patents as a source of information, as a protective shield ... · publication a document disclosing...

Patents as a

Source of Information, as a

Protective Shield for Innovations and a

Source of Conflicts between CompetitorsSouth-East Asia IPR SME Helpdesk IP Expert

Dr Karl Rackette

29 August 2017

Email: [email protected]: www.ipr-hub.eu

mailto:[email protected]

http://www.ipr-hub.eu/

Speaker’s bio

Name: Karl RacketteFirm: RACKETTE Patentanwälte PartG mbBLocation: Freiburg, GermanyEmail: [email protected]

Dr Karl Rackette is a patent and trademark attorney and the senior partner of the RACKETTEPatentanwälte PartG mbB in Freiburg, Germany. He represents his clients before theGerman Patent and Trademark Office, the German Federal Patent Court, the GermanSupreme Court, the European Patent Office (EPO), the European Union Intellectual PropertyOffice (EUIPO) and the World Intellectual Property Organization (WIPO).After studying Physics in Germany and France he undertook training to become atrademark and patent attorney in 1976. Dr Rackette also obtained a Master of IntellectualProperty Law and Management from the University of Strasbourg.Dr Rackette has been invited on numerous occasions by the EPO, WIPO and otherorganisations to speak in Europe, Africa and Asia. Since 1992 he has been teaching at theCenter for International Intellectual Property Studies (CEIPI) in Strasbourg, France and since1997 he has been a tutor for the South East Asian Patent Drafting Course organized by FICPIin Asia.

29 August 2017Copyright © 2017 South-East Asia IPR SME Helpdesk. All rights reserved.


Agenda


- The Slogan of the South-East Asia IPR SME Helpdesk

- Competitive Analysis / Porter’s 5 Forces Model

- Basic Concepts about Patent Applications and Patents

- Patent Applications and Patents as a Source of Information

- Searching Patent Documents

- Analyzing Bibliographic Information

- Factsheets for IPRs in South-East Asia

- South-East Asia IPR Helpdesk Homepage

- Snapshot: Helpdesk Free Services

- Q&A

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Competive Analysis Porter’s 5 Forces Model


Intellectual Property Rights (IPRs)


• Principle of first-to-file

• Principle of territoriality (geographic limitation)

- e.g. a German or European trademark is NOT protected

automatically in South-East Asia

- consider to register a trademark in one, several or all countries

within South-East Asia

• Principle of limitation in time and scope

- e.g. patents expire within 20 years after filing

- e.g. trademarks expire after 10 years, but can be renewed

Basic Idea of the Patent System


All patent owners are obliged,

in return for patent protection limited in time,

to publicly disclose information on their invention in order

to enrich forever the total body of technical knowledge in the world.

Functions of a Patent


Protection functionInform the public about the scope of protection limited in time and to a particular territory

Information functionTeach the world wide public domain how to use the invention

Principle of Territoriality


Patents (like other IPRs) are territorial

e.g., a German Patent has no force in countries outside the Germany,

just as a Singaporean patent has no force in the Philippines or Germany.

Patent Applications


- National ( e.g. Belgium, Philippines, Singapore)

- Regional (e.g. European, Eurasian)

- International application according to the

- Patent Cooperation Treaty (PCT )

- covering today 152 countries

152 PCT Contracting States


Patents Viewed from 3 Perspectives


Description of a technical innovation filed with a Patent Office

Innovation is

protected by a

right to

exclude others

from using the

innovation as

patented

Competitve advantage caused by the right to exclude others can lead to e.g.

- More bargaining power- Monopoly- Higher prices- Licensing income- Assignment income- Bank loans- Advertisement- Reputation …

PATENT

Patent ABC


P

A

T

E

N

T

=

=

=

Technical Description of a technical solution to a problem

A >

Legal Instrumentto exclude others from commercial exploitation

Business Toolproviding a opportunities in the market

+

+

B >

C >

1429 August 2017

Copyright © 2017 South-East Asia IPR SME Helpdesk. All rights reserved.

Preparing a Patent Application

Time Line and Conflicts of Interests


max 20 years

??years

18 mo

12 mo

0

Filing at home

Claim of priorityPublicationof application

Grant with right to exclude starts

End of right to exclude

Do not publish !

Foreignfiling

Improvementsfiling

Public is informed

Patent canbe enforced

Attacks by competitors

Attacking competitors

Invention in Public domain

16

• Inventorship (who is named as inventor)

• Entitlement to file / ownership issues

• Challenging validity / scope of claims– Lack of novelty

– Lack of inventive step (obviousness)

• Infringement– Scope of protection / right to exclude

– Damages

• Licensing contract provisions


Conflicts Related to Patents

A Patent in One Sentence


To promote progress and prosperity by encouraging technological innovations, the person (or his successor in right), who has made an invention and who has filed subject to formal requirements, with a patent granting authority, for later publication a document disclosing the information necessary for a person skilled in the art, to make use of the invention and that defines in at least one claim, supported by the disclosure of the document, a novel and non-obvious combination of features of the invention useful in any field of technology,

is entitled to a patent that grants for limited times the right to exclude others from commercial exploitation of the invention as claimed (!) within the territory for which the patent granting authority has jurisdiction.

Contents of a Patent Document


• Identification information – Issuing authority, Application No, Publication No

• Legal information– Names and Address of Inventors, Applicants, Proprietors– Dates of Priority, Filing, Publication– Country of Protection, of Priority– Claims

• Technical information– Problem / disadvantages of the prior art– Solution by the invention

1929 August 2017

Copyright © 2017 South-East Asia IPR SME Helpdesk. All rights reserved.

PCT Application (upper part of cover page)

20

• Country / IP Office (SG, PH, US, DE, EP, WO...)• Application / Publication Number• Filing date• Priority date• Title• Abstract• Applicant(s)• Inventor(s)• International Patent Classification


Cover Page of a Patent or Application

21

• Protection function

– Inform the public about the scope of protection limited in time and to a particular territory

• Information function

– Teach the world wide public domain how to use the invention


Why are Patent Documents Published?

Searching in Espacenet www.espacenet.com


Searching in Singapore http://www.ip2.sg


Top PCT Applicants Singapore 2015


Patent Applications in Singapore (1)


Patent Applications in Singapore (2)


Searching in Philippines www.ipophil.gov.ph


Philippine Patent (upper half of front page)


Why use Patent Information


- To find out what already exists and build on it

- To keep track of who is doing what- Find partners

- Find competitors

- Find employees / specialist in a technical field

- Find market trends

- Competitive Intelligence, business strategy (technical, legal & commercial information)

- To avoid infringing other people's patent rights

32

• By using the filing number or publication number

• By using references found in a patent document

– to find prior art

– to find possible infringers

• By using the bibliographic data

• By using the International Patent Classification

• By using well chosen key words

• By using combinations of the above strategies

Searching Patent Information


33

• To check whether an invention may be patented• To check that a product does not infringe an existing

patent• To keep track of competitors• To keep abreast of technological developments

generally (lifelong-learning)• To get information in response to a specific

technological problem• To license in new technology• To study history of technology or social changes

Searching Patent Information


34

• For finding protected information

• For finding out time limits and geographical limits of the protected information

• For finding licensors or licensees

• For finding infringers

• For finding existing solutions to technical problems that are not protected

• For finding translations to avoid translation costs

Analyzing Patent Information


Searching Applicants and …


Analyzing the allows to find

applicants / proprietors (further) cooperating companies

inventors top inventors in a company

IPC symbols fields of expertise

priority data (dates) activity chart of a company

country codes (national patents) importance of foreign markets

designated EPC states foreign markets of interest

PCT national phases foreign markets of interest

Searching Patent Classification and ...



applicants / proprietors market leaders in a technology

inventors (further) experts in a field of technology

IPC symbols related technology

priority data (dates / countries) evolution of a technology

country codes (national patents) importance of foreign markets

designated EPC states major geographical markets

PCT national phases geographic importance

Searching Inventor Names and …



applicants / proprietors employers, assignments

inventors (further) inventor teams, networks

IPC symbols fields of expertise of an inventor

priority data (dates) creativity chart of an inventor

country codes (national patent) value of his inventions

designated EPC states value of his inventions

PCT national phases value of his inventions

Searching Countries of Priority and …



applicants / proprietors top applicants in country/region

inventors top inventors in a country

IPC symbols important technology

priority data (country) origin of foreign filings

country codes importance to file abroad

designated EPC states countries in competition

PCT national phases countries in competition

Country Factsheets


Whether your business is already operating in the South-East Asia oryou are exploring the potential offered by the region, the HelpdeskCountry Factsheets provide you with an overview of key IPconsiderations for each South-East Asia nation.

Download these from www.ipr-hub.eu to receive practical, business-focused information for free!

http://www.ipr-hub.eu/

Country Factsheets


Homepage of the South-East Asia IPR SME Helpdesk


Snapshot: Helpdesk Free Services

Enquiry Helpline

IP Guides & NewslettersE-learning &

Business Tools

Training Workshops& Live Webinars

Website & Blog


Q&A


Name: Dr. Karl Rackette, LL.M.

Firm: RACKETTE Patentanwälte PartG mbB

Location: Freiburg, Germany

Email: [email protected]

Q & A

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