mapping technology and ipr landscapes to identify … - ipr.pdf · territoriality principle...
TRANSCRIPT
Demo
Mapping Technology and IPR Landscapes to Identify Business Opportunities and Legal Research
ELAN Technical Mission, 5-9 September 2016, Helsinki
CEO Hannes ToivanenTeqmine Analytics OyEmail. [email protected]
Patenting and Invention is Growing Rapidly
• 3 million patents per year
world wide 2015
• Global patenting: 80%
growth in 200414
• 2014: 2830 firms with 10 or
more new patent
publications at WIPO
• About 15,000 new to the world
inventions every week world
wide
• OBJECTIVE: – Simplify and automate patent monitoring
– Secure uptodate identification of relevant patent risks and threats
– Reduce staff workload
– Improve the quality of outcome from patent monitoring effort
• OUTCOMES:– Credible and documented electronic patent
monitor archive
– Significant reduction in redundant work of staff
– Clear overview of patent situation and technology landscaape
PATENT MONITORING
• Improved Risk Management. Identify and act
timely on problematic patents. Demonstrate that
your products and patents are noninfringing
• Improve Company Value. Show evidence about
the novelty of your technology area and document
the importance of your patents
• Ready For Investor and M&A. Ready and credible
patent monitoring dossier will cut DD short
• Save and Make Money. Identify nonperforming
patents and stop maintenance. Identify out
licensing opportunities
BENEFITS
DON'T REINVENT THE WHEEL!
• EarlyStage Invention Decision Support
Screen invention disclosures, research articles,
any invention text that needs patent landscape
• Identify rate of relevant patenting, competitors
and important priorart
• Improve credibility, speed and costefficiency
of invention screening
• Proper feedback to inventors
• Effective Technology
Scanning
• Easy overview of competitor
portfolios
• Zoom and Archive individual
patents
• Ready reports
• Custom analysis
• Monthly Updates
• Don't follow uninteresting
stuff!
• Customized technology levels
or AI created topics
Industry Benchmarks
See Key Issues easily!
EPO Patents 1.1.201131.7.2016
Why patent and technology landscapes?
Independent expert evaluation of your risk and strategic environment to support business development
Comprehensive map and details on Emerging Trends, Business Dynamics
DecisionSupport Data, including FreedomToOperate, Competition, Expected Rate of Patenting, and other critical business intelligence.
Convince investors, your management or yourself with accurate and precise analytics
Data and Evidence:
• Technology Trends. How big key technology
areas are and what is expected rate of patenting.
• Key patents. List of patents that matter
especially much to your technology and
business.
• Key competitors. Translation, input
suggestions, see also previous
• Data and Statistics. Consolidated evidence on
sources of new technology by country, city,
leading inventors, etc.
• Tools. Access and work with your map online
• Visualization. Show where your patents are
located and see where the competit ion is.
Machine Learning Patent Map
Topic 7
Teqmine tools allow you to
discover and document key
patenting areas and technology
trends clearly
Machine Learning Patent MapPosition Medical Machine Learning Patents
Machine Learning for CHepatitis, 2016
Physiological Monitoring Devices and
Methods Using Optical Sensors, 2016
System and Method For Identity
Confirmation Using Physiologic
Biometrics to Determine A Physiologic
Fingerprint, 2016
Teqmine tools allow you to
illustrate the position of your
undisclosed inventions and
patents, and compare to
competitors
Machine Learning Technology Trend 19902016
• *Teqmine Estimate based on current expected patenting rate• Note: Data includes Grants 19902001, Applications 20012015
Machine Learning is rapidly expanding technology and growth is likely to increase
Machine Learning Technology Trends by Topic 20022016
*three months of data
Topic 1 – Sensors, IoT
Topic 2 – Classification
Topic 7 – Medical analysis
Topic 8 – Query & Search
Machine LearningMain Technology Areas
Teqmine uses AI to divide fulltext patents into easily recognized technology areas (topics)
Machine Learning data is broken into 10 Topic Areas
Unsupervised discovery can be enhanced with trained classification, e.g. IPC classes or expert evaluation
Innovation frontier is migrating from data science to business and application areas
Key Technology Areas for ML are:• Query technology. Databases, cognitivie
data, information retrieval, learning
• Classification. Metadata generation, training. See also previous
• Text processing. Translation, input suggestions, see also previous
• Sensors. In/output, dataprocessing, smart systems, traffic, IoT.
• Image/s. Detection, recognition classification, metadata
• Location based services. Navigation , Mapping, geotagging, etc.
• Medical analytics. Patient treatment, public health models, analytic processes, predictive diagnostics
• Emerging areas: Fintech, Vehicles
Territoriality of IPRs, protecting your assets when moving your business abroad
Philippe Pépin Chief operating officer
Title Objective Territoriality Acquisition Exploitation Enforcement Source
To introduce entrepreneurs to the right mindset in designing their intellectual property strategy at the early stage of their
business planning.
Today’s objective
Objective Territoriality Acquisition Exploitation Enforcement Source
Territoriality
Territoriality and harmonization
Acquisition
Protection
Enforcement
AAcquisition
Protection
Enforcement
B
Territoriality Acquisition Exploitation Enforcement Source
AcquisitionWhen and where to apply?
Knowing what you own. Registered and unregistered rights.
Prioritization Planification
Trademarks - Signification - Translations
Patents - Delays - National
requirement
Prevention
Acquisition Exploitation Enforcement Source
Exploitation
Licensing IPR TransferNew registrations
Adopting the right attitude in minimizing risks Knowing when to outsource
Exploitation Enforcement Source
Protecting your Inventions Abroad: Understanding the IP Landscape of Latin America
Eli Salis
7 September 2016
Helpdesk Services at a Glance
2 2
Enquiry Helpline
IP Guides, Factsheets &
article
E-learning & Business Tools
Training Workshops & Live Webinars Website & Blog
Today’s Speaker
Name: Eli Salis Firm: Disain IP Location: Alicante, Spain Email: [email protected]
Mr. Eli Salis is Partner attorney at Disain IP (Alicante, Spain) and focuses on Intellectual Property, in particular, with the protection, prosecution and enforcement regarding trademarks, patents, designs and copyrights. He has s graduated from the National University of Litoral, Santa Fe (Argentina) and has a Master Degree on IP from the University of Alicante. He represents international and medium sized companies in proceedings before National Offices of Patents and Trademarks. He also has extensive experience in managing and coordinating the prosecution and enforcement of IP matters across the Europe and Latin America regions.
Eli is author of several publications on IP matters and lectures at different Universities in Europe and Latin America. He also provides consulting services to the World Intellectual Property Organization (WIPO).
4
Agenda
• How can I protect my Inventions?
• Requirements to protect an invention
• Where I need to register?
• Experiences. Practical cases
• Technology transfer
• Enforcement
• Strengths & Weaknesses of the Patent System in Latin America
4
How can I protect my Inventions?
Patents Utility Models
If your company has an invention that you think is patentable, take steps at once. You may lose your right to patent it if you offer it for sale or disclose it publicly without patent protection.
Inventions: what do you need to know?
• Which kind of Inventions can be protected?
Utility Models, are ‘petty patents’, such as new devices that provide an improvement, or technical effect in the function of an object.
Process Application Product Process Application
Utility Model
• A utility model is an exclusive right granted for an invention, which allows the right holder to prevent others from commercially using the protected invention, without his authorization, for a limited period of time.
• Sometimes referred to as “petty patents”.
Differences between Utility Models and Patents
Examination Requirements Technology to protect
Term of protection
Costs
Requirements to protect an invention
Novelty Inventive step
Industrial applicability Sufficient disclosure of
the invention in the application
Patentability Requirements
Novelty
• An invention shall be considered to be new if it does not form part of the state of the art.
• 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 patent application in any part of the world.
Territoriality Principle and worldwide state of the art
Novelty is assessed on a
worldwide basis
Inventor enjoys his monopoly in the
country covered by the patent
Practical case
Disclosure effect: exceptions
• Grace period in most of the Latin America countries.
• Evident abuse in relation to the applicant.
• International exhibition. Documentation required.
Be prepared to establish the novelty of your idea. Keep good records of its development-including dates, drawings, etc.- and round up witnesses.
Patents: differences with the European Legal System
Practical case: Inventor A who is based in Finland presents a paper in Munich on May 8, 2015. He then returns to Helsinki and is busy with other work. In August 2016 he remembers that he needs to file a patent application on the invention. Is it too late for him to seek patent protection?
Second (or further) medical use of known pharmaceutical products
• Where a substance or composition is already known to have been used in a "first medical use", it may still be patentable for any second or further use in a method, provided that said use is novel and inventive.
• Legal status in Latin America countries: permitted in Mexico, Chile and Brazil and no permitted in Argentina and Perú.
Where I need to register?
• The exclusive rights are only applicable in the country or region in which a patent has been filed and granted in accordance with the law of that country or region.
• Priority right (Paris Convention): 12 months from the date of priority.
Where I need to register? Territoriality principle
National Patent
In general, an application filed before your National Patent Office (NPO) must be accompanied by:
• A specification containing a detailed description of the invention;
• One or more claims;
• Any drawings referred to in the description or claims and an abstract;
• The required filing fee.
International Registration
By filing an International application, patent protection can be obtained in each designated states amongst 150 worldwide. PCT applications may be submitted:
• To your NPO; or
• To the WIPO.
“First to file” system
Some common aspects. Prosecution.
Application Formal
Examination Publication/ Oppositions
Substantive Examination
Registration
National Patent Offices: Some aspects about prosecution
Time for getting a patent
Costs PoA Appeal Opposition Duration
Argentina 3 / 9 yeas 2000 / 8000
Yes* Yes. Before the Ordinary Courts
Yes (60 days) 20 years
Brazil 5 years 7000 / 10000
Yes Yes. Before the Ordinary Courts
yes (six months after registration)
20 years
Colombia 2/3 years 2000 / 6000
Yes
Yes. Before National Patent Office and the
Ordinary Courts
Yes (60 days)
20 years
México 3 / 4 years
4000 Yes Yes. Before the Ordinary Courts
No. But observations
allowed 20 years
Peru 3.5 / 5 years
2500 Yes
Yes. Before National Patent Office and the
Ordinary Courts
Yes (60 days)
20 years
PCT
Argentina, Uruguay, Paraguay, Bolivia and
Venezuela are not members of the PCT (Patent
Cooperation Treaty).
12 months
(Paris Convention)
12 months
Experiences. Filing a patent application in Argentina, Brazil, Colombia, Mexico and Peru
• French company applied for a patent application in the five countries through the PCT system (except in Argentina). • In Brazil is still pending. • In Argentina and Mexico is granted. • In Colombia, beside the parent patent application, there is an application for a divisional. Both are rejected. While the first one is appealed; in the second case is the own Patent Office which decided to reexamine the application. • In Peru, both the parent application and the divisional are granted.
Experiences. Collaboration with a Colombian University.
• A group of Spanish
companies who trade mineral water are interested in a new technology protected by some researchers of a Colombian University through a national patent and a PCT application. • The International Search Report considers that claims 21, 22 and 23 are new and have inventive step. However, claims 1 to 20 do not comply with the inventive step requirement.
• A depth analysis shows that with the participation of the inventors, some claims could be protected. • And the technology could be used not only for bottles but also for cosmetics packaging. • Main problems raised during negotiations. Which are the recommendations?
Experiences. Access to a new technology developed by a Mexican company.
• Multinational Spanish
company from the petrol sector and a private Mexican company signed a Collaboration Agreement. • The object of the Agreement is the creation of a new company who will develop and trade a new system of energy storage. • The Mexican company will provide the know-how over the technology and the Spanish company will make a monetary contribution.
The Spanish company ask for a report which answer to the following aspects: • Determine the concept, features and scope of the Know-how. • Analysis of the measures of protection of the Know-how. Conclusions: ownership of the technology, IP rights and chances of success in case of claims from third parties.
Government Control of Licensing Agreements
• In many developing countries, the inflow of technology
is subject to a variety of controls as a means of ensuring
that contracts concerning transfer of technology are
consistent with the economic aims of the government.
• In some countries, these controls are part of a more
comprehensive system of laws dealing with foreign
investment in the country.
Enforcement: Civil remedies
• Cessation of infringing acts
• Destruction of infringing goods
• Publication of the judgment
• Damages
• Provisional Protection
Concerns about enforcement
• For obtaining a preliminary injunction a preliminary
assessment of the validity of the patent should be
done.
• Lack of Court´s awareness of IP in Criminal Courts.
• Delays in proceedings and low damages in Civil
Courts.
• Limited scope of border measures (in some
countries only for trademark and copyright).
• No protection of confidentiality in trade secret-
related proceedings.
Strengths & Weaknesses of the Patent System in Latin America
Law Perspective
Enforcement
Not all countries
are member of
the PCT
Backlog at certain Patent Offices