1. Intellectual Property - Patents Chris Mason 12/02/2016

2. Intellectual Property - Overview

3. What are intellectual property rights (IPRs)? For example, intellectual property rights determine the party that has the right to make a product (e.g. an iPhone) and the party that has the right to call a product by its brand name (i.e. “iPhone”) You may own an iPhone by buying an iPhone (a tangible property right), but you still do not have the right to make an iPhone (an intangible property right) IPRs give exclusive rights to the performance of certain “actions” in relation to an “intellectual creation” Intellectual Property - Concept

4. Intellectual Property Rights – Types Different types of intellectual creations = different types of rights Registered rights Patents Registered Design Rights Trade Marks Non-registered rights Unregistered Design Rights Passing off Copyright Confidential information

5. Intellectual Property - Registered Rights RDR– “the appearance” Trade Marks – “the reputation” Patents – “the invention” RDR – Drawings (see picture) Trade mark – Name and/or Logo, e.g. “Dry behind” Patent – The words of a claim, e.g. “A bench having a rotatable surface” A patent (an IPR) gives the owner the exclusive right to MUDOIK (“action”) the “invention”: - Make, use, dispose, offer to dispose, import, or keep the “invention”

6. Intellectual Property - Patents

7. What does a patent look like? - Bibliographic information, background, specific description/examples, claims, drawings, abstract Patent Claim – contains the definition of the “invention” (i.e. the “intellectual creation”)

8. Intellectual Property - Patents What does a patent look like? - Bibliographic information, background, specific description/examples, claims, drawings, abstract

9. Patents – Claim drafting and the application process

10. Business (“Jupiter”) Product (a new sweet dispenser) Patent DesignTrade Mark Use In Business – Sweet Dispenser

11. Sweet Dispenser

12. A sweet dispenser has a hopper and a mount. The hopper is a spheroidal chamber having opposed flanged circular apertures at the top and bottom thereof. The rim of the top flange acts as a seat around which a dependent circular rim of a complimentary blue lid sits and the rim of the bottom circular flange acts as a base for the hopper which … … In use, the lid of the hopper is removed, the material to be dispensed is poured into the hopper and the lid replaced. In its closed position the chute is open to the interior of the hopper such that a pre-determined amount of the material may enter the chamber of the dispensing means. To dispense material, the user pulls down on the handle of the dispensing means which causes the spring-loaded dispensing means to pivot with respect to the support. This movement causes the guard wall to rise and block further material ingress whilst simultaneously lowering … Sweet Dispenser

13. Our job to 1)to prevent other parties from using/selling the product or others like it that achieve the same advantage; and 2)achieve a granted patent 1) No unnecessarily restrictive terms that allow for easy design around whilst still achieving the advantage Dispenser – Patentable?

14. Main advantage – more efficient way to dispense sweets Feature leading to this advantage? - The openable chute in the sidewall allowing sweets to be dispensed through the use of gravity Secondary advantage? – able to dispense a predetermined amount of sweets Feature – a chamber that receives some sweets and then blocks the flow of others while dispensing Further advantage? - Only requires one motion to dispense the predetermined amount of sweets Feature – end walls of the chamber are connected Sweet Dispenser – Patentable?

15. Our job to 1)to prevent other parties from using/selling the product or others like it that achieve the same advantage; and 2)achieve a granted patent 1) No unnecessarily restrictive terms that allow for easy design around whilst still achieving the advantage Claim Draft 1 – A dispenser comprising: a hopper operable to contain a material to be dispensed; and, a dispensing member arranged on a side wall of the dispenser, movable from a first position wherein the material in the hopper is not dispensed from the hopper to a second position wherein the material is dispensed from the hopper. Dispenser – Patentable?

16. UK Patents - Patents Act 1977, European Patent Convention (EPC) 1973 Main requirements The claimed invention must be: 1)Novel, and 2)Inventive Whether an invention is novel and inventive depends upon: - The prior art (what is already publically known) ‘Patentability search and opinion’ Dispenser – Patentable?

17. Application (aka “Prosecution”) Process Patentability review Draft patent specification File patent application Formalities Substantive examination Grant 1 to 3 months“Filing date” Up to 18 months1 to 5 years+2 to 6 years+ Cost = £5k+ for UK protection to £200k+ for international protection

18. Claim Draft 1 – A dispenser comprising: a hopper operable to contain a material to be dispensed; and, a dispensing member arranged on a side wall of the dispenser, movable from a first position wherein the material in the hopper is not dispensed from the hopper to a second position wherein the material is dispensed from the hopper. Dispenser – Patentable? Prior art 1

19. Claim Draft 2 - A portion dispenser comprising: a hopper operable to contain material to be dispensed; and a dispensing member comprising a chamber wherein the dispensing member is movable from a first position wherein a predetermined portion of the material in the hopper is received into the chamber, to a second position wherein the predetermined portion of the material in the chamber is dispensed. Dispenser – Patentable? Prior art 1

20. Application (aka “Prosecution”) Process Patentability review Draft patent specification File patent application Formalities Substantive examination Grant 1 to 3 months“Filing date” Up to 18 months1 to 5 years+2 to 6 years+

21. Application Process File patent application Formalities Substantive examination Grant 1 to 5 years+ 2 to 6 years+ More prior art? Examiner objections? Overcome?

22. Dispenser – Patentable? Prior art 2

23. Claim 1 - A portion dispenser comprising: a hopper operable to contain material to be dispensed; and a dispensing member comprising a chamber wherein the dispensing member is movable from a first position wherein a predetermined portion of the material in the hopper is received into the chamber, to a second position wherein the predetermined portion of the material in the chamber is dispensed.

24. Dispenser – Patentable? Prior art 2 Amended Claim 1 - A portion dispenser comprising: a hopper operable to contain material to be dispensed; and a dispensing member comprising a chamber, a first barrier and a second barrier, wherein the first and second barriers are movable from a first position in which a predetermined portion of the material in the hopper is received into the chamber and the first barrier prevents the portion from being dispensed, to a second position wherein the portion of material in the chamber is dispensed and the second barrier prevents further material entering the chamber from the hopper, and wherein actuation of the first barrier from the first to the second position causes actuation of the second barrier from the first position to the second position.

25. Patents – Other Patentability Requirements

26. Patents – Other Requirements The requirements for patentability go beyond novelty and inventive step: Other requirements 3) Industrial application 4) Does not fall under the exceptions to patentability – i) Inventions the commercial exploitation of which would be contrary to “ordre public” or morality; ii) Plant or animal varieties or essential biological processes for the production of plants or animals; or iii)Methods of treatment of the human or animal body by surgery or therapy and diagnostic methods practised on the human or animal body Industrial application – gene sequences (plausible application) Morality - letter bomb processes for cloning human being, 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 results from such processes. Plant or animal varieties or essential biological processes– does not cover microbiological process

27. Patents – Medical Devices Examples of excluded treatments by surgery: - injection of a contrast agent into the heart, catheterisation and endoscopy. Examples of treatments that are not excluded: - tattooing, piercing, hair removal by optical radiation and micro-abrasion of the skin - i.e. techniques of a routine character performed on uncritical body parts carried out in a non-medical, commercial environment, A treatment or diagnostic method must actually be carried out on the living human or animal body: - Not excluded if practised on a dead human or animal body. - Not excluded are treatment/diagnostic of body tissues or fluids after they have been removed from the human or animal body - as long as the tissues or fluids are not returned to the same body. - thus the treatment of blood for storage in a blood bank or diagnostic testing of blood samples is not excluded, - whereas a treatment of blood by dialysis with the blood being returned to the same body would be excluded. Take home points: - medical methods may be excluded, but - if the device used is new, may be able to get protection for the device - difficulties arise when the invention is the use of a known product in a new way… iii) Methods of treatment of the human or animal body by surgery or therapy and diagnostic methods practised on the human or animal body

28. Business (“Suture Sir”) Product (new improved suture) Patent DesignTrade Mark Use In Business – Suture

29. Scenario 1 – A suture X has new feature A which leads to an improvement Claim 1 - “A suture X having feature A” Broad enough? – Yes Novel? – Yes Inventive? – Yes Industrial application? – Yes Falls under an exception to patentability? – No Granted Claim 2 – “A method of wound closing comprising the use of suture X to close a wound on a human body ” Broad enough? – Yes Novel? – Yes Inventive? – Yes Industrial application? – Yes Falls under an exception to patentability? – Yes Rejected Suture – Patentable?

30. Scenario 2 – The suture Y is known. The invention is the use of suture Y in a new method of wound closing B. Claim 1 - “A suture Y”, Broad enough? – Yes Novel? – No Inventive? – No Industrial application? – Yes Falls under an exception to patentability? – No Rejected Claim 2 – “A method of wound closing comprising the use of suture Y with method B on a human body” Broad enough? – Yes Novel? – Yes Inventive? – Yes Industrial application? – Yes Falls under an exception to patentability? – Likely Yes Rejected Suture – Patentable?

31. Post-grant Renewal fees (every year up to the end of the 20 th year from filing) Defend (asserted invalidity, revocation actions) Exploitation (deterrent, licensing, sale) Enforcement (contentious, litigious and non-litigious) Granted Patent

32. Separate examination process in each territory – e.g. for UK, US, China, Japan, etc… European Patent Office (EPO) – central examination office – at grant becomes separate patent in each state, e.g. a UK patent, a DE patent, a FR patent. Must defend/enforce in each state separately. Upcoming changes – Unitary Patent and Unitary Patent Court Patents – Territorial

33. Patents – Freedom to Operate

34. Freedom to Operate Business (“Jupiter”) Product (a new sweet dispenser) PatentDesignTrade MarkFreedom to Operate

35. IPRs are a negative right – gives power to stop others. Doesn’t give the right to sell a product. Making and selling a product may infringe the patent rights of others Carry out a ‘freedom to operate search and opinion’ - Search for rights owned by competitors in the field - Assess the results for likelihood of infringement In reality, the objective is to provide as much information as is commercially justified to come to a comfortable level of risk Freedom to Operate - Patents

36. Prior art 1 – owned by Saturn - granted and in force in the UK with the claim: A dispenser comprising: a hopper operable to contain a material to be dispensed; and a dispensing member arranged on a side wall of the dispenser operable to dispense the material. Jupiter’s sweet dispenser: - Contains all of the features of prior art 1 - If Jupiter do any of the MUDOIK actions with their sweet dispenser they will infringe - Jupiter liable for injunction, damages/account of profits, delivery up/destruction of products, declaration of validity & infringement - To avoid infringement Jupiter must stop actions or obtain licence (cross-licence?) or invalidate (earlier prior art?) Sweet Dispenser – FTO?

37. Patents – Key Points

38. Keep it confidential!!! Think about the most significant advantage that your device provides - What are the essential features that lead to that advantage? - What is the best way of doing it? - How else could that be achieved to still obtain at least some of the advantage? Any other secondary advantages? – what features are important here? Free prior art searching tools – Espacenet.com – worldwide database of patents. Don’t forget non-patent literature! Can self-draft and self-file (don’t’) - but once the invention is disclosed publically that is it, stuck with what you have on file. Keep it confidential!!! But that does not mean do not tell anyone – just do not do it publically – Non-disclosure agreement (NDA) Key Points

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