practical aspects of ip arbitration: improving the negotiating position olav jaeger september 14,...
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Practical Aspects of IP Arbitration:Improving the negotiating position
Olav Jaeger
September 14, 2009
September 09 2
1. Background
2. Types of intellectual property rights in Europe
3. Application strategies
“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
■ 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
IntellectualPropertyTypes
■ 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
IntellectualPropertyTypes
■ 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
IntellectualPropertyTypes
■ 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
IntellectualPropertyTypes
■ 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
IntellectualPropertyTypes
■ National patent■ protection in
national state
■ European Patent■ protection in
validated member states
■ Community rights■ protection within
the EC
September 09 9
IntellectualPropertyTypes
■ Situations for many Chinese companies regarding European IP rights:
- no IP rights at all
o some foreign IP rights (e.g. some CN patent s or patent applications pending)
o 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)
September 09 10
ApplicationStrategies
September 09 11
ApplicationStrategies
■ 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
■ Costsappr.: 4500 € (application with 20 pages, 10 claims with EPO as ISA)
September 09 12
ApplicationStrategies
■ Possible strategies to improve situation related to patents
■ WO-Application duration
month30,3112 22
national applications, e.g. US, DE, FR
WO subsequent application
WO application
regional applications, e.g. EP
national application
September 09 13
ApplicationStrategies
■ 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
granto faster than WO-application, but often slower than national
procedure
■ Costsappr.: 22.000 € to 28.000 € ( 6 validated countries )
September 09 14
ApplicationStrategies
■ Possible strategies to improve situation related to patents
■ EP-Applications duration
grant18 24
EP subsequent application validated patentsin member states
WO application
12
national application
EP application
31
September 09 15
ApplicationStrategies
■ 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
■ Costsdepending on country, appr.: 2000 – 7000 € (application with 20 pages, 10 claims)
■ 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
ApplicationStrategies
September 09 17
ApplicationStrategies
■ 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 €
September 09 18
ApplicationStrategies
■ 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 €
■ 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
ApplicationStrategies
Practical Aspects of IP Arbitration:Improving the negotiating position
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