Patent Teaching Kit "The Patent Teaching Kit Is a Valuable Resource That Will Help Raise Awareness of the Key Issues Surrounding Patents
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Basic Understanding of Intellectual Property
BASIC UNDERSTANDING OF INTELLECTUAL PROPERTY Jacob N. (Jesse) Erlich, Partner, Burns & Levinson LLP Kathy Chapman, Assistant Counsel IP, U.S. Naval Research Laboratory BACKROUND A company or individual entering the world of business should maintain ownership of its innovative developments. These innovative developments generally take the form of intellectual property, which is broadly defined as protectable developments of the mind. A more formal definition of intellectual property is an intangible or proprietary asset such as a patent, copyright, trademark, or trade secret. To better understand the various aspects of intellectual property protection, it is best to first understand that most intellectual property, particularly inventions, begins as a trade secret. Although patents may be the most common and well-known form of intellectual property, at its outset all forms of intellectual property begin as a trade secret. A trade secret is used to protect important business information that a business or an individual does not want to disclose to the public. In other words, to rely on trade secret protection, one must ensure that such trade secrets remain confidential. As a business develops, it becomes increasingly difficult to keep such information confidential; as such, the chances are that this information will become released to the public and protection will be lost. Therefore, it is important to understand various other types of intellectual property protection such as patents, trademarks, and copyrights. TRADE SECRETS The use of trade secrets to protect one's ideas is extremely important and can be considered an essential part of a business. However, to use trade secrets as a form of intellectual property protection, trade secrets must be kept confidential. -
Effects of Supplementary Protection Mechanisms for Pharmaceutical Products
Final report, May 2018 Effects of supplementary protection mechanisms for pharmaceutical products www.technopolis-group.com Effects of supplementary protection mechanisms for pharmaceutical products technopolis |group| May 2018 Thyra de Jongh* Alfred Radauer Sven Bostyn Joost Poort * Corresponding author. [email protected] About the authors Thyra de Jongh PhD, is a Senior Consultant Health & Life Sciences at Technopolis Group in Amsterdam. She specialises in analysis of health systems and policies, and research and innovation in the health and life sciences. She has a particular interest in pharmaceutical innovation and access to medicine. (thyra.dejongh@technopolis- group.com) Alfred Radauer, is Senior Consultant at Technopolis Group in Vienna and leads the Intellectual Property & Standards (IPS) group within Technopolis. His and the IPS group work elaborate on the interfaces between legal, technological and economic issues of IP and standards in innovation policy as well as the interaction of IP with regulation and other policy areas. ([email protected]) Sven Bostyn Lic.Jur, LL.M, PhD, is a senior lecturer in Intellectual Property Law at the University of Liverpool Law School. He is also an assistant professor at the Institute for Information Law, University of Amsterdam. He is one of the leading experts in Europe in patent law and related subjects in the areas of life sciences and pharmaceutical inventions, and has more than sixty single-authored publications. ([email protected]) Joost Poort PhD, is an associate professor in economics at the Institute for Information law, University of Amsterdam. He brings an economic perspective to various multidisciplinary research projects, with particular interest in intellectual property. -
US Patent Basics
US Patent Basics *A free e-copy of this book is available by request to [email protected]. US Patent Basics By Tamsen Valoir, PhD. Tamsen is a partner in the Houston office of Boulware & Valoir. She has a JD and LLM in Intellectual Property, a doctorate in molecular biology from Rice University, and her practice is primarily in intellectual property in the area of life sciences. [email protected]. 7th Edition, © 2012. Table of Contents 1. US PATENT BASICS ................................................................... 2 2. BEST MODE, OATH, CANDOR .................................................. 15 3. INVENTORSHIP ....................................................................... 18 4. PATENT REFORM 2011 ........................................................... 21 5. COST CONTROL ..................................................................... 29 6. PATENT STRATEGY ................................................................. 32 7. INTERNATIONAL PROTECTION ................................................ 38 8. RECEIPT OF A US PATENT ....................................................... 41 9. PATENT ENFORCEMENT .......................................................... 44 10. OTHER TYPES OF PROTECTION .............................................. 46 11. FDA BASICS .......................................................................... 49 12. TEN ISSUES FOR THE START-UP ............................................ 54 13. PATENT STATUTES ............................................................... -
Introduction to Patent Data
Introduction to patent data Gianluca Tarasconi, rawpatentdata.blogspot.com IP introduction Querying patent databases is a process where user can meet pitfalls. Datasets answer exactly what they are asked. In order to ask the correct question some background is needed. IP overview Legal right What for? How? Application and Patents New inventions examination Original creative or Exists Copyright artistic forms automatically* Distinctive identification Use and/or Trade marks of products or services registration Registered External appearance Registration* designs Valuable information Reasonable efforts Trade secrets not known to10 the public to keep secret Worldwide patents filings https://www3.wipo.int/ipstats/ipslinechart by patent office 10 Patent Information (I): Ipad Patent Document front page (USD503889) The patent document is the data source; For statistical purposes the data must, however, be cleaned, normalized and reclassified; You need to be able to query (with queries or user interfaces); The latter is the reason why resources (databases, reports, etc.) where data has been preprocessed are used. 2 Patent front page 2 CAVEAT! Is 1 patent = 1 invention? NO Due to applicant strategy, institutional bias etc 1 patent family = 1 invention 10 * PATENT FAMILY DEFINITION A patent family is "a set of patents taken in various countries to protect a single invention (when a first application in a country – the priority – is then extended to other offices).“ In other words, a patent family is "the same invention disclosed by a common inventor(s) and patented in more than one country.” 10 PATENT FAMILY 10 PATENT FAMILY – from EPO Espacenet 10 CAVEAT 2! Is 1 document number= 1 patent? NO Also application kind defines type of application. -
M&A Strategy
MODULE 06 Patent Information MODULE 06. Patent Information OUTLINE LEARNING POINT 1: Understanding patent information 1. Patent information & Patent documents (1) Patent Information (2) Patent documents 2. Advantages of patent information LEARNING POINT 2: Type of patent information search 1. State‐of‐the‐art & Patentability search (1) State‐of‐the‐art search (2) Patentability search 2. Infringement search 3. Validity search 4. Index or name search LEARNING POINT 3: Method of patent information search 1. Types of patent information databases (1) CD‐ROM (2) Online databases 2. Selection of databases 3. Example of on‐line databases search (1) How to access Full‐Text database (2) How to use a Quick Search page LEARNING POINT 4: Strategic use of patent information 1. In licensing (1) ‘Licensing in’ technology (2) ‘Licensing out’ technology (3) ‘Cross‐licensing’ 2. In Mergers & Acquisitions 3. In Research & Development 4. In Human Resource Management INTRODUCTION Even the latest gadgets get outdated in no time. Umpteen, new or improved models are constantly appearing on the market. Can something be really done to survive this fierce competition? In this module, we look at the role of patent information in protecting a business as well as in helping it to gain a competitive edge. In particular, we are going to deal with what is meant by patent information and why it is important and discuss how patent information may be used including searching patent information and strategically using the results of such a search. LEARNING OBJECTIVES 1. You understand the concept of patent information. 2. You understand how to strategically use patent information. -
“The Origin of Specis” (Patent Specifications) BASIC FACTS (A.K.A
The Origin of Specis (or, nearly everything you wanted to know about patents, but couldn’t be bothered asking) 22.Sep.2021 © Tony McStea 1992-2021 22.Sep.2021 About the Author… (with apologies to Gilbert and Sullivan) When I was a lad, I served a term As patent tech. assistant in a big paint firm I wrote applications and I argued and tried Patent offices to show that grant was justified And this sort of thing so suited me That now I’m patent attorney in industry. Acknowledgement My grateful thanks to all of you out there who helped me with this revised version by offering comments, corrections, criticisms, suggestions and advice, some of which I ignored, which is why the booklet still exists. The responsibility for any errors (not to mention the mediocre drawings and terrible jokes (or is it mediocre jokes and terrible drawings?)) is entirely mine. The responsibility for any views or opinions expressed herein is also entirely mine. N.B. Most costs mentioned herein were correct (more or less) at June, 2015, but, because of the tendency of official fees to fluctuation (and exchange rates to go up and down like yo-yos), and the consequent work of constantly adjusting them, they have been left as they are and are there to be general guides only. 22.Sep.2021 Note: changes to US Law On 16 March 2013 (thus missing by one day the Blessing of St. Patrick on the entire enterprise), the Leahy-Smith “America invents” Act (AIA), the most significant change to US patent law in half a century, came fully into effect. -
Patent Family Concepts and Sources for Family Information
Topic 3: Patent Family Concepts and Sources for Family Information Lutz Mailänder Head, International Cooperation on Examination and Training Section Cairo April 28, 2019 Agenda Families – why Priority rights Families – which Types Families – where Sources of family information Further reading on families WIPO Handbook: http://www.wipo.int/standards/en/pdf/08-01-01.pdf EPO: http://www.epo.org/searching/essentials/patent-families.html http://documents.epo.org/projects/babylon/eponet.nsf/0/C9387E5053AA70 7BC125816A00508E8D/$File/Patent_Families_at_the_EPO_en.pdf PIUG: http://wiki.piug.org/display/PIUG/Patent+Families OECD: https://www.oecd.org/sti/inno/44604939.pdf PCT/US2007/07071 Source of family information: Espacenet Inpadoc ('extended') family Priorities (here 2 US) create family relations Simple family ('equivalents') PCT/US2007/07071 Espacenet: Extended (Inpadoc) family Number of family members (counting distinct national applications) 1st family member (AR) 2nd family member (AU) 3rd family member (CA) AU family member Same US PCT priorities application like WO number Origin of patent families There are various reasons for patent family relations between distinct applications/filings: A. Patent protection is territorial, i.e. inventors/investors may have to seek protection in various different jurisdictions (“extensions”) B. ...... Foreign applications usually claim priorities of earlier applications filed in other jurisdictions based on Paris Convention TRIPS agreement Priorities create family relations between earlier and later -
Patent Families
Topic 3: Patent Families Lutz Mailänder Bangkok 21-23 November 2012 Head, Patent Information Section Hanoi 26-28 November 2012 Global IP Infrastructure Sector Agenda Families – why Families – which Types Unity of patents Families – implications for examination External results, worksharing Prior art Families – where Resources WIPO Handbook: http://www.wipo.int/standards/en/pdf/08-01-01.pdf EPO: http://www.epo.org/searching/essentials/patent-families.html PIUG: http://wiki.piug.org/display/PIUG/Patent+Families Landon IP: http://www.intellogist.com/wiki/Patent_Families Origin of patent families Patent protection for particular invention is territorial, i.e. inventors have to seek protection in different countries Office of first filing (OFF) is usually in country of residence of inventor or applicant Subsequent filings of improvements at OFF Applicants seek protection abroad (“extensions”) Office(s) of second filing (OSF) Parallel with OFF (cost), or Deferred, delayed All filings/applications for “same invention” constitute a patent family Origin of patent families Patent applications can claim priorities of earlier applications (filed in same or other IPOs) Priorities create (legal) family relations between respective earlier and later filings Family relations may exist also without claiming priorities (e.g., technical families) Types of patent families Priorities are claimed National families Filings abroad: Paris convention (&TRIPS) family Filings abroad: PCT system family Without priorities Technical families Domestic families PCT Families on national level National second filings Patent of addition Improvement of original invention of parent patent Unity with parent patent to be given; i.e. as if further independent claim of parent patent Depends on validity of parent patent Request possible up to 18 months after filing of patent patent National second filings Division E.g. -
International Patent Families: from Application Strategies to Statistical Indicators
Antoine Dechezleprêtre, Yann Ménière, Myra Mohnen International patent families: from application strategies to statistical indicators Article (Published version) (Refereed) Original citation: Dechezleprêtre, Antoine, Ménière, Yann and Mohnen, Myra (2017) International patent families: from application strategies to statistical indicators. Scientometrics. ISSN 0138-9130 DOI: 10.1007/s11192-017-2311-4 Reuse of this item is permitted through licensing under the Creative Commons: © 2017 The Authors CC BY 4.0 This version available at: http://eprints.lse.ac.uk/69486/ Available in LSE Research Online: March 2017 LSE has developed LSE Research Online so that users may access research output of the School. Copyright © and Moral Rights for the papers on this site are retained by the individual authors and/or other copyright owners. You may freely distribute the URL (http://eprints.lse.ac.uk) of the LSE Research Online website. Scientometrics DOI 10.1007/s11192-017-2311-4 International patent families: from application strategies to statistical indicators 1 2 3 Antoine Dechezlepreˆtre • Yann Me´nie`re • Myra Mohnen Received: 20 April 2016 Ó The Author(s) 2017. This article is published with open access at Springerlink.com Abstract This paper provides an in-depth analysis of the characteristics of international patent families, including their domestic component. We exploit a relatively under-studied feature of patent families, namely the number of patents covering the same invention within a given jurisdiction. Using this information, we highlight common patterns in the structure of international patent families, which reflect both the patenting strategies of innovators and the peculiarities of the different patent systems. While the literature has extensively used family size, i.e. -
Bumping Into Your Own Prior Art
Bumping Into Your Own Prior Art PETER L. BREWER 8903 Linksvue Drive Gettysvue Center Knoxville, Tennessee 37922 (o) (865) 224-8555 www.thrive-ip.com www.energy-ip.com Association of Intellectual Property Firms 2020 Writing Competition Submitted to Brett Lunn, Esq. FB Rice January 03, 2020 1 Contents I. Introduction ...............................................................................................................4 II. The America Invents Act and The One-Year Grace Period ......................................5 III. The Problem of the Previously-Issued Patent ...........................................................7 IV. The Problem of the Previous Publication ..................................................................8 V. The Problem of the Parent Patent Application ..........................................................9 VI. The Problem of the Continuation-In-Part Application ............................................10 VII. The Problem of the Secret Sale, and the Not-So-Secret Sale ..................................10 VIII. The Problem of Secret or Experimental Use ...........................................................12 IX. The Problem of the Provisional Patent Application ................................................13 X. The Problem of Trade Secrets .................................................................................13 XI. The Problem of Double Patenting ...........................................................................15 XII. The Problem of the International Patent ..................................................................17 -
Patent Family Data and Statistics at the European Patent Office
European Patent Office Patent family data and statistics at the European Patent Office. Peter Hingley; EPO, Munich Walter Park; American University, USA WIPO-OECD Workshop on Patent Statistics, 18 & 19 / 09 / 2003. EPO Patent families 1. Introduction ¾ 2. Construction of families ¾ 3. Sociology of families ¾ 4. Timeliness of families data ¾ 5. Statistical description of filing trends ¾ 6. Families as a basis for forecasting filings ¾ 7. Conclusions WIPO-OECD Workshop on Patent Statistics, 18 & 19 / 09 / 2003. EPO Patent families 2. Construction of patent families Priority forming DOCDB publications database First Filings Applications, Grants (with references to priorities) Priority 1 Application A Priority 2 Application B Priority 3 Application C, Grant C Rearrange as families (PRI file) : Family 1 Priority 1 Application A Status A Family 2 Priority 2 Application A, Application B Status A Family 3 Priority 3 Application C, Grant C Status G Country & Bloc of Filing (EPC, Japan, US, Others), Applicant & Inventor Names, Priority date, Subsequent filings dates, Utility model / Patent, Classification (IPC & NACE), PCT involved, EPO involved. WIPO-OECD Workshop on Patent Statistics, 18 & 19 / 09 / 2003. EPO Patent families 3. Sociology of patent families Families originating from first filings in EPC contracting states (including EPO first filings) in 1997. Monolateral families ("First") First: 127179 Out: 42700 T.P.F: 15539 Bilateral familes ("Out") Trilateral patent families ("T.P.F.") WIPO-OECD Workshop on Patent Statistics, 18 & 19 / 09 / 2003. EPO Patent families 3. Sociology of patent families From EPC to any other Blocs (Priority Year 1997) 129179 EPC US and/or and/or JAPAN OTHERS 42700 (33%) WIPO-OECD Workshop on Patent Statistics, 18 & 19 / 09 / 2003. -
Free Patent Search Tools to Help Anyone Who Needs to Locate Patent Information
Patent Searching Using Free Search Tools 2017 Ellen Krabbe, Steve Sampson, Ian Wetherbee 1 Introduction Purpose of this document…. Table of Contents This article is a tutorial on several free patent search tools to help anyone who needs to locate patent information. Introduction P2 Espacenet P3-7 This document will act as a rapid introduction to each tool Google Patents P8-12 emphasizing its key features and where those features can PATENTSCOPE P13-17 be found. Since individual needs vary, it is our hope that you The Lens P18-22 will be able to rapidly choose a tool with the functions that fit your needs. Comparison of Tools P23 Other Resources P24 The best patent searches are iterative using different search tools since each tool works slightly differently. The same Primer on Information Security: search was performed in each tool using the same key words Protecting confidentiality is a common source of and you will notice that the number of results is quite misinformation regarding free search tools. Users should different. This is most commonly due to the countries be aware that no tool (paid or free) is without risk. covered and the way family members are grouped. However, by following a few tips and understanding the “threat model”, you can confidently search for patents Ideally, you would want to perform a search using at least while taking reasonable, best-practice security steps to two search tools. Each tool has different strengths, protect the confidentiality of the invention. therefore, by searching with different tools you can take advantage of their unique search features, such as WIPO's Security and privacy are both important to protecting translation query builder, or Google's synonyms.