dr. michael berger, european patent attorney © michael berger 03.06.2010 intellectual property...

Dr. Michael Berger, European Patent Attorney

© Michael Berger 03.06.2010

Intellectual Property (IP):Patents for Inventions

Intellectual Property (IP)

Technical protective rights:

Patents

Utility patents

Semiconductor Protection

Nontechnical protective rights:

Design Patents

Trademarks

Plant Variety Protection

NewScope Group © Michael Berger 03.06.2010


Trademarks…

A patent is a set of exclusive rights granted by a state to an inventor or his assignee for a limited period of time in exchange for a disclosure of an invention

Patent applications are possible for:Products (devices etc.), methods, medical use…

What is a patent?


http://en.wikipedia.org/wiki/Exclusive_right

http://en.wikipedia.org/wiki/Term_of_patent

http://en.wikipedia.org/wiki/Invention

exclusive rights: commercial use only through the inventor or his assignee and/or his licensee(s)

limited period of time: 20 years from the filing date

Invention: as defined in the claims; must be novel and inventive over the prior art and be industrially applicable to be granted as a patent; must be sufficiently disclosed


http://en.wikipedia.org/wiki/Exclusive_right

http://en.wikipedia.org/wiki/Term_of_patent

http://en.wikipedia.org/wiki/Invention

Novelty…

- Keep the invention secret prior to filing !!!!!

After filing… - Could be advantageous to keep the invention secret until patent application is published if there are related inventions which will be filed at a later stage

Patent claims:

Claims define in the most abstract form what the inventor regards to be the invention in respect to what forms the (known) prior art.


Claim Example1. A plastic drink bottle having two closed internal compartments, said closed internal compartments being able to hold a first drinking fluid and a second drinking fluid, such that a user may access said first drinking fluid independent of said second drinking fluid. (taken from US 2009020541 A1 )



…other embodyments covered by the claims

- A plastic drink bottle having two closed internal compartments - said closed internal compartments being able to hold a first drinking fluid and a second drinking fluid- such that a user may access said first drinking fluid independent of said second drinking fluid

A patent is an object of great value.

The value is thereby dependent on the scope of the patent and the

territorial extent of the patent family.


How to obtain a patent

1. filing a patent application at national (e.g. UKPTO, USPTO, DPMA) or regional Patent Offices (e.g. EPO) (preliminary protection after opening of the patent application to the public / 18 months after filing)

2. Request examination of the patent application

3. If the requirements for granting a patent (e.g. novelty, inventive step) are fulfilled a patent will be granted (full protection - exclusive rights in force)


International Patent Filing

a) Traditional patent systems:

Local patent application followed within 12 months by multiple foreign applications claiming priority under Paris Convention:– multiple formality requirements– multiple searches– multiple publications– multiple examinations and prosecutions of applications– translations and national fees required at 12 months

-> decision on national filings and high costs 12 months after first filing


Traditional filing system - TIMELINE (simplyfied)

National/Regional/filing(priority date)

National /Regional publications

National / Regional filings claiming priority

(months) 0 12

18


b) PCT (Patent Cooperation Treaty) system

First patent application is followed within 12 months by internationalapplication under the PCT, claiming Paris Convention priority

– one set of formality requirements– international search– international publication– international preliminary examination (IPE)– international application can be put in order before national phase– translations and national fees required at 30 months*, and only if applicant wishes to proceed

Advantage:– “national phase” commencing at 30 months*; -> high cost effort for national filings” 30 months after first filing instead of 12 months after filing -> 30 months time after first filing for decision on national filings

*A few States apply a 20-month time limit where no demand for international preliminary examination has been filed before the expiration of 19-month period


PCT TIMELINE (simplyfied)


National/Regional/PCT filing/(priority date)

PCT filing

International searchreport (ISR) andwritten opinion (WO)of ISA

International publicationNationalphase entry

(months) 0 12 16 18 22 28 30

IPRP established

2 months from ISR:filing of claimsamendments (optional)

Filing of demand (IPE)


PCT Contracting States* (142 on 1 May 2010)

* For a detailed list please see http://www.wipo.int/pct/en/list_states.pdf

http://www.wipo.int/pct/en/list_states.pdf

Last but not least, think about if there is a market for the product to be patented…


Source: EPO poster “ The seven deadly sins of the inventor”

Thanks!


dr. michael berger, european patent attorney © michael berger 03.06.2010 intellectual property...

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