1. Conference on Intellectual Property Rights for SMEs organized by TAIEX in co-operation with WIPO and the Turkish Patent Institute Istanbul, 10 – 11 January 2005
Building a Competitive Edge:
Protecting Inventions by
Utility Models and/or Patents: Case Studies
Karl Rackette
Freiburg, Germany

2. Building a Competitive Edge: Protecting Inventions by Utility Models and/or Patents: Case Studies

3. Building a Competitive Edge: Protecting Inventions by Utility Models and/or Patents: Case Studies

4. Travel Iron US Patent 4,524,263
Building a Competitive Edge: Protecting Inventions by Utility Models and/or Patents: Case Studies

5. Travel Iron US Patent 4,524,263
Building a Competitive Edge: Protecting Inventions by Utility Models and/or Patents: Case Studies

6. Travel Iron US Patent 4,524,263
Building a Competitive Edge: Protecting Inventions by Utility Models and/or Patents: Case Studies

7. Travel Iron US Patent 4,524,263
Building a Competitive Edge: Protecting Inventions by Utility Models and/or Patents: Case Studies

8. Travel Iron US Patent 4,524,263
Building a Competitive Edge: Protecting Inventions by Utility Models and/or Patents: Case Studies

9. Travel Iron US Patent 4,524,263
Building a Competitive Edge: Protecting Inventions by Utility Models and/or Patents: Case Studies

10. Identifying an Invention
What is the new invention?
What is the desired scope of protection?
Where is the protection needed?
Building a Competitive Edge: Protecting Inventions by Utility Models and/or Patents: Case Studies

11. Questions to the Inventor for Identifying the Invention
How is the invention constructed?
How does it work?
Is there any critical feature for an effective solution to the problem underlying the invention?
Building a Competitive Edge: Protecting Inventions by Utility Models and/or Patents: Case Studies

12. Questions to the Inventor for Identifying the Invention (2)
What are the effects of the features of the invention?
How else may these effects be achieved?
Why do you think that the invention is new?
What state of the art or what prior art do you know?
What is the closest or most pertinent prior art in your opinion?
What is the most important difference between the closest prior art and the new invention?
Building a Competitive Edge: Protecting Inventions by Utility Models and/or Patents: Case Studies

13. Questions to the Inventor for Identifying the Invention (3)
What advantages does the invention have over the the closest prior art due to that most important difference?
What is the problem that is solved by the invention due to that difference?
How and why does the invention solve this problem?
Which of the new features of the invention makes the solution possible?
How is the problem solved in the prior art?
Building a Competitive Edge: Protecting Inventions by Utility Models and/or Patents: Case Studies

14. Questions to the Inventor for Identifying the Invention (4)
What arguments could one put forward to a patent examiner in a patent office or a judge in a court to show that the invention is not obvious to other experts?
What do you want to prevent competitors from doing?
How could a competitor design around the new invention?
Building a Competitive Edge: Protecting Inventions by Utility Models and/or Patents: Case Studies

15. Questions to the Inventor for Identifying the Invention (5)
Do you intend to use the invention in your own business?
Are you planning to sell or license your invention?
Where do you want to get a patent?
Building a Competitive Edge: Protecting Inventions by Utility Models and/or Patents: Case Studies

16. Basic Idea Underlying the Patent System
In exchange
for a limited-term right
to exclude others
from making, using or selling the claimed invention
in the territory covered by the patent right,
the inventor must provide
a complete and accurate public description
(and in the USA the best mode of "practicing" it).
Building a Competitive Edge: Protecting Inventions by Utility Models and/or Patents: Case Studies

17. Who Grants Patents? A patent is granted for a limited territory by a
national patent office
or by a
regional office that does the work for a number of countries, such as the
European Patent Office,
Eurasian Patent Organization
African Regional Industrial Property Organization
Organisation Africane de la Proprieté Industrielle
Building a Competitive Edge: Protecting Inventions by Utility Models and/or Patents: Case Studies

18. Patent A patent is a right granted and published
for any device, substance, method or process,
which is
new,
involves an inventive step and
is susceptible of industrial application.
Building a Competitive Edge: Protecting Inventions by Utility Models and/or Patents: Case Studies

19. Protecting Innovations by Utility Model
Similar to patent
Sometimes called „petty patent“, „innovation patent“
Shorter term of protection (between 7 and 10 years)
Only examination as to form
No examination as to substance prior to registration
Simpler faster registration process
Cheaper to obtain and to maintain
Less stringent „inventive step“ requirements than for patents
Building a Competitive Edge: Protecting Inventions by Utility Models and/or Patents: Case Studies

20. Protecting Innovations by Utility Model
Primarily for mechanical innovations
Only for certain fields of technology and only for products but not for processes
Particularly suited for for SMEs that make „minor“ improvements
Only a small number of countries provide the option of utility model protection e.g. Australia, Austria, Belgium, China, France, Germany, Italy, Japan, Malaysia, Philippines, Korea, Turkey etc.
Building a Competitive Edge: Protecting Inventions by Utility Models and/or Patents: Case Studies

21. What Can Be Patented? Patents shall be available for any inventions,
whether products or processes,
in all fields of technology
provided that they are
new
involve an inventive step
and are capable of industrial application.
Building a Competitive Edge: Protecting Inventions by Utility Models and/or Patents: Case Studies

22. Novelty An invention is new if it has not been publicly disclosed
in any form, anywhere in the world.
Building a Competitive Edge: Protecting Inventions by Utility Models and/or Patents: Case Studies

23. Inventive Step The inventive step means
that the invention is not obvious
to someone with knowledge and experience in the technological field of the invention.
Building a Competitive Edge: Protecting Inventions by Utility Models and/or Patents: Case Studies

24. What Can NOT Be Protected in the European Patent Office?
Discoveries
Scientific theories
Mathematical methods
Aesthetic creations
Methods for performing mental acts
Methods for treatment of the human body by surgery or therapy and diagnostic methods
(Computer programs, business methods as such)
Building a Competitive Edge: Protecting Inventions by Utility Models and/or Patents: Case Studies

25. Patented Black Forest Cake Cutter
Building a Competitive Edge: Protecting Inventions by Utility Models and/or Patents: Case Studies

26. German Published Patent Application
Building a Competitive Edge: Protecting Inventions by Utility Models and/or Patents: Case Studies

27. German Published Patent Application
TRANSLATION:
In a cake cutter having an essentially U-shaped piece (1),
a cutting wire (5) is stretched between a first limb (2) and
a second limb (3) and has a plurality of elevations and recesses.The elevations and recesses may be formed by teeth, indentations or undulations. Preferably, the cutting wire is twisted round itself, about its own longitudinal axis, with a plurality of turns.
Building a Competitive Edge: Protecting Inventions by Utility Models and/or Patents: Case Studies

28. In a cake cutter having an essentially U-shaped piece (1), a cutting wire (5) is stretched between a first limb (2) and a second limb (3) and has a plurality of elevations and recesses.The elevations and recesses may be formed by teeth, indentations or undulations. Preferably, the cutting wire is twisted round itself, about its own longitudinal axis, with a plurality of turns.
Building a Competitive Edge: Protecting Inventions by Utility Models and/or Patents: Case Studies

29. Patents From Filing to Grant
filing of an application
examination as to formalities
prior art search
examination as to substance
grant and publication
(enforcement of patent protection)
Building a Competitive Edge: Protecting Inventions by Utility Models and/or Patents: Case Studies

30. When Do You Need To File?
A patent application must be filed as soon as possible after the invention is completed.
"Premature disclosure" may bar patentability.
Building a Competitive Edge: Protecting Inventions by Utility Models and/or Patents: Case Studies

31. How Is a Patent Granted?
The first step in securing a patent is the filing of a patent application.
The patent application generally contains the title of the invention, as well as an indication of its technical field; it must include the background and a description of the invention, in clear language and enough detail that an individual with an average understanding of the field could use or reproduce the invention.
Building a Competitive Edge: Protecting Inventions by Utility Models and/or Patents: Case Studies

32. Disclosure of the Invention Article 83 European Patent Convention
The European patent application must
disclose the invention in a manner
sufficiently clear and complete
for it to be carried out by a person skilled in the art.
Building a Competitive Edge: Protecting Inventions by Utility Models and/or Patents: Case Studies

33. Article 123(2) EPC- Amendments
(2) A European patent application or a European patent
may not be amended
in such a way that it contains subject-matter which extends beyond the content of the application as filed.
Building a Competitive Edge: Protecting Inventions by Utility Models and/or Patents: Case Studies

34. How Is a Patent Granted?
Descriptions are usually accompanied by visual materials such as drawings, plans, or diagrams to better describe the invention.
The application also contains various "claims", that is, information which determines the extent of protection granted by the patent.
Building a Competitive Edge: Protecting Inventions by Utility Models and/or Patents: Case Studies

35. Claims
A series of numbered statements in a patent specification, usually following the description, that define the invention and establish the scope of the monopoly conferred by the patent.
At least one such statement (usually the first) will be self contained - this is known as an independent claim.
Others - known as dependent claims - refer to previous claims and using wording such as
”... as claimed in claim 1 or claim 2...”
Building a Competitive Edge: Protecting Inventions by Utility Models and/or Patents: Case Studies

36. Value of a Patent
Ultimately, it is the claims which will dictate the value of the patent.
Even if the invention is described, if it is not covered by the claims, there are no patent rights.
The applicant, however, will ultimately attempt to retain in the application the broadest claims since the eventual commercial potential will be based on the breadth of the invention.
Building a Competitive Edge: Protecting Inventions by Utility Models and/or Patents: Case Studies

37. How Do You Get Protection? Part 1
Identify the invention after its submission
Discussion with the inventor(s)
Ask questions
Prior art (patent searches made?)
Deficiencies of the prior art
Problem to be solved
Solution proposed
Possible modifications
Possible infringements
Building a Competitive Edge: Protecting Inventions by Utility Models and/or Patents: Case Studies

38. How Do You Get Protection? Part 2
Preparing a patent application
Decide which drawings show the invention
Draft (a) broad independent claim(s)
Draft a number of dependent claims
for preferred embodiments of the invention
for alternatives
for what will keep infringers away from the market
Building a Competitive Edge: Protecting Inventions by Utility Models and/or Patents: Case Studies

39. How Do You Get Protection? Part 3
Draft a description
State the title
Specify the technical field
Indicate the background art (cite the documents)
Disclose the invention as claimed (problem, solution, advantageous effects)
Briefly describe the figures in the drawings
Set forth at least the best mode for carrying out the invention (preferred embodiment)
Building a Competitive Edge: Protecting Inventions by Utility Models and/or Patents: Case Studies

40. How Do You Get Protection? Part 4
Filing a patent application
Review the claims (novel? inventive? scope!!!$$$)
Finalize the drawings
Prepare the filing documents after review by the inventor
Abstract
Designation of inventor
Application form (designation of states in which protection is desired)
File a request with the application papers and pay the fees at a national or regional patent office
Building a Competitive Edge: Protecting Inventions by Utility Models and/or Patents: Case Studies

41. How Do You Get Protection? Part 5
Prosecuting a patent application
Request search / examination
Amend claims / description (withdrawal to avoid publication?)
Convince the examiner
Clarity of claims
Original disclosure of the invention
Novelty of the claims
Inventive step
Building a Competitive Edge: Protecting Inventions by Utility Models and/or Patents: Case Studies

42. How Do You Get Protection? Part 6
Grant of the patent
The patentee from now on is entitled to exclude competitors from making use of the claimed invention for a limited time span (protection)
The public gets full information about the new invention so that everybody may make use of it after the patent has expired (printed publication)
Maintenance (annual fees to keep the patent in force)
Building a Competitive Edge: Protecting Inventions by Utility Models and/or Patents: Case Studies

43. Filing a Utility Model or Patent Application
first filing at Office in home country
later filing abroad (claiming priority)
national patent / utility model
regional patent / utility model
international patent application
Building a Competitive Edge: Protecting Inventions by Utility Models and/or Patents: Case Studies

44. Swiss Patent for Fischer
Building a Competitive Edge: Protecting Inventions by Utility Models and/or Patents: Case Studies

45. Arcuate Helical Spring
Building a Competitive Edge: Protecting Inventions by Utility Models and/or Patents: Case Studies

46. Inefficient Arcuate Helical Spring
Building a Competitive Edge: Protecting Inventions by Utility Models and/or Patents: Case Studies

47. Helical Spring Driven in Sliding Motion
Building a Competitive Edge: Protecting Inventions by Utility Models and/or Patents: Case Studies

48. Daar Mechanism
Building a Competitive Edge: Protecting Inventions by Utility Models and/or Patents: Case Studies

49. Complicated Hair Plucking Device
Building a Competitive Edge: Protecting Inventions by Utility Models and/or Patents: Case Studies

50. The Epilady Patent
Building a Competitive Edge: Protecting Inventions by Utility Models and/or Patents: Case Studies

51. Depilatory Apparatus
Building a Competitive Edge: Protecting Inventions by Utility Models and/or Patents: Case Studies

52. Helical Spring Employed
Building a Competitive Edge: Protecting Inventions by Utility Models and/or Patents: Case Studies

53. Infringing Device?
Building a Competitive Edge: Protecting Inventions by Utility Models and/or Patents: Case Studies

54. Rubber Rod With Slits
Building a Competitive Edge: Protecting Inventions by Utility Models and/or Patents: Case Studies

55. Thank you for your attention!
THE END
Thank you for your attention!
Building a Competitive Edge: Protecting Inventions by Utility Models and/or Patents: Case Studies