Startup Pirates @ Porto Protecting your inventions Joana Eugénio - INPI

1. Presented by:
Protecting
Joana Eugénio your
Patent Examiner inventions
Porto, September 3th, 2011

2. Agenda
1. INPI
2. Intellectual and Industrial Property
3. IP rights
4. Patent system
5. Protection of Inventions
6. Provisional patent application
7. Using Patents as a Strategy
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3. INPI
Created in 1976 to promote the industrial
property system
Responsible for granting and protecting
industrial property rights in Portugal
Promotes the industrial property system and
stimulates innovation
Provides training in the IP area
National Institute of Industrial Property
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4. INPI: IP training and promotion
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5. Industrial Property
Intelectual Property
INDUSTRIAL PROPERTY COPYRIGHT
 Patents  Literature
 Music
 Utility Models
 Photography
 Trademarks
 Paintings
 Designs
 …
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6. Trademarks
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7. Designs
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8. Patents
What is an Invention?
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9. What is an Invention?
INVENTION
New solution to a specific technical problem
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10. Protection of Inventions
Product
INVENTION Process
Use
Protection by
Patent Utility Model
Maximum lifetime: 20 yrs Maximum lifetime: 6+2+2 yrs
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11. Protecting Inventions
What is a Patent/Utility Model?
Grants the legal right (territorial in nature) to prevent others
from exploiting the invention – importing, manufacturing, selling,
etc – negative right;
Exclusive right granted in exchange for a complete disclosure
of the invention to the public;
When the patent or UM ceases to be in force, the invention
becomes available for use.
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12. Protecting Inventions
How does the patent system work?
Promotes innovation through economic reward;
Contributes to the disclosure of new techniques to the general
public, increasing global knowledge;
Allows the improvement of previously known solutions.
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13. Protecting Inventions
What can you
Protect?
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14. Protecting Inventions
USA “Everything under the sun that is made by man...”
(US Supreme Court – Diamond vs Chakrabarty)‫‏‬
PT and Europe
An invention must:
 Be technical in nature (ex.: product, device, process)
 Have Novelty;
 Inventive Step;
 Industrial Application;
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15. Protecting Inventions
Patentability criteria
Novelty
The invention is not comprised in the state of the art.
Inventive Step
The invention is not obvious departing from the existing
state of the art in the same field.
Industrial application
The invention can be manufactured or otherwise used in an industrial
activity.
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16. Discovery vs Invention
DISCOVERY INVENTION
+ =
Discovery‫‏‬of‫‏‬HPV‫‏‬and‫‏‬it’s‫‏‬genome HPV’s‫‏‬vaccine
Non-patentable Patentable!
INVENTION: technical; the technical teaching can be reproduced by anyone.
DISCOVERY: cognitive (discovery of a new plant, animal, gene, …)
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17. Protecting Inventions
What can't you
Protect?
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18. Non patentable matter
Exclusions Exceptions
(Art. 52.º CPI)‫‏‬ (Art. 53.º CPI)‫‏‬
Discoveries, scientific theories and Inventions contrary to the public
mathematical methods order
Human cloning processes
Computer programs
Modifications of the germ line
Business methods
genetic identity of humans
Aesthetic creations Animal or vegetable varieties
Presentations of information Treatment or diagnostic methods
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19. Protection options
National European International
Munich Convention
Industrial Property Patent Cooperation Treaty
1973.10.05
Code (CPI)‫‏‬
; PCT - 19.07.1970
(European Patent
(Maintained by WIPO)
Convention - EPC)‫‏‬
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20. National Patent Application
WORKFLOW – Regular application
Application 18M Publication Grant or refusal
Formal Opposition Examination
Examination Search Report 2M 1M
1M
Provisional Patent Application‫‏‬
18M
Formal
Opposition Examination
Search Report Examination S.R. 2M 1M
12M 1M‫‏‬
Provisional Grant or refusal
Conversion Publication
Application
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21. National Patent Application
Who? Any person irrespective of the country of origin or residence.
Where? Online / INPI / Mail / Fax
How?
Regular
Application Lack of time
 Description Provisional
 Claims Lack of financial patent
resources
 Drawings application
 Abstract Pressure to publish
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22. Provisional Patent Application
Impact on research
Draft
Submission of the paper Provisional Patent Application
PPP allows the researcher to:
publish without submitting a regular patent application;
leave the translation to a later time;
avoid previous disclosure problems.
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23. Using Patents as a Strategy
TECHNOLOGY MAPPING PRE-DIAGNOSIS
New product available, produced by INPI for the
qualitative analysis of patents;
Provides an overview of patenting in the
technical area of the invention;
Results shown in the form of graphics/tables and
report;
Useful tool in the management of IP and
innovation;
Essential for development strategies and
internationalization;
Basis for finding new partners for future
commercialization of the technology.
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24. Using Patents as a Strategy
CONTENT WHO?
Anyone
 Total number of publications in the technical area
(regional and global)
 Top 5 Applicants (Regional and global);
HOW MUCH?
 Top 10 countries (regional and global); 200 Euros
 Top inventors (Regional and global);
 Evolution of publications by applicant; WHEN?
 ThemeScape Map; Any time
 Identification of domestic applicants with national
publications, european and international; HOW LONG?
 Citations tree for the closest prior-art. 2 months after request
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25. The importance of IP
INDIVIDUAL LEVEL (Company, University): MACROECONOMIC LEVEL:
Allows protection against counterfeiting: Permanent technological updating;
• ASAE or GNR.
Dissemination of new techniques to the
public;
Allows licensing: Stimulates creativity, the development of
• Contract between the rights holder and the alternative solutions and improvements to
licensee; inventions already disclosed;
• Types of licenses: territorial, with restrictions
Development and economic growth;
on sale, franchising, etc.
Competitive markets;
Introduction of new technology on the market
by providing time for the business organization.
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26. Famous Patents
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28. QUESTIONS???
Thank you for your attention!
INPI Contacts
INSTITUTO NACIONAL DA PROPRIEDADE INDUSTRIAL
Campo das Cebolas 1149-035 Lisboa
Informations: 808 200 689 / website: www.inpi.pt
Tel: (+351) 218 818 100 / Fax: (+351) 218 869 859
Personal Contacts
DEPARTAMENTO DE PATENTES E MODELOS DE
UTILIDADE
Joana Eugénio
Email: jeugenio@inpi.pt
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