1. ip4inno Module 5B IP in the real world
Practical exercise to help you decide ‘What Protection is Appropriate?’
Complete the title slide to show the number and title of the Module, e.g.
"ip4inno Module 1A
Patent basics"
A subtitle would be optional e.g.
"Strategy for protecting & exploiting inventions"
The name, venue and date fields are to be left for trainers to complete whenever they run their own training.
Name of speaker
Venue & date 1

2. ip4inno is brought to you by:
European Commission, DG Enterprise & Industry
European Patent Office
19 consortium partners in the first ip4inno project
This particular module was updated by:
Own-it
with funding from the EC and EPO
This slide is mandatory. The contractor can, of course, claim credit for their authorship for this module (amend to show if written from scratch or merely updated). For those modules which are merely updated, the institutions responsible for the original (under the first project in 2007) should also be credited.
The fact that the EC and EPO are the sole funders of the current activity should be mentioned.
For information the partners in the first project ( ) were:
European Patent Office
Hungarian Patent Office
Portuguese Patent & TM Office
National Board of Patents and Registration of Finland
Spanish Patent Office
INPI, France
State IP Office of Croatia
Turkish Patent Office
Danish Patent Office
European Business and Innovation Centres Network
CRP Henri Tudor, Luxembourg
FUNDITEC, Spain
IWT - Flanders
Fraunhofer TEG
IEEPI, Strasbourg
METU - Technopolis, Turkey
Fundación EOI, Spain
Universidad Politécnica de Madrid
University of Alicante 2

3. 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.
The need for the disclaimer is obvious.
A trainer can add a bit of humour here by saying:
"This seminar is not intended to make anyone into an IP expert. We are not training you to become patent attorneys! Rather, please think of this course as "intellectual property First Aid". And what is the purpose of First Aid? - "To keep the patient alive long enough for professional help to arrive." that is what we hope to achieve with you - to make you IP paramedics. When clients come to you with a business issue, we hope you will know enough about IP to be able to spot an IP problem or opportunity which the client has missed, and prevent them from making the situation worse, whilst referring them to appropriate legal advisors. 3

4. ip4inno Module 5B: problem workshops Exercise 5 - the anti-allergy sprayer
Divide the audience into groups of 4-5 people and distribute a sheet with the following text:
Your client is the Research Director of a University Department whose team, after a period of very hard work, have developed a new medicinal product which is very effective in treating certain allergies. After studying various ways to apply this product, they concluded that a nasal application in the form of a subtle mist would be best. They designed a nebulizer and made some laboratory assays. This nebulizer has a special nozzle design that permits more effective delivery, by precisely forming tiny droplets of uniform size and speed to reach the optimal location inside the nose, allowing better absorption. The pumping system is also improved, delivering only an exact and fixed dose of the product, sufficient to treat symptoms for a whole day. For these reasons, they think it could be become a market leader.
At the same time, they contacted one of the University’s Technology Park companies, presenting the prototype they have developed for the sprayer. In collaboration with this engineering company, they now have an attractive design for the overall sprayer can, which is suitable for commercialisation. The design is minimal - "clean and clinical" - like a white can with only one green button.
Your client also considers the field of allergy products to be a growth market. She will approach an advertising agency to build-up a strategy that can give them an important share of the market for the next few decades. They came up with a brand name, NEBU-ALLERG, and they plan to create an attractive logo. They think the slogan should emphasise simplicity, something like “The green button and that’s it!”. The advertising agency plans a website and other material to support the promotional campaign.
Identify the various IP elements in this project, propose how to protect them, and prioritise them (e.g. considering cost). What contractual issues arise?
The time to discuss this exercise is 10 minutes.
NEBU-ALLERG

5. The many creative aspects to this project
Medicinal product
Nozzle
Pumping system
Sprayer can
Brand name:
"NEBU-ALLERG"
Logo
Slogan
The green button & that's it!
Domain name
Advertising material
NEBU-
ALLERG
Use the previous slide as a handout for the class, and give them 10 minutes to work in small groups on the questions.
Use this slide to summarise the issues they should be focussing upon in their discussions.
The purpose of this exercise is to consolidate what they have already learned in the previous four exercises, and introduce maybe just a few new concepts (like the exclusion of methods of medical treatment from patents protection, and supplementary protection certificates).

6. What IP? - Patents & designs
Medicinal product - patents
active ingredient, the "chemical X"; & potential SPC later
method of making X (...or better as a trade secret?)
formulation (combination of X with other ingredients)
method of use (i.e. treatment of allergies using X)
Nozzle - patent & utility model
Pumping system - patent & utility model
Sprayer can - designs (reg. & unreg); also ® ?
but who owns this IP?
Often it is best to take the class through the answers using a flipchart. It looks "spontaneous", but the results are in fact very predictable if the session is well planned. If they have done the last four exercises too, then they should be very tired by now. But with their new-found IP knowledge they should get all the answers quickly. This exercise is no more than an application of what they have learned in the other four exercises.
Start them off by asking "What will we do about the medicinal product?"
They will answer "Patent it!“ Fine, but ask them what exactly they plan to patent.
They will think to patent the active ingredient. Some will also mention SPCs too, but these come later. The Supplementary Protection Certificate is available only for those materials which are prevented from entering the market quickly due to clinical trails or other state safety approval delays, such that their patent lifetime is largely expired before any product reaches the market to generate profits to recover the R&D investment. Therefore SPCs cover medicines and pesticides and herbicides, and not much else. Note that SPCs protect much less than the patent. Whereas the patent might have related to an entire class of novel compounds, the SPC affords a few extra years of exclusive rights only with regard to the particular compound (the active ingredient) put on the market, not the entire family of compounds covered by the original patent. Therefore when a patent for a medicine expires, generics companies can freely manufacture using other members of the same class of compounds in the expired patent, only the one chemical put on the market enjoys a short extension to its exclusivity.
The duration of the SPC is calculated as follows:
Age of patent from first filing date when active ingredient first authorised for the European market* = 1-5 years, then no SPC extension
Age of patent ... = 6 years, then SPC = 1 year beyond expiry of the patent
Age of patent ... = 7 years, then SPC = 2 years beyond expiry of the patent
Age of patent ... = 8 years, then SPC = 3 years beyond expiry of the patent
Age of patent ... = 9 years, then SPC = 4 years beyond expiry of the patent
Age of patent ... = years, then SPC = 5 years beyond expiry of the patent (maximum)
* more precisely this is known as "the first European marketing authorisation"
See also:
And e.g. in the UK

7. What IP? - trade marks, domains, copyright
Brand name: "NEBU-ALLERG" - ®
Logo - ®
Slogan: "The green button & that's it!" - ®
Domain name
- no need for ®
- possible ® for this too?
Advertising material - copyright ©
but who owns this IP?
NEBU-
ALLERG
For the brand name, logo and slogan the obvious route is registered trade marks (RTMs)
Any problem with the name? Not really. It is a made-up word (like Kodak or Sony) and therefore has the potential to become a "strong" mark. And a pure "word" mark, unlimited by font or style gives broader protection than a "stylised word" mark, which protects the word or name only written in a particular way.
Any problem with the logo? No, It's fine.
Any problem with the slogan? No. It is not laudatory, nor descriptive, nor indicative of type, quantity or kind. So no problems here.
Note that in the long-term the RTMs could be the strongest asset - these will not expire like the patents, utility models and design rights. If the patent protection can keep the competition away from this market niche long enough to establish a reputation under the brand, then even after the patents and other IP expire, the trade marks can still maintain substantial market share.
What about the domain name?
Well, if "NEBU_ALLERG" becomes an RTM, then strong protection exists against cyber-squatters who might register " (no hyphen) or " and other variants. Suing cyber-squatters under trade mark law is usually preferable to bringing an action under the Uniform Dispute Resolution Procedure (UDRP) for domain names at WIPO, because the UDRP is not a true court: it is only an administrative procedure. With the UDRP you have to prove that the cyber-squatter has no legitimate interest of their own in the string of letters, and if you win you can only get the offending website cancelled, or transferred (to you). [Which is preferable? Transfer: then you can use it or shelve it. Conversely cancellation leaves the potential risk that a later rival will re-register it and repeat the headache!]

8. What next?
S E A R C H !!!
Patents (e.g. free via 65 millions documents)
are our inventions novel, inventive and patentable?
are we risking infringement of other rights?
to whom could we license?
from whom could we license?
who are our potential customers, suppliers and competitors?
Trade Marks
Designs
Now tease the audience with "What next?"
There is only one answer you are looking for here, so dismiss all others. And make it sound urgent:
"What is the very first thing you will do, as soon as the Research Director has left your office after the meeting? Before you even go to lunch, what will you do next?"
Finally, some-one will stumble onto the answer - "Do a search?"
YES !!!
(Relief from all in the classroom)
Quickly hammer home all the key messages on patent information (per Modules 3A & 3B), namely:
Do state-of-the-art searches to investigate relevant technical information (are they re-inventing existing technology?) and to establish if what they have developed is itself patentable.
What about their "freedom to operate" ? Is their technology infringing a granted claim on a patent which affects their territory?
Can they use the patent database to identify companies to whom and from whom they could licence relevant technology? (c.f. Open Innovation)
Can the database lead them to potential partners, customers and suppliers, as well as warn them about competitors?
With trade marks and designs the concern is more simply focussed on establishing if there is a risk of infringement if they carry on with what they are planning.

9. Thank you for your attention
Jeremy Philpott European Patent Academy
European Patent Office
Thank the audience for their attention, congratulate them on getting to the end of a very long module, and wish them a safe journey home.
Invite them to complete the feedback evaluation form, and remind them to check the ip4inno website for more updates and supporting information.

10. Some useful links: European Patent Office: http://www.epo.org
(Patents in over 35 European countries)
World Intellectual Property Organization:
(Patents, Trade Marks, Industrial Designs, Geographical Indications, Copyright)
Office for Harmonization in the Internal Market:
(Trade Marks & Designs in the EU)
IPR-Helpdesk:
(Industrial Property, Copyright)
Keep this slide in reserve in case you need to refer anyone to sources of supporting information: e.g. how to apply for patents, trade marks and designs; and their fees.