IPR ISSUES.

SEVILLE, 07/11/2011

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

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• 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

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• CITPIA is managed by the Agency for Innovation and Development of Andalusia which is the Regional Development Agency of the Andalusian Government

• . CITPIA (Centro de Informacion Tecnologica y de Propiedad Industrial de Andalucia)

• PATLIB Center of the Spanish autonomous region of Andalusia

• Headquarter in the andalusian capital Seville, and offices in each of the 8 provinces of Andalusia

• The Agency has about 300 employees in total,

WHO WE ARE

GranadaAlmería

Jaén

Málaga

Córdoba

Sevilla

Cádiz

Huelva

HeadquarterBranch Office

• One CITPIA Officer (IP Helpdesk) in each province

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Technological 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

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• Financing services:The Agency offers several funding programs:

Þ To foster the creation of innovative companies

Þ To foster innovation in existing companies

Þ To foster R+D projects in cooperation with universities

• Business Incubation services: The Agency is member of the European BIC Network (Business Innovation Centres)

Þ 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)

Þ Assistance in commercialization and technology transfer via the network

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AGENCIA IDEA- SERVICES: PATENTS, TRADE MARKS AND INDUSTRIAL DESIGNS

– Information

– Technical and Legal consultancy

– Advanced Searches

– Management of the registration process

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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).

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DIFFERENT KIND OF REPORTS

We 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)

•

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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 the market, 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

WHAN CAN WE PROTECT

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REGISTERED INTELLECTUAL PROPERTY RIGHTS

Patents

Duration: 20 until years

Trademarks

Duration: until 10 yearsor life

Utilitymodels

Duration: until 10 years

Designs

Duration: until 5 x 5 years

IP RIGHTS WITH A CERTIFICATE

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COMBINED USE OF IP RIGHTS

BottleRegistered design

Registered trade mark ®

Cap Patented

Coca ColaRegistered trade mark ®

Label textCopyright ©

The Coca Cola CompanyTrade name

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PRODUCT DIMENSIONS AND EMBEDDED IP RIGHTS

TechnologyPATENTS

DesignDESIGN PROTECTION

Marketing TRADEMARK

Client

InnovativenessSafety

ErgonomicsEsthetic nature

Image/brandReliability

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TRADE MARKS AND TRADE NAMES

"A brand is a collection of perceptions in the mind of the consumer."

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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

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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

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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 other countries?

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.

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WHAT IS THE ROLE OF THE TRADE MARK SEARCH?

Conducting a search is crucial when preparing trade mark applications in order to avoid filing trade marks that are already registered or applied for, or trade marks that would be similar to any existing ones. Trade mark databases are available on most national or regional trade mark offices' web sites, including the WIPO. The proper search depends on the territory where the protection is sought (proper database needs to be chosen), classes of goods and services (they need to be chosen accurately) and the representation of the sign (its distinctiveness).

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WHAT IS A TRADE MARK?

• A distinctive sign which identifies the goods and services of one company from those of another

• A trade mark helps consumers to identify and choose between products/services based on their reputation and quality

• A trade mark is a word or sign which can be represented graphically and which is capable of distinguishing the trade origin of certain goods and services

Coca-Cola

registered since

1887

Nike registered since

1971

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DIFFERENT TYPES OF TRADE MARKS

• Word e.g. Adidas

• Logo e.g.

• Word/Logo e.g.

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DIFFERENT TYPES OF TRADE MARKS

• Numerals/Letters

• Objects/3D

• Slogans “i'm lovin' it"

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DIFFERENT TYPES OF TRADE MARKS

Example of a well-known trade mark

Other 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)

DIFFERENT TYPES OF TRADE MARKS

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• Tono Nokia(Marca comunitaria 1040955)

de: Francisco Tárrega (España, 1852-1909) Grand Vals

DIFFERENT TYPES OF TRADE MARKS

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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

MAKE A GOOD DECISION

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THINGS TO CONSIDER WHEN SELECTINGOR 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

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Special Attention to the negative connotations in different countries!

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REQUIREMENTS FOR A GOOD TRADE MARK

Article 7 of the Community Trade Mark Regulation (Absolute Grounds for Refusal)

– Distinctive (unique)

– Not descriptive

– Not similar or identical

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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

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SIMILAR/IDENTICAL

Meaning the way the mark is:

• Written• Looks• Phonetic (sounding)• Conceptual similarity

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SIMILAR/IDENTICAL - EXAMPLES

Written

Looks

Sounding

Conceptual

Cool/Kool

Basket / Buskit

For You/ 4 U

Star/Stern

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VARIED PROTECTION OF A TRADE MARK

How close can you get to another trade mark?

• Strong trade mark gives wider protection

• Weak trade mark gives less protection

Important: Make a strong and original trademark

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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

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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. The appropriate process to transfer your rights is called Assignment. If you want to sell or otherwise transfer your trademark, we recommend you to get professional advice from 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 a trademark or a person hired by the owner is the person responsible for monitoring the market for cases of infringement and take the corresponding legal actions.

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COSTS

Trade mark or Trade name: 138,94 € first class

90 € the followings

Collective or Guarantee : 277,85€ the first class

180 € the followings

Renewal: 160,86 € the first class

108 € the followings

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EXAMPLE(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

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EXAMPLE(2)Marca MIXTA

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

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Códigos de la Clasificación de Niza de los sectores en los que queramos utilizar la marca

Conviene incluir aquellos sectores próximos para evitar registros que entren en conflicto

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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

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INTERNATIONAL PROTECTION

Trademark filed:

• National Office – acquires national protection

EU system:

• OHIM – acquire protection in 27 member states

International system:

• Madrid Protocol – member states

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NATIONAL REGISTER

Register at SPTO = Protection in Spain

INTERNATIONAL REGISTER

Register at OHIM (Alicante) Protection in EU

COMMUNITY REGISTER

Register at WIPO Ginebra)

=

=

Plurality of national registers

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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)

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EU TRADE MARK EXAMINATION

“All or nothing” principle:

– Distinctive character– Opposition

The optional search reports

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INTERNATIONAL FILING

• Madrid System

• National Applications e.g. in Australia, USA

• Priority claimed for a national application within 6 months

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THE MADRID AGREEMENT AND PROTOCOL

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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

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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

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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.

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ADVANTAGE

The system of international registration of marks has the following main advantage for trademark owners

A simplifying mechanism:

• The Madrid system offers a trademark owner the possibility to have his trademark protected in several countries by filing only one application directly with his own national or regional trademark office

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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, or both. Note that the exclusive right conferred by the CTM can lead to a subsequent national trade mark application being refused (as it will constitute an earlier right) and vice versa, and thus the registrations made under the different systems must not overlap

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IS THERE ANY CONNECTION BETWEEN THE CTM SYSTEM AND THE MADRID "INTERNATIONAL" SYSTEM?

Since the European Community accessed the Madrid Protocol trade mark owners benefit 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.

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DOMAIN NAMES

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INTRODUCTION

Trade mark registration is not company name or domain name registration

A domain name may be registered as a Trade mark and vice versa

Incorporating a registered trademark owned by a competitor or another company into your domain name or meta-tag may be an infringement

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TRADE MARK VS DOMAIN NAME

• Protection of an Identifier of a product or service

• Priority application date• Territorial scope• Division into classes of goods and

service• Examination and opposition

• Human-friendly form of Internet address

• First come, first served• World wide (gTLD)• In principle, no examination

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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 to offer services such as hosting your website and forwarding email.

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GEOGRAPHICAL INDICATIONS (GIs)

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• Simple indication of source: indicates the origin

• Geographical indication: indicates the origin + quality

Geographical names can be used in the market with the following meanings:

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− Consumers are constantly faced with the problem of choosing

GIS ARE AN IMPORTANT ASSET

− GIs may become an excellent tool to differentiate products and attract purchases

− Differentiation is a key element in any commercial strategy

• Protected Designation of Origin (PDO)

• Protected Geographical Indication (PGI)

LEGAL REGIME TO PROTECT GIS

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Who can apply? Producer groups Where to address? Local authorities in Member States What is the procedure? Application is sent to the Commission. Publication. Third parties may object. Registration

THE REGISTRATION PROCEDURE

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

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WHERE TO FIND MORE INFO

Useful 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)

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TRADE SECRET

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A trade secret is commonly defined in broad terms as any information, including but not limited to technical or non technical data, a formula, pattern, compilation, programme, device, method, technique, drawing process, financial data, or list of current or potential customers or suppliers that:

- is sufficiently secret to derive current or potential economic value based on the fact that it is not generally known to other persons who could obtain economic value from its disclosure or use; and

- whose secrecy is protected by its holder's reasonable efforts.

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At present, there is no harmonised system for the protection of trade secrets within the European Community. Therefore, it is advisable to check the national legislation of the Member state where trade secrets protection is sought. Nevertheless, in many states trade secrets protection is regulated under unfair competition legislation.

Trade secrets are protected provided they are kept as a secret. A formal registration procedure is not needed for their protection. As a result, the owner of the trade secrets must adopt the proper measures to maintain its confidentiality (for example, a confidentiality agreement). Generally, a trade secrets owner is protected against unauthorized third parties who disclose and use the trade secrets.

HOW CAN I MANAGE THE PROTECTION OF MY TRADE SECRETS WITHIN THE EUROPEAN COMMUNITY

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COPYRIGHT

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Contributions to the world of literature and art

Cannot 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 exploited

Rights: the author has acquired only by the fact of its creation.

INTELLECTUAL PROPERTY RIGHTS

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COPYRIGHTS

The Copyright protects the scientific creations; literary and artistic works, attributing the author's exclusive right to exploit the simple fact of its creation.

Computer Programs are also subject of copyright

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No necessary register Duration Life of the author and 70 years laterLimited protection

Copyright

WHAT CAN WE PROTECT ?

Original literary, artistic or scientific creations

Books, musical compositions, audiovisual works, sculptures, paintings, comics, photographs, computer programs

Derivative works translations, reviews, abstracts, summaries, musical arrangements

Collections Anthologies, Databases

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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 and computer programs (the list is not exhaustive).

What does copyright protect?

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.

Do I need to register my work?

In general, from the date of creation to seventy years after the author’s death

How long can my work be protected for?

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DESIGNS

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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 the features of, in particular, the ... (source OHIM)

Refers to the ornamental or aesthetic aspects of a product

Design makes a product attractive and appealing to customers and may even be its unique selling point

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contour materialsornamentation

“design or model "means the appearance of the whole or part of a product resulting from the features of, in particular

line colors textureshape

WHAT IS A DESIGN?

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REASONS TO REGISTER

Protection or register gives the exclusive rights to prevent unauthorized copying or imitation by others.

Determines who is the owner and can defend itself against possible attacks

! Presumption of ownership!

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APPARIENCE/ TECHNICAL FEATURES

Utility model or Patent

Industrial Design

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REQUIREMENTS

The 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

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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.

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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.

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Requirements for obtaining exclusive rights• Novelty• Individual Character

Birth of RightApplication for registration

Term of protection5 years renewable 4 times (and max. 25 years)

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COSTS AND DURATION

Costs :

Spain: 90€ per 10 designs

European Union 400€

Duration : 5 years: renewal until 25 years

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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

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DESIGN REGISTERED IN THE EU

• 000000013-0001

• Casio Computer Company

• Filed, registered and published on 01/04/2003

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EXAMINATION

• Shape created to perform its function

• Contrary to public policy or morality

• Protected flags or emblems

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REGISTERED DESIGN

• Design Registration No. 52675-0001

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NATIONAL REGISTER

Register at SPTO = Protection in Spain

INTERNATIONAL REGISTER

Register at OHIM (Alicante) Protection in EU.

COMMUNITY REGISTER

Register at WIPO Ginebra) =

=

Plurality of national registers

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INTERNATIONAL PROTECTION

PATENT BASICS

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WHY DO I NEED TO PROTECT MY INVENTION?

The individual who protects his intellectual achievement through industrial property rights – either as a patent or as utility model – has the right for a limited period to stop any third party from making, using or selling the object of the invention without permission

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PATENTSDEFINITIONS AND DEMANDS

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WHAT IS AN INVENTION?

• A technical teaching which defines a relation between technical features and technical effect

• Has to be reproducible

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WHAT IS A PATENT?

You can say it is:• An agreement between the

inventor and society

Alternative definition (legal):• A patent is an exclusive right to

commercially exploit the invention in this country. Protection up to 20 years

A patent is a prohibitive right

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• A product

• The apparatus for producing the product

• The process for producing the product

• The use of the product

WHAT CAN BE PATENTED?

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• 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

WHAT CANNOT BE PATENTED?

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A PATENTABLE INVENTION MUST BE:

• Capable of industrial application• New / Novelty• Essentially differ from that which is already known = inventive step

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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

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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.

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THE INVENTIVE STEP

To differ essentially =

Inventive step =

Not obvious to a person skilled in the art

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PROHIBITIVE RIGHT

A patent forbid others commercially to:– produce, sell, work, use, import and possess the invention

…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

But…

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PATENT RIGHTS OR INFRINGEMENTSEXAMPLE

a+b+c

20 years

a+b

Product e.g. toothpaste

a+b+c+d

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PATENT DOCUMENT

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PATENT DOCUMENT

• Description

– common part

– specific part

• Patent claims

• Abstract

• Figures

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1. Title

2. 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

THE PATENT’S COMPOSITION

Drawings

TitleDemands

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3. Description specific part, and any figures– detailed technical description with specific explanation of embodiment with

reference to any figures4. Claims

– independent claim/sapparatusmethod use of ...product

– dependent claim/s5. Abstract

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Øvelse

Patenting a pair of scissors

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105

WRITING A PATENT CLAIM FOR SCISSORS

• We are going to apply for a patent. Try to describe 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?• We are going to write a claim

State of the art

Invention

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106

Possible Scissors Patent Claims (1)

1. Tool capable of cutting a sheet of paper without folding it.or

1. A shredding tool for improved cutting of paper and textiles

None of these claims are valid:They do not contain technical characteristics!

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107

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!

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108

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”!

Possible Scissors Patent Claims (2)

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109

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A probably better writing with a dependant claim

1. 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)

110

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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.

PATENT PROCESS

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The Patent Process (simplified)

Decision

Application refused

Application approved

Publication B

Storage

Opposition Expiration after max. 20

years

Publication A

Further examination

Search and examination

Application

Examination for official secrets

Formal examination

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Inventor

Attorney

Step 1: Composition of application

Step 2: Filing application

Step 3: 1. Examination

Step 4: 1. Decision

Step 4a: Reconstruction of application

Step 5: Further examinationStep 6: Final Decision

Step. 7: Publication & storage

Roles of the Important Partners

Patent Office

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PATENT STRATEGY

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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

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PATENT STRATEGY

• Options:• Patent protection

– national patent– international patent application– regional patent system

• • Patent prophylaxis – publication

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PATENTS

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CONTRACT

Exclusive Exploitation MONOPOLE

ADMINISTRATION APPLICANT

DISCLOSURE trough a public document

PATENTS AND UTILITY MODELS

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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 regions

International 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

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INTERNATIONAL PATENT SYSTEMS

Basic principle:• Patent in each country

The systems:• Patent Cooperation Treaty (PCT)• European Patent Convention (EPC)• Other regional systems (OAPI, ARIPO, EURASIAN)

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PRIORITY

Within 1 year from filing you can: File your application in other countries with inclusion of priority established in

the first country of filing the application

For patent applications this means that: Novelty is valid from the application filing date of the first country

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EUROPEAN PATENT CONVENTION (EPC)

• Single place of filing

• Single place of completion

• Single place of granting

• More economical than group of countries

EPO

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PATENT COOPERATION TREATY (PCT)

• International novelty and patentability search• Single place of filing • Final decision for countries

Main advantages:• One application place• One set of rules• Postponement for 30/31 months from priority

date and by that buying time!

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WHEN AND HOW?

PCT, EP, COUNTRYPriority year

0 12

Further procedures

Refusal

Patent

Appeal 2 months

Refusal

6

Search and1st examination

Opposition 9 months

Adm. Re-examinationPatent

18

Publication

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PCT SYSTEM - IMPORTANT DATES

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PCT Organisation - units

RO/IB

RO/NO ISA

IPEA

Application IB

IB = International bureau (WIPO)

RO/NO = Receiving office is national office

RO/IB = Receiving office is International Bureau (WIPO)

ISA = International searching authority

IPEA = International preliminary examination authority

Functions:

1. Collect fees

2. Receive appl.

3. Check formality

4. Transmits record copy to IB and search copy to ISA

Functions:

1. Performs Search and opinion

2. Transmits ISR+WO to IB and applicant

Functions:

1. Publication of ISR+WO

2. Transmits ISR+WO to IB and applicant

Demand? IB

Functions:

1. Establish IPRP and send to designated offices

YES

Functions:

1. Transmit copy of demand to IB+notify applicant

2. Performs WO/IPER

3. Transmit IPER to IB and applicant

IB

Functions:

1. Transmit IPER to elected offices

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UTILITY MODELS

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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

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THE UTILITY MODEL

It looks like a patent. The U in the publication number marks the utility model

U as - utility - utilité - utilidad - utilità

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THE UTILITY MODEL IS SIMILAR TO A PATENT

Similar 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

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EXAMPLE OF UTILITY MODEL

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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 …

cannot be protected

A product …

can be protected

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THE 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.

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WHERE CAN UTILITY MODELS BE ACQUIRED?

Countries and regions providing utility model protection are:

Australia ArgentinaArmenia Austria ARIPO Belarus Belgium Brazil Bulgaria China Colombia Costa Rica

Czech RepublicDenmarkEstoniaEthiopiaFinland(France)*GeorgiaGermanyGreeceGuatemalaHungaryIreland

ItalyJapanKazakhstanKenyaKyrgyzstanMalaysiaMexicoNetherlandsOAPIPeruPhilippinesPoland

PortugalRepublic of KoreaRepublic of MoldovaRussian FederationSlovakiaSpainTajikistanTrinidad & TobagoTurkeyUkraineUruguay Uzbekistan

Source:http://www.wipo.int/sme/en/ip_business/utility_models/where.htm

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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!

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OTHER SUPPLEMENTARY RIGHTS AND CERTIFICATES

Plant 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

rank

Supplementary 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”

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PATENT AND BUSINESS

Is my invention new?

Who are my competitors,or potential partners and what do they do?

What is state of the art?

Am I free to use or do I infringe someone’s

patent?

Which solutions alreadyexist?

What’s going on in a specific technical field?

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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)

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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

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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

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LICENSING IP RIGHTS

• 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

Licensor Licensee

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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.

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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

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EXAMPLE: PATENT LICENSING CONTRACT ISSUES TO BE AGREED ON THE CONTRACT

• Purpose of the Agreement and the terms used• Parties of the Agreement with identification information • Accurately identified licensed goods• Products and services covered by the licensing right• Geographical area covered by the licence right• Royalty, computing bases and payment schedule, minimum royalty, advance payment, if any• Control in respect of the quality of the products and the use of the trademark

• Term of Agreement, incl. conditions for period of notice and withdrawal• Extent of the licence holder’s right • Terms of re-licensing • Terms concerning infringement situations • Secrecy and confidentiality• Transferability of a licence agreement • Entry into force of a licence agreement • Breaches of contract and their consequences • Applicable law and settlement of disputes

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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?

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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 other's licensed patents without patent infringements.

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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

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CONCLUSION

All in all:

• It is essential for businesses to have a clear defined strategy covering all IP and intellectual property rights within the company

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KEY RECOMMENDATIONS:

• Develop an IP strategy

• Get professional help

• Choose the right partner

• Do not underestimate the cost

• Adapt your filing strategy to your business

• Consider licensing as an opportunity

• Revise your IP portfolio continuously

• Start competitor and technology watch

• Demand information

• Communicate pro-actively

• Keep in touch with your licensee

• Be sure of your case

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ENFORCEMENT - OPTIONS

Infringement of an IP right

1 2

3 Litigation Alternative

Dispute Resolution (ADR)

A combination of Litigation and ADR (Alternative Dispute Resolution)

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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-matter

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INFRINGEMENT AND LITIGATIONType of

infringement-Method of

prosecutionGoal

Outcome of enforcement

Civil Infringement

PrivateProsecution

- To stop the infringement immediately- Seizure or delivery of goods- Precautionary seizure of movable and immovable property

Prohibitory injunction

To prevent the infringement from being remitted

Court action to confirm the interim injunction

Recognition of the IP right validity Court action for a declaration

Getting damages for the loss encountered Court action for damages

Criminal Infringement

Public prosecution

- Public interest in punishing infringements of IP rights

- Especially in cases of Counterfeiting and Piracy but can be used for all IP rights

Fines and in case of gross infringements also terms of imprisonment

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Servicios Centrales – SevillaC/ Torneo, 26

Teléfono: 955 03 07 00

Gerencias ProvincialesAlmería:

Avda. Pablo Iglesias, 24Teléfono: 950 006 808

HuelvaAvenida de Andalucía nº 6 bajo

Teléfono 959 011200

CádizAlameda Apodaca, 20Teléfono: 956 009 510

JaénCarrera de Jesús, 9, bajo

Teléfono: 953 006 100

CórdobaPlaza Cardenal Toledo, 6, bajo

Teléfono: 957 005 000

MálagaC/ Cister, 5

Teléfono: 951 042 902

GranadaBIC Granada

Parque Tecnológico de Ciencias de la SaludAvda. de la Innovación, 1

Teléfono: 958 750 570

SevillaC/ Adriano del Valle, 4, local 1

Teléfono: 955 030 900

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THANK YOU FOR YOUR ATTENTION

Amalia BernierAGENCIA IDEA

abernier@agenciaidea.es

www.agenciaidea.espropiedadindustrial@agenciaidea.es

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