IPR – focus on patents and strategy

Customized assistance in all aspects of IPR

IPR – focus on patents and strategy

Jens Tellefsen

European Patent Attorney

Partner Patrade A/S


Course plan:• Basic principles

–Novelty–Inventive step–Industrially applicable

• How to read and understand the claims– types of claims– protokol of equivalence– technical effect (corresponding or identical)– essential features

• How to extract information from the search report and the front page–Citations–Document rating–Scope of search– inventor–Associated applications– patent classes– priority information


• How to read a patent application– main sections– bibliographic information– prior art–Other in-direct information

• Search– available databases– classification systems– search terms– search strategy

• available databases–Espacenet (www.ep.espacenet.com)–Pvsonline (www.pvsonline.dk)–DPatis net (www.depatisnet.de) chose ”Einsteiger”–Epoline (www.epoline.org) chose ”register plus”–USPTO (www.uspto.gov) go to public ”PAIR”–google


• Infringement– IP right vs product/process– defense– Danish legal system– consequenses and cost

• IPR strategy– aggressive or defensive– geography– constructing a portfolio– licensing– know-how/techtrans


Assignment• Select an ”invention”

• Formulate a search strategy (define terms, EC/IPC/US classes)

• Create a claims matrix (min. 5 pertinent documents)

• Conclusion : is your ”invention” patentable (argue novelty and inventive step)


InfringementInfringement occurs when a product, method and/or service is offered for sale or utilised proffessionally, where the person or entity offering such product, method or service does so in spite of a third persons right.

The right may be a patent, trademark or design.


Normal procedure

- the proprietor (owner of the right) usually by means of his patent or trademark agent or lawyer writes a warning letter, setting out the potential infringement, and stipulates a (short) time limit for the potential infringer to stop activities.

- the potential infringer evaluates the accusation with help from his patent or trademark agent.

Clear case of infringement

- advice client to approach patent proprietor for possible license

- stop marketing product, process or service

Possible/no infringement

- request for extension

- forward analysis of no infringement

- start defense/offense preparations


Proprietor• prepare case

– collect evidence/proof– evaluate evidence/proof– select country if possible (advantages/disadvantages)– select legal team (specialists)– 2nd opinion– technical experts

• decide on type of action (if there are choices)• prepare filing injunction

– optionally forward draft to infringer• better or stronger right (utility model)• improve patentlandscape


Potentiel Infringer• Investigate validity of IP right

– collect invalidity evidence (prior art, prior use)– if possible challenge validity

• invalidity procedings at national patent office• opposition procedure at the EPO

– infringement opinions from ”independent counsel”• Argue non-infringement

– letter to proprietor– forward infringement opinions (if in favour on non-infringement)

• Map patent– scope of protection– geography– file inspection

• Monitize potential risk– consider settlement out of court

• Settlement– cross licensing– Purpose of proprietors claim– potential value of compensation


How to Challenge an IPR right

As long as an IPR right is in force (patent up to 20 years, trademark indefinetly, EC Design up to 25 years) it may be challenged, either regionally or nationally.

Patents

•Third party observation (EPO)

•Opposition (EPO and some national offices)

•Revocation procedures (national offices)

•Invalidation procedures (national offices or courts)


Danish Court system

1st instance Fogdesag (preliminary injunction)

County or Magistrates court (Byretten) or

Merchants Court (Sø og Handelsretten)

Forbudssag (injunction procedings)

2nd InstanceJustifikationssag (confirmatory action)

Landsretten (High Court)


Appeal

High Court


Cost and DurationIn 2007 the Danish government implemented a court reform, which when fully functional should cut the duration of law suits, especially relating to IPR down to approx. 12 – 18 months at each instance.

This will also affect cost, as the cases must be more clear cut and percise. Also preliminary written procedure will be shortened.

Cost• 1st instance approx. 5-750000 Dkr• 2nd instance 500.000 – 1 mill+• Appeal ??

•Estimated cost dependes very heavily on the case in point (no flat rate)


StrategyA strategy is a plan on how to win a war, battle or the like.

When fighting a war you have an enemy, weapons, an army, objects/prizes

With IPR the

enemy is the competition

army and weapons is your IPR portfolio (patents, trademarks and designs)

the object or prize is the market(share)

Complete analogy and therefore a complete analogous mindset shall be appllied.


Defensive or Aggressive

Defensive

•Focused portfolio– Protect only key technologies and brands

– only IP rights in proven markets

– Keep surveillance of patent databases to avoid infringement


Aggressive• Broad portfolio

– portfolio contains protection for useful and/or feasible technologies

– 2nd and 3rd generation rights

– old rights are maintained (at least in selected countries)

– widespread geographical protection

– surveillance of patent databases•Follow competitors applications with a view to obstruct (Art. 115 EPC, opposition and the like)

– active surveillance of market and competitors


Reasons for patenting

• protection of development investment

• maintenance of technical advantages and market shares

• in some cases better than competition clauses

• boost internal value

• attract investors

• basis for joint-venture / technology swap

• deterrent


How to construct the portfolio

•Base patent (the ”mother”) : New developments – technological realisations.

– application of the base patent into various processes or product patents– neighbouring technical fields– discarded solutions / alternatives

• Trademarks• Design protect products which are introduced into the market place.• be consistent in geography


• Licensing – access to someone else’ technology– no development cost (only maturity cost)– no patent costs– cross licensing (swap use of rights)– royalty payed out of running cash flow (no effect on liquidity)– broader geographical spread

• Tech trans– Royalty payment from non-competitor– Weaken competitor– Exchange of know-how– Possible new constructive inspiration

Don’t be afraid to license in or out – just be careful on the licensee or licensor and the conditions






IPR – focus on patents and strategy

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