Transcript Inventing the Patentable

INVENTING THE
PATENTABLE
17/7/2015
Ellen Hollcroft
INVENTING THE PATENTABLE
Why?
What is patentable?
How do I find something novel?
How do I find something inventive/non-obvious?
How do I know when to talk with a patent
professional?
• How do I avoid destroying my chance at a patent?
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WHY?
• Patents
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Can be a resume builder
Are indicators of the level of innovation
Disseminate technological information
Can be licensed and sold
Attract venture capital
Provide a monopoly
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Ellen Hollcroft
WHY?
• Patents are used as indicators of innovation &
innovation is changing
• Complementing internal R&D of industry with outside
innovations
• Astra Zeneca; J&J
• Open innovation models
• Working with institutions, universities, and other companies
• NPEs seeking radical innovation
• “Pure” innovation companies, licensing to manufacturers
• Intellectual Ventures (35,000)
The struggle to stay ahead in innovation; Haydn Evans; Intellectual Asset Management
November/December 2011
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WHY?
• Patents can be sold
• Microsoft purchase 925 AOL patents and patent
applications in April 2012 for $1.056 billion
Microsoft sells 650 AOL patents to Facebook for $550 million; http://www.iammagazine.com/blog/detail.aspx?g=1a819c80-db80-49f4-a5748257397cd049&q=license#search=%22license%22
• Google purchase of Motorola Mobility $12.5billion
The struggle to stay ahead in innovation; Haydn Evans; Intellectual Asset Management
November/December 2011
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WHY?
• Patents can be licensed
• Motorola Mobility license royalty to Apple
• Patent Pools
• China – SIPO
• From 118 in 2007 to 10,000 in 2012
Official: Patent licensing grows with innovation; Wang Xin; China Daily 28 December
2011
• Several types of license
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WHY?
• Venture Capital
• Study of 9000 portfolio companies of VC firms
• 86% have strong IP assessments
IP in early stage commercial and investment success; Joseph Hadzima, Bruce Bockmann &
Alexander Butler
• Patent data for VC-backed firms in the US from 1976 to 2005
Patent Signalling, Entrepreneurial Performance, and Venture Capital Financing Jerry X. Cao; PoHsuan Hsu This version: September, 2010; Intellectual Asset Management March/April 2010
• 13 interviews with private equity and VC funds operating in
different industries in the Swedish market
Investors and the move to an intellectualized market; Ana Popescu; Intellectual Asset Management
November/December 2010
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WHY?
• Venture Capital
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Ellen Hollcroft
WHY A PATENT?
• Patents
• Compounds, machines, technology, processes, methods of
manufacture or treatment, devices [hard science]
• Trademarks
• Branding/marketing
• Designs
• Functional but stylistic; branding
• Copyright
• Arts, literature, performance, software
• Trade Secret
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WHAT’S PATENTABLE?
• Patentable
• Article 52(1) EPC
• Any invention in all fields of technology, provided that they are
new, involve an inventive step, and are susceptible of industrial
applicability
• 35 USC 101
• A new process, machine, manufacture or composition of matter
• Article 2(1) JP
• A highly advanced creation of technical ideas utilizing the laws
of nature
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WHAT’S NOVEL?
• Anything that is not contained in the Prior Art
• What is prior art?
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Any Evidence your invention is already known
Not just products on the market
Any description in any text from any time in any language
Must be enabling
Publically known, worked, or described
Written or oral description or any other way
Code: EPC Article 54; JP Article 29(1); 35 U.S.C. Section 102
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WHAT’S NON-OBVIOUS/INVENTIVE?
• Obviousness
• Obvious to someone skilled in the art
• Plainly flows from prior art
• Reasonable expectation of success, predictability, flexible
TSM test
• Combining prior art elements via known methods for
predictable results, substitution, use of known technique in
same way or to same device, obvious to try, known in one
field would work in another
• 35 U.S.C. 103
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WHAT’S NON-OBVIOUS/INVENTIVE?
• Obviousness/Inventive Step
• Problem-solution approach, election of optimal materials,
workshop modification, mere aggregation, motivation toward the
claimed invention JP
• JP Article 29(2)
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WHAT’S INVENTIVE?
• Inventive Step (EPO)
• Must solve a technical problem in a non-obvious way
• Determine the closest prior art
• Determine the difference between the closest prior art and the
invention
• The difference is the problem, is the solution of the inventors
obvious?
• EPC Article 56
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OBVIOUSNESS/INVENTIVE STEP
• Comparison table
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USPTO
EPO
JPO
Obviousness
Inventive step
Obviousness
Inventive step
Identify all
related prior art
Identify closest
prior art
Ellen Hollcroft
HONING YOUR IDEA AROUND PRIOR
ART
• Defining Search Parameters
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What are the key concepts of your invention?
What are the key words describing those concepts?
What problem does your invention solve?
What are some key words describing that problem?
What other ways have people solved that problem?
Ellen Hollcroft
HONING YOUR IDEA AROUND PRIOR
ART
• Analyzing the search results
• Does anyone describe your idea and the problem it solves?
• How is your idea better than the search results?
• Would anyone in your field come up with your idea by reading
the search results you found?
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WHEN DO I TALK TO SOMEONE?
• Researching
• Before you invent
• While you’re inventing
• Talking to a Patent Professional
• You’ve done a search but aren’t sure about the results
• You’d like to have a search done
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HOW TO I AVOID DESTRUCTIVENESS?
• Publishers
• Exhibitors
• Teachers/Lecturers
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INVENTING THE PATENTABLE
• What is patentable?
• Avoid what’s been done or is not functional
• How do I find something novel?
• Do a search, avoid prior art.
• How do I find something inventive/non-obvious?
• Consider the search results, solve a problem in a new way.
• How do I know when to talk with a patent
professional?
• Is your idea developed, have you done a search
• How do I avoid destroying my chance at a patent?
• Confidentiality
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