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And IPR Protection: What Should I Know?

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And IPR Protection: What Should I Know? Technology meets the market: And IPR protection: what should I know? Vienna, Austria July 5th 2016 Raffaele Buompane www.ebn.eu Goals This module is designed to: 1. Introduce IP rights comprising Designs, Trademarks, Geographical Indications & Protected Designation of Origins, and Domain names including: • What they are • Why you need them • How to get them 2. Discuss the importance of having an IP strategy 3. Show how IP can be used to protect innovation www.ebn.eu Content • Introduction • Relevance of IP • IP Types • Overview of IP Types • Patents • Utility Models • Designs (exercises and case study) • Trademarks (exercises and case studies) • PDO & GI (case study) • Supplementary Protection Certificates • Domain names • Use of IP in Business and IP Strategy (exercise) • Case Study • Summary www.ebn.eu Let’s start! • Introduction • Relevance of IP • IP Types • Overview of IP Types • Patents • Utility Models • Designs (exercises and case study) • Trademarks (exercises and case studies) • PDO & GI (case study) • Supplementary Protection Certificates • Domain names • Use of IP in Business and IP Strategy (exercise & case study) • Summary www.ebn.eu Introduction to Intellectual Property • Intellectual property (IP or IPR) refers to the rights one has to intangible assets, e.g. creations of the mind, such as: • Ideas • Thoughts • Creations • Writings • Drawings www.ebn.eu Why is IP important? You Others Create IP that Identify strong makes you partners through IP attractive for Opportunity competitive investment or to get intelligence partners IP Establish IP that Ensure that you have Strategy protects your freedom to operate Risk products/ services/ before launch to name from being prevent infringement, imitated unfair use www.ebn.eu Why is IP important? • IP enables creativity to be protected, and clearly establishes who owns what • IP can be licensed or sold • It can be a key negotiating tool - a "deal-maker“ • IP will attract investment • IP appears as an asset on the company accounts, even if other parts of the business get into trouble • IP is a source of information and knowledge • IP presents both opportunities and risks which are to be exploited or avoided – strategy is key! www.ebn.eu Myth - IP is just for large companies • Most SME’s have IP that they are unaware of… • Customer lists, designs, logos, brand names, etc. • SME’s need to know about: • Their own IP (to leverage it / protect it) • Others’ IP (to avoid infringement) • Some industries thrive off IP, where IP can help SME’s to position themselves for investments / buyout, e.g. Biotechnology, Communications www.ebn.eu Where does IP come from? Intellectual Assets + •Inventions •Works of art Ideas / Creativity: •Writings, etc. Thoughts problem solving in an unusual way Note: not all intellectual assets can be protected with IP www.ebn.eu Industrial Property: nomenclature Inventions Patents, UMs Brands, logos Reg. TMs Designs Reg. Designs These are registered rights The inventor, creator or designer has no rights until they make a registration Others can check if rights exist, and who owns them, by looking at the register www.ebn.eu Industrial Property: nomenclature These rights are unregistered - Inventions Patents, UMs they exist from the moment the Brands, logos Reg. TMs Reg. Designs Designs works are created. Ownership is harder to clarify without a Musical, dramatic, Copyright register literary & artistic works Databases Database right The registered & unregistered Reputation / Goodwill Unreg. TMs rights together are called Designs Unreg. Designs intellectual property www.ebn.eu Intellectual Assets Inventions Patents, UMs Brands, logos Reg. TMs Designs Reg. Designs Musical, dramatic, Copyright literary & artistic works Databases Database right Reputation / Goodwill Unreg. TMs Designs Unreg. Designs The formal registered & unregistered rights, when Know-how Restrictive combined with this third group of "soft IP", are known Trade secrets covenants collectively as intellectual assets Confidential Confidentiality information agreements www.ebn.eu One product – many IP rights • Reg. Designs for phone shape • Reg. Trade Mark - “Samsung" & some tones • Copyright - software, ringtones & images • Patents - for technology to produce and operate. Some pooled or cross-licensed, exclusive • Trade secrets - some technical know-how kept "in-house" and not published www.ebn.eu Combining IP into a single product another example • Reg. Designs for jar shape • Reg. TMs - "Nestlé" & "Nescafé" • Copyright - label artwork & text • Patents - for processes to roast, grind, decaffeinate & dry coffee (hundreds!) • Trade secrets - some technical know-how kept "in-house" and published www.ebn.eu Content • Introduction • Relevance of IP • IP Types • Overview of IP Types • Patents • Utility Models • Designs (exercises and case study) • Trademarks (exercises and case studies) • PDO & GI (case study) • Supplementary Protection Certificates • Domain names • Use of IP in Business and IP Strategy (exercise & case study) • Summary www.ebn.eu Overview of patent rights A patent rights can be viewed as an agreement between the inventor and inventor and society Patents protect technical inventions which solve technical problems problems • chemicals, products, equipment and apparatus Patent #: EP1180338B1 • processes and methods Title: Chair Assignee: KOKUYO CO., LTD. www.ebn.eu IP rights: what is a patent? • A patent is the right to exploit an invention - NO! • The right to exclude others from making, using, selling or importing an invention. It confers no enabling right Electric kettle Kettle with ceramic heating MoSi2 element Molybdenum disilicide www.ebn.eu Patents are a prohibitive right A patent forbids others to commercially produce, sell, work, use, import and possess the invention But… …A patent does not extend to: – acts performed for non-commercial purposes – acts performed for experimental purposes – acts concerning products which are commercially worked by, or with the consent of, the patentee – Individual production of a medicinal product at a pharmacy www.ebn.eu Patentability (1 of 2) What can be patented? • A product itself • The apparatus for producing the product • The process or method for producing the product • The use of the product www.ebn.eu Patentability (2 of 2) What cannot be patented? • Computer programs** • Inventions which are contrary to moral standards and public order (e.g. • Mathematical methods instruments of torture) • Business methods* • The human body and any non-separate • Medical and surgical treatments part/s thereof* • Discoveries • Presentations of information • New species of plant or animal • Scientific theories • Aesthetic creations *Note: This subject matter may be patentable in jurisdictions other than Europe **Note: Covered on next slide www.ebn.eu Patents for computer implemented inventions • Software (source or object code) is protected by © • Inventions dependent upon software may be patented • Novel and inventive features must reside in the technical aspects of the invention, e.g.: • external effects (controlling a robot arm) • internal effects (data compression for better speed) • A new storyline or scenario for a computer game, implemented through entirely conventional hardware and software, would not be patentable. http://www.epo.org/topics/issues/computer-implemented-inventions/software.html https://e-learning.epo.org/ Public modules European Patent System CII www.ebn.eu Use of Patents in business Patent rights allow a business to: • Generate a price premium on products • Add revenue streams through licensing or sale of IP rights • Add to marketing credibility • Attract or retain investors / partners • Gain time to further develop technology • Prevent others from using your inventions without permission • Potentially prevent competitors from entering your market space www.ebn.eu Patent requirements A patentable invention must be: 1. Novel/New (not already been disclosed to the public) public) 2. Contain an inventive step 3. Useful (e.g. capable of industrial application) www.ebn.eu What is a Patent Priority Right A priority right refers to the point in time in which a patent… • is looked at for the purposes of prior art • is viewed for purposes of establishing the patent applications initial filing date www.ebn.eu Importance of Patent Priority Rights Priority right implications: • all rights tied to that application start from the date the priority the priority rights were established. • you must file additional applications in other countries within 1 year from establishment of the priority right. *this 1 year priority applies to countries that are party to the Paris Convention for the Protection of Industrial Property. www.ebn.eu Patent Priority Rights: Exercise • Companies X, Y, and Z all produce products involving elements a, b & c. Each of them have applied for patents rights for their respective products. The question is, if the patents are granted, what prohibitive rights may affect each company? • Scenario 1: Assume Company X applied for IP rights before Company Y • Scenario 2: Assume Company Y applied for IP rights before Company X + c a + b a + b b + c Company X Company Y Company Z www.ebn.eu How to apply for a Patent Patent applications can be filed in various jurisdictions including: • Nationally (single country) • Internationally (multiple non-related countries e.g. US & JP) • Regional patent system (Multiple countries in a geographic region e.g. Europe, region e.g. Europe, Middle East) The patent application process is
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