1. WIPO WORKSHOP ON INTELLECTUAL PROPERTY FOR BUSINESS FOR SMALL AND MEDIUM-SIZED ENTERPRISES (SMES) Workshop in Dar-es-Salaam, May 10 and
Dipl.-Ing. Volker Plogmann
Managing Director Patent and Trademark Department
Wilhelm Karmann GmbH
Full Service Vehicle Supplier, Osnabrück, Germany
Intellectual Property Rights (IPRs)
For the success of small and medium-size enterprises innovative products as a result of purposeful research and development activities are of high significance as well as the strategic of Industrial Property Rights (IPRs). Patents ensure the innovative competitive advantage. Patents are the most important instrument of IPR for technology enterprises. Patents serve the conversion of company targets.
Many innovative and successful enterprises therefore applies: Patent strategy is enterprise strategy.
On the average half of the enterprise value consists of imaterial economic goods which are financially not considered (relating to the balance).
Expert knowledge is required for purposeful handling of imaterial economic goods.
The focusing on the range of the management of Intellectual property rights is part of patent strategy.
Volker Plogmann

2. Why Intellectual Property Rights ?
Intellectual Property / Immaterial Goods
No „physical entity“ („idea“)
Realizable / easy to copy/multiply
Value when multiplied? (rises/falls)
Aggregate Value added (by whom?)
Amendments possible
control?
Commercial Use of IPRs
A first aspect of using IPRs commercially is that they give their owners the possibility to protect their own business, namely to prevent third parties from copying and using, respectively, the technology, in case of patents as an example, which is subject to such IPRs.
Cooperation with other parties furthermore becomes easier if the technology of one of the cooperation partners, at least, is protected by IPRs, since in this case it is much easier to exchange certain informations with cooperation partners without the risk of a not permitted use of the technology and secret know-how, respectively, by the other cooperation partner(s).
Volker Plogmann

3. Why Intellectual Property Rights ?
Invention and competitive advantage
keeping secret (method / product) ?
Easy to copy/analyze (Know-How) ?
General Goal of IP System
Support of Innovation
Providing of Knowledge (Publication)
“Legal Protection” as renumeration for publication of knowledge
Also, the use of IPRs in mergers and acquisitions should not be under-esteemed, the valuation of intangible assets leading in many instances to a much higher value of a company or part of an enterprise to be balanced in order to get certain shares in joint ventures etc.
Joint results of joint R&D can easier be controlled in cooperation with other parties, and joint patent ownership, as an example, in this regard can help to avoid antitrust problems.
Volker Plogmann

4. Kinds of Intellectual Property Rights
Registered IPRs
Un-registered IPRs
Technical IPRs
Non-technical IPRs
Kinds of IPRs
In order to illustrate to the audience the types of IPRs which can be licensed, reference will subsequently be made to the different types of IPRs in the widest possible sense. Any advisor participating in licensing should be guided by means of a type of check list to investigate the structure and possible scope of license arrangements.
Volker Plogmann

5. Registered IPRs Technical IPRs Non-technical IPRs Patents
Utility models
Topographic designs
Plant varieties
Non-technical IPRs
Registered Trademarks
Designs
Registered IPRs
Typical IPRs are those in a narrower sense, namely registered IPRs. These rights are the easiest basis of someone wishing to license out or in, though the world of licensible IPRs certainly is not restricted to such rights.
Volker Plogmann

6. Patents / Utility Models
Subject matter
Technical teaching
Products
Processes (only patent)
Uses (only patent)
Important Exception: software “as such”
Patents
A preeminent role among IPRs is enjoyed by patents, which in the present context also cover patent applications. When valuing these it must be borne in mind that even a patent application already represents an economic basis for licensing, although it still fails to provide full exclusive rights.
Naturally, in the case of a patent application there is a risk of it subsequently not leading to a patent during examination proceedings because its subject-matter is not considered patentable, i.e. new and inventive, but the risk of a subsequent patent destruction also exists with already granted patents, which can be destroyed during opposition or invalidation proceedings. In the practice of licensing of technology which is subject to patent applications or patents rather seldom there is a significant risk factor deduction in case of patent applications compared with already granted patents.
Volker Plogmann

7. Patents / Utility Models
Requirements for registrability
Novelty
Inventiveness
Commercial applicability
Patents
This is largely the opposite to what happens when according e.g. to German practice compensation for employees' inventions is calculated, where a 50 % risk deduction up to patent grant has been adopted. A transfer of this rule to licensing has not generally been observed, though certain reductions during the application period of an invention which is subject to a patent application might be justified.
Utility Models
For the purpose of the present paper utility models, wherever they exist because of local legislation, can be looked upon as "petty patents". Fundamentally they are exclusive rights substantiating claims to cease and desist and for damages. Since the right of the utility model owner insofar are no different from those of the patentee, they lead to the corresponding consequences for licensing.
Volker Plogmann

8. Designs Subject matter Requirements for registrability
Two dimensional patterns
Three dimensional
configurations
Requirements for registrability
Novelty
Uniqueness
Designs
Unlike in the case of patents and utility models, designs do not protect technical inventions, but instead creations having an aesthetic uniqueness. It is not a question of whether the particular article represents a work of art or is "attractive" in the aesthetic sense, it is only the uniqueness differentiating a particular design from a generally known shapes, no matter whether it is attractive or not. The protection of the design, unlike that of a patent or utility model, is not an "absolute" protection, but instead only covers the copying of the protected design, a requirement which does not exist with patents and utility models.
Subcases of design protection are the protection of typographic characters and the topographies of microeletronic semiconductor products. If the enterprise to be acquired is of such a nature it will be necessary to check such rights. Rights of the aforementioned kind are valuable assets in case of licensing.
Volker Plogmann

9. Designs Creation of protection Scope of protection
National deposition/registration
International deposition/ registration/The Hague Convention
Scope of protection
Merely against copying
(no protection against independent development of third party! )
Volker Plogmann

10. Trademarks Volker Plogmann Registered Marks
Apart from patents, trademarks constitute extremely valuable IPRs which can be used for licensing in the broadest sense. Marks, namely word and picture marks, but also claims or three-dimensional structures, can assume considerable values, as will be made apparent by the fact that e. g. in 1991 seven marks for alcoholic drinks with which it was possible in the past to obtain an annual turnover of about 235 million US $ were sold by the Canadian firm Seagram for more than 370 million US $ to American Brands, giving an average mark value of more than 50 million US $.
Other than in the case of patents, utility models and designs the protection term of trademarks is unlimited. Also for the economic use period it is difficult to give empirical values, because it can range between zero in the case of stock marks and extend to infinity. On e. g. considering Coca Cola, the value of a mark frequently exceeds many times the total value of the remaining assets of the enterprise.
Obviously, trademarks are an ideal subject for license agreements, taking duly into consideration the aforementioned aspects.
Volker Plogmann

11. Legal Aspects (TRIPS) International Minimum Standards
Copyright, Trademark, Design, ...
Patents, Art. 27 to 34 TRIPS:
all fields of technology without discrimination
novelty, inventiveness, industrial applicability
no discrimination as to place of invention or whether products are imported or local
WTO Member States (144, as of Jan. 2002)
Albania 8 September 2000 Angola 23 November 1996Antigua and Barbuda 1 January 1995 Argentina 1 January 1995 Australia 1 January 1995 Austria 1 January 1995 Bahrain 1 January 1995 Bangladesh 1 January 1995 Barbados 1 January 1995 Belgium 1 January 1995 Belize 1 January 1995 Benin 22 February 1996 Bolivia 12 September 1995 Botswana 31 May 1995 Brazil 1 January 1995 Brunei Darussalam 1 January 1995 Bulgaria 1 December 1996 Burkina Faso 3 June 1995 Burundi 23 July 1995 Cameroon 13 December 1995 Canada 1 January 1995 Central African Republic 31 May 1995 Chad 19 October 1996 Chile 1 January 1995 China 11 December 2001 Colombia 30 April 1995 Congo 27 March 1997 Costa Rica 1 January 1995 Côte d'Ivoire 1 January 1995 Croatia 30 November 2000 Cuba 20 April 1995 Cyprus 30 July 1995 Czech Republic 1 January 1995 Democratic Republic of the Congo 1 January 1997 Denmark 1 January 1995 Djibouti 31 May 1995 Dominica 1 January 1995 Dominican Republic 9 March 1995 Ecuador 21 January 1996 Egypt 30 June 1995 El Salvador 7 May 1995 Estonia 13 November 1999 European Community 1 January Fiji 14 January 1996 Finland 1 January 1995 France 1 January 1995 Gabon 1 January 1995 The Gambia 23 October 1996 Georgia 14 June 2000 Germany 1 January 1995 Ghana 1 January 1995 Greece 1 January 1995 Grenada 22 February 1996 Guatemala 21 July 1995 Guinea Bissau 31 May 1995 Guinea 25 October 1995 Guyana 1 January 1995 Haiti 30 January 1996 Honduras 1 January 1995 Hong Kong, China 1 January 1995 Hungary 1 January 1995 Iceland 1 January 1995 India 1 January 1995 Indonesia 1 January 1995 Ireland 1 January 1995 Israel 21 April 1995 Italy 1 January 1995 Jamaica 9 March 1995 Japan 1 January 1995 Jordan 11 April 2000 Kenya 1 January 1995 Korea, Republic of 1 January 1995 Kuwait 1 January 1995 Kyrgyz Republic 20 December 1998 Latvia 10 February 1999 Lesotho 31 May 1995 Liechtenstein 1 September 1995 Lithuania 31 May 2001 Luxembourg 1 January 1995 Macao, China 1 January 1995 Madagascar 17 November 1995 Malawi 31 May 1995 Malaysia 1 January 1995 Maldives 31 May 1995 Mali 31 May 1995 Malta 1 January 1995 Mauritania 31 May 1995 Mauritius 1 January 1995 Mexico 1 January 1995 Moldova 26 July 2001 Mongolia 29 January 1997 Morocco 1 January 1995 Mozambique 26 August 1995 Myanmar 1 January 1995 Namibia 1 January 1995 Netherlands — For the Kingdom in Europe and for the Netherlands Antilles 1 January 1995 New Zealand 1 January 1995 Nicaragua 3 September 1995 Niger 13 December 1996 Nigeria 1 January 1995 Norway 1 January 1995 Oman 9 November 2000 Pakistan 1 January 1995 Panama 6 September 1997 Papua New Guinea 9 June 1996 Paraguay 1 January 1995 Peru 1 January 1995 Philippines 1 January 1995 Poland 1 July 1995 Portugal 1 January 1995 Qatar 13 January 1996 Romania 1 January 1995 Rwanda 22 May 1996 Saint Kitts and Nevis 21 February 1996 Saint Lucia 1 January 1995 Saint Vincent & the Grenadines 1 January 1995 Senegal 1 January 1995 Separate Customs Territory of Taiwan, Penghu, Kinmen and Matsu 1 January 2002 Sierra Leone 23 July 1995 Singapore 1 January 1995 Slovak Republic 1 January 1995Slovenia 30 July 1995 Solomon Islands 26 July 1996 South Africa 1 January 1995 Spain 1 January 1995 Sri Lanka 1 January 1995 Suriname 1 January 1995 Swaziland 1 January 1995 Sweden 1 January 1995 Switzerland 1 July 1995 Tanzania 1 January 1995 Thailand 1 January 1995 Togo 31 May 1995 Trinidad and Tobago 1 March 1995 Tunisia 29 March 1995 Turkey 26 March 1995 Uganda 1 January 1995 United Arab Emirates 10 April 1996 United Kingdom 1 January 1995 United States of America 1 January 1995 Uruguay 1 January 1995 Venezuela 1 January 1995 Zambia 1 January 1995 Zimbabwe 5 March 1995
Observer governments
Algeria Andorra Armenia Azerbaijan Bahamas Belarus Bhutan Bosnia and Herzegovina Cambodia Cape Verde Ethiopia Former Yugoslav Republic of Macedonia Holy See (Vatican) Kazakstan Lao People's Democratic Republic Lebanon Nepal Russian Federation Samoa Sao Tome and Principe Saudi Arabia Seychelles Sudan Tajikistan Tonga Ukraine Uzbekistan Vanuatu Vietnam Yemen Yugoslavia, Fed. Rep. of Note: With the exception of the Holy See, observers must start accession negotiations within five years of becoming observers.
Volker Plogmann

12. Why Intellectual Property Rights ?
World of Patents
„Worldwide there are more than 4 million patents in force, every year it will be applied for patents for about inventions. For each invention a patent will be requested in average in 4 countries. By licensing patents have achieved royalty payments in the amount of about 100 billion US$ in 2000, 10-times as much as 1990.“
Volker Plogmann

13. Why Intellectual Property Rights ?
Patents in and for Europe
„In the year 2000 about patent applications have been filed with the EPO. Nearly 70 % of the applicants allover the world trust the EPO with the examination of their applications.
For Patent Searches the EPO has access to about 38 million documents from more than 60 countries.
About 50 states have adapted their patent systems more or less to the European Patent Convention, having increasing influence in many countries of the world.“
Volker Plogmann

14. Commercial Benefits from IPRs
Protection of own business (!!)
prevent copying
cross licensing basis (free to market)
keeping price level of own products
Cooperation with other parties
Transfer out (License/Sale)
Transfer of Technology possible !!
Controlling use of joint results
Use of joint patent ownership to avoid antitrust problems
Volker Plogmann

15. Patents in Force
Volker Plogmann

16. Application Activities
Volker Plogmann

17. Worldwide Patent Activities
Volker Plogmann

18. Application Activities - Globalization
Volker Plogmann

19. Application Activities - Globalization
Volker Plogmann

20. „Licensing“ and TT Negotiation Skills for Licensing Technology
General Possibilities
Sale
Licensing
Types
Terms
Issues in Licensing
Exploitation of Technology and Intellectual Property Rights (IPRs)
When technology is to be used in cooperation with a third party, whether in the form of a license, as it is the main aspect of this paper, or by merger or by taking capital investment of a third party into the company owning the technology, it is of tremendous importance to determine the value of patents and other intangible assets, in the following designated as Intellectual Property Rights (IPR), belonging to the respective entity. In many instances, said IPRs, understood in a broader sense, do already exist by the mere creation of a technology etc., in other instances an appropriate protection by registered IPRs is necessary or at least advisable.
Volker Plogmann

21. „Licensing“ and TT „Permitting“ licensor => licensee
Anything, which is owned by the licensor and otherwise could not be used by the licensee
1) Due to legal reasons (IPRs)
2) Due to factual reasons (Know-How)
Licensing and IPRs
Licensing means "permitting", and quite in general nothing can be licensed which the potential licensee is enabled or permitted to do even without the permittance by the potential licensor.
Usually, and at least in the understanding of this paper, by "licensing" it is understood that a third party is enabled to use patents and other IPRs which otherwise that party, the licensee, could not use. Insofar, one has to distinguish between two completely different aspects of licensing, namely the enabling and the permitting aspect.
Volker Plogmann

22. Types of Transfer of Technology
Product/Service/System
Transfer of Equipment
Transfer of Know-How
Transfer of Permittance
As an example, in case of a pure know-how license, licensing means that the licensor enables the licensee to use the licensed know-how by disclosing same to the licensee, since otherwise, without the specific knowledge achieved by licensing, the acquiring party, the licensee, as a matter of course could not use such know-how. In other cases, like in a pure patent license, where the licensor would not undertake any obligation to teach the licensee anything more than one could already learn from a respective patent specification, there is only a licensing in the sense of permitting the licensee to use the otherwise exclusive right of the licensor as granted by the patent.
Unregistered Exclusive Rights
Often when licensing is taken into consideration, not sufficient attention is given to the fact that there are also unregistered exclusive rights which give the potential licensor a competitive edge, e.g. a lead in the market, and therefore represent a value which economically can be used for licensing purposes.
Volker Plogmann

23. Coverage of License Agreement I
Which IPRs ?
registered / non-registered
Where ?
territorial boarders / markets
Time Frame ?
Start / End / Termination
Volker Plogmann

24. Coverage of License Agreement II
Quantity ?
Quality Control ?
Support
Technically / Marketing
Documentation
technical drawings, specifications, market search results...
Volker Plogmann

25. Kinds of License Agreements
Exlusive License
„Sole“ License
Non-exclusive License
Volker Plogmann

26. Valuing the Technology
Cost approach
Market approach
Benefit approach
25 % “Rule“
Technology Factor and others
Volker Plogmann

27. Licensing Terms Running Royalties Downpayment/Milestones/Installments
Sliding
Capped
Downpayment/Milestones/Installments
Creditable or not
Minimums (Maximums?)
Volker Plogmann

28. Limitations and Restrictions
Field
Geography
Time
Terminal Rights
Volker Plogmann

29. Warranties Protection Freedom Technical / Product Liability
Volker Plogmann

30. Intellectual Property Rights
Thank you for listening!
Volker Plogmann

31. WIPO WORKSHOP ON INTELLECTUAL PROPERTY FOR BUSINESS FOR SMALL AND MEDIUM-SIZED ENTERPRISES (SMES) Workshop in Dar-es-Salaam, May 10 and
Dipl.-Ing. Volker Plogmann
Managing Director Patent and Trademark Department
Wilhelm Karmann GmbH
Full Service Vehicle Supplier, Osnabrück, Germany
Volker Plogmann

32. Wilhelm Karmann GmbH Karmann Ghia Coupe 1955 Volker Plogmann
Wilhelm Karmann GmbH - Shaping the future of automobile
As one of the world's most successful full-service-vehicle-suppliers, each and every day, we are working on the future of the automobile as a forerunner, setting new standards through our engineering solutions. Tradition and innovation are the two components of our drive – the market and the high standard of requirements of our customers are our impetus. Indeed, the name "Karmann" stands for quality and reliability, expeditiousness and flexibility, and thus, ''Karmann'' signifies a permanently high level of performance. Specifically, in the development stage of new products.
Volker Plogmann

33. Complete Vehicles Audi A4 Convertible 2002
Mercedes-Benz CLK Convertible 2003
Chrysler Crossfire Coupé 2003
Chrysler Crossfire Roadster 2004
International OEMs
Our current reference list includes the Audi A4 convertible, the Chrysler Crossfire Coupe, the Chrysler Crossfire Roadster and the Mercedes-Benz CLK convertible. We supply modules for the Jaguar XK8 convertible, the Renault Mégane convertible and the Mercedes-Benz SLK. In addition, we were in charge of the development of the Volkswagen New Beetle convertible and the Mercedes-Benz Vaneo and the MAN driver's cabin Trucknology including the manufacturing of the production facilities. The roof modules for the New Beetle convertible are now being produced by Karmann-Ghia of Mexico. Our company is indeed famous for its expertise in convertibles. However, if you take a closer look, you will find that there is so much more to Karmann.
Volker Plogmann

34. Roof Systems VW New Beetle Convertible 2002 Volker Plogmann
Renault Mégane Coupe-Convertibles 2003
Volker Plogmann

35. 3.5 Million Vehicles 1949-2004 Selection from reference vehicle list:
VW Golf A1 Convert.
388,522 units
VW Beetle Convert.
331,847 units
VW Karmann Ghia
362,601 units
VW Porsche 914
118,949 units
VW Scirocco I
504,153 units
BMW 6th Series
96,149 units
VW Scirocco II
291,497 units
Ford Escort Conv.
104,237 units
VW Corrado
97,521 units
Ford Escort Conv.
83,983 units
VW Golf A3 Convert.
139,577 units
Renault Mégane Conv.
58,867 units
3.5 Million Vehicles
Since 1949, more than 3,5 million vehicles have been built by Karmann. Some examples are the Volkswagen Beetle convertible, the legendary Karmann Ghia, BMW coupes, the Volkswagen Porsche 914, the Volkswagen Scirocco and all Volkswagen Golf convertibles. A complete overview may be found in the history section.
Merc.-Benz CLK
81,518 units
Audi 80 Convertible
12,012 units
VW Golf A4 Convert.
72,666 units
Merc.-Benz CLK Coupé
31,568 units
Audi A4 Convertible
20,906 units
Chrysler Crossfire
Volker Plogmann

36. Global Locations Volker Plogmann Karmann-Rheine GmbH & Co. KG
Vehicle Production
Wilhelm Karmann GmbH
Osnabrück
Vehicle Engineering • Tooling
Roof Systems • Production
ATP Automotive Testing
Papenburg GmbH
Papenburg
Proving Ground
Karmann U.S.A., Inc.
Plymouth, Michigan
Vehicle Engineering
Julius Heywinkel GmbH
Bramsche
Fabric & Plastics Production
AGS GmbH
Osnabrück
Logistics Services
Karmann-Ghia de Mexico
Puebla
Roof System Production
Karmann-Ghia
do Brasil Ltda.
Sao Paulo
Tooling • Stamping
Vehicle Production
Karmann-Ghia
de Portugal Lda.
Vendas Novas
Fabric Production
Volker Plogmann

37. Wilhelm Karmann GmbH Germany - Osnabrück Service Spectrum:
Vehicle Engineering • Tooling Roof Systems • Production
Founded: 1901
Employees: 6,106
total area: m2
built-on-area: m2
Current Key Products:
Chrysler Crossfire Coupe
MB CLK Convertible
MB SLK (BIW Module)
Volker Plogmann

38. Karmann-Rheine GmbH & Co. KG
Germany - Rheine
Service Spectrum:
Vehicle Production
Founded: 1965
Employees: 1,760
total area: m2
built-on-area: m2
Current Key Products:
Audi A4 Convertible
Renault Mégane II CC (RHT module)
Jaguar XK8 (Soft-top Frame)
Volker Plogmann

39. Karmann-Ghia do Brasil Ltda.
Sao Paulo
Service Spectrum:
Tooling • Stamping Vehicle Production
Founded:
Employees:
Current Key Products:
Final Assembly of Land Rover 90 SW
Tools for DC, Dana, Fiat, Ford, GM, Krupp, Land Rover, Honda, Renault, Scania, Volvo, VW
Stamping Parts for DC, Fiat, Krupp, Scania, TWB, Volvo, VW
Volker Plogmann

40. Karmann-Ghia de Portugal Lda.
Vendas Novas
Service Spectrum:
Fabric Production
Founded:
Employees:
Current Key Products:
Fabric & leather seat covers for
Audi A4 Convertible
BMW new 5 series
Ford Galaxy
Land Rover
MB CLK Convertible
VW Sharan
Seat Alhambra
Volker Plogmann

41. Karmann-Ghia de Mexico
Puebla
Service Spektrum:
Roof System Production
Founded:
Employees:
Current Product:
Soft-top System for Volkswagen New Beetle Cabrio
Volker Plogmann

42. Karmann U.S.A. Plymouth,Michigan Service Spectrum: Founded: 1996
Vehicle Engineering,
Roof System Production (2006)
Founded:
Employees:
Volker Plogmann

43. ATP Automotive Testing
Papenburg
Service Spectrum:
Proving Ground Engineering
Operation Begin:
Employees: 100
Testing Area: ha
Volker Plogmann

44. Full Service Supplier Volker Plogmann Styling
Concepts/ Advanced Engineering
FEM Analysis
Package/ Measure Concept/ Surface Class A
Design/ Engineering
Plastics Technology
Roof Systems
BIW Assembly Systems
Tools & Dies
Machining
Engineering/ Concept
Vehicle Testing
Prototypes
Powertrain & Chassis Integration
QA Tooling
Stamping
Body-in- white
Module Manufact.
Paint Shop
Soft-top Production
Final Assembly
Volker Plogmann

45. Division & Structure in Osnabrück
Vehicle Engineering
Tooling
Production
designStudio
BIW Assembly Systems
Tools and Dies
Machining
Stamping
conceptTeam
Body-in-white
FEM Analysis
Modules/Components
Package/Measure Concept/ Surface Class A
Roof Systems
Paint Shop
Design/Engineering
Final Assembly
Prototypes
Development
Design
Testing
Production
Plastics Technology
Division and Structure
Now i want tell you more to the practical, day-to-day problems of R&D divivons and the interrelationsship with Intellectual Property Department.
Intellectual Property Management
Prototypes
Vehicle Testing
Volker Plogmann

46. Patents, Utility Models
Intellectual Property Department
IP Department
Patents, Utility Models
Trademarks, Designs
Licensing
Administration
Volker Plogmann

47. Intellectual Property Management
The protection of innovative solutions and the covering of Know-How in respect of the economic advantages in national and international competition is the major task of an Intellectual Property Management
The support and the consulting in-house is another topic of the Intellectual Property Management
Law of Contract (Patents and Licenses)
Online research in patent databases
National and international prosecution
Patent litigation
Volker Plogmann

48. Setting up a patentportfolio
Patent Strategy
Support in reaching the company targets
Economical and professional protection of own inventions
Decrease the risk of a blocking by competitors
Avoidance of patent infringement
Setting up a patentportfolio
Volker Plogmann

49. Patent Strategy Questions to be answered:
a) Shall a patent be applied for an invention?
b) At what time should the application of an invention take place?
c) Can invention be kept secret for „absolute reasons“?
c) Which scope of protection should be aimed for?
d) In which countries should an application take place?
Beginning from questioning to Service Invention
Service Invention
The most difficult question of people working in the R&D division of a company is to determine the point in time when to contact the patent department with respect to a new invention. The principle should be to have a first contact as soon as possible, even during the time of developing the concept for a new project, the main reason for that being that the IP department should conduct at this very early stage, a search for relevant prior art for two reasons, namely
a)to make additional information available to avoid double work, i.e. to avoid "inventing" something which has already been invented in the past; and
b)to avoid running into infringement problems lateron, i.e. to try from the beginning on to find solutions for existing problems which do not fall into the scope of protection of existing patent rights.
Volker Plogmann

50. Service Invention R & D Division IP Department Search for prior art
Filing an application
From then on, there should be a continuous contact between R&D and IP department in order to enable the most appropriate point in time when to file a patent application, i.e. to determine when there is enough information available to state that the patent invention has been "completed". The patent application should not be too early in order to avoid that there is too much of a risk that later results might be contradictory or leading in a different direction, but it should also not be too late to ensure the earliest possible priority.
Search for prior art
We have already shortly discussed the necessity of a thorough search for prior art at an early stage. This search can be done by different ways and in different steps.
A first step could be collecting of all information available to R&D defining their own starting point for the research.
Volker Plogmann

51. Service Invention 1. Employee's invention law (The German Problem!)
Technical inventions
Inventorship
Right to apply for patents
Definition of invention
Definition of employee
Service or free invention
In a second step there should be a search for prior art in paten literature which can be done within the patent department or using competent outside searchers. There are various appropriate sources for doing such searches, for example various database such as Derwent. In the future, there will be certainly more and more opportunities to search via internet.
In a third step (possibly simultaneous to the second step), an additional search in scientific literature, also via database or internet, might be recommendable, depending on subject-matter of the project.
Volker Plogmann

52. Patent Strategy 2. Evaluation of inventions
Evaluation for the classification of the inventions concerning the intended registration
Orientation at markets and the competitive position
Evaluation of the invention by representatives (Management of Technical Development and its department managers)
Evaluation of Invention
After having reviewed the results of the respective R&D project as well as available relevant prior art, the patent department (or an outside patent councel) has to evaluate the chances of success for obtaining patent protection as well as the status of the project in order to determine the best point in time for filing the application.
At this state, it is also necessary to decide whether the results of the project can be combined within a single application or will have to be split into several independent applications, if there is lack of unity amongst the various aspects of the project needing protection.
An application cannot claim simultaneously a car, an improved distillation column and a pharmaceutical. Such an application would lack of unity from the outset (a priori). This type of lack of unity would be discernible before drafting the application, even without considering the relevant state of the art.
Volker Plogmann

53. Patent Strategy
2. Evaluation of inventions (Example)
Volker Plogmann

54. Patent Strategy 3. Incentive-Program
(Law relating to inventions of employees)
an incentive is paid after registration of an invention
a payment according to the Employee´s invention law is done after a patent is granted and used in a product (award to the inventor)
Volker Plogmann

55. Patent Strategy 4. First filing applications
Patent application - yes or no?
Patent application - where and how?
 National Territories
Application drafting
When the patent department believes the invention to be completed to a sufficient degree, claims and specification of the intended patent application should be drafted according to the principles already discussed.
This first version of the patent application should be carefully reviewed by the inventor(s) and possibly discussed personally with the patent department, if clarification seems to be required. There are two tendencies of inventors which need specific attention by the patent department.
Volker Plogmann

56. Patent Strategy 4. First filing applications
National Patentlaw (harmonised)
National Patentoffices
National Patents
National, independend proceedings in all countries, where the patent will be registrated
a „worldwide patent“ does not exist !
a) The inventor is not able to find his invention in the application text because of the specific language of claims and specification to be chosen in drafting. Thus, it is recommendable in most cases, to at least have one or more examples reflecting the information from the inventor(s) in order to allow identification with the application.
b) The inventor wants to cover a very broad range, adding more and more theoretical alternative or ideas to the application. It has to be carefully checked whether incorporation of such alternatives and addition is possible in view of unity of invention and, in particular, sufficient support by appropriate factual results.
Volker Plogmann

57. Patent Strategy 5. Foreign subsequent applications
Foreign protection
Selection of countries (production; markets)
National applications
PCT
EPC
Volker Plogmann

58. Patent Strategy Paris Convention international convention
subsequent application in the member states possible
164 member states
right of priority (1 year)
Volker Plogmann

59. Patent Strategy 6. Examination procedure
Getting a maximum extent of protection
Volker Plogmann

60. European Patent Office
27 contracting states
5 extension states
Registration / Search / Examination
Grant / Opposition / Appeal
Distribution of a „European Patent“
* **
AT Österreich AL Albanien
AT Österreich LT Littauen
BE Belgien LV Lettland
GR Griechenland MK Mazedonien
IE Irland RO Rumänien
CH Schweiz SI Slowenien
IT Italien
CY Zypern
LI Liechtenstein
DE Deutschland
LU Luxemburg *** siehe beigefügte Liste
DK Dänemark PCT-Länder (PCT-Anmelde-
MC Monaco Formular)
ES Spanien
NL Niederlande
FI Finnland
PT Portugal
FR Frankreich
SE Schweden
TR Türkei
GB Vereinigtes Königreich
Volker Plogmann

61. European Patentsystem
Distribution procedure EPO
European Patent (“Regional-Patent”)
Nationalization DE FR AT XY
Volker Plogmann

62. PCT-System Patent Cooperation Treaty (PCT)
international announcing authority
123 Member countries
Registration / Search / Preliminary Examination
no distribution of a patent
national/regional distribution procedures necessary (PCT is an „Preliminary stage “)
* siehe beigefügte Liste PCT-Länder (PCT-Anmelde-Formular)
Volker Plogmann

63. PCT-System International Phase PCT National and regional Phases TZ DEUS
Volker Plogmann

64. PCT-System First filing, DPMA PCT-filing, DPMA, EPC (Priority)
Request for Int. Preliminary Examination
End of International Phase EP DE US TZ JP
Month 12 19
(20) 30
Volker Plogmann

65. Fees and Renewals 7. Fees and Renewals Payment of procedural fees
administrative fees
maintenance fees
Screening of the Patentportfolios takes place annually
Volker Plogmann

66. Cost schedule of a patent family (I)
Locking device for cabriolet-tops
First filing of the invention in Germany
Foreign subsequent applications in USA, Japan and in Europe
Volker Plogmann

67. Cost schedule of a patent family (I)
Volker Plogmann

68. Cost schedule of a patent family (II)
Element made of foamed metal
First filing of the invention in Germany
Foreign applications in USA, Japan and Europe
Two oppositions in the german and in the european procedure
Volker Plogmann

69. Cost schedule of a patent family (II)
Volker Plogmann

70. Patent Strategy 8. Observation of competitors
Examination of published registrations of third parties
Distribution of specific patent information to the specialized divisions
specific monitoring of selected competitors
Volker Plogmann

71. Patent Strategy 9. Execution of infringement procedures
Infringement of patents of third parties
Development of a strategy to the practice: Objection, nullity, license negotiations
Infringement of own patent rights
Discussion with the management whether or not to proceed against violators
Volker Plogmann

72. Thank you for listening!
Patent Strategy
Thank you for listening!
Volker Plogmann