W W W W W HOW (Why, When, Who, Where, What, How) Write a Patent!

1. W W W W W HOW (Why, When, Who, Where, What, How)Write a Patent! BONUS MATERIAL Domenico Golzio European Patent Office dgolzio@epo.org Cyberlaw Torino Tecnologie digitali e diritto nell’era della Rete 12 - 13 Luglio 2004 Fondazione Giovanni Agnelli - Torino

2. What is a Patent? • Inventor • (Patent Proprietor) • Protection for about 20 years • Exclusive rights to produce, use, sell and import the invention • to recoup investment in R&D • to strengthen market position and competitiveness • State • Publication of the invention • to spread new technical knowledge • to avoid R&D duplication • to foster innovation A contract between an inventor and a state Patents are granted to inventions which are Novel, Inventive (non obvious), suitable for IndustrialApplication when considered against the PriorArt

3. The Actors of the Patent Procedure Inventor/Applicant Art 58-62, 81 Rule 17-19 EPC Representative Art 133-134 EPC Patent Office publishes Unexamined Patent Applications (A) Contract Proposal Granted Patents (B) Final Contract

4. Exclusive right: nobody can produce, use, sell or import your invention (patent infringement) Art 64 EPC Territorial right: a patent in one state does not affect patent in other states Art 2, 63-64 EPC Timed right: protection from a certain date to another date Art 63 EPC Transferable right: you can assign or sell (license) your own patent/patent application to others Art 71-73 EPC One Time right: when a patented product is put on the market the patent right is exhausted Passive right: prevents others to exploit your invention, does not guarantee that you will exploit it PatentRights

5. Patents define Innovation and Market Strategy and help you: to recover your R & D investments and to safeguard the results to avoid waste of Human and Financial Resources to retain your market position to increase your market share to introduce new products and processes to bring together inventors and investors to provide recognition and motivation for employees to promote creativity and innovation Why Write a Patent(I)

6. Five Roles played by Patents Informative Role Defensive Role Co-operation Role Aggressive Role Financial Role Why Write a Patent(II)

7. Informative Role Every patent is published in exchange to the rights conferred Every patent is abstracted and indexed in several databases Patents used to gain a reputation and promote themselves Patents used as proof of technical ability to encourage potential partners to form joint ventures Patents used to mislead competitors (disinformative role) Five Roles played by Patents

8. Defensive Role Defensive publication: the invention of a published patent (application) cannot be patented again Publishing a patent application is easier and cheaper than publishing in a technical journal (no peer/editorial review) Owning many patents in many technology areas to be used against future competitors A large patent portfolio discourages and disorientates competitors Patents protect a market at its outset („pioneer“ patents) Patents build a protective wall around an „pioneer“ patent („fence“ patents) Five Roles played by Patents

9. Co-operation Role Patents are traded to acquire an advantage (licence) of another patent owned by competitor (cross-license) or know-how To create mutual respect between competitors and promote co-operation or joint-ventures Five Roles played by Patents

10. Aggressive Role (INVADERS) Patent used directly or indirectly to exclude others from use, produce or sell the same product Patent used for threatening competitors Patent used to prolong the domination on the market: patents for improvements Patent used to scare off competitors not familiar with patent system (DEFENDERS) Patents used for improving a position before negotiations with owner of a master patent: dependent patents may block a master patent Five Roles played by Patents

11. Financial Role Patents used in order to earn money through licensing Patents used as a guarantee for a loan (security) Patents used as an asset when founding a company Creation of business units using internal licensing fees Global tax optimisation through transfer of patent rights Five Roles played by Patents

12. When to Write a Patent CONCEPT DESIGN DEVELOPMENT PROTOTYPE

13. Who should Write a Patent PATENT ATTORNEYS Art 133-134 EPC • they know the formal requirements and the procedure • they know the language of patents • they can advise on the appropriate patent strategy and on the general Intellectual Property Rights (IPRs)

14. Patent Offices in those Countries: where the invention can be produced and/or where the invention can be used and/or where the invention can be sold by the inventor (patentee) or by others (infringers) Where to Write (File) a Patent ?

15. Function of a Patent Application Proposal for the “contract” Disclosure of the invention in a manner sufficiently clear and complete in order to allow a person knowing everything publicly disclosed at the time of the invention to reproduce or carry out the invention without any additional creative activity. Description Claim(s) Drawing(s) Abstract Requirements for a Patent Application Art 78 EPC What to Write in a Patent ?

16. Rule 27 EPC Discuss the prior art State and explain the problem(s) Provide support for the claims as drafted Disclose all possible embodiments Provide support for future amended claims (in case relevant prior art exists) Description

17. 1. Discuss the Prior Art indicate the background art useful to understand the invention (mis)-lead the search and the examination Description

18. 2. State and explain the problem(s) all possible subjective problems, i.e. problems the inventor believes were never solved in the by prior art some possible objective problems, i.e. those problems not solved in the prior art and which will be the bases for submission of amended claims explain the inventive solution(s) Description

19. 3. Provide support for the claims as drafted explain at least one way to carry out the invention as claimed give the technical information necessary to the skilled person disclose in detail the essential features Description

20. 4. Disclose all possible embodiments not only those depicted in the drawings disclose all possible materials, shapes, dimensions, ranges, sequences,...... Description

21. 5. Provide support for future amended claims Disclose as many alternatives as possible Avoid sentences limiting the scope of the application Neverstate that a feature is essential Description

22. Art 69(1) EPC(description/drawings serving for interpretation purposes only!!!) Confer to the applicant/proprietor the broadest protection possible Put the applicant/proprietor in the best condition to enforce his patent against infringers so as to obtain the best results in case an infringement procedure is started Claims: Function

23. Independent Claim (I) Rule 29(2-4) EPC used to define the broadest scope of protection meaning of broadest protection possible: is there any modification, variations, application or use of invention not covered by an independent claim or do not fall within the scope of the claim? broad claims strategic during the examination procedure in the case of amendments Claims: Form and Contents

24. Independent Claim (II) the extent of the protection conferred is determined the terms of the claims and the terms of the claims have to be understood in the light of the description not only the characterizing features determine the protection conferred, but all features defined therein (preamble and characterising part) it should not define any superfluous feature which will deprive the applicant/proprietor of the protection to which he is entitled Claims: Form and Contents

25. Dependent Claim: to defend the application during the granting procedures (fall back positions) to defend the patent during post granting procedures (Oppositions, Appeals, Invalidations) to allow better enforcement of the patent Claims: Form and Contents

26. Dependent Claim: the protection is gradually and not unduly limited each claim confers a protection which is broader than the one conferred by the next claim at least one claim relates to the embodiment exploited by the potential infringer Claims: Form and Contents

27. 1. A laser pointing device comprising an elongated body, an electronic circuit, a battery, a button and a laser source Claim: a BAD one?

28. Claim: a GOOD one? • A pointing device comprising a laser device • A pointing device according to claim 1 further comprising an elongated body. • A pointing device according to claim 2 further comprising an electronic circuit means. • A pointing device according to claim 3 further comprising power supplying means. • A pointing device according to claim 4 wherein said power supplying means is a battery means. • A pointing device according to claim 4 wherein said power supplying means is a rechargeable battery means. • A pointing device according to claim 3 further comprising switching means. • A pointing device according to claim 7 wherein said switching means is a slide button or a touch sensitive button or a push button.

29. Claim: a GOOD one? (cont.) 8. A pointing device according to claim 3 further comprising a laser source. 9. A pointing device according to claim 8 wherein said laser source emits red light. 10. A pointing device according to claim 8 wherein said laser source emits blue light. 11. A pointing device according to claim 3 wherein elongated body has an ergonomic shape. 12. A pointing device according to claim 3 wherein elongated body has a cylindrical cross section.

30. A narrow claim may speed up the granting procedure but will limit the protection conferred A broad claim may slow down the granting procedure but will maximise the protection conferred Claim: BAD vs. GOOD

31. Claim Categories Rule 29(2) EPC Category should be the one corresponding to the invention as put on the market Category should help to detection of infringers (infringement of a process may be difficult to demonstrate, whereas a product is visible) Claims: Form and Contents

32. Claim Categories Category should help to maximize the compensation from infringers (infringement of a process lead to an estimate for the damages, products are countable and damage exactly quantifiable) Compensations vary depending on uses and applications of the invention Claims: Form and Contents

33. The protection conferred by a process claim shall extend to the products directly obtained by such process Art 64(2), 64(3) EPC An independent claim defining the product without reference to the new and inventive process if the product is not per se novel and inventive i.e. a new and inventive process for Aspirin does not give the right to have a stand-alone Aspirin claim. You have only a process claim: In many states the potential infringer is not obliged to give information about the processes carried out In many states it is assumed that the process is carried out (and therefore the patent infringed) ONLY if the product is per se patentable It will be difficult or impossible to prove the infringement and even in the successful case the compensation will be only partial. Claims: example of categories of claims I

34. Compensationis based on the estimatedEconomic Advantageobtained by the infringer You own a patent claiming a Switching Device which is used in an Audio Recording Device produced by the infringer The infringer is copying the whole invention: Compensation3-5 % of the Economic Advantage Economic Advantage = Number of Audio Recording Device sold x (Price differenceorPrice of a single Switching Device) Number of Audio Recording Device sold = 1.000.000 Price of a Switching Device. = 1 Euro Economic Advantage = 1.000.000 Euros Compensation = 3-5% of Economic Advantage = 30.000 – 50.000 Euros Claims: example of categories of claims II

35. Compensation is based on the estimatedEconomic Advantage obtained by the infringer You own a patent claiming “Audio Recording Device comprising a Switching Device according to claim 1” which is produced by the by the infringer. Infringement is directed to a claim for whole recorder, however the switch is only a part of the recorder: Compensation 1 % of the Economic Advantage Number of Audio Recording Device sold = 1.000.000 Price of an Audio Recording Device = 100 Euros Economic Advantage = 100.000.000 Euros Compensation = 1% of Economic Advantage = 1.000.000 Euros !!! Claiming the recorder in addition to the switching device allows for a larger compensation for damages !!! Claims: example of categories of claims III

36. “Pioneer” (Basic) Patents are intended to protect inventions possibly for the life of the patent and cover as many of the applications of the invention as possible - Obtaining the broadest protection possible can slow down the granting procedure - The provisional protection is often not enough to stop an infringement and to obtain damages - A quickly-granted patent (conferring a smaller protection) allows earlier action against an infringer “Fence” Patents are intended to protect a specific version and narrowly cover it without covering the fundamental principles behind it. How to Write a Patent

37. Understand the disclosure of invention as submitted by the client Identifythe problem solved Identify the features which really solve the problem Understand whether these features can support patentability Draft the application including description, claims and drawings ... having in mind the exploitation of the patent! How to Write a Patent

38. SEQUENCE TO BE FOLLOWED DRAWINGS: they usually depict all embodiments and uses of the invention CLAIMS: because the description is directed to the invention(s) as claimed you cannot draft the description if you do not know number and categories of claims 3. DESCRIPTION How to Write a Patent

39. Thank you!!! Most of this presentation and the examples presented come from an original contribution of Mr. Carlo Torti, European Patent Attorney, Grünecker, Kinkeldey, Stockmair & Schwanhäusser, Munich, Germany, torti@grunecker.de