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Inventing the Future – The Role of Patents and Utility Models in Leveraging Technical Innovation in the Market PlaceRon Marchant CB FRSA
Implementation of the National Intellectual Property Strategy and Intellectual Property Rights Protection for Small and Medium Enterprises (SMEs);Bishkek, November, 2013
Outline
Why Innovate
What is a Patent?
What is a Utility Model?
Why should I Patent?
How do I get a Patent or Utility Model?
Patenting Abroad
Leveraging Commercial Value
Enforcement
Some References
Why Innovate?
Innovation is not the same as Invention
It is the application of the invention in a marketable product or process
Benefits of Innovation
Improved process; cost saving; greater productivity
New products new markets
Greater market share; market position
Prevent technological dependence on others
Creates environment for development of technology to meet current and emerging needs
What is a Patent?
Exclusive right to prevent others using an invention
An invention must
Be novel
Involve an “inventive step”, that is, not be obvious
Be capable of industrial application
Scope of exclusivity defined by “patent claims”
Describes how the invention is performed
Territorial in scope; country or region
Limited in time, usually 20 years
Must be maintained by payment of renewal fees
What is a Utility Model?
Similar to a patent, but
Shorter period of exclusivity – 5 years
Cheaper and quicker to obtain
Formal and preliminary search or examination
Restricted to products
Lower level of “inventive step” required
Can be converted into a patent before grant
Search conducted on request by applicant or third party
Why should I Patent
Stronger market position
Greater return on investment; higher profit
Possible income from others for using patent
Access to technology through cross licensing
Open access to new markets
Manage risks of infringement
Attractive to investors and financiers
Powerful litigation tool
Creates good image for company
How do I get a Patent or Utility Model
Before applying
Conduct patent search to assess whether it is worth proceeding – trade secret option?
Decide on coverage desired, national, regional, international
Apply to appropriate Patent Office, Kyrgyzpatent or EAPO
Application must describe the invention in sufficient detail for someone to be able to carry it out – but how much detail?
Application must includes claims defining the scope of protection sought
Both these well be tested during process and decision to grant made
Patenting Abroad – 1
Where should you protect invention?
Wherever you wish to prevent a competitor stealing your market
Where the invention could be commercialized
The main markets for similar products
Where a cost/benefit analysis indicates expenditure is justified
Location of main competitors
Where could the product be manufactured
Ease of enforcement in country
Patenting Abroad - 2Use Eurasian System for Turkmenistan, Belarus, Tajikistan, Russian Federation, Kazakhstan, Azerbaijan, Kyrgyz Republic, Armenia,
Consider using PCT
Gives time to assess context of invention
Opens way for multinational protection following single international search and examination
Leveraging Commercial ValueThe Patent by itself does not provide income
It must be a commercial success
Therefore it must be successfully exploited using a sound marketing plan
Consider combining with other IP – design, trademark, copyright
Main options
Produce the product or work the process yourself and market yourself
Sell the patent to someone who is capable of marketing the product/process
Give others a licence to produce the product or carry out the process
Find a partner for a joint venture
Someone who complements what you have
EnforcementThe patent owner is responsible for enforcement
But may be transferred as part of licence agreement
Can be expensive
Take professional advice
Can be destructive
Take steps carefully
Only go to full litigation in court if necessary
Send initial “cease and desist” letter
Apply for “interim injunction”
Consider import injunction
Consider negotiating license agreement
Consider Alternative Dispute Resolution
Some References
“Inventing the Future; A Guide to Patents for SMEs ” http://www.wipo.int/export/sites/www/freepublications/en/sme/917/wipo_pub_917.pdf
“Protecting your invention abroad” http://www.wipo.int/pct/en/faqs/faqs.html
WIPO Arbitration Centre arbiter.wipo.int/center/index.html.