1. Protecting Product and
Design Innovations

2. HKUST Business School
Innovation Protection via Patents
 Copyright laws protect expression, and innovation
in software (now) and works related to “creativity”
 Trademark Laws protect Brands and Identity
 Trade Secrets can be used to protect innovations
 But, you MUST keep the secret a secret
 Patents protect PRODUCT AND PROCESS
innovations
 BOTH products (function) and processes are protected
 HOWEVER you can NOT keep the innovation a secret
 BECAUSE patents are published for everyone to see
 AND expression (design) is NOT PROTECTED, only
function

3. HKUST Business School
Patent Law Protections
 Protects FUNCTION, not expression
 Amazon patented its one-click function, as
copyright would not have protected this function
 Replicating code for one-click function easy to do
 Lengthy application and approval process
 Significant legal costs may be required
 Patents may be required in multiple jurisdictions
 Patent limited to exact terms of application
 Be careful to limit patent claims narrowly

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An Idea Can Not Be Patented
 … “while a scientific truth, or the
mathematical expression of it, is not a
patentable invention, a novel and useful
structure created with the aid of knowledge of
scientific truth may be.” (Mackay)
 “an idea of itself is not patentable”
 A principle … ; an original cause; a motive;
these cannot be patented” (Le Roy)
 A new discovery of fact is not patentable.

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Fine Line Divides Idea and Invention
 The US Supreme Court declared: “While a
scientific truth, or the mathematical
expression of it, is not a patentable invention,
a novel and useful structure created with the
aid of knowledge of scientific truth may be”
 MacKay Radio & Telegraph Co. v Radio Corp. of America
(1939)

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Patents are Strongest Protection
 Establishes right to prevent ALL OTHERS
from making or using the patented product or
process, without any need for establishing
that original work has been copied
 Copyright law allows for simultaneous creation
 Patent law is exclusive monopoly over all rights
 Limited duration (currently 17 years from date
of issue or 20 years from application date in
USA; similar length in other counties)

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Patent Creates Limited Monopoly
 Why do governments do this?
 What is the cost of this monopoly right to society?
 What is the benefit of this monopoly right?
 Is the benefit worth the cost? Some say no.
 USA patent law not same as many other
countries law, but hard to ignore US market
 USA does not require commercial usage, many
countries in Europe and with laws based on
European legal models do require applied usage.

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Patent Application Requires Full
Disclosure of Invention
 Must be sufficiently detailed to ENABLE
anyone to copy the invention after the end of
the patent monopoly protection period ends
 Must use commonly understood engineering or
technical terms known to relevant specialists
 Legal terms say “to enable any person”, but this is
assumed to refer to anyone with basic relevant
knowledge related to the field to which it applies
 Must show “best mode” of making product.

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Requirements to Obtain a Patent
 Novelty
– restricts patents if innovation has been
previously anticipated, or if publicly disclosed and
patent not applied for in time
 Twelve months prior to time of application in USA
 Race to patent by “simultaneous” inventors
 Utility
– requires that innovation be a “useful art” and
more than just novelty or curiosity
 Inventor must identify a specific and real utility
 Non-obviousness
– the most difficult criteria

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Requires more than Invention
 Patent must focus on and describe some benefit to
society, and not just invention
 Helps prevent basic scientific ideas from being
patented, keeps science research free
 Chemical intermediate not allowed to be patented as
no clear application or usage for this new chemical,
although it was very useful to chemists in studying
other reactions
 Utility needs to have some public or social benefit
 “A patent is not a hunting license” for some utility

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Processes May Be Patented
 “That a process may be patentable,
irrespective of the particular form of the
instrumentalities used, can not be disputed
…, it may not be at all material what
instrument or machinery is used” (Cochrane)
 Benson case resulted in rejection by US
Supreme Court of patents for algorithms
 Limitations on process patents in Morse
 Claim was too sweeping; discouraged innovation

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Defining Process: Official Views
 “A process is a mode of treatment of certain
materials to produce a given result. It is an
act, or a series of acts, performed on the
subject matter to be transformed and reduced
to a different state of thing”
 “The term process means process, art, or
method, and includes a new use of a known
process, machine, manufacture, composition
of matter, or material”

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Challenges in Defining Process
 Basic definition works well when
transformation are easy to observe, but what
about transformations of electronic bits?
 Can biological processes be patented? If so,
what types of processes are patentable and
which are excluded from being patented?
 This is an evolving area of patent law, with some
of the rules still being developed.
 Case law and statutory law both developing