Intellectual Property
and Patents
Learning Outcomes
Introduce the concept of Intellectual Property (IP)
Why protect an idea?
Patents
How to get value from your patent
What is Intellectual Property?
“Intellectual property (IP) refers to creations of the mind:
inventions, literary and artistic works, symbols, names,
images and designs used in commerce.”
IP comes in several forms:
Patents – technical features of innovations
Trade Marks – brand names and logos
Registered Designs – appearance
Copyright – graphical and literary material
Why Protect An Idea?
Legal protection of your new idea or invention ensures the
future position of your company/brand and enables you
to make money in a highly competitive market place
It stops others from copying your idea allowing you to
maximise the return you deserve for investing you time,
capital and resources in the invention of the idea
A Well Known Example
Registered Trademarks
The name “Apple” and the logo above are examples of some of
the registered trademarks the company holds
In total Apple holds approximately 8000 registered trademarks
Patents
Apple holds approximately 5400 patents covering all of the
technical aspects of it’s products
Registered Designs
Apple holds approximately 2700 registered designs for it’s
uniquely styled products
Copyright
Copyright © 2012 Apple Inc. All rights reserved.
Patents
Patents are the only mechanism for protecting technical ideas
Patents are property, they have value (£) and investors like to
see them
Patents are a negative right i.e. they detail what cannot be
done by others
The legal bit:
a monopoly right lasting up to 20 years from filing
disclosure of your idea to the public
country-specific
The paper bit:
a description of a (technical) idea
a definition of what cannot be done by others (claims)
the names of the inventor(s)
A social bargain…
The state grants a monopoly right, but you disclose your idea to the world
Exclusivity in a defined technical area
Chance to recoup your investment
In return you pay some fees to the state
Stimulates innovation
Patentability
Q. What can be patented?
A. Nearly anything “technical”
Products (molecules, materials, new composition)
Apparatus (for making, purifying, extracting)
Methods (synthetic methodology, process steps, treatment)
Uses (as a drug, a paint stripper, etc.)
Must be:
New (“novel”)
Non-obvious (involves an “inventive step”)
Capable of industrial application
Novelty (& Disclosure)
Absolute worldwide novelty test
Anything made available (disclosed) to the public anywhere
The “Prior Art”
Published documents, posters, lectures
In order to anticipate a “claim” all the features must be in a single
document/lecture/poster
Disclosure
The invention must not have been made available to the public in
any way, at any time, anywhere – this is very important!
This can be guarded against though imposing a CDA
Inventive Step
The invention must not be obvious to a person who is ‘skilled
in the art’
The ‘person skilled in the art’:
Reads everything (speaks all languages)
Makes routine selections
Overcomes routine problems
Doesn’t make inventive leaps
An invention may be inventive if:
It has an unexpected or surprising result
It was not obvious to try or non-routine
It overcomes a technical problem
Exclusions from Patentability
Important Exclusions (UK, Europe)
Methods of medical treatment/diagnosis
Computer programs as such
Mathematical models
Presentation of information
Methods of doing business
A patent attorney often avoids these
There are no restrictions in US
Inventorship & Ownership
The inventor(s) are the actual devisor(s) of the invention
Ownership may depend upon the relationship of the
inventor(s) and any other parties involved
A business/company normally owns the IP generated by employees
This is normally set-out in the employees contract
This is also the case at a University
Students however are not employees and a separate agreement will
need to be reached between the University and the student
The patent may be invalidated if the inventor(s) and/or owners
are not correctly indentified
Freedom-to-Operate
Your patent stops others from using your IP, but does not
allow you to use it yourself
To use your own patent you may need to use something which
is covered in the claims of someone else’s patent, e.g.
Patent 1 – “the wheel”
Patent 2 – “the push bike”
The owner of patent 2 must ask permission to make his bike!
You therefore may have to license, buy or attack the other
patent to gain the full potential from your invention
Alternatively you could invent around the other patent
Procedure
0 months ‘priority date’
Drafting & file UK application
0 – 12 months
The ‘priority period’
Development and finding £
12 Months 12 months File National Applications
File PCT Application Consider overseas applications in Non-PCT countries
Covers many countries e.g. Argentina, Pakistan
18 months
Publication (A) & search report
12 – 30 months
Development and must find £
30 Months 30 months
National / Regional Applications Action needed in each country
European Patent Office
USA, Japan, China, Brazil, 30+ months
Australia, etc Examination + correspondence
with patent examiners
40+ months
Grant of patent & Publication (B)
Annual renewal fees
20 year maximum lifetime
Anatomy of a Patent
Title – Usually uninformative
Abstract – To help patent searchers
Description
Some background – what is known
Generic statements defining the invention
Detailed description of the invention, with reference to drawings
(optional) and experimental data (usually)
Figures – if they help explain the invention
Claims – are as broad as possible to define the full scope of
protection in the patent
Getting Value from Your Patent
Patents are property, they have value (£)
Imagine your patent is like a house; you can:
Live in the house – commercialise you IP into a new product
Take in a lodger – license your IP to a third party
Let out you house – exclusive license of your IP to a third party
Sell the house – assign (sell) your IP to a third party
What Investors Look For
Effective patent protection
Gives security against competition from third parties
Gives reassurance that they will see a return on their investment
Freedom-to-operate
Gives assurance that third parties will not be able to stop you
entering your market place
Gives reassurance that they will see a return on their investment
Proper entitlement of inventorship
Gives assurance that no-one else can claim the IP or invalidate the
patent
Gives reassurance that they will see a return on their investment
