Inventions and Patents - MODULE
Transcript Of Inventions and Patents - MODULE
MODULE
03
Inventions and Patents
MODULE 03. Inventions and Patents
OUTLINE
LEARNING POINT 1: Basics of invention and patent 1. One way of adding value to a product 2. Reasons for patenting an invention LEARNING POINT 2: Patent application 1. Evaluating the patentability of an invention 2. Deciding whether to patent an invention 3. Preparing a patent application
(1) Detailed description of the invention (2) Claims (3) Who prepares (4) After filing a patent application LEARNING POINT 3: Patent infringement 1. Definition of patent infringement 2. If you come across your competitor’s patent LEARNING POINT 4: Patent management system 1. Basic elements of a patent management system 2. Patent portfolio
INTRODUCTION
The term "intellectual property (IP)" is defined as the property resulting from creations of the human mind, the intellect. In this regard, it is fair that the person making efforts for an intellectual creation has some benefit as a result of this endeavor. Probably, the most important among intellectual properties is “patent.”
A patent is an exclusive right granted by a government for an invention, which is a product or a process that provides, in general, a new way of doing something, or offers a new technical solution to a problem. The details on the way of acquiring patents will be provided for protecting precious intellectual properties.
LEARNING OBJECTIVES
1. You understand how to decide whether your new technology or invention should be protected by one or more patents and, if so, how to do so.
2. You know how the grant of a patent over an invention or technology helps you to prevent or have an upper hand in legal disputes that may arise later on.
3. If you are already involved in such a legal dispute, you know how to find a way to minimize the damage or loss.
4. You understand why a patent management strategy is important for the survival and competitiveness of your company and how to develop and implement one.
LEARNING POINT 1: Basics of invention and patent
1. One way of adding value to a product
In an increasingly knowledge‐driven economy, you invariably need creative or inventive ideas or concepts to improve an existing feature, add a useful new feature to your product or develop a totally new product. If your business develops such an idea or concept that solves a technical problem in an unexpectedly new or better way then it should take adequate and timely steps to protect its creative idea, concept or knowledge by converting it into a proprietary technical advantage by patenting it.
More Reference 1‐1: How to invent
Many people seem to think that a flash of inspiration or genius is necessary to spark creativity or inventions or that it invariably involves major scientific discoveries or great research and technological development in big public or corporate R & D laboratories or research‐based universities. Even in the United States of America, till 1930, individual inventors outnumbered every other category in terms of number of patents granted by the US Patent Office. For the first time, in 1931, U.S. corporations received more patents than U.S. individual inventors did and their lead has kept widening ever since.
It must be noted that most of the patented inventions are not major breakthroughs but incremental though non‐obvious technical improvements over the relevant prior art. Also, some famous inventions represented only a modest advance in fundamental technology and were made by ordinary people or individual inventors. In fact, some famous inventions were based on a chance discovery, insight or a mere accident that produced unexpected results that were not only noticed by a prepared mind but also put to a practical business use by the same or another person.
For example, in the 1940’s, on returning home after walking his dog in the mountains, Swiss inventor George de Mestral noticed that his dog and his pants were covered with seeds called ‘burrs’. On taking a closer look at the seeds under the microscope, he recognized the potential for a new fastener
based on the natural hook‐like shapes on the surface of burrs. Initially, his idea was met with resistance. But he persisted in refining his invention by trial and error over eight years. He finally realized that nylon when sewn under infrared light formed tough hooks for the burr side of the fastener. He perfected his invention while working along with a weaver from a textile plant in France and patented it in 1955. Eventually, he had developed two strips of nylon fabric, one containing thousands of small hooks, just like the burrs, and the other with soft loops, just like the fabric of his pants. When the two strips were pressed together, they formed a strong bond, but one that's easily separated, lightweight, durable, and washable. This is how Velcro was born. The inventor went on to establish Velcro Industries to manufacture products that were based on his patented invention.
More Reference 1‐2: Improving functionality of a product
1. Definition of functionality 'Functionality,' that is, technical functionality, may also be described as a useful feature or a performance attribute of an invention, technology or product.
Such a feature may be in a new or improved material, machine, apparatus, testing or measuring equipment, component of a product, product, or a method or process for making any of these. It could also be a new use of an existing material or a new combination of prior known but separate features that produce an unexpected new result. So, broadly speaking, technical functionality of a product refers to its ability to perform a utilitarian process, task or activity. For example, it may provide greater comfort in use, be easier to digest, safer to use, or superior to other products in terms of ease of disposal, maintenance, repair, storage, transport or use.
2. Inventions made by improving functionality of a product Any one or more of such type of functional characteristics may differentiate one product from another.
For improving or creating these types of functional features you would generally need one or more new or improved inventions which may be incorporated into one or more new or improved technologies.
More Reference 1‐3: Sources of inventions
1. From in‐house R&D facilities
If your business has some in‐house research and development (R & D) capability, then it would be creating new or improved technology or adapting existing technology to meet your emerging needs.
2. From the marketing and sales side
Even if your business has no formal R & D facilities, yet some of your employees on the shop floor may be inventing, often without realizing it, while copying competing products or when required making adaptations to your existing products for a variety of reasons. Inventive ideas may come from any part of the company. A particularly good place to find inventions is on the marketing and sales side, who is in touch with the market trends and emerging needs of customers, and may come up with technical solutions to such needs.
3. From outside of the company
However, even when you have in‐house R & D capability, there are many situations in which you may have to look for inventions or technology from outside your company.
a. Free source Sometimes, you may get it free, for example, from the numerous, free, and easily available online patent databases, which include a lot of technologies that were either not protected at all in your market or by now their patent protection has lapsed or expired. As the information contained in a patent is free for anyone to use, both directly and indirectly, depending on the patent's legal status, therefore, you must always try this route, before developing it in‐house and before looking around to buy it from outside.
Most patent savvy businesses skillfully use patent databases, for example, to identify opportunities for adapting or acquiring patented inventions, or technologies. Also, mining a patent database may provide you with a solid basis for developing new ideas and concepts. However, the availability of useful information in patent databases depends on the nature of your business or industry, as some areas of
technology have much more patent activity than others.
b. Licensing But really useful new or improved technology is generally not available free of charge. In order to get useful inventions, you may have to buy or license it from others that are willing to do so on mutually acceptable terms and conditions.
More Reference 1‐4: Identifying inventions
In order to get a Patent, first, you have to identify an invention. If you are an inventor‐entrepreneur then it may be easier for you to identify an invention than if it were made by one or more of your employees in R & D or by a shop floor worker who is responsible for making improvements or adaptations to some machine or process in your manufacturing facility or by someone in the marketing department of your business. In fact, you may be surprised to know that not all inventions of great business merit result from expensive R & D that relies on high‐tech equipment and considerable expense of time, knowledge, skill and other resources. Often, technicians and other shop floor workers, and sometimes even your staff responsible for marketing may make significant contributions to development of an invention to satisfy an identified market need. In other words, anyone in your own business or vendors, suppliers, and other business partners may come up with new ideas and concepts and help you to reduce it to practic
2. Reasons for patenting an invention
(1) Competitive edge, market power and earning more money When you are able to use a patented invention embodied in a technology in your business, it is likely to improve your market power, provide your business with a competitive edge, and help you to make more money.
A patent provides protection when you disclose your invention publicly. For example, it would enable you to go to a fair, exhibition, or an industry trade show and display it without fear. It also enables you to go to a wholesaler or distributor and say with confidence that no one else in that market is
allowed to make, sell, use or distribute your new or improved product without your express approval. This may either diminish, or eliminate competition. If that happens there would be typically increased sales, and if marketed properly, you may be able to charge a higher price because your competition is barred from offering an equal product. So, whenever you are able to use a patented invention embodied in a technology in your business, it is likely to improve your market power, provides your business with a competitive edge over competitors, and help you to make more money.
(2) Add New Revenue Stream You may be able to add a new revenue stream by licensing a patent, or better still, a portfolio of your patents.
(3) Raise funds and attract potential investors a. Patents may be bought, sold or licensed.
b. Patents may also serves as collateral for bank loans.
Patents may attracts potential investors to your company, as they are happy to see some type of barrier to entry for competitors, which may not only protect your investments in R & D and, thereby, improve the return on your investments, but also may provide income through licensing of your patents to others.
Most venture capitalist, investment bankers, financial analysts, and other investors favorably recognize the value of a patent.
(4) Bargaining Chip for Securing “Freedom to Operate” A patent application, a patent or a portfolio of patents, is not only an asset for earning licensing revenue, but it is also often a valuable trading or cross‐licensing asset if your patent is faced with a dominating senior patent and/or complementary patents. It can also be used as a bargaining chip during licensing negotiations with a competitor or when you are accused by another of patent infringement. Generally, when such negotiations result in a stalemate, the two sides agree to cross‐license their patent portfolios to each other, with little or no need for exchanging money.
So, a company, such as yours, may wish to obtain patents simply to defend itself against your competitor's patent portfolio, even though you may not want to take, or be capable of taking, any offensive action by relying on your patent portfolio. In other words, it improves your freedom to operate in the marketplace. The principal goal of a defensive IP strategy should be to obtain the freedom to market planned products. This process requires the identification and neutralization of any patent infringement risks.
(5) Selling the invention Having a patent means you have a tradable asset which can therefore be sold. Generally, a large company will not agree to even talk to you unless one or more patents protect your technology or at least you have filed a patent application to protect your invention. It could be that your talks with a potential buyer end in failure. If that happens, you may need a way to stop such a party from stealing your idea, especially if a confidentiality agreement had not been signed or, even if such an agreement had been signed, if the other party acts in breach of it. Having a patent and thus the right to exclude the others enables you to take preventive action
(6) Strategic Partnerships, Mergers and Acquisitions, IPO, and Higher Sale Price
03
Inventions and Patents
MODULE 03. Inventions and Patents
OUTLINE
LEARNING POINT 1: Basics of invention and patent 1. One way of adding value to a product 2. Reasons for patenting an invention LEARNING POINT 2: Patent application 1. Evaluating the patentability of an invention 2. Deciding whether to patent an invention 3. Preparing a patent application
(1) Detailed description of the invention (2) Claims (3) Who prepares (4) After filing a patent application LEARNING POINT 3: Patent infringement 1. Definition of patent infringement 2. If you come across your competitor’s patent LEARNING POINT 4: Patent management system 1. Basic elements of a patent management system 2. Patent portfolio
INTRODUCTION
The term "intellectual property (IP)" is defined as the property resulting from creations of the human mind, the intellect. In this regard, it is fair that the person making efforts for an intellectual creation has some benefit as a result of this endeavor. Probably, the most important among intellectual properties is “patent.”
A patent is an exclusive right granted by a government for an invention, which is a product or a process that provides, in general, a new way of doing something, or offers a new technical solution to a problem. The details on the way of acquiring patents will be provided for protecting precious intellectual properties.
LEARNING OBJECTIVES
1. You understand how to decide whether your new technology or invention should be protected by one or more patents and, if so, how to do so.
2. You know how the grant of a patent over an invention or technology helps you to prevent or have an upper hand in legal disputes that may arise later on.
3. If you are already involved in such a legal dispute, you know how to find a way to minimize the damage or loss.
4. You understand why a patent management strategy is important for the survival and competitiveness of your company and how to develop and implement one.
LEARNING POINT 1: Basics of invention and patent
1. One way of adding value to a product
In an increasingly knowledge‐driven economy, you invariably need creative or inventive ideas or concepts to improve an existing feature, add a useful new feature to your product or develop a totally new product. If your business develops such an idea or concept that solves a technical problem in an unexpectedly new or better way then it should take adequate and timely steps to protect its creative idea, concept or knowledge by converting it into a proprietary technical advantage by patenting it.
More Reference 1‐1: How to invent
Many people seem to think that a flash of inspiration or genius is necessary to spark creativity or inventions or that it invariably involves major scientific discoveries or great research and technological development in big public or corporate R & D laboratories or research‐based universities. Even in the United States of America, till 1930, individual inventors outnumbered every other category in terms of number of patents granted by the US Patent Office. For the first time, in 1931, U.S. corporations received more patents than U.S. individual inventors did and their lead has kept widening ever since.
It must be noted that most of the patented inventions are not major breakthroughs but incremental though non‐obvious technical improvements over the relevant prior art. Also, some famous inventions represented only a modest advance in fundamental technology and were made by ordinary people or individual inventors. In fact, some famous inventions were based on a chance discovery, insight or a mere accident that produced unexpected results that were not only noticed by a prepared mind but also put to a practical business use by the same or another person.
For example, in the 1940’s, on returning home after walking his dog in the mountains, Swiss inventor George de Mestral noticed that his dog and his pants were covered with seeds called ‘burrs’. On taking a closer look at the seeds under the microscope, he recognized the potential for a new fastener
based on the natural hook‐like shapes on the surface of burrs. Initially, his idea was met with resistance. But he persisted in refining his invention by trial and error over eight years. He finally realized that nylon when sewn under infrared light formed tough hooks for the burr side of the fastener. He perfected his invention while working along with a weaver from a textile plant in France and patented it in 1955. Eventually, he had developed two strips of nylon fabric, one containing thousands of small hooks, just like the burrs, and the other with soft loops, just like the fabric of his pants. When the two strips were pressed together, they formed a strong bond, but one that's easily separated, lightweight, durable, and washable. This is how Velcro was born. The inventor went on to establish Velcro Industries to manufacture products that were based on his patented invention.
More Reference 1‐2: Improving functionality of a product
1. Definition of functionality 'Functionality,' that is, technical functionality, may also be described as a useful feature or a performance attribute of an invention, technology or product.
Such a feature may be in a new or improved material, machine, apparatus, testing or measuring equipment, component of a product, product, or a method or process for making any of these. It could also be a new use of an existing material or a new combination of prior known but separate features that produce an unexpected new result. So, broadly speaking, technical functionality of a product refers to its ability to perform a utilitarian process, task or activity. For example, it may provide greater comfort in use, be easier to digest, safer to use, or superior to other products in terms of ease of disposal, maintenance, repair, storage, transport or use.
2. Inventions made by improving functionality of a product Any one or more of such type of functional characteristics may differentiate one product from another.
For improving or creating these types of functional features you would generally need one or more new or improved inventions which may be incorporated into one or more new or improved technologies.
More Reference 1‐3: Sources of inventions
1. From in‐house R&D facilities
If your business has some in‐house research and development (R & D) capability, then it would be creating new or improved technology or adapting existing technology to meet your emerging needs.
2. From the marketing and sales side
Even if your business has no formal R & D facilities, yet some of your employees on the shop floor may be inventing, often without realizing it, while copying competing products or when required making adaptations to your existing products for a variety of reasons. Inventive ideas may come from any part of the company. A particularly good place to find inventions is on the marketing and sales side, who is in touch with the market trends and emerging needs of customers, and may come up with technical solutions to such needs.
3. From outside of the company
However, even when you have in‐house R & D capability, there are many situations in which you may have to look for inventions or technology from outside your company.
a. Free source Sometimes, you may get it free, for example, from the numerous, free, and easily available online patent databases, which include a lot of technologies that were either not protected at all in your market or by now their patent protection has lapsed or expired. As the information contained in a patent is free for anyone to use, both directly and indirectly, depending on the patent's legal status, therefore, you must always try this route, before developing it in‐house and before looking around to buy it from outside.
Most patent savvy businesses skillfully use patent databases, for example, to identify opportunities for adapting or acquiring patented inventions, or technologies. Also, mining a patent database may provide you with a solid basis for developing new ideas and concepts. However, the availability of useful information in patent databases depends on the nature of your business or industry, as some areas of
technology have much more patent activity than others.
b. Licensing But really useful new or improved technology is generally not available free of charge. In order to get useful inventions, you may have to buy or license it from others that are willing to do so on mutually acceptable terms and conditions.
More Reference 1‐4: Identifying inventions
In order to get a Patent, first, you have to identify an invention. If you are an inventor‐entrepreneur then it may be easier for you to identify an invention than if it were made by one or more of your employees in R & D or by a shop floor worker who is responsible for making improvements or adaptations to some machine or process in your manufacturing facility or by someone in the marketing department of your business. In fact, you may be surprised to know that not all inventions of great business merit result from expensive R & D that relies on high‐tech equipment and considerable expense of time, knowledge, skill and other resources. Often, technicians and other shop floor workers, and sometimes even your staff responsible for marketing may make significant contributions to development of an invention to satisfy an identified market need. In other words, anyone in your own business or vendors, suppliers, and other business partners may come up with new ideas and concepts and help you to reduce it to practic
2. Reasons for patenting an invention
(1) Competitive edge, market power and earning more money When you are able to use a patented invention embodied in a technology in your business, it is likely to improve your market power, provide your business with a competitive edge, and help you to make more money.
A patent provides protection when you disclose your invention publicly. For example, it would enable you to go to a fair, exhibition, or an industry trade show and display it without fear. It also enables you to go to a wholesaler or distributor and say with confidence that no one else in that market is
allowed to make, sell, use or distribute your new or improved product without your express approval. This may either diminish, or eliminate competition. If that happens there would be typically increased sales, and if marketed properly, you may be able to charge a higher price because your competition is barred from offering an equal product. So, whenever you are able to use a patented invention embodied in a technology in your business, it is likely to improve your market power, provides your business with a competitive edge over competitors, and help you to make more money.
(2) Add New Revenue Stream You may be able to add a new revenue stream by licensing a patent, or better still, a portfolio of your patents.
(3) Raise funds and attract potential investors a. Patents may be bought, sold or licensed.
b. Patents may also serves as collateral for bank loans.
Patents may attracts potential investors to your company, as they are happy to see some type of barrier to entry for competitors, which may not only protect your investments in R & D and, thereby, improve the return on your investments, but also may provide income through licensing of your patents to others.
Most venture capitalist, investment bankers, financial analysts, and other investors favorably recognize the value of a patent.
(4) Bargaining Chip for Securing “Freedom to Operate” A patent application, a patent or a portfolio of patents, is not only an asset for earning licensing revenue, but it is also often a valuable trading or cross‐licensing asset if your patent is faced with a dominating senior patent and/or complementary patents. It can also be used as a bargaining chip during licensing negotiations with a competitor or when you are accused by another of patent infringement. Generally, when such negotiations result in a stalemate, the two sides agree to cross‐license their patent portfolios to each other, with little or no need for exchanging money.
So, a company, such as yours, may wish to obtain patents simply to defend itself against your competitor's patent portfolio, even though you may not want to take, or be capable of taking, any offensive action by relying on your patent portfolio. In other words, it improves your freedom to operate in the marketplace. The principal goal of a defensive IP strategy should be to obtain the freedom to market planned products. This process requires the identification and neutralization of any patent infringement risks.
(5) Selling the invention Having a patent means you have a tradable asset which can therefore be sold. Generally, a large company will not agree to even talk to you unless one or more patents protect your technology or at least you have filed a patent application to protect your invention. It could be that your talks with a potential buyer end in failure. If that happens, you may need a way to stop such a party from stealing your idea, especially if a confidentiality agreement had not been signed or, even if such an agreement had been signed, if the other party acts in breach of it. Having a patent and thus the right to exclude the others enables you to take preventive action
(6) Strategic Partnerships, Mergers and Acquisitions, IPO, and Higher Sale Price