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Practical Aspects of IP Arbitration: Improving the negotiating position Olav Jaeger September 14, 2009
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September 09 2 1.Background 2.Types of intellectual property rights in Europe 3.Application strategies
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“The art of war teaches us to rely not on the likelihood of the enemy's not coming, but on our own readiness to receive him; not on the chance of his not attacking, but rather on the fact that we have made our position unassailable.” Sun Tzu September 09 3 Background
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■Rights granted by IP ■a patent provides the right to exclude any third party from making, using, selling and offering for sale ■a trademark confers on its proprietor an exclusive right to use the trade mark and to prevent third parties to use, without consent, the same or a similar mark for identical or similar goods and/or services trademark ■a design provides a exclusive right to use the design concerned and to prevent any third party from using it ■The term “use” includes making, offering for sale and selling September 09 4 Intellectual Property Types
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■There are different kinds of national and European intellectual property rights ■National IP rights ■Patents ■Utility model ■Trademarks ■Design ■European Patent ■European Community rights ■Trademark ■Design September 09 5 Intellectual Property Types
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■National intellectual property rights ■Obtained through national Offices ■filing language: national language or any (with translation filed later on), depending on IP type ■Examination depending on IP type and national law ■Duration depending on IP right (subject to extension fees) and national law ■Patent: up to 20 years ■Utility model: up to 10 years ■Trademark: infinite ■Design: up to 25 years ■Protection only in the respective national state September 09 6 Intellectual Property Types
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■European Patent ■Obtained through EPO ■filing language: DE, EN, FR or any (with translation necessary later on) ■Examination on patentability ■Validation in member states of the EPO ■Duration (subject to renewal fees): up to 20 years ■Protection only in validated member states September 09 7 Intellectual Property Types
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■Community intellectual property rights ■Obtained through OAMI ■filing language: DE, EN, ES, FR, IT ■Examination depending on type and council regulation ■Duration depending on IP right (subject to renewal fees) and council regulation ■Community trademark: infinite ■Community design: up to 25 years ■Protection within the European Community September 09 8 Intellectual Property Types
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■National patent ■protection in national state ■European Patent ■protection in validated member states ■Community rights ■protection within the EC September 09 9 Intellectual Property Types
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■Situations for many Chinese companies regarding European IP rights: -no IP rights at all osome foreign IP rights (e.g. some CN patent s or patent applications pending) osome European IP rights (e.g. some EP patent applications pending ☺many European IP rights (e.g. different IP types, many EP and national patents as well as patent applications pending) September 09 10 Application Strategies
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September 09 11 Application Strategies ■Possible strategies to improve situation related to patents ■WO-Applications + filing in CN possible + broad range of countries including EP + most relevant cost decision can be postponed -long duration until grant ■Costs appr.: 4500 € (application with 20 pages, 10 claims with EPO as ISA)
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September 09 12 Application Strategies ■Possible strategies to improve situation related to patents ■WO-Application duration month 30,311222 national applications, e.g. US, DE, FR WO subsequent application WO application regional applications, e.g. EP national application
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September 09 13 Application Strategies ■Possible strategies to improve situation related to patents ■EP-Applications + filing in CN possible but English translation required before obtaining search report + two stage granting procedure: search - examination + protection in validated members states, can be postponed until grant o faster than WO-application, but often slower than national procedure ■Costs appr.: 22.000 € to 28.000 € ( 6 validated countries )
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September 09 14 Application Strategies ■Possible strategies to improve situation related to patents ■EP-Applications duration grant 18 24 EP subsequent application validated patents in member states WO application 12 national application EP application 31
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September 09 15 Application Strategies ■Possible strategies to improve situation related to patents ■National applications + normally the fastest way to get a patent + relatively low administrative fees - national language required - protection in only one country ■Costs depending on country, appr.: 2000 – 7000 € (application with 20 pages, 10 claims)
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■recommended measures for improving portfolio situation in Europe ■WO / EP application for future technologies ■identify and protect key technology ■long duration is not important ■national applications in key customer markets ■mostly well established system for litigation ■acknowledged quality of examination (DE) ■utility models where possible ■fast, cheap, but unexamined ■good for counterclaim September 09 16 Application Strategies
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September 09 17 Application Strategies ■Possible strategies to improve situation related to other IP rights ■National designs + fast and cheap registered IP right - not examined - protection in only one country ■Costs depending on country, appr.: 500 – 2000 € ■Community designs + very fast registered IP right (24 – 48 h to registration) + every product within the EC is unregistered EC design + protection within the EC - not examined ■Costs depending on country, appr.: 1000 – 2000 €
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September 09 18 Application Strategies ■Possible strategies to improve situation related to other IP rights ■National trademarks + cheap registered IP right - examination depending on national law - protection in only one country ■Costs depending on country, appr.: 1000 – 3000 € ■Community trademarks + examination on absolute grounds for refusal + protection within the EC ■Costs appr.: 2000 – 5000 €
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■recommended measures for improving portfolio situation in Europe ■National/Community designs ■identify and protect key designs using Community Designs ■protect key markets with additional national designs ■good in combination with other IP rights ■National/Community trademarks ■protect products with newly introduced technology ■well established system for litigation ■good in combination with other IP rights September 09 19 Application Strategies
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Practical Aspects of IP Arbitration: Improving the negotiating position www.ehf-patent.com
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