patent Laws.The grant is the approval of the final text, fees for grant and The grant is the approval of the final text, fees for grant and printing are to be paidprinting are to be paidFile translation of claims in the other two official languagesFile translation of claims in the other two official languages



Main steps (III continue)

7.7. Entry into the national phaseEntry into the national phasefiling of translation, payment of special fee and national filing of translation, payment of special fee and national fees, registering a transfer, licenses, etc.fees, registering a transfer, licenses, etc.

8.8. OppositionOpposition

It is a centralized EPO procedure for challenging the It is a centralized EPO procedure for challenging the validity of a granted EP validity of a granted EP It must be filed by any person within 9 months of the It must be filed by any person within 9 months of the mention of grant being publishedmention of grant being published


PatentPatentThe PCT Patent Granting ProcedureThe PCT Patent Granting Procedure

INTERNATIONAL PHASEINTERNATIONAL PHASE1.1. ApplicationApplication

applicant files application at a so-called receiving Office, applicant files application at a so-called receiving Office, designating the countries of interestdesignating the countries of interest

2.2. International Search International Search It is done by the offices appointed by the PCT AssemblyIt is done by the offices appointed by the PCT Assembly

3.3. PublicationPublicationit is handled entirely by the Internarn Bureau in Geneva, by WIPO it is handled entirely by the Internarn Bureau in Geneva, by WIPO which is exclusively responsiblewhich is exclusively responsible

4.4. Country selectionCountry selectionApplicant selects among the designated countries those which are Applicant selects among the designated countries those which are still of intereststill of interest

NATIONAL PHASENATIONAL PHASE 5.5. Grant of National or Regional PatentsGrant of National or Regional Patents

filing of translation, payment of special fee and national fees, filing of translation, payment of special fee and national fees, registering a transfer, licenses, etc.registering a transfer, licenses, etc.


PatentPatentWhat may be done with a Patent?What may be done with a Patent?

A patent does not in and of itself represent any return on A patent does not in and of itself represent any return on investmentinvestment

It is up to te patent owner to make business decisions to exploit It is up to te patent owner to make business decisions to exploit the value of the claims covered by the patent the value of the claims covered by the patent

How to make it? By the valuation of intangible assetHow to make it? By the valuation of intangible asset

1.1. Just the ownership of the patent creates two valueJust the ownership of the patent creates two value- Financial/monetary/market value of the patent itself- Financial/monetary/market value of the patent itself- monopoly effect: huge barriers to entry and competitive - monopoly effect: huge barriers to entry and competitive advantageadvantage

2.2. Patent commercialization and Knowledge Transfer Patent commercialization and Knowledge Transfer Strategies create further valueStrategies create further value- by Technology transfer- by Technology transfer- by assignments- by assignments- by licensing (revenue for the investors with somewhat less risk)- by licensing (revenue for the investors with somewhat less risk)


PatentPatentOwnership of PatentsOwnership of Patents

Other issues of the ownership of patents arise in case of Other issues of the ownership of patents arise in case of coinventors working togethercoinventors working togetherThey might be located in different places and working on They might be located in different places and working on different aspects of the same process different aspects of the same process To avoid disputes it is important to detail:To avoid disputes it is important to detail:

1.1. joint ownership agreement joint ownership agreement

(If they are not part of an employment arrangement)(If they are not part of an employment arrangement) includingincluding

A method of making decisions on the inventionA method of making decisions on the invention The percentage interest and proportionate sharing of The percentage interest and proportionate sharing of

revenues from the interestrevenues from the interest Right to manufacture or sell or sublicensing the invention in Right to manufacture or sell or sublicensing the invention in

a geographic areaa geographic area A method of resolving disputes between the partiesA method of resolving disputes between the parties


PatentPatentOwnership of PatentsOwnership of Patents

employment agreementsemployment agreements

(In case of employment arrangement) outlining(In case of employment arrangement) outlining

Resource allocationResource allocation Development and ownership of inventionsDevelopment and ownership of inventions CreationsCreations Trade secretTrade secret Etical obligationsEtical obligations


PatentPatent Shop rightsShop rights

Shop Rights Issue Shop Rights Issue arises when an invention is invented by an employee using arises when an invention is invented by an employee using employer resources. In this case:employer resources. In this case:

- - in general and in U.S.Ain general and in U.S.A. employers enjoy a shop right in the . employers enjoy a shop right in the patent and are entitled to a royalty-free nonexclusive license to patent and are entitled to a royalty-free nonexclusive license to the patentthe patent

- - in Italyin Italy under the under the New Industrial Property Code – D. Leg. 10.2.2005, n. 30New Industrial Property Code – D. Leg. 10.2.2005, n. 30 there are there are at the present two different shop rightsat the present two different shop rights


PatentPatent Shop rightsShop rights

The first The first - - under art. 64:under art. 64:if the inventor is employed in a private company or in general in a if the inventor is employed in a private company or in general in a public administrationpublic administration IPR are of the employer and the employee has only the right to be quoted IPR are of the employer and the employee has only the right to be quoted as authoras author

The secondThe second - under art. 65 - under art. 65 if the inventor is employed in Universities, Public Research Centerif the inventor is employed in Universities, Public Research CenterIPR are exclusively of the employee who may apply for the patent of his IPR are exclusively of the employee who may apply for the patent of his invention. The University/Research Center may exploit the invention but al invention. The University/Research Center may exploit the invention but al least 50% of economic rights must be given to the employee least 50% of economic rights must be given to the employee Attention!Attention! This rule is going to be early updated with an amendment as This rule is going to be early updated with an amendment as to the proposal approved by the Italian Parlament on June 29, 2005 and to the proposal approved by the Italian Parlament on June 29, 2005 and now sent to the approval by the “Senato” – now sent to the approval by the “Senato” – see see art. 13art. 13 of the proposal of law of the proposal of law n. 3533 n. 3533


PatentPatentAssignments and LicensesAssignments and Licenses

The majority of discoveries and inventions that areThe majority of discoveries and inventions that arepatented are not commercially successfull.patented are not commercially successfull.

Why?Why?

1.1. because the inventor is unaware…. that the invention has little because the inventor is unaware…. that the invention has little commercial potentialcommercial potential

2.2. No effort has been made to commercialize the inventionNo effort has been made to commercialize the invention

HOW IS POSSIBLE TO EXPLOIT THE INVENTION?HOW IS POSSIBLE TO EXPLOIT THE INVENTION?

1.1. By PATENT ASSIGNMENTBy PATENT ASSIGNMENT

2.2. By LICENSESBy LICENSES



1.1. PATENT ASSIGNMENTPATENT ASSIGNMENTIt is a transfer of the ownership of the patent, for which the It is a transfer of the ownership of the patent, for which the inventor may receive: inventor may receive:

Continuing royalties during the life of the patentContinuing royalties during the life of the patent

A lump sum paymentA lump sum payment

BothBoth

And/or Shares in a start-up or company interested in exploitationAnd/or Shares in a start-up or company interested in exploitation

Assignment can be made before the patent application is filed Assignment can be made before the patent application is filed during the application process or afterduring the application process or after



2.2. LICENSESLICENSES

A License is a grant of rights as to the patent.A License is a grant of rights as to the patent.It may be referred to all rights or to a percentage interest in It may be referred to all rights or to a percentage interest in the rights, or referred to a specific geographic area or suject the rights, or referred to a specific geographic area or suject mattermatter

- A license agreement generally includes- A license agreement generally includes

Description of the inventionDescription of the invention Rights grantedRights granted Obligations of the partiesObligations of the parties Payments and RecordsPayments and Records Right to sublicenseRight to sublicense Patent prosecution and InfringementPatent prosecution and Infringement Warranties and IndemnityWarranties and Indemnity


PatentPatentEnforcement of Patent RightsEnforcement of Patent Rights

In generalIn general Conservatory or provisional measuresConservatory or provisional measures Civil remediesCivil remedies Criminal sanctionsCriminal sanctions

RemediesRemedies Equitable remediesEquitable remedies

This is the most important of the remedies. Court have the This is the most important of the remedies. Court have the power to assign patents, rewrite inventorship, and prevent power to assign patents, rewrite inventorship, and prevent violations of any rights secured by the patent violations of any rights secured by the patent

Damages includingDamages including- what a reasonable royalty would have been- what a reasonable royalty would have been- interest and costs- interest and costs- any lost profits, to be proven- any lost profits, to be proven- in U.S.A. Court may increase by three times this amount for - in U.S.A. Court may increase by three times this amount for cases of willful infringementcases of willful infringement

Attorney’s feesAttorney’s fees



U.S.AU.S.A Theories of Liability for Patent Rights Infringment Theories of Liability for Patent Rights Infringment

Literal Infringement Literal Infringement Under the Patent Act, infringement is defined as one who Under the Patent Act, infringement is defined as one who makes, uses, offers to sell, or sells any patented invention, or makes, uses, offers to sell, or sells any patented invention, or actively induces infringement on any of the claims covered by actively induces infringement on any of the claims covered by the patent. The statute allows for equitable relief, as well as the patent. The statute allows for equitable relief, as well as damages.damages.

Case LawCase LawAmazon.comAmazon.com, , Inc.Inc. v. v. Barnesandnoble.comBarnesandnoble.com, , Inc.Inc.



U.S.AU.S.A Theories of Liability for Patent Rights Infringment Theories of Liability for Patent Rights Infringment

The Doctrine of EquivalentsThe Doctrine of EquivalentsIt is a rule that competitors cannot simply make insignificant changes to a It is a rule that competitors cannot simply make insignificant changes to a patent object to avoid infringements claims; it takes the incentive away from patent object to avoid infringements claims; it takes the incentive away from reverse engineering and making minor changes so as to avoid literal reverse engineering and making minor changes so as to avoid literal infringement charges.infringement charges.Thus doctrine of equivalents permits a finding of patent infringement, even Thus doctrine of equivalents permits a finding of patent infringement, even when the claims are not literally infringed.when the claims are not literally infringed.

Case Law Case Law NoninfringementNoninfringement: : ACTV, Inc v. Alt Disney Co, ACTV, Inc v. Alt Disney Co, The Supreme Court decided a challenge to the doctrine of equivalent in the The Supreme Court decided a challenge to the doctrine of equivalent in the casecaseFestoFesto Corp. v. Corp. v. ShoketsuShoketsu KinzokuKinzoku KogyoKogyo KabushikiKabushiki CoCo, , LtdLtd

Date post:	31-Dec-2015
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