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IPR Issues

  1. 1. IPR ISSUES. SEVILLE, 07/11/2011
  2. 2. ip4inno AGENCIA IDEA• It is the Regional Development Agency of the Andalusia Government• In 1987, a law approved by the Andalusia Parliament created the former “Instituto de Fomento de Andalucía (IFA, the RDA)”.• Since 2004: •it is attached to the Regional Ministry of Innovation, Science and Enterprise •it is called the Agency for Innovation and Development of Andalusia (IDEA) •its main goals are supported on Innovation
  3. 3. ip4inno• Spanish autonomous region with the greatest number of inhabitants (>8,3 million) and the second largest region in Spain.• Industrial sector consisting mainly of small-medium sized enterprises
  4. 4. ip4inno WHO WE ARE Córdoba• CITPIA is managed by the Agency for Innovation and Huelva Jaén Development of Andalusia which is the Regional Sevilla Development Agency of the Andalusian Government Granada Almería Cádiz Málaga• . CITPIA (Centro de Informacion Tecnologica y de Propiedad Industrial de Andalucia)• PATLIB Center of the Spanish autonomous region of Headquarter Andalusia Branch Office• Headquarter in the andalusian capital Seville, and offices in each of the 8 provinces of Andalusia • One CITPIA Officer (IP Helpdesk) in each province• The Agency has about 300 employees in total,
  5. 5. ip4innoTechnological and business services The Agency for Innovation and Development of Andalusia, in conjunction with the financial incentives that it handles, makes a package of services available.Business Services:- Industrial Designs- Transfer of Technology- Consultant in financing R+D+I- Business Nursery- Information about Productive Areas (SESPA)- Information on grants and incentives- Databasis of Andalusian Companies Balance Sheet- Business self-diagnosis- Information about Advaced Services (SERAVAN)- Simultaneous Telephone Translation (ASISTEL)Invest in Andalusia
  6. 6. ip4inno• Financing services: The Agency offers several funding programs: To foster the creation of innovative companies To foster innovation in existing companies To foster R+D projects in cooperation with universities • Business Incubation services: The Agency is member of the European BIC Network (Business Innovation Centres) Renting office space in our Business Center in Granada, Málaga and Seville • Technology Transfer services: The Agency is member of the Enterprise Europe Network and coordinator of the andalusian branch (CESEAND) Assistance in commercialization and technology transfer via the network
  7. 7. ip4innoAGENCIA IDEA- SERVICES: PATENTS, TRADE MARKS AND INDUSTRIAL DESIGNS– Information– Technical and Legal consultancy– Advanced Searches– Management of the registration process
  8. 8. ip4inno AGENCIA IDEA. Intellectual Property Rights• You can register Intellectual Property Rights at the Agency for Innovation and Development of Andalusia, such as: – Inventions (Patents and Utility models) – Trade marks – Industrial designs – Topographies of semiconductor products• The Agency for Innovation and Development of Andalusia is a collaborating member of the Spanish Patent and Trade Mark Office (SPTO), which is also recognized by the European Office of Patents as part of the PATLIB (European Patent Office) Network, as well as by the World Intellectual Property Organization (WIPO).
  9. 9. ip4inno DIFFERENT KIND OF REPORTSWe offer: Trademark and Designs Search Reports Sophisticated searches: Patent Novelty Search Reports Infringement Search Reports Validity Search Reports Patent Statistic Analysis (State of the Art Reports) Monitoring Services (Technology and Competitor Watch Reports)
  10. 10. ip4inno WHAN CAN WE PROTECTSet of rights that protect the creators of inventions, trademarks or designs from competitorsExclusive rights: immaterial, territorial, transferable, limited in time (except trade marks) Duties (dissemination, exploitation, payment of fees) It gives a monopoly operating in themarket, in exchange for the fulfillment of certain obligations (taxes, exploitation of invention,use of the trade mark ...) The acquisition of these rights is voluntary and done through the register. In our country the Spanish Patent and Trademark SPTO is responsible for processing and granting
  11. 11. ip4innoREGISTERED INTELLECTUAL PROPERTY RIGHTS IP RIGHTS WITH A CERTIFICATE Utility modelsPatents Duration: until 10 yearsDuration: 20 until years Designs Trademarks Duration: Duration: until 10 years until 5 x or life 5 years
  12. 12. Protection ip4inno COMBINED USE OF IP RIGHTS Cap Patented Coca Cola Bottle Registered trade mark ® Registered design Registered trade mark ® Label text Copyright © The Coca Cola Company Trade name ip4inno 14
  13. 13. Protection ip4inno PRODUCT DIMENSIONS AND EMBEDDED IP RIGHTS Marketing TRADEMARK Image/brand Reliability Client Innovativeness Ergonomics TechnologySafety Esthetic nature Design PATENTS DESIGN PROTECTION ip4inno 15
  14. 14. ip4innoTRADE MARKS AND TRADE NAMES"A brand is a collection of perceptions in the mind of theconsumer."
  15. 15. ip4inno TRADE MARKS AND DESIGNS• Effective Trade mark and design protection play an important role in branding and marketing strategies of businesses• Consumers think of trade marks and designs as more than the mere product. The trade mark is for instance: – A Business identifier – A guarantee of quality – The goodwill of the company – A marketing function
  16. 16. ip4inno OPTIMISING YOUR BUSINESS• Establishment of strong trade marks and marketing are means of making a high product value• Ways of optimising businesses competitiveness in a global perspective are for example: – Protection of knowledge – Commercialisation of intellectual property rights
  17. 17. ip4inno HOW DO I REGISTER A TRADEMARK?You must file an application with the relevant Trademark Office for the territory where protection is desired.How long does the trademark registration last?In most countries, the registration of a mark last 10 years, which are renewable indefinitely for 10-year periods.Does a trademark registration in any country protect my rights in othercountries? No. IP Rights are exclusive territorial. That means that they are granted for the territory they are applied for and they will only be valid in that region or country.
  18. 18. ip4inno WHAT IS THE ROLE OF THE TRADE MARK SEARCH?Conducting a search is crucial when preparing trade mark applications in order toavoid filing trade marks that are already registered or applied for, or trade marksthat would be similar to any existing ones.Trade mark databases are available on most national or regional trade mark officesweb sites, including the WIPO. The proper search depends on the territory wherethe protection is sought (proper database needs to be chosen), classes of goodsand services (they need to be chosen accurately) and the representation of the sign(its distinctiveness).
  19. 19. ip4inno WHAT IS A TRADE MARK?• A distinctive sign which identifies the goods and services of one company from those of another Coca-Cola• A trade mark helps consumers to identify and choose registered between products/services based on their reputation and since quality 1887• A trade mark is a word or sign which can be represented graphically and which is capable of distinguishing the Nike trade origin of certain goods and services registered since 1971
  20. 20. ip4inno DIFFERENT TYPES OF TRADE MARKS• Word e.g. Adidas• Logo e.g.• Word/Logo e.g.
  21. 21. ip4inno DIFFERENT TYPES OF TRADE MARKS• Numerals/Letters• Objects/3D• Slogans “im lovin it"
  22. 22. ip4inno DIFFERENT TYPES OF TRADE MARKSExample of a well-known trade markOther and „new‟ kinds of trade marks: Collective mark, Sounds(sound marks), Certification mark, Colours or combinations(colour marks),3-dimensional, Feel, Movement marks, Graphic reproduction!Related area: Protected Geographical Indication (PGI)
  23. 23. ip4inno DIFFERENT TYPES OF TRADE MARKS• Tono Nokia(Marca comunitaria 1040955)de: Francisco Tárrega(España, 1852-1909) Grand Vals
  24. 24. ip4innoMAKE A GOOD DECISION Inventing a trade name or brand is not easy. Sound, simple, bold and catchy is complicated but may involve commercial success For Adi Dassler was easier
  25. 25. ip4inno THINGS TO CONSIDER WHEN SELECTING OR CREATE A BRAND-Check that your choice meets all legal requirements-Perform a trademark search-Easy to read, write, spell and remember-No negative connotations in terms of language
  26. 26. ip4inno Special Attention to the negativeconnotations in different countries!
  27. 27. ip4inno
  28. 28. ip4inno REQUIREMENTS FOR A GOOD TRADE MARKArticle 7 of the Community Trade Mark Regulation(Absolute Grounds for Refusal) – Distinctive (unique) – Not descriptive – Not similar or identical
  29. 29. ip4inno LIKELIHOOD OF CONFUSION• Identical marks: protected against identical and similar goods/services• Similar marks: protected for the same goods/services. in the same way• Identical goods/services: the marks must not be similar• Similar goods/services: the marks must not be identical Well-known marks have a broader scope
  30. 30. ip4inno SIMILAR/IDENTICALMeaning the way the mark is:• Written• Looks• Phonetic (sounding)• Conceptual similarity
  31. 31. ip4inno SIMILAR/IDENTICAL - EXAMPLESWritten Cool/KoolLooks Basket / BuskitSounding For You/ 4 UConceptual Star/Stern
  32. 32. ip4inno VARIED PROTECTION OF A TRADE MARKHow close can you get to another trade mark?• Strong trade mark gives wider protection• Weak trade mark gives less protectionImportant: Make a strong and original trademark
  33. 33. ip4inno GOOD LIST OF GOODS AND SERVICES• Important to make a good list of goods and services• Protection covers ONLY the goods and services included in the registration• Think 5 years ahead• Classification system – Like a library system – 45 classes
  34. 34. ip4inno CAN I SELL OR AUTHORIZE THE USE OF MY TRADEMARK?YES. A trade mark is a legal property right you may own and so, you can sell,bequeath or otherwise transfer it. You may also license your trademark rights. Theappropriate process to transfer your rights is called Assignment. If you want to sell orotherwise transfer your trademark, we recommend you to get professional advicefrom an agent or law firm specialized in intellectual property. Will the Trademark Office ensure that a trademark is not infringed?The Trademark Office does not act as enforcement agency. The owner of atrademark or a person hired by the owner is the person responsible for monitoring themarket for cases of infringement and take the corresponding legal actions.
  35. 35. ip4inno COSTSTrade mark or Trade name: 138,94 € first class 90 € the followingsCollective or Guarantee : 277,85€ the first class 180 € the followingsRenewal: 160,86 € the first class 108 € the followings
  36. 36. ip4innoEXAMPLE(1) Instancia de SOLICITUD, que contiene información sobre: Tipo (producto, servicio, garantía, colectiva…) Solicitante Datos del titular o titulares Documentos aportados: Justificante de pago de la tasa
  37. 37. ip4innoMarca MIXTA EXAMPLE(2) La solicitud de MARCA MIXTA (denominación + logo) debe incluir ADEMÁS la reproducción del diseño de la marca: Reproducción del motivo gráfico Descripción de los colores del motivo
  38. 38. ip4inno Códigos de la Clasificación de Niza de los sectores en los que queramos utilizar la marcaConviene incluir aquellos sectores próximos para evitar registros que entren en conflicto
  39. 39. ip4inno CONCLUSIONS A trade mark allows us to identify our products from competitors. There is no protection without register The register should extend to our potential markets and suppliers Good Choice is important Lack of protection is equivalent to devaluate a major business asset
  40. 40. ip4inno INTERNATIONAL PROTECTIONTrademark filed:• National Office – acquires national protectionEU system:• OHIM – acquire protection in 27 member statesInternational system:• Madrid Protocol – member states
  41. 41. ip4innoNATIONAL REGISTER Register at SPTO = Protection in SpainCOMMUNITY REGISTER Register at OHIM (Alicante) = Protection in EUINTERNATIONAL REGISTER Register at WIPO Ginebra) = Plurality of national registers
  42. 42. ip4inno EU TRADE MARK - COMMUNITY TRADE MARK• Covers the entire European Community – 27 Member States• Apply at the OHIM Offices in Alicante (e-filing accepted) (or National Office)• Fees (can be viewed at the OHIM website: www.oami.europa.eu)
  43. 43. ip4inno EU TRADE MARK EXAMINATION“All or nothing” principle: – Distinctive character – OppositionThe optional search reports
  44. 44. ip4inno INTERNATIONAL FILING• Madrid System• National Applications e.g. in Australia, USA• Priority claimed for a national application within 6 months
  46. 46. ip4inno INTRODUCTION• The Madrid system for the international registration of marks (the Madrid system) established in 1891 functions under the Madrid Agreement (1891), and the Madrid Protocol (1989)• The two treaties are parallel and independent and States may adhere to either of them or to both• It is administered by the International Bureau of WIPO located in Geneva, Switzerland
  47. 47. ip4inno DESCRIPTION• Open to any State which is party to the Paris Convention• Open to intergovernmental organizations which maintains its own office for the registration of marks• The system makes it possible to protect a mark in a large number of countries by obtaining an international registration which has effect in each of the contracting parties that has been designated
  48. 48. ip4inno WHO CAN BENEFIT?• Basic application/registration: an international application can only be filed if the mark has already been applied for at a national Trademark Office (referred to as the Office of origin).• The person or legal entity must have a connection, with the Contracting Party in order to use the trademark as a basic application/registration.• An international application must be presented to the International Bureau (WIPO) through the Office of origin.
  49. 49. ip4inno ADVANTAGEThe system of international registration of marks has the following main advantage fortrademark ownersA simplifying mechanism:• The Madrid system offers a trademark owner the possibility to have his trademarkprotected in several countries by filing only one application directly with his ownnational or regional trademark office
  50. 50. ip4inno WHAT IS THE RELATION BETWEEN COMMUNITY AND NATIONAL TRADE MARKS?The CTM system and the national trade mark registration systems co-exist in parallel.If you wish to protect a trade mark, you can apply for a CTM, a national trade mark, orboth. Note that the exclusive right conferred by the CTM can lead to a subsequentnational trade mark application being refused (as it will constitute an earlier right) and viceversa, and thus the registrations made under the different systems must not overlap
  51. 51. ip4innoIS THERE ANY CONNECTION BETWEEN THE CTM SYSTEM AND THE MADRID "INTERNATIONAL" SYSTEM?Since the European Community accessed the Madrid Protocol trade mark ownersbenefit from two new options:1. Extend CTM protection internationally. (A CTM application or a registered CTM can be used as the basic mark for an international application).2. Designate the European Community in an International Application.
  52. 52. ip4innoDOMAIN NAMES
  53. 53. ip4inno INTRODUCTIONTrade mark registration is not company name or domain name registrationA domain name may be registered as a Trade mark and vice versaIncorporating a registered trademark owned by a competitor or another company intoyour domain name or meta-tag may be an infringement
  54. 54. ip4inno TRADE MARK VS DOMAIN NAME• Protection of an Identifier of a • Human-friendly form of Internet product or service address• Priority application date • First come, first served• Territorial scope • World wide (gTLD)• Division into classes of goods and • In principle, no examination service• Examination and opposition
  55. 55. ip4inno HOW TO REGISTER A DOMAIN NAME?It is recommended that you register your domain name through a registrar.In addition to registering the domain name the registrar will usually also be able tooffer services such as hosting your website and forwarding email.
  57. 57. ip4inno Geographical names can be used in the market with the following meanings:• Simple indication of source: indicates the origin• Geographical indication: indicates the origin + quality
  58. 58. ip4inno GIS ARE AN IMPORTANT ASSET− Consumers are constantly faced with the problem of choosing− Differentiation is a key element in any commercial strategy− GIs may become an excellent tool to differentiate products and attract purchases LEGAL REGIME TO PROTECT GIS • Protected Designation of Origin (PDO) • Protected Geographical Indication (PGI)
  59. 59. ip4inno THE REGISTRATION PROCEDUREWho can apply? Producer groupsWhere to address? Local authorities in Member StatesWhat is the procedure? Application is sent to the Commission. Publication. Third parties may object. Registration EFFECTS• The use and fruition belongs to all producers/traders in the defined area whose products comply with the conditions of production laid down in the specifications• They may prohibit any other person from using or advertise under the registered name, in such a way as to take unjustified advantage of its reputation
  60. 60. ip4inno WHERE TO FIND MORE INFOUseful links:• http://oami.europa.eu/ (OHIM)• http://www.wipo.int/portal/index.html.en (WIPO)• http://arbiter.wipo.int/domains/index.html (WIPO Domain Name Dispute Resolution Service)• http://www.ipr-helpdesk.org/index.html (IPR Helpdesk)• http://ec.europa.eu/agriculture/foodqual/quali1_en.htm (European Commission - Agriculture and Food)
  61. 61. ip4innoTRADE SECRET
  62. 62. ip4innoA trade secret is commonly defined in broad terms as any information, includingbut not limited to technical or non technical data, a formula, pattern, compilation,programme, device, method, technique, drawing process, financial data, or list ofcurrent or potential customers or suppliers that:-is sufficiently secret to derive current or potential economic value based on thefact that it is not generally known to other persons who could obtain economicvalue from its disclosure or use; and- whose secrecy is protected by its holders reasonable efforts.
  63. 63. ip4inno HOW CAN I MANAGE THE PROTECTION OF MY TRADE SECRETS WITHIN THE EUROPEAN COMMUNITYAt present, there is no harmonised system for the protection of trade secrets within theEuropean Community. Therefore, it is advisable to check the national legislation of theMember state where trade secrets protection is sought. Nevertheless, in many states tradesecrets protection is regulated under unfair competition legislation.Trade secrets are protected provided they are kept as a secret. A formal registrationprocedure is not needed for their protection. As a result, the owner of the trade secrets mustadopt the proper measures to maintain its confidentiality (for example, a confidentialityagreement). Generally, a trade secrets owner is protected against unauthorized third partieswho disclose and use the trade secrets.
  64. 64. ip4innoCOPYRIGHT
  65. 65. ip4inno INTELLECTUAL PROPERTY RIGHTSContributions to the world of literature and artCannot rest on ideas, only protects the way, the outward expression.Protected regardless of the creative level.Form is protected regardless of the implementation of the work.Protected regardless of whether or not exploitedRights: the author has acquired only by the fact of its creation.
  66. 66. ip4inno COPYRIGHTSThe Copyright protects the scientific creations; literary and artistic works, attributingthe authors exclusive right to exploit the simple fact of its creation.Computer Programs are also subject of copyright
  67. 67. ip4innoCopyright WHAT CAN WE PROTECT ?  Original literary, artistic or scientific  Derivative works translations, reviews, creations abstracts, summaries, musical  Books, musical compositions, arrangements audiovisual works, sculptures,  Collections Anthologies, Databases paintings, comics, photographs, computer programs No necessary register Duration Life of the author and 70 years later Limited protection
  68. 68. ip4inno What does copyright protect?Copyright protects literary and artistic work, such as books, sculptures, painting, music texts,images and pictures. Copyright also protects specific types of works, such as databases andcomputer programs (the list is not exhaustive). Do I need to register my work?To enjoy copyright protection, no formality is required.Copyright protection is automatic and is granted as soon as a work is expressed in a certain form. How long can my work be protected for? In general, from the date of creation to seventy years after the author‟s death
  69. 69. ip4innoDESIGNS
  70. 70. ip4inno WHAT IS A DESIGN?The outward appearance of a product or part of it which results from lines, contours,colour, shape, texture, materials and its ornamentation (source WIPO)“design” means the appearance of the whole or a part of a product resulting from thefeatures of, in particular, the ... (source OHIM)Refers to the ornamental or aesthetic aspects of a productDesign makes a product attractive and appealing to customers and may even be itsunique selling point
  71. 71. ip4inno WHAT IS A DESIGN? “design or model "means the appearance of the whole or part of a product resulting from the features of, in particular line colors shape texture ornamentationcontour materials
  72. 72. ip4inno REASONS TO REGISTERProtection or register gives the exclusive rights to prevent unauthorized copying orimitation by others.Determines who is the owner and can defend itself against possible attacks ! Presumption of ownership!
  73. 73. ip4inno APPARIENCE/ TECHNICAL FEATURESUtility model or Patent Industrial Design
  74. 74. ip4inno REQUIREMENTSThe design must be new and have a singular character“special period of 12 months for disclosures Novelty : no identical design has been disclosed Singular : different general impressión
  75. 75. ip4inno REGISTERED DESIGNS•Protects shape or configuration (3-D) and/or pattern or ornamentation (2-D)•The lines, contours, colours, shape or texture “ the appearance”It is not protected by registration of a design:• the product itself• the technical function of the product• the capacity of a sign to be distinctive etc.
  76. 76. ip4inno ADVANTAGES OF REGISTERED DESIGNS• A registered design gives you a monopoly right for the look of a product, protecting both the shape and the pattern or decoration.• A registered design will cover the lines, contours, colours, shape, texture and materials of the product or its ornamentation.
  77. 77. ip4innoRequirements for obtaining exclusive rights• Novelty• Individual CharacterBirth of RightApplication for registrationTerm of protection5 years renewable 4 times (and max. 25 years)
  78. 78. ip4inno COSTS AND DURATIONCosts :Spain: 90€ per 10 designsEuropean Union 400€Duration : 5 years: renewal until 25 years
  79. 79. ip4inno HOW TO OBTAIN A DESIGN PROTECTION?By filing:• A design application with the National Patent Office• An international application under the Hague Agreement Concerning the International Deposit of Industrial Designs• A community design application with the OHIM THE IP RIGHTS ARE EXCLUSIVE TERRITORIAL
  80. 80. ip4inno
  81. 81. ip4inno DESIGN REGISTERED IN THE EU• 000000013-0001• Casio Computer Company• Filed, registered and published on 01/04/2003
  82. 82. ip4inno EXAMINATION• Shape created to perform its function• Contrary to public policy or morality• Protected flags or emblems
  83. 83. ip4inno REGISTERED DESIGN• Design Registration No. 52675-0001
  84. 84. ip4inno INTERNATIONAL PROTECTIONNATIONAL REGISTER Register at SPTO = Protection in SpainCOMMUNITY REGISTER Register at OHIM (Alicante) = Protection in EU.INTERNATIONAL REGISTER Register at WIPO Ginebra) = Plurality of national registers
  85. 85. ip4innoPATENT BASICS
  86. 86. ip4inno WHY DO I NEED TO PROTECT MY INVENTION?The individual who protects his intellectual achievement through industrial propertyrights – either as a patent or as utility model – has the right for a limited period to stopany third party from making, using or selling the object of the invention withoutpermission
  88. 88. ip4inno WHAT IS AN INVENTION?• A technical teaching which defines a relation between technical features and technical effect • Has to be reproducible
  89. 89. ip4inno WHAT IS A PATENT?You can say it is:• An agreement between the inventor and societyAlternative definition (legal):• A patent is an exclusive right to commercially exploit the invention in this country. Protection up to 20 yearsA patent is a prohibitive right
  90. 90. ip4inno WHAT CAN BE PATENTED?• A product• The apparatus for producing the product• The process for producing the product• The use of the product
  91. 91. ip4inno WHAT CANNOT BE PATENTED?• Computer programmes• Medical and surgical treatments• Mathematical methods• Business methods• Discoveries• Aesthetic creations• New species of plant or animal• Inventions which are contrary to moral standards and public order (e.g. instruments of torture)• The human body and any non-separate part/s thereof
  92. 92. ip4inno A PATENTABLE INVENTION MUST BE:• Capable of industrial application• New / Novelty• Essentially differ from that which is already known = inventive step
  93. 93. ip4inno INDUSTRIAL APPLICATION• The invention must have at least one practical purpose and must be reproducible• There is no evaluation of quality or economical factors!• Only the technical qualities are relevant
  94. 94. ip4inno NOVELTY• Novelty: An objective, global demand• New in relation to that which is known prior to the date of filing the application• Known = general availability through the written word, spoken word (lectures, etc.), usage, etc.
  95. 95. ip4inno THE INVENTIVE STEPTo differ essentially =Inventive step =Not obvious to a person skilled in the art
  96. 96. ip4inno PROHIBITIVE RIGHTA patent forbid others commercially to: – produce, sell, work, use, import and possess the invention But… …A patent does not extend to:  acts performed for non-commercial purposes  acts performed for experimental purposes  Acts concerning products which are commercially worked by, or with the consent of, the patentee  Individual production of a medicinal product at a pharmacy
  97. 97. ip4inno PATENT RIGHTS OR INFRINGEMENTS EXAMPLE Product e.g.20 years toothpaste a+b+c+d a+b+c a+b
  98. 98. ip4innoPATENT DOCUMENT
  99. 99. ip4inno PATENT DOCUMENT• Description – common part – specific part• Patent claims• Abstract• Figures
  100. 100. ip4inno THE PATENT’S COMPOSITION Title Drawings1. Title2. Description – common part – what the patent concerns – prior art, the disadvantages – the purpose and advantages of the invention – how and by which means the advantages are achieved must correspond with the patent claims – mode of operation, by means of which describes how the inventive effect is achieved
  101. 101. ip4inno3. Description specific part, and any figures – detailed technical description with specific explanation of embodiment with reference to any figures4. Claims – independent claim/s apparatus method use of ... product – dependent claim/s5. Abstract
  102. 102. ip4inno Øvelse Patenting a pair of scissorsip4inno 104
  103. 103. ip4inno WRITING A PATENT CLAIM FOR SCISSORS• We are going to apply for a patent. Try to describe State of the art for yourself the construction of the scissors.• Imagine that the current state of the art are: knifes, pocket knifes and pliers.• The technical problem to be solved is the difficulty of cutting paper and textiles• Analyse what is new – compared to already known knifes and pliers.• If new – what is patentable? Invention• We are going to write a claim 105
  104. 104. ip4inno Possible Scissors Patent Claims (1)1. Tool capable of cutting a sheet of paper without folding it. or1. A shredding tool for improved cutting of paper and textiles None of these claims are valid: They do not contain technical characteristics! 106
  105. 105. ip4inno Possible Scissors Patent Claims (2)1. A cutting tool comprising two halves, each including a blade provided with a tip and a cutting edge, a midsection having a pivot point, and a leg connecting said pivot point to a finger ring, said halves being operably linked at the pivot point by a bolt, the scissors having a central axis through said bolt and the tips in a closed position,two halves, each including a blade provided with finger rings and straight cutting edge, a midsection having a pivot point. Good! It could be valid! 107
  106. 106. ip4inno Possible Scissors Patent Claims (2)1. A cutting tool comprising two halves, each including a blade provided with a tip and a cutting edge, a midsection having a pivot point, and a leg connecting said pivot point to a finger ring, said halves being operably linked at the pivot point by a bolt, the scissors having a central axis through said bolt and the tips in a closed position,two halves, each including a blade provided with finger rings and straight cutting edge, a midsection having a pivot point. But it is difficult to figure out all the possibilities• These pair of gardening “scissors” are not covered by the said claim because they… do not have “finger rings”! 108
  107. 107. ip4inno A probably better writing with a dependant claim1. A cutting tool comprising two halves, each of them including a blade provided with a cutting edge, a midsection having a pivot point. (independent claim)2. The cutting tool defined in claim 1 wherein said blades have finger rings (dependent claim) 109
  108. 108. ip4inno But it is always difficult to cover all possibilities!What about this claim?1. A cutting tool comprising two elements, at least one of them provided with a cutting edge, and a midsection having a pivot point between the said elements. 110
  109. 109. ip4innoPATENT PROCESS
  110. 110. ip4inno The Patent Process (simplified)ApplicationExamination for official secrets Application Formal refusedexamination StorageSearch and Applicationexamination Decisio approved nPublication A Publication B Further Opposition Expirationexamination after max. 20 years
  111. 111. ip4inno Roles of the Important Partners Step 1: Composition of Step 2: Filing application application Step 4a: Reconstruction of application AttorneyInventor Patent Office Step 4: 1. Decision Step 3: 1. Examination Step 6: Final Step 5: Further examination Decision Step. 7: Publication & storage
  112. 112. ip4innoPATENT STRATEGY
  113. 113. ip4inno WHY TO APPLY FOR A PATENT?To:• Provide insurance for one‟s invention and investments in developing technology• Prevent others from patenting the invention and secure one‟s place in the market• Attract investors for further development, and to hold on to current investors• Sell the patent rights in the future as a single commodity or business• Marketing value
  114. 114. ip4innoPATENT STRATEGY• Options:• Patent protection – national patent – international patent application – regional patent system•• Patent prophylaxis – publication
  115. 115. ip4innoPATENTS
  117. 117. ip4inno WHICH TYPE OF PATENT?National patent can be used: • For protection in the home country market or in a few countries • As a basis for extending protection to other countries or regionsInternational patent applications can be used: • For protection in many countries and for extending the pre-publication period (up to 30 months)Regional patent can be used: • For protection in a number of countries in the same region at a lower cost
  118. 118. ip4inno INTERNATIONAL PATENT SYSTEMSBasic principle:• Patent in each countryThe systems:• Patent Cooperation Treaty (PCT)• European Patent Convention (EPC)• Other regional systems (OAPI, ARIPO, EURASIAN)
  119. 119. ip4inno PRIORITYWithin 1 year from filing you can:  File your application in other countries with inclusion of priority established in the first country of filing the applicationFor patent applications this means that:  Novelty is valid from the application filing date of the first country
  120. 120. ip4inno EUROPEAN PATENT CONVENTION (EPC)• Single place of filing• Single place of completion• Single place of granting• More economical than group of countries EPO
  121. 121. ip4inno PATENT COOPERATION TREATY (PCT)• International novelty and patentability search• Single place of filing• Final decision for countriesMain advantages:• One application place• One set of rules• Postponement for 30/31 months from priority date and by that buying time!
  122. 122. ip4inno WHEN AND HOW? Patent Refusal PCT, EP, COUNTRY Priority year Appeal 2 months Refusal0 6 12 18 Opposition 9 months Further procedures Search and 1st examination Patent Adm. Re-examination Publication
  123. 123. ip4innoPCT SYSTEM - IMPORTANT DATES
  124. 124. ip4inno PCT Organisation - units Application RO/NO ISA IB Demand? IB Functions: RO/IB Functions: Functions: YES 1. EstablishIB = International bureau 1. Performs 1. Publication Functions: IPRP and(WIPO) Search of send to and ISR+WO 1. Collect designatedRO/NO = Receiving opinion fees 2. Transmits officesoffice is national office 2. Transmits ISR+WO 2. Receive ISR+WO to IB andRO/IB = Receiving office appl. to IB and applicantis International Bureau 3. Check applicant(WIPO) formality IB IPEA 4. TransmitsISA = International record Functions: Functions:searching authority copy to IB and search 1. Transmit 1. Transmit copy ofIPEA = International copy to IPER to demand to IB+notifypreliminary examination ISA elected applicant officesauthority 2. Performs WO/IPER 3. Transmit IPER to IB and applicant
  125. 125. ip4innoUTILITY MODELS
  126. 126. ip4inno UTILITY MODEL• The ”Patent-system” for smaller inventions• Conditions: – solve a technical problem – new – inventive step (in some countries e.g. Turkey not necessary)• Often used for inventions concerning: – household goods – hand tools – furniture
  127. 127. ip4innoTHE UTILITY MODEL It looks like a patent. The U in the publication number marks the utility model U as - utility - utilité - utilidad - utilità
  128. 128. ip4inno THE UTILITY MODEL IS SIMILAR TO A PATENTSimilar in terms that: – a utility model is an exclusive right – allows the right holder to prevent others from commercially using the protected invention – may also be sold or licensed – within 12 months a national utility model application can be turned into a European patent application, if the utility model application fits to the requirements of the European patent application
  129. 129. ip4innoEXAMPLE OF UTILITY MODEL
  130. 130. ip4inno THE UTILITY MODEL IS SIMILAR TO A PATENT BUT … the lifetime is only 10 years granted within a few months may be granted without examination (e.g. in Germany) the fees for application and maintenance are cheaper it only protects products NOT processes The assembling of … A product … cannot be can be protected protected
  131. 131. ip4innoTHE UTILITY MODEL AND THE CONCEPT OF NOVELTY• The nature of an invention is that it is new• Normally, new means new to the world• Concerning the patent law new means "does not form part of state of the art" which is in accordance with our understanding of novelty• In contrast to a patent, in some countries the novelty requirement to obtain a utility model is "relative" (e.g. Germany, Spain) – only a public written disclosure of the invention in Spain/Germany is prejudicial against the novelty of the invention – in Germany a description within the 6 months preceding the date relevant for the priority of the application shall not be taken into consideration if it is based on the conception of the applicant or his predecessor in title.
  132. 132. ip4inno WHERE CAN UTILITY MODELS BE ACQUIRED?Countries and regions providing utility model protection are:Australia Czech Republic Italy PortugalArgentina Denmark Japan Republic of KoreaArmenia Estonia Kazakhstan Republic of MoldovaAustria Ethiopia Kenya Russian FederationARIPO Finland Kyrgyzstan SlovakiaBelarus (France)* Malaysia SpainBelgium Georgia Mexico TajikistanBrazil Germany Netherlands Trinidad & TobagoBulgaria Greece OAPI TurkeyChina Guatemala Peru UkraineColombia Hungary Philippines UruguayCosta Rica Ireland Poland Uzbekistan Source:http://www.wipo.int/sme/en/ip_business/utility_models/where.htm
  133. 133. ip4inno WHY A UTILITY MODEL?• Protects minor inventions excluded from patent protection• Protects inventions where a shorter protection period is required• Speedy protection• Easy• Cheap• Use utility model as a strategic weapon example: In DK the furniture industry uses utility models to ”pack in” patents. If one company has a patent for e.g. a chair, a number of competitors will file utility model applications with tiny developments of the chair. The patent holder cannot change his chair in any way without infringing the utility models. Hence he has to make a licence agreement or buy the utility models from his competitors!
  134. 134. ip4inno OTHER SUPPLEMENTARY RIGHTS AND CERTIFICATESPlant Varieties – Objects of Verification• Varieties of all botanical genera and species, including, inter alia, hybrids between genera or species-• Variety – a plant grouping within a single botanical taxon of the lowest known rankSupplementary Protection Certificates for productswhich constitute:• The “active ingredient”, or combination of active ingredients, of a “medicinal product”; or• The “active substance”, or combination of active substances, of a “plant protection product”
  135. 135. ip4inno PATENT AND BUSINESSIs my invention new? What is state of the art? Which solutions already exist? Who are my competitors, or potential partners and what do they do? Am I free to use ordo I infringe someone’s patent? What’s going on in a specific technical field?
  136. 136. ip4inno LINKS• www.epo.org (European Patent Office)• www.wipo.int (World Intellectual Property Office)• www.uspto.gov/patft/ (US Patent and Trademark Office)• www.espacenet.com (Europe‟s network of patent databases)
  137. 137. ip4inno MAKING MONEY ON IP• A way of making money on IP and insuring return on investments are for example: – Licence agreements – Auctions – Acquisitions of companies
  138. 138. ip4inno HOW TO LOSE MONEY WITH PATENTS ?• Investigating things we shouldn‟t do -If we only want to earn money• Patenting things we shouldn‟t - Secrets - Invention with no commercial interest - Invention that already exist• Selling things we shouldn‟t - Infringing a third party rights
  139. 139. IP Management ip4inno LICENSING IP RIGHTS Licensor Licensee • Exchange agreement between the licensor and the licensee (license-holder). • Owner (licensor) of IP Rights permits another party (licensee) to use his IP Rights • Licensor grants the right to use his IP to the licensee • Licensee pays licence fees or royalties (or other type of compensation) to the licensor 143
  140. 140. IP Management ip4inno WHAT CAN BE LICENSED? All kind of registered IP: • Patents • Trademarks, etc. Unregistered IP that can be kept secret such as: • Technology, know-how, compounds, recipes etc; basically any kind of know-how and technology that can not be copied directly from existing results / solutions / products. ip4inno 144
  141. 141. IP Management ip4inno LICENSE PAYMENTS Upfront payment + regular royalties • Lump sum paid on the granting of the license • Regular fixed payments Milestone payments • Fixed amounts due on the attainment of a specific event (e.g. approval of an authority, successful prototype testing, acceptance of a bid, ...) Royalties based on sales revenue • Widely used payment agreement • Royalty rate may be fixed or dynamic Quota license • (Fixed) royalty, based on sold or made units 145
  142. 142. IP Management ip4inno EXAMPLE: PATENT LICENSING CONTRACT ISSUES TO BE AGREED ON THE CONTRACT • Purpose of the Agreement and the terms • Term of Agreement, incl. conditions for used period of notice and withdrawal • Parties of the Agreement with • Extent of the licence holder‟s right identification information • Terms of re-licensing • Accurately identified licensed goods • Terms concerning infringement situations • Products and services covered by the • Secrecy and confidentiality licensing right • Transferability of a licence agreement • Geographical area covered by the licence • Entry into force of a licence agreement right • Breaches of contract and their • Royalty, computing bases and payment consequences schedule, minimum royalty, advance payment, if any • Applicable law and settlement of disputes • Control in respect of the quality of the products and the use of the trademark ip4inno 146
  143. 143. IP Management ip4inno IN-LICENSING • Exploiting technology that is new to the company • Access to technology otherwise unobtainable • Opportunity to combine company‟s own and in-licensed technologies to create new solutions / products • Opportunity to achieve geographical monopoly by exclusive licence agreements • Enables focusing in a narrow field of technology in R&D • Savings in company‟s own R&D costs • In-licensing vs. cross-licensing? ip4inno 147
  144. 144. IP Management ip4inno CROSS-LICENSING • Cross-licensing agreement is an agreement according to which two parties grant a license to each other for the exploitation of their patents. • Cross-licensing is the mutual sharing of patents between companies without an exchange of a license fee if both patent portfolios are about equal in value. • In cross-licensing, each company can make, use, and sell products claimed in each others licensed patents without patent infringements. ip4inno 148
  145. 145. IP Management ip4inno PATENT POOL • Patent pool is an agreement between at least two parties agreeing to cross-license their patents (relating to a particular technology) • Patent pools are an example of cases where members of a competitive industry join in to create common resource that is to their collective benefit ip4inno 149
  146. 146. ip4inno CONCLUSIONAll in all:• It is essential for businesses to have a clear defined strategy covering all IP and intellectual property rights within the company
  147. 147. IP Management ip4inno KEY RECOMMENDATIONS: • Develop an IP strategy • Revise your IP portfolio continuously • Get professional help • Start competitor and technology watch • Choose the right partner • Demand information • Do not underestimate the cost • Communicate pro-actively • Adapt your filing strategy to your • Keep in touch with your licensee business • Be sure of your case • Consider licensing as an opportunity 151
  148. 148. ip4inno ENFORCEMENT - OPTIONS Infringement of an IP right 1 2 3 Litigation Alternative Dispute Resolution (ADR) A combination of Litigation and ADR (Alternative Dispute Resolution)ip4inno 153
  149. 149. ip4inno IP LITIGATION• How to enforce your IP right? – depends on the IP right infringed ex: Patent• Decision to take legal action? – IP rights might be questioned and declared invalid – court decisions will be normative for similar conflicts – court decisions are made public – risk of bad publicity – time and money consuming – cases involving patents highly complex due to the subject-matterip4inno 154
  150. 150. ip4inno INFRINGEMENT AND LITIGATION Type of Method of Outcome of Goalinfringement- prosecution enforcement - To stop the infringement immediately - Seizure or delivery of goods Prohibitory injunction - Precautionary seizure of movable and immovable property To prevent the infringement from being Court action to confirm Civil Private remitted the interim injunctionInfringement Prosecution Court action for a Recognition of the IP right validity declaration Court action for Getting damages for the loss encountered damages - Public interest in punishing infringements of Fines and in case of IP rights Criminal Public gross infringementsInfringement prosecution also terms of - Especially in cases of Counterfeiting and imprisonment Piracy but can be used for all IP rights 155
  151. 151. ip4inno Servicios Centrales – Sevilla C/ Torneo, 26 Teléfono: 955 03 07 00 Gerencias Provinciales Almería: Huelva Avda. Pablo Iglesias, 24 Avenida de Andalucía nº 6 bajo Teléfono: 950 006 808 Teléfono 959 011200 Cádiz Jaén Alameda Apodaca, 20 Carrera de Jesús, 9, bajo Teléfono: 956 009 510 Teléfono: 953 006 100 Córdoba Málaga Plaza Cardenal Toledo, 6, bajo C/ Cister, 5 Teléfono: 957 005 000 Teléfono: 951 042 902 Granada Sevilla BIC Granada C/ Adriano del Valle, 4, local 1Parque Tecnológico de Ciencias de la Salud Teléfono: 955 030 900 Avda. de la Innovación, 1 Teléfono: 958 750 570
  152. 152. ip4innoTHANK YOU FOR YOUR ATTENTION Amalia Bernier AGENCIA IDEA abernier@agenciaidea.es www.agenciaidea.es propiedadindustrial@agenciaidea.es