Dr. Michael Berger, European Patent Attorney © Michael Berger Intellectual Property (IP): Patents for Inventions

Intellectual Property (IP) Technical protective rights: Patents Utility patents Semiconductor Protection Nontechnical protective rights: Design Patents Trademarks Plant Variety Protection NewScope Group © Michael Berger

Trademarks…

A patent is a set of exclusive rights granted by a state to an inventor or his assignee for a limited period of time in exchange for a disclosure of an inventionexclusive rightslimited period of time invention Patent applications are possible for: Products (devices etc.), methods, medical use… What is a patent? NewScope Group © Michael Berger

exclusive rightsexclusive rights: commercial use only through the inventor or his assignee and/or his licensee(s) limited period of timelimited period of time: 20 years from the filing date InventionInvention: as defined in the claims; must be novel and inventive over the prior art and be industrially applicable to be granted as a patent; must be sufficiently disclosed NewScope Group © Michael Berger

Novelty… - Keep the invention secret prior to filing !!!!! After filing… - Could be advantageous to keep the invention secret until patent application is published if there are related inventions which will be filed at a later stage

Patent claims: Claims define in the most abstract form what the inventor regards to be the invention in respect to what forms the (known) prior art. NewScope Group © Michael Berger

Claim Example 1. A plastic drink bottle having two closed internal compartments, said closed internal compartments being able to hold a first drinking fluid and a second drinking fluid, such that a user may access said first drinking fluid independent of said second drinking fluid. (taken from US A1 ) NewScope Group © Michael Berger

…other embodyments covered by the claims - A plastic drink bottle having two closed internal compartments - said closed internal compartments being able to hold a first drinking fluid and a second drinking fluid - such that a user may access said first drinking fluid independent of said second drinking fluid

A patent is an object of great value. The value is thereby dependent on the scope of the patent and the territorial extent of the patent family. NewScope Group © Michael Berger

How to obtain a patent 1.filing a patent application at national (e.g. UKPTO, USPTO, DPMA) or regional Patent Offices (e.g. EPO) (preliminary protection after opening of the patent application to the public / 18 months after filing) 2.Request examination of the patent application 3.If the requirements for granting a patent (e.g. novelty, inventive step) are fulfilled a patent will be granted (full protection - exclusive rights in force) NewScope Group © Michael Berger

International Patent Filing a) Traditional patent systems: Local patent application followed within 12 months by multiple foreign applications claiming priority under Paris Convention: – multiple formality requirements – multiple searches – multiple publications – multiple examinations and prosecutions of applications – translations and national fees required at 12 months -> decision on national filings and high costs 12 months after first filing NewScope Group © Michael Berger

Traditional filing system - TIMELINE (simplyfied) National/Regional/ filing (priority date) National /Regional publications National / Regional filings claiming priority (months) NewScope Group © Michael Berger

b) PCT (Patent Cooperation Treaty) system First patent application is followed within 12 months by international application under the PCT, claiming Paris Convention priority – one set of formality requirements – international search – international publication – international preliminary examination (IPE) – international application can be put in order before national phase – translations and national fees required at 30 months*, and only if applicant wishes to proceed Advantage: – “national phase” commencing at 30 months*; -> high cost effort for national filings” 30 months after first filing instead of 12 months after filing -> 30 months time after first filing for decision on national filings *A few States apply a 20-month time limit where no demand for international preliminary examination has been filed before the expiration of 19-month period NewScope Group © Michael Berger

PCT TIMELINE (simplyfied) NewScope Group © Michael Berger National/Regional/ PCT filing/ (priority date) PCT filing International search report (ISR) and written opinion (WO) of ISA International publication National phase entry (months) IPRP established 2 months from ISR: filing of claims amendments (optional) Filing of demand (IPE)

NewScope Group © Michael Berger PCT Contracting States* (142 on 1 May 2010) * For a detailed list please see

Last but not least, think about if there is a market for the product to be patented… NewScope Group © Michael Berger Source: EPO poster “ The seven deadly sins of the inventor”

Thanks ! NewScope Group © Michael Berger