This document provides an overview of intellectual property fundamentals, including the different types of IP rights like patents, trademarks, designs, and copyrights. It discusses the origins of patent systems from ancient Greece and Venice. The presentation covers the patent filing process, patent structure and components, and concludes with advantages and disadvantages of patenting versus alternatives like secrecy or publishing.
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Fundamentals of IP - Francesco Maria Colacino
1. Fundamentals of IP
Francesco Maria Colacino, Ph.D. MBA
College of Engineering and Physical Sciences
University of Birmingham
f.colacino@bham.ac.uk
12 November 2013
2. Agenda
• The Patent System: Origins and Rationale
• Reasons to Engage with Patents
• The Different Types of Intellectual Property
Rights (IPRs)
• Patent Filing Process
• Patent Structure
• Conclusion
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3. Disclosure
• Some of the material has been provided by
the European Patent Office (EPO)
• Where EPO’s material has been used with no
modifications the EPO logo will be shown
• Where changes have been made to the
original material the EPO is not responsible for
the correctness of any such modified version…
….Blame me!
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4. The First Account of a “Patent System"
In the ancient Greek city of Sybaris (destroyed in 510
BC), leaders decreed:
"If a cook invents a delicious new dish, no other cook is to
be permitted to prepare that dish for one year.
During this time, only the inventor shall reap the
commercial profits from his dish. This will motivate
others to work hard and compete in such inventions."
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6. The Patent System
Senate of Venice, 1474:
"Any person in this city who makes any new and ingenious
contrivance, not made heretofore in our dominion, shall, as
soon as it is perfected so that it can be used and exercised,
give notice of the same to our State Judicial Office, it being
forbidden up to 10 years for any other person in any
territory of ours to make a contrivance in the form and
resemblance thereof".
Today:
New to the world; up to 20 years of protection
Main Objectives:
Incentive to innovate
Incentive to share knowledge
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(grant protection)
(publish the invention's details)
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7. The “Social Contract” in the Patent System
Get
exclusivity
Reveal
invention
… so that others can learn from it
and improve upon it!
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8. Other reasons to Engage with Patents
Patents focus on
HOW THINGS WORK
Published in
Patents
20%
Published
Elsewhere
80%
Scientific articles focus on
SCIENTIFIC CONTRIBUTION
Source: Empirical Studies
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9. Other reasons to Engage with Patents
Protected
10%
90%
Free to use
Source: EPO
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10. Other reasons to Engage with Patents
• To see if anyone has developed technology like yours
• To find other inventors working in your field
• To find other companies active in your field
• To find new ideas for solving your technical problems
• To develop new products
• To develop new business directions
• To evaluate the state of the art
• To avoid infringing
• To assess freedom to operate
OR…
• Nothing in particular, you just like browsing patents!
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12. Registered
• novel
• Involve non-obvious inventive step
• capable of industrial application
(also called technical effect)
IP Star
Patents
Trade
Secrets
Designs
IP
Trade
Marks
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Copyrights
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14. IP Star
Registered or Unregistered
An internal or external aspect of
design (not the way how a product
works) which is "new" and has
"individual character" or "eye appeal"
Patents
Trade
Secrets
Designs
IP
Trade
Marks
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Copyrights
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18. IP Star
Patents
Trade
Registered or Unregistered Secrets
Any sign capable of graphic
representation that allows the
customer to recognise the goods and
services of one undertaking from those
of another (e.g.
words, logos, colours, slogans, pictures
, three-dimensional
shapes, sounds, gestures or a
Trade
combination of these)
Designs
IP
Marks
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Copyrights
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20. IP Star
Unregistered
Any confidential information/know
how that is not known to the public,
more valuable if not know to the public
and subject to reasonable efforts to
maintain the secrecy
Patents
Trade
Secrets
Designs
IP
Trade
Marks
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Copyrights
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22. Rights Conferred by a patent
The patent does not grant the right to use the invention!...
….but stops others from doing so
• Prevent others from making, using, offering for sale, selling or importing
infringing products in the country where the patent was granted
• Sell these rights or conclude licensing contracts
• For up to 20 years from the date of filing of the patent application
• A patent search is indispensable before starting development in order not to
waste time and effort
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23. Filing Process
What NOT TO DO when considering filing a patent application
• No publication prior to filing
e.g. no article, press release, conference
presentation/poster/proceedings or blog entry
• No sale of products incorporating the invention prior to
filing
• No lecture or presentation prior to filing
except under a non-disclosure agreement (NDA)
• Seek professional advice soon!
• File before others do!... Not just file early.
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24. What the Patent Attorney Needs
•
•
•
•
•
•
•
Invention Summary
Prior Art
Differences and Advantages
Experimental Details
Figures, Drawings, Sequences
Applicant(s), Inventor(s)
Publication plans
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25. Filing Process - Overview
12 months
Priority
(Provisional)
Application (GB)
First Year After Filing
• Priority date established
• Further supporting experimental
work
• Search results (if requested)
• Publish or not? Possibility to
withdraw
• Supplemental application(s)?
• Commercial goals
• Identify Countries where
protection is required
PCT Application
18 months
OR
12 months
Advantages of PCT Routes
• Delays decision on countries to
cover
• Delays costs (but slightly more
expensive overall)
• Good search report
• One patent application for up to
around 141 states
National/Regional
Phase Applications
National
Patents
Granted
National Examination and Grant
• National examination
procedures
– Rounds of examination, reports and
responses
– Refusal and Acceptance
– Appeals
• Grant Processes
• Post Grant Procedures
• Maintenance & Renewal fees
Protection Overseas
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26. Filing Process - Overview
Accumulated
Costs
£5,000
£10,000
“Provisional” Patent Application at
UK IPO or EPO or US PTO
0
12
Months
12 months
PCT Patent Application at WIPO
18
months
£21,000£35,000
Accumulated
Time
Withdraw? 18 months
National Phase Filings
30 months
From 3
months
£24,000£75,000
£30,000£120,000
£30,000£1.5 mil
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Examination of National Phase
Filings (£1k-£5k per territory)
Granted Patents in Specific
Countries (grant fee £0-£4k per territory)
Patent maintained whilst in use
To 6
years
Up to 8.5 yrs
Annual
Renewals
Up to 20 yrs
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27. What Does a Patent Look Like?
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28. Patent
Journal Article
Bibliographic Information
Bibliographic Information
•
•
Inventor, proprietor, date of filing, technology
class, etc.
Authors, affiliations, date of
submission/acceptance, key words, etc.
Abstract
Abstract
•
•
Around 150 words as a search aid for patent
applications
A 150/200 words excerpt of the paper to quickly
navigate its content
Description
Introduction
• Summary of prior art (i.e. the technology known
to exist)
• The problem that the invention is supposed to
solve
• An explanation and at least one way of carrying
out the invention
• Summary of the state of art (i.e. the science
known to exist)
• The rationale for the research
Materials and Methods
• How experiments have been performed
Results
• The outcomes of the experiments (usually with
plots and pictures)
Claims
Discussion
• Define the extent of the Patent protection
• Results and methods are discussed highlighting
limitations/potentials of the research
• A pathway to carry out future work is usually
explained
Drawings
Conclusion
• Illustrate claims and description and help with
their understanding
• Main findings are summarised
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29. A Patent Front Page
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30. … But do not be too Naïve in searching
for Patents
Common Language
Patent Jargon
• Spring
• Energy storage device
Sometimes the applicant does not want his/her patent to be found…
• Ball bearing
• A plurality of balls
Sometimes the jargon is used to broaden the scope of the patent…
• Portable HD
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• Data storage carrier
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31. Conclusion
Advantages and Disadvantages of Patenting
(… or IPRs in general)
Advantages
Disadvantages (mainly for patents)
• Exclusivity enables
investment and higher
returns on investment
• Reveals invention
to competitors
(after 18 months)
• Strong, enforceable legal
right
• Can be expensive
• Makes invention tradable
(licensing)
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• Patent enforceable only
after grant (this can take
4-5 years)
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32. Conclusion
Alternatives to Patenting
Information disclosure (publishing)
• Cheap
• Prevents others from patenting
the same invention
• Does not offer exclusivity
• Reveals the invention to
competitors
Secrecy (creating a trade secret)
• Cheap (but there is the cost of
maintaining secrecy)
• Does not reveal the invention
• No protection against reverseengineering/duplication of
invention
• Difficult to enforce
• "Secrets" often leak quite fast
Do nothing
• No effort required
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• Does not offer exclusivity
• Competitors will often learn details
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33. References
• www.ipo.gov.uk - Official government body responsible
for granting Intellectual Property (IP) rights in the
United Kingdom, including patents, trade marks, and
copyright.
• www.epo.org - The official website of the European
Patent Office (EPO)
• www.uspto.gov - Home page of the United States
Patent and Trademark Office's main web site.
• www.wipo.int - WIPO (World Intellectual Property
Organization) is responsible for the promotion of the
protection of intellectual property throughout the
world through cooperation among States.
*Links are being made to other pages containing material that is copyright of third parties.
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Notas do Editor
Page 23 Patent teaching Kit
Page 25 Patent teaching Kit
Page 37 Patent Teaching Kit
Page 77 Patent Kit from EPO
Page 79 Patent Kit from EPO
Page 9 of Patenting Kit from EPO
Pages 8 to 10 of Patenting Teaching Kit
Pages 8 to 10 of Patenting Teaching Kit
Pages 8 to 10 of Patenting Teaching Kit
Pages 8 to 10 of Patenting Teaching Kit
Pages 8 to 10 of Patenting Teaching Kit
Page 39 of Patent kit from EPO
Page 49 on patenting teaching kit EPO
3rd slide on page 13 of Withers & Rogers
Slides on pages 13 to 17 from Withers Rogers presentation + Alta’s scheme + page 52-55 of Patent teaching kit EPO
Slides on pages 13 to 17 from Withers Rogers presentation + Alta’s scheme + page 52-53 of Patent teaching kit EPO