Patents and prior art searches

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1 Patents and prior art searches Politecnico di Torino Ing. Marco CAMOLESE Turin, 12 March 2014

2 Ing. Marco Camolese Italian and European Qualified Patent Attorney Italian and European Trademark and Design Attorney Degree in Electronics Engineering (Turin Polytechnic) Member of the Committee I EQE (European Qualifying Examination). Technical Expert of the Turin Court

3 WHAT IS A PATENT? - A patent is an exclusive right which is granted to the Applicant in exchange of a disclosure of technical information. Disclosure of the invention (Art. 83 EPC European Patent Convention) The European patent application shall disclose the invention in a manner sufficiently clear and complete for it to be carried out by a person skilled in the art. - The patent owner has the right of exploiting the patent for a period of 20 years from the filing date.

4 ART. 52 EPC (Patentable inventions) 1. European patents shall be granted for any inventions, in all fields of technology, provided that they are new, involve an inventive step and are susceptible of industrial application. 2. The following in particular shall not be regarded as inventions within the meaning of paragraph 1: (a) discoveries, scientific theories and mathematical methods; (b) aesthetic creations; (c) schemes, rules and methods for performing mental acts, playing games or doing business, and programs for computers; (d) presentations of information. 3. Paragraph 2 shall exclude the patentability of the subject-matter or activities referred to therein only to the extent to which a European patent application or European patent relates to such subject-matter or activities as such.

5 Rule 42 EPC (Content of the description) (1) The description shall: (a) specify the technical field to which the invention relates; [...] (c) disclose the invention, as claimed, in such terms that the technical problem, even if not expressly stated as such, and its solution can be understood, and state any advantageous effects of the invention with reference to the background art; [...] Rule 43 EPC (Form and content of claims) The claims shall define the matter for which protection is sought in terms of the technical features of the invention. [...]

6 ESSENTIAL ELEMENTS OF A PATENT APPLICATION Only one invention (unity of invention) Title (for correctly classifying the patent application) Description (should allow the skilled in the art to carry out the invention) Claims (define in terms of technical features of the invention the subject-matter for which protection is required) Drawings (if necessary to better understand the description) 6

7 PRIOR ART Prior art (or state of the art or background art) constitutes all information that has been made available to the public in any form before the filing date of a patent application. If an invention has been described in the prior art, a patent on that invention is not valid. Having knowledge of the prior art before filing a patent application avoids: - infringing third parties patents; - filing substantially invalid patent applications; - writing a patent application aimed at really new and inventive subjectmatter. The cost of a prior art search is a fraction of the whole cost of an Italian patent application and is a negligible fraction of the whole cost of a foreign patent application. 7

8 WHY A PATENT PRIOR ART SEARCH?! Technical solutions are mostly described in patent literature and sometimes they have never been incorporated into a product or a method. Patent literature constitutes a considerable percentage of the whole world technical literature (almost 85%). The patent application is usually the first published report concerning an invention and might be also the only one. The patent application must provide complete technical details related to the invention (sufficiency of disclosure). 8

9 PATENTS AS A TECHNICAL INFORMATION SOURCE Tracking technology developments Evaluating and examining the state-of-the-art Avoiding double efforts (and possible infringement) Finding solutions to your technical problems Being updated about license opportunities 9

10 PATENTS AS A ECONOMICAL INFORMATION SOURCE Identifying competitors and monitoring their activities Estimating the financial soundness of a company Identifying experts in a particular technical field Checking whether a competitor is infringing your patent(s) Gaining knowledge of competitors future products 10

11 Where to file a patent application? Filing abroad (National/Regional) Italian filing PCT USPTO CN JPO EPO DE.. USPTO CN JPO EPO FR.. UK DE. UK DE FR 1 year National/Regional phase 30/31 months 11!

12 Patenting costs in Italy Italian patent Filing 2.800,00! Office Action Receiving the search report and replying to the Examiner Grant ,00! (agent fee and patent fees) Maintenance fees from year 5 to year ,00! (of which 80% are patent fees) The whole Italian procedure might cost about Euro. 12!

13 Patenting costs in Europe European Patent Filing 3.500, ,00! (1.300! fees and translation) Office actions It is estimated that the Examiner will issue two Office Actions before granting the patent Grant Grant fees + translation of the claims in French and German Maintenance fees From filing to grant 1.800,00! 2.500,00! 5.000,00! (of which 90% are patent fees) The whole European procedure might cost about euro 13!

14 Free of charge prior art search for Italian patent applications In 2008 the prior art search for Italian patent applications was introduced. The prior art search is carried out by the European Patent Office (EPO). Prior art search is free of charge to the Applicant. Before extending a patent application abroad, which implies potentially high costs, the Applicant knows at the latest nine months from the filing of the Italian patent application whether his patent application is valid or invalid. Moreover, if the results of the prior art search of a subsequently filed European patent application are the same as the Italian patent application, the EPO will partially or totally reimburse the search fee, thereby further reducing the Applicant s expenses. 14!

15 Patenting costs in Europe European patent might protect up to 38 countries: Albania Austria Belgium Bulgaria Cyprus Croatia Denmark Estonia Finland France Germany Greece Ireland Iceland Italy Latvia Liechtenstein Lithuania Luxembourg Macedonia Malta Monaco Norway The Netherlands Poland Portugal Czech Republic United Kingdom Romania San Marino Serbia Spain Sweden Slovenia Slovakia Switzerland Hungary Turkey Extension Countries: Bosnia Erzegovina Montenegro 15!

16 Patenting costs in Europe When the European patent is granted, the Applicant must decide in which countries he desires to obtain protection. Costs for validating* and maintaining an European patent up to 20 years from the filing date (some examples) Germany ,00! (very high maintenance fees) Spain ,00! France 8.000,00! United Kingdom 8.000,00! * Validation in a country means translation of the granted patent and payment of the maintenance fees. 16!

17 Patenting costs International Patent Application (PCT) PCT patent application Filing 4.000, ,00! (patent fees " 3.000!) Demand for examination (not mandatory) 3.000,00! (included Chapter II) Regional/National phase The international patent application, also known as PCT (Patent Cooperation Treaty) application, is substantially a unified procedure for examining the patent requirements. The PCT does not lead to patent granting: it is only a centralised international procedure for search and possibly examining the patent application. 17!

18 Patenting costs International Patent Application (PCT) 148 Countries belonging to PCT 18!

19 Patenting costs in the rest of the world USA CHINA JAPAN BRASIL INDIA FIling 3.500,00! 5.800,00! 6.500,00! 4.500,00! 1.900,00! Examination 900,00! 1.900,00! 1.900,00! 750,00! Office Actions (2) Exam request (RCE) 3.000,00! 8.000,00! (anche 4) ,00! 3.000,00! 2.000,00! 2.500,00! Grant 1.500,00! 1.000,00! 1.000,00! 1.000,00! 1.000,00! Maintenance 4.500,00! ,00! ,00! ,00! 8.000,00! ,00! ,00! ,00! ,00! ,00! 19!

20 HOW TO READ A SEARCH REPORT AND A WRITTEN OPINION The search report and the written opinion are simultaneously provided by the Examiner to the Applicant. The search report provides for a list of prior art references and their relevance with respect to the claims of the patent application. The written opinion relates to the patentability requirements. Let s see how a search report and a written opinion look like 20

21 THANK YOU VERY MUCH!

22

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