Silvia Valenza - Patenting: patentability requirements, patent drafting, patent prosecution

75 Pages·2017·1.41 MB·English

by  Silvia Valenza

Università di Trento
Crash Course 2018
23 May 2018
Patenting:
patentability requirements, patent drafting,
patent prosecution
Silvia Valenza
Chemistry PhD
Qualified Italian and European Patent Attorney
Content
• Introduction to IP rights
• Focus on patents

• Patentability requirements
• Patentable subject-matters
• Novelty
• Inventive step
• Suffciency of disclosure

• Patent drafting

• Patenting procedure
Introduction to IP rights
One product, many IP rights
Trade marks Patents and utility models
 NOKIA  Data-processing methods
 Product "208"  Operating system
 Start-up tone  Operation of user interface
Copyright Designs
 Software  Form of overall phone
 User manuals  Arrangement and shape of buttons
 Ringtones  Position and shape of screen
 Start-up tone
 Images
Trade secrets
 Some technical know-how kept
© Nokia Corporation
"in-house" and not published
Overview of intellectual property
Legal right What for? How?
Original creative or
Copyright Exists automatically
artistic forms
Distinctive identification Use and/or
Trade marks
of products or services registration
Registered
External appearance Registration*
designs
Valuable information Reasonable efforts
Trade secrets
not known to the public to keep secret
Application and
Patents New inventions
examination
Advantages and disadvantages of patenting
Advantages Disdvantages
• Exclusivity enables • Reveals invention
investment and higher to competitors
returns on investment (after 18 months)
• Strong, enforceable legal • Can be expensive
right
• Patent enforceable only after
• Makes invention tradable grant (this can take
(licensing) 4-5 years)
Alternatives to patenting
Information disclosure (publishing)
• Cheap • Does not offer exclusivity
• Prevents others from • Reveals the invention to
patenting the same invention competitors

Secrecy (creating a trade secret)
• Cheap (but there is the cost • No protection against reverse-
of maintaining secrecy) engineering/duplication of invention
• Does not reveal the invention • Difficult to enforce
• "Secrets" often leak quite fast
Do nothing
• No effort required • Does not offer exclusivity
• Competitors will often learn
details
How patents are used
• Protecting products and processes
• Increasing turnover and profits
• Attracting investors
• Licensing
• Cross-licensing
• Blocking competitors
• Building reputation
Licensing income of US universities
Focus on what is a patent