Securing Patent Rights in a Highly Competitive Scenario: the Solvay Specialty Polymers Approach

Transcription

1 Securing Patent Rights in a Highly Competitive Scenario: the Solvay Specialty Polymers Approach Alessandro Pontiroli 1

2 Solvay in Italy NEW! Cytec Agrate Brianza, MI NEW! Cytec R&I Center Mondovì, CN Solvay SA, Direzione Nazionale Solvay Specialty Polymers, HQ Solvay Chimica Italia Solvay Solutions Società Italiana del Cloro* Solvay Specialty Polymers Bollate, MI Spinetta Marengo, AL Ospiate, MI Tavazzano, MI Porto Marghera, VE Ferrara Roccabianca, PR Massa Carrara Livorno Rosignano Solvay, Li Solvay Bario e Derivati Pescara Solvay Specialty Polymers Solvay Solutions (*) perimetro JV Innovin Solvay Chimica Italia Società Italiana del Cloro* Solvay Chimica Bussi 2

3 1,258 m in nd Chemical Group after ENI in Italy employees 1st company based in Italy for European patent filings: 70 in 2014 (EPO data) 13 sites 3

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5 Solvay Specialty Polymers: Sites Bollate (Mi), Spinetta Marengo (Al), Porto Marghera (Ve), Roccabianca (Pr) Porto Marghera Spinetta Marengo Bollate, Headquarters e Centro R&I Roccabianca, particolare di impianto 5

6 GBU Specialty Polymers R&I Key Numbers 400 Projects 70m Worldwide Investments 32m Investments In Italy 540+ Worldwide R&I Specialists 270 R&I Specialists In Italy 46% R&I Specialists In Bollate (IT) Fluorinated Polymers 42% R&I Specialists In Alpharetta (US) Aromatic Polymers 6

7 What are Immaterial Assets Corporate assets include: - Tangible (physical) assets - Intangible (non-physical) assets IP (= Intellectual Property) IP relates to items having no tangible form BUT represent the product of creative intellectual work, including: - Knowledge of how to manufacture a product - Knowledge of how to control a process - Idea of how to design a new product - Visual identity of the company All these items are Valuable Assets, as long as they are not available to competitors 7

8 From Immaterial Assets to Competitive Advantage A company can gain commercial advantage over competitors through innovation, provided it secures its IP Intellectual Property allows a company to: - Protect investments in R&I - Reinforce position by creating law-defined monopolies - Penetrate market niches - Create new sources of profits by valorizing IP - Create an image of technology leader - Generate advantages over competitors 8

9 IP Rights in a Nutshell Copyrights, trademarks, designs, trade secrets, patents: available tools for protecting immaterial assets of a company IP rights are exclusive rights - The owner enjoys of the right of excluding others from the industrial exploitation of protected subject matter - Enforcement can be obtained via legal procedures 9

10 Trade Secrets Any knowledge and information that can be kept secret - Technical information that could hardly be patented or for which patents could hardly be enforced - Potentially unlimited duration 10

11 Management of Confidential Information Once secrecy is lost, the competitive advantage is destroyed forever! Recapturing with patent protection information already made available to the public is impossible 11

12 Patents Patentability Requirements Patents are granted for any inventions which are: - New - Non-obvious - Susceptible of industrial application 12

13 Why Patenting To protect and valorize investments in R&I - Preventing third parties from taking advantage of our technological advances To reinforce position vs. third parties patent rights To generate advantages over competitors To publish technical information, also for defensive purposes 13

14 Rights Conferred by a Patent Art. 66. D. Lgs. 10 febbraio 2005, n.30 (Codice Proprietà Industriale IT) 1. I diritti di brevetto per invenzione industriale consistono nella facoltà esclusiva di attuare l'invenzione e di trarne profitto nel territorio dello Stato [ ] 2. In particolare, il brevetto conferisce al titolare i seguenti diritti esclusivi (=di escludere, ndr): - Se oggetto del brevetto è un prodotto, il diritto di vietare ai terzi, salvo consenso del titolare, di produrre, usare, mettere in commercio, vendere o importare a tali fini il prodotto in questione. - Se oggetto del brevetto è un procedimento, il diritto di vietare ai terzi, salvo consenso del titolare, di applicare il procedimento, nonché di usare, mettere in commercio, vendere o importare a tali fini il prodotto direttamente ottenuto con il procedimento in questione. A patent does definitely NOT confer an absolute right to practice an invention. It confers only the right to exclude others from practising an invention for industrial/commercial aims. 14

15 Protection of Technological Advances: The Dilemma Patent? Keep Secret Defensive Publication 15

16 Solving the Dilemma: Some Guidelines Can the invention be kept secret? Can the invention be easily reverse-engineered from products on the market? Is the invention patentable? How broad is the expected scope of the patent? How easily can the invention be by-passed? Is there a risk that someone else patents the invention? Can infringement be detected easily? - How? - Is the patent enforceable? The best choice of protection 16

17 Securing IP Rights Generally, protection of IP rights requires procedural/formalized acts (registration, application, confidentiality agreements), particularly for patents Specialized counsels and IP-trained staff are needed in all these procedures! 17

18 Procedure for Obtaining Patent Rights Filing (or entry into local phase for PCT applications) Examination 1) Opposition 2) Drafting Search 1) Grant 1) In certain jurisdictions, search and examination come together; in other jurisdictions, examination relies on the search made during the international (PCT) phase 2) Post-grant invalidity proceedings by third parties only available in certain jurisdictions; before European Patent Office: deadline = 9 months from grant In each of these phases, a close interaction between R&I, business and IP management functions is crucial! 18

19 Securing IP Rights: A Collective and Constant Effort 1 st Filing Inventors provide technical file with detailed description and effects of the invention Patent counsel assesses patentability (often on the basis of an internal prior art search) and drafts a patent application Managers give green light to filing, considering strategic/business aspects 19

20 Securing IP Rights: A Collective and Constant Effort Extension in Priority (Within 12 Months from 1 st Filing) Inventors provide technical file on further developments (if any) Inventors/managers provide updates on technical/business interest Patent counsel comments on the scope of protection likely achievable, also in view of PTO search results BU decides on extension based on proposal of IP function, collecting all inputs 20

21 Securing IP Rights: A Collective and Constant Effort When applicable: entry into national/regional phase of PCT (30 months from 1st filing) Inventors comment on business/technical interest & propose with IP function geographical protection BU decides on geographical protection 21

22 Securing IP Rights: A Collective and Constant Effort Portfolio Management Regular Patent Portfolio reviews involving technical and business stakeholders and IP professionals to maintain alignment of patent portfolio with technical and business strategy Expected return on IP investment /competitive advantage derived from patent monopoly is consistently monitored considering breadth of protection, competitors positioning, prosecution and maintenance costs 22

23 Conclusions Efficient protection of intellectual assets must be considered as a daily issue for a company Overlooking IP matters can lead to major issues, e.g. litigations, damages, loss of profits and opportunities, loss of competitive edge Securing and maintaining IP rights require proactive efforts involving R&I, Business and IP functions 23

24 Thank you for your kind attention! 24

25 Template v 1.6 Safety Data Sheets (SDS) are available by ing us or contacting your sales representative. Always consult the appropriate SDS before using any of our products. Neither Solvay Specialty Polymers nor any of its affiliates makes any warranty, express or implied, including merchantability or fitness for use, or accepts any liability in connection with this product, related information or its use. Some applications of which Solvay s products may be proposed to be used are regulated or restricted by applicable laws and regulations or by national or international standards and in some cases by Solvay s recommendation, including applications of food/feed, water treatment, medical, pharmaceuticals, and personal care. Only products designated as part of the Solviva family of biomaterials may be considered as candidates for use in implantable medical devices. The user alone must finally determine suitability of any information or products for any contemplated use in compliance with applicable law, the manner of use and whether any patents are infringed. The information and the products are for use by technically skilled persons at their own discretion and risk and does not relate to the use of this product in combination with any other substance or any other process. This is not a license under any patent or other proprietary right. All trademarks and registered trademarks are property of the companies that comprise the Solvay Group or their respective owners. 2015, Solvay Specialty Polymers. All rights reserved.