Appunti methods and tools for systematic innovation - Parte C

Politecnico di Milano

School of Industrial and Information Engineering

MSc in Mechanical Engineering

2021-2022 Academic Year

Methods and tools for systematic innovation

Module C

Lecture notes

Summary

• Introduction to intellectual properties
  • Introduction
  • Alternatives to the patent
  • Patentability requirements
• Patents: general information
  • Structure of a patent
  • Where to apply for a patent
  • Patent classification
• Patent breaking
  • Functional analysis of a patent
• Patent strategies
  • Patents: uses and misuses
  • Patent strategies
• Types and patterns of innovation
• Innovation models for sustainable development
  • Ecodesign reference models
• Introduction to technology forecasting
  • Forecasting based on experts tacit knowledge
• TRIZ based technological forecasting
  • Classification of the LESE
• Technological forecasting based on trend extrapolation

Introduction to intellectual properties

Introduction

Intellectual property (IP) refers to creations of the mind, such as inventions; literary and artistic works, designs, and symbols, names and images used in commerce. We can consider IP as the output of design creativity. Each country has its own law for the protection of IP. These laws are represented by patents, copyright and trademarks, which enable people to earn recognition or financial benefit from what they have invented or created. By striking the right balance between the interests of innovators and the wider public interest, the IP system aims to foster an environment in which creativity and innovation can flourish.

We can distinguish two main IP categories:

• Industrial properties
• Literary and artistic properties (authors' rights)

With industry we are referring to the production of goods and services within an economy. It's important then to define what is a “right”: a moral or legal entitlement to have or do something.

The law is further divided in personal and pecuniary: personal is the moral right to be recognised as the author of the creation; as soon as somebody produces something through its creativity, he has the moral right to be recognised as the author of that creation. On the other hand, the economic exploitation of that creation is something which is ruled by a procedure: you can always claim to be the inventor of your creation, but if you do not apply for a patent, you do not have the right to claim an economic benefit from those who are using your invention. All the patents must be registered. It is important to notice that the pecuniary right can be sold.

The products of human ingenuity can be classified in three main categories:

• Product of creative ingenuity (artistic creations)
• Distinctive signs (trademarks, etc.)
• Technical and design innovations

Trademarks: A trademark is a sign, name, logo, or other identifier that distinguishes the goods and services provided by one business from those provided by another. Trademarks may be registered or unregistered that distinguish your product/organization. It can happen that clients associate more value to your specific trademark.

When we are talking about patents, it is important to notice that:

• 80% of information available in patents is not available elsewhere
• 70% of firms make R&D investments on technologies already disclosed (and thus not freely usable) by third parties' patents
• 30% of industrial R&D expenses just duplicate efforts already spent by others

The idea behind the patenting system is to promote dissemination. We want to give a reason to companies, institutes, etc., to make information public. Otherwise, they would keep their knowledge secret, and this would slow down all the innovation processes. In fact, it is allowed to use the invention of a patent as a source of inspiration or for applications which are different from the original one for which the patent was deposed.

A patent is a right granted by a government that gives the patent owner the ability to exclude others from making, using, offering, selling or importing the invention covered by the patent. We can notice that the patent is temporary and geographically limited since it is a right granted by a country: international patents do not exist. However, there are agreements between different countries that can more easily extend the validity of a patent in other geographic areas. Therefore, the patent is limited in time and space.

The patent is a deal between the inventor and the state: the inventor gives information to everyone about its creation, and in exchange, the government gives him a limited monopoly about its invention.

Alternatives to the patent

If for some reason the author of the invention does not want to patent its idea, the following options are available:

• Information disclosure (open science): all the information about the invention are revealed, and for this reason, from now on, nobody can patent this invention. This solution is cheap (patenting has a cost) and prevents others from patenting your invention, however, it does not offer exclusivity and it reveals the invention to others.
• Secrecy (creating a trade secret): do not apply for the patent and keep all the information about the invention secret. Also this solution is cheap and does not reveal the invention, but it’s not protected against reverse engineering. Moreover, it is difficult to enforce the secret and often it leaks quite fast. Patents have a limited duration (typically 20 years), if someone thinks that its invention could last longer than that, it could be more convenient to keep the invention secret.
• Do nothing: no efforts required; however, we no more have exclusivity and competitors will often learn details.

Patentability requirements

The first thing that should be understood is: what can be patented? An invention, however, when we are talking about inventions, it is necessary to be more precise than this. According to the patent law, an invention can be patented if it is:

• An apparatus that comprises the invention
• A method that comprises the invention
• A process for producing the product of the invention, and/or
• A product produced by the process of the invention
• A use of a known product/substance for a new form of application

Sometimes the invention could be a mix of some of the categories above. In the end, the invention is related to some practical advance that permits to solve a technical problem, that can be referred to these categories. Other requirements that an invention should have in order to be patentable are the following:

• It doesn’t belong to an excluded class of inventions (there is a list of inventions that cannot be patented).
• It is capable of industrial application (it targets a specific problem and it can be economically exploited)
• It’s new (novelty)
• It involves an inventive step

It is also important to analyse which is the difference between discovery and invention: discovery is finding out something that already existed before, but nobody knew it before. Invention is something that you create by experimentation. Invention, unlike discovery, is not related with nature.

From patentability should be excluded:

• Discoveries
• Scientific theory or mathematical methods
• Aesthetic creations
• Scheme, rule, or method for performing a mental act, playing a game, or doing business (this is valid in Europe, but in other countries there are different laws)
• Programme for a computer
• The presentation of information
• ...as a matter of public policy (the invention should not be immoral or anti-social)

An invention in order to be patentable, should introduce novelty, which means that the idea does not belong to the state of the art. The invention has never been presented before in any form. This means that it is not possible to patent an idea which was divulgated before in other forms by the author itself or by others. The industrial applicability of the invention refers to the fact that the invention can be exploited in a specific industrial field. With “industry” we refer to any technical or physical activity. In order to recognize if an invention has an industrial application we have to understand if it can be used in some kind of industry.

Another important requirement for patentability is the introduction of an inventive step (not obvious). The innovation is considered to involve an inventive step, if it is not obvious to a person skilled in the art. The "person skilled in the art" is presumed to be a skilled practitioner in the relevant field, who possesses an average knowledge and ability, and is aware of what was the common general knowledge in the art at the date of the patent application but is devoid of inventive ability. It could be difficult to establish objectively if the invention introduces an inventive step (often lawyers should be involved). There are some criteria which tries to make the decision as much objective as possible. There are two main parameters:

• What is the degree of advantage that the variation introduce?
• For how long, previous versions of the solution were publicly available?

Patents: general information

Structure of a patent

The main part of a patent should be a description of the invention, by the way, it is also necessary to make a description of the problem that the invention proposes solve, since the inventor should explicitly say which is the problem that he wants to solve through his invention. If an invention is solving a new problem, it still can be patented, since it is referring to a new problem, but since it is not introducing any novelty, it must pay for the licence, because it is similar to a previous invention, that was addressing to another problem. It can be considered as an improvement of the solution, but however it is not bypassing the previous patent. So, the first thing that is important to remember is that an invention can be, for example, a product, a process, or an apparatus, and in order to be patentable, it must be new, industrially applicable and involve an inventive step.

A European patent application consists of:

• A request for grant
• A description of the invention
• Claims
• Drawings (optional)
• An abstract

The most important part of the patent are the claims, which are the only parts which is requiring for the protection, and for this reason, it is the only part with a legal validity. In fact, only what it is written in the claims is protected by the patent. What is present in the description should be a support for the correct interpretation of the claims, but it is not protected by the patent. It is also better if the patent contains drawings, which should help in the interpretation of the claims, nevertheless, also drawings are not protected by the patent. The final part is the abstract: this part should be a short summary (150 words) of the invention; this part is also not protected.

Where to apply for a patent

There isn’t an international agency for patents, so, the inventor should apply in a specific office for the country where he wants to apply his patent. National patents are valid only in the country where they are deposited. There is also a European patent office, which is however equivalent to national patents: the inventor who goes there can choose the countries where he wants that his patent is valid. Even if an international agency does not exist, there are some agreements between different countries, that somehow can extend the validity of the patent.

Patent application in Italy: the procedure consists in a series of phases: the first check is made by the military authority, which should evaluate if the invention could be harmful for the national security. The second check is made by EPO (European Patent Office), which should evaluate if the invention is a novelty, or it is similar to previous inventions, etc. (until 2008 this procedure was not present). If the EPO approves the invention, after 9 months there is the publication of the search report. Due to the long time required (18 months), it is possible that when we submit the patent, someone has already presented the invention, but it was not approved yet. It is important to notice that the extension of the patent to third parts should be done 12 months within the filling date, otherwise, it is not possible anymore to extend the patent.

In terms of taxes and costs, the patent submission in Italy is quite convenient. The costs consist in governmental taxes and fees for patent attorneys and consultants (this last part is optional). Costs have grown up to 2015 and then they become almost constants.

Paris convention for the protection of IP: signed in Paris in 1883, it is a national treatment, which stated that when an inventor files an application for a patent in a foreign country member of the union, the application receives the same treatment as if it came from a national of this foreign country. If the intellectual property right is granted, the owner benefits from the same protection and the same legal remedy against any infringement as if the owner was a national owner of this right.

European patent convention: signed in 1973, and valid also in some countries that are not part of the UE, this convention introduced a unified procedure, which allows a central office to communicate with all the national offices. It is important to notice that the European office won’t substitute the national office, but it will just work with it.

The patent procedure at the EPO could last longer than the one of national offices (up to 4-5 years). The EPO gives to the author a research report, where they evaluate if the invention is novel or not, and with a priority, which establishes what is the contribution of the author to the novelty. A European search report is written, listing all the documents available to the Office that may be relevant to assessing novelty and inventive step. The research report is based on the patent claims but also considers the description and any drawings. Once that is completed, the research report is sent to the applicant.

The application is published - normally together with the search report - 18 months after the date of filing or, if priority was claimed, the priority date. Applicants then have six months to decide whether or not to pursue their application by requesting substantive examination: the author has the opportunity to withdraw its invention in the case in which there is no novelty.

If the author decides to proceed, there is the demand for examination, where a group of three people has the duty to evaluate the claims of the patent, with all the other claims of the priorities. During this process can happen that the claims are changed (slightly reduced or modified). This means that typically the claims in the patent are different from the claims of the application. This is the longest part of the process, which could last up to five years.

The patent procedure at the EPO follows these steps, which take place after that the national application has been done. "A" stands for "application", "B" is a granted patent.