HIGH TECH
HØIBERG
Patent Guide
Contents
Introduction
Why patent?
What protection does a patent provide?
Who is the rightful owner of a patent?
Ostomycure
Criteria for patentability
Can software be patented?
How and when to publish
Carlsberg
Filing - When and where?
Patent application drafting and prosecution
International patenting
Alternative IP protection
Lotus Microsystems
Freedom to Operate
IP strategy and business plan
Patent Valuation
Perfusion Tech
Collaboration and licensing
Due Diligence
Enforcing patent rights
Glossary
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Impressum
HØIBERG Patent Guide - High Tech
1st edition, 2024
Also available at www.hoiberg.com
PUBLISHER
HØIBERG P/S
EDITOR
Vibeke Bay // HØIBERG P/S
DESIGN & PRODUCTION
Dite Cepule // Gammelbys
HØIBERG P/S
Adelgade 12
1304 Copenhagen K
Denmark
Copenhagen · Denmark
Aarhus · Denmark
Herning · Denmark
Stockholm · Sweden
Lund · Sweden
Tel. +45 3332 0337
www.hoiberg.com
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On behalf of HØIBERG
Introduction
Foreword from
HØIBERG
Patents are an investment. Like any other investment, it must be aligned with
your business strategy. If the investment in a patent is not nurtured it becomes
an expense. HØIBERG was founded with the vision of assisting technology-
based companies in patent-protecting their inventions to add value to their
company. We have been doing this for more than 25 years and have become
the IPR firm of choice for ambitious and innovative companies.
Innovation allows companies to gain a clear market position. Innovation can
differentiate your products from those of competitors, attain premium prices
and create demand. Innovation is therefore directly related to profitability for
technology-based companies. This was reconfirmed in a recent report by
the EUIPO, which mapped the economic performance of companies across
all of Europe. Innovation is increasingly a prerequisite for success given the
increasing competition in the global marketplace, and innovation leaders are
on average more profitable and grow faster than innovation followers.
In turbulent times, companies tend to focus on consolidation rather than
innovation. Changing times should be viewed as an opportunity. Those who
prioritise innovation are those who emerge strengthened following a crisis.
Consequently, companies should develop a clear innovation strategy to
strengthen their competitive position both in times of crisis and in times of
economic growth.
The quality of R&D spending is as important as the quantity – merely
increasing the spending on R&D may not be the optimal solution for driving
more innovation. An effective innovation strategy highlights the importance
of looking beyond traditional product development, for example by focusing
on disruptive technologies, digitalisation opportunities, and restructuring of
existing innovation processes.
We hope that you will read the HØIBERG Patent Guide before developing your
next innovation strategy – we are always available if you have questions.
Keep collaborating, sharing knowledge, and thinking outside the box – just
remember to patent your great ideas first.
We are proud to present the HØIBERG Patent Guide. Intellectual Property Rights
in general and patents in particular are becoming increasingly important to
any firm engaged in product development. No two inventions are the same,
and there is no such thing as a “one size fits all” innovation strategy. We
have created this Patent Guide as a resource for inventors and innovators
to understand the crucial facets of the patenting process because great
inventions require great protection. By sharing our knowledge, you will be able
to reap the benefits of the time and hard work you dedicate to your great
ideas, inventions, and research.
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Why patent?
01
A basic principle behind the patent system is that the description of the
invention becomes public and thereby contributes to the general knowledge
of society. In return, the applicant of a patentable invention obtains the right to
prevent others from using the invention for 20 years. Therefore, patents are of
great importance to society, since they both facilitate further development and
research and ensure that the patented invention can be exploited and used.
An alternative to patent protection is maintaining the technology as a trade
secret.
The protection of inventions is particularly important in highly competitive
industrial fields, and hence patents represent a major commercial asset for
innovative companies.
A patent can be used to protect an invention, but it can also be regarded as
a strategic asset aimed at improving the competitive advantages and the
earning capacity of a company.
For young companies that are in the build-up phase, patent applications play
a large role in substantiating the major commercial assets of the company by
transforming inventions into tangible assets. A granted patent or even a filed
patent application can make a large difference in the evaluation of a company
and facilitates the attraction of investors.
In seeking to establish contact with key collaborators, it is a major asset that
the technology is protected by a patent application. A patent application
facilitates communication and ensures that the invention can be shown to
other parties, such as investors.
A patent can be used to protect an invention, but it can also be sold or licensed
to other parties, or even used as collateral just like any other property, such as
for example real estate, equipment, or a car.
If the commercial exploitation of the invention requires resources, which the
company does not have or cannot attract itself, it is an option to sell or license
the invention to other interested parties, which have these resources.
As an example, a major part of new startup companies primarily focus on
the research and development and are heavily dependent on collaborators
for upscaling, manufacturing and production of a future product. For such
new companies, the protection of inventions, filing of patent applications and
obtaining patents are crucial for establishing collaboration and securing return
of investment in research.
There are many reasons for seeking protection of intellectual property rights
(IPR) by filing patent applications, and few reasons for not doing it. In a
few cases, it may be better to postpone or even avoid the filing of a patent
application. One example is when it is difficult to enforce the IP right and
prevent others from using the invention once published.
If it is decided not to protect an invention by a patent application it is advisable
to take relevant measures to ensure that the invention is kept secret. One
reason is that the legal protection of trade secrets is dependent on the efforts
made to keep the information a secret.
How can patents and patent
applications be useful?
By preventing others
from copying or using
your invention.
By transforming major
commercial assets of
innovative companies
into tangible assets.
By facilitating the build-
up of a new company,
for instance by attracting
investors.
By establishing
collaborations and
facilitating dialogue with
future collaborators.
By increasing return of
investment in research
and development.
By selling or
licensing your IPR.
01 WHY PATENT?
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Measures to be considered when a technology is
not protected by patent applications:
Use non-disclosure agreements (NDA) whenever the technology is
disclosed for employees, collaborators, investors and other parties.
Describe the technology (i.e. the secret) in specific terms and formalise
who is allowed to know about the technology and who is not.
Restrict information access for employees.
An IPR strategy includes detailed policies regarding which inventions are
to be kept secret and measures to be taken to ensure the maintenance of
these secrets.
What protection does
a patent provide?
02
A patent is an exclusive right as well as a prohibition right. Thus, a patentee can
prohibit others from utilising the patented invention. However, a patent does
not automatically establish a right to utilise the invention. Other factors may
inhibit the patentee from entering the market with the given invention including
existence of dominating patent rights.
Utilisation of an invention could for instance be hindered if it involves utilisation
of a patent-protected product or process technology. In certain instances, it
may be necessary to obtain a license from other patent owners in order to
utilise a patented invention.
In all member states of the World Trade Organization (WTO), a patent to a
product gives the patent owner the right to prevent others from making, using,
selling or importing the patented product. A patent to a process gives the
owner the right to prevent others from using the process, but the patentee can
also prevent others from using, selling or importing products directly prepared
by the process.
In most countries, there are a few exceptions to the protection conferred by a
patent; for example most countries have a research exemption.
Once a patent owner has brought a patented product to the market, their
patent rights have been exhausted, and a buyer can use the patented product
without infringing the patent in the country of purchase.
A patent is valid for a minimum of 20 years after the filing date provided that
the patent owner has undertaken all required actions and paid all fees.
It is the responsibility of the patent owner to enforce the given patent rights.
Thus, in general, official authorities do not aid in enforcement of patent rights
on their own volition. To enforce a patent, the patent owner must normally take
legal action if no agreement can be reached with an infringer out of court.
01 WHY PATENT?
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Once an invention has been conceived the rights to a patent on that invention
belong to the person who invented it. Thus, as a starting point a patent simply
belongs to the inventor.
However, even if the starting point is very simple there are many challenges
in assuring correct ownership of a patent. First of all, in order to establish the
ownership of a patent it is very important to identify who is(are) the inventor(s).
Many inventors are contractually obliged to assign their rights to any invention
they make. For example, in many countries employees at universities are
obliged to assign their rights to the university, provided that the university
wishes to take on the patent process. Likewise, most private employees are
obliged to assign their patent rights to their employer. This is usually regulated
through their employment contract or in some countries by law.
Thus, even though the inventor is, in principle, the owner of the patent, the
employer of the inventor is, in fact, frequently the actual owner of the patent.
Nowadays most inventions are conceived by a team, and thus, as a starting
point, the invention belongs jointly to the people on that team. If all inventors
are employed by the same company, and they are obliged to assign the rights
to their inventions to their employer, then the patent simply belongs to that
company. If the inventors, however, are employed by different companies, the
patent will be co-owned by the respective companies. In case the inventors
are not obliged to assign their rights to the patent, the patent will be jointly
owned by the respective inventors.
The joint ownership creates challenges that are preferably addressed up
front. In Denmark and most other European countries co-owners must act
jointly, which effectively gives each co-owner a veto right with regard to
licensing or selling a patent. In contrast, in the United States each co-owner
can act independently. Thus, it is recommendable to ensure clear agreements
regulating the rights of each co-owner.
If no contracts regulate the joint ownership, then in the US one owner can
license out the patent without the consent of the other owners. This may result
Who is the rightful
owner of a patent?
03
in reduced license fees, since there will be an internal competition between
co-owners. In addition, it will not be possible for any of the co-owners to grant
an exclusive license without an agreement. In Europe, one owner can block a
license, which another owner may wish to grant. A good contract is therefore
essential.
Prior to embarking on a joint development program, it is thus highly advisable
that the firms involved regulate the rights to any ensuing patents contractually.
This is also true for collaborations with sub-contractors. Even if the research
leading to an invention is paid for by an ordering firm, then the rights to a
patent do not automatically belong to that firm. The rights to a patent belong
to the inventor or possibly the inventor’s employer. Thus, for the ordering firm
it is crucial to ensure that a sub-contractor’s employees are obliged to assign
patents to the sub-contractor and that the sub-contractor is contractually
bound to assign the patent rights to the ordering firm.
In conclusion, in order for a company to control ownership of future patents, it
is important to understand who may be the inventor in the future, and to have
all the right contracts in place that will allow the company to take over the
ownership from the inventors or their employers.
03 WHO IS THE RIGHTFUL OWNER OF A PATENT?
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I am confident that
OstomyCure’s IP is
well protected when
HØIBERG is involved
OSTOMYCURE
“The future of OstomyCure depends on our ability to protect the products that
will generate income for our company and prevent competitors from creating
a workaround solution,” begins Dr Johan Järte, M.D., Chief Executive Officer,
CEO & CMO at OstomyCure.
“I’m confident that our IP is well protected when we are working with HØIBERG.
Building a business based on IP is all about trust — otherwise, I would be
nervous all the time. I’m confident that HØIBERG’s consultants think outside the
box and protect every smallest detail.”
OstomyCure, a 15-year-old medical technology company, has developed a
revolutionary technology in stoma therapy for ileostomy patients, allowing for
a more carefree life for patients who suffer from intestinal diseases.
HØIBERG CREATES AND NURTURES AN EFFICIENT IP
PORTFOLIO THAT ALIGNS WITH OUR BUSINESS GOALS
OstomyCure’s relationship with HØIBERG goes back several years. When
OstomyCure started its partnership with HØIBERG, the company already had an
extensive patent portfolio.
Initially, HØIBERG assessed OstomyCure from the top down before carrying out
an overall review and optimisation of their IP portfolio to ensure it aligned with
their business plans, future goals, and financing.
“Protecting our products utilises a huge part of our budget, as it is extremely
expensive. We have achieved considerable cost savings after moving our
patent portfolio to HØIBERG. They have removed some of our patents covering
previous products that we don’t need anymore, thereby making our portfolio
more efficient to better cover present and future products,” explains Johan
Järte.
“Streamlining our patent portfolio gives us the ability to invest in other parts
of our portfolio and revenue generating products, as well as to prolong our
patent protection. Our IP portfolio now serves our specific business goals,” he
concludes.
CASE: OSTOMYCURE
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WE VALUE HØIBERG’S PROACTIVE APPROACH
Before partnering with HØIBERG, OstomyCure worked with a different patent
agency.
“What we value with HØIBERG is their proactive way of doing business and
working together in a close business relationship. Our former patent agency
was good, but they only did what they needed to do, what we asked them to
do,” Johan Järte recalls.
“HØIBERG truly enjoys interacting with and growing alongside their clients.
They not only understand the IP but also our business. They come up with
suggestions for the future and solutions for how we best invest in the
company,” Johan Järte explains.
HØIBERG HAS EXTENSIVE EXPERIENCE WITH THE START-
UP ENVIRONMENT
“When working with start-ups, it is important to understand their continuous
need for funding. Small companies rarely have large bank accounts set aside
for product development and investment, instead, they directly utilise the
funding they have raised”, Johan Järte explains.
“HØIBERG has extensive experience with the start-up environment. They
understand the daily problems of small companies, especially regarding
finding the money to develop our business, and that every decision, small or
big, is about prioritisation.”
HØIBERG ARE EXPERTS WITHIN THE LIFE SCIENCE AND
MEDICAL DEVICE INDUSTRIES
HØIBERG’s extensive experience with medical devices and the life science
industry is extremely valuable for Johan Järte.
“HØIBERG are very experienced in medical devices. They know all the details
surrounding the specific devices, and they are experts in the legal setup
around a device. They were, for example, aware that the EU is moving from
directive to regulation in medical devices, from MDD to MDR.”
OstomyCure provides HØIBERG with prototypes to allow them an in-depth
understanding of the development and technical features of their new
products. OstomyCure and HØIBERG’s close relationship and ongoing
dialogue, e.g. through the product development phases, pay off when writing
and filing new patent applications and deciding on the best overall patent
strategy.
“HØIBERG has a very in-depth approach — they are very skilled in protecting
our ideas. At the moment, we get most of our funds from our accessory
patents. For example, our lids and emptying bags. I’m very satisfied,” Johan
Järte says.
HØIBERG ARE VERY SKILLED AT PROVIDING COST-
EFFECTIVE SOLUTIONS
“Besides being experts in the legal setup in medical devices and the life
science industry, HØIBERG are extremely skilled patent consultants. They know
exactly where to focus the claims, where to draw the boundaries, and what
“Protecting our products
utilises a huge part of our
budget, as it is extremely
expensive. We have achieved
considerable cost savings
after moving our patent
portfolio to HØIBERG”
DR JOHAN JÄRTE
Chief Executive Officer, CEO & CMO at OstomyCure.
CASE: OSTOMYCURE
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the limits are — combined with a keen understanding of what’s important for
us to protect regarding IP, to knowing where we need to be extra cautious of
our competitors”.
“HØIBERG is very attentive to the commercial value of our patents — that the
cost of protecting our product with a patent won’t exceed the value that the
patent in question will generate for us. HØIBERG provides us with suggestions
for solutions that can be more cost-effective for us,” adds Johan Järte.
A CLOSE BUSINESS RELATIONSHIP IS IMPORTANT
Obviously, professional skills and competencies are imperative for a good
business relationship. However, according to Johan Järte, the social skills of the
people involved are similarly as important.
“It’s not just a professional attitude and the right knowledge and skillset that
are important for a good business relationship. The personal feeling is at least
as important. HØIBERG are friendly and easy-going, they have great social
skills, and we really enjoy working together. We laugh a lot, actually,” concludes
Johan Järte.
OstomyCure - a revolution
in stomal therapy
The TIES® Solution created by Ostomycure replaces the permanent ostomy
bag with a titanium implant port. An emptying pouch is used when
emptying the intestinal waste, the rest of the time the implant port is sealed
with a lid. The aim of the TIES® Solution is that stoma patients can go about
their normal daily life without the need to constantly wear an ostomy bag.
The TIES® System received a CE marking according to the Medical Device
Directive (MDD) in June 2016. To meet the added requirements under the
new European Medical Device Regulation (MDR), an extended clinical study
is ongoing to gather more data on performance, usability, quality of life and
health economics.
OstomyCure addresses a market estimated at 2 billion USD per year.
CASE: OSTOMYCURE
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HØIBERG is located on the
Karolinska Institutet Campus
alongside life science start-ups
Since 2020, HØIBERG has had an office on the Karolinska Institutet Campus,
in the heart of the bustling Stockholm life science scene with numerous life
science start-ups located close by. One of the companies in this international
start-up environment is OstomyCure - a neighbour to HØIBERG.
Karolinska Institutet Campus is part of the internationally recognized Karolinska
Institutet, connecting research centres and hospitals that conduct medical and
clinical research, education and treatment at the highest level within the life
sciences.
An IP portfolio is like an apple
tree — cut down branches to
make it bloom
When OstomyCure and HØIBERG began their partnership, OstomyCure already
had an extensive patent portfolio that reflected the natural development of
the patent history of any company - you patent and expand your IP portfolio
as you develop new products. The result can easily become an unnecessarily
expensive and inefficient portfolio.
As you are developing new products, you should be optimising your IP
portfolio accordingly. The relevance of existing patents should continually be
considered, especially when determining the need for new patents. An apple
tree must be pruned and trimmed to bloom and grow new shoots — the same
is true for an effective IP portfolio.
Criteria for patentability
04
In principle, any invention fulfilling the following three basic criteria is patentable.
Thus the invention must be:
• novel
• associated with an inventive step
• industrially applicable
However, there are several exceptions. Some inventions are not patentable for
moral reasons, such as methods for cloning human beings. Other inventions are
specifically exempt from patentability in one or more jurisdictions, for example
mathematical algorithms and business methods cannot be patented in many
countries.
NOVELTY
A product is novel if an identical product has not previously been disclosed. Thus,
a product is not novel if another product characterised by the same specific
combination of physical and functional features has previously been made
publicly available.
A product can be protected by a patent by claiming its physical features, or its
functional features, or a combination of both. Frequently, at least some physical
features need to be defined, and it is often desirable to claim a product by a
combination of physical and functional features. Functional features frequently
confer a broader protection of the product than the protection which would
have been conferred by claiming physical features only.
CASE: OSTOMYCURE
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INVENTIVE STEP
An invention complies with the requirement for inventive step if the invention
was not obvious to a skilled person. Thus, inventive step is evaluated based on
what was known at the time of filing the patent application from the viewpoint
of a person skilled in the art. Inventive step can, for example, be based on a
superior effect, an advantageous method, a surprising solution or a result
which would not reasonably be expected.
When evaluating inventive step of an invention, the relevant question to ask is
not whether a skilled person from a relevant technical area could have carried
out the invention, but whether the skilled person would have done so in the
hope of solving the underlying technical problem or in the expectation of some
improvement or advantage.
It is important not to use hindsight when evaluating inventive step. When using
hindsight many inventions could appear obvious, but inventive step must be
evaluated without using the actual knowledge of the invention.
In Europe, a very strict approach is used for evaluation of inventive step, the
so-called “problem-solution approach”:
The prior art document most closely resembling the invention is
identified.
The differences between the closest prior art and the invention
are identified.
The technical effect of these differences is identified.
An objective technical problem solved by the invention is
constructed thereupon.
Finally, it is evaluated whether the difference(s) between the
closest prior art and the invention was obvious to a person skilled
in the art.
#1
#2
#4
#5
#3
In other countries, less formalised approaches are employed to evaluate
whether an invention is obvious or not. However, common to the evaluation of
inventive step is the fictitious character “the person skilled in the art”, which is
presumed to be a skilled practitioner in the relevant field of technology, who
possesses average knowledge and ability, and is aware of what was common
general knowledge in the art at the filing date of the patent application.
04 CRITERIA FOR PATENTABILITY
When evaluating the novelty of methods it is, in general, necessary to consider
more than just the method steps carried out when the method is exercised.
Methods for producing a product can disclose:
A method for producing a product is, in general, novel when either the starting
material is novel, or when the combination of processing steps is novel, or
when the product resulting from the method is novel.
A method for using a product for a particular purpose can disclose:
Frequently, it may be preferable to claim such methods by defining the steps
carried out when performing the method. A method for using a product is
novel when either the product is novel, or when the method steps are novel.
A method for using a product can, in some instances, also be novel when the
technical result is novel.
An evaluation of novelty of an invention must clarify what has been made
available to the public.
a starting material
use of the product for carrying out the method
the method steps carried out when performing the method
the technical results obtained from carrying out the method
one or more method steps for processing the starting material
the result of the method in the form of the end product
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INDUSTRIAL APPLICABILITY
In Europe, an invention must also be industrially applicable in order to be
patentable. Industrial applicability should be understood in the broad sense, as
including any activity that can achieve a technical result in any industrial field.
As such, most inventions will be regarded as industrially applicable. In the United
States, the standard is slightly different. Instead, the requirement is that the
invention must have utility. The outcome is, however, similar, and most inventions
fulfill this requirement.
Many countries have chosen to exclude certain subject matter from
patentability for a variety of reasons. Examples include mathematical methods,
business methods and computer programs. The latter exception has caused
confusion and an ongoing debate for many years.
The confusion is due to the mix-up of the terms “computer program as
such” and “computer implemented method” – the former is excluded from
patentability – the latter is not. The mix-up has resulted in the misconception
that software related inventions cannot be patented. The truth is, however, that
many computer implemented inventions are patent eligible.
The ongoing debate revolves around whether software related patents
discourage, rather than encourage, innovation.
PATENTABILITY OF SOFTWARE RELATED INVENTIONS
Besides novelty and inventive step an invention must be technical and
non-abstract in its nature in order to be patentable. This applies equally to
an invention that is partly or fully implemented by means of software. So
any invention that makes a non-obvious “technical contribution” or solves
a “technical problem” in a non-obvious manner is patentable even if that
technical problem is solved by running a computer program.
Almost any electrical appliance today has some kind of software-implemented
functionality and in many cases, it is such a new functionality that gives
the technical contribution over the prior art. Software related inventions are
therefore the reality across many technical fields and patents are granted
every day worldwide covering a physical entity having software-implemented
functionality.
Purely abstract or mathematical methods are not patentable. However, a
software implemented mathematical method can be patented if the use of
the method provides a technical contribution over the prior art, i.e. if it can be
demonstrated that a particular use of the mathematical method is novel and
brings about a further technical effect in the real “physical” world. In this case,
the patentability requirements are the same as for any invention: Novelty and
inventive step.
Can software be patented?
05
04 CRITERIA FOR PATENTABILITY
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One very common prejudice against the patent system, is that it precludes
free sharing of information by preventing scientists from publishing their
science. The fact is that the patent system actually forces inventors to publish
their findings, because patent rights are only granted in exchange of a written
description of the technology behind the invention. The word “patent” comes
from the Latin word “patere” which means “to lay open” – in other words to
make what is disclosed in the patent available to the public. In the absence of
patents, many private corporations would never publish their research.
There is nothing that prevents a scientist from filing a patent application in
addition to publishing their research in peer-reviewed scientific journals so
that they can reach their publication goals and be judged by their scientific
contributions.
Corporations that are not dependent on making scientific publications also
need to take precautions before they render their inventions publicly available.
Corporations may need to publish the content of patent applications as part of
their marketing efforts. Putting a product of a patent application on the market
also constitutes a publication as the word is understood by the patent law.
Showing, speaking or writing about a product may be considered as a launch
or marketing of the product. At any product launch there is a risk of infringing
third parties intellectual property rights. Before going public with your invention
you should therefore carefully consider:
How and when to publish
Is patent protection relevant?
Does the product infringe any third party rights, or is there
freedom to operate?
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05 CAN SOFTWARE BE PATENTED?
PUBLISHING BEFORE FILING
A key requirement to obtaining a patent on an invention is novelty. The invention
can only be patented if it is new, i.e. not disclosed to the public and not part
of the prior art. Publishing an invention before filing of a patent application is
therefore detrimental to patentability. This cannot be emphasized enough. This
applies to all kinds of publications, whether an article, an abstract, a lecture, a
brochure, a pamphlet, sales materials or offering a product for sale. All of these
Thereby not said that all software related inventions can be patented, and
securing a patent to a software related invention can be challenging. Patent
applications categorised as “Computer implemented inventions” covering
pure software related inventions isolated from a physical entity typically
have a significantly lower allowance rate compared to other technical fields.
The challenge in this regard is often to demonstrate that a software related
invention brings something beyond mere computer implementation of a well-
known method.
The United States and Europe have different approaches to software related
inventions. In Europe, the question of patentability depends on whether the
invention is capable of bringing a further technical effect, whereas in the
US the important thing is whether the invention is capable of providing a
useful, concrete and tangible result. Hence, in Europe the manipulation of an
abstract idea is not considered technical whereas in the US the manipulation
of an abstract idea is not considered concrete or tangible. Even though the
approaches are different, the interpretations often generate similar results in
terms of patentability in Europe and the US.
COPYRIGHT VS. PATENT PROTECTION
Patent protection and copyright protection are two different types of legal
protection that can cover computer programs. Each type of protection serves
its own purpose:
Copyright protection
Computer programs are protected as works of literature under the Berne
Convention. This allows the software creator to prevent another party from
copying the program. It is not required to register source code in order for
the computer program to be copyright protected. Copyright protection only
narrowly covers the source code in that copyright only prevents the direct
copying of some or all of a specific version of a computer program, but does
not prevent other software developers from writing their own versions of the
underlying methodology.
Patent protection
In contrast, a patent covers the underlying methodology embodied in a
specific computer program, or the function that the computer program is
intended to serve, independent of the language or code that the computer
program is written in. As a patent gives the owner the right to prevent others
from using the invention claimed in the patent, a patent provides a much
broader protection than copyright.
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are considered publications as they all serve to convey information about the
product to the public.
An invention is considered public or prior art if it was available in any way -
written, orally, displayed, or just temporarily published on the internet - to at
least one person of the public, i.e. just one person not bound by confidentiality.
This means that novelty of your invention - and thereby your chance of
patenting is challenged by any of the following acts:
Is a display or an oral discussion really novelty destroying, when the authorities
evaluating the patent application have no chance of knowing what has been
displayed or said at every conference or trade show worldwide?
A display or a discussion with potential public access is novelty destroying.
It may not be discovered by the patent authorities, and a patent may even
publishing your research article including a description
of the production
publishing abstracts including description of the
product on your website
sending project applications including description of the
product to reviewers
showing the product at a conference or trade exhibition
handing out marketing material such as brochures
describing the product
be granted. However, the disclosure will be a threat to the validity of the
patent throughout its lifetime. Investors often require that you disclose any
known reasons for invalidity during a due diligence. Hence, the validity and
enforceability of the patent right will be associated with uncertainty.
If you have disclosed your own invention, all hope is not lost. Some countries
provide a grace period for the inventors’ own disclosures, i.e. the inventors
cannot accidentally destroy the patentability chances for themselves. The
grace period is usually 12 months and begins at the first public disclosure. If a
patent application is filed in this period, the publication made by the inventors
themselves will not be considered prior art. The invention may thus still be
patentable, despite the public display by the inventors - but only in countries
with a grace period. The grace period is governed by national law and
therefore varies between countries. In the US the grace period is 12 months.
PUBLISHING DURING THE PRIORITY YEAR
Once the priority founding patent application has been filed it is normally safe
to publish the invention and a subsequent display or description of the product
will not be prior art. The priority founding patent application provides protection
against publications made during the priority year but only to the extent that
the later pursued patent claims are fully supported by the priority founding
patent application. If the priority founding patent application is a high quality
patent application with the necessary level of details, definitions, support and
fall back positions, a publication during the priority year should do no harm.
If not, then there is limited protection against a publication during the priority
year.
Whenever the need for publication arises during the priority year, it should
always be checked that the intended publication disclose only details included
in the filed priority founding patent application. If something is missing, the
patent application can be updated and re-filed. Often the amount of updating
06 HOW AND WHEN TO PUBLISH
sending project applications including description of the
product to reviewers
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is limited and can be done very quickly so the publication need not be
postponed.
A meeting with potential investors and partners should also be regarded as a
potential publication unless the investor or partner has signed a confidentiality
agreement. If any confidential information is provided to the investor/partner
it is strategically wise to update the patent application shortly before the
meeting.
PUBLISHING AFTER THE PCT APPLICATION HAS BEEN FILED
Normally, at the end of the priority year, a PCT application and/or one or more
national applications are filed, which is the last opportunity to update the text
and data included in the patent application. Once this application has been
filed the text can no longer be changed. At this stage a publication cannot
count as prior art against the patent application. Still one needs to be cautious
before publishing: During the 6-month period between filing and publishing
of the PCT application a new patent application can be filed claiming even
a trivial variant of the invention disclosed in the priority founding patent
application. Until its publication, the PCT application does not count as full prior
art and a new patent application filed at this stage need only be novel – not
inventive – over the PCT application.
If new discoveries are made during this period, one should consider whether
a so-called second generation patent application should be filed before
publication of the patent application and before publication of the new
findings. In fact, corporations often file this type of patent application just
before the patent application is published in order to protect commercially
important variants and potentially also to extend duration of exclusivity as the
second generation patent application will expire some 12 to 18 months later
than the priority founding patent application.
PUBLISHING AFTER PUBLICATION OF THE PATENT
APPLICATION
At this stage the priority founding patent application can no longer be updated
and any new findings to be pursued in a new patent application will need to be
patentable in its own right in view of that publication.
At this stage, one only needs to make certain that a publication does not
question the findings in the earlier patent application or casts doubts on
the data presented there. While quite rare, it does happen that a scientific
publication at this stage harms the prosecution of the patent application.
MARKING
From the filing date of a patent application it is permitted to label the product
of the application with “Patent pending”. Products produced by a patented
method may also be labeled, and the labeling can be on the product itself, on
the packaging, as a package insert, data sheet, or brochure.
Labeling is advisable, even for marketing in countries where it has no legal
effect. Labeling is a preventive sign to potential infringers and competitors. In
some countries like the US, India, Australia, and Great Britain, the labeling of
products may further have an impact on an infringement case, as well as the
potential calculation of damages resulting from infringement.
When labeling patent protected products on the Danish market, the patent or
application number should be directly or indirectly derivable from the label.
This may easily be obtained by labeling “Patent” or “Patent pending” with a
reference to a designated webpage where the information can be found, and
regularly updated.
06 HOW AND WHEN TO PUBLISH
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Carlsberg Group’s Senior
Patent Manager and
HØIBERG break new
ground
CARLSBERG
There are two rather unique things about the Carlsberg Group’s patent
portfolio. First, the wide scope and variety of technical fields covered by the
patents. Second, the fact that a single employee, the Senior Patent Manager,
handles the entire portfolio.
The Senior Patent Manager is a strategic role meant to ensure that Carlsberg’s
patent portfolio creates value for the business. “I handle Carlsberg’s broad
protection which encompasses our core business, through the entire brewing
process,” says Charlotte Utermøhl Lund, Senior Patent Manager at Carlsberg.
THE SENIOR PATENT MANAGER CONNECTS CARLSBERG
AND HØIBERG
According to Charlotte Utermøhl Lund, her most important task is to maintain
the strategic and commercial overview, and thereby ensure that Carlsberg’s
patent portfolio not just aims at protecting the results of the innovation but
also aims at ensuring the return on innovation investments.
“The patents Carlsberg holds must protect our technologies and be aligned
with our commercial and development strategies,” says Charlotte Utermøhl
Lund.
“To ensure that Carlsberg’s patents support the business and strategy, I also
focus on involving relevant stakeholders in the decision-making process and
ensuring that decisions and results are communicated clearly with the key
message front and centre. In my daily work, I wear many different hats - IP
specialist, project manager, communicator, and stakeholder manager. I
gather any loose ends and act as a link between HØIBERG and Carlsberg,” she
explains.
CASE: CARLSBERG
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SKILLS AND PROFESSIONALISM COMPLEMENT EACH
OTHER
Carlsberg’s IP portfolio varies widely across different technologies and
HØIBERG’s skills in biotechnology and mechanics are in high demand.
“It’s difficult to cover every specialist skill internally because Carlsberg’s
technology is so wide-ranging. By working with HØIBERG, we can balance
value and competencies. HØIBERG’s employees are the specialists. They are
incredibly skilled in IP and the technologies that are relevant to Carlsberg’s
business, while I am the generalist focused on the strategic and business-
related overview for Carlsberg. Our skills and professionalism complement
each other by combining the specialist with the generalist,” says Charlotte
Utermøhl Lund.
WORKING WITH HØIBERG STRETCHES BEYOND THE
AVERAGE CLIENT RELATIONSHIP
The personal aspect of the working relationship with HØIBERG is essential to
Charlotte Utermøhl Lund.
“To facilitate a working relationship that creates value, an effective
interpersonal relationship is crucial, and we recognise the fact that we depend
on each other to achieve the best results. You need to feel safe enough to
express that there are things you don’t know, to ask questions, to challenge
each other, and to reach out. The relationship is very important to me.”
“My working relationship with HØIBERG stretches beyond the average
customer/client relationship. Both sides have invested the time required to
grow a close professional relationship and create a space for confidential
discussions and sparring. HØIBERG is very skilled, and they are very open. We
trust each other and I am confident that HØIBERG will solve any task at hand in
the best possible way,” says Charlotte Utermøhl Lund.
HØIBERG HAS BEEN A LIFESAVER MANY TIMES
Carlsberg and HØIBERG have worked together on the Carlsberg patent portfolio
for more than 15 years.
“I highly value that I can access the history and every detail of Carlsberg’s
patent portfolio, going back years, due to HØIBERG’s structured and detailed
case management. In my job, I must be able to answer a lot of questions, for
example, what was the idea behind a specific patent ten years ago, or provide
details about our brewing method,” says Charlotte Utermøhl Lund.
“I rely on specialist knowledge from HØIBERG so I can focus on maintaining an
accurate overview of the IP strategy and make sure that all aspects fit into the
big picture. HØIBERG has been a lifesaver many times when it comes to gaining
crucial information regarding Carlsberg’s portfolio and history,” Charlotte
Utermøhl Lund states.
CASE: CARLSBERG
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MANAGING CARLSBERG’S PORTFOLIO GLOBALLY
Throughout their many years of collaboration, HØIBERG has ensured the
issuance of many different patents on behalf of Carlsberg and has handled
their portfolio globally.
“HØIBERG has handled patents for Carlsberg on a lot of different inventions
in many different countries. Even though Carlsberg is globally present, my
only point of contact is HØIBERG. HØIBERG handles Carlsberg’s portfolio in all
countries through their international network of agencies that they collaborate
with and instruct, for example, in relation to our patent applications.”
ACHIEVING IMPORTANT RESULTS FOR CARLSBERG’S
BUSINESS
With so many patents across the world, it is unsurprising that Carlsberg’s
patents have been challenged repeatedly.
“HØIBERG has provided great support and valuable counsel for Carlsberg when
they’ve handled opposition proceedings for us. HØIBERG’s experts are adept
at countering objections, whilst ensuring that the argumentation does not
create problems in other countries. HØIBERG can expertly handle and balance
the dialogue with Carlsberg’s collaborators during opposition proceedings,”
concludes Charlotte Utermøhl Lund.
CASE: CARLSBERG
Brewing for a better today and
tomorrow
Established in 1847 by brewer J.C. Jacobsen, the Carlsberg Group is one of
the leading brewery groups in the world, with products sold in 150 markets.
The Group’s beer portfolio spans both local and international premium
brands, including Carlsberg, Tuborg, 1664 Blanc and Grimbergen, strong
local power brands and alcohol-free brews.
In addition, its portfolio of other beverages includes both alcoholic and non-
alcoholic beverages such as ciders, including Somersby, soft drinks, and
energy drinks.
The Group’s purpose is brewing for a better today and tomorrow. Doing
business responsibly and sustainably supports that purpose – and drives
the efforts to deliver value for shareholders and society.
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Patents protect Carlsberg’s
core business through the
entire brewing process
Isolation of yeast is just one of the inventions and innovations
that Carlsberg has developed to support its core business. Other
inventions and innovations include:
Raw materials: e.g., plant patents on the
cultivation of barley and hops
The brewing process: e.g., biotech patents on
organisms for, and methods of, fermentation
Machines and technology: e.g., mechanical
engineering patents on equipment, valves, and
cooling systems for the brewing process or
draught beer installations
INTERNATIONAL PATENT APPLICATIONS
REQUIRE DEEP INSIGHT INTO NATIONAL LEGISLATION
The potentially long-lasting competitive advantages provided by inventions
and innovations need to be protected internationally. HØIBERG ensures that it is
possible to protect Carlsberg inventions globally through a single international
(PCT) patent application, which can be converted to national applications in
most of the world’s industrialised countries.
The PCT application timeline provides time to validate the invention, mature
the product, test the market and/or find commercial partners before Carlsberg
invests larger sums in the national stage of the patenting process.
HØIBERG ensures that the initial draft of a PCT application considers individual
national regulations to secure the strongest possible protection of each
national patent.
“HØIBERG is very skilled,
and they are very open.
We trust each other
and I am confident that
HØIBERG will solve any
task at hand in the best
possible way”
CHARLOTTE UTERMØHL LUND
Senior Patent Manager, Carlsberg.
CASE: CARLSBERG
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Filing – When and where?
07
The date of filing and the content of a patent application are among the critical
factors to be considered when formulating an effective patent strategy. There
is often a natural wish to file a patent application as early as possible. In some
circumstances this may be the sensible thing to do, but several factors should
be considered before deciding when to file.
PRIORITY DATE
After filing a first patent application, the applicant can within one
year – the priority year - file additional patent applications claiming
priority from the first application (the priority application). The
date of filing of the first patent application is known as the priority
date, and the priority date is decisive for determining the state of
the prior art. Thus, anything published before the priority date may
be taken into account when determining novelty and inventive
step of the claimed invention. Furthermore, the priority date can
be used for determining who has first filed a patent application. If
two parties claim patent rights to the same invention, the rights to
the invention will be awarded to the party who has filed the patent
application first (“first-to-file” principle).
An updated patent application can claim priority from one or
more earlier patent applications, provided that the earliest patent
application is filed less than one year prior to the filing of the
updated patent application. If the updated application introduces
new aspects of an invention, the new aspects will not enjoy the right
of priority. However, the updated application can contain new data
supporting the invention and still retain the priority date.
Early filing of a patent application gives rise to an early priority
date and the benefits associated therewith. However, at least two
factors may favour a later filing date, namely the requirement for
an enabling description and the wish for a longer patent term.
07 FILING – WHEN AND WHERE?
DESCRIPTION OF THE INVENTION
It is a requirement that the patent application discloses the
invention in such a way that a skilled person can carry out the
invention based on the disclosure thereof in the patent application.
In many countries it is not sufficient to describe how an invention
can be carried out, it is also a requirement to demonstrate that the
invention in fact has been carried out.
If the patent authorities consider that the requirement of an
enabling disclosure is not fulfilled, the patent application risks being
rejected for lack of an enabling disclosure. Such an objection can
be difficult to remedy after filing.
It is not a requirement that a patent application provides actual
proof that the invention works. However, the application should at
least render it credible.
WHEN TO FILE DOCUMENTATION SUPPORTING THE
INVENTION
The need for an early priority date may thus have to be weighed
against the fact that a broader and/or stronger patent protection
can be obtained, when the applicant is capable of providing a
more detailed disclosure of the invention.
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