PATENTING T-109.5410 Technology Management in the Telecommunications Industry Aalto University 15.10.2013 PhD Yrjö Raivio Patent Examiner National Board of Patents and Registration of Finland (PRH) yrjo.raivio@prh.fi
Disclaimer A lot of content in this lecture is from official sources, BUT Not all presented material is official Law and conduct varies between patent systems This lecture contains also informal material To shed light on one examiner s views To give some hints, not definitive guidelines, on how to navigate around some common obstacles To give more practical examples law and regulations are generic and hard to cover comprehensively
Background of speaker and PRH Own career In Nokia Data 1984-1994 Nokia Networks & NSN 1994-2009 Aalto University 2010-2013 In PRH since April 2013 PRH First patent given in Finland in 1842 PRH founded in 1942 Around 440 employees, over 100 patent examiners Budget for 2013 47.6 M Revenue: 46.2 M, state: 1.4 M Strategic goals: electronic services, quality & speed
Outline Motivation Intellectual Property Rights Why patents Patent systems What is patentable Patent structure Examples More information
Motivation In Finland only 6% disruptive innovations (ref. 17% int. average) Patenting better integrated into research programs Do not invent the wheel again Overlapping R&D work level 30..50% Patent information often (70..90%) available only through patents (over 30 million), not over conference papers Always check your idea first before investing Over 60% of companies do not utilize patent data Identify novel focus areas and ideas made by others => partners?
Intellectual Property Rights (IPR) Patent Protects inventions having a technical aspect Utility model (exists only in selected countries) Protects inventions having a technical aspect Can be applied to some inventions that are not patentable (the required level of inventiveness is not as high as for patents) Trademark Protects the specific name/label of a product or service Copyright of design Protects the external appearance or form of a product
Why Patents One who has made an invention related to any field of technology that can be applied industrially can be granted a patent and, therefore, a privilege to profit on it professionally After 18 months patent becomes public (unless withdrawn) Precise technical description advances the state of the art In return, privilege is granted to the inventor for up to 20 years Protects the inventor and company Investment on research and development Right to forbid others from using the invention commercially Freedom to operate Licensing Important element for startup value creation
Alternatives to Patents Keep the invention secret Can be applied only if the invention is difficult or impossible to be revealed by the final product Contains risks: 1) someone else later makes the same invention and obtains a patent for it 2) someone else finds out the inventive idea from your product and starts manufacturing the same product Publish the invention No one can patent the invention anymore The invention is free to be used by anyone even industrially
Patentable Subjects Under Finnish Law Three main criteria: Novelty, Inventive step, Industrial applicability Industrial applicability is interpreted broadly For example, agriculture is interpreted as an industry Any physical activity comprising technical features Can be, for example: A product A use of a product A process (method) An apparatus The invention must be possible to implement by a person skilled in the art => repeatable Must be possible according to laws of physics For example, first law of thermodynamics forbids any perpetual motion machine
Non-Patentable Subjects Under Finnish Law Lack of technical effect Discoveries, scientific theories, mathematical methods Artistic creations Plans, rules, methods for intelligent operation, business models, computer programs Display of information Surgical, therapeutic or diagnostic methods Subject matter conflicting good ethics or public order Plants, animals, biological breeding methods
Novelty Patent claim is divided into technical features For example, an apparatus comprising feature F1 and feature F2 characterized in that it comprises also features F3-F5. Novelty search is conducted to establish the state of the art at the time of the application (or priority date) State of the art includes all public material (patents, academic publications, Internet articles, journals, conference presentations etc.) Public material must have a reliable publication date Claim is not novel if all features are disclosed in a single publication (published before the application/priority date)
Inventive Step If the claimed subject matter is not novel, it is not inventive either If the subject matter is not obvious to person skilled in the art, it contains an inventive step The person skilled in the art has in disposal the most relevant technical material that is public at the time of the application Examination process usually establishes good understanding on standard design choices for a person skilled in the art A person skilled in the art knows state of the art at the application (priority) date Can access all public documents Can combine knowledge disclosed in a public document to general knowledge in the art
Industrial Applicability Usually the subject matter of claims is industrially applicable if it: Can be made or used in industry Industrial applicability necessary for a patent, but alone it is not good indication about patentability if the subject matter of the claims is neither novel nor inventive, but is industrially applicable, likelihood to gain a patent is not high Some reoccurring examples of industrially non-patentable subjects Perpetual movement machines, often novel and often not obvious to person skilled in art, but contrasts with basic laws of physics Technical effect not well defined Desired effects instead of technical features e.g., apparatus that makes communication more efficient sounds more like a wish than a solution
Patent Systems World Intellectual Property Organization (WIPO) Umbrella for Intellectual Property Organizations Patent Cooperation Treaty (PCT) WO-prefix EPO (European Patent Office) European Unitary Patent System (in 2014?) EP-prefix National patent offices National scope of IPR protection USPTO (United States/US), JPO (Japan/JP), PRH (Finland/FI), etc. Patent Prosecution Highway (PPH) Provides accelerated patent prosecution procedures by sharing information between some patent offices (for example, PRH & USPTO have PPH agreement)
Patenting in Practice (one example) File an application in one country (you obtain the priority for the invention) Within 12 months, file an application for the same invention in all relevant countries OR Within 12 months, file a PCT application A PCT application does not itself result in the grant of a patent, since there is no such thing as an "international patent", and the grant of patent is a prerogative of each national or regional authority In other words, a PCT application, which establishes a filing date in all contracting states, must be followed up with the step of entering into national or regional phases in order to proceed towards grant of one or more patents
Patent Application Process The application is processed by the patent authority (for example, PRH or EPO) Formal checking of the application (is all information given correctly etc.) Novelty search/examination made by a patent examiner (PRH uses EPOQUENET software for carrying out the examination) 1st decision made by the authority is sent to the applicant The applicant can respond to the decision, if he/she does not agree (usually the applicant revises the claims to obtain novelty and inventiveness) 2nd decision made by the authority response Nth decision made by the authority Final decision patent application is either rejected or a patent is granted
Patent Application Components Title Applicant, Inventor(s), Agent Abstract Priority date Publishing date Classification Kind Code Description Claims Drawings (optional)
Example #1 CONNECTION ESTABLISHMENT IN A WIRELESS TELECOMMUNICATIONS NETWORK Original application: FI982029 US: US6879566 EP: EP1116399 IPC Classification: H04Q7/24, H04Q3/00 Priority date: 21.09.1998, int. filing date: 20.09.1999 and published: 30.03.2000 Part of 3G standards, cannot be circumvented => essential patent, more valuable for the company (and inventor..) Law on employee invention
Example #2 PORTABLE ELECTRONIC DEVICE FOR PHOTO Application: WO2008030779 Applicant: Apple Priority date: 29.06.2007 (first relevant in this case) IPC Classification: G06F3/048 Sweep effect (at 32 min 53 s) presented in January 2007 was prior art according to news Result: WO patent invalidated by German court Even the pinch & stretch feature is an old idea And the touch screen goes to 90s
Example #3 - FACEBOOK First idea Facemash Discussion with Winklevoss brothers to finalize social network service called HarvardConnection.com Combined previous ideas together => Facebook Court fight settlement cost 1.2 M shares, equal to 300 M$ First patent application 2005 Now Facebook has 672 applications (Twitter 3) Lesson?
Example #4 CASE STARTUP Application: Not made (?) Original idea made in the Aalto Cloud Computing Summer School June 2012 Idea: collect information of city areas based on open APIs. Provide compressed data using heat maps for real estate enterprises, city authorities, consumers, tourists etc. Existing applications: WO2007022224; real estate application (Trulia) US2013169666; heat maps (too new to be prior art) Novel idea? Inventive step? Industrial applicability?
More Information PRH offers free counseling Improve your R&D FAQ Check IPR services in your university/company Aalto ACE Read a few patents on the topic you are working on Media often publishes disinformation on patents (Design Patent, Patent pending..) often only application made
Links Search PatInfo by PRH Espacenet by EPO Patentscope by WIPO USPTO search by USPTO Google Discussion FOSS Patents: blog on mobile software patents Free Patents Online: blogs, community, search, consulting
Thank You! Yrjö Raivio yrjo.raivio@prh.fi