IPR – focus on patents and strategy

1. IPR – focus on patents and strategy Jens Tellefsen European Patent Attorney Partner Patrade A/S

2. Course plan: Basic principles Novelty Inventive step Industrially applicable How to read and understand the claims types of claims protokol of equivalence technical effect (corresponding or identical) essential features How to extract information from the search report and the front page Citations Document rating Scope of search inventor Associated applications patent classes priority information

3. How to read a patent application main sections bibliographic information prior art Other in-direct information Search available databases classification systems search terms search strategy available databases Espacenet (www.ep.espacenet.com) Pvsonline (www.pvsonline.dk) DPatis net (www.depatisnet.de) chose ”Einsteiger” Epoline (www.epoline.org) chose ”register plus” USPTO (www.uspto.gov) go to public ”PAIR” google

4. Infringement IP right vs product/process defense Danish legal system consequenses and cost IPR strategy aggressive or defensive geography constructing a portfolio licensing know-how/techtrans

5. Assignment Select an ”invention” Formulate a search strategy (define terms, EC/IPC/US classes) Create a claims matrix (min. 5 pertinent documents) Conclusion : is your ”invention” patentable (argue novelty and inventive step)

6. Patentable Novel Non-obvious (comprise an inventive step) Industrially applicable Exceptions: Treatment of the human body In Europe: computer programs In Europe: methods of doing business Aesthetic creations Works of art Discoveries Basic laws of nature Ordre publique (ex. weapons of mass destruction, terreroist methods)

7. The invention shall concern a technical field, have a technical character, produce a technical effect, solve a technical problem - or at least be based on technical considerations. Patents exist in almost every country Effective measure due to experience in the field and case law Up to 20 years protection (plus additional protection for medicine - Supplementary Protection Certificate)

8. Novelty An invention is considered novel if it is not part of state of the art. A = A => not novel A differs from A’ => novel A being my invention, A’ being the closest state of the art

9. Inventive step An invention is considered to be inventive if the combination of features is not obvioius to the skilled person Invention A + B+ C A+B+C = (A+B) + + C = not inventive A+B+C = (A + B) + = inventive A+B+C = (A) + (B) + (C) = inventive A+B+C = (A+C) + (B) = (sometimes) inventive

10. Problem – solution Approach Determine closest state of the art everything made publicly available on or before the priority date Determine which (combination) of features distinguish the invention from the prior art (~ novelty test). Formulate an (not the !!) objective problem to which the distinguishing features provides a solution. Would the skilled person recognise the same features (distingusíshing features) in the prior art and combine these features in order to address the objective problem ? would or could ? Would -> not inventive Could -> good basis for an argument that the invention is inventive is there an incentive, hint or suggestion in the art to do so ?

15. How to read and understand the claims Basically two types of claims : ”apparatus” and ”process” apparatus claims comprises positive technical features/means do not express the apparatus in terms of functionallity (but in US ”means + function”) intended use not necessarily a limitation: (Apparatus for fishing…) may contain reference to process claim process or method claims comprise the process steps in sequence, in order to achieve the object (of the invention) may contain reference to apparatus claims or recite necessary apparatus features In general: claims in two part form. Everything before ”characterised in” or ”wherein” is state of the art, everything following is the inventions contribution to the art. independent claims must comprise all essential features verbal consistency clear concise and supported by the description one (long) sentence (no periods)

16. scope of protection is defined by the claims equivalents possible special meanings defined in description unclarities may be understood in light of the description same or equivalent technical effect (skilled person) Let’s look at a claim again…………

18. How to extract information from the search report and the application The front page: all data relating to applicant, and inventor, international and possible European or US patent classes filing data (priority, international application date) numbers of priority application(s) The search report classes searched retrieved documents examiners rating of documents (X,Y,A,P,E etc) family members of cited documents

24. Search The object of the search is to locate prior art related to your invention, or the object your are searching for. Prior art is everything made available to the public prior to the filing date or todays date, if the application has not been filed. Some national patent laws distinguish between oral, written and other prior art (e.g prior use), but in general any form of ”making available” is pertinent. .

25. Available to the public is another concept which has caused a lot of discussions. In general, if a member of the general public in any way could have gained knowledge of the subject, it was/is available to the public. even if ”the public” lacks the skills to understand the invention even if the public dosen’t read the language even if the public didn’t gain access Exeception (maybe) if a confidentiallity clause or breach of even implicit secrecy agreement was in force. The burden of proof is extensive for prior public use and oral disclosures.

26. Espacenet (www.ep.espacenet.com) • Pvsonline (www.pvsonline.dk) • DPatis net (www.depatisnet.de) chose ”Einsteiger” • Epoline (www.epoline.org) chose ”register plus” • USPTO (www.uspto.gov) go to public ”PAIR” • Google • Paj (http://www19.ipdl.inpit.go.jp/PA1/cgi-bin/PA1INIT?1236618003801) • SIPO China (http://ensearch.sipo.gov.cn/sipoensearch/search/tabSearch.do?method=init) • Public company listings • No ”universal” strategy will provide the relevant documents – it must be tailor made for each new subject. • It’s a dynamic process Search strategy There are a number of available databases such as for example:

27. Classification systems All patent documents, approx. 60 mill in Espacenet for example, are provided with IPC and/or ECLA classification symbols. US documents are furthermore provided with US classes. An example

31. COOKBOOK Depending on the starting point which may typically be a technology, a product, an inventor or a company, various starting points may be selected. For technology and products: A first step may be to look for a few characterising search terms Run an initial search in Espacenet – typically retrieving 500+ documents. Select and study a few documents which appears to be pertinent – note their ECLA and/or IPC classification. Return to search form and enter relevant class and characterising feature.

32. New search should have limited the number of documents. • Study document list, and for relevant documents: • Check other classes – are they relevant ? • Check references, • Citing documents, • Run a search with inventor(s)/applicant(s) names • Check inventor/applicant in Google (more recent) • Check/search homepages • Check prosecution history (both EP and US available online (are other documents cited ?)) • Carry out corresponding searches in PAJ and SIPO

33. A claims matrix Is basically a matrix or table where the features of your invention is listed in one column and pertinent documents listed with reference to pertinent passages next to feautures of your invention.