Practical Aspects of IP Arbitration: Improving the negotiating position

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Practical Aspects of IP ArbitrationImproving
the negotiating position

• Olav Jaeger

• September 14, 2009

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1. Background
2. Types of intellectual property rights in Europe
3. Application strategies

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• Background

• 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

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• Intellectual
• Property
• Types

• 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

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September 09
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• Intellectual
• Property
• Types

• 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

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September 09
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• Intellectual
• Property
• Types

• 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

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September 09
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• Intellectual
• Property
• Types

• 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

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September 09
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• Intellectual
• Property
• Types

• 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

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September 09
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• Intellectual
• Property
• Types

• National patent
• protection in national state
• European Patent
• protection in validated member states
• Community rights
• protection within the EC

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September 09
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• Application
• Strategies

• Situations for many Chinese companies regarding
  European IP rights
• no IP rights at all
• some foreign IP rights (e.g. some CN patent s or
  patent applications pending)
• some 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)

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September 09
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• 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
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• Application
• Strategies

• Possible strategies to improve situation related
  to patents
• WO-Application duration

national applications, e.g. US, DE, FR
national application
regional applications, e.g. EP
WO subsequent application
WO application
month
30,31
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22
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September 09
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• 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
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• Application
• Strategies

• Possible strategies to improve situation related
  to patents
• EP-Applications duration

WO application
31
validated patents in member states
national application
EP subsequent application
EP application
grant
24
12
18
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September 09
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• 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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September 09
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• Application
• Strategies

• 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

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September 09
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• 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
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• 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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September 09
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• Application
• Strategies

• 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

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September 09
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Practical Aspects of IP ArbitrationImproving
the negotiating position

• www.ehf-patent.com