Patent Review Overview Summary of different types of Intellectual Property What is a patent? Why would you want one? What are the requirements for patentability? What are the limits on what can be patented? Ownership of inventions A global perspective on patents Commercial exploitation of patented technology Freedom to operate in a patent thicket

Different types of IP Trade Marks® Copyright © Designs (registered and unregistered) Know how Commercial secrets and confidentiality Patents

What are patents? Patents are rewarded for inventions and to inventors The state can award a 20 year monopoly (maximum duration) in exchange for a public explanation of how the invention works The aim is to encourage innovation and disclosure Once 20 years are up the invention can be used freely by anyone else A patent is not a license to print money. Nor does it give you any right to use your invention. It is a powerful legal tool that can enable you to stop anyone else from using your invention

Why would you want one? Powerful form of protection Protects the idea rather than the implementation No need to show copying. Even an “innocent” infringer can be stopped Patents act as a deterrent to a competitor developing a similar product May strengthen your negotiating position if you infringe someone else’s patent May be a valuable asset in its own right: patents can be licensed and assigned

What can be patented? In Europe a patentable invention is: New Inventive Not excluded from patentability Capable of industrial application

Novelty An invention is new if it does not form part of the “state of the art” The state of the art includes all disclosures that were made available to the public before the filing date This includes written and oral disclosures. Anything that has been sold and anything published online. In other words, the entire stock of publicly available knowledge A grace period is applicable in the US. So - Sometimes patent protection is viable in the US when it is no longer available in Europe

Inventive Step An invention involves an inventive step if it is not obvious (with regard to the state of the art) There may be an inventive step if the invention solves a problem, provides a surprising result, provides an increase in speed, efficiency etc.. There must be a technical solution to a technical problem: a divergence from existing technology that would not be developed by routine experimentation or applying known principles

Limits on patentability (1) In Europe, the following are not regarded as patentable inventions: Discoveries, scientific theories and mathematical methods; Aesthetic creations; Schemes, rules and methods for performing mental acts, playing games or doing business, and programs for computers; Presentations of information Patentability is excluded only to the extent the invention relates to such excluded subject matter as such

Limits on patentability (2) In Europe, patents cannot be granted for inventions the commercial exploitation of which would be contrary to “ordre public” or morality Examples of “immoral” activities include: –processes for cloning human beings –processes for modifying the germ line genetic identity of human beings –uses of human embryos for industrial or commercial purposes –processes for modifying the genetic identity of animals which are likely to cause them suffering without any substantial medical benefit to man or animal, and also animals resulting from such processes

Limits on patentability (3) In Europe, patents cannot be granted for methods of treatment of the human or animal body by surgery or therapy and diagnostic methods practised on the human or animal body.

Ownership of inventions The first owner of an invention is its inventor However, if the inventor is an employee and the invention was made in the course of his normal duties, his employer will own the invention. If there is more than one inventor co-ownership is possible. There is no distinction the significance of inventors’ contributions For universities the employment status of students, post-docs, and consultants is often unclear. Staff members will usually be employees. Most universities do not consider PhD students to be employees, ownership will generally be vested with the student, subject to any agreements associated with their funding

A global perspective Patents are territorial: there is no such thing as an international patent A UK patent can give you the right to stop others from making, selling, using and importing the invention in the UK. It gives no rights in other countries A separate patent is required in each country where protection is required In practice, it is usually sufficient to obtain patents in key territories

Commercial exploitation Various strategies can be used to extract value from patents: Exclude your competitors from using the invention Develop a thicket of patents to deter competitors from even considering your technology Licensing Use the patents to participate in a cross-licensing patent pool Patents as marketing tools Patents as defensive disclosures

Freedom to Operate The consequences for infringing a patent can be severe. Damages can be awarded for all sales involving use of the invention. Unintentional infringement is not a valid defence If you are concerned it is important to contact a patent attorney and ask: –What is protected? –Is the patent valid? Is it in force? –Are licenses available? A UK patent is not infringed by: –Acts done privately and for non-commercial purposes –Acts done for experimental purposes, relating to the subject-matter of the invention