ip4inno Module 5B IP in the real world Practical exercise to help you decide ‘What Protection is Appropriate?’ Name of speakerVenue & date

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The Disclaimer! This training material concerns intellectual property and business strategies only in general terms. This training material should not be relied upon when taking specific business or legal decisions. Rather, professional advice should be obtained which suits the circumstances in question.

What kind of protection is appropriate? EXERCISE 4 High quality gear wheels

What kind of protection is appropriate? Confidentiality Trade mark Copyright Patent Design right Internet domain name

What kind of protection is appropriate? Confidentiality Trade mark Copyright Patent Design right Internet domain name

7 StateInventor What is a patent? A contract Fees Technical Description Exclusive Rights 20 years

Requirements of patents The invention must be new have an inventive step that is not obvious to someone with knowledge and experience in the subject be capable of being made or used in some kind of industry Not be discoveries, scientific theories and mathematical methods; aesthetic creations; schemes, rules and methods for performing mental acts, playing games or doing business, and programs for computers; presentations of information.

The prior art search The BEANO No page 1 28 February 1981

Prior Art

The inventive step It is the most difficult part of the patent examination process In most European countries the “problem-solution” approach is applied

How to apply? National Patent European Patent Convention (EPC) Patent Cooperation Treaty (PCT)

National application Exam GRANT Search “A” Pub Search UK France Germany US Japan “A” Pub Exam GRANT

Application via EPC EPO Search EPO Exam EPO “A” Pub EPO GRANT } 3 to 7 years 9 month opposition period Granted in all designated states France GRANT Germany GRANT UK GRANT

Application under PCT I.S.A. Search I.S.A. “A” Pub Exam UK France Germany US Japan GRANT } Up to 30 months

16 Costs of a patent CostsApprox. % of total Application & prosecution fees14% Patent agent20% Cost of translation38% Cost of maintaining application & patents28% 8 European countries, during 10 years: around € (though costs may vary depending on many factors) National costs: Application, prosecution & maintenance fees during 10 years: approx €* (+ attorney fees) International costs:

An alternative: utility model Only available in a limited number of countries Similar to a patent Suitable for SMEs Lower expectations re: inventive step or non-obviousness Cheaper, simpler, faster Shorter period of protection

A patent: the social contract Important source of technical information Not published elsewhere Most is free technology Easily accessible via the Internet

Why is patent information useful? Planning R&D activities Assess patentability of your invention Writing the patent application Watching competitors Preventing you from infringing other people’s rights Resolving technical problems

Patent infringement Use of the patented invention without the permission of the patent proprietor The infringer’s product (or method, service, etc.) falls within one or more of the claims of the granted patent An action for infringement can only be brought after the patent is granted Usual defences: lack of novelty, obviousness, collateral defects, etc...

Patent vs. Trade Secret Wider protectionRestricted protection only against industry espionage High costsApparently no costs Opportunity to make moneyVery difficult to make money Public accessRestricted access Duration: 20 yearsDuration: potentially unlimited Territorial limitsNo territorial limits Inventions onlyAny kind of information

Conclusions Should have considered: Patent/utility model Now opt for trade mark protection Copyright is difficult to prove and to enforce

What kind of protection is appropriate? EXERCISE 5 The Anti-Allergy Sprayer

Some useful links World Intellectual Property Organization: Office for Harmonization in the Internal Market: European Patent Office: IPR-Helpdesk:

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