GBS India Patents Program Team

Patent Education Session

2011 IBM Corporation

Agenda

Objective Introduction to Patents Patent Process in IBM Summary

2011 IBM Corporation

Objective

This session is aimed to

create awareness about patents. provide an overview of patent process in IBM help the practitioners to identify patentable ideas from the projects. motivate the practitioners on services inventions.

2011 IBM Corporation

Introduction to Patents

2011 IBM Corporation

Patent - Definition

An agreement between the government and the inventor. A statutory property right given by a government conferring to an inventor for a term of years the right to exclude others from making, using, or selling a claimed invention. It expires after 20 years from the time of filing first patent application and becomes free.

2011 IBM Corporation

Types of Intellectual Property

Patents

Legal protection of the Idea. A statutory property right conferring to an inventor for a term of years the right to exclude others from making, using, or selling a claimed invention.

Copyright

Legal protection of the expression of an idea. Used to protect: books, music, software, images, video, sound.

Trademark

Legal protection of a product/company name or symbol. A device (e.g. word, phrase, logo, picture, slogan, product shape) used by a manufacturer or merchant to identify its goods, and to distinguish them from those made or sold by another. May be registered.

Trade Secret

Strict secrecy based protection of ideas, processes, formulae, and certain lists. Information used in one's business, which provides an advantage over competitors who do not know it.

2011 IBM Corporation

Types of Patents

Utility Patent

Process, machine (a.k.a. apparatus), article of manufacture and compositions of matters.

Design Patent Plant Patent

Covers a new, original, and ornamental design for an article of manufacture.

Covers an invention or discovery of a new, asexually reproduced plant variety.

2011 IBM Corporation

Patent Criteria

New

An invention must be different from any technology already available. The legal term for this available technology is "prior art. An invention must achieve a desired objective, an ordinarily beneficial result. The description must contain enough specific information for a person knowledgeable in the field to practice the invention and realize that result.

Useful

Non-Obviousness

The invention must be something that would not have occurred to someone possessing ordinary skill in the field to which the development pertains. Usually Intellectual Property Law attorney provides opinion on non-obviousness.

2011 IBM Corporation

Patent Value - Higher is Better

Degree of novelty Importance to IBM's business Importance to Competitor's business Importance to Customers/Others Portfolio Coverage Market Value Ease of discovery

2011 IBM Corporation

What is NOT Patentable?

Happy thoughts Concepts Abstract ideas Pure mathematics Processes done entirely by human motor coordination, such as choreographed dance routines Method for meditation Methods used to perform surgery on humans Printed matter that has no unique physical shape or structure Unsafe new drugs Inventions useful only for illegal purposes Non-operable inventions, including "perpetual motion" machines that in order to work would violate the basic laws of science Nuclear bombs
10 2011 IBM Corporation

Would you like to get one (rather many)?

11

2011 IBM Corporation

IBM and Patents

12

2011 IBM Corporation

Importance of Patents for IBM

IBM is the number one United States patent holder. Patent leadership for 18th consecutive year. More than 5,000 patents issued in 2010. Brings licensing and cross licensing revenue. Prevents others from unauthorized usage. Provides freedom of action.

13

2011 IBM Corporation

Importance of Patents for IBMers

Demonstrates ability to invent new and useful things. Provides a recognition as an Inventor in technical community. Highest recognition in patent activities as Master Inventor. Patent File Awards, High Value Application Awards, Patent Income Awards, Plateau Awards and Patent Issuance Awards. One of the qualities to become technical executives such as IBM Distinguished Engineer and IBM Fellow. Considered as Contributions to Profession in Architect Certifications and IT Specialist Certifications.

14

2011 IBM Corporation

Invention Achievement Awards

Patent File Awards

First Filing: USD 1,500 + 3 Patent Points + Certificate Current Filing: USD 750 + 3 Patent Points Search-1 Rated (additional): USD 1,000 USD 1,200 + Certificate USD 1,000 USD 2,000

Plateau Awards

High Value Application Award Patent Income Award Patent Issuance Award
USD 100 + Certificate

http://w3-01.ibm.com/hr/global/awards/inventachieveaward.html

15

2011 IBM Corporation

Eco System and Patent Process in IBM

16

2011 IBM Corporation

Patent Eco System in IBM

Worldwide Patent Tracking System (WPTS)

Lotus Notes database providing a concise and consistent method of submitting and tracking inventions for generating and maintaining patents for IBM. A group of individuals who evaluate the early stage of an invention to determine if it is of value to IBM and hence requires further protection. Legal experts deciding licensing and legal aspects of the invention. Provides full text search of patents and patent applications to IBMers.

Invention Development Team (IDT)

Intellectual Property Law (IP Law) TotalPatent - Patent Repository

17

2011 IBM Corporation

WPTS - Disclosure Submission Form - Main Idea Section

18

2011 IBM Corporation

Background
Problem Statement
<3 to 5 lines>

Known Solutions (if any)

<Short description with patent/patent application numbers, URLs, reference sections> <3 to 5 lines> <3 to 5 lines>

Drawback of Existing Solutions Need for New Solution

Summary of Invention
Core Idea Novelty
<Around 10 lines> <Around 5 lines; one-liner> <Around 10 lines>

Advantages

Description
Approach
<Around 2 pages/slides; text description and flow charts are recommended>
2011 IBM Corporation

19

End-to-End Patent Process

Idea

Fruitful Path?

Disclosure

Write

Submit

IDT Review

IDT Eval

Search Publish Close More Info

IP Law Review

Confirm Novelty

File Publish Close

Write App

Review Drafts

File w/ USPTO

Award Potential

USPTO Exam

Office Actions

Issues Abandon Appeal

Award Potential

20

2011 IBM Corporation

Invention Disclosure Ratings

"Search rating

clearly defined, and works, and novel, and has potential licensing or strategic value

"Publish rating

little potential licensing value novelty is narrow or modest at best may be apparent to someone skilled in the art not clearly defined, or not clear it will work, or no potential licensing or strategic value, or not novel

"Close rating

21

2011 IBM Corporation

Q&A

22

2011 IBM Corporation

Thank You

23

2011 IBM Corporation

Backup

24

2011 IBM Corporation

Resources

GBS India Patents Program

https://w3.tap.ibm.com/w3ki08/download/attachments/700000604353/GBS+India+Patents+Program.pdf

Disclosure Template
https://w3.tap.ibm.com/w3ki08/download/attachments/700000604353/Disclosure+Template.ppt

Patent Cafe Guidelines

https://w3.tap.ibm.com/w3ki08/download/attachments/700000604353/Patent+Cafe+Guidelines.pdf

TotalPatent - Patent Repository

https://www.lexisnexis.com/clients/ibmia/

Worldwide Patent Tracking System (WPTS)

https://w3-03.ibm.com/legal/ipl/iplsite.nsf/pages/wpts-wpts%20home

Example of Good and Bad Disclosures

http://patent.bluehost.ibm.com/tips/exampledisclosures.html

25

2011 IBM Corporation

IBM w3 Articles on Patents

Eighteen years of patent leadership

IBM also sets U.S. patent record in 2010 http://w3.ibm.com/news/w3news/top_stories/2011/01/chq_patent_record.html

2011 Global Services Master Inventors

Services announces the new leading inventors http://w3.ibm.com/news/w3news/top_stories/2011/01/gts_master_inventors_11.html http://w3.ibm.com/news/w3news/top_stories/2010/01/gts_master_invcurrent.html

Global Services Master Inventors Directory

26

2011 IBM Corporation

2011 Patent Portfolio Focus Areas

The portfolio focus areas are specific technology areas where IBM needs to expand the quality, breadth and value of its patent portfolio. These focus areas are determined based on several criteria, including strategic importance, market potential, emerging opportunities, competitive threats, freedom of action, licensing potential, and others. These portfolio focus areas will be reviewed and periodically updated by representatives from the business units, IBMs intellectual property licensing team, and IP Law. Broader Classification Microelectronics Server Architecture & Design Software Business & IT Services Industry Hardware, Applications, Processes and Solutions Security Networks and Networking Storage Devices, Systems, Software & Services Other Science and Technology Complete List: http://w3.ibm.com/ibm/resource/focus_areas.html

27

2011 IBM Corporation