Intellectual Property

Departamento de Química – Universidade de Coimbra

2011/2012
Telmo Figueiredo
Telmo Figueiredo, Corporate Patent Europe
Agenda

Basic Patent Law

• Strategic value of patents
• Introduction to patent law
• Importance of lab books
• Contents of a patent – how to read it

Applied Patent Law

• The patenting process
• Infringement - and how to avoid it
• IP and agreements

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 Intellectual Assets – what are they?

Intellectual Assets Information of

Technical inventions
20 years commercial value

Registered Unregistered
Words, pictures
Can be renewed Patents Trade secrets Licenses,
distribution
agreements
Trademarks Contracts

Designs Know-how

Copyrights Accreditation
Appearance, design Info on process,
Up to 25 years special methods
etc.

Artwork, litterature Industrial standards

Up to 70 years after (ISO), regulatory
death of artist requirements (FDA)
Intellectual Assets – why are they
important?
Creating barriers to entry for competitors
• Exclusive rights are attractive from a business perspective
• May result in a de facto monopoly situation

Regain R&D spending by exclusive market position and out-licensing

• Sales price can be set to match customers "Value-in-use“ = Financial reward to the Patentee

Getting access to other parties’ technology

• Licensing 100
90
80
70
60 Net Sales
50 Cost of goods sold

Marketing advantages 40
30 Gross Profit
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10
• If it’s patented, it must be new! 0
Patent Protection No Patent
 Business Strategy linked to IP strategy

Business Strategy IP strategy

Innovation strategy IP landscapes

Technology plans IP opportunities

Innovation partnerships Innovation ownership

IP as a bargaining chip

Strong patent portfolio

=>
Strong position to negotiate
=>
Access to 3rd party technology

Sometimes a license is the best

solution for both parties, BUT you
need to be willing to pay or have
something to give in return
Competitor Surveillance

Patents are a great source of

information
We monitor our competitors' patent filings:

• To find out where the competition is heading

• To be able to plan ahead and prepare counter

actions (oppositions, re-examinations, TPOs)

•To be able to adjust R&D projects as necessary

• In order to build on the competitors technology

• To refine others technology and patent

improvements to create mutual dependency

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Introduction to Patent Law

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INTRODUCTION TO PATENT LAW

Introduction to Patent Law

What is a patent?
Patentability criteria in Europe
• Patentable subject matter
• Novelty
• Inventive step
• Industrial Applicability

Further requirements
• Unity of invention
• Sufficiency of disclosure
• Inventorship

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What is a Patent ?

A Patent is a legal document issued by a national authority

The Patentee may prevent others from commercial exploitation
of the invention (exclusive right):
i.e. manufacturing, sales, marketing, offering for sale,
application, possession, import

 For a limited time period (20 years)

 For a limited territory
 Against payment of an annual fee

The Public benefits from publication of the invention

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INTRODUCTION TO PATENT LAW

What Is A Patent?

A patent is, i.e., legal document :

A contract between the patentee
and the society

The society gets new knowledge

• Application describing the technology
• Publication of the patent application after 18 months

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INTRODUCTION TO PATENT LAW

WARNINGS

There are patent applications

There are patents
There are lapsed patents
There are totally invalid patents
There are partially invalid patents
There may be many applications/patents for a particular
invention
There may be many people/companies who own rights
in a particular invention

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INTRODUCTION TO PATENT LAW

Patentability criteria in Europe

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PATENTABLE SUBJECT MATTER

Patentability is regulated by

• National laws
• Regional laws e.g. European Patent Convention (EPC)
• International conventions e.g. Patent Cooperation Treaty (PCT)

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PATENTABILITY CRITEREA IN EUROPE

FOUR BASIC QUESTIONS

FIRST QUESTION
Is the subject-matter: an INVENTION?

Does the subject-matter have a technical

nature? Is it considered an invention?

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PATENTABLE SUBJECT MATTER

Examples of subject-matter that are treated

as inventions:

Mechanical devices
Electromechanical devices
Chemical compounds
Biological compounds
Computer hardware
Plants (with certain provisos)
Animals (with certain provisos)
Processes that make or use any of the above
Products made with or by any of the above

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PATENTABLE SUBJECT MATTER

Non inventions

Non-inventions are:
Discoveries
Scientific theories
Mathematical methods
Aesthetic creations
Schemes, rule and methods of performing mental acts
Playing games
Doing business (Allowed in US)
Programs for computers (Allowed in US)
Presentations of information
Patentability exclusion list only applies to
those subject-matter/activities AS SUCH

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PATENTABILITY CRITEREA IN EUROPE

Some inventions are excluded from

patentability,e.g.:

If contrary to “order public” or morality,

If directed to plant or animal varieties,
If directed to therapeutic, surgical or
diagnostic method.

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PATENTABILITY CRITEREA IN EUROPE

FOUR BASIC QUESTIONS - contd.

SECOND QUESTION

is the subject-matter: NEW?

Is it novel? Is it already in the public domain?

Is there any prior art? Has it been anticipated?

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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 taken to comprise all matter (whether a product, a process,
information about either, or anything else) which has at any time before the priority date of
that invention been made available to the public by written or oral description, by use or
in any other way
(according to the EPC)

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NOVELTY

NOVELTY DISCLOSURES

Can be made available ANYWHERE IN THE WORLD AND IN ANY LANGUAGE

A non-confidential disclosure to a third party in any manner forms part of the state of the
art
• Product sample
• Marketing material
• Literature
• Oral disclosure
• In any language

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NOVELTY

IN ASSESSING NOVELTY

For a claim to lack novelty each feature of the claim must be directly and
unambiguously derivable from a prior art disclosure

A compound described in the art is not a prior art disclosure for a new use if
the purpose of the new use is not described in the art

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NOVELTY

IN ASSESSING NOVELTY

A combination of disclosures cannot be used for a novelty attack

However, a disclosure can be combined with common general knowledge (i.e.

text books)

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NOVELTY

IN ASSESSING NOVELTY

Selections

A broad or generic disclosure does not anticipate narrow or specific disclosure

• Generic family of compounds vs. Specific compounds
• Broad range vs. Narrow range

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NOVELTY

BROAD vs NARROW

Examples

• “pH 1-10” does not anticipate pH 4-5

• “20-80oC” does not anticipate 66-72oC
• a racemic mixture does not anticipate single isomeric forms
• “C1-20 alkyl” does not anticipate C12-15 alkyl

Identification of further features of the compound (e.g. melting point) does not render a
“compound” claim containing that feature novel.

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NOVELTY

GRACE PROVISIONS

US & Canada

1 Year from Publication

Australia and Japan

6 months from certain disclosures

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NOVELTY

NON-PREJUDICIAL DISCLOSURES

Europe

6 months
Evident abuse
Officially recognised international exhibitions

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PATENTABILITY CRITEREA IN EUROPE

FOUR BASIC QUESTIONS - contd.

THIRD QUESTION

Is the subject-matter: CONSIDERED TO INVOLVE

AN INVENTIVE STEP?

Would it be obvious to a person of

ordinary skill in the art?

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INVENTIVE STEP

“An invention shall be taken to involve an inventive step if,

having regard to the state of the art,

it is not obvious to a person skilled in the art.”

(according to the EPC)

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INVENTIVE STEP

Person skilled in the art

Not creative or innovative

Able to combine documents if motivated to do so
Able to combine documents with common general
knowledge (i.e. text book)

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INVENTIVE STEP

Could vs Would

Test is whether the skilled man "would" have done something,

not "could" have done something.

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PATENTABILITY CRITEREA IN EUROPE

FOUR BASIC QUESTIONS - contd.

FOURTH QUESTION

Is the subject-matter: CAPABLE OF

INDUSTRIAL APPLICATION?

Can it be made or used in any kind of industry

(inc. agriculture)?

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Group work 1

You have been working on a new emulsifier blend in the lab for some time.
The emulsifiers have been added to a water-in-oil emulsion and left standing
for 2 weeks. Percentage of free oil on the top was determined
All 3 emulsifiers are known to have a good effect when they are added in an
amount of 3-5 %, but you are trying to find something that will be effective
even when less emulsifier is added.

0.25 % 0.50 % 0.75 % 1.00 % 3.00 %

Emulsifier A 25 24 22 20 1
Emulsifier B 15 16 14 17 0
Emulsifier C 21 20 20 20 0
Emulsifier A + B 17 19 18 8 3
Emulsifier A + C 23 0 0 20 19
Emulsifier B + C 18 16 15 15 1

Do you see an invention here? If yes, what would you claim?

Further requirements

FURTHER REQUIREMENTS

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UNITY OF INVENTION

A patent application must relate to only one invention

The European patent application shall relate to one invention only or to a group of
inventions so linked as to form a single general inventive concept.
(according to the EPC)

Ex. A group of compounds are considered to have unity of invention if:

(i) they have a common property or activity, and
(ii) a common structure.

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SUFFICIENCY OF DISCLOSURE

The application must contain sufficient technical information to enable a skilled

person to put the invention as claimed into practice

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.

(according to the EPC)

Ex.
• Results must be repeatable,
• Experiments cannot be amended during prosecution,

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Why examples are important...

Example
Why examples are important...

Example

Example
Example

Example
INVENTORSHIP

Every patent application must designate the inventors,

The inventor designated may waive his right to be published as inventor,

Legally, you will be considered an inventor if:

You had the original idea about the invention,
You contributed to overcoming a problem which arose while reducing the
invention into practice,

Legally, you will NOT be considered an inventor if:

You performed standard scientific work in reducing the invention into practice,
You provide political impetus to the invention.

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PATENTING PROCESS

OWNERSHIP RIGHTS

Any person may file a patent application

Only the inventor or a successor in title is entitled to the grant of a patent.
Employer vs employee
Rights - legal title - in an invention and a patent application can be bought and sold (i.e.
assigned), let (licensed) or even mortgaged like a house.
The inventor is the person responsible for the essence of the invention - the idea.
Different parts of an invention can have different inventors.
Having the wrong inventors listed on a US patent can invalidate it. Never leave out
inventors.

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PATENTING PROCESS

First to invent vs. First to file

EU/Japan: First to file
- Priority filing date
- High legal certainty
- No Grace Period (limited exceptions)

US: First-to-invent
- Seems to be more fair but also more complicated
- Low legal certainty
- Allows for better disclosure
- Grace period allowance

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 Lab notebooks

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Lab note books - Do's and Don'ts

WHY? – Legal Documents

US Patent law
• Inventorship disputes – patent validity
• Interference
• Date of conception
• Date of reduction to practice
• Litigation
• Proof of when, where and by whom specific know how/patent rights originate.

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 Lab note books - Diligence

Keep your laboratory note books in good order:

They reflect the quality and significance of your work.
Primarily based for recording an individuals work – if you
record someone else work ensure their contribution is stated.
They are for other people to see and possibly of very high
value.
They may be relied upon to secure or defend intellectual
property and know how.
W rite clearly, use clear and precise language and avoid
putting in opinions and speculation.

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 Lab note books

• Should be bound – glue or spiral bound

• Do note remove pages/entries
• Staple attachments such as graphs, printouts & photos to page –
if impossible, sign and witness items and refer to specific text in
note book.
• Loose sheets should be consecutively numbered, signed and
witnessed.

• Sign and date each note book

• Inside front cover
• Each entry
• Counter signed & dated by someone independent of invention – weekly?
• Witnesses should have read & understand what they are witnessing.

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 Lab note books

Entries should be in chronological order

Use the past tense – experiments were actually performed
Ideally record experiments promptly
Use ink, do not erase entries – errors should simply be drawn through.
Do not leave blank spaces – draw through any blank spaces/pages &
date
Explain abbreviations & unusual terminology
Outline experiments, and the results and their significance
Put in the detail – precise conditions etc.
Use note books to record lab meetings & discussions – who said what.

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 Lab note books

Note Book Tracking

• Notebooks should be numbered and indexed. The index should include the
date of completion.
• If patent applications are made on the basis of specific entry forward the
relevant index number to DIC for inclusion with the patent records.
• On completion note books should be stored centrally (Fire proof safe).
• If you believe you have a new invention… file an Invention Disclosure!
• If you leave Danisco, leave your notebooks behind!

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An introduction to Patent Law

Contents of a patent

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48
INTRODUCTION TO PATENT LAW

Contents of a patent
FRONT PAGE
• Bibliographic details
• Important dates
• An abstract
• Indication as to whether you are looking at a patent application or a patent – IMPORTANT

DESCRIPTION
• Background information
• Description of the invention
• Advantages
• One or more detailed examples

CLAIMS
• Define the scope of protection – sought or granted – IMPORTANT
• May be different types of claims

DRAWINGS

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INTRODUCTION TO PATENT LAW

Types of claims

Product claims
Process claims
Use claims
Apparatus claims

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Patent claims

Main claim defines the broadest possible protection

Preferably ”everything”
Possible to limit the scope

Dependant claims to be used if necessary

It’s like peeling an onion
If we run into trouble we peel off another layer

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INTRODUCTION TO PATENT LAW

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Patent numbers - what are the secrets?
PCT applications
• WO 99/51256 A1- published in ’99 with SR
• WO 02/03485 A2 - published in ’02 without SR
• WO 02/05336 A3 - publication of SR

US applications and patents

• US 2004/001475 A1 - application published in 2004
• US 4987633 B1 - patent, no previously published application
• US 6584937 B2 - patent, previously published as an application (Mar 01)

European applications and patents

• Applications - as above in PCT (A1, A2, A3)
• EP 1 345 237 B1 - granted patent
• EP 0 347 389 B2 - patent amended after opposition
Patent numbers – exercise

Look at each of the 3 front pages and talk to the one next to you

• What is the priority date?

• Is it a granted patent or just an application?
• When was it first published?
Patenting process

Patenting process

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PATENT PROCESS - 1

A patent is specific to the territory of the granting state

Generally speaking, one needs to apply for a patent in each national state
where protection is required

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PATENT PROCESS - 2

There are some regional systems:

• Europe (EPO)
• Ex-Soviet (EAPO)
• Africa (ARIPO & OAPI)

Each regional system provides a centralised grant procedure

Grant of a “regional” patent constitutes grant of a bundle of national patents – however

translations may be required

There is also a centralised international filing system under the Patent Cooperation Treaty (PCT)

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PCT contracting states

As of December 2006

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European Patent Treaty

Member states:

Austria Lithuania

Extension Belgium Luxembourg

states: Bulgaria Latvia
Croatia Monaco
Albania
Cyprus Malta
Bosnia
Czech Republic Netherlands
Macedonia
Germany Norway
Serbia
Denmark Poland
Estonia Portugal
Finland Romania
France Sweden
Greece Slovenia
Hungary Slovakia
Spain
Iceland
Switzerland
Ireland
Turkey
Italy
United
Liechtenstein Kingdom

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PATENT PROCESS - 3

In most countries applicant can claim “priority” from a first filed application
within the first 12 months

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PATENTING PROCESS

PRIORITY SYSTEM

Governed by Paris Convention – 1883

File a “first” application

12 months at the latest to file a national/regional/PCT applications

Later applications will take the date of the earliest application

• Generally speaking for all purposes
• Multiple priorities

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PATENTING PROCESS

TYPICAL LIFE OF A PRIORITY

APPLICATION

0m Filing Date

1. Preliminary search report may be requested

2. Re-file case with important changes
3. No need to wait for 12 months before....

12 m Expiry of Priority Year

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 PATENTING PROCESS
PCT Filing strategy

International filing National/regional phase

processing

Priority filing Publication

Grant

Patentability
assessment

0 12 months 18 months 30 months

EP
75.000 DKK 1.000.000 DKK
75.000 DKK 500.000 DKK US
10.000 € 135.000 €
10.000 € 70.000 € JP
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POTENTIAL PITFALLS OF FILING
INCOMPLETE PRIORITY APPLICATIONS

Disclosure within priority year

Example:
1 May 2000 File incomplete application (AP1)
Invention defined as A+B
1 June 2000 Disclose A+B at a conference or as a product sample
1 August 2000 File complete application (AP2) claiming priority of (AP1)
Invention defined as A+B+C

AP2 may not be entitled to date of AP1 for A+B+C

Disclosure of 1.6.2000 is prior art against AP2 and may render A+B+C obvious
Even worse if A+B+C is disclosed on 1.6.2000 in a post-talk discussion

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