Patents

Legal Aspects of Technology Management - NIT Northern Institute of Technology Management, Hamburg · part of my Technology Management MBA · study notes for revision.

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Session six is the patent session, and it is co-taught by an IP manager from industry. That shows in the material. Instead of a tour through statutes, the day works through what a patent office actually does to an application, what a portfolio of roughly 800 patents and utility models spread over more than 100 patent families looks like from the inside, and what happens on the day a company writes to eight competitors at once and tells them to stop selling a product.

The legal core is small enough to memorise. One subsection of the German Patent Act says that patents are granted for inventions in all fields of technology, provided they are new, involve an inventive step and are susceptible of industrial application. Everything else in the chapter hangs off those three words and off a short list of things that are excluded no matter how clever they are.

The other half of the session is about timing and geography, and this is the half that costs technical founders money. A patent is granted by a state, so it stops at that state’s border, and there is no such thing as a worldwide patent however often you see the phrase on a trade fair stand. And because the reward for a patent is exclusivity in exchange for publishing, anything you have already published, said, shown or sold before you filed can be turned back on you as the state of the art.

Tip

The one idea to carry through. A patent is a bargain, not a prize. You hand your invention over to the public, and in return the state gives you, for a limited period, the power to stop other people from commercially making, using, distributing or selling it without your consent. Every hard rule in this chapter is that bargain enforcing itself: you can only sell the secret once, so a disclosure before filing destroys the very novelty you are selling; the state that grants the right can only bind its own territory, so protection has to be bought country by country; and because the deal is defined by what you wrote down, it is the claims and not the nice introduction that decide how much you actually own.

The patent group in the session had a fixed set of research questions to bring back to the class, and they make a good checklist for reading this chapter.

Which authority is responsible for registering a European patent?What are the requirements for a patentable invention?Where can patents be searched?Which legal norms apply to the protection of a European patent?What is required for a patent application?What rights does a European patent confer?

1 · What a patent is, and what it gives its owner

The summary slide states it in five short lines, and they are worth taking apart one at a time, because each one is doing a different job.

What the owner gets the exclusive side

• An exclusive right granted for an invention
• Exclusive use for the owner, described in the deck as a reward for publishing the idea
• The invention cannot be commercially manufactured, used, distributed or sold without the owner’s consent
• Protection for a limited period only, never permanently

What the public gets the price of the right

• The idea is published, which is the consideration the owner pays
• The deck states the underlying policy openly: access to information is a social concern, and creative ideas should be accessible to everybody
• Because the term is limited, the teaching falls into general use once it expires
• Anyone can read the document and design around it, which is a legitimate outcome, not a failure of the system

The patent bargain. Exclusivity in one direction, disclosure in the other, and a clock running on the whole arrangement.

Now read the wording of the third line again and notice what it does not say. It says the invention cannot be made or sold without the owner’s consent. That is a power to withhold consent from other people. It is not a promise that the owner is free to go ahead and manufacture. The general IP characteristics the earlier session sets out point the same way: a right holder has an absolute right of protection, meaning the right to exclude others from use, and nobody may use the right without permission or some legal cause. Exclusion is the whole content of the right.

Caution

The sources never use the phrase freedom to operate, and they never state the rule that a patent on your own invention does not by itself entitle you to practise it. The paragraph above is my own reading of how the slide is worded, not a legal rule I am quoting, so I have deliberately not written down a definition of freedom to operate that the decks do not contain.

2 · What you can get a patent for: the three requirements

The provision the session puts on the screen is the opening subsection of the German Patent Act, and paraphrased it says this: patents are granted for inventions in all fields of technology, so long as they are new, involve an inventive step, and are susceptible of industrial application.

Newnot already part of the state of the art

Inventive stepmore than an obvious next move

Industrially applicablesusceptible of industrial application

The three requirements. They are cumulative: fail any one of them and there is no patent, however impressive the other two look.

The deck also supplies a fuller definition of what an invention is, and it is denser than it first looks. An invention is a creative achievement that solves a technical or non-technical problem using knowledge from the technical field. It is worth protecting if it gives a new teaching for a planned action, resting on an inventive step, which uses controllable forces of nature to achieve a causally foreseeable success directly, and if it is industrially applicable.

Four phrases in that sentence are the ones to hold on to:

• New teaching for a planned action. A patent protects an instruction for doing something, not a description of how the world happens to be.
• Controllable forces of nature. This is the line that keeps the patent system technical. Something has to be harnessed and directed.
• Causally foreseeable success, achieved directly. The teaching has to work, reliably, and by its own mechanism rather than by luck.
• Industrially applicable. The result has to be usable in industry, which is what separates a patentable teaching from an interesting thought.

Caution

The deck gives the three requirements and this definition, and stops there. It does not define novelty, inventive step or industrial application individually, and it does not give the tests an examiner applies to each. I have therefore not written down the definitions those terms carry in practice, because they are not in these sources.

3 · What you cannot get a patent for

The session answers the mirror-image question with a list of examples. Learn it as a set, because the pattern behind it is visible once you see them together: abstractions, mental activity and rules for human conduct are out.

DiscoveriesScientific theoriesMathematical methodsPlans, rules and procedures for mental activities, games or business activitiesPrograms for data processing systemsMedical procedures

The first three are all things you find or reason out rather than build. A discovery tells you that something is the case; a patent needs a teaching that tells you what to do. The fourth covers rules for people rather than for machines, which is why business methods sit outside. The fifth, computer programs, is the one everybody in a technology MBA wants to argue about, and I am recording it exactly as the deck lists it, without adding the exceptions that are not in these sources. The sixth reflects a policy choice rather than a technical one.

The session's own exclusion story: Broccoli XL

A patent covering a particularly long-necked broccoli, easier to harvest because of that neck, was granted by the European Patent Office to a US company in 2013 under the number EP1597965. A competitor and other opponents filed an opposition. The opposition was upheld and the patent revoked. The basis was a new rule of the European Patent Organisation under which plants bred exclusively by conventional methods such as crossing and selection no longer receive patent protection, and the office described the revocation as that rule being put into practice. The scale of the problem is in the same slide: around 80 patents on conventionally bred plants, or on products derived from them, had already been granted, and existing oppositions were to be processed under the new rule. Two lessons in one example. Exclusions can arrive after your patent is granted, and a granted patent is not a settled patent.

4 · The state of the art: the mistake you cannot undo

The requirement that an invention be new is measured against the state of the art, and the session makes the point not with a definition but with an example that nobody forgets.

Ping-pong balls for ship lifting

A cattle transport ship sank in the port of Kuwait in 1964. Danish engineers, working with specialists from BASF, raised the wreck by pumping polystyrene foam into it. When they tried to protect the new process, the patent office rejected them, because the same idea had already been published in a Donald Duck story in May 1949, in which a sunken yacht is lifted by feeding ping-pong balls into it through a hose. The deck files this under unusual state of the art, and files the widely repeated claim that most of the world’s table tennis balls go into salvaging shipwrecks as a myth: the story was recreated once for a television series, and about 100 million balls would be needed to lift a medium-sized freighter, which costs roughly the same as buying a new ship.

Everything a technical founder needs to fear is in that anecdote. The prior disclosure was not made by a competitor, was not in a technical journal, was not in the same country, was not in the same industry, and was not even about a real ship. It was still enough. Publication is publication, whoever made it and whatever form it took, and once your own idea is out there you are the one who has destroyed the novelty of your own application.

The second half of the point is the one that catches people at trade fairs. The session mentions exhibition protection, which gives a six-month grace period after disclosure, and immediately restricts it: it is usable only for trademarks, designs and utility models. Read that restriction as a warning rather than as a comfort, because the right the engineer usually wants is the one not on that list.

So the disclosure control has to happen before the filing, and the session names the two ordinary situations where it slips:

• Working with development partners. A development contract should be in place before the joint work starts.
• Working with suppliers. An NDA covers a lot of the risk, and the deck says so in exactly those terms.

5 · The route from a first filing to national patents

The typical approach the practitioner describes is a sequence, and the order matters more than any single step.

Start with a first national filingpossibly with an examination request straight away

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Claim the priority of that first filingthe first date is now fixed and travels with you

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Start an international application when you need more time to decidethe PCT route buys thinking time, it does not grant anything

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An International Search Authority is designatedthe ISA produces a search report on the application

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The PCT process at WIPO ends with publication of the applicationand then you have to nationalise, country by country

The typical approach. Notice that the international stage produces searches, time and a publication, and never a patent.

The timeline slide fills in the numbers and the branches. It starts from a priority application, using a German filing as its example, which produces a search report from the DPMA. Twelve months later comes the PCT application, which triggers a preliminary search and the search report of the ISA. From there the route forks.

Stage	What it is	The deck’s timing	How wide it reaches
Priority application	A first national filing, for example a German patent application, which yields a DPMA search report	Month 0, the priority date	One country
PCT application	The international application, claiming the priority of the first filing	12 months after the priority application	Opens the door to more than 150 countries
Preliminary search and ISA search report	The searching work done inside the PCT stage	Between the PCT filing and nationalisation	International
Nationalisation of the PCT application	Entering the individual national offices, for example US, CN, EP, JP	30 months until nationalisation	More than 150 countries available
Nationalisation of the EP application	The European route entering the individual states, for example DE, IT, GB, FR	About 2 years until nationalisation	More than 30 countries available

Two details in that figure are easy to skim past and worth marking. First, the European route is drawn as a branch that then has to nationalise again into individual states, so the European stage is not the end of the journey either. Second, the words contact inventor appear at five separate points along the timeline. The inventor is not someone you interview once at the beginning. Every search report, every branch, every national entry raises a technical question that only the inventor can answer, and a company that has lost touch with the inventor by month 30 is in trouble.

Caution

Three gaps I am not filling. The sources say the PCT process ends with publication of the application, but they never state the eighteen month publication rule, so I have not written a month figure for publication. They also never list the parts of a patent application such as description, claims, drawings and abstract; that was set as a research question for the group, and the deck itself supplies no answer, so it is not in these notes. And they never state what a European patent costs or which authority formally registers it, although the legal basis is given in the next section.

6 · Search, examination, grant and opposition

The route above has an administrative spine that the deck exposes in pieces. Put together, it looks like this.

Search what is already out there

Every stage produces a search. The national filing produces a search report from the office, in the deck’s example the DPMA. The PCT stage produces a preliminary search and the search report of the ISA. Searching is also something you should be doing yourself before you file, and the session lists where.

Examination requested, not automatic

The typical approach says you may file directly with an examination request, which tells you that examination is a step you ask for rather than something that simply happens. The deck also groups patents under protection obtained by application and examination, as opposed to rights that arise by use or without registration.

Publication and grant two different events

The session gives a whole slide the heading publication versus grant of patents, which is the distinction to hold: a published application is not a granted patent, and confusing the two is what makes people panic when a competitor’s document lands on their desk.

Opposition the challenge after grant

A granted patent can be attacked. In the broccoli case a competitor and other opponents filed an opposition, the opposition was upheld, and the patent was revoked. The office also indicated that further pending oppositions would be handled under the same new rule.

The administrative spine. Search, then examination on request, then publication, then grant, and even after grant the door to opposition stays open.

For the European route the session names the legal basis rather than the procedure: the European Patent Convention, the ancillary regulations to that convention, and the Guidelines for Examination in the European Patent Office. Those three documents are what the patent group was sent away to read, and they are the answer to the question about which legal norms apply.

7 · Claims are the patent, and how to read one without panicking

This is the most immediately useful slide in the whole session, because it describes the exact moment when a manager is most likely to do something expensive: a competitor’s patent document arrives, and the instinct is to react.

Do not panic, and do not react directlythe arriving document is the start of an analysis, not of a dispute

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Check the status of the application in the registeris this a published application or a granted patent?

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Review the countries it actually coversa right that does not exist where you sell cannot touch you

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Keep the timeline in viewwhere is it in the route from section 5, and what deadline is next?

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Start monitoring, if you were not alreadyone document usually means there is a family behind it

The four checks the session prescribes before anyone answers a competitor’s patent, plus the habit it says should already have been running.

Then the reading instruction itself, which is blunt and correct: read it properly, and understand that the claims are what matter, not the opening passages that recite the state of the art. The introduction of a patent describes the problem and the existing solutions, and it is written to make the invention look impressive. The claims are the part that defines what the owner may stop you from doing. The session adds a third instruction that engineers underrate: review the drawings, because they are often the fastest way to see what the claims are actually about.

8 · Territoriality: there is no worldwide patent

The session includes a photograph taken at a trade fair of a company website advertising a worldwide patent, and it is in the deck as a cautionary exhibit rather than as a good example. The whole architecture of section 5 exists precisely because that thing does not exist. You file nationally, you claim priority, you use the international stage to buy time, and then you nationalise, one office at a time, into the countries you are willing to pay for.

The earlier session states the underlying principle for IP generally: the territorial principle applies, including to online offers such as domains. Two consequences follow for a technology company, and both are commercial rather than legal:

• Protection is a budget, not a decision. More than 150 countries are reachable through the PCT route and more than 30 through the European one, and no normal company buys all of them. Choosing markets is the real patent strategy.
• A gap in the map is a gap in the right. A competitor manufacturing in a country where you never nationalised is not infringing anything, however clearly the product reads on your claims.

9 · How long protection lasts, and what keeps it alive

The comparison slide gives the durations for the whole family of rights. The patent line is the one to memorise here, with the neighbouring rights kept alongside for contrast.

Right	Maximum duration the deck states
Patent	Max. 20 years, with possibly 5 or 5.5 years more for pharmaceutical patents
Utility model	Max. 10 years, including 3 prolongations
Design	5 years plus prolongation, max. 25 years
Trade mark	10 years plus prolongation, and effectively everlasting if the fee payment is made
Copyright	70 years after the death of the author or authors, plus 25 years if a public domain work is reused

The pattern across the table is that only copyright runs on a clock you cannot influence. Every registered right in the list is kept alive by paying, and the trade mark line makes that explicit by tying perpetual protection to continued fee payment. For patents the same mechanism is visible only indirectly in these sources: the resources sheet lists PAVIS-online among the patent managing tools and describes it as free of charge for customers of that annual fee payment provider. An entire category of software exists to make sure companies do not forget to pay, which tells you how routine and how fatal the deadline is.

Caution

The sources state the maximum term and confirm that annual fee payment exists as a service business around patents. They give no fee amounts, no fee schedule and no renewal deadlines, and they do not say from which date the twenty years runs. I have not filled any of that in.

10 · Enforcement, and the reactions it actually produces

The backup section of the deck contains a real enforcement campaign, and it is the most honest slide in the set because it shows that enforcement is a negotiation rather than a verdict. The practitioner’s company took action against eight competitors over a family of motorised roller drives, on the basis of a German patent identified in the deck as DE 103 36 304 B4, and the demand made was a demand of omission: stop selling the product in Germany, because we own the corresponding patent. Four kinds of answer came back.

Compliance the outcome you asked for

• The competitor accepts that the patent stands and agrees to stop selling the product
• This is the clean case, and it is only one of four

Counter-attack your patent is the target now

• The competitor claims to hold good prior art with which to attack the patent
• Enforcing turns your own right into the thing being examined, which is why validity has to be checked before the letter goes out

Turn it into a supply relationship sell instead of sue

• The competitor proposes becoming a customer
• The dispute converts into revenue, and the technology stays yours

Cross licensing trade rights for rights

• The competitor proposes a cross licence
• Which only works if you have something worth trading, which is an argument for a portfolio rather than a single patent

The general remedies available to an IP owner in a conflict are set out in the earlier session and apply here: you can require the infringer to cease and desist from further use, demand information about the use made, including supplier and customer relationships with full accounting, and in the case of damages claim either royalty damages, meaning the licence payments you lost, or the infringer’s entire profits.

Before any of that, the session puts up three statements as a short test, without giving model answers. They are the sentences you will actually hear in a meeting, and each one hides a decision:

The statement in the room	What it is really asking
We never used the technology of this patent, and the competitors do not use it either	Whether this patent is still worth its annual cost, or whether it should be dropped
This patent covers a very good solution, but plenty of workarounds exist, and they are of lower quality	Whether the claims cover the bottleneck or only one route through it
This patent is very important, nearly all competitors use the technology, we must enforce immediately	Whether the right is solid enough to survive being attacked, which is where the prior-art answer above comes from

I am reading those as decisions rather than as answers, because the deck presents them as a test and supplies no solution slide.

11 · Why companies patent, and when a secret is better

The session gives a straight list of benefits, and notably only the first one is legal. The rest are commercial.

Why file the benefits the deck claims

• Provides exclusive rights
• Shows the inventiveness of a company
• Increases company visibility, reputation and value
• Helps to increase sales and margin
• Attracts potential customers and employees
• Treated as mandatory alongside all of it: competitor monitoring is established, and trade fairs are visited regularly

When not to file keep it as a company secret

• The test the deck gives is detectability: if the use of a patented method cannot be demonstrated in the result, it is better not to disclose it
• Because a patent that you cannot prove anyone is using is a published teaching you gave away for nothing
• Some know-how is simply too essential to publish, and the session asks the class to say what the risk of that choice is and what their strategy would be
• The protective instruments for that path are the ones from the trade secrets chapter: development contracts with partners, NDAs with suppliers

The filing decision. Publish and get an enforceable right, or keep it and get no right but no disclosure either. Detectability is what decides which side you are on.

Between those two options sits the session’s picture of how patents work as a system rather than as individual documents. One drawing shows a set of IP-protected solutions lined up as a wall, with a path of a workaround threading between them: each new patent is just another brick in the wall of IP, and a competitor with enough patience walks around it. The second drawing keeps the same wall and adds one idea, the bottleneck: place your protected solutions where the road to the customer’s benefit has to pass, and the workaround stops being available, because there is nowhere else to go.

Finding that place has its own method in the deck, described as the bottleneck approach in a nutshell:

Sketch the conventional solution against the future solutionthe deck calls this a good starting point

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Apply the scissors and cut the functionality the conventional solution providedwhat does the old design quietly do for you?

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Define the disruptionsomething the conventional solution provided by nature and the future solution no longer gives

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List the functionalities the disruption removedthese fall out easily once the disruption is named clearly

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If one of them is essential to the future solution, that is your bottleneck problemabstract the fix with the top level repairing approach and close the bottleneck

The bottleneck approach. It is an invention-finding method aimed deliberately at the place where a patent is worth the most.

12 · Running a portfolio

The last cluster of material is about the machinery a company needs once it has more than a handful of patents, and it is drawn from a portfolio of roughly 800 patents and utility models, organised into more than 100 patent families, alongside more than 200 trademark registrations covering 20 trademarks, a number the deck notes is set to decrease.

A patent family is the reason the counts differ so much: one invention filed as a priority application and then taken through the PCT and nationalised in several countries becomes many documents describing the same teaching. Section 5 explains exactly how a family gets made, and the arithmetic explains why monitoring one competitor’s single publication is never enough.

Valuation. For deciding which members of a portfolio are worth keeping, the session points at IPscore, software developed by the Danish Patent and Trademark Office together with Copenhagen Business School and industry partners, which the EPO then acquired, adopted and distributes. It is free of charge, with registration required. Its assessment runs over five categories:

LegalTechnologyMarketFinanceStrategy

Disposal. The session frames a patent by contrast with a physical object. A material good such as a car can be sold, rented out or scrapped. An intangible asset such as a patent can be sold, licensed, or abandoned by giving up the property right. Licensing is the option with no physical equivalent, and abandonment is the one nobody schedules but everybody eventually needs, because paying to keep a patent that section 10’s first statement describes is pure cost.

Where to look. Patent search is free of charge at the patent offices, and commercial tools named in the session include Questel, PatBase and Thomson Innovation. Monitoring is available through free personal accounts at the DPMA and the EPO. Beyond the registers, the deck lists competitors’ web pages and publications from conferences and trade fairs as sources, and points at dejure.org and gesetze-im-internet.de for German legal texts. The office links given are the DPMA for Germany, the EPO for Europe, WIPO internationally, the USPTO for the United States, and the Chinese and Japanese offices, each with the languages it serves. The resources sheet adds patent management tools such as XPAT, Patricia and PAVIS-online, and points at classification systems, naming CPC for the United States and F-terms for Japan.

The internal machinery. Finally, the session lists what has to exist inside the company for any of this to work:

• A remuneration system for inventors has to be in place.
• The IP process has to be defined and visualised, so people can see where a disclosure goes.
• There should be a central platform for all IP information, which the deck calls the House of IP.
• It holds an IP guideline, the legal documents, and the forms.

Caution

The remuneration system, and the repeated contact inventor points on the timeline, are the only places where these sources touch employee inventions. They do not set out who owns an invention made by an employee, what has to be reported to the employer, on what deadline, or how compensation is calculated. Those rules exist, but they are not in this material, so I have left them out rather than guess. The sources likewise never use the phrase make or buy for IP; the closest they come is the sale, licensing and abandonment options above.

Worked example

Take one invention: a new sealing arrangement inside a drum motor that keeps a conveyor running in wet food-processing environments. The engineering is done in January. Here is what the sources say happens next, and where the money and the mistakes are.

Before month 0: the disclosure riskthe trade fair, the conference paper, the customer demo, the supplier drawing

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Month 0: first national filing, for example at the DPMAoptionally with the examination request straight away; a DPMA search report follows

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Months 0 to 12: the priority yearread the search report, contact the inventor, and work out which markets are worth paying for

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Month 12: PCT application claiming the priorityan ISA is designated; preliminary search and ISA search report follow

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The PCT process ends with publication of the applicationfrom here the teaching is public and competitors can read it

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Month 30: nationalisation of the PCT applicationinto the chosen offices, for example US, CN, EP, JP, with more than 150 available

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The EP branch: about 2 years to nationalisationinto individual states such as DE, IT, GB, FR, with more than 30 available

One invention through the route the timeline slide draws. The only irreversible step is the first one, and it happens before any lawyer is involved.

Stage	The decision you are making	What it costs in effort	What goes wrong if you get it wrong
Before filing	Whether anyone outside the company may see it yet	Discipline: a development contract with partners, an NDA with suppliers, a rule about trade fairs	Your own disclosure becomes state of the art. The six-month exhibition grace period does not help, because it is only for trademarks, designs and utility models
Month 0, first filing	File nationally, and whether to request examination at once	Drafting effort concentrated on the claims, plus the inventor’s time	A filing whose claims sit beside the bottleneck rather than on it, so competitors simply walk the workaround path
Months 0 to 12	Which countries are worth the cost	Reading the search report and market work; the deck marks contact inventor here	Reaching month 12 with no market view, and then either overspending on countries or losing the option
Month 12, PCT	Buy more time and reach for a wider set of countries	A second filing and the ISA process; contact inventor again	Miss the priority year and the early date is gone, along with the advantage over anyone who filed after you
Publication	Nothing to decide, but plan for it	Competitor monitoring should be running before this point	Your teaching becomes readable while you still hold no granted right anywhere
Month 30 and the EP branch	Which offices you actually enter and pay for	Repeated national steps, translations, local representation, and contact inventor at each branch	Gaps in the map. Manufacturing in a country you skipped infringes nothing
After grant	Keep it alive, license it, or abandon it	Annual fee payments, which is why fee-payment providers exist as a business	Paying for years for a patent nobody uses, or losing a valuable one to a missed payment

Apply it to your project

1. Write down the teaching, not the product. State what your thing tells someone to do, using controllable forces of nature, to achieve a result that follows causally and directly. If you cannot write that sentence, you may have a discovery, a business method or a piece of software as such, and the exclusion list in section 3 is waiting.

2. Check it against the exclusion list first, because it is cheap. Discoveries, scientific theories, mathematical methods, plans and rules for mental activity, games or business, programs for data processing systems, and medical procedures.

3. Ask the detectability question before anything else. If a competitor used your method, could you prove it from the product they sell? If not, the deck’s advice is to keep it as a company secret rather than to publish it in a patent.

4. Freeze disclosure now. Nothing goes to a conference, a trade fair, a customer demo or a supplier drawing package until either the filing is in or a development contract or NDA covers it. Assume there is no grace period, because the one the session mentions is for trademarks, designs and utility models.

5. Search before you file. Free at the patent offices, and the deck also names commercial tools. Look at competitors’ websites and at conference and trade fair publications, because the ping-pong example shows that prior art does not have to be in a register to count.

6. Aim the claims at the bottleneck. Sketch the conventional solution against the future one, cut the functionality the old design provided, name the disruption, list what it removed, and find the removed function that the future solution cannot do without. Protect that, not the whole machine.

7. File first nationally and start the clock, considering whether to request examination immediately. Then use the twelve months of the priority year to do the market work rather than to think about the technology again.

8. Decide the map deliberately. More than 150 countries through the PCT route, more than 30 through the European one, and a budget that covers neither. Choose where you sell, where competitors manufacture, and where you can realistically enforce.

9. Set up the machinery once, not per patent. Inventor remuneration, a defined and visualised IP process, one central platform holding the guideline, the legal documents and the forms, plus competitor monitoring and regular trade fair visits.

10. When a competitor’s document arrives, do the four checks before replying. Status in the register, countries covered, position in the timeline, monitoring switched on. Then read the claims, look at the drawings, and ignore the introduction.

Key terms

Term	What it means in plain words
Patent	An exclusive right granted for an invention, given for a limited period as the reward for publishing the idea, which stops others commercially making, using, distributing or selling it without consent
Invention	A creative achievement solving a problem with technical knowledge, giving a new teaching for a planned action using controllable forces of nature to reach a causally foreseeable result directly
New	The first of the three requirements: the invention is not already part of the state of the art
Inventive step	The second requirement, that the invention is more than what the existing art already leads to
Industrial application	The third requirement, that the teaching is susceptible of being used in industry
State of the art, prior art	Everything already publicly available that can be held against your application, in any country, any language and any form, including a comic strip
Right of priority	The mechanism that lets a first filing fix your date, so later filings elsewhere are treated as of that first date; the patent timeline uses a twelve month window
PCT application	The international application filed at WIPO, which buys time and produces searches and a publication but never itself grants a patent
ISA	The International Search Authority designated in the PCT stage, which issues the international search report
Nationalisation	Taking an international or European application into individual national offices, which is where actual protection is obtained and paid for
European Patent Convention	The legal basis for European patents, read together with its ancillary regulations and the EPO Guidelines for Examination
Claims	The part of a patent document that defines what the owner can stop others doing; the session insists these matter and the introductory recital of the state of the art does not
Opposition	A challenge to a granted patent which, if upheld, revokes it, as happened to the long-necked broccoli patent
Demand of omission	The enforcement letter requiring a competitor to stop selling, which in the deck’s example went to eight competitors at once
Cross licensing	Settling a patent dispute by trading rights rather than money, which only works if you hold a portfolio worth trading
Patent family	The set of documents produced when one invention is filed as a priority application and then pursued in several countries
Bottleneck approach	Placing protected solutions on the one path that leads to the customer’s benefit, so a workaround has nowhere to go
IPscore	Free EPO-distributed valuation software, originally from the Danish office with Copenhagen Business School and industry, assessing legal, technology, market, finance and strategy

Test yourself

1. State the three requirements for a patent and the field limitation that goes with them, and say what the deck’s definition of an invention adds to them.
2. Your team demonstrates a prototype at a trade fair in March and files a patent application in June. What is the problem, and does the six-month exhibition grace period mentioned in the session rescue you?
3. List six things the session says you cannot get a patent for, and explain what the first three have in common.
4. Walk the route from a first national filing to a granted national patent, giving the timings the deck states at each branch.
5. A competitor’s patent document lands on your desk. What are the four checks the session prescribes before you react, and which part of the document should you actually read?
6. Name the four responses the enforcement campaign in the deck actually produced, and say what each one tells you about enforcing a single patent versus enforcing a portfolio.

Answers

1. Patents are granted for inventions in all fields of technology, provided they are new, involve an inventive step, and are susceptible of industrial application. The definition adds that an invention is a creative achievement solving a problem with technical knowledge, worth protecting when it gives a new teaching for a planned action, resting on an inventive step, using controllable forces of nature to achieve a causally foreseeable success directly, and industrially applicable.
2. The March demonstration is a disclosure, and once the teaching is public it becomes state of the art that can be held against your own June application, destroying its novelty. The ping-pong example shows how unforgiving this is: a 1949 Donald Duck story defeated a real salvage process patented after 1964. The grace period does not rescue you, because the exhibition protection the session mentions, six months after disclosure, is usable only for trademarks, designs and utility models.
3. Discoveries, scientific theories, mathematical methods, plans and rules and procedures for mental activities, games or business activities, programs for data processing systems, and medical procedures. The first three are all things you find or reason out rather than build; none of them is a teaching for a planned action using controllable forces of nature.
4. Start with a first national filing, for example at the DPMA, possibly with an examination request straight away, which produces a national search report. Claim priority of that filing. At 12 months, file the PCT application, where an ISA is designated and a preliminary search and ISA search report are produced. The PCT process at WIPO ends with publication of the application. Nationalisation of the PCT application follows at 30 months, into any of more than 150 countries. The European branch takes about 2 years to nationalisation into individual states, of which more than 30 are available.
5. Do not panic and do not react directly. Then: check the status of the application in the register, distinguishing a published application from a granted patent; review the countries it covers; keep the timeline in view; and start monitoring if it is not already running. Read the claims, not the opening passages reciting the state of the art, and review the drawings.
6. The competitor complied and stopped selling; the competitor threatened the patent with prior art; the competitor proposed becoming a customer; and the competitor proposed cross licensing. Only the first is the outcome the letter asked for. The second shows that enforcing exposes your own right to attack, so validity must be checked first, and the fourth is only available to you if you hold enough rights to trade, which is the argument for a portfolio rather than a single patent.

Revision summary

Tip

The one-minute recap

• A patent is an exclusive right granted for an invention, given as a reward for publishing it, lasting a limited period, and meaning the invention cannot be commercially manufactured, used, distributed or sold without the owner’s consent. It is a power to exclude others, and the deck never says it entitles you to practise.
• Three requirements, in all fields of technology: new, inventive step, susceptible of industrial application. An invention is a creative achievement giving a new teaching for a planned action using controllable forces of nature to reach a causally foreseeable success directly.
• Not patentable: discoveries, scientific theories, mathematical methods, plans and rules for mental activities, games or business activities, programs for data processing systems, medical procedures. Exclusions can also arrive after grant, as the Broccoli XL patent found when its opposition was upheld and it was revoked.
• State of the art is merciless. A 1949 Donald Duck story defeated a real ship-salvage process. Any disclosure before filing can be used against you, and the six-month exhibition grace period applies only to trademarks, designs and utility models, not to patents. Control disclosure with development contracts and NDAs.
• The route: first national filing, possibly with an examination request; claim priority; at 12 months the PCT application with a designated ISA; preliminary search and ISA search report; the PCT process ends with publication; 30 months to nationalisation into more than 150 countries; the EP branch about 2 years to nationalisation into more than 30. Contact inventor appears at five points along it.
• Claims are the patent. When a document arrives, do not react: check the register status, the countries, the timeline, and start monitoring. Then read the claims and the drawings, not the introduction.
• Territoriality. There is no worldwide patent, whatever a trade fair stand claims. Protection is bought country by country, and a gap in the map is a gap in the right.
• Term: patents max 20 years, possibly 5 or 5.5 years more for pharmaceuticals; utility models 10; designs up to 25; trade marks renewable indefinitely on payment; copyright 70 years after the author’s death.
• Enforcement produced four answers: compliance, a prior-art counter-attack, an offer to become a customer, and an offer to cross licence. Remedies generally: cease and desist, information and accounting, and either royalty damages or the infringer’s entire profits.
• Strategy: patent for exclusivity, visible inventiveness, reputation and value, sales and margin, and recruitment; keep it secret instead when use of the method cannot be demonstrated in the result. Aim claims at the bottleneck so no workaround is available. Run the portfolio with families, IPscore valuation over legal, technology, market, finance and strategy, free searching at the offices, monitoring accounts, and an internal House of IP with an inventor remuneration system.

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