Inventing the Future – The Role of Patents and Utility Models in Leveraging Technical Innovation in the Market Place Ron Marchant CB FRSA Implementation of the National Intellectual Property Strategy and Intellectual Property Rights Protection for Small and Medium Enterprises (SMEs);Bishkek, November, 2013

Outline Why Innovate What is a Patent? What is a Utility Model? Why should I Patent? How do I get a Patent or Utility Model? Patenting Abroad Leveraging Commercial Value Enforcement Some References

Why Innovate? Innovation is not the same as Invention It is the application of the invention in a marketable product or process Benefits of Innovation Improved process; cost saving; greater productivity New products new markets Greater market share; market position Prevent technological dependence on others Creates environment for development of technology to meet current and emerging needs

What is a Patent? Exclusive right to prevent others using an invention An invention must Be novel Involve an “inventive step”, that is, not be obvious Be capable of industrial application Scope of exclusivity defined by “patent claims” Describes how the invention is performed Territorial in scope; country or region Limited in time, usually 20 years Must be maintained by payment of renewal fees

What is a Utility Model? Similar to a patent, but Shorter period of exclusivity – 5 years Cheaper and quicker to obtain Formal and preliminary search or examination Restricted to products Lower level of “inventive step” required Can be converted into a patent before grant Search conducted on request by applicant or third party

Why should I Patent Stronger market position Greater return on investment; higher profit Possible income from others for using patent Access to technology through cross licensing Open access to new markets Manage risks of infringement Attractive to investors and financiers Powerful litigation tool Creates good image for company

How do I get a Patent or Utility Model Before applying Conduct patent search to assess whether it is worth proceeding – trade secret option? Decide on coverage desired, national, regional, international Apply to appropriate Patent Office, Kyrgyzpatent or EAPO Application must describe the invention in sufficient detail for someone to be able to carry it out – but how much detail? Application must includes claims defining the scope of protection sought Both these well be tested during process and decision to grant made

Patenting Abroad – 1 Where should you protect invention? Wherever you wish to prevent a competitor stealing your market Where the invention could be commercialized The main markets for similar products Where a cost/benefit analysis indicates expenditure is justified Location of main competitors Where could the product be manufactured Ease of enforcement in country

Patenting Abroad - 2 Use Eurasian System for Turkmenistan, Belarus, Tajikistan, Russian Federation, Kazakhstan, Azerbaijan, Kyrgyz Republic, Armenia, Consider using PCT Gives time to assess context of invention Opens way for multinational protection following single international search and examination

Leveraging Commercial Value The Patent by itself does not provide income It must be a commercial success Therefore it must be successfully exploited using a sound marketing plan Consider combining with other IP – design, trademark, copyright Main options Produce the product or work the process yourself and market yourself Sell the patent to someone who is capable of marketing the product/process Give others a licence to produce the product or carry out the process Find a partner for a joint venture Someone who complements what you have

Enforcement The patent owner is responsible for enforcement But may be transferred as part of licence agreement Can be expensive Take professional advice Can be destructive Take steps carefully Only go to full litigation in court if necessary Send initial “cease and desist” letter Apply for “interim injunction” Consider import injunction Consider negotiating license agreement Consider Alternative Dispute Resolution

Some References “Inventing the Future; A Guide to Patents for SMEs ” sme/917/wipo_pub_917.pdf sme/917/wipo_pub_917.pdf “Protecting your invention abroad” WIPO Arbitration Centre arbiter.wipo.int/center/index.html.