Strengthening the Protection and Enforcement of Intellectual Property Rights in Ukraine Activity October 2014

Strengthening the Protection and Enforcement of Intellectual Property Rights in Ukraine Activity October 2014 Case study – Patent Enforcement

Outline of the case  SME …  has come up with a valuable invention  undertakes a search and finds relevant prior art  thus does not apply for a patent  starts selling  Then…  Competitor C sues SME for patent infringement  SME learns that it could have filed a patent application but now it‘s too late Question: What went wrong? 3

Distinguish: An invention is not known so far (matter of patentability) An invention is not protected so far (matter of infringement) 4

Is an invention new? Diesel engine Diesel engine with several cylinders Diesel engine with exhaust return Diesel engine with Injection 5

Most important principle in patent law - If the general is known, it is possible to get a patent for the specific - If the specific is known, it is no possible to get a patent for the general First invention: Diesel engine Second invention: Diesel engine with injection Patent possible Patent possible 6

Most important principle in patent law Later: Patent for general diesel engine? First invention: Diesel engine with injection Lack of novelty!! Patent possible - If the general is known, it is possible to get a patent for the specific - If the specific is known, it is no possible to get a patent for the general 7

Another example: Body with surface Invention: Surface = Metal Known in prior art: Surface = Steel Patent possible? No! Lack of novelty! 8

Other way round? Known in the art: Surface = Metal Invention: Surface = Steel Patent possible ? Novelty? Inventive activity? MAYBE ! 9

What about the protection? Mr. Diesel has protection for the Diesel engine Inventor II has protection for the Diesel engine with several cylinders 10

Legal situation Who is allowed to do (e.g. sell) what?  Mr Diesel  Inventor II  Others 11

What is a patent (legally)? The patent gives the owner the right to ban others from  producing;  offering;  putting into circulation;  importing; and/or  using the protected invention. 12

Mr. Diesel is entitled to ban everyone from producing/selling the Diesel engine Inventor II is allowed to ban everyone from having several cylinders in the Diesel engine Who is allowed to do what? 13

Mr. Diesel is not allowed to use several cylinders (=> is only allowed to have one-cylinder machines) Inventor II is not allowed to use anything Who is allowed to do what? 14

 No one is allowed to sell the Diesel engine with several cylinders!  Bad situation for Mr. Diesel, inventor II, and all consumers !! Legal situation reg. several cylinders 15

 Mr Diesel and inventor II should talk to each other!  Possible solution: They allow each other the use („cross-license“) What could be done now? 16

What went wrong? Patentability: -SME believed they could not file a patent application because the general was known -After selling the product, filing a patent application is no longer possible 17

What went wrong? Infringement: SME did not untertake a „freedom to operate“-search => They were not aware of the patent they were infringing 18

Thank you! Activity