Marketing industriale e direzione d'impresa

Transcription

1 Marketing industriale e direzione d'impresa Modulo di: KNOWLEDGE MANAGEMENT & VALUE CREATION (Frosinone ott-dic 2012, 18 hours 2 CFU) PEng. PhD. Francesco Rogo LEZIONE 5 f.rogo@unicas.it Nils Omland, May

2 KNOWLEDGE MANAGEMENT KNOWLDGE PROCESSES CREATIVITY & INNOVATION INNOVATION & VALUE CREATION INTELLECTUAL PROPERTY LESSON IV Protect Your Ideas Introduction to patents LESSON V (<- Today Lesson) Searching for patents IP STRATEGIC MANAGEMENT Nils Omland, May 2009

3 Protect your ideas An introduction to patents for students of engineering PART 2 Terms of use This patent teaching kit has been prepared by the European Patent Office (EPO). The patent teaching kit and any of its parts may be modified or translated on condition that the EPO is credited as the provider of the original, and that it is clearly stated that changes have been made to the original material, that the modified or translated version has not been authorized by the EPO, and that the EPO shall not be responsible for the correctness of any such modified or translated version. Any other reference to the EPO, and in particular its official logo, shall be removed from any such version. The patent teaching kit and any of its parts, as well as any modification or translation thereof, shall be used for non-commercial purposes only.

4 What can be patented at the European Patent Office? Inventions that are new to the world (no previous public notice) inventive (i.e. not an "obvious" solution) susceptible of industrial application NOT: Mere ideas not reduced to practice Software as such (but algorithms that achieve technical results) Business methods Medical therapies, plant varieties, etc. See Articles 52 and 53 EPC in Core module 1 Protect your ideas 4/41

5 What not to do when considering filing a patent application No publication prior to filing e.g. no article, press release, conference presentation/poster/proceedings or blog entry No sale of products incorporating the invention prior to filing No lecture or presentation prior to filing except under a non-disclosure agreement (NDA) Seek professional advice soon! File before others do! Core module 1 Protect your ideas 5/41

6 Where to apply for a patent National patent offices National patent valid only in the country where it is granted Non-residents can also apply for a patent One year of "priority" for subsequent applications European Patent Office A European patent is equivalent to national patents in the countries where it is granted (the applicant chooses the countries) Via the Patent Cooperation Treaty Just one application for up to 141 countries After the initial application phase, the international application leads to multiple national patent examination procedures Decisions with cost implications can be delayed until months after filing (e.g. choice of countries to file in) There is no such thing as an international patent! Core module 1 Protect your ideas 6/41

7 Optional The patent procedure at the EPO Application Search report Publication of application Publication of grant Opposition period expires 18 months Withdraw? Approx. 4-5 years 9 months Core module 1 Protect your ideas 7/41

8 Optional The PCT procedure Possible prior patent application (priority) PCT patent application Publication 18 months after priority date Applicant decides: preliminary examination? 22 months after priority date No Yes Direct entry into national/regional phase Preliminary examination National phase: months after first filing Core module 1 Protect your ideas 8/41

9 Advantages and disadvantages of patenting Advantages Disadvantages Exclusivity enables investment and higher returns on investment Strong, enforceable legal right Makes invention tradable (licensing) Reveals invention to competitors (after 18 months) Can be expensive Patent enforceable only after grant (this can take 4-5 years) Core module 1 Protect your ideas 9/41

10 Alternatives to patenting Information disclosure (publishing) Cheap Prevents others from patenting the same invention Does not offer exclusivity Reveals the invention to competitors Secrecy (creating a trade secret) Cheap (but there is the cost of maintaining secrecy) Does not reveal the invention No protection against reverseengineering/duplication of invention Difficult to enforce "Secrets" often leak quite fast Do nothing No effort required Does not offer exclusivity Competitors will often learn details Core module 1 Protect your ideas 10/41

11 How patents are used Protecting products and processes Increasing turnover and profits Attracting investors Licensing Cross-licensing Blocking competitors Building reputation Not used Core module 1 Protect your ideas 11/41

12 Optional Licensing income of US universities Source: AUTM US licensing survey 2004 Core module 1 Protect your ideas 12/41

13 Share of patents, % Optional The value of European patents Patent value Average value: Median (50% worth less/more): Source: Ceccagnoli et al., approximately EUR 6 million. EUR = typical value. Core module 1 Protect your ideas 13/41

14 Optional Share of patent value classes in total portfolio value Just 3% of all patents! Just 10% of all patents! More than 50% of the overall value is derived from just 3% of all patents. More than 80% of the overall value is derived from just 10% of all patents. Core module 1 Protect your ideas 14/41

15 Patent strategy Offensive (searching infringement) / defensive (publishing) Internationalisation Kind of exploitation: licensing or own use Optional Patent management Patent information Keep abreast of technology Avoid infringing patents Understand the Competitive landscape: Patent information holds detailed information on the technology of most competitors worldwide. If analysed correctly, it can give important insights into the industry in general and the strategy of competitors in particular. Communication Compile convincing evidence that your patents are valuable Inform investors and banks, clients and prospective employees Maintenance Pay renewal fees, observe deadlines Strengthen important patents and get rid of ones with no value Core module 1 Protect your ideas 15/41

16 25% of all R&D efforts... are wasted each year on inventions that have already been invented. Don't start R&D until you have done a search! Core module 1 Protect your ideas 16/41

17 Optional Core module 1 Protect your ideas 17/41

18 Much information only available in patents Published elsewhere Published in patents Patents focus on how to make things work, while scientific articles focus on the scientific contribution and experimentation evidence 80% found only in patents! Where do secretive competitors publish their R&D? Core module 1 Protect your ideas 18/41

19 Solutions found in patent documents 90% Free to use 10% Protected Reasons why most patent documents describe inventions that are free to use: Application rejected/withdrawn or patent invalidated Payment of renewal fees discontinued (owner sees no further value in the patent) Patent has lapsed (usually after 20 years) "Old" solutions are not necessarily "outdated". Examples: antibiotics, superconductors Core module 1 Protect your ideas 19/41

20 Searching for patents can be easy... Free worldwide patent information is available at Core module 1 Protect your ideas 20/41

21 but some basic knowledge is needed! Beware of "naïve" keyword searches such as... Spring "Energy storing means" Applicants frequently use broad concepts instead of intuitive keywords to describe their inventions, either to broaden the scope of the patent or to deliberately make it harder to find. Core module 1 Protect your ideas 21/41

22 This kind of "jargon" is often used to broaden the scope of the patent... Transistor "Semiconductor switching device with a control electrode" Core module 1 Protect your ideas 22/41

23 Sometimes, the applicant simply doesn't want his patent to be found Toy ball "Spherical object with floppy filaments" Core module 1 Protect your ideas 23/41

24 Sometimes, the applicant simply doesn't want his patent to be found Ball bearing "A plurality of balls" Core module 1 Protect your ideas 24/41

25 One way of circumventing the problems with keywords is to use the European Patent Classification (ECLA) or International Patent Classification (IPC) instead. Patent examiners classify each patent document into one or more technology classes, which can be searched for in databases. ECLA is a hierarchical system that allows both very broad and also very detailed searches Core module 1 Protect your ideas 25/41

26 Find out how to search for patents! Core module 1 Protect your ideas 26/41

27 Searching for patents How to use the Espacenet database

28 Espacenet is... a database of 70 million records containing patent data with almost worldwide coverage a source of technical information designed for scientists and engineers also used by patent experts Core module 1 Protect your ideas 28/41

29 Core module 1 Protect your ideas 29/41

30 Keyword searches or technology class searches? Keyword searches Patent applicants don't use a common language Legal implications Scope of protection Hide from competitors Hard to find the right keywords Good results usually require professional patent search experience Technology class searches Each patent classified by patent professionals IPC is hierarchical and very detailed: you can gradually narrow down searches Descriptions of classes written in such a way as to be easily found and understood Little experience required BUT: IPC classes won't match your needs 100% Core module 1 Protect your ideas 30/41

31 Optional Patent jargon writing instrument = pen Following slides provide examples from the fields of - electronics - general technology - mechanical engineering - chemistry - pharmaceuticals giving an idea of what to expect when searching for and reading patents help to illustrate the kind of difficulties one might encounter when performing keyword searches. Core module 1 Protect your ideas 31/41

32 Optional Patent jargon in electronics electrical power source for electronic circuits = battery semiconductor switching device with a control electrode = transistor galvanically isolated electrical coupling means = transformer Core module 1 Protect your ideas 32/41

33 Optional Patent jargon in electronics photo-transmitting device = LED (light-emitting diode) arrangement for tapping power from an electrical cable = current collector Core module 1 Protect your ideas 33/41

34 Optional Patent jargon in general technology elongate member = pipe, riser, cable or optical fibre wing = door or window Core module 1 Protect your ideas 34/41

35 Optional Patent jargon in general technology energy-storing means = spring fastening means = nail, screw or rivet, etc. Core module 1 Protect your ideas 35/41

36 Optional Patent jargon in general technology a flexible member = membrane or diaphragm locking means = U-shaped retainer, etc. Core module 1 Protect your ideas 36/41

37 Optional Patent jargon in chemistry water- and oil-repellent surface water-soluble or water-dispersible polymer superabsorbent expanded styrenic (co)polymer polyisoprene ionomer graft copolymer of vinyl aromatic monomers on a butadiene rubber aromatic polyester Teflon polyacrylic acid (salt) or polyvinyl alcohol gel of polyacrylic acid (salt) polystyrene foam; Styrofoam natural rubber copolymer of ethylene and salts of acrylic acid ABS (the plastic of which LEGO bricks are made) PET (polyethylene terephthalate) Nils Omland, May 2009

38 Optional Patent jargon in chemistry A composition comprising A, B and C = a mixture of at least A, B and C, and possibly other components Example: A composition comprising a solution of lactic acid in alcohol/water Wine! A composition consisting of A, B and C = a mixture in which only A, B and C are present Example: A composition consisting of a solution of lactic acid in alcohol/water Wine is now excluded, since it comprises many more products than just lactic acid, alcohol and water. A composition consisting essentially of A, B, and C = a mixture of A, B and C which may include further components provided they do not negatively affect the effect of the invention Example: A composition consisting essentially of a solution of lactic acid in alcohol/water Wine might be included if the other components in wine do not prevent the effect of the invention being obtained. Core module 1 Protect your ideas 38/41

39 Optional Patent jargon in chemistry/pharmaceuticals A composition comprising water and glycerol "comprising" = "containing" = "consisting of = further ingredients may also be present further ingredients may also be present only the ingredients listed are present Core module 1 Protect your ideas 39/41

40 Optional Patent jargon in pharmaceuticals ophthalmic solution = a solution suitable for the application to the eye (for example, NOT a sodium hydroxide solution with a ph of 13) pharmaceutically acceptable carrier = any substance that the expert working in the field (= person skilled in the art) would use for preparing a medicament (examples: cellulose, glycerol, starch) device for mixing the pharmaceutical ingredients = any apparatus or mixer which is suitable for this purpose. It need not necessarily come from the pharmaceutical area and may be used for a different purpose (example: a household mixer) Nils Omland, May 2009

41 Optional Patent jargon in pharmaceuticals pharmaceutical composition = exception to the principle explained: comprising X and Y for use intended use is taken into consideration in the treatment of disease Z (instead of just a "suitable for" check) if - the composition has not been used in medicine before (= first medical use) or - at least the specific use has not been described before (= second medical use) Nils Omland, May 2009

42 Classification search The highest hierarchical level of the ECLA system. Nils Omland, May 2009

43 Wanted: air-conditioning technology for buses air condition* (bus* OR coach*) Core module 1 Protect your ideas 43/41

44 Our search results: relevant ECLA classes If one was only interested in air-conditioning devices for vehicles carrying large numbers of passengers e.g. buses, then he could choose sub-group /00H2 only. Core module 1 Protect your ideas 44/41

45 Searching for patents in the relevant classes Core module 1 Protect your ideas 45/41

46 Adding further criteria to your search Only EP applications Only applications published in a certain year? Only applications by certain inventors? Core module 1 Protect your ideas 46/41

47 Espacenet result list Core module 1 Protect your ideas 47/41

48 "Cited documents" lists prior patents that have been found to be related or identical to the present one. "Citing documents" lists later patents that refer to this one. Core module 1 Protect your ideas 48/41

49 View list of citing documents Citing documents for EP (PCR, invented by Nobel Laureate Kary Mullis) Very influential! the Nobel Prizewinning "polymerase chain reaction" used to copy DNA are frequently cited by later patents that use and adapt the technology. Core module 1 Protect your ideas 49/41

50 View or print original document Not all patents are available in all languages in fact, many patents aren t even available in English. Core module 1 Protect your ideas 50/41

51 Machine translation of description and claims Core module 1 Protect your ideas 51/41

52 INPADOC legal status Core module 1 Protect your ideas 52/41

53 Detailed information on European patent applications Core module 1 Protect your ideas 53/41

54 Context-sensitive help and assistance Further info: When starting your next project or thesis, remember to search the patent literature first! Core module 1 Protect your ideas 54/41

55 Exploiting Patent Information Patent Exercise 1. Improvements in or relating to obstacle advisory systems and methods Applicant: Selex Communications SpA Inventors: Cottalasso Maurizio Priority date: Publication number: IT2001TO00546 Gruppo 1 SIMONE CIMAROLI STEFANIA CARFAGNA SERGIO PIETRANTUONO SILVIA DEL GIGANTE FRANCESCA RITA DI RUSSO BENEDETTA CUOZZO ERNESTO RAINALDI 2. A system for localization inside tunnels using satellite signals Applicant: Telespazio Inventors: Mazzenga Franco; Saitto Antonio; Di Mambro Gino Priority date: Publication number: WO2005IT00128 Gruppo 2 LUCA DE SANTIS STEFANO LISI STEFANO DEL BROCCO ELISA FERRARI ANTONIO DE NUNZIO FABIO VIOLA GABRILE DEL GRECO Nils Omland, May 2009

56 Technical analysis Identify patents which can be exploited (licensed or sold): not all patents can be commercialised. Core technology patents are strategic weapons which shall be exploited internally (product differentiation) Analyse the patent and the patent technology (evaluate state of the art -> the patent could be aged ) Analise which other technology sectors can be contaminated by the patent technology (technology transfer) Core module 1 Protect your ideas 56/41

57 Market Analysis Analise the possible target companies differentiating: Competitors Non-core sectors companies And depending on: technology sector patent territorial coverage Define whether tha patent can/shall be licensed or sold Analyse the market size Core module 1 Protect your ideas 57/41

58 Riferimenti Designed by EPO for use by university lecturers, it contains everything may need to provide students with a comprehensive introduction to the patent system, including information on how to file patent applications and search for existing patents. It is made up of core modules: - as introductions for students of science, engineering, medicine, law and business administration, comprising information on intellectual property rights, basic facts about patents, the essentials of filing for a patent, help deciding whether or not to patent, and a guide to using patents as a source of information. And sub-modules: - Searching for existing patents - how to use the - Espacenet database - the use of patents by a university spin-off understanding patent claims. Nils Omland, May