Intellectual Property

Transcription

1 Intellectual Property 4 February 2010 Hans Helsloot NL Octrooicentrum

2 NL Octrooicentrum = Netherlands Patent Office Patent Granting in The Netherlands Novelty Searching Patent Register Patent Information What is a patent, how to use it? Dissemination of technological information

3 Program 09:00-11:00 hr Introduction Intellectual Property Patents in the business strategy break Patent information during innovation Where and how to find patent information Cases: examples of patents

4 Competition - Intellectual Property (IP): Legal forms Patents, Design rights, Copyright, Trademarks, Personality rights, Database rights Chips right, Breeders right, Trade secrets, Domain names,... Agreements / Contracts: Confidentiality agreement (NDA) Exchange of info (what, purpose, duration) License agreement Right to use Collaboration agreement Who does what, duration, IP ownership, publication Research agreement Subject, duration, ownership, publ., costs,

5 Several legal forms: Resectoscope Wordmark: Karl Storz Fig.mark: Trademarks patent copyright design

6 Protected with several legal forms: IP-mix Word mark: STIHL Figurative mark: copyright trademark patent design right

7 Trademarks Protect signs used to distinguish products or services from different companies. Prevent confusion No maximum duration Registration costs Benelux: 240 euro / 10 yr. Registration costs Europe: euro / 10 yr.

8 No confusion: supermarket ships puzzles sports Fire extinguisher Detergents

9 Confusion Albert Gein for supermarket Senteo for tea-pads opposer Albert Hein Douwe Egberts Pear for computers Elephant for supermarket Apple Jumbo

10 Copyright On what? 1. painting, drawing, photo, video, 2. sculpture, music, 3. literary work, text, 4. creative design of a product, 5. users manual, brochure, 6. computer program: layout, source code, functionality 7. website: layout, html-code, content 8. architecture. Creative effort!!

11 No copyright on Idea / concept / style Source: Auteursrecht voor ontwerpers, Vincent van den Eijnde

12 No copyright on Idea / concept / style

13 Copyright Exclusive right to multiply and publish Starts when created and observable also unfinished or concept drawings But not just idea in the mind! Free of charge 70 years after death of maker or first publication Worldwide (although slightly different per country) -sign and registration only required in USA

14 Copyright: owner = maker Maker = creator of a work. In assignment: maker(s), eg. designer, website-builder, photographer, text writer, advertisement company, consultant. Employment: employer. conditions: subject related to work.

15 Copyright: proof = problem Proof is a problem because no registration. Proof of date: 1. publication, 2. stamp tax office, 3. depot notary, 4. i-depot, 5. file-reg, ideesafe, etc. No proof you are the maker.

16 Community Design (EU) = Design Patent (USA) = Modelrecht (Benelux) Protects new design with own character Also lay-out, dessin Maximum 25 years Depot in: Benelux 300 euro / 5 yr. Europe Unregistered free (max. 3 jr.) Europe Registered 1000 euro / 5 jr. Register Judge decides: total impression

17 Community Design Stihl European Design

18 Use? original Korean copy

19 Daimler can stop this in EU with Community Design Chinese Noble Smart

20 Patent = octrooi (NL) = brevet (FR) Protect (against competitor) Misunderstandings What is a patent? Patent strategy Information (about competitor) Misunderstandings What information in a patent? Where to find patent information? When use patent information?

21 What is a patent? A temporary right per country to forbid others to: 1. sell, 2. produce, 3. keep in stock, 4. import, 5. trade, 6. apply commercially, 7.

22 Requirements for a patent Invention, technical solution to technical problem 1. New (world wide) 2. Inventive step for skilled person 3. Industrially applicable Not excluded by patent law (business method,software, method of medical treatment, )

23 Misunderstanding Easy to avoid patent infringement Patent protects technical principle that is: new, inventive, 1894 (Hannes) hinging ice scate 1985 (v Ingen Schenau) better hinge 1996 (Gierveld) other hinge

24 Netherlands patent procedure Application + request search report rewrite 0 18 NL Max. 20 year Only in case of conflict: Search report Granting + Publication application Court decision about: 1. Novelty Inventiveness Industrial Applicability

25 NL-Costs

26 Patent procedure internationally First application NL Application abroad Choose countries / regions Choose countries Europe Year of priority: - further engineering - market testing - search report - rewrite jr PCT procedure WO 05/12345 Europe (EP) EP Publication application USA Japan Germany (DE ) Belgium (BE ) NL US JP Netherlands Germany Great Brittain France Italy Spain Max. 20 jaar Max. 21 jaar Max. 21 jaar Max. 21 jaar Max. 21 jaar Max. 21 jaar Max. 21 jaar Max. 21 jaar Max. 21 jaar

27 euro Costs European Patent: 6 countries Costs European patent 6 countries (NL, DE, FR, UK, ES, IT) indication yr. 1 yr. 2 yr. 3 yr. 4 yr. 5 yr. 6 yr. 7 yr. 8 yr. 9 yr. 10 yr. 11 yr. 12 yr. 13 yr. 14 yr. 15 yr. 16 yr. 17 yr. 18 yr. 19 yr. 20

28 Disadvantages patents High investment before product generates profit Litigation is expensive (court ) No patent police Publication of invention Race against the clock: Max 1 year to decide whether protection abroad, PCT country choice after 30 months

29 Do not patent if: Invention can be kept secret Costs of protection are higher than extra profit Easy to work around (wide narrow patents) Infringement can not be monitored (No money for litigation / insurance, mediation, settlement)

30 Number patent applications / year Japan USA China Europe Germany UK, Korea, Canada, Russia, Italy

31 Patent strategy

32 Patent strategies for large companies Flood Large number of patents protecting different details of a new technology Fence Different solutions for the same function Different commercial applications Goal: R&D direction blocked / cross licensing

33 Small + Medium Enterprises Small nr. of patents Limited budget Each patent should be worth its costs

34 Make profit with protection Patent should fit within company strategy and. Direct extra profit by: 1. Exclusivity + Higher margins. 2. Licensing out 3. Selling the patent Indirect extra profit: Enlarge value of company Collaboration Image building Attract finance (starters)

35 1. Exclusivity / Monopoly Defend niche or market share Higher margins/turnover because of patent. Not always possible! + All income for yourself Exclusivity - High costs (application, maintenance, litigation) Large chance to underutilize patent

36 Exclusivity, monopoly Protected with: Patents, Design, Copyright, Trademark,

37 2. Licensing out (per country / market) License = Permission to: do everything a patent holder can, unless otherwise agreed Agreement between parties

38 2. Licensing out (per country / market) Income from other markets + Less investments in market development. Ownership and flexibility - High costs (application, maintenance, litigation)

39 Who licenses out? Small market share, inventors. Many standards, open industry, low threshold Only successful if part of company strategy.

40 3. Who sells patent (per country?) Private inventors, Universities, Companies: If technology doesn t fit in company strategy. Large copying risk by powerful competitors. Sell before expensive 4th year! + Income from areas where you are not present Limited costs, limited risk, early cashing - Profit lower

41 Make profit with protection Patent should fit within company strategy and. Direct extra profit by: 1. Exclusivity + Higher margins. 2. Licensing out 3. Sell the patent Indirect: Enlarge value of company Collaboration Image building Attract finance (starters)

42 Value of IP (=intangible assets) Depends on: Potential Market + expected extra profit Kind and unicity of invention Availability of technological alternatives Who is owner Effectivity and scope of protection of patent Countries where patent is valid (geographical scope) Degree of technological development of the invention Investment required for materialization / production Investment risk Who wants to know (market, tax office, bank, Willingness to act against copycats Willingness to maintain patent

43 Why a patent strategy? The value of an enterprise is more and more in its intellectual assets (incl. human capital). IP strategy important part of business strategy! Business strategy IP-strategy

44 Partner Partner Partner Competitor Competitor Competitor Intellectual Property is everywhere Supplier Enterprise MT Clients IP Supplier Buying Production Sales Supplier Planning & Control HRM R & D Clients products

45 Align Business strategy & IP strategy Business strategy Where are you? Where do you want to be? IP strategy IP analysis own enterpr. IP analysis competitors Which IP required?

46 Strategic management of patents Patent mapping

47 Make profit with protection Patent should fit within company strategy and. Direct extra profit by: 1. Exclusivity + Higher margins. 2. Licensing out 3. Sell the patent Indirect: Enlarge value of company Collaboration Image building Attract finance (starters)

48 Collaboration Co-development Open Innovation Licensing in / out

49 Example Entrepreneur wants to develop sunscreen with solar cells. Patent research delivers French PCT application Collaborate?

50 Procter & Gamble License in: change culture from "not invented here" to "proudly found elsewhere." License out (3-5 years rule) All patents in house must be made available for licensing three years after the product went to market or five years after a patent was awarded.

51 Collaboration Basis is win-win and trust Agree (written): 1. IP-property 2. Knowledge input 3. Exploitation and use

52 Collaboration 1: IP property Only the owner of IP can: be licensor sell act against infringement

53 Collaboration 2: knowledge input Which knowledge is part of collaboration? Which knowledge should be kept confidential? Is this taken care of in all employment contracts? What can be published when and where?

54 Collaboration 3: Exploitation / use Height of payments for IP Who gets which share of the profits? input = time, ideas, investments, risks, etc. Who is responsible for application / litigation?

55 Advise IP protection Make IP strategy part of business strategy Without strategy, patent is too expensive and underutilized. Business strategy IP-strategy Invest in the right legal form Patent Trademark Design Trade secret Publish...

56 Questions? BREAK After break: Patent information

57 Patent = Information (about competitor) Misunderstandings What information in patents? Where to find patent information? When use patent information?

58 misunderstanding Patents are secret All patent applications are published after 18 months to stimulate innovation Free on internet Copying is allowed, as long as it is not infringement.

59 misunderstanding Patent information is difficult to understand Description Situation before invention Problem Solution problem = invention Drawings / Figures Explanation Easy to understand for person skilled in the subject Conclusions / Claims Search Report (often) Legal part (for specialists)

60 misunderstanding Patents are only about great inventions Patents are about: new concepts ( great inventions ) improved details

61 E.g.: Paperclip 290 patents about paperclip (round metal wire) one is basic invention rest is alternatives or improved details

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63 misunderstanding No use, because you are not allowed to use the technology described Often you are, because: patent duration = max. 20 year patent lapses when maintenance fees no longer paid patent valid only in specific countries 98% applications in Espacenet is freely applicable in The Netherlands

64 Innovation process Patent = protection and Patent = Information idea concept patent information = product innovation tool prototype protection product protection market introduction

65 Why is patent information interesting? It is about subject for which inventor is prepared to pay thousands of euro s to protect it It is about activities of R&D dept. competitor Solutions for technical problems

66 Patent information prevents spending money on useless ideas. 65% innovation redirected 25% competitiveness improved 25% savings on R&D budget

67 Main goals of patent research Technical information, knowledge development Competitor intelligence, market information Strategic information Prevent infringement Protectability of technologies Decision develop license in

68 More goals of patent research Analysis of substitute technologies Product scouting: finding new products or ideas Export research: finding licensees abroad Partner search Scouting inventors Nullity: collect material to attack patents of competitor

69 Idea: Store tennis balls under pressure Anyone who play tennis knows: New tennis balls are stored/kept under pressure in a container until first use? Idea: Store the balls after use under pressure as well. Is this a good idea? Free Patent literature available through the internet:

70 140 solutions in Espacenet (descriptions, competitor names etc.) DE DE JP US WO DE DE All known solutions to this problem in patent class: Storage of balls A63B39/02C Hence: Innovative idea? Check patent literature!

71 Product development idea: Ball for protecting laundry Entrepreneur wants to develop: Plastic ball with openings for better protecting vulnerable laundry in washing machine. Could not find it: 1. In shops 2. On internet 3. On tradefairs

72 Patent information: 296 hits

73 Search internet with names applicants USA Europe China

74 Market and strategic information Competitor intelligence What does competitor develop? Which countries does competitor file? Develop / license in / co-develop / Find knowledge Find potential collaborators with certain patents Merger and acquisition Analyse alternatives..

75 Example: Odour absorbing blanket Search new market for an existing technology, currently used in military purpose Ideas: An odour absorbing blanket used to eliminate odour of domestic animals (dog blanket) An odour absorbing clothing bag

76 Result of patent research: Odour absorbing clothes cover Tear-off odour reducing sheet

77 Now what? Is the patent valid? Which countries? Risk of infringement? Reconsider strategy: Collaboration possible? Develop alternative? Find different application/market? Stop with useless development (=savings)

78 Example: white cane (=blindenstok) with navigation Article refers to: ir. M. de Wilt Huub Grooten Source: Technisch Weekblad 6 sept 2008

79 Internet:

80 Espacenet: inventor = de wilt

81 Classification code = IPC / ECLA A61H3/06 = Walking aids for blind persons A61H3/06E = with electronic detecting means

82 Classification = A61H3/06E

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85 RealCool Cotton Special fabric Press: HEMA introduces as the first company on the European continent clothes made of RealCool Cotton material. Extra soft cotton with great comfort and optimal absorption: t-shirts, socks etc. Additional web info: A breakthrough fabric that incorporates the advantages of performance fabrics into cotton has been launched by Delta Galil Industries Ltd.

86 Patent publications by Delta Galil Delta Galil patent - short Delta Galil patent - fabric

87 Explanation: Nanotech and boxershort Conclusion: Nano: basis silicon layer / Boxers with ventilation

88 Many alternatives in Espacenet

89 Eg. Water repelling surface (P2i ion-mask)

90 Patent publication (P2i) (mid 2007) Conclusion: P2i uses the Corona surface treatment. (Additional research in the same patent class: Gore(tex) is also trying to harness this technology) P2i patent

91 Shoelace (Xtenex) design prize 2008

92 Patent literature publication in 2000! Xtenex patent

93 Alternatives Patent class: D04C1/12 - A43C1 More precise: =1-06 Or: Lots of them!

94 Variations (el. laces A43C1/02: 104 hits) Conclusion: A sea of possibilties!

95 Look into future: e.g.. Nintendo Wii Market: December 2006 Patents published: jan. 2006

96 Nintendo DSi DSi at the moment Future? e.g.. EP : published: April 2006

97 Conclusion: long before market introduction you know: what competitor has developed, including technical details about the product how to prevent infringement

98 Trends in subject bicycles suspension suspension suspension

99 Patent Information - How and where?

100 keyword A or B or :2010 Name A or B or..

101 Recent patent publications Brabantia Soap pump Drying Rack Bread Storage Bin Waste Bin with Compression Unit

102 Recent patent publications Batavus Bicycle Bell Bicycle Fork and Lock Bicycle Frame and Lock Cable Bicycle Handle Bar Assembly

103 Searching with keywords is inefficient number relevant white cane white cane + blind 9 4 walking stick + blind walking cane + blind 9 5 white cane + visually impaired 6 2 walking stick + visually impaired 12 7 (stick or cane) + visually impaired 46 22

104 Patent classifications - IPC / ECLA - A61 Medical or vetinary science A61H. Physical therapy apparatus for physiotherapie, blinds, massage,.. A61H3. Attributes for aiding disabled persons to walk about A61H3/02.. Crutches A61H3/04.. Wheeled walking aids for disabled persons A42B3/06.. Walking aids for blind persons A42B3/06E... with electronic detection means Overview of IPC-codes in Dutch: Overview of ECLA-codes: Espacenet, Zoek op classificatie

105 Search a subject stick or cane :2010 A61H3/06E or.

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112 favourites - bookmark

113 How to find IPC/ECLA classification? 1. Find one relevant publication, with publication number name company keywords and look up its classification code in Espacenet 2. Search with Classification Search in Espacenet

114 Free patent databases nr. countries URL 65m. all Depatisnet 60m. all Freepatentsonline 20m. US, JP, EP, WO IPDL Japan 9m. Japan USPTO 7m. USA Google Patents 7m. USA WIPO 1,5m. PCT

115 Use the online register to monitor: New products of your competitor Design trends

116 Recent Community Designs Brabantia Salt & Pepper mill Egg cup Pan stand Soap Holder Toilet Paper Holder Drying rack

117 Recent design Fatboy

118 Recent design Batavus

119 Finding design and trademarks, where? Design Benelux Not available online Design Europa Design World wide Trademarks Benelux Trademarks Europe Trademarks World RequestManager search-struct.jsp RequestManager/ search-struct.jsp

120 What is not found in a patent? Is patent still valid? In which countries? Where (moment) in procedure? Granted or not? Opposition still possible? Maintenance fees paid? Licenses

121 Status registers NL patent: Netherlands Patent Register EP patent : Epoline (and Netherlands Patent Register ) US patent :United States Patent Register

122 Patent family (=equivalents) First application priority date 1 yr. 1,5 yr. publ. PCT procedure WO 05/ ,5 yr. 4-5 yr. USA Japan NL US JP Max. 20 yr. Max. 21 yr. Max. 21 yr. Europa (EP) EP Netherlands Germany Great Brittain France Max. 21 yr. Max. 21 yr. Max. 21 yr. Max. 21 yr.

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125 Status information - Netherlands - Netherlands Patent Register:

126 Status information European application Incl. communication between attorney and European Patent Office

127 Patent information: who? Find yourself: monitor subject and competitor inspiration searches status (limited) Subcontract to specialist: if completeness is required! novelty search interpretation of claims status extensive

128 Advise patent information Every productinnovation should start with patent research Use and improve what others have developed, Learn from their mistakes, Prevent infringement on rights of others Spend R&D-budget efficiently Use patent information to monitor your competitor

129 Thanks for your attention! More information: NL Octrooicentrum European Patent Office Hans Helsloot Consultant Intellectual Property