Building a Competitive Edge:
Protecting Inventions by Utility Models
and/or Patents
Casey K. Chan
National University of Singapore
IP Academy of Singapore
Topics Covered
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Economic Commercial Perspective
Patentability and Specification
Introduction to Claim Structure
Proprietary position and FTO
Practical Tips
Increasingly, wealth of a
nation is measured by
ownership of intellectual
properties rather than by
ownership of hard assets.
Paul Romer
Graduate School of Business at Stanford University
Fellow at the Hoover Institute
 Classical Economy
 Tangible Capital
 New Growth
Economy
 Intangible Capital
Types of Intellectual Properties
 Trade Secrets - No regulation
 Patents – Regulated
 Trademarks – Regulated
 Copyright - Regulated
Freedom to Operate – FTO
Proprietary Position
New Product Development
User Spec
IP Assessment
IP Protection
Economic Perspective
 Patents -- legal ownership of intellectual
properties
 Incentive for Inventors
 Quid pro quo - grant in exchange for
disclosures
 Right to exclude others to use and/or
manufacture the invention
Types of Patent
 Utility Patents - machine, process,
composition of matter
 Design Patents - ornamental design
 Plant - distinct and new variety of
asexually reproduced plant
Should I file a Patent?
Where and When
When should you file a patent?
 Because it is a brilliant idea -- No
 Because of commercial potential -- Yes
 Competitive advantage (unfair
advantage)
 Barrier to entry in market place
Criteria
 Patentability
 Commercial Potential
 Enthusiasm of Inventor
Commercial Potential
Co 1
Accuracy
Sensitivity
Efficiency
Speed
Automatable
Reproducibility
Cost
NuProduct
Co 2
Commercial Potential
Business Model
NuProduct
Market Applications
Very Broad
Initial Targeted Applications
>$750 Million
Product Development Cycle
Short: 6 – 12 Months
Commercialization Pathway
Multiple Channels Direct + “NuProduct Inside”
Manufacturing Complexity
Low – Repackaging
Projected Gross Margins
>65%
Projected Time to Profitability
Q4, ‘04
Where should you file your
patent?
 Patent law is jurisdictional
 File in country where the market is
largest
 File in countries it is cost effective
 Customer per $ patent cost
 File in countries where you are
prepared to enforce infringement
Worldwide Market for
Medical Device
Asia
Pacific
20%
Americas
5%
USA
50%
Europe
25%
Source: Tucker Anthony
European Market
for Medical Device
Scandinavia
4%
Others
8%
Switzerland
3%
France
24%
The Big Four constitute
75% of Europe’s market: Spain &
Portugal
France
15%
Germany
Italy
Gt Britain
Gt Britain
9%
Italy
13%
Germany
24%
Source: Tucker Anthony
One strategy
Clearing House
(12 Months)
National Phase
(18 Months)
Europe
Local + US
Application
PCT
Application
Japan
China
EU
Chap II
Delay to 30 mths
JP
CN
Utility Patent - 5 statutory classes
1. Processes (Methods)
2. Machines (Devices and Apparatus)
3. Manufactures -- “articles of
manufacture”
e.g. transistors, floppy disks, etc
4. Composition of matter
5. New uses of above
Utility Patent – Three Types
In practice this is all you need to remember
1. Method
2. Apparatus
3. Composition of matter
Requirements for Patentability
1.
New and Novel
2.
Useful
3.
Non-obvious
1. New and Novel (No “Prior Art”)
 Commercially available
 Public Disclosure
 Publication in journals, magazines,
abstracts
 Posting on the Internet
 Oral or Poster Presentation at symposium
or seminar
 Material made available to public at
university library
 Demonstration at trade shows, to visitors
 Confidential Disclosure Agreement
2. Utility
 Must have a useful function
 If device does not work no use to
inventor anyway
 Prevent pre-emptive filing of
Composition of Matter e.g. new
chemicals, new drugs, new gene with
no known function
2. Utility – New Guidelines
 Credible
 Specific
 Substantial
3. Obviousness
 Obvious to those “ordinary skill in the
arts”
 What makes an invention non-obvious
1. Unexpected results
2. Previous publication stated that it
cannot be done
3. Have to go through a series of
experimentation to arrive at
invention
What Cannot be Patented?
 Arrangements of printed matter
 Methods of doing business ?
 Obvious devices
 Perpetual motion machines
 Nuclear weapons or weapons of mass
destruction
 Laws of nature or scientific principles
(must have “embodiment”)
Actual Cost of Filing
US$ 10,000 to 15,000
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Preparation Time
Patent Search
Drawings
Attorney’s Fee
Filing Fees
Maintenance Fee
Legal Defense
Legal jargons
 “prior art”
 “ordinary skill in the art”
 “embodiment”
 “new teachings”
Specification of a Patent
Broad claims
“less is more”
New teachings
Background
& Prior Art
Claims
Definition
“more is better”
Anatomy of a peer review paper
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Title
Introduction
Materials and Methods
Results
Discussion
Conclusion
Anatomy of a Patent
Title
Field Of The Invention
Specifications
Background Of The Invention
Objects Of The Invention
Summary Of The Invention
Brief Description Of The Drawings
Detailed Description Of The Preferred
Embodiments
 Modifications Of The Preferred Embodiments
 Claims
This is the right you own!
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1807 – Prior Art - Unicycle
A
B
1827 - My Invention - Bicycle
D
A
B
C
Z
Elements
B
A
C
D
Your Invention:
Definition
B
A
C
D
Z
Independent Claim
Your Claim:
B
D
D
A
A
B
C
C
Competitor’s
Product:
B
A
A
C
E
Infringement ? = NO
B
E
C
Your Invention:
Definition
B
A
C
D
Z
Independent Claim
Your Claim:
B
D
A
C
Competitor’s
Product:
B
A
C
E
Infringement ? = YES !
Dependent
Claim
B
A
C
D
Five Types of Claims
Your Invention
 Independent Claim (3)
 Apparatus
 Method
 Composition of Matter
 Dependent Claim (2)
 Additional element
 Restriction of an element
Z
Definition
B
A
C
D
A
1807 – Prior Art - Unicycle
B
1827 - My Invention - Bicycle
D
A
B
C
Z
Elements
B
A
C
D
Your Invention:
Z
Definition
B
A
C
D
D
Independent Claim
Your Claim:
A
B
A
D
B
C
C
Competitor’s
Product:
A
Infringement ? =
B
A
C
E
NO
B
E
C
Your Invention:
Z
Definition
B
A
C
D
Independent Claim
Your Claim:
A
B
A
C
Competitor’s
Product:
A
Dependent Claim
C
B
C
B
E
Infringement ? = YES !
D
Five Types of Claims
 Independent Claim (3)
 Apparatus
 Method
 Composition of Matter
 Dependent Claim (2)
 Additional element
 Restriction of an element
Z
Your Invention
Definition
D
B
A
C
One Hand Rule of Claims
2
1
One Hand Rule of Claims
2
1
One Hand Rule of Claims
1
Freedom to Operate
is determined by:
 What are competitors’ patent claims
 Unclaimed prior art
Patent B
 Patent specification
 Published work
Claim B
Patent A
Claim A
My FTO
Publication
C
Proprietary Position
is determined by:
 What are my patent
claims
My Trade Secrets
 Trade secrets
My Patent B
Claim B
Competitor’s
FTO
My Patent A
Claim A
Claim C
My Patent C
Initial patent review
 Front Page
 Patent Number and Title
 Applicant (s), Assignee
 Issued Date/ File Date
 Class and Field of Search
 Attorney, Examiner
 References (Referring Patents)
 Abstract
 Representative Drawing
 Back Page
 Claims (First claim most important)
Utility model
 Not the same as “utility patent”
 Parallel second tier patent systems
 Foster indigenous invention and
innovative activities
 Petty patents, innovation patents,
utility model
Types of Patent and Duration
US
China
 Utility (20y)
 Design (14y)
 Plant (20y)
 Inventions
(20y)
 Indus designs (10y)
 Utility models (10y)
Thank you