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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)
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After 18 months patent becomes public (unless withdrawn) Precise technical description advances the state of the art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 =>
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
Discussion
FOSS Patents: blog on
mobile software patents
Free Patents Online: blogs,
community, search,
consulting
