Transcript Powerpoint Presentation

Invention Spotting –
Identifying Patentable Inventions
Martin Vinsome
June 2012
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What is a patent?
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Why patent?

What can be patented?

How do we apply for a patent?
What is a patent?
UK Patents Act 1977 – Section 60
Gives proprietor the right to prevent others
from:- making, using, importing, selling or
offering for sale a product; or


- using or offering for use a process.
Why bother patenting?
1. Restricts unfair competition
– R & D is more expensive than copying
2. Can grant licences
– example - power tools – royalty rate 2% to 5% of
selling price
3. Patent Box – lower corporation tax from April 2013
What can be patented?
European Patent Convention – Article 52
1. European patents shall be granted for any inventions, in
all fields of technology, provided that they are new, involve
an inventive step and are susceptible of industrial
application.
What can be patented?

European Patent Convention – Article 84
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The claims shall define the matter for which
protection is sought.
What does “new” mean?
European Patent Convention – Article 54
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(1) An invention shall be considered to be new if it
does not form part of the state of the art.
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(2) The state of the art shall be held to comprise
everything made available to the public by means of
a written or oral description, by use, or in any other
way, before the date of filing of the European patent
application.
What does “new” mean?
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Therefore extremely important not to disclose
invention before filing patent application
What does “inventive step” mean?
European Patent Convention - Article 56
An invention shall be considered as involving an
inventive step if, having regard to the state of the art, it is
not obvious to a person skilled in the art.
Inventive Step - Problem and Solution
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Guidelines for Examination in the European Patent
Office:
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Three main stages:
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closest prior art

objective technical problem, and
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considering whether or not the claimed invention,
starting from the closest prior art and the objective
technical problem, would have been obvious to the
skilled person.
Inventive Step – Closest Prior Art

Compare the invention with the closest prior art (that
you are aware of)

Identify the new features of the invention
Inventive Step – Objective Technical Problem
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What advantage does the new part of the invention
give?
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This is the solution to the objective technical
problem of the closest prior art
Inventive Step - Obvious
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Would it have been obvious to the skilled person to
solve the problem in this way?
Inventive Step –Skilled person
Guidelines for Examination in the European Patent
Office
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Skilled practitioner in the relevant field, who is
possessed of average knowledge and ability and is
aware of what was common general knowledge in
the art at the relevant date
Example - European Patent EP1741528
Example - European Patent EP1741528
European Patent EP1741528 – as applied for
But – cited by Examiner
But – cited by Examiner
How do we get around this?
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Amend the claims to avoid prior art
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Argue amended claims inventive
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Use problem and solution
Amend the claims
1.
A router (102) comprising:-
a motor housing (104);
a motor provided in the motor housing for turning a cutting tool;
a base (110) for engaging a workpiece, the base including an aperture (108) for allowing
the cutting tool to pass therethrough to engage the workpiece; and
a plurality of support columns (118, 120) mounted to said base for allowing the motor
housing to move relative to the base in a direction substantially parallel to a
rotational axis of the cutting tool, wherein a plurality of said support columns are
spaced apart in a direction transverse to said rotational axis, and said motor housing
is connected to a plurality of said spaced apart support columns by means of a
plurality of support members (112, 140), and a plurality of said support members are
spaced apart in a direction parallel to said rotational axis, wherein at least one said
support column is hollow, characterised in that the base (110) includes at least one
channel (142) connecting the aperture (108) to a respective said hollow support
column (118), the hollow support column connecting the channel with an outlet (144)
such that if a suction source is connected to said outlet dust produced by said cutting
tool is removed.
Problem and solution
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(i) determine the "closest prior art“
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This is US 2003/0002947
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We did not know about it when the application was
filed – this can have important consequences later.
Problem and solution
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(ii) establish the "objective technical problem" to be
solved
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What is the difference?
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What is the advantage?
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What is the problem being solved?
Amend the claims
characterised in that the base (110) includes at least one
channel (142) connecting the aperture (108) to a
respective said hollow support column (118), the hollow
support column connecting the channel with an outlet
(144) such that if a suction source is connected to said
outlet dust produced by said cutting tool is removed.
Objective Technical Problem
It can therefore be seen that the objective problem with
the invention disclosed in D1 is to incorporate means for
removing dust from the working area of the cutting tool
without significantly increasing the size of the router or
obstructing the view of the work area.
Problem and solution
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(iii) consider whether or not the claimed invention,
starting from the closest prior art and the objective
technical problem, would have been obvious to the
skilled person
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i.e. Find a reason why it would not be obvious to the
person skilled in the art to solve the “objective
technical problem” in the same way?
Problem and solution
It is submitted that it is not disclosed or suggestion in
any of the prior art that including a hollow support
column which communicates with a channel in the base
would allow connection to a suction source and removal
of dust from the working area of the cutting tool. In
particular, there is no suggestion or disclosure that a
dust removal system could be added to the router
without significantly increasing the size of the tool or
obstructing its use. It is therefore submitted that
amended claim 1 involves an inventive step.
What can be patented? - continued
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European Patent Convention – Article 52
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2. The following shall not be regarded as inventions:
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schemes, rules and methods for performing mental
acts, playing games or doing business, and
programs for computers;
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presentations of information.
So software is not patentable?
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Not exactly
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(3) Paragraph 2 shall exclude the patentability of the
subject-matter or activities referred to therein only
to the extent to which a European patent application
or European patent relates to such subject-matter or
activities as such.
What can be patented? - Example
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http://www.youtube.com/v/EX2Kdo6FUg&autoplay=1&start=110
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European Patent 0844580
What does this mean?
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Guidelines for Examination in the European Patent
Office
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If the claimed subject-matter has a technical
character it is not excluded from patentability by the
provisions of Art. 52(2) and (3).
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In other words, if it solves a technical problem, it is
not excluded subject matter
What can be patented? - Example
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So how is this patentable?
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Addressing conflicting requirements of displaying
enlarged portion of image and keeping overview of
zone of interest larger than display area solved a
technical problem
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Invention had technical character
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Not computer program as such
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Solution not obvious
How do we apply for a patent?
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European Patent Convention – Article 83
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The European patent application shall disclose the
invention in a manner sufficiently clear and complete
for it to be carried out by a person skilled in the art.
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Detailed description of how the invention works
needs to be included in the application
How do we apply for a patent?
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But
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European Patent Convention – Article 123
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The European patent application or 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.
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Can not add information after filing date
How do we apply for a patent?
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Therefore need detailed description, but can only
rely on information included in the application as
originally filed
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Supply patent attorney with detailed description of
everything – patent attorney should then draft
claims so that there are no unnecessary limitations
in scope
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Any questions?
Thank you
Martin Vinsome
0191 261 8573
[email protected]