Intellectual Property Rights in Research: Knowing, Managing, Benefiting Jean-Luc Gal Head of the EPO's Brussels Bureau Research Potential in Europe 12 May 2009

Mission of the EPO The mission of the European Patent Office (EPO): support innovation, competitiveness and economic growth across Europe through a commitment to high quality and efficient services delivered under the European Patent Convention. The EPO grants patents which could have potentially effect on the territory of the EPO's Member States (35 Countries) Second largest intergovernmental institution in Europe Not an EU institution Self-financing, i.e. revenue from fees covers operating and capital expenditure

The EPOrg: 35 member states Austria Belgium Bulgaria Croatia Cyprus Czech Republic Denmark Estonia Finland France Germany Greece Hungary Iceland Ireland Italy Latvia Liechtenstein Lithuania Luxembourg Former Yugoslav Republic of Macedonia Malta Monaco Netherlands Norway Poland Portugal Romania Slovakia Slovenia Spain Sweden Switzerland Turkey United Kingdom European patent applications and patents can also be extended at the applicant's request to the following states: Albania Bosnia-Herzegovina Serbia Status: January 2009

Key issues Access to IP rights and especially patents Facts and Figures 2008 Costs and Financing system Enforcement of IP rights Specific initiatives towards the use of IP rights

Access to IP rights- main criteria for getting a patent Patents shall be granted for any invention in all fields of technology, provided that they are new, involve an inventive step and are susceptible of industrial application Absolute novelty Notion of the person skilled in the art Industrial application covers all type of activity including agriculture Some Exclusions 'per se' from the patentable subject matter - among others : discoveries, mathematical methods, program for computers and method for doing business

The different routes to obtain a patent National route: starting with a national patent – filing at the National Patent Office (NPO) – possible extension to a European Patent (NPO -> EPO) European Route: the European patent – filing at EPO: designation of European countries for which a protection is required –The granted European patent becomes a bundle of national patents in each selected country. PCT: request for an international extension of the protection PCT: Patent Cooperation Treaty –same process of designation of countries for which the protection is requested (ex: JPO, USPTO, KIPO, SIPO, EN, DE, FR etc) – transmission of the application to the related competent Office (including the EPO) in charge of the International research report and preliminary opinion –International application enters into the regional/national phase Access to IP rights - 2

European patent application Applicant Filing and formalities examination EPO Search and search report together with preliminary opinion on patentability Publication of application and search report Online access to application file and legal status information Public domain Grant of European patent Publication of patent specification Validation in designated states Refusal or withdrawal of application Substantive examination Overview of European patent grant procedure Access to IP rights - 3

Researchers' dilemma: Scientific publications vs patents Scientific publication as professional mode of promotion among the scientific community: share inventions and new discovery Patent and get return on investment via the exploitation of the invention VS Main difficulty for researchers in the patent process is to >> Keep the secret of the invention until the filing date of the application Access to IP rights - 3

In some legislations (USA), the disclosure of the invention does not preclude the inventor for getting a patent. Once the invention has been disclosed the inventor is entitled to file an application within a fixed time limit (12 months in the USA, 6 months in Japan).In some legislations (USA), the disclosure of the invention does not preclude the inventor for getting a patent. Once the invention has been disclosed the inventor is entitled to file an application within a fixed time limit (12 months in the USA, 6 months in Japan). Such opportunity does not exist in the European Legislations (EPC, national laws)Such opportunity does not exist in the European Legislations (EPC, national laws) Filing date: the applicant could get a filing date when he provides the Office with a name, a precise address and a part which looks like a description (whatsoever the language of that part)Filing date: the applicant could get a filing date when he provides the Office with a name, a precise address and a part which looks like a description (whatsoever the language of that part) Access to IP rights - 4: grace period, filing date

Applications filed Direct European filings Euro-PCT applications entering the regional phase Facts and Figures

European patents granted Facts and Figures

Applications by residence of applicant (2008) JP 15.7% KR 3.0% US 25.5% IT 3.0% GB 3.5% CH 4.1% NL 5.0% FR 6.2% DE 18.2% Others 6.5% SE 2.1% Other member states 7.2% Facts and Figures

63736 Number of applications Technical fields with the most filings (2008) Facts and Figures

Number of applications in 2008 High-growth technical fields (at least 500 applications filed in 2008) % growth in number of applications 2008 vs Facts and Figures

Leading applicants and patentees in 2008 Applications Granted European patents Facts and Figures

Patent revoked Patent maintained in amended form Opposition rejected 39.8% 31.6% 28.6% Oppositions in 2008 Oppositions were filed against 5% of granted European patents. Over one third of all opposed patents were revoked. 5% Oppositions Granted patents Facts and Figures

Utmost importance to ensure a high quality patent system and a timeliness granting of the rights Need for Human resources and efficient tools for assessing the merits of the applications Up to now, the fees charged by the EPO do not cover the real cost of the service. Costs and Financing system - 1

Income of the EPO: –Procedural fees (filing, search, examination, publication...) –A proportion of the renewal fees (fifty fifty repartition). Comprehensive discussion on the financing of the EPO took place at the last March Administrative Council meeting Costs and Financing system - 2

Total cost of a European Patent (6 states, 10 years time): € (46 550€ for an Euro-PCT patent - 8 states and 10 years time) [Roland Berger study, 2005] –EPO fees: 4400€, (14%) –Professional representation: 9630€ (30%) including pre-filing, processing and translation of claims costs –Validation in the Contracting States: € (21%) including the attorney, the translation costs and the publication fees –National renewal fees and related cost € (35%) including renewal fees and the payment of the renewal fees by the attorney The entry into force of the London Protocol (1st May 2008) contributes to the decrease of the cost related to a patent Costs and Financing system - 3

Community Patent should propose a EU coverage for a reasonable price Still debated at the Council Main points under discussions: –Language regime –Repartition key –The subcontracting issue Costs and Financing system - 4

Enforcement of rights - 1 Patent litigations are too costly >> Therefore sometimes not in a position to enforce their rights. EPLA, Draft Agreement on European and Community Court, Unified Patent Litigation System Main issues under discussion: –Validity / infringements –Qualified judges in the regional panels –Opting out System The cost should not exceed 2 or 3 national litigations. Is it still too expensive ? Possible alternative solutions: –Mediation –Arbitration –Insurance scheme

Importance of being protected by a contract including IPRs before starting a research project eg: Consortium agreement for an FP7 project defining individual protection of participants, transfer of ownership, licensing etc Access rights to Background and Foreground: >> use and protection in both cases - Background: results prior to the project (owned by each participant) - Foreground: results generated by the project (owned jointly by the new consortium or to one identified partner when possibly identified) Enforcement of rights - 2

Raising IP awareness - 1 initiatives undertaken by the EPO: –IP4INNO –Technology Transfer Office

Raising IP awareness - 2 IP4INNO ip4inno is a EC-funded project as a part of the FP6. Aim: help SMEs enhance their understanding and use of IPRs with a view to promoting innovation and competitiveness in line with the European Commission's Lisbon goals. The 'train the trainer' concept has been developed to achieve this goal. Once the trainer has been educated or has enhanced his IP knowledge, he is in a position to spread over this knowledge towards end users. The training is carried out using 12 modules developed by the project's 19 partners on topics ranging from patents and other forms of IPRs, through commercialisation of these assets to enforcement issues. At the end of the project, business advisors had taken part in nearly 80 seminars across Europe, from Lisbon to Ankara and from Turku to Murcia. IP4INNO-2 could start in early 2010

Raising IP awareness - 3 Technology Transfer Office (TTO) Objective: to set up a TTO within the Office aiming at valorising the results of the search First project conducted by the PT Patent Office and financed by regional funds Partners of that project: Universities from IT, PO, PT, RO, SI, TR and UK, together with the EPO and the respective NPOs Mid and long term Objectives : IP promotion within Universities and management of IPRs, collaboration between public and private partnerships Seeking for autonomous project 5 years after the launch of the initiative Expectations: –Increase in the rate of patent filings –Increase in the use of the information contained into patent applications and patents (technology watch) –Commercialisation of the result of the searches (licensing spin off)

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