invention spotting – identifying patentable inventions martin vinsome june 2012
TRANSCRIPT
Invention Spotting – Identifying Patentable Inventions
Martin Vinsome
June 2012
What is a patent?
Why patent?
What can be patented?
How do we apply for a patent?
UK Patents Act 1977 – Section 60
Gives proprietor the right to prevent others from:-
- making, using, importing, selling or offering for sale a product; or
- using or offering for use a process.
What is a patent?
Why bother patenting?
1. Restricts unfair competition
– R & D is more expensive than copying
2. Can grant licences
– example - power tools – royalty rate 2% to 5% of selling price
3. Patent Box – lower corporation tax from April 2013
European Patent Convention – Article 52
1. European patents shall be granted for any inventions, in all fields of technology, provided that they are new, involve an inventive step and are susceptible of industrial application.
What can be patented?
What can be patented?
European Patent Convention – Article 84
The claims shall define the matter for which protection is sought.
What does “new” mean?
European Patent Convention – Article 54
(1) An invention shall be considered to be new if it does not form part of the state of the art.
(2) The state of the art shall be held to comprise everything made available to the public by means of a written or oral description, by use, or in any other way, before the date of filing of the European patent application.
What does “new” mean?
Therefore extremely important not to disclose invention before filing patent application
European Patent Convention - Article 56
An invention shall be considered as involving an inventive step if, having regard to the state of the art, it is not obvious to a person skilled in the art.
What does “inventive step” mean?
Inventive Step - Problem and Solution
Guidelines for Examination in the European Patent Office:
Three main stages:
closest prior art
objective technical problem, and
considering whether or not the claimed invention, starting
from the closest prior art and the objective technical problem, would have been obvious to the skilled person.
Inventive Step – Closest Prior Art
Compare the invention with the closest prior art (that you are aware of)
Identify the new features of the invention
Inventive Step – Objective Technical Problem
What advantage does the new part of the invention give?
This is the solution to the objective technical problem of the closest prior art
Inventive Step - Obvious
Would it have been obvious to the skilled person to solve the problem in this way?
Inventive Step –Skilled person
Guidelines for Examination in the European Patent Office
Skilled practitioner in the relevant field, who is possessed of average knowledge and ability and is aware of what was common general knowledge in the art at the relevant date
Example - European Patent EP1741528
Example - European Patent EP1741528
European Patent EP1741528 – as applied for
But – cited by Examiner
But – cited by Examiner
How do we get around this?
Amend the claims to avoid prior art
Argue amended claims inventive
Use problem and solution
Amend the claims
1. A router (102) comprising:-
a motor housing (104);
a motor provided in the motor housing for turning a cutting tool;
a base (110) for engaging a workpiece, the base including an aperture (108) for allowing the cutting tool to pass therethrough to engage the workpiece; and
a plurality of support columns (118, 120) mounted to said base for allowing the motor housing to move relative to the base in a direction substantially parallel to a rotational axis of the cutting tool, wherein a plurality of said support columns are spaced apart in a direction transverse to said rotational axis, and said motor housing is connected to a plurality of said spaced apart support columns by means of a plurality of support members (112, 140), and a plurality of said support members are spaced apart in a direction parallel to said rotational axis, wherein at least one said support column is hollow, characterised in that the base (110) includes at least one channel (142) connecting the aperture (108) to a respective said hollow support column (118), the hollow support column connecting the channel with an outlet (144) such that if a suction source is connected to said outlet dust produced by said cutting tool is removed.
Problem and solution
(i) determine the "closest prior art“
This is US 2003/0002947
We did not know about it when the application was filed – this can have important consequences later.
Problem and solution
(ii) establish the "objective technical problem" to be solved
What is the difference?
What is the advantage?
What is the problem being solved?
Amend the claims
characterised in that the base (110) includes at least one channel (142) connecting the aperture (108) to a respective said hollow support column (118), the hollow support column connecting the channel with an outlet (144) such that if a suction source is connected to said outlet dust produced by said cutting tool is removed.
Objective Technical Problem
It can therefore be seen that the objective problem with the invention disclosed in D1 is to incorporate means for removing dust from the working area of the cutting tool without significantly increasing the size of the router or obstructing the view of the work area.
Problem and solution
(iii) consider whether or not the claimed invention, starting from the closest prior art and the objective technical problem, would have been obvious to the skilled person
i.e. Find a reason why it would not be obvious to the person skilled in the art to solve the “objective technical problem” in the same way?
Problem and solution
It is submitted that it is not disclosed or suggestion in any of the prior art that including a hollow support column which communicates with a channel in the base would allow connection to a suction source and removal of dust from the working area of the cutting tool. In particular, there is no suggestion or disclosure that a dust removal system could be added to the router without significantly increasing the size of the tool or obstructing its use. It is therefore submitted that amended claim 1 involves an inventive step.
European Patent Convention – Article 52
2. The following shall not be regarded as inventions:
schemes, rules and methods for performing mental acts, playing games or doing business, and programs for computers;
presentations of information.
What can be patented? - continued
So software is not patentable?
Not exactly
(3) Paragraph 2 shall exclude the patentability of the subject-matter or activities referred to therein only to the extent to which a European patent application or European patent relates to such subject‑matter or activities as such.
What can be patented? - Example
http://www.youtube.com/v/EX2Kdo6F-Ug&autoplay=1&start=110
European Patent 0844580
What does this mean?
Guidelines for Examination in the European Patent Office
If the claimed subject-matter has a technical character it is not excluded from patentability by the provisions of Art. 52(2) and (3).
In other words, if it solves a technical problem, it is not excluded subject matter
What can be patented? - Example
So how is this patentable?
Addressing conflicting requirements of displaying enlarged portion of image and keeping overview of zone of interest larger than display area solved a technical problem
Invention had technical character
Not computer program as such
Solution not obvious
How do we apply for a patent?
European Patent Convention – Article 83
The European patent application shall disclose the invention in a manner sufficiently clear and complete for it to be carried out by a person skilled in the art.
Detailed description of how the invention works needs to be included in the application
How do we apply for a patent?
But
European Patent Convention – Article 123
The European patent application or European patent may not be amended in such a way that it contains subject‑matter which extends beyond the content of the application as filed.
Can not add information after filing date
How do we apply for a patent?
Therefore need detailed description, but can only rely on information included in the application as originally filed
Supply patent attorney with detailed description of everything – patent attorney should then draft claims so that there are no unnecessary limitations in scope
Any questions?
