From Invention To Patent: From Invention To Patent: Protecting New and Innovative Protecting New and Innovative Business Ideas: The Importance Business Ideas: The Importance of Proper Management of Trade of Proper Management of Trade Secrets and Patents Secrets and Patents Guriqbal Singh Jaiya Guriqbal Singh Jaiya Director, SMEs Division Director, SMEs Division WIPO WIPO ( ( www.wipo.int/sme www.wipo.int/sme ) )
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From Invention To Patent: Protecting New and Innovative Business Ideas: The Importance of Proper Management of Trade Secrets and Patents Guriqbal Singh.
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From Invention To Patent: From Invention To Patent: Protecting New and Innovative Protecting New and Innovative Business Ideas: The Importance Business Ideas: The Importance of Proper Management of Trade of Proper Management of Trade
By establishing a culture of identifying, cultivating and strategically using its IP assets, an enterprise can increase its revenue, have an edge over its competitors and position itself well in the market.
Ignoring IP altogether is in itself an IP strategy that may prove costly to the enterprise in the long-term.
Dr. Horst Fischer, Corporate Vice President, Siemens AG
“Any company wishing to prosper in the next millennium will also have to efficiently manage its IP portfolio”.“For this reason it has become essential that every manager in the enterprise - not just those working in the corporate legal department - appreciates and understands not only what IP is, but how it can be more effectively exploited."
What are IP Rights?• Industrial Property Rights
– Patents and Utility Models (or “short-term patents”)– Trademarks– Industrial Designs– Geographical Indications– Trade secrets– Topographies of integrated circuits
• Notify (in writing) all persons submitting US disclosures that your company will not enter into a confidential relationship
• Requesting the submitter to sign an acknowledgement that your company is not obligated to use the US Information and owes no duty of confidentiality
IP Rights: Patents
• Definition: A patent is an exclusive legal right granted for an invention that is:– New (Novelty)
– Involves an inventive step (Non obvious)
– Capable of industrial application
• Duration: 20 years from filing/priority date• Territorial right• Requires disclosure/deposit of the invention/material• Can be licensed to third parties• Utility Models (or short-term patent): up to 10 years
• First to file/first to invent: Laboratory books/Drawing
• Accelerated examination• Dependence and multi-patent products• Front page, description and drawings• Claims; technological density and claim
breadth/Route of filing/amendment of claims
Problem-Solution Approach
• Definition of closet prior art• Objective identification of technical problem• Examination, whether solution obvious from prior
artPatent Office may contrast closest prior art with technical effect of invention; definition of “objective problem to be solved” is different from problem defined in original applicationChoice of prior art affects whether obvious or not
Case study on patent protection
• Case study on the commercialization of a patented product– Croatian pharmaceutical company (Pliva) discovers new
antibiotic (azythromicin)– Pliva applies for patent protection in Croatia and in various
potential export markets– Large pharmaceutical multinational Pfizer searches patent
databases and discovers the Pliva patent– Pliva licenses Pfizer to produce the antibiotic in the US as
well as in some other countries in Western Europe while Pliva maintains the exclusive right to commercialize the antibiotic in Eastern Europe