1. ip4inno Case study: Search ≠ Search
Suitable for use with Modules:
Patent Basics (Module 1C)
Evaluating and Managing Patents – Using patent information (Module 3A)
IP Enforcement (Module 5A)
Patent Enforcement (Module 5C)
Key Learning Goals are:
-          People need to understand the concept of (protectable) follow-up inventions and dependent patents. This is most crucial and few people from the non-IP world understand this. -          People need to understand that having a patent is a different story from being allowed to sell a product.
The name, venue and date fields are to be left for trainers to complete whenever they run their own training.
The author is Dr. Benedikt Neuburger partner with the patent law firm Zimmermann&Partner situated in Munich, Germany. Dr. Neuburger holds a Diploma of Physics, a Ph.D. in Economics, a Masters in Business Research (MBR) and is qualified German and European Patent Attorney. Zimmermann&Partner has been conducting numerous grant, opposition, nullity, and infringement proceedings, and also provides and has gained extensive expertise in the practical application of patent law.
Dr. Benedikt Neuburger, MBR
European Patent Attorney
Name of speaker
Venue & date

2. Outline of the case SME … Then… Question: What went wrong?
has come up with a valuable invention
undertakes a search and finds relevant prior art
thus does not apply for a patent
starts selling
Then…
Competitor C sues SME for patent infringement
SME learns that it could have filed a patent application but now it‘s too late
Question: What went wrong?
What the Speaker could say:
This case study is about a most important aspect that few people in the non-patent world know and consider. Let’s have a look.
In this case, there is an SME that seems to have applied the proper approach: After having made an invention, it undertakes a search in order to see whether they can apply for a patent. Since they find relevant prior art – which is not further specified at this stage – they do not apply for a patent, but start selling the product.
>1
They can‘t believe their eyes when they receive a letter from the court informing them that their competitor C has sued them for patent infringement based on a patent of C. They contact a patent attorney and have to learn in addition to that that it would have been possible to file a patent application for SME at the time they had decided not to. Obviously, now it is too late.
>2
The question is thus – what went wrong? The audience is invited to share their first thoughts. 2

3. Distinguish: An invention is not known so far
(matter of patentability)
An invention is not protected so far
(matter of infringement)
What the Speaker could say:
The goal of this case study is that people need to understand the concept of a protectable follow-up invention, on the one hand, and dependent patents, on the other. This is very important and it is the author’s experience that only few people in the non-IP world understand this concept and difference. In other terms, searching for prior art in order to decide whether a patent application can be filed is a completely different story from searching for granted patents in order to see whether the own product will infringe other patents.
This slide shall highlight the difference. Whether an invention is known so far is a matter of patentability, namely, of novelty and maybe inventive activity. It is a question whether the technical content of the invention has been made available to the public already somewhere in the world at any time and in any language. If it hasn‘t been made available to the public completely identically, then the invention may still be “new” in patent law terms. However, if similar content has been made available to the public already, the invention can still be considered obvious for a person skilled in the art and thus not patentable either because of lack of inventive activity. In summation, the question as to whether an invention is known in the art, and consequently the search aiming at clarifying whether a patent application can be filed for an invention is, is a technical question. (Of course, “technical” still in the sense of how the patent law applies this technical approach).
Thereto in contrast, the question as to whether an invention, such as a product that is offered in the market, is protected or not is far more a legal question. It is a matter of infringement. In order to determine this question, the product that is offered or sold is compared with the protection scope of a patent. The protection scope of the patent is defined in the so called “claims”. The claims of a patent typically also include the technical invention. However, they normally embrace much more because in most cases the claims are directed at the general concept and functionality of the invention rather than detailed or specified embodiments thereof. Understanding the claims of a patent is thus an indispensible prerequisite for judging whether a product could fall under the patent scope of other patents. Undertaking a search in this sense is normally called “freedom to operate analysis”. It has to clarify whether a product falls under one or more granted patent(s) that is/are still in force.
Please note that the technical invention described in one of these patents might be completely different from the product. If, however, the protection scope of the patent is broad and general enough to cover also the specific product, the product infringes the patent.

4. Is an invention new? Diesel engine Diesel engine with
several cylinders
Diesel engine with
Injection
What the Speaker could say:
What was given as explanation in the slide before shall be illustrated in view of an easy example. Everyone in the audience will know the diesel engine and that once, a long time ago, there was Mr. Diesel who came up with this machine. For the present discussion we do not care about the lapse of a patent after twenty years but direct our attention only to the concept of the follow-up inventions and the dependent patents.
>1
As stated, once there was Mr. Diesel who came up with the diesel engine represented by the green area. Without going into detail of Mr. Diesel’s patent, we can certainly assume that therein he disclosed the most basic concept of the diesel combustion engine by compressing the diesel air mixture in a cylinder. Since this general concept was new, he was allowed to a huge patent protection scope covering this concept in most general terms.
Later on, and we ignore that this might have been more than twenty years later on, there were many improvements on the original diesel engine and nowadays we would certainly find tens of thousands or even more patents of the diesel engine. Three examples are given in the slide, namely, …
>2
…the diesel engine with injection, the diesel engine with several cylinders and the diesel engine with exhaust return. The question to the audience now is: Are these inventions new in view of the original diesel patent? In other terms, should a patent have been granted to these “follow-up inventions”?
In terms of the slide before, we are thus handling a question on the left hand side, that is, we are dealing with a matter of patentability (and not yet of infringement).
Diesel engine with
exhaust return

5. Most important principle in patent law
If the general is known, it is possible to get a patent
for the specific
If the specific is known, it is no longer possible to get
a patent for the general
Second invention:
Diesel engine with
injection
First invention:
Diesel engine
What the Speaker could say:
Let’s hope very much that the audience has decided that the follow-up inventions such as the diesel engine with several cylinders, the one with the injection or the one with the exhaust return, are inventions that are new over the general concept of Mr. Diesel and, without knowing any further details, can probably also not be considered obvious at the date when they were made.
>1
This brings us to a situation where Mr. Diesel has got his patent for the general diesel engine and also all the follow-up inventors have obtained their patents, such as the one with the injection diesel engine.
>2
In more general terms, as can be read in the box on the upper part of this slide, the most fundamental principle for all SMEs interested in filing patents reads: If the general is known, it is possible to get a patent for the specific, however, if the specific is known, it is no longer to get a patent for the general.
Let’s have a look at the latter rule in view of the next slide.
Patent
possible
Patent
possible

6. Most important principle in patent law
If the general is known, it is possible to get a patent
for the specific
If the specific is known, it is no longer possible to get
a patent for the general
First invention:
Diesel engine with
injection
Later: Patent for
general
diesel engine?
What the Speaker could say:
Let’s stay with the given example and imagine, albeit it sounds somewhat strange, that …
>1
…the first invention was already the diesel engine having the injection method.
>2
Later on someone tries to get a patent for the diesel engine in general.
Now what does the audience think, who should be given a patent?
>3
Evidently, inventing the diesel engine right away with injection is certainly worth a patent.
>4
But if we think of someone else, later on, filing for a patent on the diesel engine in general, we have to agree that this is no longer new. What could be new of course, is the diesel engine operating without injection, dependent on what was disclosed in the patent application about the diesel engine with injection. However, the diesel engine in general obviously includes both the diesel engine with injection and the diesel engine without injection. The diesel engine with engine is no longer new, that is, it is known in the prior art. It is thus not possible to get a patent for the general diesel engine anymore.
The Speaker could once more read out:
The underlying principle in this case is still the same, namely, that it is no longer to get a patent for the general if the specific is known already.
Lack of
novelty!!
Patent
possible

7. Another example: Body with surface
Known in prior art:
Surface = Steel
Invention:
Surface = Metal
The Speaker could say:
To deepen the understanding here, let’s have a look at another example. That’s an easy one. Let’s imagine a body with a surface where the material of the surface matters (for instance, a pan). So let’s imagine that, so far, all that has been used and known in the art is to use steel on the surface. Now someone files to get a patent for protection of metal as surface.
Please let the audience decide whether a patent shall be granted in this situation, i.e., whether the use of metal is new.
Before we answer the question, let’s imagine that the inventor has come up with the use of another material, such as titanium, instead of steel and thus would like to protect this. Given our present situation, this seems new indeed since steel is not titanium. Dependant on whether this was a standard means for the person skilled in the art or not, this could also involve an inventive activity and thus a patent for the use of titanium on the surface could generally be granted.
Someone from the audience could then propose to apply for a patent covering “surface made of metal other than steel”. In other words, this patent application would be directed at the green area excluding the red area. This seems to be a clever approach and would apparently be new (s. diagram!). It would, however, have to be seen whether the concept of generally avoiding steel by the use of any other metal would be considered as being non-obvious for the person skilled in the art or whether this would be considered as a non-inventive approach to avoid the prior art.
>1
Back from the little detour to the original question. In the present case, evidently, a patent is not possible since steel is a subset of metal, hence metal is not new over steel.
Patent possible?
No! Lack of novelty!

8. Other way round? Patent possible ? Novelty? Inventive activity? MAYBE!
Invention:
Surface = Steel
Known in the art:
Surface = Metal
Patent possible ?
Novelty?
Inventive activity?
What the Speaker could say:
Let’s have a look at the situation the other way around, that is, let the prior art talk about metal only (without explicitly mentioning steel). Now let the invention be to use steel on the surface.
The audience should give their opinion whether a patent would generally be possible or not in this situation.
The Speaker might also go back two slides to the box repeating that a patent is still possible for the specific if the general is known. We have such a situation in the present case.
>1
The audience is invited to share their thoughts about novelty and inventive activity.
>2
Since metal is known in the art without further indication of steel, apparently, steel as such is not known in the art, in other terms, it is new in the sense of the patent law. A patent could be possible.
>3
It remains to be seen, however, in the present situation whether it would be considered inventive. For instance, if the use of a large amount of steel is required for the body we are talking about, it seems that the person skilled in the art immediately would think of steel as a standard solution. In this case, the idea doesn’t seem to be inventive so that we would hardly expect a patent grant. However, if, for instance, the surface is supposed to be exposed to salty air so that one would expect the steel surface to corrode rapidly, the use of steel might be counterintuitive and the inventors might have found out a way to use the steel but still avoid corrosion. In this regard, the idea could evidently involve an inventive activity and result in the patent grant.
MAYBE!

9. What about the protection?
Mr. Diesel has protection for the Diesel engine
Inventor II
has protection
for the
Diesel engine
with several
cylinders
What the Speaker could say:
So far it has all been about patentability, that is, we have examined whether the technical content of an invention in view of the available prior art is such that a patent would be granted. In the logic of the first overview slide, we had a look at the left side. Now we turn our attention to the right side, namely, we will look at the protection side. We are using the same example. In other terms, we will see whether the follow-up inventors infringe Mr. Diesel’s patent.
>1
So this slide basically repeats the situation from a protection viewpoint. Mr. Diesel has a patent and thus the protection for the diesel engine in most general terms.
>2
In addition, there is this other inventor (called “inventor II”) who found out that the diesel engine with several cylinders works better. As discussed already, without going into details of an inventive activity examination, he is entitled to a patent based on his “follow-up invention” as well. Hence, let’s assume, Inventor II has a patent for the Diesel engine that operates with several cylinders.

10. Please clarify the legal situation:
Who is allowed to do (e.g. sell) what?
Mr Diesel
Inventor II
Others
What the Speaker could say:
The audience is invited to clarify the legal situation.
The basic idea is that Mr. Diesel has a patent and the second inventor has a patent as well. The question is, who’s allowed to do (i.e. sell, offer, make advertisement with etc.) what? The question shall be solved for all three involved parties, namely:
- Mr Diesel
- Inventor II
- All the others

11. What is a patent (legally)?
The patent gives the owner the right to ban others from
producing;
offering;
putting into circulation;
importing; and/or
using
the protected invention.
What the Speaker could say:
Let’s have a look at this question systematically. The law gives us a direct answer. And what does the law prescribe?
This slide is basically a repetition of what should have been learned in other courses. It repeats what a patent is from a legal viewpoint. The law allows the patent owner to ban others from producing, offering, putting into circulation, importing and/ or using the protected invention. That’s all the law says, and that’s all we need to solve the question.
Of course, we can already realize that the patent law does apparently not explicitly allow the patent owner to use his own invention.
Let’s apply this legal basis for the judgment of who is allowed to do what in the given example.

12. Mr. Diesel is entitled to ban everyone from producing/selling
the Diesel engine
Inventor II is allowed to
ban everyone from having
several cylinders in the
Diesel engine
What the Speaker could say:
>1
Evidently, as shown on the left part of the slide, Mr. Diesel is entitled to ban all others from producing/selling the diesel engine. That is what the law says, and this has to apply to the situation that Mr. Diesel has protection for the diesel engine in most general terms.
>2
On the other hand, the second inventor is allowed to ban all others from having several cylinders in the diesel engine. This is what he invented, and this is what is protected by his patent.

13. Mr. Diesel is not allowed to use several cylinders
(=> is only allowed to have
one-cylinder machines)
Inventor II is not
allowed to use
anything
What the Speaker could say:
Consequently, Mr. Diesel himself is not allowed to use several cylinders. Put in other terms, Mr. Diesel is only allowed to have one cylinder machines. And this is very important: Put in most general terms, the inventor of a fundamental basic invention is not allowed to benefit from protected follow-up inventions (such as the several cylinders in the present case).
>1
As for inventor II, since the protection scope of Mr. Diesel is so large, the inventor II is not allowed to use anything regarding the diesel engine. This situation makes very clear that having a patent does not mean being allowed to make use of the patent by selling or producing the respective protected invention.
In addition, evidently, all others are not allowed to use the diesel engine either. If they were to use the diesel engine without several cylinders, they would infringe Mr. Diesel’s patent, and if they were to use the diesel engine with several cylinders they would infringe both Mr. Diesel’s patent and the patent of the second inventor.

14. Legal situation reg. several cylinders
No one is allowed to sell the Diesel engine
with several cylinders !
Bad situation for Mr. Diesel, inventor II, and all consumers !!
What the Speaker could say:
>1
Hence, the legal situation is as follows: No one is allowed to use/sell the diesel engine with several cylinders, …
>2
which seems to be a rather bad situation for Mr. Diesel himself, the second inventor, and all consumers who could be interested in such a diesel engine.
The audience should be invited to suggest what could be done now. Waiting 20 years until the first patent is lapsed?

15. What now? Mr Diesel and inventor II should talk to each other!
Possible solution: They
allow each other the use
(„cross-license“)
What the Speaker could say:
>1
Mr. Diesel and the second inventor should somehow communicate with each other. A practical solution could be that they mutually grant a license of each patent to the other one (“cross-license”) so that they allow each other the use of the respective invention. For instance, Mr. Diesel could allow the second inventor the production and sales of multiple cylinder diesel engines, but not one cylinder engines, whereas the second inventor could allow Mr. Diesel the production and sales of multiple cylinders as well.
Interesting enough for the audience should be that this way the original monopolistic situation of Mr. Diesel changed to a duopolistic situation. Hence, let’s forget about the old myth that a patent grants a monopoly!
Let’s go even further. Let’s imagine that there is a third inventor having a patent on the diesel engine with injection. Nowadays the mass market of diesel engines certainly consists of diesel engines with several cylinders and injection. Let’s assume all three patents would still be in force. What now?
Evidently, all three inventors have to agree on a solution such as a license to each other, or the like. The once monopoly of Mr. Diesel changed to something worse than a duopoly now!
=> The audience shall hopefully have understood the different concept of assessing prior art and infringement matters. Furthermore, they should have learned that having a patent does not guarantee high incomes forever! The SME that stops keeping pace with the technology, will loose the power of their patents!

16. What went wrong in our case?
Patentability:
SME believed they could not file a patent application because the general was known
After selling the product, filing a patent application is no longer possible
What the Speaker could say:
Now let‘s return to the original case where the SME had undertaken a search for prior art and decided based thereupon not to file for a patent application. They just started selling the product.
>1
To start with the issue of patentability: SME apparently searched and found prior art directed at general inventions whereas they had a follow-up invention as discussed. In the Diesel example given previously, this means, that the inventor providing the Diesel engine with injection would not have filed a patent application because he saw that the Diesel engine in general was already known in the art.
>2
When SME first brought this up to the patent attorneys after being sued by the company C, it was evidently too late. Their own sales rendered their invention not new anymore in the sense of the patent law. Filing a patent application one day after providing the product to the public is no longer possible. 16

17. What went wrong in our case?
Infringement:
SME did not untertake a „freedom to operate“-search
=> They were not aware of the patent they were infringing
What the Speaker could say:
Now from an infringement perspective, SME did not perform a freedom to operate analysis, that is, a search directed at the question whether there are any valid patents, that are still in force, which have a patent protection scope that covers the intended product. As mentioned previously, this is mainly a legal question and people without training and education in the patent law will normally fail to correctly assess this situation. Understanding the claim and thus the scope of a patent can be one of the most complicated issues in patent law. SME had technical guys look for (technical) prior art. Neither were they aware of the need to look at the protection scope, i.e., the claims, nor would they have been capable of doing so. They did not realize that there is the patent of company C which their product infringed (although it might be a completely solution from a purely technical viewpoint).
As a result, SME has to suffer from several drawbacks:
First, it is accused of infringement and SME might lose the law suit and has to stop selling their product. In addition they might be forced to pay substantial damages to company C.
In addition, they missed the chance to file a patent application on their own for their invention which might also have brought them into a position to negotiate with C, for instance, for a license or a cross-license. Having spent a little more, SME could be in a very good IP position now. Due to their fundamental misunderstanding and lack of IP knowledge, they might even go bankrupt now. 17

18. Thank you for your attention!
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